Trademark & Copyright Infringement

[UPDATE, February 3, 2012: Adam Reid points out via Twitter that Apple has substantially re-written their EULA addressing the concerns raised in my post. (Reid characterizes them as merely “clarifying” the EULA). Now, the EULA asserts that “If you want to charge a fee for a work that includes files in the .ibooks format generated using iBooks Author, you may only sell or distribute such work through Apple, and such distribution will be subject to a separate agreement with Apple.” That puts Apple on far steadier ground — they no longer claim an exclusive license to author’s works at all, but rather restrict use of iBooks-formatted files.]

It seems Dan Wineman was the first to sound the alarm, with Ed Bott using his soapbox at ZDNet to shout it from the rooftops: Apple’s new “free” iBooks Author program, which allows authors to create their own professional layouts while they write books, includes an astonishingly greedy and overbearing clause in its end-user license agreement (“EULA”):

B. Distribution of your Work. As a condition of this License and provided you are in compliance with its terms, your Work may be distributed as follows:

  •  (i) if your Work is provided for free (at no charge), you may distribute the Work by any available means;
  • (ii) if your Work is provided for a fee (including as part of any subscription-based product or
    service), you may only distribute the Work through Apple and such distribution is subject to the following limitations and conditions: (a) you will be required to enter into a separate written agreement with Apple (or an Apple affiliate or subsidiary) before any commercial distribution of your Work may take place; and (b) Apple may determine for any reason and in its sole discretion not to select your Work for distribution.
Apple will not be responsible for any costs, expenses, damages, losses (including without limitation lost business opportunities or lost profits) or other liabilities you may incur as a result of your use of this Apple Software, including without limitation the fact that your Work may not be selected for distribution by Apple.

As Bott explains, “The nightmare scenario under this agreement? You create a great work of staggering literary genius that you think you can sell for 5 or 10 bucks per copy. You craft it carefully in iBooks Author. You submit it to Apple. They reject it. Under this license agreement, you are out of luck. They won’t sell it, and you can’t legally sell it elsewhere. You can give it away, but you can’t sell it.”

Jason Gilbert at Huffington Post considers the problems in enforcing the EULA as a “contract of adhesion” (because it’s included in the license and you have no ability to negotiate it) and as including “unconscionable” terms (a rare legal doctrine that courts virtually never apply). But there’s a more fundamental problem: the terms are unenforceable under the Copyright Act. Continue Reading Is Apple’s Dismal iBooks Author Software License Even Enforceable?

Yesterday, many of the largest and most influential websites on the Internet exercised their power in our attention economy by either going entirely dark (like Wikipedia and reddit) or by prominently displaying calls to action that recommended users contact their representatives and senators about the Stop Online Piracy Act (“SOPA”) in the House and the Protect IP Act (“PIPA”) in the Senate.  The effort apparently worked, with support for both bills collapsing, particularly in the Senate, where even seven of the former co-sponsors of the bill renounced their support. Of course, there’s a good chance some of the more dubious provisions of both will come back at some point.

There is of course no doubt that the SOPA and PIPA bills were bad laws, little more than major media and content companies buying from elected representatives more power to enforce private copyright interests than your local county District Attorney or United States Attorney has to prosecute violent crime.  The bills astonishingly allowed private companies to take down entire websites, and force other websites to change their entire business practices, upon nothing more than a vague allegation of copyright infringement.  As Donny Shaw at OpenCongress described it more than a month ago:

Back in the old days, Congress was a branch of the federal government, separate from corporations, that wrote and passed laws to defend the general welfare of the United State. These days, however, that work is being outsourced to private interests while the actual members of Congress, quaint as they are, spend their time fundraising for their next re-election campaign.

Obviously Congress bears most of the blame for allowing such an absurd piece of special interest legislation to even make it to the floor, and SOPA/PIPA are certainly not the only examples of Congress granting special privileges to content companies under the guise of copyright law, but let’s not forget another party responsible for this set of affairs: the United States Supreme Court. Continue Reading Blame The Supreme Court, Too, For SOPA and PIPA

There’s an interesting dichotomy in artistic fields like photography and music in which the audience often describes art as having ineffable qualities arising from inspiration, creativity, and talent, while artists describe art like work as being the product of persistence, experimentation, and drive. Great art looks effortless but never is.

Erica Simone is a photographer in New York who put together a project, “Nue York,” involving an unusual sort of self-portrait:

All of the photos are of her doing every day New York activities from riding the subway, buying a hot dog from a food cart, window shopping, shoveling snow, using an ATM machine at HSBC, except that in each one she’s nude, barring the occasional hat or pair of shoes and of course her ever visible tattoo. The photographs were taken by her, using a tri-pod and shutter release.

She’s criticizing image obsessed, overly fashion-conscious New Yorkers who care more about their looks and the next designer sale than what’s going on around them in the city. The concept for her collection was born from these observations and asking herself: “what would we do without clothes?, would we feel comfortable just being who we are?”

There’s of course nothing new about using the naked female form to express an artistic point — some of the oldest human art found does exactly that that — and there is similarly nothing new or original about exploring and pushing social boundaries through nudity.

But there is something new, creative, and original about what Erica Simone did. To understand that original element, we turn to an artist who knew more than a little bit about pushing social boundaries, or at least a lawsuit that related to him:

As Judge Pauley admirably recounted in SHL Imaging, Inc. v. Artisan House, Inc., photography was initially met by critics with a degree of skepticism: a photograph, some said, “copies everything and explains nothing,” and it was debated whether a camera could do anything more than merely record the physical world. 117 F.Supp.2d 301, 307 (S.D.N.Y.2000) (internal quotation omitted). These largely aesthetic debates migrated into legal territory when Oscar Wilde toured the United States in the 1880s and sought out Napoleon Sarony for a series of publicity photographs to promote the event.[6] Burrow-Giles, a lithography firm, quickly copied one of Sarony’s photos and sold 85,000 prints without the photographer’s permission. Burrow-Giles defended its conduct on the ground that the photograph was a “mere mechanical reproduction of the physical features” of Wilde and thus not copyrightable. Burrow-Giles, 111 U.S. at 59, 4 S.Ct. 279. Recognizing that Oscar Wilde’s inimitable visage does not belong, or “owe its origins” to any photographer, the Supreme Court noted that photographs may well sometimes lack originality and are thus not per se copyrightable. Id. (“the ordinary production of a photograph” may involve “no protection” in copyright). At the same time, the Court held, a copyright may be had to the extent a photograph involves “posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression. . . .” Id. at 60, 4 S.Ct. 279. Accordingly, the Court indicated, photographs are copyrightable, if only to the extent of their original depiction of the subject. Wilde’s image is not copyrightable; but to the extent a photograph reflects the photographer’s decisions regarding pose, positioning, background, lighting, shading, and the like, those elements can be said to “owe their origins” to the photographer, making the photograph copyrightable, at least to that extent.

From Meshwerks, Inc. v. Toyota Motor Sales USA, Inc., 528 F.3d 1258 (10th Cir. 2008)(bolding added).

Just like how no photographer can claim copyright protection over Oscar Wilde’s face — or Miles Davis playing the trumpet — no one can copyright the idea of taking nude pictures, not even nude pictures on the streets of New York City. Indeed, no one can copyright any ideas at all, they can only copyright their particular expression of an idea. See Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991)(“[N]o author may copyright facts or ideas. The copyright is limited to those aspects of the work—termed `expression’—that display the stamp of the author’s originality,” quoting Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985)).

Rather, a photographer can claim copyright protection and ownership of their own creative elements, like composition, lighting, color, contrast. In short, if you didn’t create the element in question by positioning the subject, pointing the camera, adjusting the camera, or processing the photograph, then you have no claim to ownership over that element of the work.

After Simone published her work, Mullen, the advertising agency for Zappos put together an advertising campaign that involved, perhaps not coincidentally, naked individuals in urban environments, to advertise that Zappos sells more than shoes. Frankly, it seems like an obvious idea to me; the interesting part is that a company of Zappos’ size committed to it.

Simone is quite upset about the matter, upset enough to talk with AdWeek and assert her belief that Mullen “ripped her off.” She says she’s “waiting to hear from different lawyers on what they plan on doing.”

Well, let me help out.

Village Voice seems to have the most reasonable analysis of the pictures’ similarities to one another:

We’re almost always on the side of the little guy in situations like these — take, for instance, Forever21’s beef with satire site WTForever21 or Urban Outfitters seemingly grabbing local artists’ designs. But, at the same time, and as every blogger knows, sometimes ideascan happen simultaneously among different people. And though we feel Simone’s pain, can you really own “being naked and doing everyday things”? If so, what does that mean for those Bluefly ads, which go all the way back to 2005? Or…for our lovely topless lady of the Bowery, for that matter?

And, yet, when we look at the catalog of Zappos ads, which also include riding a Vespa and hailing a cab, all shot in Manhattan locations, there does seem to be a certain similarity. Although Simone’s photos are prettier, and more authentic: During the Zappos shoot, reports the New York Times, “the models wore pasties and thongs or tiny bikinis, which were edited out later.”

Indeed. The jogger? The Vespa? There seems to be some similarity there, but even if we assume that Mullen saw Simone’s art and decided to make their own version, there still likely isn’t any claim there. The new art is simply too different; the idea of a naked woman jogging through New York is an idea, not the expression of an idea.

If Mullen had simply copied her photographs, or had simply re-done pictures with the same composition, that would be an infringement. But the mere idea of public nudity in New York City is not, by itself, protected by copyright.

[Update: January 12, 2013. RIP, Aaron Swartz. He was 26. His family has released a statement describing his death as “the product of a criminal justice system rife with intimidation and prosecutorial overreach.” Eulogies from Cory Doctorow and Rick Perlstein

I wrote the post below back in July 2011, when the indictment was filed (then updated it once in Sepetember 2012). I thought from the onset the prosecution was dubious; after Swartz’s death, the expert who was going to testify on his behalf posted his conclusions, conclusions that to me are damning to the U.S. Attorney’s office. MIT’s network was extraordinarily open by design:

Aaron Swartz was not the super hacker breathlessly described in the Government’s indictment and forensic reports, and his actions did not pose a real danger to JSTOR, MIT or the public. He was an intelligent young man who found a loophole that would allow him to download a lot of documents quickly. This loophole was created intentionally by MIT and JSTOR, and was codified contractually in the piles of paperwork turned over during discovery.

In light of the expert’s disclosures — which suggest that Swartz did have “authorization” to obtain the articles, due to the structure of MIT’s network and the various JSTOR agreements — it seems that the prosecution was even weaker than it appeared on the surface. An AP article notes that JSTOR’s attorney, Mary Jo White, the former top federal prosecutor in Manhattan, had called Stephen Heymann, the lead Assistant U.S. Attorney on the case, to ask him to drop the prosecution; instead, the U.S. Attorney’s office continued to demand Swartz plead guilty to all charges. 

I think the circumstances demand an explanation from U.S. Attorney Carmen Ortiz about what she sought to accomplish with this prosecution (and what transpired between her and Heymann), as well as a statement from the White House as to whether they will continue these “exceeding authorization” prosecutions in the future. Arguably breaching a Terms of Service should not even arguably be a crime. For further reading on the abuse of prosecutorial discretion in light of the consequences here, see Lessig’s “prosecutor as bully.” Dan Gillmor has thoughts about how to remember him by continuing his work

Update: January 14, 2013. Back in late 2011, Aaron wrote to me about this post. My recollection here.]

 

The New York Times reports:

Aaron Swartz, a 24-year-old programmer and online political activist, has been indicted in Boston on charges that he stole more than four million documents from the Massachusetts Institute of Technology and JSTOR, an archive of scientific journals and academic papers. (Read the full indictment below.)

Mr. Swartz was indicted last Thursday by the United States Attorney for the District of Massachusetts, Carmen M. Ortiz, and the indictment was unsealed Tuesday. The charges could result in up to 35 years in prison and a $1 million fine.

JSTOR’s press statement is here. One of Swartz’s companies, Infogami, was funded by Y Combinator and acquired by reddit, so this is big news in the tech world. Demand Progress, a non-profit Swartz founded, is understandably upset:

Cambridge, MA –  Moments ago, Aaron Swartz, former executive director and founder of Demand Progress, was indicted by the US government. As best as we can tell, he is being charged with allegedly downloading too many scholarly journal articles from the Web. The government contends that downloading said articles is actually felony computer hacking and should be punished with time in prison.

“This makes no sense,” said Demand Progress Executive Director David Segal; “it’s like trying to put someone in jail for allegedly checking too many books out of the library.”

“It’s even more strange because JSTOR has settled any claims against Aaron, explained they’ve suffered no loss or damage, and asked the government not to prosecute,” Segal added.

There’s an interesting discussion (mostly about JSTOR) at Y Combinator. The commentators at reddit aren’t impressed either:

Good thing he didn’t rape or murder someone or he’d be facing 15 years.

* * *

Hell, if he was a Wall Street CEO they’d just give him a bonus.

Indeed. Let’s look at the indictment. He’s charged with:

  • 18 U.S.C. § 1343 (Wire Fraud)
  • 18 U.S.C. § 1030(a)(4) (Computer Fraud)
  • 18 U.S.C. § 1030(a)(2), (c)(2)(B)(iii)(Unlawfully Obtaining Information from a Protected Computer)
  • 18 U.S.C. § 1030(a)(5)(B), (c)(4)(A)(i)(I),(VI)(Recklessly Damaging a Protected Computer)
  • 18 U.S.C. § 2 (Aiding and Abetting)
  • 18 U.S.C. § 981(a)(1)(C), 28 U.S.C. § 2461(c),and 18 U.S.C. §982(a)(2)(B) (Criminal Forfeiture)

18 U.S.C. § 1030 is better known as the Computer Fraud and Abuse Act, which I’ve written a little bit about here. As I wrote there, “If the Circuit Courts and the Supreme Court interpret the CFAA the same way they’ve interpreted the RICO Act, we’ll see a lot more of these claims in the future,” and it sure seems like given how the Swartz indictment is primarily based on CFAA violations.

[Update: September 12, 2012. Seth Finkelstein notes that a superseding indictment was entered. As far as I can tell, the charges aren’t really different, there’s just more factual detail supplied. Wired explains. As I mentioned in my original post, even if we assume the prosecutor can prove every word of the indictment, it is by no means clear that Swartz has actually violated the Computer Fraud and Abuse Act.]

But there are a few problems, one democratic (little “d”) problem and a couple legal problems.

Continue Reading Examining The Outrageous Aaron Swartz Indictment For Computer Fraud

It’s old hat to blog about the problems of copyright law (e.g., here’s some of my thoughts on copyright trolls). There are over a quarter million pages discussing Lawrence Lessig’s “Free Culture” idea. Summed up in a quote:

There has never been a time in history when more of our ‘culture’ was as ‘owned’ as it is now. And yet there has never been a time when the concentration of power to control the uses of culture has been as unquestioningly accepted as it is now.

Which brings us to Miles Davis. No poetic license is needed to say that Miles Davis lives in the souls of millions of Americans, to say that, at a minimum, Kind of Blue is part of the fabric of American society. Whatever your preference, from electronica to indie rock, from Frank Zappa to Radiohead, there’s little doubt that consoles you when you’re down and inspires you when you’re up was influenced by Miles Davis, and likely specifically by Kind of Blue.

So it was with Andy Baio, who organized a “chiptune” tribute to Kind of Blue called Kind of Bloop. “Chiptune,” in which 8-bit electronic synthesizers are used to create the music, of course didn’t exist as a musical genre when Miles died in 1991. Such is the extraordinary influence of Davis.

So Baio did what a person preparing a music complication is supposed to do:

I went out of my way to make sure the entire project was above board, licensing all the cover songs from Miles Davis’s publisher and giving the total profits from the Kickstarter fundraiser to the five musicians that participated.

Baio’s post recounting it all is titled, “Kind of Screwed,” so you can see where this is going:

But there was one thing I never thought would be an issue: the cover art.

Before the project launched, I knew exactly what I wanted for the cover — a pixel art recreation of the original album cover, the only thing that made sense for an 8-bit tribute to Kind of Blue. I tried to draw it myself, but if you’ve ever attempted pixel art, you know how demanding it is. After several failed attempts, I asked a talented friend to do it.

You can see the results below, with the original album cover for comparison.

Kind Of Blue - Pixelated Fair Use Example

It’s the same image, but different because it is pixelated into “pixel art,” transformed in the graphical analogy to the 8-bit chiptune sonic crunching.

That prompted a demand letter from attorneys for Jay Maisel, the photographer who shot the original photo of Miles Davis. I won’t spoil the rest of Baio’s post, which is a must-read for anyone interested in copyright, except to say it ends with Baio paying Maisel $32,500 and agreeing not to use the pixelated image anymore.

Baio’s discussion is nothing unusual or unexpected to people familiar with debates over the viability of “fair use” in copyright law, but Baio writes it in a clear, evocative style with exceptional examples of the type of minimalist modifications that are commonplace on the Internet these days and undoubtedly their own breed of transformative art.

Baio did not admit guilt through his settlement, which makes it all seem even more unfair. As Jason Kottke says,

Seeing this kind of behavior from large clueless companies is almost expected but from a a fellow creative artist? Inexcusable. Surely some reasonable arrangement could have been made without visiting enormous stress and a $30K+ bill onto a man with a young family. Disgusting.

That sentiment seems pretty common across the Internet. Maisel was, of course, within his rights to raise the demand. Which raises an obvious question: should our law allow someone to do something “inexcusable” and “disgusting?”

Of course, there is a considerable Devil’s Advocate argument to be made here. What would Baio think if a group of artists devoted extensive time, energy and money towards creating an album of entirely new compositions, with original artwork, just to see someone either copy it without paying or claim a “transformation” through a trivial change in the sonic distortion? We need some type of protection for creative works, the question is what form that protection takes.

Fair use,” however, isn’t the answer, because “fair use” isn’t an answer, it’s a means of formulating a factual questions for a jury to decide, i.e.:

Section 107 also sets out four factors to be considered in determining whether or not a particular use is fair:

  1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
  2. The nature of the copyrighted work
  3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  4. The effect of the use upon the potential market for, or value of, the copyrighted work

These words do not, themselves, answer anything. They do not tell a documentary filmmaker whose camera pans across a TV screen in the room or a journalist publishing excerpts from a not-yet published work if they have infringed upon the original creator’s copyright. They set up a framework by which a jury decides the question.

Such is the nature of the law. I represent plaintiffs, and so have, unsurprisingly, long argued in favor of the need to use a jury trial, rather than judicial decisions based on mere lawyer arguments (rather than sworn testimony), as well as the problems with “loser pays” systems.

But copyright is different because copyright law is different, primarily because of the “statutory damages.” That’s how a record company can convince a court to enter a judgment deeming an MP3 to be worth $22,500 — because that’s the law as Congress has written it.

That’s what apparently happened here. Maisel’s lawyers claimed they sought “either statutory damages up to $150,000 for each infringement at the jury’s discretion and reasonable attorneys fees or actual damages and all profits attributed to the unlicensed use of his photograph, and $25,000 for Digital Millennium Copyright Act (DMCA) violations.” (Emphasis mine). Rubbish; the “actual damages” were minimal, as were the “all profits.” They were going to demand the statutory damages, the same ones that absurdly and unreasonably hold any copyright infringement or any size — even if only a single Kind of Bloop was sold — is worth up to $150,000.

In a word, that’s unjust. A brain damaged child is not presumed to have suffered any injury. A burned down house is not presumed to be worth a single dollar. A defrauded investor is not presumed to have lost anything at all. Each must prove, under the law, every penny to which they are entitled; the sole exception to this law is the statutory damages under copyright law.

I have a good idea of why Maisel wanted $32,500: that was probably somewhere near the fees his own lawyers charged him to investigate the case, send threatening letters, and jawbone Baio into giving up. In most lawsuits — like personal injury, negligence, or fraud — that sort of excess would be the plaintiff’s problem, since he wouldn’t be able to recover the attorney’s fees, much less “statutory damages” far larger than the real damage. The statutory damages were the Sword of Damocles dangling over Baio’s head, the only real threat that compelled him to settle rather than simply let the court process do its work and then, in the unlikely event he was found liable, pay back the de minimus “actual damages” and “profits” from the infringement.

It doesn’t have to be that way; we can send copyright claims initially to agency review or to arbitration or alter the statutory damages available. I’m normally on the plaintiff’s side in copyright claims, but, frankly, the cases I work on — in which a profitable business has literally copied my client’s creative work, without attribution or license — don’t need the statutory damages to survive, they can prove their damages just like my personal injury and financial fraud clients, and they would likely benefit from early resolution like agency review.

It was quite funny, if you’re into dark humor. Yesterday a group affiliated with the prankster Yes Men set up a “Coal Cares” website which, while falsely claiming affiliation with the very real coal company Peabody Coal, offered free children’s-themed asthma inhalers to any family living within a 200 mile radius of a coal plant. They then offered up such compelling facts in “favor” of coal as:

Wind Kills

Wind turbines can kill up to 70,000 birds per year, or 4.27 birds per turbine per year. Coal particulate pollution, on the other hand, kills fewer than 13,000 people per year.

Parody on par with The Onion. The site subversively directed visitors to pages like a non-profit report discussing “Death and Disease from Power Plants,” which shows that half of the country by geography, and more than half by population, is at an increased risk of death due to power plants.

Of course there’s nothing funny about electricity: we pay for power with lives. Put aside the cost in lives and treasure for our oil-dependent foreign policy. Here in the United States, natural gas drilling and hydraulic fracking contaminate some water supplies (like the water supplies around the Marcellus Shale here in Pennsylvania) so badly the drinking water literally catches fire from all the methane gas. Measured by kilowatt produced, coal production kills more than four-hundred times as many people as nuclear power. Coal plants dump into the atmosphere hundreds of thousands of tons of pollutants, including mercury, arsenic, lead, and dioxins — leading every year to 17,000 premature deaths, 120,000 cases of childhood asthma, and 12,000 hospitalizations and emergency room visits.

Maybe that’s a necessary evil. We shouldn’t keep all the lights on all night, but we obviously have to keep some lights on, keep some machines humming. Whatever you think about coal, oil, and climate change, the balance between public safety, future energy resource availability, and present economic security is one of the defining issues of our age, one that requires a robust and on-going debate.

Which brings us to the law. Can Peabody Coal sue the Yes Men for the spoof?

Maybe. (I know, lawyers say “maybe” a lot.)

But we have a lot more concrete idea of that “maybe” based upon two similar pranks and lawsuits, one involving Koch Industries (which the defendants just won on non-free speech grounds), and on brought by the U.S. Chamber of Commerce’s against the Yes Men for a similar stunt two years ago in which they faked a press conference in which the Chamber of Commerce changed course on climate change. A copy of the Chamber of Commerce’s Complaint is available here, alleging claims under the Lanham Act, including trademark infringement, unfair competition, trademark dilution, false advertising, cyberpiracy, in addition to several common law claims, including unlawful trade practices, publication of injurious falsehood, and “prima facie” tort.

The Yes Men, represented (pro bono, I presume) by the Electronic Frontier Foundation and Davis Wright Tremaine, filed a motion to dismiss (here), Public Citizen filed an amicus in support (here), the Chamber of Commerce responded (here), and the Yes Men replied (here), and they’re all still awaiting the Court’s order on that. In line with the prevailing practice in the District Court there, no discovery has taken place while the motion to dismiss is pending.

The Chamber v. Yes Men case is fascinating, well studied by anyone interested in free speech issues or who litigates defamation or trademark infringement cases. The case is right on the cutting edge of the First Amendment: on the one hand, we undoubtedly have speech on a matter of considerable public concern and importance — lobbying on climate change — while on the other hand we have an intentional attack on a private entity. Any future lawsuit by Peabody Coal would raise essentially the same issues.

Both situations raise an aspect of the First Amendment that is rarely considered. There are many ways in which to analyze the meaning of “free speech.” The most common analysis relates to what a defendant may say without legal consequence. In civil defamation lawsuits, for example, “truth is an absolute defense.” In other words, someone can always say the truth without suffering any legal consequences from a defamation claim.

Another way of analyzing free speech relates not to the absolute protections on speech, but on the necessary balance between a plaintiff’s right to seek compensation for their damages in a civil lawsuit and a defendant’s right to speak in a manner that might not be protected in all instances, but is protected in those particular instances.

That balance is the key to understanding the Chamber of Commerce case against the Yes Men, and any potential coal industry lawsuit against them. Like I wrote above, energy production is one of the defining issues of our age, but at the moment the public discourse is dominated almost entirely by the oil and coal industries. Day in and day out the American public is bombarded by “clean coal” advertising of questionable merit. When the deck is so heavily stacked in favor of this vested interests — and has recently been stacked even more heavily in favor of vested interests by the Supreme Court — is it so wrong to permit a some guerrilla political speech by the less powerful interests?

Answering that question necessarily calls upon each person’s political viewpoints, but the law as written already provides a partial answer: fact is, both the Chamber of Commerce and Peabody Coal will have a hard time proving any sort of coherent, compensible damages. Mere embarrassment isn’t enough for a corporation to start suing its critics, and as of yet neither the Chamber of Commerce nor Peabody Coal can point to any concrete, ascertainable financial loss.

We have to draw a line somewhere, and the absence of real damages is probably as rational and fair a line as any.

[Update, December 2012: as predicted, case dismissed, and dismissal just affirmed by the Second Circuit. The court didn’t even reach the class action issue, it just denied it on the merits. “[P]laintiffs were perfectly aware that The Huffington Post was a forprofit enterprise, which derived revenues from their submissions through advertising. Perhaps most importantly, at all times prior to the merger when they submitted their work to The Huffington Post, plaintiffs understood that they would receive compensation only in the form of exposure and promotion.”]

Writing has always been a tough business, one dependent upon unorthodox forms of compensation. Charles Dickens’ novels used to come with advertisements for alpaca umbrellas and quack medical treatments. One of Toni Morrison’s books was loaded with ads for cigarettes, the New York Times just put up an expensive but easily avoided paywall.

Which brings us to the Huffington Post, long despised by other writers who resented its obsession with search engine optimization and by SEO professionals who resented its success in repackaging other’s content.

But nobody hated the Huffington Post as much as its own bloggers, the folks who generated a ton of its content without compensation in a spirit of, I suppose, political activism, just to watch it be sold off to AOL for $315 million.

One of them has decided to sue:

[A] group of unpaid bloggers for the Huffington Post, led by union organizer and journalist Jonathan Tasini, filed a class-action lawsuit against the HuffPo; its foundress, La Arianna; and media giant AOL, which bought HuffPo back in February. The gist of the lawsuit, as Tasini told Jeff Bercovici of Forbes, is that the site’s unpaid writers “must share in the value they create” — $315 million worth of value, based on what AOL paid for the Huffington Post.As a writer myself, I’m all in favor of writers being paid for what they do. But the lawsuit against HuffPo strikes me as a bit dubious….

Forbes has the story. TechDirt has the complaint.

They’re proceeding under a theory of unjust enrichment. They filed as a class action, with a proposed class of:

All current and former unpaid content providers to TheHuffingtonPost.com residing in the United States and Canada and who did not and continue not to receive any compensation related thereto. [Excluding members of HuffingtonPost or the plaintiff’s law firm.]

That’s almost certainly not going to fly. Outside of the antitrust and corporate securities fraud context, nationwide class actions are very rarely granted, like so:

No class action is proper unless all litigants are governed by the same legal rules. Otherwise the class cannot satisfy the commonality and superiority requirements of Fed.R.Civ.P. 23(a), (b)(3). Yet state laws about theories such as those presented by our plaintiffs differ, and such differences have led us to hold that other warranty, fraud, or products-liability suits may not proceed as nationwide classes. See, e.g., Isaacs v. Sprint Corp., 261 F.3d 679 (7th Cir.2001);Szabo v. Bridgeport Machines, Inc., 249 F.3d 672 (7th Cir. 2001)In re Rhone-Poulenc Rorer Inc., 51 F.3d 1293 (7th Cir.1995). See also In re Mexico Money Transfer Litigation, 267 F.3d 743, 746-47 (7th Cir.2001). The district judge, well aware of this principle, recognized that uniform law would be essential to class certification.

As the plaintiffs in the Lycoming Engines aircraft product liability class action, learned the hard way, unjust enrichment laws differ from state to state — some call it a tort, some call it a quasi-contract, some call it just a claim in equity — and courts tend to demand a lot from plaintiffs trying to allege unjust enrichment in claims that cross state lines.

In the HuffingtonPost case, the proposed class is not just nationwide, but includes Canada.

 

Put simply, as much as I’d like to see more nationwide unjust enrichment class actions, they typically don’t go anywhere, because unjust enrichment laws from state-to-state simply vary too much. The plaintiffs in Lycoming Engines abandoned their unjust enrichment claims once the Third Circuit said the District Court would have to do a state-by-state analysis of unjust enrichment claims. The same will have to happen here.

 

Maybe he’ll refile as just a New York state-based class, or maybe New York and some other states with similar laws (the Lycoming Engines opinion is a good place to start for a survey on these laws), but that still leaves a lot of unanswered questions about how he’ll prove class-wide status for his claims. Posting on HuffingtonPost isn’t like buying a car or household appliance, the reasons people post vary considerably, as does the value conferred upon HuffingtonPost by each post. Class action status will thus almost certainly be denied.

 

Which leaves just the plaintiff himself. Assuming his claim prevails, how much are his two-hundred or so articles worth? If the going rate at Demand Media’s content farm is indicative, about $3,000 or so.

 

Maybe he should refile in small claims court.

It’s not easy being Google. (I’m talking about the company itself; it’s easy to be famous, powerful, and wealthy, so I don’t feel sorry for the management and shareholders of Google.) When you are that big, and asked to do that much, it’s inevitable that everyone will have some sort of complaint about you.

Thus far, Google has done an excellent job at avoiding any sort of legal liability for being the primary gatekeeper and mapmaker for the Internet. You can’t hold them liable for trademark infringement when a competitor uses your brand name as an AdWords trigger (though you can hold the competitor liable). You can’t sue Google for copyright infringement for leading people to pirated material, though most everyone else (Napster, Grokster, isoHunt, etc) has been sued for it and lost. Some folks have tried suing Google for erroneous Google Maps directions, but I doubt that will go anywhere, either.

Indeed, the only place where anyone has picked up traction against them is patent infringement, like with Oracle’s suit against Google over Java. But if you’re not holding onto some vague patent relating to social networks, that’s not an option, either. 

Google, though, sometimes tries to be a good internet citizen, as shown by their brand new “Submit a Court Order to Google” page. It’s one thing to get a page pulled off the internet, and quite another to get it removed from the primary way people access it: through Google. Of course, as Google says, "Completing and submitting this form does not guarantee that any action will be taken on your request," but it’s a start.

I wish I could shout hooray for all the individuals out there who have been defamed or had their content stolen, but, truth is, it takes an awful long time in a defamation or copyright / trademark lawsuit before you get anything resembling a court order demanding a webpage on the internet be taken down. "Long time" as in years, not months, certainly not days. Most of the time, you can’t "unring that bell" for defamatory publications, and so they remain live forever, even if you win. Consider the Wolk v. Overlawyered lawsuit; assuming, arguendo, that the blog post is defamatory (the case was dismissed on statute of limitations grounds, not on its merits), it’s still up there on the internet forever. Google is the new permanent record.

Truth is, it’s likely the only beneficiaries of Google’s new streamlined process are major record labels and film companies, the types of companies that sue 40,000 John Doe plaintiffs at once, fail to properly serve any of them, and then rack up temporary restraining orders and default judgments. 

But it’s a start.

The Limited Scope Of Inventors’ and Creators’ Rights Under Copyright, Trademark, and Patent Infringement Law

The business lawsuits actually filed, and defamation lawsuit not filed, surrounding Mark Zuckerberg and Facebook have inspired some of my more popular posts. But there is one litigious part of the Facebook story that I did not cover, and that was the lawsuit brought by the Winklevoss twins against Zuckerberg alleging that he stole the idea for Facebook from them.

Here’s why I avoided that part: without knowing the intricacies of the case (a case they’re trying to reopen), there’s not a lot for me to say. The bare allegation that someone else stole your idea for a business (or a product or a work of art) is ordinarily not enough to win a lawsuit, not under copyright law, trademark law, patent law, or any other intellectual property law. The law does not protect generalized expressions of ideas; the law protects the implementation of ideas.

There’s good reason for that. Though some ideas for businesses are certainly better than others, and though some ideas really are great ideas that no one had before, we cannot justify the burden and expense of a lawsuit every time someone, somewhere vaguely claims that they once had a similar idea. Fact is, successful businesses, useful inventions, and compelling works of art are all, as Thomas Edison — himself more a shrewd businessman than a genius inventor — is reputed to have said, invention is one percent inspiration and ninety-nine percent perspiration.

Mark Zuckerberg didn’t come up with the idea for an online social network, register the domain Facebook.com and collect a few billion dollars. Thomas Edison didn’t come up with the idea of stringing electrical wire in a vacuum, throw a light bulb together in an afternoon, and then enjoy his empire. Cormac McCarthy didn’t come up with the idea for a post-apocalyptic novel, shoot off a rough draft, and collect his Pulitzer and movie residuals. They all had ideas — or, better stated, took pre-existing ideas — and then made them work well.

An idea for a light bulb is not a light bulb. Making an idea for a light bulb go off outside of your head requires a tremendous amount of work, patience, dedication, and perseverance. As Edison said when asked about his many failed ligh tbulb designs, “I have not failed 1,000 times. I have successfully discovered 1,000 ways to not make a light bulb.”

Which brings us to the inspiration for this post. One of my kids’ favorite shows was WordWorld, which is probably better summed up by a picture than any actual words.

It’s a fun little show in which a couple animals, themselves constructed from their own names, use letters to interact and build with various objects in their world. It’s cute, entertaining, and reasonably educational.

What I did not know was the litigious animosity in the show’s history. As Patently-O recounted:

In 1993 and 1994 Kyle Morris and William Kirksley filed several patent applications all directed toward animated captioning “coordinated with oral-word utterances.”  The idea was to actually see the words coming from the mouth of the speaker in a movie or television program. …   Morris brought-in Don Moody to help develop a new children’s television show. However, after a falling-out, Moody left and started the successful Word World show that was broadcast on PBS beginning in 2007.

… In the lawsuit, Morris alleged both patent and copyright infringement. … On copyright, Morris argued that he owned a copyright on the phrase “where words come alive” that Word World uses as its slogan as well as a copyright in the “teaching methodology” that he had developed.

The District Court dismissed Morris’ patent and copyright claims (see Patently-O for the opinion; I don’t want to hog their bandwidth) and the Federal Circuit affirmed without an opinion. In short, Word World was similar to the original idea, and almost certainly took elements from it, but not enough to constitute patent or copyright infringement.

That is, Morris had an idea, tried to make it work, brought on help to make it work, but, for whatever reason, couldn’t get it to succeed. One of the people he brought on ran with the idea, made some changes and made it work. The lightbulb actually went off.

So who, as a matter of law, “invented” WordWorld? The same person who “invented” the lightbulb: the one who made it work.

But it often takes a Court to figure out these questions; contact an intellectual property lawyer by clicking on the contact form on this site.

If the title doesn’t ring a bell, read here. The whole Emmy-award-winning episode is here.

It always amazes me how much of the global economy is devoted to technological cat-and-mouse games; for every gadget, industrial process, or computer program out there, there are a dozen companies trying to reverse-engineer or manipulate it.

"Glider" was an aptly-named bot which allowed World of Warcraft ("WoW") players to glide through the first few levels of the game without doing much, and thus obtain "experience" for their online avatars, thereby proving Bruce Campbell wrong.

Blizzard Entertainment, publishers of WoW, were understandably upset about Glider, and so installed "Warden," a program designed to seek out instances of bots like Glider in a user’s RAM and, if it found one, block WoW from loading. If Warden found you gliding, it banned you from WoW’s servers. The maker of Glider ("MDY Industries, LLC," which has only one member, Michael Donnelly) responded by dreaming up ways to avoid Warden, and offering, for a monthly fee, updates that would react to the various changes Blizzard made to Warden to catch bots like Glider. Like I said, cat-and-mouse.

Blizzard sent the maker of Glider a cease and desist letter claiming copyright infringement. Donnelly wrote them back requesting more explanation then, for reasons which aren’t clear for me, eventually brought suit against Blizzard seeking a declaratory judgment establishing that he was not infringing on their copyrights.

(A word to the wise: don’t sue someone if the expected value of your claim against them is less than the expected value of their claim against you.)

This all may sound trivial. If so, consider these lines of the Ninth Circuit’s opinion

Following MDY’s anti-detection modifications, Warden only occasionally detected Glider. As of September 2008, MDY had gross revenues of $3.5 million based on 120,000 Glider license sales.

Blizzard claims that from December 2004 to March 2008, it received 465,000 complaints about WoW bots, several thousand of which named Glider. Blizzard spends $940,000 annually to respond to these complaints, and the parties have stipulated that Glider is the principal bot used by WoW players. Blizzard introduced evidence that it may have lost monthly subscription fees from Glider users, who were able to reach WoW’s highest levels in fewer weeks than players playing manually.

The most concise summary of the opinion I’ve seen is over at GamerLaw. In short, Glider defeated the copyright infringement claim, was found liable — or rather, enjoined — on the Digital Millennium Copyright Act ("DMCA") anti-circumvention claim, and was remanded for trial on the tortious interference claim.

The opinion is thoughtful, thorough, and correct, at least with regard to the copyright claim, which was based on a theory even more exaggerated and inflated than your typical WoW character. In short, Blizzard claimed that, when players played WoW, their play was conditioned upon the player adhering strictly to the WoW Terms of Use, which forbid the use of bots.

"Condition" is an important word there; if a copyright license is conditioned upon a licensee not doing a particular thing, then doing that prohibited thing (here, using a bot like Glider) is copyright infringement. If, instead, the only "condition" of the license is the purchase of the product — which is probably what most WoW users assume when they buy and use the game — then there’s only a covenant not to use bots, and so the use of bots is a mere breach of the license.

Interpreting both Delaware law and the federal Copyright Act, the Ninth Circuit took a Shadowmourne to that theory, concluding:

Were we to hold otherwise, Blizzard-or any software copyright holder-could designate any disfavored conduct during software use as copyright infringement, by purporting to condition the license on the player’s abstention from the disfavored conduct. The rationale would be that because the conduct occurs while the player’s computer is copying the software code into RAM in order for it to run, the violation is copyright infringement. This would allow software copyright owners far greater rights than Congress has generally conferred on copyright owners.[Fn 3]

Fn 3:  A copyright holder may wish to enforce violations of license agreements as copyright infringements for several reasons. First, breach of contract damages are generally limited to the value of the actual loss caused by the breach. See 24 Richard A. Lord, Williston on Contracts § 65:1 (4th ed.2007). In contrast, copyright damages include the copyright owner’s actual damages and the infringer’s actual profits, or statutory damages of up to $150,000 per work. 17 U.S.C. § 504; see Frank Music Corp. v. MGM, Inc., 772 F.2d 505, 512 n.5 (9th Cir.1985). Second, copyright law offers injunctive relief, seizure of infringing articles, and awards of costs and attorneys’ fees. 17 U.S.C. §§ 502-03, 505. Third, as amicus Software & Information Industry Association highlights, copyright law allows copyright owners a remedy against “downstream” infringers with whom they are not in privity of contract. See ProCD, Inc., 86 F.3d at 1454.

That is exactly correct, and it’s good to see a circuit court, particularly in the tech-and-media-industry heavy Ninth Circuit draw some lines in the sand. Not every last alleged wrongdoing connected to a copyrighted work amounts to copyright infringement; here, Glider surely helps users violate the WoW Terms of Use — which expressly bans bots — but that should be dealt with under ordinary principles of contract and tort law, like through the tortious interference claim.

Which leaves just the DMCA issue. The Ninth Circuit admits that their decision, in which they found that Glider’s attempts to evade Warden violated § 1201(a) of the DMCA, conflicts with the Federal Circuit’s precedent holding § 1201(a) of the DMCA requires plaintiffs demonstrate that the circumventing technology infringes or facilitates infringement of the plaintiff’s copyright, a/k/a an “infringement nexus requirement." See Chamberlain Group, Inc. v. Skylink Techs., Inc., 381 F.3d 1178, 1203 (Fed.Cir.2004).

It’s hard to fault the Ninth Circuit for finding that Gilder could violate the DMCA even while not violating the Copyright Act; major media companies bought Congress fair and square and paid those public servants to pass the broadest copyright laws they could. At the same time, though, what sense does it make to hold someone liable for evading a copyright protection if they are not, in fact, actually infringing upon a copyright? After all, it’s not like we’re talking about some blackmarket program for pirating DVDs; we’re talking about a third-party tool that assists paid WoW users. It may be a form of tortious interference — in my opinion, that depends upon the damage caused to non-Glider users, rather than that baloney about how Blizzard "may" have lost monthly subscriptions due to Glider users completing the game faster — but it’s not the type evil sought to be remedied by the Copyright Act or the DMCA.

It’s possible that this case will be reviewed by the Supreme Court — after all, there’s now a split between two of the most influential circuit courts with regard to copyright, the Ninth Circuit (home of Hollywood and Silicon Valley) and the Federal Circuit (home of the USPTO and Copyright Office and the rest of the federal officers) — but that’s a longshot, even in circuit split cases.

More importantly, which lawyers here are the Paladins, "virtuous defenders of the weak and tireless, unfaltering enemies of the undead," and which are the Warlocks, "masters of the dark arts, devoted to … summoning of demons from within the Twisting Nether?"

I guess that depends upon your view of copyright law.