Chilling Effects Clearinghouse Weather Reports

Twelve Years Under the DMCA at the Electronic Frontier Foundation

David Abrams, Chilling Effects Clearinghouse, March 12, 2010

Abstract: The Electronic Frontier Foundation (EFF) describes multiple instances in which the anti-circumvention provisions of the Digital Millennium Copyright Act have been used to stifle legitimate speech rather than stop pirates.

This EFF white paper describes numerous instances in which copyright holders use the DMCA to stifle free expression and scientific research. In many cases, the threat of civil or criminal penalties delayed the disclosure of information of vulnerabilities and security flaws in software that the copyright owner knew about but had not bothered to fix. In other cases, researchers were prevented from presenting information that would have encouraged the development of more secure systems. The EFF concludes that the anti-circumvention provisions of the law have not been used as Congress envisioned and as a result "the DMCA has developed into a serious threat to several important public policy priorities" including fair use, free expression, scientific research and competition and innovation.

We Don't Need No Stinkin' Court Order. We've Got the DMCA.

David Abrams, Chilling Effects Clearinghouse, March 11, 2010

Abstract: Last month, MySpace sent a DMCA takedown notice to Scribd to remove a document summarizing recommendations on rebuilding a portion of the MySpace website, alleging a copyright violation. Although original intended to stop Internet piracy of creative works such as music and video, this is another example of the takedown provisions of the DMCA being used to avoid the time and expense of obtaining a court order to remove documents that, while possibly sensitive or embarrassing, do not themselves have commercial value.

On February 23, 2010, technology blog TechCrunch posted a document it theorized was sent to it by an "angry" or "former" MySpace employee. The Powerpoint presentation contained in the document described recommendations for rebuilding the MySpace developer/apps platform. TechCrunch posted the presentation on Scribd, a social publishing web site and linked to it from its story on the document. The document is arguably a trade secret and the person who sent it to TechCrunch could be subject to criminal penalties for revealing it and also could be sued by MySpace for damages. TechCrunch, however, did not steal the document and MySpace would normally need to obtain a court order to stop the publication of the information and get the document returned - an expensive and potentially time-consuming procedure. Instead, MySpace chose to invoke the takedown provisions of the DMCA to have the document removed from Scribd within a day. Microsoft tried the same strategy recently to remove an embarrassing document from Cryptome.org website.

Unlike the procedure to obtain a court order, which would provide TechCrunch the opportunity to argue that the document no longer was a trade secret or that it had a fair use defense to permit publication of the information, the DMCA takedown procedures operate on a shoot first, ask questions later basis. These procedures may make sense where someone posts a song or a movie for download which deprives the copyright owner of income it normally would receive for the sale of the material; however, where the information is arguably of public interest, the DMCA allows the copyright holder to circumvent the normal weighing of interests that a court would make in deciding whether to issue a preliminary injunction to stop distribution of the document.

YouTube Takes Down then Reinstates Video by Artist Using His Own Song

David Abrams, Chilling Effects Clearinghouse, March 9, 2010

Abstract: Assemblage 23 (A23) frontman Tom Shear reports that YouTube removed the first video in his band’s planned video diary of their American tour at the request of Warner Music Group. The irony in the takedown is that the video included only A23’s own song and its purpose was to promote the band’s US tour and its new album. YouTube has since reinstated the video.

Assemblage 23 (A23) frontman Tom Shear reports that YouTube removed the first video in his band’s planned video diary of their American tour at the request of Warner Music Group. The irony in the takedown is that the video included only A23’s own song and its purpose was to promote the band’s US tour and its new album. YouTube has since reinstated the video.

In the first installment of a planned video blog of their American tour, A23’s Tom Shear recorded a nine-and-one-half minute video describing the band’s plan to connect with its fans through social media during the tour. Mr. Shear invites fans to follow the band on Twitter, friend him on Facebook and follow the band via a video diary he plans to update during the tour on its YouTube channel, A23CompassTour2010. The final five minutes of the video is a montage of the band’s just-completed European tour set to the song Impertinence from their new album Compass.

Shortly after posting the video, YouTube removed it, apparently at the request of Warner Music Group even though Warner only acted as a distributor of his record label and even that relationship ended last year. Mr. Shear notes that this is “one of the dozens of completely tone-deaf actions the record industry has taken in an attempt to combat piracy that actually ends up hurting the same artists they claim to want to protect.” It appears that someone came to their senses (or possibly overrode a decision by YouTube's automated blocking tools), because the video is again available on YouTube. Nevertheless, this is an example where the band would have been well served by disputing YouTube's automated system's decision to block the video or by filing a counter-notice if Warner sent YouTube a DMCA takedown notice.

Careful What You Download - What You Don’t Know Can Cost You

David Abrams, Chilling Effects Clearinghouse, March 5, 2010

Abstract: A second federal appeals court has now eviscerated the “innocent infringer” defense for copyright infringement, this time for residents of Louisiana, Mississippi and Texas. The court concluded that, as long as a copyright notice appears on a physical CD somewhere, anyone who illegally downloads that music from the Internet is subject to the higher $750 statutory minimum damages; even if that person believed he or she had permission to download the material. In 2005, a different appeals court made a similar ruling affecting residents of Wisconsin, Illinois and Indiana.

Under current U.S. copyright law (17 U.S.C. 504), the owner of a copyrighted work found to be infringed may seek either "actual damages" equal to the financial loss he or she suffers as a result of the infringement or "statutory damages," of $200-150,000 per work infringed. Where the actual damages are small or where it is difficult to prove the amount of harm, the copyright owner will choose the statutory damages. This is especially true in the case of infringement caused by downloading a song without permission. While the actual loss to the copyright holder per song might be as little as $0.70 (based on the cost of downloading the song from iTunes), the federal copyright statute requires a minimum statutory penalty of $750 per song and a judge or jury may increase that penalty up to $30,000 (or even up to $150,000 per song if the copyright owner proves that the infringement was committed willfully).

Clearly these are very serious penalties, particularly since in the peer-to-peer context, it is rare to be sued for infringing only a single song, so even the minimum statutory damages can reach into the thousands or tens thousands of dollars for a defendant found liable for copying only a handful of songs. In addition, it is no defense to claim that you did not know the songs were protected by copyright or that you believed you had permission to download the songs. Copyright infringement is a strict liability offense, all the copyright owner needs to prove to obtain damages is that the work was protected by copyright, that you made a copy of the work and that he or she did not authorize that copy. It does not matter that you did not intend to do anything wrong.

To ameliorate somewhat the extreme damages that could result to an innocent infringer, Congress provided that if the defendant can show he or she “was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200 [per work infringed].” As the House Committee on the Judiciary explained in its 1976 report on the law, the purpose of including this provision in the statute was "to protect against unwarranted liability in cases of occasional or isolated innocent infringement" while "preserv[ing] its intended deterrent effect." In 1988, Congress amended copyright law to make placing a notice of copyright on sound recordings optional; however, it also added a section which eliminated the innocent infringer reduction to the minimum statutory damages if "a notice of copyright in the form and position specified by this section appears on the published phonorecord or phonorecords to which a defendant in a copyright infringement suit had access."

In the recent decision by the Court of Appeals for the Fifth Circuit (with jurisdiction for federal appeals in Louisiana, Mississippi and Texas), the defendant Whitney Harper was accused by several music companies of sharing their copyrighted sound recordings on a peer-to-peer network. Harper, who was between 14 and 16 when she downloaded the songs, had claimed that she did not understand how file sharing worked and that she believed that listening to music on a file sharing network was no different than listening to an Internet radio station. A lower court found that Harper had infringed 37 of the plaintiffs’ audio files, but that a jury could find that her claim that she was unaware that this constituted copyright infringement was plausible, subjecting her to "innocent infringer" statutory damages of $200 per song ($7,400 total) rather than $750 per song ($27,750 total). On appeal, the Court of Appeals reversed the lower court’s ruling, concluding that because there was no disagreement that the original CDs from which the songs had come from contained a copyright notice, Harper could never claim the innocent infringer defense. The court held that as long as there was a CD somewhere with the copyright notice on it that Harper could have sought out and looked at, she was responsible for the higher $750 minimum per song damages. The Court of Appeals for the Seventh Circuit came to the same conclusion in a similar case in 2005. Both courts assumed without discussion that the word "access" in the statute refers not to the defendant making an illegal copy of the song from a CD with a copyright notice on it, but merely that a copy of the CD with the notice on it exists in a store somewhere in the country. In addition, neither court considered the changes in technology between 1988 and 2005 (or 2010) that have made the primary method of music distribution electronic rather than physical.

The problem with these decisions is that they eliminate innocent infringer protection for all music downloads, thus ignoring Congress' stated purpose in creating the defense. With few exceptions, every commercially released song is available somewhere on a CD bearing a proper copyright. However, people no longer obtain all their music by buying a CD. Consumers download songs from iTunes, other online music stores and from artists' and publishers’ web sites never seeing the original CD. Consumers do not think they are infringing not because they do not know the songs are subject to copyright, but because they believe they have permission to download the copy. However, there is no way, short of becoming an expert in copyright law or hiring a lawyer, for them to verify this. Web sites such as http://musicmp3.ru/ sell music that is likely infringing while assuring their customers that the songs are legal to download (but only under Russian law). If consumers can prove they had a sincere and reasonable belief that they were not committing infringement, they should be protected from the full brunt of the law. The appeals courts’ rulings preclude this, putting the burden on users to somehow determine not only whether they have permission to download a song, but also whether the song has been properly licensed from its copyright holder in the first place.

Microsoft Invokes DMCA to Take Down Cyptome.org, then Relents

David Abrams, Chilling Effects Clearinghouse, February 25, 2010

Abstract: Network Solutions has taken the Cryptome website down after receiving a DMCA takedown notice from Microsoft claiming copyright infringement. Microsoft objects to the publication of a handbook provided to law enforcement describing what information the service keeps on its users and what legal steps are required to obtain that information. However, its takedown of the well-known web site may have effect of increasing the number of people who read the document.

Network Solutions has taken the Cryptome website down after receiving a DMCA takedown notice from Microsoft claiming copyright infringement. Cryptome collects "documents for publication that are prohibited by governments worldwide, in particular material on freedom of expression, privacy, cryptology, dual-use technologies, national security, intelligence, and secret governance”. It has been in operation since 1996. One class of documents posted on the site are procedure manuals provided by ISP and hosting services to law enforcement describing what information the service keeps on its users and what legal steps are required to obtain that information.

Cryptome obtained and posted Microsoft’s Global Criminal Compliance Handbook and subsequently refused Microsoft’s request to remove the document. Microsoft then invoked the takedown procedures of the Digital Millennium Copyright Act (DMCA), sending a takedown notice to Cryptome’s hosting provider, Network Solutions, claiming copyright infringement late on Monday, Feb. 22. Network Solutions then sent the registered owner of the web site, John Young, a notice that it would “disable your Web site on Thursday, February 25, 2010, unless the dispute between the Notifying Party and yourself is resolved.” Young refused to remove the document, citing what appears to be a fair use/news reporting defense, that the “document provides important information for the public to understand how Microsoft violates the trust placed in it by customers to protect their privacy and confidentiality of personal data and usage of Microsoft products.” On Wednesday, Feb. 24,Young sent a counter notice to Network Solutions contesting Microsoft’s claim of infringement. Network Solutions then forwarded the counter notice to Microsoft, but apparently chose to disable the Cryptome web site immediately rather than wait until the deadline specified in its initial notice to Young. Microsoft now has two weeks to file a lawsuit against Young. If it does not, Network Solutions will be required to restore the site under DMCA rules.

In the meantime, however, Young has republished the Cryptome web site at http://cryptomeorg.siteprotect.net/ minus the contested document. Young argues that Microsoft is:

Improper[ly] us[ing] copyright to conceal from its customer violations of trust toward its customers. Copyright law is not intended for confidentiality purposes, although firms try that to save legal fees. Copyright bluffs have become quite common, as the EFF initiative against such bluffs demonstrates.

Whether true or not, the result of Microsoft’s action in having a such a high profile web site taken down is only likely to make more people aware of the very document it is trying to keep confidential. The manual is currently available on Wired’s web site and the publicity surrounding the takedown will likely cause more people to seek it out to see what the fuss is about.

Update: Perhaps realizing that it could not contain release of the document (particularly given its newsworthiness in light of the Cryptome.org takedown), Microsoft informed Network Solutions this morning (Feb. 25th) that it was withdrawing its takedown notice . The site is now back up at its original URL.

Bloggers Cry Foul in Google Music Blog Takedowns

David Abrams, Chilling Effects Clearinghouse, February 17, 2010

Abstract: Music bloggers are up in arms over Google's removal of six popular music blogs. Google claims it deleted the blogs after receiving multiple Digital Millennium Copyright Act (DMCA) takedown notices alleging that the blogs allowed readers to download copyrighted works without the owner's permission. The dispute appears to arise partially from an aggressive stance taken by Google in response to industry takedown notices and partially from a lack of understanding of DMCA takedown procedures by the blog owners.

Music bloggers are up in arms over Google's removal of six popular music blogs, I Rock Cleveland, It’s a Rap, Living Ears, To Die By Your Side, Masala and Pop Tarts, from blogging sites it owns

Music bloggers are up in arms over Google's removal of six popular music blogs, I Rock Cleveland, It’s a Rap, Living Ears, To Die By Your Side, Masala and Pop Tarts, from blogging sites it owns. Google claims it deleted the blogs after receiving multiple Digital Millennium Copyright Act (DMCA) takedown notices alleging that the blogs allowed readers to download copyrighted works without the owners’ permission. (Google has since reinstated one of the blogs, Masala, describing its deletion as a mistake.) The blog owners complain that the blogs were deleted before they received notice of the violations and at least one blog owner insists that he had permission to post all of the music files on his blog from the copyright holders.

This dispute appears to arise partially from an aggressive stance taken by Google in response to industry takedown notices and partially from a lack of understanding of DMCA takedown procedures by the blog owners. Under the provisions of the DMCA, a service provider like Google can protect itself from liability for copyright infringement if it removes infringing material quickly when notified by a copyright holder. It must also notify the individual who posted material that it may file a counter-notice protesting the removal. If a counter-notice is filed, the service provider then must forward it to the complaining party. If the complaining party does not file a claim in court in 14 days, the materials must be restored to the Internet. The statute requires the complaining party to clearly identify the material it claims ownership of and provide “information reasonably sufficient to permit the service provider to locate the material” claimed to be infringing. A service provider who follows these procedures is also protected against a lawsuit from the individual whose material was taken down. Note that the service provider does not have any responsibility to determine who is correct or if the material actually is in violation of the complaining party’s copyright. It merely has to mechanically follow the procedures in the DMCA to protect itself from legal liability from either the complaining party or the individual that posted the material. While the procedure described above requires the service provider to remove only the offending item upon receipt of a proper takedown notice, the DMCA does require the service provider to have a policy in place to terminate the accounts of individuals who are repeat infringers. However, neither the DMCA nor Google define what constitutes a repeat offender. Google only states that “[w]hen we receive multiple DMCA complaints about the same blog, and have no indication that the offending content is being used in an authorized manner, we will remove the blog.”

One complaint by the bloggers is that the takedown notices forwarded to them by Google do not provide enough information for them to file a proper counter-notice. In particular, many of the notices only provide the Uniform Resource Locator (URL) of a blog page, which may contain links to dozens of files, but fail to identify either the copyrighted work or the location of the allegedly infringing file as required by the DMCA. Nevertheless, Google accepts the arguably faulty takedown notice as valid notification of infringing behavior by that blog owner. Even if the blogger is able to identify and delete a complained-of link, it appears that he or she is considered an infringer, thus coming closer to being labeled a “repeat offender” subject to account termination. Since there appears to be no way to clear Google's infringement counter, even a blogger who attempts to only post noninfringing material and immediately removes links to an infringing file when notified is likely to find his or her account terminated for repeat infringement over a long enough time period.

On the other hand, bloggers harm themselves by failing to file counter-notifications when they are accused of infringement erroneously. Indeed, Google warns bloggers that they must file a DMCA counterclaim to avoid having their account terminated. If a blogger files a proper counter-notice and the complaining party then fails to file a lawsuit, the material must be reinstated and Google should not count the incident as an infringement leading to repeat offender status.

Intel Corp. Sues Mexican News Outlet (For Publishing "Intel")

Research Staff, Chilling Effects Clearinghouse, November 19, 2009

Abstract: Another hat tip to Techdirt for bringing our attention to Intel Corp.'s recently filed suit against the publishers of Mexico Watch, a digital newsletter whose URL is latinintel.com, and whose parent company does business as Americas News Intel Publishing.

Intel Corp. has alleged both confusion-based infringement and trademark dilution against the company, although its website is clearly branded in ways that would easily distinguish it from the computer chip maker and its use of the word "intel" to mean "intelligence" is in common use.

"This is a time when we need good intel, but we're not getting it."
--Tom Clancy, in _The Sum of All Fears_ (1991)

Intel Corporation has filed a trademark infringement suit against Americas News Intel Publishing in the Northern District Court of California. The publishing company clearly describes its Mexico Watch newsletter as an "intelligence service on business, politics, and economy." In that context, as Michael Masnick notes above, the possibility of consumer confusion between their business and Intel Corp.'s seems unlikely. Ordinary trademark infringement is based on consumer confusion and generally if two businesses are unrelated enough (and their uses of a similar trademark are different enough), then no infringement will be found. For instance, we can all deal with a computer company called "Apple" and the Beatles' use of "Apple Records" without collapsing into a steaming heap of befuddlement.

United States federal trademark law does provide another kind of protection for trademark owners whose marks are qualified as legally "famous," however: protection against trademark "dilution," which does not require any consumer confusion. The Trademark Dilution Revision Act of 2006 (15 U.S.C. section 1125(c)) defines two kinds of "dilution": tarnishment, where the similarity between a famous mark and another use of the mark harms the reputation of the famous mark, and blurring, where a use of a mark "impairs the distinctiveness of the mark." (For more on dilution see Apple Steps up to Podium with TM Claims.)

Intel's correspondence with Americas News Intel Publishing, posted here, alleges that latinintel.com blurs the distinctiveness of their mark.

Americas News Intel Publishing hired a lawyer, who sent the following response, also published on their home page. We think it's worth quoting at length:

More importantly, the word 'intel' as used in the intelligence and information services sectors may not be trademarked. The word intel is an abbreviation for intelligence in the English language, and can be found in dictionaries of record such as the Oxford English Dictionary and Merriam-Webster's Collegiate Dictionary. And the use of the word intel as an abbreviation for intelligence is common in public discourse. . . . No sum of money spent to secure the public identification of the word 'intel' with products produced by Intel Corporation can withdraw the word, as it is used in standard English, from the public domain.

The argument made there, that words used descriptively or generically to describe a product may not be trademarked in that product's sector, is a valid one. For instance, if I owned some kind of "apple" trademark, I couldn't keep sellers of that round red or green fruit from using the word "apple"—or consumers really would get confused!

We think the Oxford English Dictionary gives pretty reliable intel, but nonetheless, the point may be moot: the Mexico Watch newsletter has already ceased publication and Americas News Intel Publishing, now facing a lawsuit from Intel, describes its own future as uncertain.

Update - 2/11
Americas News Intel Publishing isn't giving up without without a fight. According to a representative, the company is taking Intel to the mat in the Northern District of California thanks to pro bono assistance and public donations. Said the rep, "[W]hether or not the company is publishing, the right to stake a private claim on a public-domain English-language word is a legal issue, not an operational one." The case is scheduled to proceed in March. Stay tuned!

Who Dat Trademark Belong To?

Blake Reid, Chilling Effects Clearinghouse, February 3, 2010

Abstract: It's sunny and warm in south Florida as the New Orleans Saints head to the Super Bowl for the first time in the team's 42-year history. Back in New Orleans, though, a cold front is blowing through as the National Football League tries to use intellectual property claims to lock down "Who Dat," a seminal New Orleans slogan adapted by Saints fans to cheer on the team.

In January, the NFL sent a cease and desist letter to New Orleans T-shirt shops Fleurty Girl and and Storyville, ordering them to stop selling shirts emblazoned with the "Who Dat" slogan. The NFL claimed trademark rights in the slogan, arguing that the shirts implied affiliation with the team. After public outcry led Louisiana governor Bobby Jindal to consider a lawsuit against the league, the league backed off, acquiescing to shirts emblazoned with "Who Dat" in black and gold, the Saints team colors. The league nonetheless maintains that clothing emblazoned with the slogan and the Saints team logo, a fleur-de-lis symbol, infringes the team's trademark rights. That claim, however, may rest on dubious legal ground.

History of "Who Dat" and the Fleur-De-Lis

The "Who Dat" slogan has a long and rich history of use in New Orleans dating back to minstrel shows and vaudeville acts in the late nineteenth century, possibly beginning with the song "Who Dat Say Chicken In Dis Crowd" by Paul Laurence Dunbar and Will Marion. Louisiana college and high school sports teams, including Southern University and Patterson High School, have used the slogan as a supportive chant since the 1970s. The chant didn't become associated with the Saints until 1983, when fans began using the chant at games, leading singer Aaron Neville and Saints players to record a version of "When the Saints Go Marching In" featuring the chant.

The fleur-de-lis has an even longer history, dating back many centuries prior to its adoption as the Saints logo. Many modern sports teams, schools, and organizations as part of their logos, including the New Orleans Hornets (of the National Basketball League), the Fiorentina soccer team, the University of Louisiana at Lafayette, Saint Louis University, Washington University, several fraternities, and even the Boy Scouts. Perhaps more importantly, the symbol has also served as symbol for the city of New Orleans, particularly since Hurricane Katrina devastated the city in 2005.

Trademark Law

In light of the storied history of "Who Dat" and the fleur-de-lis, some believe that the marks belong to the public - and they are probably right. Trademark law serves to help consumers identify the source of products and services by protecting marks associated with a particular source, and at the same time protects the investment of a company's "goodwill" into its brand. But generic marks, which may indicate many possible sources, or no source at all, aren't protected under the law, because they don't help identify the source of goods. The widespread use of "Who Dat" and the fleur-de-lis by various institutions throughout New Orleans, Louisiana, and the rest of the country over the past century arguably makes them generic, and thus unprotectable, because the use of the marks doesn't signify a particular source. That is, a shirt with a fleur-de-lis or "Who Dat" on it doesn't indicate that the NFL or the Saints necessarily made it.

In fact, neither the NFL or the Saints directly manufacture much, if any, of their "official" merchandise; since 2001, almost all NFL clothing has been manufactured by Reebok (an arrangement that the Supreme Court may deem illegal under antitrust law). Because the ornamental use of a team logo on clothing doesn't indicate the source of the clothing (i.e., Reebok, and not the NFL or the team), the league arguably doesn't even have the right to exclude others from making merchandise with team logos (though some courts have held to the contrary). By wearing Saints-branded clothing, fans may merely be showing their support for the team without knowing or caring who is producing the merchandise - and the NFL arguably doesn't have a right to profit from that support, except when fans buy the merchandise from the league itself.

Even if the NFL can stop vendors from selling merchandise that explicitly references the Saints, the league doesn't have much of a leg to stand on when it comes to "Who Dat" and the fleur-de-lis. The goodwill surrounding those marks has been developed not by the NFL, but by the people of Louisiana and New Orleans, including Saints fans - and that goodwill arguably belongs to them. Louisiana Attorney General Buddy Caldwell agrees, calling the idea of the NFL and the Saints claiming either mark as a protectable trademark "ridiculous." While the NFL may have built up goodwill surrounding the league and its teams, "Who Dat" and the fleur-de-lis have arguably become a part of the public lexicon, and thus usable by everyone, not just the NFL.

The NFL and IP Bullying

Regardless of the validity of its claims, the NFL should think carefully before going after "Who Dat Nation" again - its residents aren't easily scared away. U.S. Senator David Vitter (the "Junior Senator" of the Nation) publicly called the league out, threatening to print and sell T-shirts with the phrase "WHO DAT say we can't print Who Dat!" And the NFL should also beware the Streisand effect; publicity of the league's cease and desist letter has driven customers in droves from the NFL's official outlets to Fleurty Girl's doorsteps. According to Fleurty Girl owner Lauren Thom, "What started out as a letter that scared the bejesus out of me, has turned out to be the best thing ever for my business."

Of course, the NFL is not likely to be dissuaded; the league and its members are notorious for making overbearing intellectual property claims, such as going after an Indianapolis church for hosting a Super Bowl party for young parishioners. (Many organizations were forced to rename their gatherings as "Big Game" parties in response.) Saints quarterback Drew Brees even sued his mom for using his picture in a political campaign. And the league used the Digital Millenium Copyright Act to attack Chilling Effects founder Wendy Seltzer for posting a fair use clip of the league's infamously overbearing copyright notice.

The NFL and the Saints reap tremendous benefits from the public: the goodwill associated with the long-standing Louisiana symbols of "Who Dat" and the fleur-de-lis have made the Saints more popular than ever, and the taxpayers even pay for the Saints stadium. By going after Saints fans, though, the league risks biting the hand that feeds. Instead of trying to chill New Orleans, the NFL should embrace the community that has rallied around the Saints. As they say on Bourbon Street...

"Who dat? Who dat? Who dat say dey gonna beat dem Saints? Who dat? Who dat?"

Hopefully not the league itself.

Filmmakers Sued for Fictional Patent Infringement?

Rebecca Schoff, Chilling Effects Clearinghouse, December 3, 2009

Abstract: Legal reporter Eriq Gardner over at THR, Esq. has brought our attention to a lawsuit filed by Global Findability, Inc. against Summit Entertainment, makers of the sci-fi thriller Knowing, for patent infringement, apparently because the characters in the film are depicted using a string of numbers (including date, latitude, and longitude) to indicate the time and location of an event.

Let's say that there's still an active patent on automobiles—is it okay to film someone driving an automobile and put that in a movie? How about a business method patent on a way to monitor investments—can Steven Spielberg film a riveting action blockbuster about investment bankers using that very method? You'd think the obvious answer should be yes, but there's a company in Washington, D.C. that seems to disagree.

Global Findability, Inc. describes itself as a "geospatial information company." They hold a patent for what they call the "Geocode service," which "creates a single geospatial code that provides location, local time, global time and other geospatial information." In a complaint filed in U.S. district court, Global Findability alleges that Summit Entertainment and their partners have infringed the Geocode patent by "making, using, importing, offering for sale and/or selling in the United States, without authority, the Film that embodies the invention claimed in the '286 patent and/or . . . by actively inducing or contributing to infringement of said patent by others."

The allegedly infringing film is Knowing, the thriller starring Nicholas Cage, in which [SPOILER ALERT] aliens telepathically whisper a string of numbers to entranced children. The numbers turn out to be a series of dates, locations, and body counts for global disasters, including the final destruction of the world, which the aliens accurately predict using a method that was never quite clear to this viewer.

The filing of the complaint has caused consternation amongst commentators (see the Techdirt coverage, e.g.) because the wording of the complaint, though general, seems to imply that the so-called "embodiment" of the invention that infringes the patent is the representation of the characters using a string of numbers—or rather, pretending to use a string of numbers, because, of course, they don't really use the numbers to find any locations—for that, they actually used the movie SCRIPT. In other words, if we're reading the complaint correctly, Global Findability is claiming that the filmmakers infringed the patent by making and selling the film, not by making and selling the patented device or method--which sounds a little. . . alien. . . to patent law.

Given the role of aliens in the production of the string of numbers in the film, it's not clear that the film even represents Geocode being used. Take a look at the patent, number 7,107,286, posted here. No aliens are claimed as an element of the invention. Similarly, you'll notice several elements in the patented invention missing from the film--so many missing elements that an analogy between the alien/child duo and the patented system would seem to belittle Geocode to an embarrassing degree, making the complaint doubly perplexing.

Nor does the fate of the characters who use the number string suggest that the film promotes the actual use of such number strings or the infringement of any potential patents thereon (everyone suffers total annihilation, except for two of the number-chanting kids, who are saved by. . . well, just see the film if you must know.)

Generally speaking, a finding of patent infringement requires that the allegedly infringing device or method perform all of the elements of at least one of the claims in the patent. For more on patent infringement see Patent.

More to the point, patent law gives the holder of the patent the exclusive right to make, use, and sell the patented invention. Talking about the patented invention or fictionally representing the patented invention should be okay. In fact, bringing inventions into the public eye is one of the central justifications for patent law. We give inventors a monopoly on the production, use, and sale of their inventions for a fixed amount of time and in return the inventor must give the public a detailed description of his invention, how it works, and the best possible way to make it. Patents are published and made available to the public precisely because we want people to think about new inventions, talk about them, and even find a way to make them better. Scholars must be free to write about patented inventions and, yes, science fiction filmmakers must be free to imagine what might happen if someone used them, even if what they imagine is the complete incineration of the world.

Something Smells Off: Getty Images Sued Over Silhouette of Air Freshener

Research Staff, Chilling Effects Clearinghouse, November 23, 2009

Abstract: Getty Images has been sued by Car-Freshner Corp. for trademark infringement, dilution, and unfair competition over stock photographs of cars that include images of tree-shaped air fresheners hanging from the rear-view mirror.

Rebecca Tushnet's 43(B)log reports, via Seattle Trademark Lawyer, that Car-Freshner Corp. has sued the online photo-licensing clearinghouse Getty Images for allegedly distributing photos of car interiors that include tree-shaped air fresheners. Seattle Trademark Lawyer posted the complaint here.

Car-Freshner Corp. has a litigious history with respect to its trademarks of an "absorbent body impregnated with a perfumed air deodorant" in the shape of a pine tree. In 2005, Car-Freshner Corp. sued novelty greeting card company Corndog (and Urban Outfitters, who distributed the product), for producing a scratch-and-sniff Christmas card that played on the familiar pine-tree fresheners. According to the Business Journal, the card included the following text on the back:

The differences between these unusual cards and an actual car air freshener are: (1) our cards glow in the dark and (2) give off a weird, sticky pine smell only when you scratch and sniff them, instead of all the damn time, until you get car sick and throw up.

The scrappy card company argued that the cards were a parody of the ubiquitous air fresheners (and thus not likely to be confused with actual products of Car-Freshner Corp.), but the court never got to judge the case on the merits. The Austin-based Corndog ran out of money for attorney's fees and was forced to settle when it lost the fight to keep the case local. (See coverage in The Austin Chronicle.)

Car-Freshner Corp. also settled a lawsuit against Old Navy last year over t-shirts featuring images of pine-tree air fresheners. In that case, however, Car-Freshner could have shown registration of their trademark pine-tree-silhouette for use on t-shirts--and vigorous efforts to enter the car-freshener-apparel market. (The Car-Freshner website has a clothing store featuring such products as this charming Halloween costume. One size fits most!)

The claims in the suit against Getty Images are difficult to evaluate in part because it isn't clear what use has been made of the images (and therefore whether such use is confusing to consumers, or, if the Car-Freshner brand is legally "famous," whether such use threatens to dilute the brand). Use not as a mark -- that is, not to identify the source of photographs, but as an element of background scenery -- would not be a "trademark use," and so couldn't be an infringement.

In trademark law, the use made of the trademark (or confusingly similar image) does matter . . . unless the real-world costs of litigation overpower the aroma of a dubious claim.