Don’t Even Think About It: Negative Ad Words and Trademark Injunctions

A U.S. District Judge has enjoined a defendant from using a term for its business. That is not an unusual result. The one part of the order that may be of note is that the defendant is not allowed to purchase ad words using the plaintiff’s mark and the defendant must use negative adwords as well on search engines. Here is the pertinent language:

[Defendant is enjoined and restrained] from purchasing or using any form of advertising including keywords or “adwords” in internet advertising containing any mark incorporating Plaintiff’s Mark, or any confusingly similar mark, and shall, when purchasing internet advertising using keywords, adwords or the like, require the activation of the term “ORION” as negative keywords or negative adwords in any internet advertising purchased or used.

So here the mark is Orion. The defendant has been found to have infringed. The normal range of prohibited future activities is in place. But in addition, the defendant must take steps to prevent its appearance on a search engine results page when someone is looking for the plaintiff’s services. The court explains:

For purposes of this court order, a “negative keyword” or “negative adword” shall mean a special kind of advertiser keyword matching option that allows an advertiser to prevent its advertisement from appearing when the specific terms are a part of a given user’s internet search or search string. It does not infer that the Defendant may use the specified negative keywords or adwords for any other purpose.

Now it seems the defendant was rather blatantly trying to use the plaintiff’s mark (counsel appeared but an answer was not filed). Yet, if the plaintiff’s mark and business match the litany of strength that the court offers (“ranked fourth in the nation among community bank holding companies and thrifts for outstanding performance,” “In June of 2006, Plaintiff was ranked as Florida’s Top Performing Community Bank for the second consecutive year, and was also ranked among the nation’s top performing bank holding companies,” “In June of this year, American Bankers Association’s (ABA) Banking Journal, ranked Orion Bancorp, Inc., fifth in the nation for outstanding financial performance”), wouldn’t a competitor want to be able to appear when someone searched for the premiere bank of the region? Shouldn’t that be allowed?

Given the facts of this case, the defendant may have behaved so badly that such an option is not merited. Still as a general matter, one might infringe but still be allowed to compete. Requiring active steps so that one’s business does not appear in a search result goes a bit far. In a world of virtual shopping, attention is a key lever in building business. Many of the facts of this case point to infringement. But the negative adword limitation essentially stops someone from competing online. The concern is that the smaller player will barely be able, if at all, to get in someone’s face and say yes the larger company exists but so do we.

As larger matter, the Dinwoodie/Janis Dogan/Lemley use debate may inform this issue. Still, if I remember correctly, Dinwoodie and Janis think comparative advertising is a good thing but that use is not the way to protect it. Rather they offer that better injunctions will address the contextual issues. Rebecca Tushnet’s Gone in 60 Milliseconds: Trademark Law and Cognitive Science also merits a read as it questions harms based on association which seems to be part of the negative adwords solution here.

cross-posted at Madisonian

Image: Orion constellation in Uranographia
Source: WikiCommons
Author: Johannes Hevelius

Posted by Deven Desai at 06:50 PM | Comments (3) | TrackBack

Are Administrative Patent Judges Unconstitutional?

The New York Times has run a feature article about my colleague John Duffy, who has written a very influential paper on the appointment of patent judges. John's paper, Are Administrative Patent Judges Unconstitutional?, is available at SSRN. From the abstract:

As amended in 1999, 35 U.S.C. § 6 authorizes the Director of the Patent and Trademark Office (PTO) to appoint all administrative patent judges of the Board of Patent Appeals and Interferences. That method of appointment is almost certainly unconstitutional, and the administrative patent judges serving under such appointments are likely to be viewed by the courts as having no constitutionally valid governmental authority. The full extent of the problem was revealed in a recent statement to the press by a PTO spokeswoman, who disclosed that nearly two-thirds of the agency's administrative patent judges were appointed under the new statute. If administrative patent judges are being randomly assigned to three-judge panels, then a simple probability calculation shows that more than 95% of Board panels are likely to include at least one unconstitutionally appointed judge.

According to the New York Times:

Law professors are sometimes influential, but in a general way. Their insights can help shape the law, over time and at the margins.

But John F. Duffy, who teaches at the George Washington University Law School, is a different kind of law professor. He has discovered a constitutional flaw in the appointment process over the last eight years for judges who decide patent appeals and disputes, and his short paper documenting the problem seems poised to undo thousands of patent decisions concerning claims worth billions of dollars. . . .

The problem Professor Duffy identified at least arguably invalidates every decision of the patent court decided by a three-judge panel that included at least one judge appointed after March 2000.

John's paper began as a blog post. It is now a short paper on SSRN. It is quite an achievement to turn an entire field upside down in just 11 pages!

Posted by Daniel J. Solove at 01:51 AM | Comments (2) | TrackBack

Remember Invisible Ink? How About Vanishing Ink?

CNET reports that PARC (formerly Xerox Parc) the folks who have had a large hand in "laser printing, distributed computing and Ethernet, the graphical user interface (GUI), object-oriented programming, and ubiquitous computing" have invented vanishing ink. For those interested in the environmental side of things, it seems that making ONE SHEET of paper requires "about 204,000 joules" or "about the same amount of power required to run a 60-watt light bulb for an hour." Recycling the paper requires "about 114,000 joules." Printing on either new or recycled paper takes about another 2,000 joules.

If PARC's technology is successful, the ink fades out in 16 to 24 hours. One can then reuse the paper. If one wants to run the paper through the printer before the ink has vanished, the printer can erase it. Here's the key: erasing and printing requires about 1,000 joules; so half the energy of printing in general. Using the vanishing ink to print on blank paper requires only 100 joules.

So think about the menus, memos, maps, etc. that we use and then discard or recycle depending on whether a recycle bin is available. Now the paper can be reused. The energy cost of using obtaining a usable, blank paper is incurred once. And if one waits to print, the energy cost is even less. There is, however, a possible catch here: "The paper and the printer will be a little bit more expensive than their conventional counterparts." So what is a little bit? Who knows? Given how expensive printing is right now this whole thing could simply shift money from energy to toner.

Still there are some things about PARC's development that make it interesting from a law and policy perspective as well. PARC's success stories are famous in part because PARC was not so great at making money on them (that GUI you use is one of them). Still, Xerox's committment to a think tank where people ponder the future and pursue basic science "to create 'the architecture of information'" seems to have paid off. In its current incarnation (it is now a whooly owned subsidiary of Xerox), PARC seems to be a bit more focused on licensing and the like. Yet, it had tremendous success before that focus was in place. So are the incentives that are often offered to explain innovation really the full story? PARC's history seems to be an example of a more realistic approach. The business managers at Xerox set up a place which fostered an increase in the number of possible innovations. In some cases, they capitalized on them and in some they did not.

Research purely directed at capitalizing on an invention is limited research. It can of course yield great returns. Still in the words of William Goldman, "Nobody knows anything."

Goldman said that to explain the lie that movie executives know what will be a hit. So too for truly ground breaking or "think outside the box" work. One might argue that the innovator who runs against the current cool way of thinking and doing will naturally be missed by the mainstream because the work is so new that many don't see or understand the work for what it is. (I think Kuhn goes into this idea but someone correct me if I am wrong please). As Frischmann and Lemley have investigated in their piece Spillovers (Polk Wagner has looked at the idea as well and both draw on Kenneth Arrow's work), we should think about creating environments that generate spillovers.

So PARC has recently focused on clean tech and energy. This move did not occur in a vaccuum. Society indicated an interest in energy and the environment. PARC has begun to think about the issue and will of course try to make some money from its work. Still, it may be that PARC will stay with its system of setting a general goal and seeing where the scientists go with it. If Xerox can make money in house it will. If Xerox is better off licensing the technology, it will do that. The question is what will happen if the technology has no clear, immediate purpose? Will it rot somewhere? Will PARC tag it with a patent and try and stop the next Apple from taking something that PARC and/or Xerox don't know how to use? That move would be a way to address the problem of not seeing where the technology applies (remember nobody knows anything), but in a way that says its our ball and no gets to play. All of which brings me the question of time. Perhaps it is the best lever for intellectual property. By keeping the duration of an IP right short, one can at least ensure that works are available for others to play with. Let enough people tinker and something really great may come out like Wikipedia. Keep information locked down, and the innovative cycle is more likely to be stunted. Put differently, as the rest of the world enters the innovation game, maintaining a more nimble system that generates large amounts of creation may be just as, if not more, important than the intellectual property claims that will go with that creation.

Image: Aerial Shot of Silicon Valley and surrounding area
Source: WikiCommons

cross-posted at Madisonian

Posted by Deven Desai at 12:25 PM | Comments (3) | TrackBack

Getting a Tax Refund? Buy A Book – Zittrain’s The Future of the Internet and How to Stop It

Jonathan Zittrain’s new book, The Future of the Internet and How to Stop It, was released today. There is much to recommend in the book and too much to address well in a blog post. Still, having finished it, I can say that it offers many insights.

In short, as Zittrain explains in three principles: “Our information technology ecosystem functions best with generative technology at its core.” “Generativity instigates both within and beyond the technological layers of the information technology ecosystem.” “Proponents of generative systems ignore the drawbacks attendant to generativity’s success at their peril.”

The presentation of the history of generative systems is worth the candle alone. There Prof. Zittrain tracks not only the rise of the Internet as we know it, but cautions us with reminders of early battles in the world of IBM mainframes and AT&T telephones. By framing the issue so that one sees how easily the world of “tethered appliances” could have been our world, Zittrain offers a glimpse of how we could inhabit such a world.

The explanation of the generative pattern captures the way small, powerful, and potentially disruptive technologies allow for great and rapid changes with large upsides, but by their nature foster the possibility of pernicious behaviors when adoption spreads to a general population. When that happens several areas of concern such as cybersecurity, spam, privacy, net neutrality, intellectual property, and more impact the generative internet. (For those unfamiliar with the idea, generative technologies exhibit five characteristics leverage, adaptability, ease of mastery, accessibility, and transferability (p. 71-73); for a related model of understanding some of these ideas I suggest Brett Frischmann’s An Economic Theory of Infrastructure and Commons Management).

The discussions of all these areas alone makes the book worth a read. In addition, it appears that Prof. Zittrain picks up a theme I have started to explore (so I may be projecting here) that may surprise some: the law is not necessarily useful or the best way to address these problems. Rather, just as the Internet grew from community efforts, it may best be governed by such efforts. To be clear Zittrain is no fool. He knows that states, pan-state groups, and large trade or interest groups have roles to play. But he makes a compelling case that just as the Internet grew from individuals and small groups who “identify[ed] and belong[ed]” to the Net, today we need to re-create the Internet community so that people “identify and belong” to it such that they tend to it and allow it to continue to grow. For Zittrain such a shift will harness the efforts of numerous good actors to thwart the bad actors while keeping open room for the unpredicted, innovative, and in a word generative Internet that has provided so much to us thus far.

There is more to say on this one, but for now I'd say buy the book.

cross-posted at Madisonian

Posted by Deven Desai at 02:05 PM | Comments (1) | TrackBack

Marriage Patents: The Algorithm of Love

As some lawyers patented tax avoidance strategies, attorneys started to wonder what would be the next area to be colonized by this form of IP. This patent application suggests some new worries for family law:

The purpose of this invention is to provide an improved method of proposing marriage to an individual. The method of proposing to an individual generally comprising the steps of meeting the individual; exchanging names with the individual; dating the individual (not necessary); drafting a government document having a proposal to marry the individual incorporated therein; and showing the government document to the individual. The government document may be a patent application. The patent application may claim the method by which the proposor will make a marriage proposal to the individual. The proposor could then use the method claimed in the patent application to propose to the individual. The patent application could be the actual marriage proposal.

Some of the details are pretty bizarre:

Where the individual is emotionally connected to a current boyfriend, the inherent problems with such an emotional relationship between the individual and the current boyfriend may be overcome as set forth below. The meeting step 12 may also comprise one or more sub-steps, such as having the individual continuously beat the proposor at electronic trivia in a merciless fashion.

Though this application must be facetious, controversial "business method" patents have been a concern of the Court of Appeals for the Federal Circuit for some time. As it gets ready to consider In re Bilski en banc, hopefully it will keep in mind the points made by satire in the marriage patent app...and the Samuelson Center/PK/EFF/CU brief on the limits of patent law.

Posted by Frank Pasquale at 08:42 PM | Comments (1) | TrackBack

Class Action Against RIAA

So the RIAA may be subject to a class action suit in Oregon. As the folks at Recording Industry v. The People note the 109 page complaint begins by invoking the RIAA's statement that it sometimes catches dolphins when fishing. It is a bold way to show the possible callousness of the RIAA and MediaSentry (the group that helps monitor and identify people to sue and which is also named in the class action suit) but seems a bit reliant on the "see they are evil" idea rather than solid causes of action. I have only scanned the complaint but the other claims could pose problems for the RIAA. The RICO claims and the trespass to chattels claim offer chatter fodder. If nothing else the chattels doctrine which has been questioned if not mocked may end up protecting individuals in these cases. Furthermore, the privacy claims seem to go to property ideas in that once the plaintiff thought something was on her computer (based on alleged acts by the defendants) she spent money to protect her property. With 109 pages there is more to think on but those alone catch attention.

The industry of course says these are old claims and that they will go away. But the AP report notes that much of the case parallels the Oregon Attorney General's case. If so, the claims may have some legs. Plus if this one gets to discovery, the information about how the RIAA and MediaSentry conduct their business could harm their efforts. Most likely a flurry of trade secret and similar claims about "we can't tell or our business will die" or "the bag guys will be tipped off" will be launched to obtain protective orders. And if the acts are somehow legal, the argument could have some merit. Last if the case proceeds one may wonder whether these details will come out or whether the plaintiffs will accept some sort of buy out offer the RIAA will likely make if the case starts to appear to be a loser for it.

Posted by Deven Desai at 03:51 AM | Comments (12) | TrackBack

From Tip to Advance to Bribe

Everyone's heard about the new Radiohead model of using tips to pay for music. Now Jill Sobule is offering another business model:

In January, she asked fans on her website, Jill's Next Record, to donate money before the she makes her next album. In telethon-like fashion, she asked fans to help her reach a goal of $75,000, which would cover studio time, producers, additional musicians and post-production. By March, she had reached her goal and raised over $80,000.

Traditionally, a music label would pay for the recording upfront, but then get paid back from CD sales, and also get a large percentage of royalties. Instead of getting a share of sales, Sobule offers donors tiered prizes for different levels of donation, just like non-profits often do. For example, $10 gets you a digital download, $500 a mention on an instrumental track, $1000 your own theme song, and for $10,000 (which one fan paid) you get to sing on the record. Sobule assures us that post-production can fix being tone deaf.

Would our readers be upset if I offered to mention someone by name in an April post for, oh, I don't know, ten dollars? (I'm sure I'll be overrun by takers.) Would James Grimmelmann, who's critiqued blogola here?

Whatever happens to blogs, it's clear that musicians like Sobule are doing some important innovation in rethinking compensation for content. Consider the fate of rockers OK Go:

After the band's first CD, OK Go was "struggling for every fan we could find, and, frankly, struggling to pay our bills as well," [band member] Kulash said.

The band's first homemadevideo, filmed in Kulash's backyard, was viewed "several hundred thousand times" within a month, he said. "We realized that more people had actually clicked through to this video than had purchased our first record after 18 months of touring," he said. "We now ... sell real records." Without neutral networks, this type of home-brewed promotional campaign would not be available, Kulash added.

I'll be looking for the site for "OK Go's next record;" hopefully they'll include an ode to net neutrality. Their creative genius deserves support.

PS: Here's OK Go's breakout video:

Posted by Frank Pasquale at 05:00 PM | Comments (1) | TrackBack

Who Owns Your Emails, Blog Posts, or FaceBook Pages? How About You?

Dan's recent post about David Lat and Facebook and Bruce Boyden's post about the possible destruction of Nabokov's unpublished novel raise some questions. Who owns your emails, blog entries, FaceBook pages, and so on? What about when you die? Does your family get the material? What if you wanted it destroyed? What if one of your email accounts was one that you did not want your family to see? In general is there a theoretical explanation for whatever position one may take on these questions?
Of course there is (this blog is run by law professors after all).

My forthcoming article Property, Persona, and Preservation examines these questions and argues that the nature of the attention economy in conjunction with labor-based and persona-based property theories support the position that in life a creator has strong claims for control over her intangible creations. But given the way in which such material is infrastructure and can produce spillovers for further creation, control after death has less theoretical support.

Here is part of the abstract:

The intellectual property system has fostered many debates including recent ones regarding how the system affects access to knowledge. Yet, before one can access, one must preserve. Two interconnected problems posed by the growth of online creation illustrate the problem. First, unlike analog creations, important digital creations such as emails and word processed documents are mediated and controlled by second parties. Thus although these creations are core intellectual property, they are not treated as such. Service providers and software makers terminate or deny access to people's digital property all the time. In addition, when one dies, some service providers refuse to grant heirs access to this property. The uneven and unclear management of these creations means that society will lose access to perhaps the greatest chronicling of human experience ever. Accordingly, this paper investigates and sets forth the theoretical foundations to explain why and how society should preserve this property. In so doing the Paper finds that a second problem, which can be understood as one of control, arises.

This Paper is the first in a series of works aimed at investigating the nature and extent of control one may have and/or exert over a work. As such this Paper begins the project by examining the normative theories behind creators', heirs' and society's interests in the works. All three groups have interests in preservation, but the basis for the claims differs. In addition, an examination of the theoretical basis for these claims shows that the nature of the attention economy in conjunction with labor-based and persona-based property theories support the position that in life a creator has strong claims for control over her intangible creations. Yet, the paper finds that historical and literary theory combined with recent economic theory as advanced by Professors Brett Frischmann and Mark Lemley regarding spillovers and the positive externalities generated by access to ideas and information reveal two points. First, these views support the need for better preservation of digital, intellectual property insofar as they are infrastructure and have the potential for spillover effects. Second, although the creator may be best placed to manage and exert control of the works at issue, once the creator dies literary, historical, and economic theory show that the claims for control diminish if not vanish. The explication and implications of this second point are explored elsewhere. This Paper lays the groundwork for seeing that creators may need and have powerful claims for access and control over their works but that these same claims are necessarily limited by an understanding of the nature of creation and creative systems. The dividing line falls between life and death. The life and death distinction that this Paper offers seeks to balance creators' interests in control over a work and society's interests in fostering later expressions and creations of new works. This Paper examines the life side of the line.

Image: WikiCommons
License: Public Domain

Cross-posted at Madisonian

Posted by Deven Desai at 12:00 PM | Comments (4) | TrackBack

More Patent Sanctions

In a recent entry I noted that IP attorneys may want to be a little more careful about aggressive trial practices, because courts are starting to hand out penalties for such acts. We are talking millions of dollars here. It has happened again, and this time the misbehaving attorneys must pay $10 million. And yet again claim construction is the problem.

Apparently DePuy Spine sued Medtronic Sofamor Danek for patent infringment regarding some devices used in spinal surgeries. Medtronic hired Dewey & LeBoeuf to defend. The judge ruled regarding claim construction. Yet, it seems the Dewey attorneys thought the judge was kidding. For Harrington wrote that they "'demonstrated a failure to accept the claim construction governing this case' throughout the trial."

In addition whereas Medtronic claims its attorneys "vigorously defended" the company the judge thought that the line had been crossed. According to the order a defense that is "an attempt to obscure, evade, or minimize," the claim construction ruling and that "sought to take advantage of the technical and legal complexities inherent in this case" was improper. Some of course may think that taking advantage of technical and legal complexities is the definition of an attorney.

As the National Law Journal reports the judge found other behavior was questionable too. Here is a quote from the order "The defendants prolonged the proceedings unnecessarily (thus unduly imposing upon the jury's time), they sought to mislead both the jury and the Court, and they flouted the governing claim construction as set forth by the Federal Circuit." Hmm no more attrition behaviors? That would be a wild shift for IP cases.

So maybe attorneys need to be less aggressive. Maybe the system lets these behaviors through and reform is needed to prevent them. Then again if a company has millions or perhaps billions of dollars of market cap attributed to its intellectual property, little will deter using every tactic possible including paying whatever fines come down the pipe to protect that asset. In addition, when one considers the incentive to bring a strategic law suit to keep a piece of the market for even a few years, these behaviors will continue. Individuals may not always operate under maximizing principles; corporations, however, are much better at staying that course.

Hat tip and thanks to "IP Litigator" for pointing this one out.

Image: WikiCommons
License: Public Domain

Posted by Deven Desai at 12:05 PM | Comments (3) | TrackBack

Jack Approved But Did Everyone Else?

Jack Nicholson appears in an ad for Hilary Clinton (video below). But who approved the ad is a multi- level question. Huffington Post claims “The Hillary Clinton Campaign released a video starring Jack Nicholson today.” The New York Times, however, noted "The video was not posted by the Clinton campaign, and somehow we doubt Mr. Nicholson checked with Mark Penn before choosing the clips." The Times also points out that even in the YouTube arena Barak Obama seems to be ahead. Will.i.am of the Black Eyed Peas released a "video on Feb. 29, and it already has more than 190,580 views. (By comparison, the Nicholson video, which has been out for about 15 hours, has 518 views.)" Hmm maybe it is a sign that these crazy kids are focused on their people not their parents' or grandparents' icon. Take a look at the two ads. The Obama supporting video captures a feeling (uplifting, part of a movement, and of course that means a little disturbing in its fervor) whereas the Clinton supporting video is the leaving generation's icon, by himself, making a negative point.

The Jack ad may be correct that one should see what exactly Obama offers as opposed to Clinton. But then again since when is one qualified to be the President? Job experience? All three, McCain, Clinton, and Obama can't really claim experience: "Well no I have not been President That is why I am running. (In the interviewee's head: Is this question for real? The last guy came in having run a few corps into the ground and lead a state where the governor sort of hangs out.)" Clear plan for the future? "Well it is complicated and folks don't seem to want details which is nice because really how could one claim to figure all that out before one has the job?"

Now back to the ads. Yes the wonderful world of the Internet and YouTube and mashups is ever more upon us and someone will say the MTV is to balme for the YouTube generation's further lack of interest in issues. Maybe but this could be a so it goes moment. Still who approved this stuff?

Did the Clinton Campaign? If so as the Times notes the choice of Nicholson's sinister characters such as The Joker and Col. Jessup for the clips is odd to say the least. The lines in the films ooze irony. In the mashup they are offered at face value as if no one knows those roles in their first context. And no, the ads do not manage to change the context; for if anything Nicholson is known for his wry, dark characters and delivery. Heck just look at the end of the mashup where he says in that Jack voice "I'm Jack Nicholson and I approve this message." His approval is not supposed to be the point for politics; the candidate's is. And now for the part of being an IP professor that drives one a bit nuts. Did the studios approve of the ad? Warner Bros. seems happy to go after Rowling's alleged nemesis. Will it go after Jack? What about Columbia Pictures (A Few Good Men) or Paramount (Chinatown)? I'm not saying they should or that they have a good claim but that has not stopped such acts before. Will they bow to Jack or hold their position and declare his ad to be unauthorized copyright use?

Here is the Jack ad:

And here is the Will.i.am ad

cross posted at Madisonian

Posted by Deven Desai at 03:35 PM | Comments (0) | TrackBack

Tips on Writing for Tips

There's so much free content online that it's often hard for me to justify buying magazines. Critics like William Skidelsky suggest that the free blogosphere is leading to the slow strangulation of serious book reviewing. But I think the two can coexist--and I'm more likely to support the print publications that support the free blogosphere.

For example, I recently subscribed to two print publications (The Atlantic and Bookforum). I did so less to purchase information than to thank each. Here's a few reasons why I think extending the Radiohead model to print might work.

Cheers

As for Bookforum, I'd never seen a print copy of their publication, and I was wary about buying it even when I heard about it online. But when I found they had the enormous good sense to sponsor Alfredo Perez's blog (formerly known as politilcaltheory.info), I wanted to support them in some way. Perez has an uncanny ability to tie together disparate sources of information from all over the web into loosely themed posts. Sometimes there's no theme at all, but every day he comes up with links to hidden gems.

The Atlantic is also supporting a group of bloggers, some very good. Furthermore, the magazine has thrown open some archive vaults dating all the way back to 1857. This is a real national treasure, and I'm glad the proprietors of the magazine decided to go for more of an advertising-based model to support it (rather than try to squeeze out revenues dollar-by-dollar for individual article downloads, ala The Economist).

Jeers

So now that I've praised two publications for their digi-friendliness, let me single out another two that have driven me away from the "pay printosphere" and toward free online publications.

First, though the New Yorker has lots of good content online, woe to anyone who tries to purchase its comprehensive collection of digitized back issues. I got this as a gift last year, and I've yet to extract a single article from this DRM-encumbered nightmare. I've tried it on three different computers, and was defeated every time. I'm sure everything's on the 8 DVD's somewhere, but the whole process has led me to really resent the magazine.

Second, though I find a magazine like Harper's more edgy and interesting than the Atlantic, I'll be linking to the latter a lot more because of its openness. Even for subscribers, Harper's forces you to download pdf's of articles in order to access them. . . and sometimes the text is grainy and hard to read. There's no way for me to provide blog readers with the full text of what I'm quoting.

Conclusions

This may be descending into "what I had for breakfast" blogging, but I think there are some generalizable conclusions. For thoughtful outlets of opinion and criticism, the name of the game should be wide dissemination, not demands for transactional payment destined to become ever more futile and self-defeating in an age of information overload. The model is moving from payment for information to payment for convenience (no need to print out each Atlantic article one-by-one!) and gratitude. Writers, like waiters, will effectively be angling for "tip-like" compensation to supplement whatever ad revenue their sites can generate.

Though some may lament the loss of revenue here for writers, perhaps this model better reflects the contributions of the audience to the success of a work. The "market of ideas" involves investments on both sides--the "supplier" (writer) expends effort by producing a work, and the "demander" (reader) dedicates scarce attention to the work. A declining price for works effectively amounts to an inducement to readers to get them to pay attention. In the case of the Atlantic and Bookforum, I will be paying more attention in gratitude for that inducement (and their convenience). Despite their top-rate brands and insightful content, I predict Harper's and the New Yorker will be getting a lot less attention from bloggers if they don't get with the "openness" program soon.

Posted by Frank Pasquale at 10:35 AM | Comments (3) | TrackBack

The Wikileaks Injunction Case

Since it involves a blend of civil procedure, internet law, and copyright -- i.e., my entire teaching package -- I really have no excuse for not posting on the Wikileaks injunction matter. For those who have not been following it, a Swiss bank with a branch in the Cayman Islands, Bank Julius Baer ("BJB"), filed suit against the website Wikileaks.org in federal court in California and obtained a pair of emergency orders essentially shutting the domain name down. Wikileaks is a user-edited website, much like Wikipedia, but where the purpose is not to post encyclopedia entries, but rather leaked documents from governments and private entities. BJB argued as a basis for the orders that someone, allegedly a former employee, posted stolen documents revealing confidential aspects of BJB's operations.

The orders require the domain name registrar, Dynadot, to point the wikileaks.org domain name to an empty page. This doesn't shut down the site, exactly, it just makes it harder to find. It's like an order to a telephone company ordering a vanity 1-800 number like 1-800-BBOYDEN disconnected. Sure, you can still reach me on my cell and work numbers, but you'll have to go look those up and most people won't bother. (Note: I don't actually have a 1-800 number -- it's a hypothetical.) The "Order Granting Permanent[!] Injunction" and "Amended TRO and Order to Show Cause re Preliminary Injunction," both dated Feb. 15, are available online, as is the entire court docket, via Justia. (See Michael Froomkin's discussion of why the relationship between the two orders is confusing.)

There's lots of focus on the broader question of whether domain-name-disabling is a prior restraint barred by the First Amendment. I want to focus on several lesser but still interesting nuggets: the overlooked privacy interests at stake, the role of the DMCA, the breadth of TROs in the internet age, and "futility" arguments against anti-leak injunctions based on internet distribution.

1. The Privacy Component. BJB's moving papers are a little sketchy, but BJB claims that at least some of the records in question contain client information such as names and account numbers. Whether or not yanking the domain name is justifiable, a TRO or preliminary injunction ordering immediate removal of those documents, allegedly stolen from the bank, should not raise First Amendment concerns. It's unclear, however, how much of the records actually contain such client data, and how much contain merely embarrassing internal bank operation details, where the justification for removal would be subject to trade secret law. The California Supreme Court's decision in DVD CCA v. Bunner indicates that it might be difficult to establish, in a case like this, that "publication of these trade secrets on the Internet has not destroyed their trade secret status," a necessary element of a trade secret claim for an injunction against someone other than the original thief.

2. There's a Lot of Confusion Over the DMCA Notice-and-Takedown Procedures Here. The Wikileak orders were preceded by a period of correspondence between BJB's lawyers in California and Wikileaks concerning Wikileaks's contact address for DMCA takedown notices. The correspondence is odd on both sides. First, there is BJB counsel's insistence that Wikileaks identify the contact address for DMCA takedown notices, which "under US federal copyright law, it is your legal obligation to provide." Wrong. This is something my students get confused about all the time. Section 512, which contains the DMCA designated agent provision, does not obligate ISPs to do anything. It provides an immunity from contributory infringement liability, and conditions that immunity on jumping through various hoops -- one of which is providing the contact address. So, BJB's lawyers should have been saying, "if you want to keep your immunity, you'd better send me that address now."

Wikileaks looks confused too. They have a DMCA takedown policy on their site, but it does not actually provide the contact details for Wikileaks' agent for receiving a DMCA notification. Rather, it provides an email address -- in January, legal@wikileaks.org -- where you can email to ASK for the contact information. Wikileaks says that if you do that, "[y]ou will then be provided with contact details for the Wikileaks Agent."

That doesn't appear to me to comply with Section 512. 17 U.S.C. s 512(c)(2) requires that, in order to preserve its immunity for information posted by a third party on the ISP's servers, the ISP must "mak[e] available through its service, including on its website in a location accessible to the public, and by providing to the Copyright Office, substantially the following information: (A) the name, address, phone number, and electronic mail address of the agent."

Wikileaks might have a claim that nevertheless it qualifies for the DMCA safe harbor IF emailing legal@wikileaks.org resulted in an immediate response containing the contact information. But that's not what Wikileaks does -- take a look at the correspondence. (There's also the problem that it hasn't sent anything to the Copyright Office.) Instead, Wikileaks wrote back to BJB's lawyers and asked for all sorts of details about their claims before they would send the contact information. Wrong again. The details about the claim are supposed to be in the takedown notice -- which BJB CAN'T SEND until it has the contact information. Wikileaks' procedure reminds me of the classic Dilbert cartoon: Dilbert: "I can't log onto the network." Tech support guy: "Send me an e-mail about it."

3. If BJB Had Managed to Send a Takedown Notice, Could It Have Been Sanctioned for Taking Down Documents Subject to a Meritorious Fair Use Defense? BJB is probably fortunate it wasn't able to get the DMCA contact information and instead decided to seek relief directly in court. If they had sent a takedown notice, that would have put BJB roughly where Diebold, the maker of electronic voting equipment, was a couple of years ago. In 2004, some people managed to get a hold of an internal email archive from Diebold discussing problems with its equipment, and circulated it over the web. Diebold sent a takedown notice and had one of the archive copies taken down -- along, incidentally, with an entire ISP that was hosting a link to it, a situation somewhat reminiscent of this one.

Diebold was sanctioned by a federal court in California for its actions under Section 512(f), which provides: "Any person who knowingly materially misrepresents under this section ... that material or activity is infringing ... shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, ... or by a service provider, who is injured by such misrepresentation...." The court held that "[n]o reasonable copyright holder could have believed that the portions of the email archive discussing possible technical problems with Diebold's voting machines were protected by coyright," and that therefore claiming copyright infringement was a knowing material misrepresentation.

Taken at face value, Online Policy Group v. Diebold holds that any DMCA takedown notice referencing material that includes some portion subject to a fair use defense violates Section 512(f). That clearly goes too far. All material is subject to a fair use defense, if a small enough portion is taken. Each individual word of every copyrighted work on the planet, taken by itself, is a fair use of that word. So that clearly won't do. There's also language, however, in the Diebold opinion -- although it's unclear how it constitutes a 512(f) violation -- that indicates that the court was most concerned that Diebold's real aim was not in protecting its copyrights, but in using Section 512 "as a sword to suppress publication of embarrassing content." The problem is that Section 512 does not require that the copyright owner state that its primary purpose is to defend its copyrights; therefore bringing suit for a different primary purpose does not constitute a misrepresentation, so long as the material is actually subject to copyright. Nevertheless, to the extent this "purpose" element is being read into Section 512(f), BJB might have been vulnerable.

4. Isn't an Injunction That Extends to "All Others Who Receive Notice of This Order" Ridiculously Overbroad? Yes and no. (See also Michael Froomkin's discussion of this point, and particularly the comments.) Rule 65(d) limits a court's power to restrain to parties and "those persons in active concert or participation with [parties] who receive actual notice of the order by personal service or otherwise." The actual TRO, however, applies by its terms to "all those in active concert or participation with the Wikileaks Defendants, and each of them, and all others who receive notice of this order." The words "and all others" are I think redundant and should have been deleted -- this looks to me like a typo.

The real question is what it takes to act in "active concert or participation" with Wikileaks. Does it take an express agreement, or is it enough for someone to say to themselves, "To heck with the TRO, I'm going to do my bit for democracy and mirror these documents!" Without researching this issue in detail, my intuition is the latter is sufficient to bring someone within a properly framed injunction. Fred von Lohmann has helpfully added a list of cites in the comments of Froomkin's post on this point.

So does that mean that everyone who looks at the orders and then posts a mirror site, anywhere in the country, is subject to contempt of court sanctions in California? I think this is yet another area where are intuitions are bended by the internet. Pre-internet, how would someone get notice of an injunction? Likely because the plaintiff's attorneys SENT the injunction order to the person, after hearing that they were assisting the defendants. That's not conclusive proof of involvement, of course, but the potential scope of persons who would come within a court's injunction that way is necessarily limited.

Not so with both the order and the prohibited documents available online for anyone to find and make use of. Now the potential scope of even a properly crafted Rule 65(b) order is huge.

5. BJB's Litigation Is Doomed to Fail, as It Is Attempting to Stuff the Genie Back in the Bottle. Or, in legal terms, any injunction against information made available on the internet is "futile" and therefore should be denied. This post is already huge and this topic could take up a whole post all by itself. But suffice it to say that although this argument is often made, I believe it receives too little criticism. I believe it falsely assumes that because all websites are available to everyone, that therefore all websites are EQUALLY available to everyone. This is the essence of the "Darknet" critique of Digital Rights Management. But that's just plainly false, as someone who has a low Google ranking can tell you. BJB's litigation could in theory achieve some sort of success, depending on BJB's goals, if it makes the documents harder for some people to find.

Given BJB's likely goals, however, this injunction seems unlikely to succeed in even my sense. That is, the people BJB is worried about getting a hold of the information -- criminals (for the personal data), competitors, and perhaps reporters -- are unlikely to be deterred by barriers such as needing to find an obscure mirror site. This is not a case where a company is attempting to preserve some portion of a broad market for the information that is being eaten away at by infringement. Rather, BJB is attempting to keep the information away from even a few experts. That would require complete stifling of the information, which seems unlikely.

It's possible, and perhaps more likely, that BJB knows this, and is simply attempting a PR move here -- we will do what it takes to go after people who attempt to take your (or perhaps our) data. If so, then this suit might make more sense; although the backlash from shutting down the entire domain name may prove a tactical victory that results in a strategic blunder.

Posted by Bruce Boyden at 06:30 PM | Comments (3) | TrackBack

Should Publishers Put Their Books Online for Free?

Yesterday, Yale University Press allowed me to post my book online for free. Over at the NYT's Freakonomics blog, Melissa Lafsky writes about the growing trend of publishers posting free electronic copies of their books online. HarperCollins, for example, has started posting its books free online. In addition to my book, Yale University Press has allowed for the posting of Yochai Benkler's The Wealth of Networks for free online.

One commenter to Lafsky's post writes:

Imagine if books went the route of music and charged something like 1 or 2 dollars per download. Hardly a cumbersome fee when you consider most books will be over 10$ in a brick and mortar. Now, if a free ebook can sell 1 million copies in 1 day after some publicity on Oprah, imagine how many copies a trivially priced edition could sell over the span of several months. Certainly a few million, I’d expect.

Money is saved on raw materials, processing, printing, distribution. The only costs would be for the content and the server to house the content and some for publicity. So, say the split goes something like 70/30 for author/distributor. That’s still a great deal of income with extremely low overhead.

Another commenter writes:

Why can’t book publishers use the same business model that magazines use? Namely, inserting advertisements among the pages to offset the costs of production.

I for one, would gladly put up with some ads in favor of a lower price. Imagine paying $5 for a new release, rather than $30.

From the Associated Press:

More than 1 million copies of Suze Orman's "Women & Money" have been downloaded since the announcement last week on Winfrey's television show that the e-book edition would be available for free on her Web site, http://www.oprah.com. . . .

According to Saturday's statement, more than 1.1 million copies of Orman's financial advice book were downloaded in English, and another 19,000 in Spanish. The demand compares to such free online sensations as "The 9-11 Commission Report," which the federal government made available for downloads, and Stephen King's e-novella, "Riding the Bullet."

The publishing community has endlessly debated the effects of making text available online, with some saying that free downloading is a valuable promotional tool and others worrying that sales for paper editions would be harmed. The Authors Guild and the Association of American Publishers each have sued Google for its plans to scan and index books for the Internet.

The offer for "Women & Money," originally released a year ago by Spiegel & Grau, a division of Random House, Inc., has not kept people from buying the traditional version. As of Saturday, the book ranked No. 6 on Amazon.com. The paper edition of "The 9-11 Commission Report," published in 2004 by W.W. Norton and Co., was a best seller for months.

"I can tell you that with respect to the `9-11 Report,' the free download did not seem to hurt sales at all," Norton publisher Drake McFeely told The Associated Press on Saturday. "There were people who wanted it quickly, in a less convenient form, and that was clearly a different market from the people who wanted the traditional book." . . .

Is this trend a wise thing for publishers to do? Will it help sales? Hurt sales? I'm curious what readers think.

Posted by Daniel J. Solove at 04:08 PM | Comments (5) | TrackBack

The Future of Reputation -- Now Online for Free!

I'm very happy to announce that my publisher is allowing me to post a copy of The Future of Reputation: Gossip, Rumor, and Privacy on the Internet free online. Of course, I'd love it if you bought a copy, but if I can't convince you to buy it, then I hope you'll at least read it for free online. There really is a free lunch after all! And if you read the book and don't like it, well . . . you get what you pay for.

I think that it is great that Yale University Press is allowing me to do this. I hope more publishers decide to let their authors do this in the future -- especially academic presses, whose mission is not just to make a profit but to help spread ideas.

The book is licensed under a Creative Commons license -- it can be used for non-commercial uses.

To download the full-text of the book, click here.

Posted by Daniel J. Solove at 01:19 AM | Comments (2) | TrackBack

Why Is EZ Pass Suing Its Own Customers?

I had intended to post much more over the past couple of weeks, but Time did not permit. I asked it to be flexible, but Time tends to be a stickler about deadlines.

Anyway, a few days ago, I read a New York Times article on attempts by the EZ Pass system to crack down on toll evaders -- drivers who purposefully go through the unmanned EZ Pass lanes and attempt to hide their license plates from the cameras by shielding them with various objects, including, in one odd case, a baby (I'm not sure I can picture how that was attempted). I was struck by this quote, about the money lost to toll evaders:

That is why Mr. Crosby and the other image review clerks are on the front lines of the never-ending battle to track down evaders who avoid paying tolls, wittingly or not. They each examine about 1,500 photos a day to identify the license plate numbers of the cars and trucks that go through E-ZPass toll booths without the electronic tags, or with ones that were broken or expired.

“If you let the bad guys get away with it, the good guys won’t pay,” said John Riccardi, a liaison for the Port Authority of New York and New Jersey at the service center.

This argument seems plausible on its face. Failing to enforce the EZ Pass lanes will diminish respect for the tolls, and lead to widespread toll evasion. But it is inconsistent with an argument heard frequently in copyright circles: that copyright enforcement, through lawsuits or DRM, fails to achieve any deterrent effect at all against the "bad guys," and only forces "good guys" to jump through unnecessary hoops. Indeed, the argument sometimes goes, copyright enforcement decreases respect for copyrights, rather than increasing it. So does this argument apply to EZ Pass as well? Should EZ Pass be criticized, as the RIAA often is, for "suing its own customers"?

One option of course is to bite the bullet and maintain that, in fact, toll booth enforcement is no more legitimate than copyright enforcement and therefore both should be jettisoned. But I suspect most people making the copyright argument will want to distinguish highway tolls somehow. There are several possibilities.

1. Tolls actually pay for highways and highway maintenance, whereas copyright revenue is unconnected to producing more copyrighted works. Neither side of this argument seems to work as a rule. Certainly some copyright revenue goes to paying for prior work and helping to fund future work -- think of a movie studio's revenues. On the flip side, tolls do not necessarily go only to paying for road improvements. Yet the justifiability of toll enforcement does not seem to depend on how the money is being spent.

The argument in a more general form might simply be that tolls are legitimate, whereas copyrights are illegitimate, and that explains the difference. That states a difference, but I don't see how it explains it.

2. Copyright enforcement through RIAA-style lawsuits and DRM is heavy-handed, whereas toll enforcement is not. I don't see how being sued for running a toll booth is likely to be any more pleasant than being sued for downloading. And toll booths are more convenient than DRM? Really?

3. Tolls provide more notice of what's permitted, whereas copyrights do not. This argument seems superficially plausible, but that plausibility is waning. Note that the only notice that's relevant to this argument is notice that someone with legal authority wants to charge for access to the work. Toll booths provide clear notice that the state wants you to pay in order to access the road, but really obscure notice about why (it's probably buried in a prior year state budget somewhere) or what your alternatives are (you could take an alternate route). Even if copyright law is hard to understand, the blunt notice that a copyright owner is charging for the work is in most cases fairly prevalent, especially now. Whereas there may initially have been some confusion about whether sites offering downloads in the 1990s were authorized to do so, if you're getting movies still playing in theaters from alldvds4free.com, or downloading the Beatles from KaZaA, notice probably isnt' the issue.

4. Tolls reduce congestion; copyright revenue does not. Of course, William Landes and Richard Posner have argued that in fact copyright licensing fees do reduce a type of congestion for creative works, at least where the "congestion" is caused by a proliferation of derivative works. But the main goal of peer-to-peer downloading suits and DRM is to prevent verbatim reproductions, rather than preventing derivative works. Due to intellectual property's essentially nonrivalrous nature, there's no congestion caused when unauthorized distributors transmit copies of works. It saps the market of some of its demand, but that's not any different than saying that some people who were nominally obligated to pay did not. That's the baseline assumption in both scenarios.

It's the first part of the statement that I think is questionable, at least as a basis for the justification of toll enforcement. That is, while tolls undoubtedly reduce congestion on some roads at some times, that is not a universal feature of toll booths. There are some tolls that are located on roads that are hardly ever congested. The Greenway in Northern Virginia comes to mind, as does the Pascack Valley plaza on the Garden State, or the $2 toll that was long charged on the bridge in my hometown. If enforcement of those tolls is justified, then toll enforcement does not depend on congestion reduction.

5. People already respect tolls; consumers of copyrighted works do not respect copyright. The argument here is that while enforcement mechanisms can prevent an erosion of respect, they can't build it up where it doesn't exist. The problem with this argument is that I'm not sure it's true as a factual matter. Sure, the technorati hate copyright. But they're not exactly a representative sample of the population. There seems to be plenty of evidence that ordinary consumers take copyright seriously. See, e.g., the jurors in the Jammie Thomas trial. Meanwhile, while most people willingly pay tolls, it's not because they're filled with warm and fuzzy feelings about tolls or even about their need to chip in for road maintenance. At best, it's a grudging respect. It seems copyright can at least claim that as well.

In short, I can't think of a good way to distinguish the two. Should the EFF take on EZ Pass as its next litigation target?

Posted by Bruce Boyden at 04:43 PM | Comments (5) | TrackBack

The word of the year is Woot, but is it generic?

When I graduated from eighth grade my diploma came in a dictionary. As I recall it was a Miriam-Webster's collegiate dictionary. As such I have a certain fondness for dictionaries and especially this iteration of them. So I like to see what Merriam-Webster's word of the year is. Its 2007 word of the year was woot. Yes woot. That caught my eye because the choice may have legal implications. Before addressing that let's set out the term and some context for the word of the year. The definition is “an interjection ‘expressing joy (it could be after a triumph, or for no reason at all); similar in use to the word 'yay'." Truthiness was Merriam-Webster’s word of the year in 2006. Given these two words, one might think that rather silly or recently coined terms are the only ones eligible. Quixotic, hypocrite, and conundrum, however, were finalists for this year’s word too. Then again facebook and blamestorm (“a meeting in which mistakes are aired, fingers are pointed and much discomfort is had by all”) were also on the short list. http://www.m-w.com/info/07words.htm By the way as The Lexicopgrahper’s Rules Web site notes word of the year is not just a Merriam-Webster event. Several groups nominate their own and the American Dialectical Society waits until January to vote. That group’s nominee list is rather fun with Googlegänger, a person with your name who shows up when you google yourself, being a favorite of mine as it is quite creative and probably will drive Google around the bend for reasons discussed below. Subprime was their word of the year. But back to woot and the law.

Now some readers may know about the site woot.com. It is fun although one has to get on to the deals early or they sell out. Currently woot.com is an irreverent operation with one good deal a day. They have, however, joined with Yahoo! to offer woot service on Yahoo!’s shopping service. So how long before woot! loses its sense of humor (the company sold an electronic Merriam-Webster recently and acknowledged the nod by the dictionary) and decides that no one but woot! may use the term? I hope that the company maintains an even keel but companies often take irrational approaches to trademark enforcement. In addition, as Sandra Rierson and I argue in our paper Confronting the Genericism Conundrum (28 Card. L. Rev. 1789 (2007)) appearance in a dictionary can generate angst for some as fears of genericide rise and scare companies into foolish acts. In short the doctrine causes irrational behavior including attempts to alter dictionary definitions and control how people use language. Words often have multiple meanings and context will determine how the person hearing, reading, or seeing the words understand them. As such we argue that two questions—“(1) Does the mark function as a source identifier, i.e., what is its primary significance in the relevant marketplace?; and (2) Would protecting the term as a trademark impose a “significant non-reputation-related disadvantage” on competitors?—… would strike a better balance between the significant interests that both trademark holders and the public have in this fundamental struggle over the meaning and right to use language.”

Again Woot! has not been upset by the term’s inclusion in the dictionary with no mention of the company…yet. We’ll see if that situation persists.

Posted by Deven Desai at 10:00 PM | Comments (0) | TrackBack

Good IP Surfing to Be Had

Over at the University of Chicago Law Faculty Blog, a collection of luminaries has been commenting all this week on Molly Shaffer Van Houweling's very interesting paper, The New Servitudes (forthcoming in the Georgetown Law Journal). Lots of good discussion.

Meanwhile, Rebecca Tushnet is live-blogging the Columbia Fair Use conference, which it sounds like was the place for copyright-types to be today. My own recent thoughts on fair use's role in copyright law, as well as a few random thoughts on plane crashes, are here.

Posted by Bruce Boyden at 05:21 PM | Comments (0) | TrackBack

The Arcade Fire's Choice: Free Culture or Fox Fight?

Yesterday's SuperBowl was a real reversal for me--the game was great, and the ads were about as bad as the Miller High Life Delivery Guy suggests. Admittedly, there was a rousing Arcade Fire song, No Cars Go, in an NFL on Fox ad. Amy Phillips notes:

[W]ould Win, Regine, and the gang really sell their music to Rupert Murdoch so that he could advertise his football television program? No, . . . they wouldn't. Turns out Fox never even asked the band if they could use their song, and they certainly weren't given permission to do so.

Looks like Fox is starting a pattern of "don't ask, just sell." Which raises interesting questions for TAF. They might just shrug off the potential copyright infringement suit, perhaps inspired by Cory Doctorow's critique of permissions culture. But if they do so, they run the risk of appearing to endorse Fox's appropriation of their work.

I don't know how to resolve the dilemma, but it is good to see legal scholars working at the intersection of copyright and trademark law who are trying to untangle these types of rights. Greg Lastowka has written an interesting piece on rights to "digital attribution." Perhaps a truly "free culture" also requires a right to annotation or disavowal--so that uberhip TAF needs neither to associate with Fox nor to send it a C&D letter. Borrowing from the trademark context, maybe Fox should be required to do some "corrective advertising" if TAF so demands.

Photo Credit: AJ, Arcade Fire Concert.

UPDATE: Here is a copy of the ad; here is a take on Fox's potential "ephemeral recordings" defense.

Posted by Frank Pasquale at 07:26 PM | Comments (0) | TrackBack

Absolutely Scrabulous

Facebook offers many "apps" online, including games like "Scrabulous," a spitting image of the word game Scrabble. Hasbro and Mattel have now warned both Facebook and the app's creators (Rajat and Jayant Agarwalla) that they're infringing the Scrabble owners' intellectual property rights. A groundswell of Scrabulous fans are agitating online:

Hasbro, the maker of Scrabble, is suing Scrabulous for being too, well... Scrabble-ish. A shutdown notice was sent two weeks ago, and it's only a matter of time before Facebook's 9th most popular application bites the dust. That's why we need to band together and show those Hasbro suits that we're [hoppin' mad].

But Scrabulous's more scrupulous defenders concede the copying here is a tad bit scrofulous. The Agarwallas are now making about 25K per month from the app, and presumably Mattel deserves a cut. But exactly what rights are being infringed?

Games can be patented (see, e.g., the famous Rubik's cube case), but the underlying process of playing Scrabble has likely long since passed into the public domain. Even the founders of the the "Save Scrabulous" group on Facebook concede that "copyright infringement is obvious," but is it? As one of my students wrote to me, isn't the board a bit like the blank forms that courts have been unwilling to extent copyright protection to? And isn't the arrangement of colored squares on the board wholly functional, an indicator of various scores for certain plays? Perhaps the particular colors of the board itself could be deemed a form of product design trade dress, but I think you could see a translation of the principles of Lotus v. Borland into functionality defenses against trade dress infringement claims.

That still leaves the elephant in the room--the substantial similarity between Scrabulous and the mark Scrabble. But in keeping with the theme of this post (of pushing defenses here to the breaking point)--could Scrabble be generic?

I know that's doubtful, but I also have a sense that there is no other way that people refer to the "game that involves seven lettered tiles played for points on a board that includes double and triple letter and word scores." On the other hand, if you asked the "man on the street" if Scrabble is the name of a word game or the name of trademark for a company's (version of a) word game, it seems like the latter interpretation is at least as likely as the former for someone with an elementary knowledge of the law.

So let's assume that Mattel would win in court; what are the proper damages? Some bloggers have suggested that as a matter of equity, Mattel owes as much to the Scrabulous app as the app owes Mattel--it's great advertising. One also has the sense that, had the Agarwallas disclosed the idea of a Scrabble-based Facebook app to Mattel, their corporate legal department may have either turned it down outright or politely declined and then turned to their own programmers to avoid partnering with them. So while I respect the rights of Mattel to "demand a cut" here, I also think that the dilemmas facing innovators like the Agarwallas are real and should lead to some sympathy from the courts.

PS: This is cross-posted from Madisonian, where Bruce Boyden has some good comments.

Posted by Frank Pasquale at 10:02 PM | Comments (9) | TrackBack

Is There a Moral Obligation to Publish?

In the last couple of weeks NPR and Slate have reported on Vladimir Nabokov's last, unpublished novel, which is written on index cards that are in the hands of his son, Dmitri. However, Vladimir's dying request was not that the novel be published, but rather that it be destroyed.

This presents Dmitri with a bit of a dilemma: honoring his father's request may mean destroying a novel that the world might love to read. Does he have any obligation not to destroy the novel? If not, then the decision should be an easy one. Presumably he has some sort of obligation to abide by his father's wishes. If there's no counte