Thursday, December 31, 2009

Index of Posts in 2009

Below is an index for the articles posted on the Privacy and IP Law Blog during 2009. They are sorted below into two groupings: first, by date (in reverse chronological order) and then by category (including an item count showing how many posts fit into each category).

Topics Covered, Sorted by Date (in Reverse Order)

12/22/09 – White House Names Cybersecurity Coordinator cybersecurity, Dept of Homeland Security, government oversight, privacy

12/16/09 – Google Book Project – Notice of Revised Settlement Agreement copyright, Google Book Project

12/15/09 – ICANN Seeks Independent Proposals relating to WHOIS Data cybersecurity, identity theft, privacy, trademarks, WHOIS Data

12/10/09 – NJ District Court Launches New Version of Electronic Filing System ECF System, privacy, redaction

12/4/09 – Mandatory Restitution to Victims of Identity Theft in Pennsylvania Required Enacted legislation, identity theft, privacy, social security numbers

12/1/09 – Update on Google Book Settlement copyright, Google Book Project, privacy

11/19/09 – USPTO Trademark Public Advisory Committee Meeting Tomorrow Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

11/3/09 – Basic Questions – Differences between Copyrights and Trademarks copyright, trademarks

10/23/09 – NJ Federal Court Issues Notice about Redaction of Private Information from Court Filings ECF System, privacy, redaction

10/18/09 – Final Fairness Hearing on Google Books Settlement Re-Scheduled for November 9 copyright, Google Book Project

10/15/09 – White House appoints IP Enforcement Coordinator Cabinet Positions, copyright, counterfeiting, trademarks

9/30/09 – Google Book Settlement Agreement to be Modified copyright, Google Book Project

9/11/09 – Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

9/8/09 – Further Update: Google Book Settlement copyright, Google Book Project

9/4/09 – Update: Google Book Settlement Challenged by Several Opponents copyright, Google Book Project

8/26/09 – Blips in Google’s Book Project Settlement copyright, Google Book Project

8/25/09 – New Copyright Suit Filed against Publishers of Music Lyrics copyright, music

8/13/09 – Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods common law marks, geographically (mis)descriptive, Proposed legislation, requirement of use, trademarks

7/30/09 – Why You Should Read a Web Site's Terms of Service Before Posting copyright, privacy, terms of use policies

7/23/09 – Recommended Reading: Privacy Policies for Web Sites You Visit privacy, privacy policies

7/17/09 – Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

7/2/09 – Court Enters Order Banning Publication of Unauthorized Sequel to Catcher in the Rye copyright, fictional characters, Salinger

6/29/09 – Copyright Protection Proposed for Fashion Designs copyright, fashion design, Proposed legislation

6/19/09 – When is a Fictional Character Copyrightable? Copyright, fictional characters, Salinger

6/6/09 – Proposal to Restrict Use of Whole Body Image Scanners as Primary Screening Tool in Airport Security privacy, Proposed legislation, whole body image scanners

5/31/09 – Update on Anticipated Appointment of a Cybersecurity Coordinator cybersecurity, government oversight, NSA

5/28/09 – Anticipated Appointment of “Cyber Czar” on May 29, 2009 cybersecurity, Dept of Homeland Security, government oversight, NSA, privacy

5/20/09 – AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/15/09 – Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/12/09 – Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records) electronic medical records, health information technology, privacy, Proposed legislation, Stimulus Act

5/8/09 – Newly Introduced Bill Would Require Shutter Sounds in Camera Phones camera phones, copyright, privacy, Proposed legislation

4/29/09 – Privacy Resources on the Internet privacy, social security numbers

Topics Covered, Sorted by Category

Note that the number counts in each of these categories are totals for 2009 only. When you click on each link, you should see all of the articles – including those posted later than 2009 – covering a particular topic.

Cabinet Positions (1)
10/15/09 – White House appoints IP Enforcement Coordinator Cabinet Positions, copyright, counterfeiting, trademarks

Camera Phones (1)
5/8/09 – Newly Introduced Bill Would Require Shutter Sounds in Camera Phones camera phones, copyright, privacy, Proposed legislation

Cancellation (4)
11/19/09 – USPTO Trademark Public Advisory Committee Meeting Tomorrow Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

9/11/09 – Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/20/09 – AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/15/09 – Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

Common Law Marks (1)
8/13/09 – Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods common law marks, geographically (mis)descriptive, Proposed legislation, requirement of use, trademarks

Copyright (15)
12/16/09 – Google Book Project – Notice of Revised Settlement Agreement copyright, Google Book Project

12/1/09 – Update on Google Book Settlement copyright, Google Book Project, privacy

11/3/09 – Basic Questions – Differences between Copyrights and Trademarks copyright, trademarks

10/18/09 – Final Fairness Hearing on Google Books Settlement Re-Scheduled for November 9 copyright, Google Book Project

10/15/09 – White House appoints IP Enforcement Coordinator Cabinet Positions, copyright, counterfeiting, trademarks

9/30/09 – Google Book Settlement Agreement to be Modified copyright, Google Book Project

9/8/09 – Further Update: Google Book Settlement copyright, Google Book Project

9/4/09 – Update: Google Book Settlement Challenged by Several Opponents copyright, Google Book Project

8/26/09 – Blips in Google’s Book Project Settlement copyright, Google Book Project

8/25/09 – New Copyright Suit Filed against Publishers of Music Lyrics copyright, music

7/30/09 – Why You Should Read a Web Site's Terms of Service Before Posting copyright, privacy, terms of use policies

7/2/09 – Court Enters Order Banning Publication of Unauthorized Sequel to Catcher in the Rye copyright, fictional characters, Salinger

6/29/09 – Copyright Protection Proposed for Fashion Designs copyright, fashion design, Proposed legislation

6/19/09 – When is a Fictional Character Copyrightable? Copyright, fictional characters, Salinger

5/8/09 – Newly Introduced Bill Would Require Shutter Sounds in Camera Phones camera phones, copyright, privacy, Proposed legislation

Counterfeiting (1)
10/15/09 – White House appoints IP Enforcement Coordinator Cabinet Positions, copyright, counterfeiting, trademarks

Cybersecurity (4)
12/22/09 – White House Names Cybersecurity Coordinator cybersecurity, Dept of Homeland Security, government oversight, privacy

12/15/09 – ICANN Seeks Independent Proposals relating to WHOIS Data cybersecurity, identity theft, privacy, trademarks, WHOIS Data

5/31/09 – Update on Anticipated Appointment of a Cybersecurity Coordinator cybersecurity, government oversight, NSA

5/28/09 – Anticipated Appointment of “Cyber Czar” on May 29, 2009 cybersecurity, Dept of Homeland Security, government oversight, NSA, privacy

Dept of Homeland Security (2)
12/22/09 – White House Names Cybersecurity Coordinator cybersecurity, Dept of Homeland Security, government oversight, privacy

5/28/09 – Anticipated Appointment of “Cyber Czar” on May 29, 2009 cybersecurity, Dept of Homeland Security, government oversight, NSA, privacy

ECF System (2)
12/10/09 – NJ District Court Launches New Version of Electronic Filing System ECF System, privacy, redaction

10/23/09 – NJ Federal Court Issues Notice about Redaction of Private Information from Court Filings ECF System, privacy, redaction

Electronic Medical Records (“EMR”) (1)
5/12/09 – Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records) electronic medical records, health information technology, privacy, Proposed legislation, Stimulus Act

Enacted Legislation (1)
12/4/09 – Mandatory Restitution to Victims of Identity Theft in Pennsylvania Required Enacted legislation, identity theft, privacy, social security numbers

Fashion Design (1)
6/29/09 – Copyright Protection Proposed for Fashion Designs copyright, fashion design, Proposed legislation

Fictional Characters (2)
7/2/09 – Court Enters Order Banning Publication of Unauthorized Sequel to Catcher in the Rye copyright, fictional characters, Salinger

6/19/09 – When is a Fictional Character Copyrightable? Copyright, fictional characters, Salinger

Fraud on the PTO (5)
11/19/09 – USPTO Trademark Public Advisory Committee Meeting Tomorrow Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

9/11/09 – Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

7/17/09 – Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/20/09 – AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/15/09 – Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

Geographically (Mis)Descriptive (1)
8/13/09 – Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods common law marks, geographically (mis)descriptive, Proposed legislation, requirement of use, trademarks

Google Book Project (7)
12/16/09 – Google Book Project – Notice of Revised Settlement Agreement copyright, Google Book Project

12/1/09 – Update on Google Book Settlement copyright, Google Book Project, privacy

10/18/09 – Final Fairness Hearing on Google Books Settlement Re-Scheduled for November 9 copyright, Google Book Project

9/30/09 – Google Book Settlement Agreement to be Modified copyright, Google Book Project

9/8/09 – Further Update: Google Book Settlement copyright, Google Book Project

9/4/09 – Update: Google Book Settlement Challenged by Several Opponents copyright, Google Book Project

8/26/09 – Blips in Google’s Book Project Settlement copyright, Google Book Project

Government Oversight (3)
12/22/09 – White House Names Cybersecurity Coordinator cybersecurity, Dept of Homeland Security, government oversight, privacy

5/31/09 – Update on Anticipated Appointment of a Cybersecurity Coordinator cybersecurity, government oversight, NSA

5/28/09 – Anticipated Appointment of “Cyber Czar” on May 29, 2009 cybersecurity, Dept of Homeland Security, government oversight, NSA, privacy

Health Information Technology (“HIT”)(1)
5/12/09 – Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records) electronic medical records, health information technology, privacy, Proposed legislation, Stimulus Act

Identity Theft (2)
12/15/09 – ICANN Seeks Independent Proposals relating to WHOIS Data cybersecurity, identity theft, privacy, trademarks, WHOIS Data

12/4/09 – Mandatory Restitution to Victims of Identity Theft in Pennsylvania Required Enacted legislation, identity theft, privacy, social security numbers

Medinol (5)
11/19/09 – USPTO Trademark Public Advisory Committee Meeting Tomorrow Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

9/11/09 – Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

7/17/09 – Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/20/09 – AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/15/09 – Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

Music (1)
8/25/09 – New Copyright Suit Filed against Publishers of Music Lyrics copyright, music

NSA (2)
5/31/09 – Update on Anticipated Appointment of a Cybersecurity Coordinator cybersecurity, government oversight, NSA

5/28/09 – Anticipated Appointment of “Cyber Czar” on May 29, 2009 cybersecurity, Dept of Homeland Security, government oversight, NSA, privacy

Opposition (5)
11/19/09 – USPTO Trademark Public Advisory Committee Meeting Tomorrow Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

9/11/09 – Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

7/17/09 – Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/20/09 – AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/15/09 – Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

Privacy (13)
12/22/09 – White House Names Cybersecurity Coordinator cybersecurity, Dept of Homeland Security, government oversight, privacy

12/15/09 – ICANN Seeks Independent Proposals relating to WHOIS Data cybersecurity, identity theft, privacy, trademarks, WHOIS Data

12/10/09 – NJ District Court Launches New Version of Electronic Filing System ECF System, privacy, redaction

12/4/09 – Mandatory Restitution to Victims of Identity Theft in Pennsylvania Required Enacted legislation, identity theft, privacy, social security numbers

12/1/09 – Update on Google Book Settlement copyright, Google Book Project, privacy

10/23/09 – NJ Federal Court Issues Notice about Redaction of Private Information from Court Filings ECF System, privacy, redaction

7/30/09 – Why You Should Read a Web Site's Terms of Service Before Posting copyright, privacy, terms of use policies

7/23/09 – Recommended Reading: Privacy Policies for Web Sites You Visit privacy, privacy policies

6/6/09 – Proposal to Restrict Use of Whole Body Image Scanners as Primary Screening Tool in Airport Security privacy, Proposed legislation, whole body image scanners

5/28/09 – Anticipated Appointment of “Cyber Czar” on May 29, 2009 cybersecurity, Dept of Homeland Security, government oversight, NSA, privacy

5/12/09 – Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records) electronic medical records, health information technology, privacy, Proposed legislation, Stimulus Act

5/8/09 – Newly Introduced Bill Would Require Shutter Sounds in Camera Phones camera phones, copyright, privacy, Proposed legislation

4/29/09 – Privacy Resources on the Internet privacy, social security numbers

Privacy Policies (1)
7/23/09 – Recommended Reading: Privacy Policies for Web Sites You Visit privacy, privacy policies

Proposed Legislation (5)
8/13/09 – Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods common law marks, geographically (mis)descriptive, Proposed legislation, requirement of use, trademarks

6/29/09 – Copyright Protection Proposed for Fashion Designs copyright, fashion design, Proposed legislation

6/6/09 – Proposal to Restrict Use of Whole Body Image Scanners as Primary Screening Tool in Airport Security privacy, Proposed legislation, whole body image scanners

5/12/09 – Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records) electronic medical records, health information technology, privacy, Proposed legislation, Stimulus Act

5/8/09 – Newly Introduced Bill Would Require Shutter Sounds in Camera Phones camera phones, copyright, privacy, Proposed legislation

Redaction (2)
12/10/09 – NJ District Court Launches New Version of Electronic Filing System ECF System, privacy, redaction

10/23/09 – NJ Federal Court Issues Notice about Redaction of Private Information from Court Filings ECF System, privacy, redaction

Requirement of Use (1)
8/13/09 – Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods common law marks, geographically (mis)descriptive, Proposed legislation, requirement of use, trademarks

Salinger (2)
7/2/09 – Court Enters Order Banning Publication of Unauthorized Sequel to Catcher in the Rye copyright, fictional characters, Salinger

6/19/09 – When is a Fictional Character Copyrightable? Copyright, fictional characters, Salinger

Social Security Numbers (“SSN”) (2)
12/4/09 – Mandatory Restitution to Victims of Identity Theft in Pennsylvania Required Enacted legislation, identity theft, privacy, social security numbers

4/29/09 – Privacy Resources on the Internet privacy, social security numbers

Stimulus Act (1)
5/12/09 – Newly Introduced Bill Proposes Chief Privacy Officer for Health Information Technology (i.e., Electronic Medical Records) electronic medical records, health information technology, privacy, Proposed legislation, Stimulus Act

Terms of Use Policies (1)
7/30/09 – Why You Should Read a Web Site's Terms of Service Before Posting copyright, privacy, terms of use policies

Trademarks (9)
12/15/09 – ICANN Seeks Independent Proposals relating to WHOIS Data cybersecurity, identity theft, privacy, trademarks, WHOIS Data

11/19/09 – USPTO Trademark Public Advisory Committee Meeting Tomorrow Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

11/3/09 – Basic Questions – Differences between Copyrights and Trademarks copyright, trademarks

10/15/09 – White House appoints IP Enforcement Coordinator Cabinet Positions, copyright, counterfeiting, trademarks

9/11/09 – Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

8/13/09 – Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods common law marks, geographically (mis)descriptive, Proposed legislation, requirement of use, trademarks

7/17/09 – Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/20/09 – AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/15/09 – Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

TTAB (5)
11/19/09 – USPTO Trademark Public Advisory Committee Meeting Tomorrow Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

9/11/09 – Federal Circuit Clarifies Fraud Standard for Cancelling Trademark Registrations Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

7/17/09 – Fraud on PTO Refusal is not Obviated by Lack of Counsel; Amendments Cannot Expand Goods Sought to be Covered Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/20/09 – AIPLA Reports on the May 6, 2009 Federal Circuit Oral Argument on the Bose v Hexawave Case Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

5/15/09 – Fraud on the PTO Jurisprudence: Further Approval for Timely Corrective Action to Avoid Cancellation Cancellation, Fraud on the PTO, Medinol, Opposition, trademarks, TTAB

WHOIS Domain Name Registration Data (1)
12/15/09 – ICANN Seeks Independent Proposals relating to WHOIS Data cybersecurity, identity theft, privacy, trademarks, WHOIS Data

Whole Body Image Scanners (1)
6/6/09 – Proposal to Restrict Use of Whole Body Image Scanners as Primary Screening Tool in Airport Security privacy, Proposed legislation, whole body image scanners

Tuesday, December 22, 2009

White House Names Cybersecurity Coordinator

The White House announced today that President Obama has appointed Howard Schmidt to be the new “White House Cybersecurity Coordinator.” More information about Mr. Schmidt’s background can be found within the announcement of his appointment (including in an embedded video), but also within press coverage of the development. See, e.g., Siobhan Gorman, “Cyber Chief Selected by Obama,” The Wall Street Journal, Dec. 22, 2009 at A6; AP, “White House Picks New Cyber Coordinator”, Dec. 21, 2009 (available through FoxNews).

Mr. Schmidt’s duties will apparently include: “setting computer security policy and providing budget guidance across the government. Among his top challenges will be tapping the cyberdefense capabilities at the National Security Agency while ensuring adequate privacy protections for activities in the civilian sector.” Gorman, “Cyber Chief Selected by Obama.”

Previous posts on this topic were dated in May, when President Obama first announced the position.

UPDATE: A more complete analysis of Mr. Schmidt's appointment, background and anticipated responsibilities was published in today's (12/23/09) Wall Street Journal: see Siobhan Gorman, “Cybersecurity Chief to Fill a Post Filled with Challenges,” The Wall Street Journal, Dec. 23, 2009 at A6.

Wednesday, December 16, 2009

Google Book Project – Notice of Revised Settlement Agreement

On December 14, 2009, the Settlement Administrator for the Google Book Project distributed a Supplemental Notice of the revised settlement. (More information about developments in the Authors’ Guild v Google lawsuit can be found in prior posts.) The Notice identifies the following changes to the various deadlines to proceed:

On or before January 28, 2010:

* Deadline to Opt Out of the settlement agreement, by completing and submitting the Opt Out Form (if a claimant already opted out of the prior version of the settlement agreement, it is not necessary to file another Opt Out Form).

* Deadline to Opt Back In to the settlement agreement, if an Opt Out Form was previously submitted.

* File an Objection to the Amended Settlement. If a claimant previously filed an objection to the prior settlement agreement, it will be maintained – without having to file it again. This deadline is for new objections only. (Parties can withdraw prior objections up until the date of the Fairness Hearing, if necessary.)

On or before February 4, 2010:

* File a notice of intent to appear at the Final Fairness Hearing.

February 18, 2010:

* The scheduled date for the Final Settlement/Fairness Hearing.

(The dates above were also set forth in the Court’s November 19, 2009 Order granting preliminary approval to the amended settlement agreement.)

On or before March 31, 2011:

* Deadline for any claimant who wishes to receive cash payments for “Books and Inserts” (as those terms are defined by the settlement agreement) to submit their claim forms. If a claimant is unable to submit a claim online, paper forms are available.

More details about the administration of the settlement agreement can be found on the Administrator’s Site, and potential claimants should review all of the details provided directly by the Administrator, in case specific forms or requirements change over the course of the administration period.

Related News

The Congressional Research Service released a report on November 27, 2009, analyzing Google’s argument that it did not infringe the copyrights at issue because its use (in digitizing, indexing and re-publishing to some extent the underlying works) qualified for the “fair use” defense to act as a complete bar to liability. The report, “The Google Library Project: Is Digitization for Purposes of Online Indexing Fair Use Under Copyright Law,” was prepared by Kate M. Manuel, Esquire, a legislative attorney with CRS, and is available through various subscription-only sites. If you have a subscription to BNA’s Patent, Trademark & Copyright Journal, you can find a copy of the Report as a reference at the end of the article entitled “Google Books Settlement Could Be Back Before Court, Foreign Litigation a Possibility,” 79 PTCJ 154 (Dec. 11, 2009).

Tuesday, December 15, 2009

ICANN Seeks Independent Proposals relating to WHOIS Data

The Internet Corporation for Assigned Names and Numbers (ICANN) has issued public requests for proposals for the following studies relating to WHOIS data:

* WHOIS Misuse studies (deadline to respond – November 27, 2009 – has closed).
* WHOIS Registrant Identification studies (deadline to respond – December 22, 2009).

In both instances, the susbtantive study would begin in early 2010, with a completion goal of June 2010 or December 2010, to coincide with regularly-scheduled ICANN meetings.

There are apparently two other studies that ICANN will pursue, but requests for proposals have not yet been issued. See Generic Names Supporting Organization. These two are Proxy and Privacy Services and Implications of non-ASCII Registration Data in WHOIS records. See ICANN Policy Update ¶ 11 (Nov. 2009) (summary description of the first three study areas and related links).

The ICANN Staff is currently managing a fifth study area, which seeks to determine the feasibility of addressing public concerns of deficiencies in the WHOIS service, including with regard to “data accuracy and reliability, as well as in other technical areas noted in recent SSAC reports, such as accessibility and readability of WHOIS contact information in an IDN environment.” See Generic Names Supporting Organization.

Background of Concerns about WHOIS Data

WHOIS data can generally be defined as the full contact information for domain name registrants, including contacts for administrative and technical purposes. A WHOIS record relating to an individual domain name can also include the IP address of the associated web site, date of creation, renewal and expiration of the domain name, and the name of the registrar used to register and maintain the domain name.

Legitimate Uses of WHOIS Data

There are several legitimate uses of WHOIS data, among them the enforcement of intellectual property rights and criminal law enforcement. Accurate WHOIS information is necessary, for instance, to determine whom a trademark owner should contact if there are concerns about unfair competition or that the domain name may be infringing upon the holder’s existing rights. This information may also be used by law enforcement agencies to police instances of fraud, identity theft and other crimes. See e.g., Federal Trade Commission Press Release, FTC Calls for Openness, Accessibility in WHOIS Database System, Continues to Recommend Enactment of the US SAFE WEB ACT, Sept. 20, 2006 (prepared statement also available); Federal Trade Commission Press Release, Accuracy of "WHOIS" Internet Database Essential to Law Enforcement, FTC Tells Congress, May 22, 2002 (prepared statement also available). There may be other legitimate business reasons to use the WHOIS registration data to contact the owner of a particular domain.

Several years ago, the results of searches of the WHOIS database for domain name owners provided robust contact information. Recently, however, the amount of information that appears in WHOIS search results has been significantly limited, most likely due to public concern about the protection of private information and conformance with other jurisdictions’ privacy laws, including foreign privacy laws such as the EU Directive 95/46/EC (officially, the “Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data,” available in multiple languages and formats through the European Commission Justice and Home Affairs page).

The method of performing WHOIS searches also has changed recently, particularly to block automated search engines (i.e., crawlers and bots) from harvesting the data contained in the records. Specifically, each time you perform a search, you are prompted to manually enter the characters that appear within a graphic image – something the automated search tools apparently cannot do.

Related Legislation

In 2004, Congress enacted the Fraudulent Online Identity Sanctions Act, Pub. L. No. 108-482 (Dec. 23, 2004) (codified in scattered sections of Titles 15 and 18). The Act did not create an independent right of action, but it provided certain enhancements to existing civil and criminal causes of action: specifically, 1) it provided a rebuttable presumption of "willfulness" if a trademark infringement action is brought against a registrant who has supplied false registration information in connection with the domain name in question (15 U.S.C. § 1117); and 2) if the registrant had been convicted of a felony ("other than offense of which an element is the false registration of a domain name") in which the domain name at issue was registered and used in the course of committing the crime, the maximum penalty for the offense shall either be doubled or increased by 7 years, whichever is less. 18 U.S.C. § 3559. While this Act has apparently not had any wide-reaching impact, the mere fact that it was enacted demonstrates the value placed on the accuracy of this database.

Dispute Resolution

In addition, under certain circumstances, a plaintiff filing a complaint against a domain name in U.S. federal court (an “in rem civil action”) may serve the complaint by: “sending a notice of the alleged violation and intent to proceed under [15 U.S.C. § 1125(d)(2)(A)] to the registrant at the postal and e-mail address provided by the registrant to the registrar” and by “publishing notice of the action as the court may direct promptly after filing the action.” 15 U.S.C. § 1125(d)(2)(A)(ii). In this instance, the “registrant” is the person or entity who registered the domain name.

A problem arises, however, when a plaintiff attempts to contact directly the domain name owner through the “postal and e-mail address provided by the registrant to the registrar” if no such valid addresses are displayed in the WHOIS results. Specifically, if plaintiffs or their counsel attempt to reach out to the domain name owner – short of instituting litigation – to investigate whether infringement or unfair competition claims would be legitimate, the lack of valid contact information can be a significant barrier to resolution. If domain name owners invoke the private WHOIS or proxy services to shield their contact information, then it may not be possible to resolve valid claims about the legitimacy and/or non-infringement of the domain name without the investment of substantial extra time and cost. See Ian J. Black, “Hidden Whois and Infringing Domain Names: Making the Case for Registrar Liability,” 2008 U Chi. Legal F. 431, 432 (2008); see also Network Solution’s explanation of its private registration services (which provides alternate contact information to prevent the delivery of spam e-mails and telemarketing phone calls to the registrant, but distinguishes itself from proxy services in that it allows the registrant to remain the domain name owner and be listed in the public WHOIS database).

Similar service problems occur when a plaintiff relies on the Uniform Dispute Resolution Policy adopted by ICANN to arbitrate a domain name dispute. The Rules for UDRP Proceedings provide for service of a domain name dispute complaint through the e-mail addresses for the administrative, technical and billing contacts, to the postmaster of the domain name, and any other e-mail address the defendant identifies in response. Although the domain name dispute resolution provider (and not the plaintiff) is responsible for this service (see Rules ¶ 2(a)), the absence of valid or readily-discernable e-mail addresses for the domain name holder can create problems in reaching a resolution of a dispute short of filing an arbitration complaint.

In both instances, pre-complaint discussions between the parties – or between counsel for the parties – is much more difficult when the contact information for the domain name holders is hidden. Certainly, parties can appeal to the registrars for permission to see the underlying contact information, but whether the registrar must disclose this information, and the timing of their disclosure, is not clear.

In some cases, proof of a valid dispute (e.g., service of a subpoena on the registrar) may be required before such information is released. See, e.g., Domains By Proxy’s explanation of legal issues associated with a private registration and its Proxy Agreement, ¶ 4 (providing that Domains by Proxy “has the absolute right and power, in its sole discretion and without any liability to You whatsoever, to . . . [among other remedies]: . . . ii. Reveal Your name and personal information that You provided to DBP when: A. Required by law, in the good faith belief that such action is necessary in order to conform to the edicts of the law; B. To comply with a legal process served upon DBP; or C. In order to comply with ICANN rules, policies or procedures.”) (emphasis added).

Invasive/Objectionable Uses of WHOIS Information

In its request for proposal, ICANN identified several inappropriate uses of WHOIS data that have spurred the investigation into the extent of Misuse: for example, “generation of spam, abuse of personal data, intellectual property theft, loss of reputation or identity theft, loss of data, phishing and other cybercrime related exploits, harassment, stalking or other activity with negative personal or economic consequences.” Terms of Reference for WHOIS Misuse Studies, Sept. 25, 2009, at 1; see also id. at 5 (providing definitions of e-mail spam, postal and telephone spam, phishing, abuse of personal data and identity theft).

Other Organizations Concerned about CyberCrimes and Consumer Protection
(as identified in ICANN’s Terms of Reference for WHOIS Misuse Studies RFP)

Cybercrime Researchers:
* Anti Phishing Working Group
* Privacy Rights Clearing House
* Online Trust Alliance (AOTA)

Consumer Protection, Regulatory, and Law Enforcement Organizations:
* U.S. Federal Trade Commission
* FBI/NWCC Internet Crime Complaint Center (IC3)
* Identity Theft Assistance Center (ITAC)

Resources for Conducting WHOIS Searches

Most domain name registrars offer a WHOIS search tool that they use in connection with determining whether a domain name you wish to register is actually available. Sometimes, the link to the WHOIS tool is hidden on a particular page, so you may need to hunt to find it. A few examples of the over 500 domain name registrars currently authorized to register new US domain names are: GoDaddy.com, Network Solutions, Inc., PrivateDomains and Register.com. Registration fees vary wildly between registrars, so if you are conducting a WHOIS search with the expectation of registering a domain name, shop around for the best deal that provides you with all of the tools that you need (such as web site hosting, development of web pages, e-mail management, etc.) before making a decision about which registrar to search for availability and registration of a domain name.

If you conduct a WHOIS search and find that a particular domain was registered through a particular registrar, you may wish to view the registrar’s specific WHOIS report because they sometimes contain more information about the domain name owner than the report that you find from another WHOIS tool.

Note that if you conduct a WHOIS search for a domain name through certain registrars, they may put the domain on “hold” for a short period if the domain name is available. Network Solutions describes this as a customer service benefit, allowing a customer to come back up to four days later to register a domain name that they searched. See Network Solutions Adds Customer Protection Measure. During the four-day hold period, the domain name can only be registered through Network Solutions. Id. This “hold” service may not be what you intended when you performed the WHOIS search, so be aware that the possibility exists before you conduct your search.

In addition, here are some other available tools for WHOIS searching:

* Domain Tools – offers basic WHOIS searching, as well as some other custom tools that are available for a fee.

* DomainIt – also provides a WHOIS Privacy registration. Explanation of the service (which masks your contact information and randomizes your e-mail address) can be found here. Among the reasons identified for registering the domain using this privacy service is the prevention of spam and identity theft, as ICANN raised in its own reports, above.

* InterNic’s WHOIS tool can search for domain names with the following gTLDs: .aero, .arpa, .asia, .biz, .cat, .com, .coop, .edu, .info, .int, .jobs, .mobi, .museum, .name, .net, .org, .pro, and .travel. The most commonly used in the US for general purposes are .com, .org and .net. (Note that the .edu extension generally is restricted to educational institutions.)

* Ripe NCC – WHOIS database that covers European domains, as well as those in the Middle East, Central Asia and northern Africa.

* Universal Whois Searches – also provides links to country code TLDs registrars for purposes of country-specific WHOIS searches.

* WIPO’s summary of procedures for resolving domain name disputes re ccTLDs (country code Top Level Domains). Click on the relevant country code link and you will be brought to the appropriate site for registry, WHOIS and dispute resolution. You can also access various international trademark databases through WIPO to search for potentially competing applications/registrations before filing for registration of your own mark.

Thursday, December 10, 2009

NJ District Court Launches New Version of Electronic Filing System

Effective November 15, 2009, the United States District Court for the District of New Jersey implemented a revised version of its Electronic Court Filing (“ECF”) system. See CM/ECF Version 4.0 Public Release Notes, October 6, 2009.

According to the Notice, the following changes are now in effect:

* Added a checkbox for attorneys to confirm whether they have made any redactions in the document to be filed. The login screen also now contains hyperlinks to the Federal Rules of Civil Procedure and the Federal Rules of Criminal Procedure regarding redaction requirements. (For more on the redaction requirements, see my prior post about the Court’s notice to the bar providing guidelines for redacting documents before filing them in the public system. See also Robert McMillan, HSBC Exposed Sensitive Bankruptcy Data, The New York Times, December 4, 2009, which discusses the redaction problem more broadly. )

* Implemented the changes imposed by the amended Federal Rules of Civil Procedure with regard to the calculation of various deadlines.

* Streamlined document and attachment uploading to appear on a single screen.

* Renumbered documents and their attachments.

* Modified the user interface for reference during docketing.

* Added an option to subscribe to an RSS Feed for notifications, with links to docket sheets and documents. (Does not include restricted or sealed information.)

* Updated user interface for e-mail information.

The Court’s notice provides more detail, and I encourage you to review it in its entirety. For more information about the amendments to the Federal Rules, see Notice To The Bar - Notice of Federal Rules Amendments, December 3, 2009, which also provides a link to the text of the new rules.

The Court also announced that effective December 1, 2009, attorneys wishing to register for the ECF system can no longer merely certify that they completed the online tutorial on the Court’s web site. Instead, they must attend “hands on” training held at the courthouse or in-house at a law firm. See Notice to The Bar - New CM/ECF Registration Requirements.

Friday, December 4, 2009

Mandatory Restitution to Victims of Identity Theft in Pennsylvania Required

The Pennsylvania General Assembly recently amended its sentencing requirements to be imposed upon convicted identity thieves. On September 18, 2009, House Bill 222 was approved by Governor Rendell and became effective on November 17, 2009.

House Bill 222 amended the PA Crimes Code to mandate restitution by a convicted identity thief to “for all reasonable expenses incurred by the victim or on the victim’s behalf” to investigate the theft, bring civil and/or criminal actions in response, or to correct the victim’s credit record or negative credit reports. 18 Pa. Cons. Stat. Ann. § 1107.1(a). These expenses include: 1) attorneys’ and accountant’s fees for professional services; 2) fees or costs imposed by the credit bureaus to correct the credit reports, to undertake private investigations, or to contest “unwarranted debt collections;” and 3) court costs and filing fees. Id. § 1107.1(b).

This restitution sentence would be imposed in addition to any other restitution sentence or other order. See id. § 1107.1(a).

(Note that you can find the statutory sections cited above through West's Unofficial Purdon’s Pennsylvania Statutes – I tried linking each separate section, but the individual links would not work. You will have to navigate through West’s table of contents and expand the listings under Title 18 to find the relevant sections discussed here.)

Prior Version of Restitution Requirement

The prior version of this restitution requirement had been codified in 42 Pa. Cons. Stat. Ann. § 9720.1 and took effect July 21, 2000. Section 9720.1 has been repealed, now that the provisions have been moved to the Crimes Code.

Amendments Recently Enacted

Section 1107.1 provides several important amendments beyond the provisions previously codified in 42 Pa. Cons. Stat. Ann. § 9720.1. Specifically, the current provision permits an identity theft victim to recover professional fees charged by an accountant as well as any costs that they incurred in connection with disputing debt collections that were undertaken without justification.

Identity Theft in PA (Generally)

Identity theft is considered an “offense against property” in Pennsylvania. A person commits identity theft if “he possesses or uses, through any means, identifying information of another person without the consent of that other person to further any unlawful purpose.” 18 Pa. Cons. Stat. Ann. § 4120(a).

Identifying information includes “documents [separately defined], photographic, pictorial or computer image of another person, or any fact used to establish identity, including, but not limited to, a name, birth date, Social Security number, driver’s license number, nondriver governmental identification number, telephone number, checking account number, savings account number, student identification number, employee or payroll number or electronic signature.” Id. § 4120(f).

The term “document” is defined to include broadly “any writing,” with certain non-exclusive examples provided: “birth certificate, Social Security card, driver’s license, nondriver government-issued identification card, baptismal certificate, access device card, employee identification card, school identification card or other identifying information recorded by any other method, including, but not limited to, information stored on any computer, computer disc, computer printout, computer system, or part thereof, or by any other mechanical or electronic means.” Id.

The determination of the severity of the offense will vary, depending on the total dollar value involved, the number of times the offender has committed this offense in the past and the age of the victim. Specifically, the offense is deemed to be a misdemeanor of the first degree if the total value involved is less than $2,000. Id. § 4120(c)(1)(i). The offense will be upgraded to a felony (of the third degree) when the amount exceeds $2,000 or when the offense is committed “in furtherance of a criminal conspiracy.” Id. § 4120(c)(1)(ii) and (iii). The degree is further upgraded for recidivists – for third or subsequent offenses, the offense is deemed to be a felony of the second degree. Id. § 4120(c)(1)(iv).

Finally, if the offense is committed against a person “60 years of age or older” or against a person who is “care-dependent” under 18 Pa. Cons. Stat. Ann. § 2713, the severity of the offense will be upgraded a degree. Id. § 4120(c)(2).

As a result, the severity of the offense can range from misdemeanor of the first degree through a felony in the first degree. 204 Pa. Code § 303.15. Under Pennsylvania law, the actual penalties imposed for these offenses will be established by reference to the Sentencing Code (42 Pa. Cons. Stat. Ann. § 9701 et seq.) and Sentencing Guidelines (204 Pa. Code §§ 303.1 – 303.18), but can include imprisonment of varying terms in addition to the restitution required by 18 Pa. Cons. Stat. Ann. § 1107.1 and 42 Pa. Cons. Stat. Ann. § 9721(c).

Resources to Combat Identity Theft

If you need further information about identity theft, there are numerous resources you can use. For instance:

Government & Consumer Advocate Links
* Better Business Bureau’s Information for Consumers about Identity Theft
* Credit Reporting Companies: Equifax, Experian, and Transunion.
* Federal Trade Commission’s Identity Theft Site
* Pennsylvania Attorney General Tom Corbett’s Identity Theft Toolkit
* Pennsylvania State Police – Identity Theft Prevention Guidelines (PDF document)
* US Postal Service – Report ID Theft by Mail

Commercial Providers or Evaluation Tools
* IDTheft.com – has some information about police reports and dealing with governmental agencies to start correcting their records.
* Comparison of the “Top 5” Identity Theft Protection Companies on the market
* Identity Theft Labs – also provides a comparison of the most popular ID Theft Protection sites
* Identity Theft Protection and Survival – offers books and other educational materials for sale

This is a non-exhaustive list, but should get you started. In addition to these resources, you may also want to consider checking resources offered by your bank, credit union or credit card companies; many of them offer tools to assist you in avoiding or recovering from identity theft.

(Please note that I have not thoroughly researched companies providing ID theft protection services – so what appears above are suggestions only of some of the third-parties that provide these services. Their listing here should not be taken to be an endorsement or any other support for the products or services that they offer.)

Tuesday, December 1, 2009

Update on Google Book Settlement

On November 13, 2009, the parties to the Author’s Guild, Inc. v. Google, Inc. lawsuit submitted a revised settlement agreement, for which it sought court approval. Prior posts about the lawsuit and its implications can be found here.

The revised settlement agreement is 171 pages (the original agreement was a mere 134 pages) – so it will take some time before all of the pivotal terms and conditions are understood and vetted by the media, government agencies and the public. I have only briefly scanned the revised agreement, and may decide at a later date to enhance my own written analysis of its implications as I become more familiar with its terms.

In the meantime, here are some provisions of interest of the revised Agreement for your preliminary consideration:

* Google will pay “a minimum of $45 million into the Settlement Fund to pay Settlement Class members whose Books and Inserts have been Digitized prior to the May 5, 2009.” Agreement ¶ 2.1(b).

* Anyone who wishes to receive a cash payment under the revised settlement agreement must file their claim form by March 31, 2011.

* Plaintiffs’ attorneys can receive up to $30 million in fees after the effective date of the Agreement (assuming that it obtains final approval by the Court). Agreement ¶ 5.5.

* The Agreement proposes to distribute “at least $60 per Principal Work,” and less for entire copies of “inserts” ($15) or partial copies of “inserts” ($5). Agreement ¶ 5.1(a).

* Certain foreign works have been removed from coverage by the Agreement (although works published in Britain, Canada or Australia are still covered). Agreement ¶ 1.19.

* Other online book distributors may participate in the distribution of out-of-print and unclaimed works (a right that previously had been reserved for Google exclusively). Agreement ¶ 2.4.

* Rights holders can direct Google to exclude their works (with some limitations) provided that the request is received no later than March 9, 2012. Agreement ¶ 3.5(a)(iii).

* Google may still elect to exclude works from the database for any “editorial or non-editorial” reasons, although it must provide a digital copy of the excluded work (along with an explanation of why it was excluded) to the Book Rights Registry. Agreement ¶¶ 3.7(e) & (e)(i).

* Google apparently will be allowed to continue scanning works that are not subject to payment under the Agreement. Agreement ¶ 3.1(a). Thus, even this revision appears to severely limit the online distribution rights of authors and publishers.

* Books and inserts can be designated as either “Display” or “No Display” – in other words, the author/publisher can request that the book not be displayed in search results. Agreement ¶¶ 3.3, 3.4. It appears, however, that the scanned copy of a book designed “No Display” will continue to exist in the database, even if Google is not permitted to display it in the search results.

Other Analyses of the Revised Settlement Agreement

Others have opined about the impact of this revision, including the following:

* Jonathan Band’s A Guide for the Perplexed, Part III, analyzing the November 13 amendments to the settlement agreement in great detail;

* Copyright Clearance Center seminars and webinars about the impact of the settlement;

* Electronic Frontier Foundation’s Deep Links Blog covered the revised settlement agreement from the perspective of the pros and cons, access, competition, and privacy;

* Dr. James Grimmelman’s Blog, The Laboratorium;

* The Official Settlement Web Site;

* The Public Index and its annotated copy of the revised settlement agreement;

(*Note that I have not fully analyzed or reviewed each of these external links – and therefore do not endorse their opinions or recommendations. I am providing links to these sources, however, in the interest of fostering a diverse and robust discussion of the impact of this agreement on copyright law and electronic book publishing into the future.)

Court Grants Preliminary Approval and Sets Deadlines

On November 19, 2009, the Court granted preliminary approval of the Amended Settlement Agreement, and set February 18, 2010 as the new hearing date for the Final Fairness Hearing. Any opposition to the revised settlement agreement must be filed by January 28, 2010. Any class member who wishes to appear at the hearing must file a Notice of Intent to Appear no later than February 4, 2010.

Thursday, November 19, 2009

USPTO Trademark Public Advisory Committee Meeting Tomorrow

On November 20, 2009, the U.S. Patent & Trademark Office’s Trademark Public Advisory Committee will be holding a public meeting to discuss, among other things, the impact that the Federal Circuit’s recent decision in the In re Bose Corp. case will have on the USPTO’s “Trademark Operation.” (More information on the In re Bose Corp. case and some of its predecessors in the Medinol line of cases can be found in my prior blog entries.)

The meeting will be webcast, and runs from 9:00am – 12:00pm Eastern Time. You can also dial in by phone to hear the audio only, if you prefer. (Instructions for participating and the proposed agenda can be found here.)

Based on the published agenda, the segments relevant to the In re Bose opinion will likely be the following:

* 10:15 a.m. (20 minutes) – Discussion with TTAB Judge Gerard Rogers regarding TTAB matters, including “What steps has the TTAB taken, and what steps (if any) does it plan to take, in the wake of the Federal Circuit decision in In re Bose Corp.”

* 10:35 a.m. (60 minutes) – Discussion with Trademarks Commissioner Lynne Beresford about “what steps the Trademark Operation should take, if any, in the wake of the [In re Bose Corp. decision] to minimize the amount of ‘deadwood’ on the trademark registers.” Some of the suggested subtopics in this category are:
“* Should any special action be taken regarding applications claiming a large
number of goods/services?
* Should proof of mark usage be required on each
item of goods/services?
* Should there be a procedure by which a third party
can require an interim proof of use of a mark by a mark registrant on some or
all goods/services covered in a registration?”
Also of interest in this section is the discussion of a proposal to update TMEP (the USPTO’s Trademark Manual of Examining Procedure) on a continuous basis.

If you cannot participate in the meeting, but are interested in reading about it afterward, the transcript will likely be posted on TPAC’s main page at some point after the meeting concludes. Transcripts from prior meetings can also be found there.

Tuesday, November 3, 2009

Basic Questions – Differences between Copyrights and Trademarks

While it seems that this topic may be rather basic, the differences between types of protection under the broader heading of “intellectual property law,” are commonly confused. Not only have I been asked this question directly, but also I have heard folks frequently using the words “copyright,” “trademark” and “patents” interchangeably. These terms have very separate meanings, however, and the doctrines and black letter assumptions applicable to each are very different.

(Note that because I do not practice in the area of patent law, I am omitting patents from this discussion. Recognize, however, that patent law is a pivotal component of the larger intellectual property law environment and should not be ignored when considering what protections to pursue for various intellectual property assets.)

Copyrights (17 U.S.C. § 101 et seq.)

In a nutshell, U.S. copyright law protects an “original work of authorship fixed in a tangible medium of expression” from being copied and/or used by others. The phrase “works of authorship” generally refers to creative works such as books, movies, scripts, computer software, sculptures, paintings, music, and lyrics, although myriad other works are also covered.
What is protected is the expression itself, not the idea underlying the expression. As a result, if you wrote a book that describes a conflict between two family members, you could not prevent another author from writing a book that also describes such a conflict. If the new book copied your precise language (in whole or in significant part), you might have some remedies against infringement under the Copyright Act – but note that what is protected is the way that you expressed the idea, not the underlying idea itself.

Trademarks (15 U.S.C. § 1051 et seq.)

Generally, trademark law protects words, symbols, logos, sounds and other mechanisms of identifying brand names. The key to determining whether a particular mark has trademark value is whether or not consumers recognize it as identifying a single source of goods or services in the market. As a result, “use” of (or a bona fide “intent to use”) the mark in connection with particular goods or services governs the scope of the mark’s protection.

If a term is generic, it cannot act as a trademark or achieve federal registration, lacking any value as an indicator of source of goods or services. Beyond generic terms, various types of marks can be registered if certain circumstances exist, requiring an analysis of the underlying facts. A sliding scale describes the strength of these types of marks, ranging from merely descriptive on the one side (moderately strong source indicators) to arbitrary or fanciful on the other (very strong source indicators), with descriptive and suggestive marks falling in the middle.

How do Domain Names Fit into these Definitions?

Domain names are simply addresses at which a user of the Internet can locate a particular web site. They can be equated to mailing addresses or even 1-800 phone numbers and typically appear in a www.name.com or www.name.net (etc.) format. The domain names may contain trademarks or they may contain more generic or descriptive terms.

When a domain name contains a trademark owned by another, the trademark owner has several options to enforce his or her rights, including negotiations with the domain name owner, other pre-litigation strategies or ultimately, filing claims in either federal court (pursuant to the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125) or through a domain name dispute resolution provider (pursuant to the Uniform Dispute Resolution Policy). Which forum is appropriate in a particular case depends on an analysis of the specific circumstances, but each option has specific benefits and detriments to proceeding within its boundaries.

Future blog entries will be based on new developments in these areas. Please let me know if you have comments or questions.

Friday, October 23, 2009

NJ Federal Court Issues Notice about Redaction of Private Information from Court Filings

I received this notice today from the U.S. District Court for the District of New Jersey, and thought it worthwhile to post in its entirety:
It has come to our attention that electronic filers may be using inappropriate procedures or software to redact documents. We encourage all electronic filers to review their software guides and/or check with your systems' staff regarding this issue. The redaction techniques below can also be found on the court's web site at http://www.njd.uscourts.gov/cm-ecf/RedactTips.pdf.

Effective Personal-Identity and Metadata Redaction Techniques for E-Filing

When you e-file a PDF document, you may be providing more information in that document than you can see via your PDF reader software. Some redaction techniques used when e-filing are ineffective, in that the text intended to be hidden or deleted can be read via a variety of techniques. And, because information about the document, called "metadata", is also stored inside the document, it is often viewable as well. Examples of metadata and hidden data include the name and type of file, the name of the author, the location of the file on your file server, the full-sized version of a cropped picture, and prior revisions of the text.

E-filers must use extra care to make sure that the PDF documents to be submitted to ECF are fully and completely free of any hidden data which may contain redacted information. The protection of sensitive data can be compromised if improper redaction techniques are used. Here are a couple of examples of sensitive-data visibility issues:

* Highlighting text in black or using a black box over the data in MS Word or Adobe Acrobat will not protect the data from being able to be seen. Changing the text color to white so it disappears against the white screen/paper is similarly ineffective.

* Previous revisions and deleted text may be able to be seen by manipulating an Adobe Acrobat file.

Fortunately, there are effective means of eliminating this metadata from electronic documents. Probably the simplest method is to omit the information from the original document and save the redacted version with a new name, for example, "REDACTED", then convert to PDF.

While the court does not endorse any specific method, and the responsibility for redacting personal identifiers rests solely with the parties, commercially-available software can be used to redact, not just hide, the sensitive information. Redax (http://www.blogger.com/www.appligent.com) and RapidRedact (http://www.blogger.com/www.rapidredact.com) are two examples of commercial products used by some. Adobe Acrobat 8.0 Professional and above and WordPerfect XIV both contain redaction tools. Search the web for references that may be useful to you.
While this notice clearly applies to cases filed in the federal court of New Jersey, electronic court filing is also available in the federal court in the Eastern District of Pennsylvania (Philadelphia, Allentown), which has a local rule requiring that certain personal information of the parties be removed from public filings. E.D. Pa. Local Rule of Civil Procedure 5.1.3 ("Modification or Redaction of Personal Identifiers: As documents in civil cases may be made available for personal inspection in the office of the clerk of court at the United States Courthouse, or, if filed electronically, may be made available on the court’s Electronic Case Filing system, such personal identifiers as Social Security numbers, dates of birth, financial account numbers and names of minor children should be modified or partially redacted in all documents filed either in traditional paper form or electronically.").

UPDATE: This notice is also available on the Court’s web site. See Personal-Identity and Metadata Redaction Notice, October 23, 2009.

Sunday, October 18, 2009

Final Fairness Hearing on Google Books Settlement Re-Scheduled for November 9

On October 7, 2009, as scheduled, Judge Denny Chin held a status conference among the parties to the Authors’ Guild et al. v. Google, Inc. lawsuit to consider the settlement agreement reached between the parties. Jessica E. Vascellaro, “Google Gets Until Nov. 9 to Revise Book Pact,” The Wall Street Journal, Oct. 8, 2009. During this status conference, the Court set November 9, 2009 as the new date for the Final Fairness Hearing. Id.

As described in prior posts on this topic, October 7 had been the anticipated Final Fairness Hearing to consider the settlement agreement, but due to the overwhelming number of filings (both in opposition and in support of the settlement agreement), and particularly the Statement of Interest filed by the Department of Justice in which the DOJ raised several preliminary concerns on antitrust grounds to the settlement. In that brief, the DOJ made “suggestions” about changes that needed to be made to the settlement agreement in order to account for potential antitrust concerns.

As further reported previously, Plaintiffs requested a continuance (uncontested by Google) of the October 7 Hearing to permit negotiations among the parties and the DOJ to make sure that these concerns had been addressed. See Motion and Memorandum of Law in Support. While the Court granted the request for a continuance, he required the parties to attend a status conference instead. See Court’s September 24, 2009 Order.

Thursday, October 15, 2009

White House appoints IP Enforcement Coordinator

On September 25, 2009, President Obama appointed Victoria A. Espinel as IP Enforcement Coordinator (“IPEC”). This position was mandated by the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO-IP Act”) S. 3325, Public Law No. 110-403, signed into law by President George W. Bush on October 13, 2008. See Current Status of the House Bill and of the Senate Bill.

The Act governs enforcement of IP infringement matters, particularly counterfeiting of copyrighted works and trademarks. With respect to trademarks, the Act increases civil penalties for trademark counterfeiting, including for direct as well as for certain types of contributory infringement and enhances criminal penalties for trafficking in counterfeit goods bearing others’ trademarks.

The IPEC is a cabinet-level position in the Executive Office focused on combating counterfeiting and IP infringement.

Under the Act, the IPEC will be an advisor only, not a prosecutor or other law enforcement officer. Specifically, the IPEC is charged with chairing an “interagency intellectual property enforcement advisory committee”, coordinating a Joint Strategic Plan (defined with more specificity in the Act) against counterfeiting and infringement, assist (when requested) in the implementation of the Plan, facilitate the issuance of policy guidance on “basic issues of policy and interpretation, to the extent necessary to assure the coordination of intellectual property enforcement policy and consistency with other law,” report to the President and to Congress about IP enforcement programs, report to Congress about the implementation of the Plan, and “carry out such other functions as the President may direct.” Public Law No. 110-403 § 301(b)(1).

Note that the Act was signed into law nearly a year ago. Under the precise terms of the PRO-IP Act, the Joint Strategic Plan described in the Act was due to be completed and submitted to various House and Senate committees no later than October 13, 2009 – in other words, two days ago!

However, given that the appointment has just been made for the IPEC, the various deadlines set forth in the act must be modified in some manner. It will be interesting to see how much the deadlines change.

For more information, see the following:

* White House Press Release, “President Obama Announces More Key Administration Posts,” September 25, 2009. The press release describes Ms. Espinel’s background and qualifications for the position.

* Official Summary of the Senate version of the bill (which ultimately was signed by Pres. Bush in 2008)

* Wikipedia’s description of the PRO-IP Act

* “FAQ: What to expect from a new IP cabinet position,” CNET News, Sept. 30, 2008 (just before the Act was signed into law).

Ms. Espinel’s nomination was received in the Senate on September 29, and the matter has been referred to the Senate Committee on the Judiciary. Nomination PN1027-111. It does not appear that a confirmation hearing has yet been scheduled.