Stanford Center for Internet and Society

The Prometheus Radio Project is an unincorporated organization whose goal is to provide support for the creation of low-power, non-commercial radio stations. Prometheus is represented in this case by the Media Access Project. Under 47 U.S.C. §402(a) and 28 U.S.C. §§2342-2344, litigation regarding FCC orders is filed in the U.S. Court of Appeals.The FCC order in question, Broadcast Ownership Rules, Cross-Ownership of Broadcast Stations of 2002 Biennial Regulatory Review, 68 Fed. Reg. 46,286 (August 5, 2003) (to be codified at 47 C.F.R. pt. 73), eliminates rules against ownership of both newspapers and broadcast outlets or both radio and television outlets in the same market. It also increases the number of television stations a single entity may own in a single market and nationwide. Furthermore, the order changes the way radio stations are counted, for the first time including noncommercial stations when counting the stations in a market for the purpose of computing ownership caps. Prometheus alleges that the order is “arbitrary and capricious in numerous respects” and that the commission violated statutory public notice requirements.

The Ninth Circuit held that plaintiffs whose private e-mail messages were disclosed under a “patently unlawful” subpoena could sue the defendant who issued the subpoena and his lawyer under the federal Stored Communications Act (18 U.S.C. § 2701 et seq.) and the Computer Fraud and Abuse Act (18 U.S.C. §1030) The court held that the federal Wiretap Act (18 USC §2511 et. seq.) does not apply to such a case because it does not cover stored e-mails. This case arose during a civil discovery proceeding when the defendant subpoenaed the plaintiffs’ Internet service provider for all e-mails ever sent and received by anyone at the plaintiffs’ company. Before officers of the company became aware of the subpoena, the service provider disclosed a number of responsive e-mails unrelated to the litigation, including some that were personal and/or privileged. Upon request by officers of the company, the trial court quashed the subpoena and awarded sanctions against the defendant. The court declared the subpoena “massively overbroad” and “patently unlawful,” reflecting both “bad faith” and “at least gross negligence.” Officers and employees of the company whose private messages had been disclosed then re-sued the defendant and the defendant’s lawyer under the Stored Communications Act, the Computer Fraud and Abuse Act, the Wiretap Act, and related state statutes.

In October 1999, Andrew Bunner posted DeCSS—code that can be used to defeat CSS copy protection on DVDs—on his website, and the DVD Copy Control Association (“DVD CCA”) sent notice demanding that he remove it. When Bunner refused, DVD CCA filed an action for injunctive relief, alleging misappropriation of trade secrets under California Civil Code Section 3426.1. (No damages were sought.) The trial court denied DVD CCA a temporary restraining order, but subsequently enjoined Bunner from posting DeCSS or related information on his website. It refused to enjoin Bunner from linking to other websites that contained DeCSS or related information because such an order was “overbroad and extremely burdensome.” Bunner appealed, claiming that the preliminary injunction violated his federal and state constitutional free speech rights. The California Court of Appeals found that the injunction constituted invalid prior restraint on “pure speech”—the code—and distinguished Bunner’s case from other trade secret misappropriation cases involving “the actual use of a secret or the breach of a contractual obligation.” The appeals court further found inapplicable cases granting injunctive relief under copyright law.

WhenU.com’s pop-up advertising software typically comes bundled with free downloadable software. The pop-up advertising software resides on the user’s computer, and has an algorithm that uses the user’s Internet activity to decide what pop-up advertisements should appear.U-Haul, aggrieved by WhenU.com’s display of pop-up advertisements for U-Haul’s competitors on top of U-Haul’s website, sued, claiming trademark and copyright infringement. WhenU.com moved for summary judgment, and the court granted the motion, holding that such pop-up advertising does not infringe U-Haul’s trademarks and copyrights: “WhenU’s pop-up advertisement software resides in individual computers as a result of the invitation and consent of the individual computer user, and thus, the advertisements do not use, alter or interfere with U-Haul’s trademarks and copyrights.”

Peter Catalanotte, defendant-appellant, registered the domain name on January 21, 1997. Never having operated any website using this domain name, Catalanotte sent an e-mail on October 27, 2000 to officers of Ford, inquiring about their interest in buying the domain name. Ford filed its Complaint on November 30, 2000 in the District Court, alleging cyberpiracy, trademark dilution, trademark infringement, and false designation of origin. The Court found Catalanotte liable for damages under the ACPA for trafficking in the domain name.The Anticybersquatting Consumer Protection Act was passed by Congress in 1999, as an amendment to the Lanham Act of 1946. The ACPA prohibits the act of registering, trafficking in, or using a domain name that is identical or confusingly similar to a distinctive mark, or that is identical or confusingly similar to or dilutive of a famous mark, with a bad faith intent to profit from it. The ACPA applies to all domain names registered before, on or after the date of the enactment, and provides for injunctive relief as well as recovery of actual damages or statutory damages.

The District Court for the Northern District of Illinois, Judge Rebecca R. Pallmeyer, denied a motion for summary judgment against Skylink Technologies, Inc., manufacturer of a universal remote control for garage door openers, for allegedly violating the Digital Millennium Copyright Act (DMCA). The Chamberlain Group, Inc., a manufacturer of garage door openers and remote controls, sued its competitor Skylink for marketing a universal remote. Skylink's universal remote is capable of operating a line of Chamberlain openers that uses a special software algorithm to increase security. The Chamberlain system uses a rolling code, varying the signal used to trigger the opener with each subsequent use. Skylink's universal remote allegedly circumvents that rolling code system. Chamberlain argued that the rolling code system is a technological measure that controls access to the copyrighted computer program controlling the garage door opener (actually the same program that implements the rolling code security feature); thus Skylink is liable for trafficking in a circumvention device in violation of the DMCA.

At issue was whether the copyright owner should be permitted to recover actual damages beyond the defendant’s profits, where the profits resulted from the overseas distribution of videos produced by infringing a copyright within the United States. The Ninth Circuit answered no, holding that the “narrow exception [to the Copyright Act] for the recovery of the infringer’s profits” does not include actual damages.

The Copyright Act applies only to infringements occurring within the United States; infringements outside U.S. borders are traditionally beyond the reach of U.S. courts. In this case, Reuters copied videos in New York, then distributed them through various overseas networks, including the British Broadcasting Company and the European Broadcast Union. Because the “act of infringement [was] completed entirely within the United States and … such infringing act enabled further exploitation abroad,” the court allowed the plaintiff to recover the defendant’s profits. It cited an exception to the Copyright Act as determined in Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45, (2nd Cir. 1939) (“profits from overseas infringement can be recovered on the theory that the infringer holds them in a constructive trust for the copyright owner“).

The plaintiffs, the Traditional Cat Association and its head Diana L. Finerman, sued the defendants for using the name “Traditional Cat Association.” The case went to trial on the plaintiffs’ claims of copyright infringement and coversion and the defendants’ counterclaims of defamation, intentional interference with prospective economic damage, and conversion. The judge entered judgment as a matter of law in favor of the defendants on the copyright infringement claims. The defendants voluntarily dismissed their counterclaim for defamation at the close of evidence, and the jury found for the plaintiffs on the defendants claim for conversion. The jury was unable to reach a verdict on the plaintiffs’ claim for conversion and the defendants’ claim for defamation, so the judge declared mistrials on those claims.