Stanford Center for Internet and Society

In September 2002, the plaintiffs received unsolicited email messages advertising software products of Redmond Venture, Inc. (Redmond). The plaintiffs brought suit against Redmond alleging violations of the Utah’s Unsolicited Commercial and Sexually Explicit Email Act (the Act) (repealed effective May 3, 2004) in the District Court of Utah. Redmond filed a motion for summary judgment, arguing that the email messages were unauthorized and that Redmond, therefore, is not liable under the Act because it did not “cause” the email messages to be sent. The district court granted summary judgment and denied the plaintiff’s subsequent motion for discovery under rule 56(f) of the Utah Rules of Civil Procedure. The Court of Appeals of Utah affirmed.The plaintiffs alleged that the Act imposes liability upon Redmond for the unsolicited email messages sent on its behalf. The Act requires that unsolicited commercial email include certain information in the subject line and body of the message. A person “who sends or causes to be sent” a noncompliant message is subject to civil liability. Redmond submitted an affidavit indicating that it did not directly market its products but rather entered into contracts with independent promoters. These contracts contained an “Anti-Spam Agreement” forbidding the use of unsolicited email messages. The court looked to the four corners of the contract to determine whether Redmond “caused” the emails to be sent. The court found that the agreements unambiguously prohibited the promoters to send the messages. Redmond, therefore, did not “cause” the emails to be sent and is not liable under the Act. The court rejected plaintiffs argument that in evaluating Redmond’s motion for summary judgment, the court should infer that the Anti-Spam Agreements were a sham and that Redmond encouraged the promoters to send the illegal messages. The court refused to make such a presumption because the plaintiffs presented no supporting evidence.

Plaintiff DaimlerChrysler has been using the “DODGE” trademark in the automobile sales and service industry since 1924. In 1994 DaimlerChrysler began advertising the toll-free telephone number “1-800-4-A-DODGE.” In 1995 DaimlerChrysler registered the domain “4ADodge.com” and directed visitors to the main Dodge.com homepage.Defendant The Net, Inc. is an “unincorporated association” between defendants Keith Maydak and Michael Sussman. In December of 1996 defendants registered the domain name “foradodge.com” and concealed the true identity of the registrants. Defendants also registered domain names similar to other corporate trademarks and governmental agencies, including “ups.net,” “nasdaq.net,” “cnn.org,” and “whitehouse.com.” Defendants proceeded to point the “foradodge.com” domain name at a pornographic website. Defendant Maydak claims that he intended to use the “foradodge.com” domain name to describe asset protection and tax avoidance services under what he considered to be the general subject of “dodging,” however he had not taken any steps to accomplish this goal at the time that suit was filed.

Real estate developer Donald Trump filed a complaint with the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center against Fountainhead Entertainment, challenging their registration of the domain name “trumpice.com.” The complaint asserted that (1) the domain name in question is identical to Complainant’s TRUMP ICE brand of bottled water; and (2) Respondent has no “rights or legitimate interests” in the domain name, and (3) that it purchased the domain name in “bad faith.”

The Respondent did not contest the first assertion. However, Respondent argued that it had a legitimate interest in the domain name in connection with creating and marketing a new online bridge game it had not yet released, called “Trump Ice: Grand Slam 32.” Furthermore, Respondent claimed that the fact that the name of its planned service was similar to Complainant’s mark was “strictly coincidental.”

The Internet Archive (IA) is a non-profit effort to preserve Internet sites and other digital media and make them available online. IA’s spiders regularly crawl the World Wide Web, making copies of web pages and storing them permanently in an enormous digital archive. Using the "Wayback Machine", one of the Archive's popular services, users can input the address of a web page and call up a series of dated copies, allowing them to see what the page contained at the times it was accessed by the IA spider.
Polska is the American provider of TV Polonia, a Polish-language television channel. According to its pleadings in the case, it had reached a deal with EchoStar, which operates the Dish Network satellite TV service, to provide TV Polonia to Dish Network. The contract included marketing rights, giving EchoStar the right to use Polska’s trademarks to sell subscriptions to its television service. The deal was scheduled to expire in stages: absent a renewal, EchoStar’s marketing rights would expire in April of 2001, and programming would stop a year afterwards. The deal was not renewed, and Polska alleges that EchoStar continued to use the “TV Polonia” name to market its satellite service after its rights to exploit that trademark had expired. EchoStar pointed out that Polska seemed to have no problem with advertisements stating that TV Polonia could be found on the Dish Network, since Polska had one on its own website after the expiration of marketing rights. EchoStar offered IA snapshots dated to various times in 2001 as proof of the past content of Polska’s website. As part of a series of motions in limine, Polska attempted to suppress the snapshots on the grounds of hearsay and unauthenticated source.

The Ninth Circuit considered whether the Computer Fraud and Abuse Act (18 U.S.C. Sec. 1030) requires plaintiffs to prove at least $5000 of damages or loss resulting from a single unauthorized computer access by defendants in order to establish a cause of action under the statute. The statutory definition of damage had been amended between the time of offense and the time of trial. The court also considered the meaning of the statute’s limitation for awarding only “economic damages.”The issue arose in a suit between two rival web sites used by the trucking industry to locate hauling jobs. Getloaded.com repeatedly (1) improperly accessed restricted portions of Creative's site, (2) improperly accessed and examined Creative's source code, and (3) accessed Creative's confidential customer information through improperly obtained computer files. Getloaded.com argued that Creative could not bring suit under the Computer Fraud and Abuse Act because no single unauthorized access led to damages of over $5,000.

Following a policy similar to that employed in the U.S. by the RIAA, the British Phonographic Industry (BPI) decided to sue individuals offering large number of copyrighted songs for uploading. Via these lawsuits, the BPI hoped to starve P2P networks of the music files downloaders find attractive. In a decision on October 15th, Justice Blackburne of the U.K. Court of Chancery ruled that ISPs could be required to reveal the names and addresses of 28 people that are allegedly large sharers who have made several thousand music files available over P2P networks. According to Justice Blackburne, “on the face of it this appears to be a powerful case of copyright infringement”.

Plaintiff Pure Imagination, Inc. filed suit against defendant Pure Imagination Studios, alleging trademark infringement and cyberpiracy for defendant’s use of the marks “Pure Imagination Studios” and “pureimagination.com.” The plaintiff incorporated in Illinois in 2000 and advertises over the Internet. It showed use of the trademark “pure imagination” in 1999. In 2002, the plaintiff registered the trademark with the U.S. PTO. The defendant, which provides services worldwide, incorporated in Illinois in 2001 and first used “pure imagination” in interstate commerce that same year. The defendant obtained state trademark registrations for “pure imagination” and “pureimagination.com” in 2001. The domain name “www.pureimagination.com” was first registered by third parties in 1998. The defendant bought ownership of the domain name from the third party in 2001. The plaintiff filed a motion for summary judgment on all claims. The US District Court for the Northern District of Illinois addressed three issues: (1) whether the third party’s registration of the domain name www.pureimagination.com gave the defendant trademark rights; (2) if not, whether the defendant had any trademark rights associated with its use of the "pure imagination" mark prior to the plaintiff’s federal registration; and (3) whether a likelihood of consumer confusion exists between the plaintiff’s and defendant’s uses of the marks. Finding that questions of fact exist regarding these issues, the court denied summary judgment in part as to the claim of trademark infringement and denied summary judgment as to the claim of cyberpiracy.Regarding the first issue, the court held that a third party’s mere registration of a domain name is not sufficient to establish trademark rights for a subsequent user of the domain. Under 15 U.S.C. § 1060, a party may "tack" trademark rights to an earlier use by a third party only if it can show that the earlier user did not abandon the mark and that the earlier user assigned the goodwill associated with the mark as well as the mark to the subsequent user. In the case of a domain name, mere registration does not constitute a trademark use. In the present case, the defendant did not offer any additional evidence showing the nature of the third parties’ use as a trademark use and that the third parties did not abandon the mark. In addition, the defendant did not provide evidence that the third parties assigned the goodwill associated with the mark when it assigned ownership of the domain name to defendant. As a result, the court held that the defendant cannot rely on the third parties’ earlier registration to establish its first use of the trademark.

During early 2003, unknown persons leaked or intercepted an archive containing thousands of emails exchanged between employees at Diebold, a company that makes e-voting machines. Some of the emails exposed e-voting insecurities, already the subject of considerable public controversy. To promote further public discussion, Plaintiffs Nelson Chu Pavlosky and Luke Thomas Smith, Swarthmore College students, and other individuals, reproduced the email archive on their websites, which in turn were linked to by additional sites. To prevent the public viewing the archive, Diebold sent cease and desist letters to multiple internet service providers (ISPs), including Swarthmore College, the non-profit Online Policy Group (“OPG”), and its upstream OSP, Hurricane Electric. Diebold claimed the emails were copyright protected and invoked the DMCA’s notice and take down procedures. 17 U.S.C. § 512. Swarthmore required Pavlosky and Smith to remove the archive from sites it hosted and Hurricane indicated it might terminate OPG’s service if a link to the archive was not removed from a site hosted by OPG. Pavlosky, Smith, and OPG subsequently brought suit alleging that Diebold had tortiously interfered with their contractual relations with their ISPs, misused copyright, and violated § 512(f) of the Copyright Act, which prohibits knowing and material misrepresentation under the DMCA that content is infringing. They requested damages, injunctive relief, and a declaratory judgment that publishing, cohosting, or providing services to websites that linked to the email archive were noninfringing.

Plaintiff Bayer LLC is the United States distributor of the “ADVANTAGE” line of flea control preparations. Bayer LLC holds trademark protection for the term “ADVANTAGE” in the US flea-and-tick market. Bayer LLC sells the products under authorization from German-based Bayer A.G., the worldwide parent of the Bayer family. Bayer A.G. licenses other subsidiaries to sell the line of products in other countries. Defendant Nagrom Inc. purchased the “ADVANTAGE” products from the licensed United Kingdom distributor and imported them into the United States. Nagrom used several websites, including tjspetshop.com, to market and sell the products directly to consumers in the United States under the “ADVANTAGE” name. Nagrom included the “ADVANTAGE” name in the meta-tags for the site and purchased at least one paid search placement for the term “ADVANTAGE” such that consumers who searched for “ADVANTAGE” products would be given a link to Nagrom’s site.

In Lexmark v. Static Control Components, Lexmark, plaintiff-appellee, sought preliminary injunction against Static Control Components (SCC) defendant-appellant, in the U.S. District Court for the Eastern District of Kentucky, to prevent SCC from distributing its SMARTEK computer chips. Lexmark, a manufacturer of laser and inkjet printers and toner cartridges, designed its toner cartridges with an embedded chip that notifies the printer if the cartridge was refilled by Lexmark. If not, then the printer is designed to reject the cartridge. This dispute involves two computer programs. The “Toner Loading Program,” coded into Lexmark’s toner cartridge chip, calculates toner levels. The “Printer Engine Program,” coded into the memory in the printer itself, controls various printer functions. The Loading Program contains minimal code (only about 45 commands, using 55 bytes of memory). SCC designed its SMARTEK chip such that it mimicked Lexmark’s chip and could be embedded in remanufactured toner cartridges. Lexmark was granted a preliminary injunction in district court on two main theories of liability: (1) SCC’s chip copied the Loading Program in violation of the federal copyright statute; and (2) SCC’s chip violated the Digital Millennium Copyright Act (DMCA) by circumventing a technological measure designed to control access the to the Engine Program. The Sixth Circuit vacated the judgment, finding that Lexmark did not establish a likelihood of success on its copyright infringement claim or on its DMCA claim.The Sixth Circuit applied an abuse-of discretion standard in reviewing the district court’s preliminary injunction. In applying this standard, the Sixth Circuit considered: (1) Lexmark’s likelihood of success on the merits; (2) the possibility of irreparable harm to Lexmark in the absence of an injunction; (3) public interest considerations; and (4) potential harm to third parties. In the context of copyright, the court places particular emphasis on the first factor, “because irreparable harm is presumed once a likelihood of success on the merits has been established.” The Copyright Act, 17 U.S.C. Section 102, grants copyright protection to “original works of authorship fixed in any tangible medium of expression,” including “literary works.” Computer programs are generally entitled to copyright protection as literary works under 17 U.S.C. Section 101. In a suit for copyright infringement the plaintiff (Lexmark) must show (1) ownership of a valid copyright, and (2) that the defendant copied protectable elements of the work. The copyright statute states that “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of … form….” 17 U.S.C. Section 102(b). According to the court, “this provision embodies the common-law idea-expression dichotomy that distinguishes the spheres of copyright and patent law.” Copyright protection is only extended to the expression of the idea, not the idea itself. The related doctrine of merger states that where there is a very limited number of ways to express an idea, “copyright protection does not exist because granting protection to the expressive component of the work necessarily would extend protection to the work’s uncopyrightable ideas as well.” The doctrine of “scenes a faire” similarly states that when external constraints limit the options for expression, copyright protection is precluded. “In the computer-software context, the doctrine means that the elements of a program dictated by practical realities… may not obtain protection.” The Sixth Circuit has previously held that efficiency represents an external constraint in the context of copyrightability of computer programs.