Packets: Vol. 1, No. 8

Playboy, Netscape and Excite Back to Court on Keying Case
by Lauren Gelman, posted on February 10, 2004 - 4:14pm

The United States District Court for the 9th Circuit has reversed and remanded the summary judgment granted by the district court to Netscape Communications (Netscape) and Excite in a case of “keying” brought against them by Playboy Enterprises (Playboy). Both defendants were found to have infringed and diluted Payboy’s “Playboy” and “Playmate” registered trademarks. “Keying” is a practice that allows advertisers to target individuals with certain interests by linking advertisements to pre-identified terms, lists of which were found to be kept by Netscape, and to include the aforesaid trademarks in the case at hand. Thus a person conducting a search using either word have had banner ads for adult-oriented material appear on her screen, which are neither related to Playboy nor labeled properly indicated their source, which results in consumer confusion and .capitalizing on its good will.

Pop-up Advertisement Vendor WhenU.Com Enjoined
by Lauren Gelman, posted on February 10, 2004 - 4:11pm

Contact lens vendor 1-800 Contacts was granted a preliminary injunction against pop-up advertisement vendor and competing lens merchant Vision Direct on December 22, 2003, in the Southern District of New York. Vision Direct had contracted with to display windows with competing advertisements to users visiting the 1-800 Contacts web site. Although the advertisements were not authorized by 1-800 Contacts, the plaintiff presented data that showed that users believed the pop-ups to be part of the main website. It set forth ten legal theories, including trademark infringement, trademark dilution, copyright infringement, and cybersquatting.The court dismissed the copyright infringement argument. 1-800 Contacts had argued that had “recast” or “transformed” its website by displaying pop-up advertisements on top of the website, creating a derivative work in violation of its copyright. This theory was rejected, as the court found that a mere arrangement of windows was not “fixed in a tangible medium” and therefore not subject to copyright law. 1-800 Contacts had an alternate theory, that users violated its “display right” when they displayed the website in conjunction with the pop-up advertisements, and contributed to this copyright infringement. The court found that such a broad display right would be incompatible with modern operating systems, which allow users to rearrange windows at will.

ARGOS Survives Dismissal Motions in Cybersquatting Suit
by Lauren Gelman, posted on February 10, 2004 - 3:54pm

ARGOS is a corporation organized under French law—“[i]t is a non-profit organization that functions to promote and facilitate applied research in spinal surgery.” ARGOS alleges to have used the name “ARGOS” since 1996, and it operates the website to provide information globally about spinal surgery. Orthotec, LLC is incorporated in Delaware but has its principal place of business in California. It markets and sells spinal surgery products. It registered the domain name in 1999. The parties currently have a dispute pending in the PTO regarding Orthtec’s “ARGOS” trademark application.Orthotec moved to dismiss ARGOS’ anti-cybersquatting suit, to transfer venue, and to stay the suit.

Second Circuit Upholds Preliminary Injunction Barring Query and Use of WHOIS Information in v. Verio
by Lauren Gelman, posted on February 10, 2004 - 3:50pm

Register was appointed by ICANN to serve as one of more than fifty companies that issue domain names for websites. In addition, it sells its own web-related services. Domain name registrants must submit to Register contact information including at least a name, postal address, email address, and telephone number. This so-called “WHOIS information” must be maintained and made freely available for public query by Register, according to ICANN terms. ICANN mandates that WHOIS information in general may be used for “any lawful purposes,” but excepts use to “support the transmission of mass unsolicited, commercial advertising or solicitations via email (spam).” ICANN also requires domain name registers to agree not to impose additional terms on public use.Register devised a legend that accompanied each query result retrieved from its WHOIS database, which read: “By submitting a WHOIS query, you agree that you will use this data only for lawful purposes and that under no circumstances will you use this data to . . . support the transmission of mass unsolicited, commercial advertising or solicitation via email.” Register did use its WHOIS information to advertise its own web-related services, and those of affiliates, however, it allowed registrants to opt into or out of its solicitation list at the time of registration.

Court Upholds $521 million Jury Verdict Against Microsoft For Patent Infringement
by Lauren Gelman, posted on February 10, 2004 - 3:49pm

In 1999, Eolas Technologies sued Microsoft for patent infringement over its implementation of ActiveX. The Patent, No. 5,838,906t, owned by the University of California and exclusively licensed to Eolas, deals with third party plug-ins. A jury decision was reached in August 2003, ordering Microsoft to pay $520.6 million in damages. Pursuant to post-trial motions filed by both Microsoft and Eolas, on January 15, 2004, the Court upheld the jury ruling that Microsoft's Internet Explorer (IE) Web browser infringed the patent and granted a permanent injunction.The Court denied Microsoft’s post-trial motion for Judgment As a Matter of Law and for a New Trial, finding no errors in the jury instructions and no material change in the law that would support another outcome. Similarly, the court denied the motion for a New Trial with Respect to Damages or, in the Alternative, for Remittitur. Because Microsoft bundles multiple functionalities in a product, the valuation of individual components is difficult. The Court affirmed the royalty rate.

Supreme Court of Pennsylvania Denies Reporters Protection against Compelled Disclosure of Murder Defendant’s Statements

by Lauren Gelman, posted on February 10, 2004 - 3:47pm

Brian Tyson shot and killed a drug dealer during a feud with local dealers in his neighborhood. Tyson claimed that he acted in self-defense. Prior to his trial, Tyson was interviewed by Mark Bowden of the Philadelphia Inquirer and Linn Washington of the Philadelphia Tribune. The Commonwealth prosecutors alleged portions of the resulting newspaper articles were inconsistent with statements Tyson made to authorities and subpoenaed Bowden and Washington for their notes on their conversations with Tyson. The reports refused to produce the documents, arguing that their notes were protected by Pennsylvania’s Shield Law, 42 Pa.C.S. § 5942, and by a reporters’ privilege arising out of the First Amendment. The trial court held that statements Tyson made to the reporters are not protected either by the Shield Law or the reporters’ privilege. After their continued refusal to produce the documents, the court held the reporters in contempt and imposed sanctions at $100 per minute until compliance. The reporters appealed first to the Superior Court and then to the Supreme Court of Pennsylvania. The Supreme Court affirmed the contempt charge but remanded the matter to the trial court for reconsideration of the appropriate sanction, holding that the sanction imposed by the trial court was an abuse of discretion.The Supreme Court held that statements made by Tyson to the reporters are not protected by the Pennsylvania Shield Law. The statute states that no reporter shall be required to disclose the identity of a confidential human source. This court held that documents may be considered sources for Shield Law purposes, but only where production of such documents, even if redacted, could breach the confidentiality of the identity of a human source and thereby threaten the free flow of information from confidential informants to the media. In this case, Tyson’s identity was not confidential, and there are no allegations or indications that the disclosure of his statements might reveal the identities of any other confidential persons. The Shield Law, therefore, does not protect the reporters from compelled disclosure in this case.