Google Settles: Book Scanning Operation in full swing?...almost

On Tuesday, a settlement between the Google and the book publishers and authors came through after Google's controversial run with the Book Search program. The Authors Guild and Association of American Publishers had filed independent class action lawsuits wanting injunctive relief. They claimed large scale copyright violation and a potential loss of their eBook market. See here.

The settlement, awaiting court approval, is aimed to "breathe new commercial life into ...out-of-print Books, and to provide an innovative marketing tool for authors and publishers of in-print Books." Specifically, Google will be permitted to sell subscription to its Digitized Book collection or simply provide anytime access to millions of books, which it will make available virtually.

For showing snippets of books that are copyright protected and in print, permission of the Right holders is required. Snippets implies "three or four lines of text from a Book ...with up to three snippets per user for that Book." If Google wants to show more than snippets of such books, it will still need to get the Right holder's permission. Google will also have permission to make available out of print books. This has gotten a favorable response because it increases the longevity of books that were not in demand and thus out of print. Needless to say, books in the public domain will be have their entire content displayed. The concern however is the problem this arm of the settlement will have on orphan works. Right holders can opt out of this Settlement altogether, and the deadline for it is April 05, 2011.

Libraries, by signing Google's Digitization Agreement, will provide their books to be converted to a digital medium. A prerequisite will be getting the Right holder's assent. An interesting outcome of this lawsuit is that Google will be funding the Book Registry. The Registry will keep a list of books, the right holders list and instructions for exclusion or inclusion of Books.

However, this settlement is going to leave a significant question unanswered -was the unauthorized scanning of books permissible as fair use?

I don't think so. I guess the attitude is that since digitization seems as inevitable as tomorrow, might as well ride the wave...

Links:

NYT

Balkinization

Seattle Times

Prioritizing Resources and Organization for Intellectual Property Act

The Pro-IP Act was singed into law on October 13, 2008. Some of the highlights include:

• Amendment of Sec. 410, Copyright Act:

By way of Sec. 410 of the Copyright Act, the Registrar of Copyrights examines and determines whether particular material submitted is "copyrightable subject matter" and if so, subsequently gives a Certificate of Registration. The Pro-IP Act amends Sec. 410 ((c) and (d) are now (d) and (e) respectively) to insert (c) which embodies the "doctrine of fraud" in the registration process (see here). The Amended section reads as follows:

“(c) (1) A certificate of registration satisfies the requirements of section 411 and section 412 regardless of any inaccurate information contained in the certificate, unless—
“(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and
“(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.
“(2) In any case in which inaccuracies described under paragraph (1) are alleged, the court shall request the Register of Copyrights to advise the court whether the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.
“(3) Nothing in this subsection shall affect any rights, obligations, or requirements of a person related to information contained in a registration certificate except for the institution of and remedies in infringement actions under sections 411 and 412.”.

• Copyright Registration is not a prerequisite to institute Criminal Prosecution

The original language of Sec. 411 is "no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." Sec. 411 has been amended and as shown in an analysis done of DoJ's suggestions. "No actions" in Sec. 411 of the Copyright Act now clarifies that copyright registration is a requisite only in civil actions and not criminal ones. A rationale that was not happily accepted was "Prosecutors do not control whether or when a copyrighted work is registered. Because prosecutors work for the public good, they should be able to institute an infringement prosecution even if the copyright has not yet been registered." The Amendment reads as follows:

"(1) in the section heading, by inserting “civil” after “and” ; and
(2) in subsection (a), by striking “no action” and inserting “no civil action”.(b) Technical and conforming amendment.—Section 411(b) of title 17, United States Code, is amended by striking “506 and sections 509 and” and inserting “505 and section”."

The good news is that the Attorney General does not have the power to pursue civil infringement cases and copyright owners may do so on their own. The Attorney General may pursue infringers only in cases that are criminal in nature. Additionally, no new provision has been added to the DMCA for "anti-trafficking" measures.

Links:

CDT

Original Post

Keyword triggers trademark lawsuit; Judgment v. Settlement?

And we are back. This time in Texas. American Airlines sued Yahoo for its keyword advertising model which allegedly misleads consumers and misappropriates AA's mark. Eric Goldman has drawn a comparison with the AA-Google lawsuit. He also adds that a vicarious trademark infringement claim in the Yahoo matter erroneously uses the vicarious copyright infringement language from the Google matter! Having settled with Google and Rescuecom still in the pipeline, a clear and favored precedent is yet to be seen. One can only hope that there will be no settlement, but I think we all know what to expect.

Goldman points out correctly that Yahoo's model is favorable to trademark owners and wonders why Yahoo hasn't settled already instead of facing a lawsuit. Well, AA settled with Google. Did Google cease to operate its contentious model where adword triggers are trademarks? Apparently, not until recently. Goldman speculates whether Google used the time between July 2008 until now to produce a more effective tool. Yahoo is holding on. Maybe, just maybe....we get something worthwhile from this lawsuit.

GE v Nantucket

G.E. accused Nantucket funding LLC of having falsely representated a connection or sponsorship with their company which has led to consumer confusion. The complaint is available here. The specific allegations include:

• Lanham Act Sec. 32(1) - Trademark infringement,
• Lanham Act Sec. 43(a) - Unfair competition and false designation of origin,
• Lanham Act Sec. 43(c) - Dilution & tarnishment
• N.Y. Gen. Bus. Law Sec. 360-1 - Dilution
• N.Y. Gen. Bus. Law Sec. 349- Unfair and deceptive trade practices
• Common Law - Unfair competition

Though the link is unavailable currently, the problem is clear from this writeup that appears after a basic google search for the defendants.

"Hard Money LenderNantucket Funding LLC operates a division of G.E. Capital Group as a nationwide private real estate investment firm that provides short term asset based ...www.nantucketfunding.com/ - 33k - Cached - Similar pages - Note this"

The defendants, G.E. claims are involved in a financial scam while depicting themselves to be a subsidiary of G.E. This is causing irreperable harm to G.E.'s business reputation.

Is "scope of protection" for well known marks ABSOLUT?

TIML Golden Square, a subsidiary of Times, launched a Radio station called Absolute Radio. The class of goods is music and entertainment brand (Int'l Class 41).

V&S which owns Absolut Vodka and Absolut Tracks alleges that the term 'Absolute' results in trademark infringement and passing off. Absolut's "promotional activities have extended into areas other than just the selling of vodka". Thus consumer confusion is possible.

IPKAT asks "Can listeners tell the difference between a vodka brand and a radio brand?" and answers humourously, it "depends on how much vodka." Funny.

It is clear that consumer confusion as to ownership of the brand is the central issue. However, an integral consideration is that Absolut is a well known mark.

International protection of well known marks takes its roots in the Paris Convention and Art 16, TRIPs. Under Article 6 bis of the Paris convention, member states have the obligation to reject registration of a mark when it is confusingly similar to a well known mark.

Article 16 of TRIPs indicates that the goods and services must be related and consumer confusion likely. Specifically, "use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use....In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark."

Further, the Community Trademark Regulation (CTMR) in its Article 8(5) prohibits registration of mark that is confusingly similar, even though the class of goods or services are dissimilar. (protecting against dilution). Article 9(1)(c) protects against dilution by use and prevents the usage of a well known mark "where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier CTM."

Given the time, money and effort invested into promoting the brand Absolut in the UK, V&S has a strong upperhand. Absolute Radio is a result of a very recent rebranding effort. Absolut, in that case, might well have the last word.

Wellknown marks has not been defined yet but preferential protection is afforded in certain circumstances to marks with reputation. An interesting read on well known marks is available here.

No 'Apple' a day, keeps the lawsuit away. But if the lawsuit is worth it, should you keep the "Apple" away?

Probably Not. But today is not one of those days.

A Canadian School has been sent a notice by Apple because the formers logo allegedly infringes on the latter's Apple trademark. Apple's letter claims that the School's logo is "falsely suggesting that Apple has authorized [its] activities,which include offering computer software operation courses." The School displaces any notions of naivety, attempts to "play nice" by putting up the images (below) for all to decide for themselves on the similarity in the marks - give a Ye or Nay.

My Answer is a Ye.

This lawsuit is similar to a recent dispute that arose between GreeNYC and Apple. GreeNYC has an "infinity apple" design and is colored green to create environmental awareness. GreeNYC applied for its mark in May, 2007 and Apple filed an opposition.

Though both use a single leafed apple, the leaf is each is turned the other way. Filing an opposition is important when a mark is up for registration and that is exactly what Apple did - be prudent. However, given the dissimilarities in design and goods/services area, it might well be settled amicably or grounds for refusal under Section 2 of the Lanham Act will be considered. (See NYT)

On the other hand, technology related services using an apple for a logo, with a leaf pointing in the same direction....the question is - will "it" be saved by the bite (or the lack thereof)?

Trademark infringement is ascertained when there is a likelihood that consumer confusion can result. The factors considered are - strength of the mark, degree of similarity of the marks, degree of similarity of the goods, likelihood that plaintiff will bridge the gap, evidence of actual confusion, defendant’s good faith in adopting mark, quality of defendant’s products/services, and sophistication of buyers. With famous marks however, there is the added issue of dilution to distinctiveness.

Apple is a global brand with an undeniably distinctive trademark - the apple with a bite on the right side and a leaf titled to the right. Apple also uses various colors within its mark. The Canadian School's logo has:

• a whole apple without THE bite
• a leaf pointed in the same direction as the Apple mark
• the acronym VSBT
• multi-colored with blue and white
• a "stylized mountain"

Another problem for the school is that it offers computer related courses and that brings the proximity of goods closer than GreeNYC's environmental endeavors.

Copyright Board: Latest in Royalty Rates

Set to be applicable from 2012.
The Rates:

1. CD and music that is downloaded from providers like iTunes and Amazon stays at 9.1cents/track.
2. Mechanical Royalty rate for master tones/ringtones are at 24 cents.

In the pipeline, is a "ratification of royalty rates that streaming or non-permanent forms of music" shall be based on percentage of Revenue. (See NYT)

IP Czar

The Pro-IP Bill covers the legislation aspect and the Intellectual Property Enforcement Coordinator (IPEC) is the Policy arm. The Bill increases penalities for IP infringement and ciminal copyright violations. However, the establishment of IPEC has not been well received. (See Content Agenda). IPEC will work as an Advisory Committee to make policy on enforcement, but not interfere in its enforcement. To find out more, read a good write up on CNet on FAQ: What to expect from a new IP cabinet position.

Intellectual Property Committee(IPC), SABANY

A collaborative community to enhance the skills and competency of South Asian lawyers in New York, in intellectual property law. Learn more about IPC. Become a member.

RealDVD or StealDVD?

RealNetwork Home Entertainment Inc.'s (RNHE) product called RealDVD has met with serious opposition from Hollywood. This product permits you to "rip, burn and organize your DVD collection, which usually is armed to the hilt with DRM restrictions."(See ZDNet). Greg Goeckner, General Counsel for the Motion Picture Association of America (MPAA), referring to RealDVD as StealDVD, has alleged that the RealDVD "violates the law and undermines the hard-won trust that has been growing between America’s movie makers and the technology community." MPAA filed for the issuance of a temporary restraining order against RNHE from selling its RealDVD. (See Statement)

RealDVD, MPAA claims, is in violation of the circumvention provisions (manufacture and trafficking) under the Digital Millennium Copyright Act (DMCA). Section 1201(2) of the DMCA prohibits the manufacture, or distribution to the public, of devices/technology that are "primarily designed or produced for the purpose of circumventing a technological measure that effectively controls access to a work protected under this title..." “Circumvention of technology” means to descramble a scrambled work, decrypt an encrypted work, avoid, bypass, remove, deactivate or impair technological measure, without the authority of copyright owner. MPAA alleges that the RealDVD "illegally circumvents this copyright protection system" and that the product use is not one that is "intended" by a CSS license.

CSS stands for Content Scramble System. This is encrypted into the DVDs to prevent unauthorized reproduction and distribution of the copyrighted material within the DVd itself.

RealDVD, in expected retaliation, filed for a declaratory judgment that it is in compliance with the "DVD Copy Control Association’s (DVDCCA) license agreement by retaining the “content scramble system” used to protect DVDs," and has further enhanced it "with an additional layer of digital rights management protection." (See Digital Daily)

The main premise of the dispute is whether DVDCCA's license permits RNHE to have a product like RealDVD that allegedly circumvents technological protections?

RNHE is hedging its bet based on the recent decision in DVDCCA v. Kaleidescape where Judge Leslie C. Nichols found no breach of contract because "nothing in the DVDCCA licensing agreement prohibits the development of products that allow users to copy their DVDs." This matter has been appealed by DVDCCA.

DVDCCA's in its opening brief appealing this decision explains that the CSS License is structured as followed:

A General Specification is where the important provisions are tucked in i.e."crucial protections against unauthorized copying of DVD content, including, the requirement that when a machine plays back DVD content for viewing, the physical DVD itself must be present in the device." DVDCCA contends that the Court's interpretation that General Specifications are not part of the Technical Specifications, is in error. This addresses the contractual dispute.

The DMCA issues will depend on how the product is technologically structured; whether it was created to enable circumvention. RNHE insists that it has two layers of protection, over and above being in compliance with the the CSS requirement in the license.