Austin Technology Law Blog : Texas Technology Lawyers & Attorneys for Copyright, Trademarks & Software Licensing in Houston, Dallas & Austin TX

You may remember that we recently described the new procedure for obtaining generic top level domain names.  ICANN (The Internet Corporation for Assigned Names and Numbers) has proposed a new procedure to allow additional entities to act as domain registrars.  Included in this was the opportunity to propose an infinite variety of domain extensions and not be limited to the ones heretofore approved (and originally suggested) by ICANN. 

Now, the U.S. government has proposed that each member of the Governmental Advisory Committee (GAC) to ICANN have the right to object to any proposed extension and if a "consensus" of the GAC members is obtained, then ICANN will not approve the domain extension and will refund the fees paid by the applicant.  This supposedly is designed to limit the award of "objectionable" domain names such as .gay or .xxx or anything else that any GAC member's citizens feel runs counter to some aspect of their society or religion.  So, in addition to .gay, a really depressed nation might object to .cheery, .jolly or .festive.  And, in addition to .xxx, a nation might find .xoxox objectionable if they hate football coaches, tic-tac-toe players or post script huggers and kissers.

The U.S. proposal has not been warmly received by the other GAC members and in a response supported by a majority of the other GAC members, the GAC has recommended that the GAC's role be limited to advisory only and if ICANN goes against a GAC recommendation, ICANN's only requirement is to explain its position.

It is plain that this will not be the last we hear of this matter and much more discussion will be had when the actual applications come rolling in.

• Email This
• Print
• Comments
• Trackbacks

Metadata is data about data.  Software programs such as Excel, Word, e-mail clients and others routinely produce such metadata. 

In the instant case, National Day Laborers Organizing Network ("NDL") lodged a Freedom Of Information Act ("FOIA") request with four government agencies including Integration and Customs Enforcement ("ICE").  The agencies generally resisted the requests, citing expense and burden and did not comply with a discovery agreement among the parties.  NDL then brought a action to compel discovery.  While awaiting a hearing on the matter, NDL sent ICE a proposal for the form of the production.  The proposal was based on the formats routinely requested by the SEC and the DOJ.  ICE then responded with a response that NDL complained was produced in an unsearchable format, was stripped of all metadata and paper and electronic documents were merged together in one PDF file.

The Court then held that while no federal court has yet ruled that metadata is part of a public record several state courts (i.e. New York, Washington, Arizona) have uniformly so held.  After discussing the relationship between civil discovery rules and FOIA requests, the Court then said: "...certain metadata is an integral or intrinsic part of an electronic record.  As a result, such metadata is 'readily reproducible' in the FOIA context.  The only remaining issue is which of the many types of metadata are an intrinsic part of an electronic record.  Unfortunately, there is no ready answer to this question.  The answer depends, in part, on the type of electronic record at issue (i.e. text record, e-mail, or spreadsheet) and on how the agency maintains its records.  ... The best way I can answer the question is that metadata maintained by the agency as a part of the electronic record is presumptively producible under FOIA, unless the agency demonstrates that such metadata is not 'readily producible'."  [Emphasis added by the Court]  National Day Laborer Organizing Network, et al v. United States Immigration and Customer Enforcement Agency, et al, No. 10 Civ. 3488 (SAS), US District Court, S.D. New York, February 7, 2011

The Court took the opportunity to chastise the attorneys in the case about failing to cooperate, stating: "While certainly not rising to the level of a breach of an ethical obligation, such conduct certainly shows that all lawyers...need to make greater efforts to comply with the expectations that courts now demand of counsel with respect to expensive and time-consuming document production."

This decision is sure to have ramifications in all areas of discovery.  Look for future cases to flesh out the requirements.  It would behoove all document custodians to review this case in view of their policies of retention and destruction and take actions that will reduce the burden that will accompany the next discovery request.

• Email This
• Print
• Comments
• Trackbacks (1)

Updates on a few of our earlier posts:

<">

• Stuxnet - the worm that ate Iran, now considered as a cyber-conflict weapon.
• Bilski Patent Case - How are software patents treated?  USPTO releases standards.  Factors favoring patentibility satisfy machine or transformation test or provide evidence that an abstract idea has been practically applied.
• Combating Online Infringements and Counterfeits Act (COICA) - Senate Judiciary Committee holds hearings.
• Arcade Fire - HTML5 pioneer - Wins Grammy that was supposed to go to Eminem or Lady GaGa. 

   

  Film at eleven.

   

• Email This
• Print
• Comments
• Trackbacks

Binder & Binder is a national law firm devoted almost exclusively to the representation of persons seeking Social Security benefits.  Disability Group, Inc. is a competing law firm involved in the pursuit of the same clients.  In 2006, Disability Group purchased the words "Binder and Binder" as a Google AdWord.  As a result, some Google searches for the law firm Binder and Binder resulted in having Disability Group appear high in the sponsored search rankings.  Binder and Binder had registered trademarks for the use of their name.  Binder and Binder brought suit against Disability Group alleging: (i) infringement of a registered trademark; (ii) false advertising; and (iii) unfair competition.

On January 25, 2011, the U.S. District Court for the Central District of California (Case No. 07-2760-GHK), found that the actions of Disability Group did in fact constitute trademark infringement.

The Court found that: (i) there was no dispute that the defendants used plaintiff's mark in their GoogleAd campaign; (ii) that plaintiffs were, in fact, the owners of the mark despite some reorganization from partnership to LLP and several assignments of the mark; (iii) according to the Sleekcraft test, there was a strong likelihood of confusion and also found actual confusion;  and (iv) plaintiffs had not given consent to such use of their mark.

Using testimony about plaintiffs average profit on a case and the number of clicks on defendant's site and some other algorithms, the Court assessed damages for lost profits in the amount of $146,117.60. 

The plaintiffs also requested an award for corrective advertising.  The standard for this is to allow the plaintiff to recover the cost of advertising undertaken to restore the value that plaintiff's trademark has lost due to the infringement.  While the Court was of the opinion that defendant's actions would have given rise to this kind of damages, they declined to award any such damages because of the limited period of infringements (a few months) and the passage of substantial time since the infringement (2006).

The Court then found that the infringement was willful and under the treble damages provisions of the Lanham Act "enhanced" the damages to double the damages for lost profits.

The Court also found that attorney's fees and costs should be awarded to plaintiff because the infringement was "exceptional", i.e. willful, deliberate, knowing or malicious.  The Court declined to award punitive damages because punitives are not available under the Lanham Act and the Court found the double damages already awarded to be sufficient.

Defendants raised several defenses including one that said basically if the plaintiffs had just put the trademark notice (the R in the circle) on their name, Google would not have let the defendants do what they wanted to do and we wouldn't have had this problem.  Basically, "if you had told on me, mommy wouldn't have let me misbehave".  The Court didn't give this much weight.

So, when lawyers litigate with each other, the rest of the world just bemusedly views it as karmic justice but this case provides good instruction about the use of trademarks as search terms.  Other cases may not be this blatant, but look for other litigation on this emerging area of the law.

• Email This
• Print
• Comments
• Trackbacks

SEO is, of course, the acronym for Search Engine Optimization.  It's the practice of creating web sites, links, references and other mysterious arcana to enhance the chances that a particular web site will appear on the first page of results whenever you do a search (e.g. Google, Yahoo, Bing).  It is a well respected practice and something most everybody does.  The largest search engine, Google, has a trade secret algorithm that determines how such searches are ordered.

Google has a vested interest in appearing to present the search results in a rational order.  If it appeared that the system was materially flawed or gamed, then less importance would be placed on a search by Google and they might lose market share.  For that reason, they have a set of rules by which SEO purveyors are supposed to abide.  To violate these rules is to risk having Google take steps to cause your web site to appear lower in the Google results.

This brings us to the interesting case of J.C. Penney.  The New York Times reported on Saturday that during the recent holiday season, the rankings for searches for a number of things that J.C. Penney carries (e.g. dresses, bedding, area rugs, furniture, skinny jeans) routinely returned a number one ranking.   This raised the question as to whether this would have occurred without significant manipulation of the Google algorithm.  Turns out, probably not. 

J.C. Penney apparently engaged SearchDex, a SEO firm based in Dallas.  SearchDex supposedly used suspect methods, including placing links on unrelated, obscure, underused or dormant websites that pointed back to the J.C. Penney site.  Effective, definitely.  Ethical, matter of opinion.

SearchDex lists its ethical standards on its website and also lists its response to the Google standards for SEO activities.  According the New York Times article cited above, Google believes that SearchDex and J.C. Penney have violated the Google standards.  However, none of this appears to violate any laws and J.C. Penney has filed the obligatory "We Didn't Do Nothing" response.

One of the methods is to use services like TNX, which purports to raise website traffic by placing paid links on other sites that redirect the search to the target site.  The redirecting sites agree to allow the links in exchange for payment based on the number of redirects.

So, with sponsored links, Google AdWords, Google Places, TNX and really creative SEO operators, who's to know whether the searches are credible.  And, I would like to sign up somewhere to get our name on the first page of the listings.  Oh, wait, we are (today)!  (Search "Austin Technology Attorneys")

• Email This
• Print
• Comments
• Trackbacks

The Song-Beverly Credit Card Act of 1971 (Credit Card Act) (Civ. Code, § 1747 et seq.) is a California statute that prohibits businesses from requesting that cardholders provide "personal identification information" during credit card transactions, and then recording that information.

Yesterday, the Supreme Court of California reversed prior decisions and included a person's zipcode in the definition of "personal identification information" in a case where Williams-Sonoma asked for such information during a credit card transaction and then used such information to do targeted advertisement.  The Court made this holding while agreeing that a zip code was not unique to any particular person and that many people had the same zip code.

It is likely that the fact that the merchant recorded the information and then used it to deduce the customer's address played a big part in the Court's thinking.  Had the merchant merely requested it and then not recorded and used it, the result may have been different.  Under this reasoning, area codes, cities and counties of residence and other means of identifying the general area of personal residence could also be so classified and this would seem to be somewhat extreme.

• Email This
• Print
• Comments (1)
• Trackbacks

Top level domain names are the extensions that occur after the dot in URLs, such as the generic variety, e.g. .com, .edu, .org or the country code variety e.g. .AQ (Antartica), .CO (Columbia) or .VA (Vatican City).  There are presently 21 generic top level domains and approximately 250 country code top level domains.

ICANN (The Internet Corporation for Assigned Names and Numbers) is proposing to begin taking applications for a whole new series of generic top level domain names.  The new generic top level domain names will generally be limited only by the creativeness of the applicants and is, in fact, an application to become a registrar for the domain string for which you apply.  This opens up the possibility that a large corporation may become a registrar for entities within its corporate structure and a domain name like .walmart could be used to marshal all the company's domains under one domain name umbrella. 

Cities, states, areas, religions, professions or other organizations could conceivably obtain such generic top level domains.  However, the application process will be rigorous and the fees are designed to keep out the riff-raff.  Each application will have a fee of $185,000 of which $5,000 must be made as a down payment and the remainder must accompany the application.  There are some refund provisions where the applicants can get back from 20 to 70 percent but the price of cybersquatting will go up substantially under this procedure.  In addition, the applicant will be screened for prior acts of cybersquatting and will undergo extensive evaluation as to its operational, technical and financial capabilities.  There is also an ongoing quarterly fee and a per registration fee.

Trademark holders should monitor this procedure to make sure that their marks are not compromised by any applications.  The ICANN procedure provides for a trade mark clearinghouse and expedited dispute resolution.

So, plans are afoot in our firm to apply for the generic top level domain name: .law    When we obtain this and become the official registrar for this name, all the law firms will come groveling to our door and our goal of global domination will be complete.  Now, if we can just come up with $5,000.

• Email This
• Print
• Comments (3)
• Trackbacks

A couple of days ago, the Internet ran out of numbers.  How is that possible, you say?  Aren't numbers infinite? 

The numbers referred to are the internet protocol addresses (IP addresses) that are assigned to every device connected to the internet.  Each device has its unique number and the number is what allows the devices attached to the internet to talk to each other.  We humans deal in domain names like www.austintechnologylawblog.com but the computers convert these names into numbers that look like this: 192.0.2.53.  This numbering convention is called IPv4 and was developed in the early days of the internet and has been adequate until now.  IPv4 has a finite capacity of just over 4 billion addresses. 

IP addresses are administered by a non-profit entity known as ICANN (The Internet Corporation for Assigned Names and Numbers) and they allocate the numbers among 5 Regional Internet Registries (RIR).  What the exhaustion of numbers really means is that all available numbers have been allocated to the RIRs for further distribution and none remain in the ICANN central pool.  The RIRs will continue to distribute such numbers but even the end of that is in sight.

What happens now?  Complete shutdown, anarchy, the end of the Egyptian uprising and the demise of sexting?  Nope, luckily the folks looking after this have anticipated this (like Y2K) and have established IPv6, a new and improved IP address protocol.  IPv6 addresses are written in hexadecimal and have a 128-bit address space, which provides for 340 undecillion addresses.  Suffice it to say, that's a lot and should last into the foreseeable future.

IPv6 addresses will contain colons and will look something like this: 2001:0db8::53.  When you see two colons together it means that the segments between contain only zeros.  In the example above as given by ICANN, it really means: 2001:0db8:0000:0000:0000:0000:0000:0053

So, no need to panic just yet.  Supposedly, most existing devices we use today are compatible with IPv6.  Internet service providers will initiate roll out of the new numbers when needed and (supposedly) users will not have to take any real actions.  That remains to be seen but as of now, we've still got numbers.

• Email This
• Print
• Comments
• Trackbacks

We have mentioned the virus/malware known as Stuxnet several time in this blog.  When it first burst onto the scene, we thought it was interesting and possibly a new and more sophisticated virus.  Then it appeared that it may be the actions of a nation or nations and we became more intrigued.  Now, it is surmised that it has capabilities of causing more than delays in the construction of nuclear power plants and may be capable of causing another Chernobyl.  For our younger readers, that's not a good thing and moves Stuxnet into the frightening category.

I'm pretty sure we haven't heard the last of this.

• Email This
• Print
• Comments
• Trackbacks

Specialty House of Creation ("SHC") is a company started in a chicken coop in 1971 by a 63 year old grandmother and a 26 year old entrepreneur (who both apparently loved dogs).  Their business grew over the years and one of their products is the "Slot-Card with Claw".  This device is designed to keep casino goers from losing their player cards by tethering the card to a belt loop, shirt pocket, body piercing or other stable foundation.  SHC has a patent on this device.

SHC provided a number of these Slot Cards to the Quapaw Tribe of Oklahoma for use in the tribe's casinos.  The Tribe allegedly obtained more of these tsotchkes from another company and referenced the SHC patent number in the request.

SHC sued the Quapaw Tribe in the Federal District Court for the Northern District of Oklahoma.  The Tribe moved for dismissal due to lack of subject matter jurisdiction.  The Court granted the motion and dismissed the suit.  The Court followed a line of cases that indicate that a tribe is a sovereign power and as such is immune from private law suits (including patent and copyright infringement) unless such sovereign immunity has been waived.  The Court did not find any such waiver and therefore dismissed the suit.

I think we can blame this too on George Bush.

• Email This
• Print
• Comments
• Trackbacks