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

Once upon a time, most schools distributed annuals or pictures, names and some personal information about students so that other students could make connections. Then Mark Zuckerberg hacked into the Harvard computers and obtained private information of students and put that into a Hot or Not knockoff called “Facemash”.
Harvard threatened Zuckerberg with expulsion, charges for breach of security and copyright infringement. Harvard later backed off and the rest is history.
Fast forward to today and the behemoth that has now evolved from Facemash to Facebook is rigorously trying to keep anyone from using either “Face” or “Book” in their name if the entity is remotely associated with social media.
Facebook recently induced a site called Placebook to change its name to TripTrace and has now filed suit against a site called Teachbook, which is not even operable yet but purports to be an online information sharing vehicle for teachers (a large number of whom are prohibited from being on Facebook by school administrators).
Facebook is alleging in the suit against Teachbook that the term “Book” is highly distinctive and that most people associate it with social networking. Facebook throws in a claim of cybersquatting and wants the court to give it the domain name Teachbook. For good measure, they included counts of trademark infringement, unfair competition, and trademark dilution. Teachbook has only a couple of employees. Hello fly, meet cannon.
This indicates that Facebook will be aggressive against any online vehicle containing any variety of “Face” plus something or something plus “Book”.
No word yet on their stance on BookFace (actual trademark application made and abandoned several years before Facebook came around).
 

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Consider this abbreviated time line:

November 5, 2007 - Google, T-Mobile, HTC, Qualcomm and Motorola announce the release of Android and announce the creation of The Open Handset Alliance comprised of 34 companies that will free the mobile world of all restrictions (the last part is made up).  Nowhere in the announcement does Java get mentioned.

Same day (almost like they knew it was coming) - The Chairman and CEO of Sun (possessor of Java) heartily congratulates Google et al on the release of Android and hails the salutary effect it will have on the Java community.  The blog entry goes out of its way to call Android a "Java/Linux phone platform" and "a Java based platform".

April 20, 2009 - Oracle buys Sun.  In the press release announcing the sale, Oracle calls Java "the most important software Oracle has every acquired."

 August 12, 2010 - Oracle files suit against Google alleging "In developing Android, Google knowingly, directly and repeatedly infringed Oracle's Java-related intellectual property. This lawsuit seeks appropriate remedies for their infringement."

Now what happens?  Google will claim that they aren't using Java but built their own version of this platform called Dalvik using approved clean room methods and therefore haven't infringed on anything.  Google hasn't filed an answer yet and probably won't for some time.  Then the fun will start.  This has the potential to be a very visible and influential suit with ramifications for years to come.  Google is not likely to be the last company with Defendant after their name in this matter.  There are millions and millions of devices with Android running on them.  Plus it involves some heavyweights.

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Cyber security experts are scrambling to assess the past effects and the potential of a recently detected malware that has targeted utility systems primarily in the Middle East (beginning in Iran) and the United States. Microsoft has named the Trojan intruder “Stuxnet”.

On a very basic level, here is what Stuxnet does:
1. So far, it has targeted a Siemens system (SCADA) used primarily in the operation and control of electric power plants;
2. It has been carried on USB sticks that, when attached to a computer, automatically executes without any further action by a user, even if the AutoRun function is disabled;
3. The Trojan then seeks out and copies certain database information, including power plant designs;
4. Stuxnet exploits a flaw in the shortcut links files in Windows.

Microsoft has issued a work around that essentially turns off the shortcut function and changes the shortcut icons appearance on the screen.

So, if this only targets utility companies, unless you are a utility company or have one as a client, why should you care? Experts surmise that this was created to carry out industrial espionage but the same technique can be used for other targets. It could be used to target other trade secrets, personal financial information, medical records, etc.

We talked to a local security expert and there are reports that Stuxnet or variants are “in the wild” and could be delivered by a manner other than USB sticks via networks and remote web servers.

McAfee alleges that it has a defense against Stuxnet as does Symantec. As we noted in earlier posts (see here and here), these are examples of blacklisting. CoreTrace has demonstrated effectiveness against the intruder by using the whitelisting capabilities of its product Bouncer. See the YouTube video here:  http://bit.ly/bFCEdc.

This attack seems to be much more targeted and much more sophisticated that most of the prior threats and may herald a new age of malware menace.

So, it’s a dangerous cyber world out there. Use protection.
 

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So now you've chosen your entity, it's been incorporated, you have startup capital and are up and running, you've spent thousands of dollars in creating a logo, branding, and marketing.  Things are going great, and then one day you are hit with a cease and desist letter stating that you are infringing on another company's trademark because the name you are using is confusingly similar to the other company's name.  Now you are not only in danger of being sued, but you've just wasted thousands of dollars and many months of hard work on a name and brand you can't even use.  This is just one illustration of how important it is to assess as early as possible the intellectual property (IP) landscape of your company.  Three questions every new business owner should ask: "What IP does my company have?", "How do I protect that IP?" "Am I in danger of infringing the IP rights of another?"  This post will give a summary of the main types of intellectual property, how to protect IP, and how to avoid infringement.  This is just a summary and is no means comprehensive.  Every new business owner should consult with an attorney about their IP issues.

The four main types of IP: 1)Trademarks 2)Copyrights 3) Patents and 4)Trade Secrets. 

TRADEMARK LAW

Trademarks allow a company to easily distinguish itself in the marketplace in the minds of consumers.  A well known trademark is often one of a company's biggest assets.  Trademark law gives a company the exclusive right to use a distinctive mark used to identify its goods or services.  It allows for a company to develop a brand in the marketplace without fear that another company will cause a "likelihood of confusion" by using a similar mark.  Trademarks do have "common law" protection under federal law and the law of most states; meaning that you do not have to register to have protection.  But registering your distinctive mark at the federal and state level provides a number of benefits.  Registering serves as constructive notice that your mark is in use, it makes it easier to prove your case in court, and it gives you protection in a far greater area.  Prior to registration, the mark should be followed by "TM" for trademarks and "SM" for service marks.

Not all names are available for trademark protection.  The mark must be sufficiently distinctive.  The level of distinctiveness depends on the context it is used.  Generic or common terms are not protectable if they are used in the area they describe.  For example, "Apple" is protectable when used with computers, but would not be protected if the company sold fruit.  Marks can't be overly descriptive either.  For example, "Eye-Care Center" would not be protectable for an optometrist's office.  Suggestive marks have a better chance of obtaining protection, but are not perfect because they could be seen as too generic/descriptive.  For example, "America Online" is suggestive of the services it provides.  The best choice for a protectable mark would be an arbitrary or fanciful term.  (Think "Yahoo!" and "Google")  It should be noted generic or descriptive marks can become protectable through their use. A mark can obtain "secondary meaning" through its extensive and continuous use in commerce to such an extent that it has achieved the required level of distinctiveness. 

Picking a distinctive mark is just half the battle.  You must also ensure that you are not using a mark that infringes another company's rights.  The basic test the courts use when determining if a mark is infringing is "likelihood of confusion" in the minds of consumers.  There are thirteen factors courts consider when determining likelihood of confusion.  (Known as the "DuPont Factors")  You should search extensively for similar marks on the USPTO website  and consult with an attorney before deciding on your mark.

COPYRIGHT LAW

Copyright law protects original works of authorship fixed in a tangible medium of expression.  Obviously, this includes many areas: literary works, musical works, dramatic works, photos, paintings, sculptures, architectural works to name a few.    Business that don't produce these types of works should still consider whether they have copyrightable material.  Marketing materials, training materials, or other works that the business creates during its operations could potentially be copyrightable.

Anytime a business contracts to create something new it should consider the copyright involved.  Just because someone creates something for a business doesn't necessarily mean the business own it.  This is a common issue in "works for hire" cases, and every company should address ownership of the copyright when contracting for works made for hire. 

Similar to trademarks, copyrights can be registered, but they do not have to be.  Copyright protection exists from the moment of creation.  But like trademarks, there are a number of benefits from registration.  It is much easier to prove infringement if the copyright is registered, there are substantial statutory damages as well attorney fees available to the registered copyright holder.  Copyrights are relatively easy to register compared to patents and trademarks, but registration can be deceptive in its simplicity.  Consulting with an attorney is recommended. 

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Recently, one of our clients received an email from Chinese domain registration company stating a

 foreign company was attempting to obtain their domain name. Our client, for purposes of privacy we’ll call them “CustomerName,” is a start-up in the process of obtaining a trademark of their company name. This email, although suspiciously spam-like, created some concern and

 confusion for CustomerName. Was this spam? What rights would they have if a foreign company was to use this domain name? What is my recourse?

First things first, it’s important to determine whether something like this is just a “Nigerian Prince” scam. A quick search turned up an article on the domain registration email our client received. The article, by Happy Living with Hosea, provides a great analysis of the drafting of the email. Hosea pointed out things a Chinese company would have likely done differently if this was a legitimate operation. First, it was evident something peculiar was up based on the grammar and punctuation of the email. I’ll be the first to admit I send out letters with grammatical and punctuation errors on a daily basis. However, this one bereel bad! So I feel “it is our duty to notice you” (a little example) of how this poor drafting is a good indicator of a scam. Additionally, had this been one carelessly drafted email that would be one thing, but after some research, it becomes clear this is not an isolated case (just read the comments to the Hosea article).

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The US Copyright Group is a group formed by a lawfirm in Leesburg, Virginia, which according to their website, is designed to "Save Cinema" from the evils of illegal downloading.  We have mentioned them before in relation to their attempts to involve the internet service providers.  They have filed many lawsuits, primarily in the DC Federal District Court, against multiple defendants, mostly described as "John Does" since they have not as yet definitively identified the defendants.  In a couple of the suits involving the movies The Steam Experiment and Far Cry, they have provided for 2,000 and 4,577 defendant Does, respectively.  They propose to obtain the identities of the alleged infringers through discovery in the suits by getting the "infringers' identities through ISP subpoenas", again according to their website.  They advertise that they do all of this on a contingent fee basis.

Although it has not been specifically determined yet, it is unlikely that all of the alleged defendants live in the DC area, so it would be very difficult for each defendant to appear and defend and conversely, it would be very difficult for each defendant to be sued individually in the area where they live.  You can see why the US Copyright Group has tried to join all defendants in a single case. 

The Rules of Civil Procedure for the DC Court states that defendants can be joined in a single suit if the actions giving rise to the suit arose from the "...same transaction, occurrence or series of transactions or occurrences..." and a question of law or fact common to all the defendants will arise in the case...".

The two cases mentioned above have found their way onto the docket of Judge Rosemary Collyer and she has decided to rule on the issue of joinder of all the defendants.  She has given the plaintiffs until June 21 to show cause why all but one defendant in each case should not be dismissed due to misjoinder.  This could result in the dismissal of 1,999 Does in one case and 4,576 Does in the other.  Hence the bad rhyme in the title of this post.

A couple of public interest groups, including the ACLU, have filed amici curiae briefs on the side of the defendants.  The ruling by the judge in this case will have major ramifications on the nature of these types of cases going forward. 

Incidentally, The Steam Experiment's plot line is "A deranged scientist locks 6 people in a steam room and threatens to turn up the heat if the local paper doesn't publish his story about global warming" and Far Cry is based on a video game.  This is not a commentary on the value of the thing allegedly stolen.

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Time Warner Cable has just been accused of promoting copyright infringement in a pleading filed in a lawsuit targeting illegal downloaders.  But first a bit of history about this case.  The US Copyright Group is a company owned by a collection of IP lawyers who are filing a number of lawsuits on behalf of movie producers to seek damages from illegal downloaders.  So far five lawsuits have been filed against tens of thousands of alleged infringers.  (Included in that group of producers is the infamous Uwe Boll.)  This campaign is a stalking horse of sorts in an effort to prove to the large studios that they should join in this strategy of suing thousands of alleged infringers instead of going after the torrent sites or a small group of infringers. 

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Ina Fried, from CNET.com, reported this week that Microsoft filed a patent infringement case against SalesForce.com. SalesForce.com is, among other things, a customer relations management (CRM) software company that provides its product through the cloud. Microsoft is no stranger to patent lawsuits. In fact, they were just ordered to pay $200 Million to Virnet X in a patent infringement lawsuit regarding VPN technology. However, the peculiar thing about the lawsuit filed against SalesForce.com was that it was Microsoft doing the suing. Microsoft has only filed 4 suits against competitors. Most infringement issues involving Microsoft commonly end up in some type of license agreement with the alleged infringer. (See HTC) From this Microsoft receives damages and then licenses their technology to the competitor. However, there appears to be more uncertainty surrounding this case.

It is no secret Microsoft is one of the more established players in the IT world. However, Microsoft, along with everyone else has been losing ground to Google. Microsoft and Google are competitors in e-mail (Gmail/Hotmail), browsers (chrome/IE), search engines (Bing/Google), electronic documents (Office/Google docs), and soon in operating systems (Windows/Chrome OS). Microsoft is attempting to chase Google into the cloud computing realm, as evidenced by the direction Office 2010 and other products are trending. The lawsuit against Salesforce.com might be just another way to gain ground. One of the benefits of being in the game as long as Microsoft has is that they have ownership to some of the foundational technology we all use today. Take a look at the subject matter referenced in these patents:

Ø       7,251,653: Method and system for mapping between logical data and physical data

Ø       5,742,768: System and method for providing and displaying a web page having an embedded menu

Ø       5,644,737: Method and system for stacking toolbars in a computer display

Ø       6,263,352: Automated web site creation using template driven generation of active server page applications

Ø       6,542,164: Timing and velocity control for displaying graphical information

Ø       6,281,879: Timing and velocity control for displaying graphical information (the 164 patent above looks to just be a continuation of this patent)

Ø       5,845,077: Method and system for identifying and obtaining computer software from a remote computer

Ø       5,941,947: System and method for controlling access to data entities in a computer network

All of these patent subjects are associated with cloud computing factors. This is no surprise since Salesforce.com is run from the cloud, but it does question what Microsoft will do next? Will they pursue other companies that infringe on the broad patents? Are they trying to get enforcement out of their patents before the Supreme Court returns an opinion on In re Bilski? Are they just trying to get another license agreement?

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