October 2013 Vol. 53, No. 1
Illinois State Bar Association Intellectual Property
The newsletter of the Illinois State Bar Association’s Section on Intellectual Property Law
Trademark Trial and Appeal Board not flip Inside about the bird By Steven L. Baron and Natalie A. Harris Trademark Trial and Appeal Board not flip he Trademark Trial and Appeal Board holic beverages.5 Following the USPTO’s refusal, about the bird...... 1 (“TTAB”) ruled hands down against the Luxuria appealed to the TTAB. maker of a beverage bottle that gives After the parties submitted their respective Torrent Wars: Copyright T 1 consumers the finger. On September 19, 2011, appeal briefs, Luxuria filed a remand request for trolls, legitimate IP rights, the TTAB affirmed the United States Patent and consideration of additional evidence.6 The al- and the need for new Trademark Office’s (“USPTO”) refusal to register a legedly late-breaking evidence included articles rules vetting evidence trademark application for “a bottle in the shape suggesting that the middle finger is losing its and to amend the of a hand with the middle finger extended up- shock value;7 can be used to express something Copyright Act ...... 1 wards” on the grounds that the proposed mark is as benign as excitement over new shoes8 and “immoral” or “scandalous” within the meaning of is often used “in a cheeky and fun manner, be- Breaches of privacy 2 15 U.S.C. § 1052(a). tween friends.”9 The TTAB determined that Luxu- and data—New risks, On March 12, 2008, Luxuria, s.r.o. (“Luxuria”), a ria failed to demonstrate “good cause” for the re- new insurance...... 7 Czech company, filed an application based on its quested remand, in part because it was not clear 3 international registration depicting a beverage that the material was not previously available.10 Intellectual bottle flashing “the universal signal of discon- ImprobabilitiesTM...... 8 tent”4 for beers and other alcoholic and nonalco- Continued on page 2 Upcoming CLE programs...... 10
Torrent Wars: Copyright trolls, legitimate IP (Notice to librarians: The following issues were published in Volume 52 of this news- rights, and the need for new rules vetting letter during the fiscal year ending June 30, 2013: September, No. 1; December, No. 2; evidence and to amend the Copyright Act March, No. 3; May, No. 4; June, No. 5). By Jeffrey Antonelli
torrent1 is a technical name for a new way often took a few minutes (sometimes an hour or If you're getting of sharing electronic files across the inter- more). Millions became familiar with the prog- this newsletter Anet. When the internet was young, people ress bar watching it countdown from 0 to 100% by postal mail were encouraged to “surf the web” and explore a complete. Then came Napster, a new software new way of sharing information across vast dis- program that allowed faster distribution of those and would tances and in remarkable time. An e-mail from electronic files, opening up the ability to quickly prefer electronic the United States to Europe could receive a reply share files with thousands or millions of others. delivery, just in a matter of minutes. Electronic files contain- Today, a program called BitTorrent is spurring ing a photograph, a document, or even a short a new wave of internet file sharing, and along send an e-mail to movie clip could be downloaded with the click Ann Boucher at of a mouse. Using a 56k modem connection this Answers on page 3 [email protected] Intellectual Property | October, Vol. 53, No. 1
Trademark Trial and Appeal Board not flip about the bird Intellectual Property Continued from page 1
The TTAB allowed Luxuria to file a second SCHLONG crocheted fabric covers for glass Published at least four times per year. request for remand supported by a showing water pipes and male penises.20 It seems the Annual subscription rate for ISBA of good cause, specifically recommending TTAB may not quite have its finger on the members: $25. an affidavit regarding Luxuria’s efforts -dur pulse of contemporary attitudes towards To subscribe, visit www.isba.org ■ ing prosecution to obtain the additional evi- scandal and immorality. or call 217-525-1760 dence.11 Luxuria did file a second request for ______remand, but did not lift a finger with respect Mr. Baron,
2 October, Vol. 53, No. 1 | Intellectual Property
Torrent Wars: Copyright trolls, legitimate IP rights, and the need for new rules vetting evidence and to amend the Copyright Act
Continued from page 1 with it an ocean of online copyright infringe- tiff. The article concludes by recommending agrees to sever the defendants. As recently ment. Those running the program post tor- a judicial “screening” process to prevent what noted by Northern Illinois District Judge rent files on immensely popular websites like the writer has seen as widespread wrong- John Tharpe, Jr., “There is a split of author- the Pirate Bay. While filed to ostensibly catch ful accusations of copyright infringement, ity8 nationally and within this district over and stop the online infringers, critics of this known as false positives, as well as a recom- whether it is appropriate to join9 in a single practice contend it is really about revenue. mendation to amend the US Copyright Act lawsuit many anonymous defendants who Consequently, the blogs on the internet to reduce the maximum statutory damages are alleged to have participated in a sin- came up with an addition to the English and from $150,0007 to $5,000 for consumers gle BitTorrent swarm.... The disagreement legal lexicon: the copyright troll.2 who do not distribute the copyrighted work among the courts centers on the question of According to many vocal critics,3 a cot- for profit. These recommendations, if imple- whether claims against multiple defendants tage industry of enterprising lawyers sprang mented, would reduce the extraordinarily who participated in the same BitTorrent up not to help the owners of copyrighted high incidence of innocent individuals and swarm arise out of the same transaction or works stop online piracy, but to recoup lost families being targeted by copyright troll series of transactions, as required for joinder income for movies that bombed at the box attorneys; and, likely, also have the effect of under Rule 20(a)(2)(A).”10 For Judge Tharpe, office. Worse yet, allegedly unethical lawyers constraining new copyright infringing filings Jr., at the early stage of discovery, because are accused of not only using unprofessional to those defendants who refused to pay a BitTorrent “requires a cooperative endeavor tactics to “shake down” and harass alleged settlement demand of hundreds of dollars, among those who use the protocol,” and be- infringers4—many of whom were actu- rather than the current settlement demands cause “Plaintiff has limited its complaint to ally innocent—but of actually providing the of $2,000 to $20,000 or more currently seen participants who are likely located in this dis- copyrighted content online for BitTorrent today. trict and who participated in a swarm over a distribution in order to induce copyright in- relatively brief time frame....the Court will not fringement.5 Once the consumer used Bit- The ISP notice sua sponte find misjoinder at this time and Torrent or similar peer-to-peer software to Typically, the consumer’s first notice will grant the obtain the copyrighted work, the copyright about a federal copyright lawsuit will be a Plaintiff leave of Court to issue the sub- owner’s computer network forensics team letter in the mail from their ISP, informing poenas it proposes.” provided a log of internet addresses (inter- them that a lawsuit has been filed and a sub- For those not in Judge Tharpe’s court- net protocol addresses, or “IP addresses”) to poena has been received to reveal their per- room, the motion to sever and quash the lawyers who filed lawsuits seeking the iden- sonal identity and contact information. The subpoena may also request a protective or- tity of these individuals. Settlement demand letter informs the consumer that the lawsuit der be entered allowing the defendant to letters then followed. In the case relating alleges the home’s internet connect was ob- proceed anonymously if the motion to sever to the recently dissolved Prenda law firm served taking place in a BitTorrent “swarm” is not granted. In order to have any realistic of Chicago, the infamous law firm received on a specific date and time and their Internet chance of success, the motion for protec- national attention after Los Angeles federal Protocol (IP) address was logged in associa- tive order should only be presented if the judge Otis Wright issued what has become tion with this online activity. The ISP will then underlying copyrighted work is adult in na- known as the “Star Trek” sanctions order,6 provide the consumer until a certain date, ture. However, in some circumstances it may in which Judge Wright accused the lawyers usually 30 days from the date of the letter, be appropriate to ask for a protective order associated with Prenda of “brazen miscon- and the opportunity to file objections with even if the copyrighted work is non-adult in duct and relentless fraud,” and referred the the court. Defendants can request that the nature, particularly if a showing can be made matter to the United States Attorneys Office, subpoena be quashed or vacated, promising that plaintiff’s counsel has acted in a harass- the Criminal Investigation Division of the IRS, not to release the consumer’s information to ing manner in the past once they received and several federal and state bar associations plaintiff’s counsel unless and until the judge the identifying information from the ISP. for investigation. rules on the motion. This article provides practical advice for Oftentimes, motions to quash the sub- The settlement demand letter practitioners whose clients are on the receiv- poena are combined with motions to sever In many BitTorrent copyright infringe- ing end of a summons for a federal copyright the defendant from the complaint if plaintiff ment cases, once plaintiff’s counsel receives infringement lawsuit, or more commonly a has chosen to group a number of defendants the consumer’s identity information from call from a head of household who has re- into the same pleading (often referred to as the ISP, a settlement demand letter is im- ceived a notice from their Internet Service “mass joinder” cases due to a previous trend mediately sent. These letters typically rely on Provider (ISP) stating that a subpoena has by plaintiffs to attempt to group hundreds, citing cases whose outcomes may be outliers been received requiring the ISP to release the or even thousands of defendants into the or have nothing to do with online infringe- subscriber’s personal identifying information same complaint), asking that the subpoena ment. Even when they are related to online to the copyright infringement lawsuit’s plain- be quashed as a consequence if the court infringement the cases cited may be those
3 Intellectual Property | October, Vol. 53, No. 1 in which the defendants acted particularly torneys fees is discretionary, not absolute16. telephone bill made a specific telephone egregiously, not only violating the Copy- Furthermore, with the civil burden of proof call.”20 The court explained that due to the right Act11 but also committing perjury and being mere preponderance of the evidence increasing popularity of wireless routers, it is spoliation of evidence resulting in especially rather than beyond a reasonable doubt or a even more doubtful that the identity of the high judgments.12 For example, in the first clearly convincing standard, it is entirely pos- subscriber to an IP address correlates to the reported BitTorrent case to go to trial, Malibu sible that a judge or jury could find in favor of identity of infringer who used the address.21 Media v. Does (EDPA), in addition to the de- the plaintiff even when there is no more evi- The Honorable Harold. A. Baker of the fendant admitting at the eleventh hour be- dence that defendant committed the copy- Central District of Illinois has stated, “Where fore trial he actually did commit copyright right infringement other than the plaintiff’s an IP address might actually identify an in- infringement, he also then admitted that he proof that defendant’s IP address was logged dividual subscriber and address[,] the corre- had lied to the court in proclaiming his inno- in a BitTorrent swarm. lation is still far from perfect.... The infringer cence, and tried to cover it up in wiping his might be the subscriber, someone in the computer hard drive clean. To many observ- Evidentiary problems—The failure subscriber’s household, a visitor with her lap- ers including the writer, this “bellwether” trial to control for “false positives” top, a neighbor, or someone parked on the appears to have been a dud because there The computer science literature and fed- street at any given moment.”22 Judge Baker was no cross examination of the witnesses eral courts across the country have cited was accurately articulating that IP subscrib- put on by plaintiff. Cross examination is an problems with the reliability of BitTorrent ers are not necessarily copyright infringers,23 element most attorneys consider essential to copyright plaintiffs’ methods of so-called and referred to an MSNBC article by Carolyn the adversarial process and the truth-seek- identification of infringers. For example, a Thompson of a raid by federal agents on a ing purpose of trial. Yet, these cases and the 2008 study, “Challenges and Directions for home that was linked to downloaded child settlement demand letters which cite them, Monitoring P2P File Sharing Networks – or – pornography. “Agents eventually traced the understandably make clients extremely anx- Why My Printer Received a DMCA Takedown downloads to a neighbor who had used ious even if they did not commit any copy- Notice”17 found that practically any Internet multiple IP subscribers’ Wi-Fi connections (in- right infringement. These letters usually state user can be framed for copyright infringe- cluding a secure connection from the State the consumer can make it all go away for a ment: “By profiling copyright enforcement University of New York).”24 settlement payment, usually in the range of in the popular BitTorrent file sharing sys- $2,000 to $5,000.13 tem, we were able to generate hundreds of The need for a court screening real DMCA takedown notices for computers process To settle or fight at the University of Washington that never In BitTorrent copyright litigation, the con- It is no secret that litigation is expensive, downloaded nor shared any content what- nection between an IP address, an ISP sub- and that fact is often used by plaintiffs as a soever.” “Further, we were able to remotely scriber, and the actual infringer is even more factor in determining how much to demand generate complaints for nonsense devices tenuous than in those situations illustrated in settlement. For an innocent defendant to including several printers and a (non-NAT) in the child pornography raid above (where choose not to pay a settlement of a few thou- wireless access point.” “Our results demon- the problem is a “hijacked” wireless internet sand dollars, and instead pay his or her attor- strate several simple techniques that a mali- connections by a neighbor). In a nutshell, ney potentially tens of thousands of dollars cious user could use to frame arbitrary net- the additional problem posed in identifying or more in legal fees, clearly more than finan- work endpoints.” These results were affirmed copyright infringers in BitTorrent litigation is cial incentives must be at play. Often times, years later in a study by the same authors, identity theft, where the infringer who is de- innocent defendants will pay a settlement The Unbearable Lightness of Monitoring: Di- termined not to get caught simply fakes (or of $2,000 or so rather than live through the rect Monitoring in BitTorrent,
May 1, 2012) (same). partment of Computer Science and Engineering 28. Tim Worstall, “Quite Amazing, Prenda 9. See, Fed. R. Civ. P. 20(a)(2)(A) 18. SBO Pictures, Inc., supra, 2011 WL 6002620, Law Was Seeding The Torrent Sites It Then Sues 10. Osiris Entertainment LLC v. Does 1-38, 13-cv- at *3 People For Downloading From,” Forbes, Aug. 04901 NDIL, August 20, 2013 19. In re Bittorrent Adult Film Copyright Infringe- 21, 2013,
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6 October, Vol. 53, No. 1 | Intellectual Property
Breaches of privacy and data—New risks, new insurance By Daniel Kegan
he widespread adoption and intrusion cards should be familiar with the annual PCI/ of the Internet has made many pro- Here “sensitive data” is defined as “data DSS audit. Firms not processing payment Tfessional, and consumer, tasks much including, but not limited to, Personally Iden- cards will prudently audit their information easier. The ubiquitous Internet has also made tifiable Information (PII), Protected Health practices and possible sensitive data breach- breaches of privacy and data easier for tort- Information (PHI), Social Security Numbers es and leaks. Beyond the liabilities of any in- feasors. Some surveys conclude over half (SSN), individual taxpayer identification formation holder’s leak, improper disclosure of small businesses have experienced data number, drivers license number, passport of sensitive data in litigation risks sanctions. ■ breaches. Responding to a data security number, other federal/state identification ______breach is unpleasant, and often regulated number, payment card data (credit or debit; Daniel Kegan,
7 Intellectual Property | October, Vol. 53, No. 1
Intellectual ImprobabilitiesTM By Daniel Kegan
BUD, ORD? Anheuser-Busch filed appli- businesses, residents, visitors, and village of the technical briefing on the inner work- cations to register 42 airport codes as trade- workers. Community Development Direc- ings of Trademark Status and Document Re- marks. tor Steve Gutierrez anticipates a 6-9 month trieval (TSDR) is now available:
8 October, Vol. 53, No. 1 | Intellectual Property for hire. USPTO has received a number of requests nology following registration, or should for amendment under §7, as well as inquiries Iraq Trademark Registrations, Baghdad similar amendments be permitted in from registration owners, seeking to amend and Kurdish. The Trademark Office of the applications prior to registration (see 37 identifications of goods/services due to Kurdish region of Iraq adopted the currently C.F.R. §2.71(a), stating that prior to regis- changes in the manner or medium by which applicable fee schedule of the Trademark tration, an applicant may clarify or limit, products and services are offered for sale and Office of Baghdad, effective 1June2013. The but not broaden, the identification)? provided to consumers, particularly because Trademark Office of Baghdad issues its reg- 4. What type of showing should be required of evolving technology. In some cases, these istration for the whole Iraq nation. A Kurdish for such amendments? Should a special requests have also sought a corresponding region registrant may also seek local protec- process be required to file such amend- change in classification. tion in that territory. ments, apart from a request for amend- Examples of these requests include ment under §7? By Royal Decree, 23June2013 (14 amending: Class 9 computer software pro- 5. Should such amendments be limited to Sha’aban 14340 H), the official Saudia Arabia grams to providing software as a service in certain goods, services or fields (such as weekend is changed from Thursday-Friday to Class 42; Class 9 items featuring music (e.g., computer software, music, etc.), and if so, Friday-Saturday starting 29Jun2013, aligning audio cassettes, audio tapes, disks, diskettes, how should the determination be made local banking and business days with most of vinyl records, etc.) to musical sound record- as to which goods, services or fields? the region. ings in Class 9; Class 16 printed magazines 6. Should a distinction be made between to providing on-line magazines in Class 41; Croatia joins the EU, becoming the 28th products that have been phased out and Class 41 entertainment services such member state. The Treaty of Accession was (such as eight-track tapes), as opposed as providing cable television entertainment signed 9Dec2011. This was the seventh en- to products for which the technology is programs to providing television entertain- largement of the European Community since evolving (such as on-line magazines), or ment via the Internet in Class 41. it was established in 1957. should amendments be permitted for The USPTO previously has taken the po- both categories of products? Identical or Fraternal Twins or. The sition that such amendments impermissibly PTO has added an optional tool to its regu- expand the scope of a registration. However, 7. Do you believe the scope of protection lar Trademark Electronic Application System registration owners seeking to amend their in an identification of goods/services is (TEAS) application form (non-TEAS Plus). identifications in this matter have countered expanded if an amendment is allowed to The system will compare of user-entered that public notice would not be adversely alter the medium of the goods/services? free-form goods/services description with impacted because the core goods/services 8. Would the original dates of use remain the ID Manual and inform the user if there is remain the same. They further assert that accurate if such amendments are permit- an identical match, a possible match, or no merely changing the medium for the goods/ ted? match found. services would not alter or expand the scope 9. What would the impact of such amend- ments be on the public policy objective of It’s Not Easy Being Green (Kermit). The of protection granted under a registration. ensuring notice of the coverage afforded US Department of Commerce published In response to these requests, the USPTO is under a registration? 31July2013 a green paper on Updating Copy- seeking feedback from U.S. trademark own- 10. Please provide any additional comments right Policies for the Internet Age, deemed by ers, practitioners, and other interested par- DOC, the most thorough and comprehensive ties regarding their views about these pro- you may have. posed amendments and USPTO policy on analysis of digital copyright policy issued by Essential Government Operations. As this subject. Please submit it no later than any administration since 1995. The report is of 1 October 2013, the first day of the federal December 1, 2013 to TMFeedback@uspto. a product of the Department of Commerce’s government shutdown, user-fee-supported Internet Policy Task Force (IPTF) with input gov, with the subject line “Technology Evolu- tion.” US Patent and Trademark Office had funds to from the U.S. Patent and Trademark Office operate for about four weeks; the Copyright (USPTO) and the National Telecommunica- 1. Please identify your relevant background Office, a branch of the Library of Congress, tions and Information Administration (NTIA). on this issue, including whether you are closed most operations, including its
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Pre- mentary to ISBA Members Only. 2:00 Eastern. inal Justice Section. 9-4. sented by the Illinois State Bar Association – Complimentary to ISBA Members Only. 12:00 Tuesday, 3/25/14- Chicago, ISBA Chi- Friday, 11/15/13- Chicago, ISBA Re- Eastern. cago Regional Office—Master Series: The gional Office—Collection Issues You Don’t Cybersleuth’s Guide to the Internet: Super Know About…But Should. Presented by the Friday, 2/7/14- Webinar—Advanced Search Engine Strategies and Investigative ISBA Commercial Banking, Collections and Tips to Fastcase Legal Research. Presented Research. Presented by the Illinois State Bar Bankruptcy Section. 9-4:30. by the Illinois State Bar Association – Compli- Association. All day. mentary to ISBA Members Only. 12:00 East- Wednesday, 11/20/13 – Webinar—In- ern. Friday, 3/28/14- Chicago, ISBA Chi- troduction to Boolean (Keyword) Search. Pre- cago Regional Office—Master Series: The sented by the Illinois State Bar Association – Friday, 2/7/14- Bloomington-Normal, Uniform Commercial Code Made Easy: A Complimentary to ISBA Members Only. 1:30 Marriott Hotel and Conference Center— Groundbreaking Approach to Incorporating – 2:30 p.m. CST. Hot Topics in Agricultural Law- 2014. Pre- the UCC into Your Practice. Presented by the sented by the ISBA Agricultural Law Section. Illinois State Bar Association. All day. ■
10 October, Vol. 53, No. 1 | Intellectual Property
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