October 2013 Vol. 53, No. 1

Illinois State Bar Association

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: 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 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 , 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 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, , is a partner and Ms. Harris, , is an associate with the law firm of Mandell Menkes LLC. © Mandell Menkes LLC, 2013 424 S. Second Street tion. Accordingly, the TTAB denied Luxuria’s Springfield, IL 62701 12 request for remand. 1. Phones: 217-525-1760 OR 800-252-8908 Luxuria filed its reply brief and attached www.isba.org the very same evidence it had sought to Editor make of record through its prior requests for Daniel Kegan remand.13 Luxuria crossed its fingers, hoping Kegan & Kegan, Ltd. the TTAB would turn a blind eye. However, 79 W. Monroe St., Ste. 1320 the TTAB caught Luxuria red-handed: “We 2. In re Luxuria s.r.o, 100 USPQ 2d 1146 (TTAB Chicago, IL 60603-4969 cannot help but note the convergence be- 2011). 3. According to the WIPO database for the Managing Editor/ tween applicant’s actions toward the Board Production 14 Madrid System for the International Registration and the message conveyed by its mark.” As of Marks, Luxuria’s mark (International Registra- Katie Underwood a result, the TTAB disregarded Luxuria’s entire tion No. 969241) is registered in Australia, Japan, [email protected] reply brief, including the attached evidence. Namibia, Norway and Zambia. The same mark Luxuria may have let an opportunity slip was refused registration in Belarus, China, Cuba, Intellectual Property through its fingers by failing to make its evi- Cypress, Morocco, Mozambique, Serbia, Russian Section Council Federation, Singapore, and the Ukraine. dence of record. The TTAB acknowledged Shannon AR Bond, Chair . Joseph T. Nabor, Vice Chair that “[w]hether the mark consists of or com- 4. People v. Meyers, 352 Ill.App.3d 790, 794 (2nd Christopher J. McGeehan, Secretary prises scandalous matter must be deter- Dist. 2004). Charles L. Mudd, Jr., Ex-Officio 5. In re Luxuria, 100 USPQ 2d at 1146. mined from the standpoint of a substantial David M. Adler Yanling Jiang composite of the general public (although 6. In re Luxuria, 100 USPQ 2d at 1147. 7. TTAB Proceeding No. 79055664, Applicant’s Patrick Arnold, Jr. Daniel Kegan not necessarily a majority), and in the con- Request To Suspend and Remand Appeal For Con- Barbara B. Bressler Nicole E. Kopinski 15 text of contemporary attitudes.” Further- sideration of Additional Evidence, filed Nov. 30, Dennis F. Esford Adam BE Lied more, some evidence properly in the record 2009 at Ex. A (Martha Irvine, Is the Middle finger James G. Fahey Alan R. Singleton Deirdre A. Fox Eric R. Waltmire suggested that “the finger” “can be a strange, Losing Its Shock Value?, Columbian, Feb. 26, 2003). Eugene F. Friedman Alan M. Zulanas friendly greeting for some” and that the 8. Id. at Ex. B (Ira P. Robbins, Digitus Impudicus: The Middle Finger and the Law, 41 U.C. Davis L. Rev. Rachel McDermott, Staff Liaison gesture can be found in film, television and 1403, 1407-8 (2008)). 16 Bridget C. Duignan, Board Liaison political contexts. Luxuria may have laid 9. Id at p.3 and Ex. C. Joseph T. Nabor, CLE Coordinator its finger on critical evidence demonstrating 10. In re Luxuria, 100 USPQ 2d 1147. Deirdre A. Fox, CLE Coordinator 11. Id. the changing nature of the general public’s Lewis F. Matuszewich, CLE Committee Liaison perception of “the bird,” but its procedural 12. Id. 13. Id. misstep cooked the goose. 14. Id. at 1148, fn 3. The TTAB concluded that the gesture 15. Id. at 1148 (citing In re Boulevard Ent., Inc., depicted by Luxuria’s mark is the visual 334 F. 3d 1336 (Fed. Cir. 2003)). Disclaimer: This newsletter is for subscribers’ per- equivalent of the extremely offensive exple- 16. Id. at 1150. sonal use only; redistribution is prohibited. Copyright 17. Id at 1151. Illinois State Bar Association. Statements or expressions tive “f*** you,” and noted that “[j]ust as these of opinion appearing herein are those of the authors 18. U.S. Serial No. 85322631 words would be considered scandalous and and not necessarily those of the Association or Editors, 19. U.S. Serial No. 3621024 and likewise the publication of any advertisement is not immoral if used as a trademark. . .the visual to be construed as an endorsement of the product or depiction of these words by the finger ges- service offered unless it is specifically stated in the ad 20. The mark consists of the that there is such approval or endorsement. ture shown in applicant’s mark is equally Articles are prepared as an educational service to 17 stylized text “BongSchlong protector.” The word scandalous and immoral.” The TTAB’s deci- members of ISBA. They should not be relied upon as a “protector” appears under the letters “Schlong” in sion to point the finger at Luxuria appears substitute for individual legal research. “BongSchlong.” The stem of the letter “B” is made The articles in this newsletter are not intended to be particularly arbitrary in light of USPTO re- from a phallus symbol. (U.S. Serial No. 85344882). used and may not be relied on for penalty avoidance. cords reflecting live registrations for FUK U Postmaster: Please send address changes to the 18 19 Illinois State Bar Association, 424 S. 2nd St., Springfield, CONDOMS, BIG PECKER wine and BONG IL 62701-1779.

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 - 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 , 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 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 .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 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, ac- count he or she is using.25 amount of money many times over for legal cessed on March 11, 2013. Much like the individual who wishes to defense. Yet sometimes innocent parties are Courts, too, are cognizant of the fact that get a job but has a criminal history and there- sometimes so angered at being named that not all IP addresses point to an actual in- fore uses a fake social security number in his even after full disclosure by their counsel fringer. See, e.g., Digital Sin, Inc. v. Does 1-176, or her employment application, in BitTorrent as to the costs of competent defense, they 279 F.R.D. 239, 242 (S.D.N.Y. 2012) (estimating swarms, an IP address is often “made up” by will decide to fight rather than to settle.14 that 30% of the individuals whose names the actual infringer through easily obtained Of course, this dynamic often changes were disclosed to plaintiffs did not download software. The problem is, therefore, that the when the settlement demanded is closer to the copyrighted material). The court in SBO “made-up” IP address just happens to actu- $10,000 or more, which occurs in cases of Pictures stated: “the ISP subscriber to whom ally belong to someone else when the in- multiple alleged infringements by a copy- a certain IP address was assigned may not fringer is committing the infringer - possibly right holder. Clients must be clearly advised be the same person who used the internet your . that, strictly speaking in terms of money, it is connection for illicit purposes.”18 Similarly, In The writer believes that this unacceptably likely to cost far less to settle than it is to de- re Bittorrent Adult Film Copyright Infringement high incidence of identity theft, referred to in fend the case. And, although the Copyright Cases,19 the district court explained that ‘it is the computer science literature as “false posi- Act’s Section 505 expressly allows attorneys no more likely that the subscriber to an IP ad- tives”, poses a serious due process problem fees to be awarded to the prevailing party, dress carried out a particular computer func- and some technological screening process including the defendant,15 the award of at- tion ... than to say an individual who pays the must be used by the court prior to copyright 4 October, Vol. 53, No. 1 | Intellectual Property plaintiffs being granted leave to issue Rule right cases involve people attempting to re- federal litigation, the Copyright Act should 45 subpoenas to the ISPs to identify the ac- distribute the work for a profit. It seems in- be amended to reflect the reality that few countholder associated with the IP address. credibly unfair to subject consumers who are people believe a consumer should be at Somewhat analogous to the grand jury in alleged to have downloaded a single movie risk of a $150,000 statutory damage award criminal cases, this screening process would or song on the internet for private viewing or for downloading a copyrighted movie, elec- be a vetting of the technical evidence pre- listening purposes to be exposed to a poten- tronic book, or piece of software when there sented by the plaintiff just as a prosecutor tial $150,000 statutory damages award, plus is no intent on distribution for profit. For all must present evidence to a grand jury prior attorneys fees as provided in Section 504(c) of these reasons, it is clearly time to modern- to an indictment being issued. (2). In order to present the potential for a ize the “antiquated” copyright laws Judge This court screening process can be add- proportional remedy for non-profiteering Wright has so succinctly described.29 ■ ed to Section 502 (Injunctions), Section 503 copyright infringement by a consumer, the ______(Impounding and disposition of infringing writer suggests amending the Copyright Act Jeffrey J. Antonelli, , Antonelli Law Ltd., Chicago, appreciates its) in a fashion similar to what the Maryland where willfulness is demonstrated, and $500 the assisting contributions of Nicole Nguyen. District Court has done with all cases filed by if willfulness is not demonstrated.(Change 1. In the BitTorrent file distribution system, a 26 copyright plaintiff Malibu Media. Maryland Section 504(c)(1)’s text from “an award of torrent file is a computer file that contains meta- has appointed Professor William Hubbard, a statutory damages for all infringements in- data about files and folders to be distributed, and member of the faculty at the University of volved in the action, with respect to any one usually also a list of the network locations of track- Baltimore School of Law, who teaches copy- work, for which any one infringer is liable ers, which are computers that help participants in the system find each other and form efficient right and intellectual property law, to serve individually, or for which any two or more distribution groups called swarms. A torrent file 27 as a Master in the Malibu cases. When a infringers are liable jointly and severally, in a does not contain the content to be distributed; it copyright lawsuit is filed by Malibu Media, sum of not less than $750 or more than $30,000 only contains information about those files, such procedures are followed to, inter alia, a) al- as the court considers just” (italics added) to as their names, sizes, folder structure, and cryp- low the Master to obtain information from “an award of statutory damages for all in- tographic hash values for verifying file integrity. Depending on context, a torrent may be the tor- the ISP, b) allow the Subscriber to provide fringements involved in the action, when no rent file or the referenced content. Torrent files the Master with information to enable the monetary gain was intended by the infringe- are normally named with the extension .torrent, Master to make a preliminary recommenda- ment with respect to any one work, for which as in MyFile.torrent. , accessed on August 6, 2013. infringement may be brought against the which any two or more infringers are liable 2. Subscriber, and c) for the Master to makes a jointly and severally, in a sum of not less than 3. See, eg., bloggers at and or does not exist, for Malibu to assert a plau- just.” Change Section 504(c)(2)’s text to “In a 4. Jason R. LaFond, Personal Jurisdiction and sible claim for relief against a Subscriber for case where the copyright owner sustains the Joinder in Mass Copyright Troll Litigation 71 Md. L. copyright infringement. burden of proving, and the court finds, that Rev. Endnotes 51 (2012) citing Raw Films, Ltd. v. Does 1–32, No. 3:11CV532-JAG, 2011 WL 6182025, Even aside from the allegations that some infringement was committed willfully, the at *2–3 (E.D. Va. Oct. 5, 2011). unethical attorneys may actually be “seed- court in its discretion may increase the award 5. See, e.g., Tim Worstall, “Quite Amazing, ing” their own copyrighted works online to of statutory damages to a sum of not more Prenda Law Was Seeding The Torrent Sites It Then induce others to download the work and than $150,000. However, if no monetary gain Sues People For Downloading From,” Forbes, then be sued later,28 it is fundamentally un- was intended by the infringement, the court Aug. 21, 2013, . sary worry and expense of being targeted This cap on damages for non-profit-mo- 6. Ingenuity 13, LLC v John Doe, 2012-cv-0833 by copyright trolls starting with the notice of tivated copyright infringements may reduce CDCA, entered May 6, 2013. subpoena from the ISPs, perhaps based on the number of the more frivolous copyright 7. 17 USC §504(c). 8. Compare, e.g., Malibu Media, LLC v. Does 1-6, flimsy evidence. A court screening process, trolling lawsuits and, at the very least, reduce --- F.R.D ----, 2013 WL 2150679, *11 (N.D. Ill. May 17, perhaps like the Maryland District Court’s the settlement amounts paid by those inno- 2013) (allowing joinder); Pacific Century Int’l v. Does Master, is a necessity to prevent the current cent defendants who just don’t want to deal 1-31, No. 11 C 9064, 2012 WL 2129003, *3 (N.D. Ill. troublesome number of innocent individuals with a lawsuit down from thousands of dol- June 12, 2012) (same); First Time Videos, LLC v. Does and families from continuing to be subjected lars, to just hundreds of dollars. 1-76, 276 F.R.D. 254, 257 (N.D. Ill. 2011) (same); with Malibu Media, LLC v. Reynolds, No. 12 C 6672, to claims of online copyright infringement. Conclusion 2013 WL 870618, *14 (N.D. Ill. Mar. 7, 2013) (reject- ing joinder); Digital Sins, Inc. v. 1 A “MAC address” The need to amend the Copyright The problems caused by the wave of is a unique number assigned to the hardware Act BitTorrent copyright litigation flooding the of a particular computer or other device. United Most people seem to agree that the av- federal courts is a classic case of the law States v. Schuster, 467 F.3d 614, 618 n. 1 (7th Cir. 2006). Case: 1:13-cv-04901 Document #: 10 Filed: erage consumer who wrongfully obtains a needing to catch up to the current state of 08/20/13 #:64 5 Does 1-245, No. 11 C 8170, 2012 copyrighted work should be subjected to technology. In addition to the need to curb WL 1744838, *2 (S.D.N.Y. May 15, 2012) (same); In the risk of being punished by a monetary abuses and avoid burdening innocent peo- re BitTorrent Adult Film Copyright Infringement Cas- fine. However, none of these BitTorrent copy- ple from becoming potential defendants to es, No. 11 C 3995, 2012 WL 1570765, *11 (E.D.N.Y. 5 Intellectual Property | October, Vol. 53, No. 1

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, . dant was hit with a judgment exceeding $100,000 21. Id. 29. “They’ve discovered the nexus of antiquat- in addition to plaintiff’s attorney’s fees. 22. VPR Internationale v. Does 1-1,017, No. 11- ed copyright laws, paralyzing social stigma, and 13. “...[Plaintiffs then] offer to settle—for a sum 02068 (ECF Doc. 15 at 2), 2011 WL 8179128 (C.D. unaffordable defense costs. And they exploit this calculated to be just below the cost of a bare-ones Ill. Apr. 29, 2011). anomaly by accusing individuals of illegally down- defense.” Ingenuity 13 LLC v. John Doe, 2:12-cv-8333 23. Id. loading a single pornographic video. Then they of- CDCA, currently on appeal. 24. See Carolyn Thompson, Bizarre Pornography fer to settle—for a sum calculated to be just below 14. Gregory S. Mortenson, BitTorrent Copyright Raid Underscores Wi-Fi Privacy Risks (April 25, 2011), the cost of a bare-bones defense. For these indi- Trolling: A Pragmatic Proposal for a Systemic Prob- . Id. rather than have their names associated with il- 15. 17 USC §505 25. The Unbearable Lightness of Monitoring: legally downloading porn. So now, copyright laws 16. Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) Direct Monitoring in BitTorrent, accessed on allow starving attorneys in this electronic-media P2P File Sharing Networks – or –Why My Printer March 11, 2013. era to plunder the citizenry.” Ingenuity 13 LLC v. Received a DMCA Takedown Notice” coauthored 26. In re Malibu Cases, 12-cv-1195, entered May John Doe, 2:12-cv-8333 CDCA, currently on appeal. by professors Tadayoshi Kohno and Arvind Krish- 16, 2013 namurthy of the University of Washington’s De- 27. Id.

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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, , Ke- by state and federal regulations. General PCI), and/or financial account information.” gan & Kegan, Ltd., Chicago. Copyright © Daniel commercial package insurance policies can- Law firms are eligible to apply for insur- Kegan 2013, All Rights Reserved. Daniel thanks in- surance professional Ken Teglia, , for his assistance with this article. exposure. Coverage for third-party liability— $800 to $1,500. Firms processing payment responding to rogue employee acts—may have even less coverage. Regulatory fines and penalties may not be covered, nor may the insurer have a duty to defend. Outsourc- ing data handling, litigation document re- view, and the like typically does not relieve the law firm from its duty to comply with the laws. Exposure is not limited to Internet hack- ers. Lost, discarded, stolen laptops, PDAs, smartphones, and portable memory devices all create risks, as well as seemingly innocent procedural errors and disgruntled employ- FREE to ISBA members ees and agents. For one insurer, the application qualifica- Your research isn’t complete until you’ve tion questions are few: searched ISBA section newsletters • Name, Address, Gross revenue for last full Fourteen years’ worth of articles, fully indexed and financial year or good-faith estimate for full-text searchable…and counting. this full year if startup; • Existing subsidiaries; • Business activities (e.g., Legal services); • Qualifying conditions: Not a depository (e.g., bank); payment card processor; in- surer; social or professional networking site; franchise; pornographer; gambler; data warehouse; mobile application or video game developer or publisher; util- ity provider; family planning or substance abuse service, abortion clinic, adoption agency; all revenue-generating perma- nent physical operations within the USA; The ISBA’s online newsletter index organizes all issues no more than one million payment card published since 1999 by subject, title and author. transitions annually; store under one mil- lion records with sensitive data; mobile More than a decade’s worth of lawyer-written articles analyzing devices storing sensitive data are en- important Illinois caselaw and statutory developments as they crypted; compliant with Payment Card In- dustry Data Security Standards (PCI/DSS) happen. if covered; unaware of any likely loss; no action against applicant concerning sen- WWW.ISBA.ORG/PUBLICATIONS/SECTIONNEWSLETTERS sitive data.

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: . Topics include: the history Manager Stacy Sigman thinks many don’t America Invents Act, § 34, the General Ac- of Trademark Application And Registration understand Northfield, “a little gem.” Bids counting Office, 22Aug2013, reported on Retrieval (TARR), Trademark Document Re- and proposals for the branding project are consequences of patent litigation by non- trieval (TDR), and TSDR; why we moved to expected by 25 October 2013. practicing entities (NPE). NPEs instituted TSDR; how TSDR differs from its predeces- sors, TARR and TDR; and the basics of the about a fifth of patent lawsuits between 2007 Who’s On First, What’s Second, I Don’t technology behind TSDR. The Discussion and 2011. Patent litigation as a whole in- Know Third? APPLE is the new most valu- also describes some of the systems that are creased about a third from 2010 to 2011. The able brand in the world, says Interbrand. not normally visible to the public and how report recommended the PTO link patent liti- Apple replaced Coca-Cola as first among they differ from those the public views. gation trends to internal patent examination most valuable brands, the first time since data to improve patent quality.

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 Web site offering remote solicit further public comments and convene the general size and nature of your busi- searching of its databases. Electronic filing roundtables and forums on a number of key ness or trademark practice, including the of new applications via the system remains operating. goals of maintaining an appropriate bal- registrations your business has, or your The Northern District of Illinois anticipated ance between rights and exceptions as the practice handles. it could remain open for approximately ten law continues to be updated; ensuring that 2. Do you think the USPTO should allow business days, and would then reassess its copyright can be meaningfully enforced on amendments to identifications of goods/ situation. Proceedings and deadlines remain the Internet; and furthering the develop- services in registrations based on chang- in effect as scheduled unless otherwise ad- ment of an efficient online marketplace. es in the manner or medium by which vised. ■ and provided to consumers? ______3. If such amendments are permitted, Daniel Kegan, , Ke- PTO Technology Evolution and Goods/ gan & Kegan, Ltd, Chicago. Copyright © Daniel should they only be allowed post regis- Services Description Amendments. The Kegan 2013, All Rights Reserved. tration to account for changes in tech- 9 Intellectual Property | October, Vol. 53, No. 1

Upcoming CLE programs To register, go to www.isba.org/cle or call the ISBA registrar at 800-252-8908 or 217-525-1760.

November Friday, 11/22/13- Chicago, ISBA Re- All Day. Tuesday, 11/5/13 – Webinar—Intro to gional Office—Drug Case Issues and Spe- Legal Research on Fastcase. Presented by the cialty Courts. Presented by the ISBA Criminal Wednesday, 2/12/14- Webinar—Bool- Illinois State Bar Association – Complimen- Justice Section. 9-4. ean (Keyword) Searches on Fastcase. Pre- sented by the Illinois State Bar Association – tary to ISBA Members Only. 1:30 – 2:30 p.m. December CST. Complimentary to ISBA Members Only. 12:00 Thursday, 12/5/13- Chicago, ISBA Re- Eastern. Tuesday, 11/5/13- Live Webcast, ISBA gional Office—Civility in the Courtroom. Studio—Children and Trauma; A Guide for Presented by the ISBA Bench and Bar Sec- Wednesday, 2/12/14- Chicago, ISBA Re- Attorneys. Presented by the ISBA Child Law tion. 1-5. gional Office—Tort Law Back to Basics. Pre- Section. 11-12. sented by the ISBA Tort Law Section. All Day. Thursday, 12/12/13- Chicago, Sheraton Tuesday, 11/5/13- Live Webcast, ISBA Hotel (Midyear)—Speaking to Win: Building Thursday, 2/27/14- East Peoria, Holi- Studio—2013 Immigration Law Update- Effective Communication Skills. Master Se- day Inn and Suites—SETTLE IT!- Resolving Changes which Affect Your Practice & Clients. ries presented by the ISBA. 8:30-11:45. Financial Family Law Conundrums. Present- Presented by the ISBA International & Im- ed by the ISBA Family Law Section and the migration Law Section, ISBA Young Lawyers Thursday, 12/12/13- Chicago, Shera- ISBA Alternative Dispute Resolution Commit- Division and the ISBA General Practice, Solo ton Hotel (Midyear)—Legal Writing in the tee. 8:00-5:00. and Small Firm Section. 1:00-2:00. Smartphone Age. Master Series presented by the ISBA. 1:00-4:15. March Thursday, 11/7/13 – Webinar—Ad- Tuesday, 3/4/14- Webinar—Introduc- vanced Tips for Enhanced Legal Research on January tion to Fastcase Legal Research. Presented Fastcase. Presented by the Illinois State Bar Tuesday, 1/7/14- Webinar—Introduc- by the Illinois State Bar Association – Compli- Association – Complimentary to ISBA Mem- tion to Fastcase Legal Research. Presented mentary to ISBA Members Only. 2:00 Eastern. bers Only. 1:30 – 2:30 p.m. CST. by the Illinois State Bar Association – Compli- mentary to ISBA Members Only. 4:00 Eastern. Thursday, 3/6/14- Webinar—Advanced Friday, 11/8/13- Chicago, ISBA Region- Tips to Fastcase Legal Research. Presented al Office—Successfully Navigating Civil Liti- Thursday, 1/9/14- Webinar—Advanced by the Illinois State Bar Association – Compli- gation Evidence and Theory Involving Topics Tips to Fastcase Legal Research. Presented mentary to ISBA Members Only. 2:00 Eastern. of Expert Testimony. Presented by the ISBA by the Illinois State Bar Association – Compli- Civil Practice & Procedure Section. 8:50-4:00. mentary to ISBA Members Only. 4:00 Eastern. Thursday, 3/6- Friday, 3/7/14- Chicago, ITT Chicago-Kent School of Law—13th Thursday, 11/14/13- Chicago, ISBA Re- Wednesday, 1/15/14- Webinar—Bool- Annual Environmental Law Conference. Pre- gional Office—SETTLE IT!- Resolving Finan- ean (Keyword) Searches on Fastcase. Pre- sented by the ISBA Environmental Law Sec- cial Family Law Conundrums. Presented by sented by the Illinois State Bar Association – tion. 8:30-4:45 with reception from 4:45-6; the ISBA Family Law Section and the ISBA Al- Complimentary to ISBA Members Only. 4:00 8:30-1:30. ternative Dispute Resolution Committee. 8-5. Eastern. Tuesday, 3/11/14- Webinar—Boolean Thursday, 11/14/13- Springfield, INB February (Keyword) Searches on Fastcase. Presented Conference Center—Drug Case Issues and Wednesday 2/5/14- Webinar—Intro- by the Illinois State Bar Association – Compli- Specialty Courts. Presented by the ISBA Crim- duction to Fastcase Legal Research. 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

A newly enhanced reference guide to the Illinois rules of evidence!

THE ILLINOIS RULES OF EVIDENCE: A COLOR-CODED GUIDE Updated, enhanced edition of DiVito’s analysis of Illinois evidence rules – the book the judges read! Still learning the intricacies of the Illinois Rules of Evidence? Don’t be without this handy hardcopy version of Gino L. DiVito’s authoritative color-coded reference guide, which is now updated through September 1, 2013. It not only provides the complete Rules with insightful commentary, but also features a side-by-side comparison with the full text of the Federal Rules of Evidence (both pre- and post-2011 amendments). DiVito, a former appellate justice, serves on the Special Supreme Court Committee on Illinois Evidence, the body that formulated the Rules approved by the Illinois Supreme Court.

Order the new guide at http://www.isba.org/store/books/rulesofevidencecolorcoded or by calling Janice at 800-252-8908 or by emailing Janice at [email protected]

THE ILLINOIS RULES OF EVIDENCE: A COLOR-CODED GUIDE Illinois has a history of some pretty good lawyers. $35 Member/$50 Non-Member (includes tax and shipping) We’re out to keep it that way.

11 Intellectual Property Non-Profit Org. Illinois Bar Center U.S. POSTAGE Springfield, Illinois 62701-1779 PAID Springfield, Ill. October 2013 Permit No. 820 Vol. 53 No. 1

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