KCPL v. William Cary Nash, 1998 WL 823657 (SDNY November, 1998). The court distinguishes Panavision in two ways. First, Panavision was decided by a Fed Ct in CA, thus it was based on CA long arm statute. The CA long arm statute is more permissive than the NY long arm statute which is applicable in this case. Second, the defendant in Panavision was clearly a cyber pirate while the actions in this case do not constitute cyber piracy.
Panavision v. Toeppen 141 F.3d 1316 (9th Cir. 1998). This case deals with the issue of "cybersquatting." The court in Panavision analyzes infringement as dilution rather than likelihood of confusion.
Jews for Jesus v. Brodsky 993 F.Supp. 282 (D. N.J. 1998) Defendant owned domain name jewsforjesus.com which linked to a site that disparaged Jews for Jesus and provided another link to a pro-Judaism site.
Playboy Enterprises, Inc. v. AsiaFocus International, Inc., 1998 WL 724000 (E.D.Va. 1998). Court found Jurisdiction against defendant located in Hong Kong because the defendant had targeted a Virginia Company.
Bernstein v. J.C. Penney, Inc., No. 98-2958-R (CD CA, dismissal Sept. 22, 1998). Case dismissed. See article below for case details.
Futuredontics, Inc. v. Applied Anagramics, Inc., No. 97-56711, 1998 U.S. App. LEXIS 17012 (9th Cir. 07/23/98). Court denies preliminary injunction against AAI's use of a framed link to Futuredontics' web site. The denial was upheld on appeal. See articles and links below discussing the case.
Playboy Enterprises, Inc. v. Welles No. 98-CV-0413-K (JFS) (S.D. Cal. Apr. 21, 1998). Case discussion on the New York Times Web page. Registration required. Full text of the Decision.
Cerutti1881 v. Cerutti, Inc., No. 95 CIV 7782, 1998 WL 3350 (S.D.N.Y Jan. 5, 1998) Ruling against domain name owner, based on likelihood of confusion.
TheStreet.com v. Wall Street Interactive Media Corp. and Alphabit Media, Inc. Complaint: (Para. 12)
Ahn v. Midway, 965 F.Supp.3d 1134 (N.D. Ill. 1997) Martial Arts expert and dancer were held to have created independently copyrightable coreography for the video game "Mortal Kombat" but not to have joint copyrights in the game. Joint Authorship issue was moot because the artists had signed "work for hire" contracts.
Int'l v. McGee, 950 F. Supp. 737 (E.D. Va. 1997)
Ruling against domain name holder based on likelihood of confusion.
Inc. v. Tooker, 965 F. Supp. 17 (N.D. Tex. 1997)
Finding no personal jurisdiction in a domain name dispute.
Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414 (9th Cir. 1997) This leading personal jurisdiction case established that a passive web site alone is not sufficient to subject one to jurisdiction. Instead "something else" is needed.
Serv. Ltd. v. Epix, Inc., Civil No. 97-107-FR, 1997 WL 736486 (D. Or. Nov.
A declaratory judgment action (in which the parties requested that the court resolve a domain name dispute). The court finds no likelihood of confusion and the domain name owner prevails.
Online Serv. v. Juno Lighting, Inc., 979 F. Supp. 684 (N.D. Ill. 1997)
Addressing the defense of trademark misuse in a domain name dispute; finding no trademark infringement for merely "warehousing" domain name.
Hill v. Gateway 2000, Inc., 105 F.3d 1147 (7th Cir. 1997): shrinkwrap case involving sale of computer and the enforceability of an arbitration clause.
Playboy Enterprises Inc. v. Calvin Designer Label [DC Ncalif, No. C 97-3204;9/8/97]. You can see the Complaint and the Preliminary Injunction Order.
Insituform Technologies Inc. v. Nat,l Envirotech GroupL.L.C. [Civil Action 97-2064 (E.D. La.); settled Aug. 27, 1997]: No opinion issued. You can see a case discussion by the firm who represented Insituform Technologies.
Oppedahl & Larson v. Advanced Concepts [CivilAction 97-3-1592 (D. Colo.) filed July 23, 1997]. You can see the Complaint and the permanent injunctions entered with respect to the various defendants, namely Welch and Advanced Concepts, MSI Marketing, Inc., Professional Website Development, Internet Business Services, and Williams.
Ticketmaster Corp. v. Microsoft Corp. [CV 97-3055RAP] (C.D. Cal., filed April 28, 1997): Case settled; no opinion issued. See articles and links below for information. Text of Complaint.
Martin Corp. v. Network Solutions, Inc., Case No. CV 96-7438 DDP (Anx),1997
WL 381967 (C.D. Cal. Mar. 19, 1997)
Dismissing an action for contributory trademark infringement brought against NSI in domain name dispute.
Planned Parenthood Federation of America v. Bucci 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997) sets out the analysis used by courts in likelihood of confusion cases. While this case's interpretations have been questioned by scholars, it is frequently relied on by courts throughout the US in subsequent cases. At issue in this case is the use of plannedparenthood.com by an antiabortion activist.
Customer Care Mgmt., Inc. v. Tele-Tech Co., Inc., 977 F. Supp. 1407 (C.D.Cal.
Ruling in favor of trademark owner in domain name dispute, based on trademark dilution.
Zippo Mfg. Co. v. Zippo Dot Com, 952 F.Supp. 1119 (W.D.Pa. 1997) - The court granted jurisdiction because it determined that purposeful availment exists for an interactive web site.
The Washington Post Co., et al. V. TotalNews, Inc.,97 Civ. 1190 (S.D.N.Y., filed Feb. 2, 1997): Case settled June 5, 1997. No opinion was issued, but articles and links below discuss the case and offer further information. You can see the Complaint or the text of the Settlement.
Shetland Times Ltd. v. Dr. Jonathan Willis and ZetnewsLtd., Scotland Court of Sessions (Oct. 24, 1996): Case settled Nov. 1997; no opinion issued. Text of Settlement
ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996): a prominent recent case involving "shrinkwrap licenses" in the context of a database taken from a CD and posted on the web. - AND a good discussion of various forms of preemption.
v. Active Media Int'l, No. 96C3448, 1996 WL 466527 (N.D. Ill. July 17,
Ruling against domain name owner based on likelihood of confusion.
Agency v. Juris, Inc., no. 96-0213-WMB (Ctx), 1996 WL 376600 (C.D.Cal.
May 22, 1996)
Ruling against domain name owner, based on likelihoodof confusion.
v. Network Solutions Inc., No. C-96 20434 RPA/PVT, 1996 WL 887734 (N.D.Cal.
June 14, 1996)
Enjoining trademark owner from using NSI's policy to suspend computer consultant's domain name registration.
Inc. v. Internet Enternainment Group, Ltd., No. C96-130WD, 1996 WL 84853
(W.D. Wash. Feb. 9, 1996)
Issuing an injunction against using candyland.com, a sexually explicit web site, based on trademark dilution.
Inc. v. Instruction Set, Inc., 937 F. Supp. 161 (D. Conn. 1996)
Finding personal jurisdiction in a domain name suit.
v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996)
Ruling against a domain name "squatter," based on a finding of trademark dilution.
Microsystems v. Astro-Med, 39 U.S.P.Q.2d (BNA) 1144 (N.D. Cal. Mar. 29,
Holding that use of "sunriver" to sell computer products infringes on plaintiff's "sun" mark in a domain name dispute.
v. Akkaoui, 40 U.S.P.Q.2d (BNA) 1836 (N.D. Cal. Oct. 29, 1996)
Ruling that "adultsrus.com" dilutes trademark in Toys'R'Us.
Religious Technology Center v. Netcom (N.D. Cal. 1995) (order denying various pre-trial motions). Regarding whether Netcom could be held liable for materials posted by one of its clients which allegedly infringed copyrights held by the Church of Scientology. The court decided three important issues. First, Netcom could not be held directly liable for any infringing material posted by the client since Netcom itself did not upload the material. In short, the direct infringer was the client who did the uploading, not the ISP that provided the tools to do so. This part of the decision seemed to be flatly reject the line taken in Playboy. Second, the court also decided that there wasn't enough of a link between the infringing activity and Netcom's finances to hold Netcom vicariously liable. Third, although the court let Netcom off the hook for direct infringement and vicarious liability, the court refused to rule out the possibility that Netcom was liable for contributory infringement, leaving the question of whether Netcom encouraged the client to post infringing materials open for trial. (No trial ever occured because the case settled).
v. Helmsley-Spear, 71 F.3d 77 (2d Cir. 1995)
(the only extant decision applying the Visual Artists' Rights Act)
Napoli v. Sears, Roebuck and Co., 874 F.Supp. 206 (N.D. Ill. 1995) Court held that rights in the design of a graphic user interface could create joint authorship in the work as a whole, together with the rights in the computer code itself. (vacated on unspecified grounds, 926 F.Supp.780 (N.D. Ill. 1996).
Erickson v. Trinity Theatre, 13 F.3d 1061 (7th Cir. 1994) (1) to create joint work, each author must intend respective contributions to be contribution to unitary whole and (2) collaborators are not joint authors unless they intended to be joint authors when work was created and contributions to works are independently copyrightable.
Sega Enters. Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994). Operator directly solicited clients to upload Sega video games onto his system. Court held, (as in Playboy, that Bulletin board operators could be found liable regardless of whether or not the copying was intentional. Also, in both cases, the "actual" infringement was committed by the clients.
Busch v. L&L Wings Inc. 962 F.2d 316 (4th Cir. 1994)
(applying "fair use" in the Myrtle Beach t-shirt case)
aka Skyywalker, et. al. v. Acuff Rose Music, 114 S.Ct. 1164 (1994)
(discussing copyright "fair use" in regards to 2 Live Crew's parody of the song, "Oh, Pretty Woman")
& Co. v. MTD, 41 F.3d 39 (2d Cir. 1994)
(discussing the digital alteration of a trademark, in the context of comparative advertising)
Ralph Lauren v. Chinatown Gift Shop, 855 F.Supp. 648 (S.D.N.Y. 1994)
(holding that Internet Service Providers may be liable for the trademark infringement of their customers)
Frank Music Corp. v. Compuserve Inc., Plaintiff's complaint, Civil Action No. 93 Civ. 8153 (JFK) (S.D.N.Y. 1993), eventually settled for $568,000 plus future royalties.
Playboy v. Frena, 839 F.Supp. 1552 (M.D. Fla. 1993). Although the defendant argued that he was unaware of the infringement, never uploaded the photographs himself and removed them upon notice from Playboy, the court found that the defendant directly infringed Playboy's copyright. One year later, another bulletin board operator was found liable for copyright infringement.
Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992)
(permitting nominal use of a trademark in a newspaper poll about New Kids on the Block)
Step-Saver Data Sys., Inc. v. Wyse Tech., 939 F.2d 91 (3d Cir. 1991): shrinkwrap case involving warranty for computer equipment sold over the phone.
Feist Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 349-50 (1991).
Childress v. Taylor, 945 F.2d 500 (2d Cir.1991) Actor asked playwrite to help create work based on research and ideas of actor. Actor revised play with another playwrite; original playwrite sued, claiming that she was joint author and therefore shared rights to play. Court found no joint authorship. This case stands for the propositions that, in order for a work to be "joint," (1) the contributions of each joint author must be independently copyrightable and (2) the authors must intend to create a joint work.
Ashton-Tate v. Ross, 916 F.2d 516 (9th Cir. 1990). Joint authorship case: One software developer (claimant) sued another for unilaterally marketing spreadsheet program on which both had worked. Court found no joint authorship because the contribution of the claimant (a list of user commands) was not independently copyrightable and therefore not sufficiently significant.
Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (applying the work-for-hire doctrine)
Vault Corp. v. Quaid Software, Ltd., 847 F.2d 255 (5th Cir. 1988): interesting shrinkwrap case on reverse engineering of software.
Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 435 (1984). Copyright fair use and contributory infringement issues, regarding the use of home video recording systems.
Gilliam v. American Braodcasting Co., 538 F.2d 14 (2d Cir. 1976) (establishing alternative sources of moral rights)
Summaries of relevant cases (Domain Name/Trademark disputes)
of relevant cases (Respect & Integrity issues)
http://www.hrrc.org/DMCA-leg-hist.html. Text of Digital Millenium Copyright Act, the conference report, and other portions of the legislative history. This page is maintained by the Home Recording Rights Coalition (HRRC), an advocacy group organized "to protect the right to use VCRs, audio recorders and computers for private, non-commercial purposes."
Ronald G. Dunn, Information Industry Association, H.R. 2281 and H.R. 2180 Hearings before House Courts and Intellectual Property Subcommittee (Sep.16, 1997).
Mike Kirk, American Intellectual Property Association, H.R. 2281 and H.R. 2180 Hearings before House Courts and Intellectual Property Subcommittee (Sep.16, 1997).
Honorable Bruce Lehman, Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, H.R. 2281 and H.R. 2180 Hearings before House Courts and Intellectual Property Subcommittee (Sep.16, 1997).
Roy Neel, United States Telephone Association, H.R. 2281 and H.R. 2180 Hearings before House Courts and Intellectual Property Subcommittee (Sep.16, 1997).
Selections from the Copyright Act
1990 Visual Artists' Rights Act
Jonathan Band, Digital Millennium Copyright Act Analysis (especially Title I).
17 USC ch. 10, Digital Audio Recording Devices and Media (browse online)
HR 3048 (Digital Era Enhancement Act): a proposed alternative to the above bills.
Digital Future Coalition: page generally tracking pending copyright legislation
Draft of Uniform Commercial Code (UCC) Article 2B: a much-discussed proposal to adapt the Uniform Commercal Code to account for shrinkwrap licenses.
The 2BGuide: Online guide to UCC Article 2B.
Uniform Commercial Code (UCC)
H.R. 2281 (WIPO Copyright Treaties Implementation Act) Pending legislation containing provisions restricting the ability to circumvent copy protection technology.
S. 1121 (WIPO Copyright and Performances and Phonograms Treaty Implementation Act of 1997) Pending legislation containing provisions restricting the ability to circumvent copy protection technology.
WIPO Interim Report - RFC3
WIPO Interim Report Recommendations Only
WIPO report discussion of privacy
WIPO suggestions on the introduction of new gTLDs
WIPO report suggestions for treatment of open ccTLDs
WIPO discussion of Jurisdiction
WIPO Interim Report discussion of Keywords.
The contract between the US government and ICANN that puts in place a two year transition process in which ICANN will demonstrate its ability to safely manage domain names.
White house White Paper that called upon the Internet industry to create this new non-profit entity that would manage DNS.
Dept. of Commerce draft proposal for internet domain name governance
Includes a request for comments and summaries of comments submitted.
U.S. Patent Office policy on registering domain names as trade/service marks.
Current NSI dispute resolution policy
Lanham Act - Trademark Law. The Lanham Act is maintained by the Legal Information Institute at Cornell Law School. You can link to the full act or go directly to the sections on likelihood of confusion (Section 1114), dilution (Section 1125(c)), or unfair competition (Section 1125(a)).
To see the Legislative History of the Federal Trademark Dilution Act
of 1995, go to the Thomas
web page. In the right hand column of the home page you will find
an item entitled "Committee Reports." Select the link under this
for the 104th Congress (this is the Congress that passed the Act).
In the page that appears, you can search either by bill number (H.R. 1295)
or by Report Number (H. Rept. 104-374). Searching by Report number
will take you directly to the Report by the House Judiciary Committee
- this report includes the text of the law as well as a statement regarding
the purpose of the law.
SECONDARY SOURCES (arranged by author's name)
SUMMARIES OF PERTINENT LEGAL DOCTRINES organized by topic
Articles (see also off-line articles)
"AltaVista Cannot Use Its Name on Products or Services, MA Judge Says." Software Law Bulletin, April 1997 Discusses a linking case involving the search engine AltaVista and AltaVista Technology, a software development company unrelated to the search engine.
Guy Alvarez, "A Beginner's Guide to Search Engines and Directories" Includes links to examples of each.
Jonathan Band, The Digital Millenium Copyright Act. This memorandum discusses the DMCA and has a section devoted to the OCLLA.
John P. Barlow, The Economy of Ideas, A Framework for Rethinking Patents and Copyrights in the Digital Age (Everything You Know About Intellectual Property is Wrong), WIRED, Mar. 1994, (comparing the Internet to the frontier west where the people made their own laws).
John Perry Barlow, "The Economy of Ideas: Selling Wine Without Bottles on the Global Net" Barlow, co-founder of the Electronic Frontier Foundation, envisions in this famous essay (originally published in Wired magazine) a world where information "wine" flows freely without book or tangible medium "bottles" to weigh it down.
Tom W. Bell, "Fair Use vs. Fared Use: The Impact of Automated Rights Management on Copyright's Fair Use Doctrine," North Carolina Law Review January, 1998: In this thorough law review article, Professor Bell examines the impact of new technologies on copyright's fair use doctrine, predicting a restriction on fair use and urging a "wait and see" policy.
Crosley Bendix on U.S. Copyright arguments that copyright law has become obsolete.
James Boyle, "Foucault in Cyberspace: Surveillance, Sovereignty, and Hard-Wired Censors": Like Shapiro, Boyle argues for a more reflective policy that offers an alternative to what he argues is an infelicitous choice between oppressive state regulation and locked-up technological domination.
Dan L. Burk, Trademarks
Along the Infobahn: A First Look at the Emerging Law of Cybermarks," 1
RichJ. L. & Tech. 1 (1995)
A general summary of domain name disputes.
Lisa M. Byerly, Look and Feel Protection of Web Site User Interfaces: Copyright or Trade Dress?.
CA Judge Dismisses Copyright Claims Based on Linking, Software Law Bulletin. Discusses the Bernstein v. J.C. Penney case, the first case of its kind on the issue of copyright liability for linking to other sites that display infringing materials.
Marc L. Caden & Stephanie E. Lucas, Accidents On the Information Superhighway: On-Line Liability And Regulation, 2 Richmond J. of L. & Tech. issue 1 (1996). (focusing on prominent cases of ISP liability for electronic transmission as part of a general analysis of internet regulation)
Duncan Campbell, "Computingand the Net: Shetland showdown Duncan Campbell on a good day in court for the Web.": Editorial highlighting the fact that the Shetland News, if not settled, would have had a significant impact on the entire Internet community. Also critisizes Shetland News for bringing suit.
Margaret Chon, New Wine Bursting from Old Bottles: Collaborative Internet Art, Joint Works, and Entrepreneurship, 75 Or. L. Rev 257 (1996). Explores whether the current copyright system is sufficient to deal with the internet, especially the jointly-created artworks that are created on the internet.
Jeri Clausing, Proposal on Internet Names Favors Corporate Interests A critique of the WIPO proposal in the cyber-New York Times (a free subscription is required to view the article).
Coalition for Networked Information, Technological Strategies for Protecting Intellectual Property in the Networked Multimedia Environment: numerous working papers on copy protection.
Julie Cohen, "A Right to Read Anonymously: A Closer Look at 'copyright management' in Cyberspace," 28 Conn. L. Rev. 981 (1996): examining privacy implications of copyright management information.
Julie Cohen, "Some Reflections on Copyright Management Systems and Laws Designed to Protect Them," 12 Berkeley Tech. L.J. 161 (1997): reflections on the implications of copyright management systems.
Steven Cordero, "Cocaine-Cola, the Velvet Elvis and Anti-Barbie: Defending the Trademark And Publicity Rights of Cultural Icons," 8 Fordham I.P. Media & Ent. L. J. 599 (Winter 1988) (arguing for "a new standard [in] cases dealing with the unauthorized use of cultural icons, permitting uninhibited use so long as there is no confusion as to source, sponsorship or affiliation)
Thomas F. Cotter, "Pragmatism, Economics, and the Droit Moral," 76 N.C.L.Rev. 1 (1997) (excerpt: overview of moral rights)
Brad Cox, "Superdistribution," Wired: arguing in support of metered use.
Rinaldo Del Gallo, Who Owns the Website?.
Mike Doughney (former owner of peta.org) comments on the impact that the WIPO recommendations would have on small businesses.
Electronic Frontier Foundation domain name dispute archive Numerous articles about the domain name controversy.
Martin J.Elgison and James M. Jordan III, "Trademark Cases Arise from Meta-Tags, Frames. Disputes Involve Search-Engine Indexes,Web Sites Within Web Sites, As Well As Hyperlinking.": In-depth article which focuses on "the delicate balance between protecting the rights of people and businesses and preserving the spirit of open communication that is the hallmark of the Web." Areas examined include spamming, linking, framing, and consumer privacy.
Niva Elkin-Koren, Copyright Policy and the Limits of Freedom of Contract, 12 Berkeley Tech. L.J. 111 (1997) Elkin-Koren discusses the conflict between copyright and contract and argues that the boundaries between contract and copyright are unclear; she concludes that we need a less ambiguous policy that ensures some balance between content providers and users.
Fair Use in the Electronic Age
Colleen Creamer Fielkow, "Clashing Rights under United States Copyright Law: Harmonizing an Employer's Economic Right with the Artist-Employee's Moral Rights in a Work Made For Hire," 7 DePaul-LCA J. Art & Ent. L. 218 (Spring 1997) (moral rights in works for hire)
Terry Fisher, "Property and Contract on the Internet," Draft Paper of June 10, 1998. In this draft paper, our own Professor Fisher predicts that contract and technological protections will supplant intellectual property protection on the internet, and he argues that "courts and legislatures should facilitate and reinforce that shift, but should require that creators (and consumers) when setting up such "private" arrangements abide by restrictions designed to protect the public interest."
Terry Fisher, Theories of Intellectual Property, Draft of 11/30/98
John Fontana, "Trademark Trickery: In scam, search engines duped into diverting queries to competitive Web sites." Opinionated article discussing Insituform and Playboy cases.
A. Michael Froomkin, "A Critique of WIPO's RFC3". An excellent and extremely detailed critical analysis of the WIPO interim report.
A. Michael Froomkin, "Quick Guide to Major Flaws in the WIPO Domain Name Proposal" Critique of WIPO Proposal
Futuredontics, Inc. v. Applied Anagramics, Inc., The Computer Lawyer. Article discussing the denial of a preliminary injunction against AAI for linking to and framing the Futuredontics Web site.
Alexander Gigante, "Domain-ia": The Growing Tension between the DNS and Trademark law. Discussing incompatibility between the domain name system and trademark law.
Paul Goldstein, "Copyright and its Substitutes," 1997 Wisconsin L. Rev. 865 (1997): a good general discussion of both contract law and encryption as substitutes for copyright.
Laina Raveendran Greene, Chair and Facilitator of APPLe provides an Asian perspective and analysis of WIPO's interim report.
Trotter Hardy, Contracts, Copyright and Preemption in a Digital World, 1 Rich. J.L. & Tech. 2 (1995) on the relationship between contracts and copyright.
School of Government conference on Internet governance, with papers re:
domain name problem.
Various articles on domain name governance.
Anne Hiaring, Multimedia Licensing, 490 PLI/Pat. 481 (September, 1997). Hypothetical case regarding the creation of a CD-Rom; Overview of Copyright, Trademark, Right of Publicity, and Contractual Ownership issues rasied by the creation of a multimedia product by many people.
"Hidden Use of Trademarks On Web Site May Infringe." BNA Patent, Trademark, & Copyright Law Daily, 9/24/97: Discussing Playboy v. Calvin Design Label injunction.
Michael J. Higgins, "A Pitch for the Right of Publicity," IP Magazine, December 1998
Jim Hu, "Racing to the Startline": Discusses the evolution of portal sites from mere Internet search engines. Gives a definition and description of a portal site.
Excerpt from Justin Hughes, "Personality Interests of Artists and Inventors in Intellectual Property," 16 Cardozo Arts & Ent. L.J. 81 (1998)
Justin Hughes, "Personality Interests of Artists and Inventors in Intellectual Property," 16 Cardozo Arts & Ent. L.J. 81 (1998)
Matt Jackson, "Linking Copyright to Homepages.": Law review article discussing in detail copyright issues and linking as well as related doctrinal considerations. Provides background on constitutional basis and economic rationale for copyright law. Primer included on how the Internet works.
Tim Jackson, "The Case of the Invisible Ink.": This article discusses the idea that trademark infringement claims such as the one in the Oppedahl and Larson case are attenuated. It suggests that surfers will not be mislead or confused in the sense that trademark cases are generally thought of. The article concludes by downplaying the role that meta tags will have in the long run, given the fast-paced development of the Web.
Meeka Jun, "MetaTags: The Case of the Invisible Infringer." Short article discussing the case of Playboy Enterprises Inc. v. Calvin Designer Label and mentioning briefly Insituform and Oppedahl & Larson.
Jurisdictional Issues in Domain Name Disputes, an article published by Perkins Coie.
Melissa J. Kozlowski, "TheStreet.com Fights Site and Server," LJX (10/8/1998); Discusses the controversy between TheStreet.com and WallStreetSex.com
Flore Krigsman, "Section 43(a) of the Lanham Act as a Defender of Artists' 'Moral Rights,'" 73 Trade-Mark Rep. 251 (May-June 1983) (alternative sources of moral rights protection)
Jeffrey R. Kuester
and Peter A. Nieves, "What's all the hype about hyperlinking?":
Short article advocating the activity of linking and asserting that it
is "the essence of the Web". Also discusses key linking cases and
the use of state common law claims in the Internet context. Looks
at the feasibility of applying state law to regulate Internet activities.
Concludes by commenting on recent federal attempts to regulate the Internet
through the now defunct Communications Decency Act
Arlen W. Langvardt, "Protected Marks and Protected Speech: Establishing the First Amendment Boundaries in Trademark Parody Cases," 36 Vill L.Rev. 1 (February, 1991)
Laura G. Lape, A Narrow View of Creative Cooperation: The Current State of Joint Work Doctrine, 61 Alb. L. Rev. 43 (1997). Comprehensive discussion of current legal treatment of joint works, especially works created through internet transmission and contribution.
R. Leibowitz, "Firm Sues for Invisible Use of Its Trademark on 'Net.' Partner
Protests Use of His Law Firm's Name in 'Meta-Tags,' or Web Site Codes."
Short piece discussing Oppedahl & Larson and critical trademark distinction in metatag cases.
Mark Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S. Cal. L. Rev. 1239 (1995): a good overview of issues involved in shrinkwrap licenses.
Mark Lemley, Shrinkwraps in Cyberspace, 35 Jurimetrics J. 311 (1995): a discussion of on-line shrinkwrap licenses.
Lawrence Lessig, The Constitution of Code: Limitations on Choice-Based Critiques of Cyberspace Regulation. Professor Lessig argues that code -- the specifications of the software or technology that creates cyberspace -- is as significant a constraint as law or social norms.
Stuart E. Levi, Jose Esteves, & David Marglin, The Domain Name System & Trademarks; Practising Law Institute; June-July, 1998. This first part of this article provides a useful introduction to the domain name system. Additionally, the next section details the evolution of the NSI dispute resolution policy, some of the implications of the current policy, and some relevant cases.
Peter H. Lewis, "The Great Domain Name Hunt", An interesting New York Times article on open ccTLDs where the author discusses his search for an available domain name with his name. To read this article, go to the New York Times web site. In the "search the site" box type Domain Names. This will bring up a page that allows you to search back issues. Select "search all articles" and type in "The Great Domain Name Hunt."
Life Liberty and the Pursuit of Copyright, Atlantic Unbound roundtable, September 1998: Organized by The Atlantic Monthy, this online debate between John Perry Barlow, Charles Mann, Mark Stefik, and Lawrence Lessig covers the isses without too much depth, and provides a number of interesting links.
Lindsay, Recent Developments: Excite Sued over Sale of Advertising Space:
first-of-its-kind suit, Estee Lauder is claiming that Excite has violated its trademark by selling advertising space to Estee Lauder's competitors, where the ads sold are linked to the search term "Estee Lauder". Playboy has also filed a similar suit against Excite.
Joe Liu, "Overview of Trademark Law." Much of the debate concerning the legitimacy of metatags involves trademark law. If you are unfamiliar with this body of law and would like a brief introduction, click here.
David J. Loundy, E-Law 2.0: Computer Information Systems Law and System : Operator Liability Revisited (discussing how ISP liability for on-line conduct of its clients resembles that of a press, publisher, common carrier, et cetera -- see especially section IX., entitled "Liability for Computer Information System Content ").
David J. Loundy, "HiddenCode Sparks High-Profile Lawsuit.": Detailed synopsis of the metatags case brought by Oppedahl & Larson case.
Mary M. Luria, "ControllingWeb Advertising: Spamming, Linking, Framing, and Privacy.": In-depth article which focuses on "the delicate balance between protecting the rights of people and businesses and preserving the spirit of open communication that is the hallmark of the Web." Areas examined include spamming, linking, framing, and consumer privacy.
Courtney Macavinta, "TheStreet.com Sues Adult Site," CNET (10/5/1998); Discusses the controversey between TheStreet.com and WallStreetSex.com
Macavinta, "Web Sites Feud Over Design," CNET (3/26/1997): Discusses
the controversy over the use of a unique graphic device in the
David Maher, Trademarks
on the Internet: Who's in Charge?
A discussion of trademarks and domain names.
Charles C. Mann, "Who Will Own Your Next Good Idea?," The Atlantic Monthy, September 1998 Mann takes us on a tour of the latest developments in today's intellectual property universe, from software piracy malls in Hong Kong to an electronic book factory statewide, and covers thoroughly the debate about what will happen to intellectual property.
Lateef Matima, Trademarks, Copyrights and the Internet, Klehr, Harrison, Harvey, Branzburg & Ellers Philadelphia, Pennsylvania. ALI-ABA Course of Study, April 23, 1998. This article provides a good overview of personal jurisdiction
Mark C. Mccarthy, Censorship in Electronic Information (Sept. 25 1996) (arguing that vicarious liability of service providers encourages censorship).
Sharie Mendrey, Excerpt from Sovereignty in Cyberspace: Ways of Preventing Cyberanarchy Discusses ICANN's formation and role in Internet governance.
Robert Merges, The End of Friction? Property Rights and Contract in the Newtonian World of On-line Commerce, 12 Berkeley Tech. L.J. (1997) on contract law on-line.
Charles J. Meyer, National and International Copyright Liability for Electronic System Operators, 2 Global Legal Studies J. no. 2. (examining the difficulties inherent in balancing the interests of ISPs and copyright holders)
"Microsoft's Link to Ticketmaster Site Spurs Trademark Lawsuit," Computer & Online Industry Litigation Reporter. Article discussing the case brought by Ticketmaster against Microsoft seeking to prohibit the linking to Ticketmaster's site through Microsoft's Seattle Sidewalk web site.
Apik Minassian, Comment, "The Death of Copyright: Enforceability of Shrinkwrap Licensing Agreements," 45 U.C.L.A. L. Rev. 569 (1997): overview of issues surrounding shrinkwrap licenses.
et al., In Whose Domain: Name Service in Adolescence
A discussion of domain name proposals.
"Model's Use of Playboy Marks on Web Sie Does Not Infringe, Judge Says,"Computer & Online Industry Litigation Reporter, June 2, 1998.
John M. Mrsich, Meeka Jun, "TermsYou Need to Know: Search Engines.": Description of how search engines work; terms used; and distinction among search engines, search directories, and search managers.
Milton L. Mueller, Internet Domain Names: Privatization, Competition, and Freedom of Expression. A Cato Institute Briefing Paper. Argues for minimal trademark protection in this field. The paper also defines and proposes changes in the current domain name system and discusses the role of freedom of expression.
Ira S. Nathanson, Comment, Showdown at the Domain Name Corral: Property Rights and Personal Jurisdiction over Squatters, Poachers and other Parasites, 58 U. Pitt. L. Rev. 911 (1997) A good summary of case law and major issues in domain name context.
A New Sword To Combat Domain Name Piracy. Internet Client Advisory, February 1999. Discussing the impact of a Virginia State Court declaration that domain names are property and can be seized and sold to pay a default judgment.
Chris Oakes, "The Next Net Name Battle," Wired News, July, 1998
Carl Oppedahl, Analysis and Suggestions Regarding NSI Domain Name Trademark Dispute Resolution Policy
Kurt B. Opsahl, Freezing Rain on the Information Superhighway: Protecting Internet Service Providers from Vicarious Liability (Apr. 1, 1996) (Rough Draft) (arguing for the broad removal of liability from ISPs)
Maureen A. O'Rourke, Copyright Preemption After the ProCD Case: A Market-Based Approach, 12 Berkeley Tech. L.J. (1997) on ways in which contract law could supplant copyright law.
Maureen A. O'Rourke, "Drawing the Boundary Between Copyright and Contract: Copyright Preemption of Software License Terms," 45 Duke L.J. 479 (1995)
Jacqueline Paige, Scottish Court Orders Online Newspaper to Remove Links to Competitor's Website. Describes the copyright infringement and unfair competition claims brought by Shetland Times.
Sandip. H. Patel, Graduate Students' Ownership and Attribution Rights in Intellectual Property, 71 Ind. L.J. 481 (Spring, 1996). Deals primarily with student intellectual ownership of theories and inventions developed while in school, comparing these ownership rights wit those of professors. Explores patent and copyright implications of student research, including work-for-hire and joint authorship theories.
Playboy Enterprises v. Welles, Computer & Online Industry Litigation Reporter. Short article discussing the recent case brought by Playboy against Playmate Terri Welles for using the trademarked terms "Playmate" and "Playboy" in Welles' meta tag list. The court sided with Welles and allowed the use of the terms.
David G. Post, Anarchy, State, and the Internet: An Essay on Law-Making in Cyberspace, 1995 J. Online L. art. 3. (explaining that the rules governing on-line behaviour will evolve over time on the internet in a free-market fashion, and will not simply be a restatement of laws that exist in the "real" world)
Betsy Rosenblatt, Excerpt from Sovereignty In Cyberspace: Ways of Preventing Cyberanarchy Discusses the personal jurisdiction in the context of the Internet, not merely in trademark disputes.
Pamela Samuelson, "Legally Speaking: Regulation of Technologies to Protect Copyrighted Works," 39 Communications of the ACM 17-22 (July 1996): discussing two of the White Paper's legislative proposals - protecting the integrity of copyright management information that will soon be attached to all digital copies of copyrighted works and proscribing technologies or services useful for circumventing technological protection for copyrighted works - and arguing that "both proposals need significant refinement before they are suitable for adoption as either national or international legal norms."
Pamela Samuelson, Copyright, Digital Data, And Fair Use In Digital Networked Environments (1994) (see particularly the section on "Technological and Contractual Means For Overcoming Digital Replicability").
Lisa Sanger, Caching on the Internet, 1996 Definitions and discussion of caching issues.
Eric Schlacter, "The Intellectual Property Renaissance in Cyberspace: Why Copyright Law Could Be Unimportant on the Internet," 12 Berkeley Tech. L.J. (1997): a discussion of technological protection measures.
Benjamin R. Seecof, "Scanning Into The Future Of Copyrightable Images: Computer-Based Image Processing Poses A Present Threat," 5 High Tech L.J. 371 (1990) (on the distortion of images and its impact on copyright rules)
Andrew Shapiro, "Street Corners in Cyberspace," The Nation, July 3, 1995: Many commentators fear that technological protection in cyberspace goes so far that public discourse is stifled -- cyberspace becomes "cyberbia." Shapiro argues that we should make conscious efforts to encourage public spaces in cyberspace.
Robert Shaw, Internet Domain Names: Whose Domain Is This?, Kennedy School Presentation An interesting discussion of the lack of formal internet governance.
"Shetland Islands Linking Lawsuit Settled," Computer Law Strategist, November 1997: Discussing settlement of Shetland Times case, and providing relevant links.
Steve Silberman, "Paramount Locks Phasers on Trek Fan Sites": Wired news story about Star Trek fan fiction copyright/trademark disputes
Todd Spangler, NSI Centraal Team in Name Game. NSI, the gTLD domain name registrant, joins forces with Centraal in an effort to diversify its domain name business.
Michelle Spaulding, "Misappropriation" (1998). One of the doctrine that legal scholars are looking to for guidance and which may play a role in the future of cyberspace law is the law of "misappropriation." This article provides a brief introduction.
Mark Stefik, "Shifting the Possible: How Trusted Systems and Digital Property Rights Challenge us to Rethink Digital Publishing," 12 Berkeley Tech. L.J. 137 (1997): a more comprehensive summary of various trusted systems and their likely impact.
Mark Stefik, "Trusted Systems," Scientific American, March 1997 Stefik is a principal scientist at the Xerox Palo Alto Research Center in Palo Alto, California and one of the most articulate supporters of trusted systems technology. In this piece he discusses the arguments for trusted systems and gives a rough sketch on how trusted systems technology works.
Student is Joint Author, Not Liable for Infringement Suit by Professor, 6 NO. 6 Mealey's Litig. Rep.: Intell. Prop. 5 (December 15, 1997). Graduate student and professor conducted a study and the student published a paper based on the results. Lawsuit ensued.
William A. Tanenbaum, Intellectual Property Due Diligence for Online Services, Internet Web Site Development and International Conflict of Laws Analysis, PLI Order No. G4-3961 (September, 1996) Article explicating some of the special considerations that arise in the process of internet site development.
William A. Tanenbaum, Rights and Remedies for Three Common Trademark-Domain Name Disputes: 1) Domain Name vs. Trademark, 2) Shared Trademarks and 3) Domain Name Hijacking, 505 PLI/Pat 253, January, 1998. Introduction to the topic of domain name disputes.
Dan Tobias's site on domain names, with sources Links to resources concerning domain name disputes.
Rebecca Tushnet, "Legal Fictions: Copyright, Fan Fiction, and a New Common Law," 17 Loy. L.A. Ent. L.J. 651 (1997) (asserting that "the secondary creativity expressed in noncommercial fan fiction deserves the protection of the law)
Gus Venditto, "Netscape's Quiet Power Grab," InternetWorld, August, 1998.
Jonathan Wills, "Floatingpoints: Feedback: Tale of two halves.": Response by Shetland News' operator to previous editorial.
Jonathan Wilson, How Metatags Can Infringe Trademarks Without a Trace; New Internet Claim Stretches Fabric of Existing Law Briefly describes the use of meta tags and why they can be seen as trademark infringements. Uses three cases, namely Playboy v. Calvin Designer Label, Insituform Technologies Inc. sued National Envirotech Group, and Oppedahl & Larson v. Advanced Concept to describe the current state of the law in this areas.
Nick Wingfield, "TotalNews, Publishers Settle Suit": CNET news bulletin announcing the TotalNews settlement
Raphael Winick, "Intellectual Property, Defamation and The Digital Alteration of Visual Images," 21 Colum.-VLA J.L. & Arts 143 (Winter 1997)
Excerpt from Raphael Winick, "Intellectual Property, Defamation and The Digital Alteration of Visual Images," 21 Colum.-VLA J.L. & Arts 143 (Winter 1997)
J. Wu, Dealing with Copyright Aspects of Computer-Aided Authorship, 13
NO. 9 Computer L. Strategist 1 (January, 1997). Brief discussion of
ownership in software-aided creations such as websites that use "canned"
William J. Cook, Be Wary of Internet Casting Shadows on Copyright Holders, Chicago Law., Apr. 1996, at 60 (restating testimony given before the U.S. House Judiciary Committee).
Niva Elkin-Koren, Copyright Law and Social Dialogue on the Information Superhighway: The Case Against Copyright Liability of Bulletin Board Operators, 13 Cardozo Arts & Ent. L.J. 345 (1995) (arguing that the imposition of copyright liability on ISPs threatens the "democratization" of the internet and stimulates undersireable centralized control of content on the internet
Joan Gilsdorf, Comment, Copyright Liability Of On-Line Service Providers, 66 U. Cin. L. Rev. 619 (1998) (note that this Comment preceded the passage of the DMCA). This Comment examines the scope of OSP liability, pre DMCA, in light of recent court decisions and recommendations made by the Clinton administration's Working Group on Intellectual Property Rights
Jane C. Ginsburg, Putting Cars on the "Information Superhighway": Authors, Exploiters, and Copyright in Cyberspace, 95 Colum. L. Rev. 1466 (1995) (noting that authors will need assurances that their works will be protected on the internet, and that with such assurances the internet could provide entirely novel forms of artistic creation)
David Halbreich et al., Intellectual Property on the Internet: Surfing Through Liability and Coverage Issues, Mealey's Litig. Rep.: Emerging Ins. Disputes, Nov. 14, 1996
I. Trotter Hardy, The Proper Legal Regime for "Cyberspace," 55 U. Pitt. L. Rev. 993, 1002-08 (1994) (characterizing the problem of ISP liability for copyright infringement as one for which "real waorld" analogies fall short)
Bruce A. Lehman (Chair), Intellectual Property and the National Information Infrastructure, The Report of the Working Group on Intellectual Property Rights 115 (1995) (The "White Paper").
David J. Loundy, E-Law: Legal Issues Affecting Computer Information Systems and System Operator Liability, 3 Alb. L.J. Sci. & Tech. 79 (1993).
Raymond T. Nimmer & Patricia Ann Krauthaus, Copyright on the Information
Superhighway: Requiem for a Middleweight, 6 Stan. L. & Pol'y Rev. 25
(1994) (arguing that internet users and content providers need a property
concept beyond copyright -- they need a property right whose limitations
address the ability to control access to information resources on-line)
**NEW** For a European view, see the European
Copyright User Platform or the Central
European and Eastern European Copyright User Platform
http://www.ari.net/dfc/html/2180.html, maintained by the Digital Future Coalition, provides background materials on the history of the On-Line Copyright Liability Limitation Act, which started life as a separate piece of legislation but was eventually folded into the DMCA.
For a demonstration of how framing works, follow this link -- http://www.totalnews.com: First press the NPR link (NPR didn't file suit and agreed to let TotalNews continue framing their material). Then press the CNN Interactive link (CNN was a party to the suit). Note the difference.
To see an example of metatag keywords, click on the following two links. For each one, when the document has entirely finished loading, right click on the page and select "Page Source" or "View Frame Source" on the pop-up menu. A new window will come up, revealing the HTML code used to create the Web page. Remaining near the top of the document, scroll to the right until you see meta name="keywords" content=. The information following "content" will be the keywords the website operator intends search engines to utilize. For these two links, note the companies listed.
Intertrust, Inc.: trusted systems
Wave Systems Corp.: same.
Digimarc, Corp.: providing digital watermarking and search services.
RSA Data Security: a primer on cryptography technology.
Sites related to Electronic Book Technology:
Lab: site explaining the science of "electronic paper."
SoftBook: electronic book technology
Examples of On-Line Contracts (see if you can find the terms and conditions):
Copyright Clearance Center:
interesting restrictions on the use of information on the site. Also contains
restrictions on linking.
Visio: interesting restrictions on use of documents found on site.
West Publishing: restrictions on use of information in a legal directory
Dell Computer: restricting use to personal, noncommercial use.
Amazon.com: restricting use of site to use as a shopping resource.
Ticketmaster: stating that "visitors to this site are hereby granted a single copy license to download (on a single computer only) or print one copy of any of the information found on this site for personal, non-commercial use only."
CNN: restricting use of content to personal use.
Sites Relating to Open Source, Net Morality, and Civil Liberties:
The Open Source Initiative
A non-profit organization formed in 1998, ironically, to protect the "Open
Source" trademark. Introduction
to open source, and launch
Electronic Frontier Foundation: A non-profit organization dedicated to protecting civil liberties in cyberspace. (not formally a part of the Open Source movement.) mission statement.
The Free Software Foundation pioneered the concept of free software and is "dedicated to eliminating restrictions on copying, redistribution, understanding, and modification of computer programs."
The Cathedral and the Bazaar, the research paper by Eric S. Raymond that persuaded Netscape to go open-source. (There's also a sequel, Homesteading the Noosphere)
The Linux Documentation Project about the most popular open-source operating system.
Netscape Communications: Last year, Netscape released its source code to the general public.
The popular online auction house's statement about its "self-policing community."
Classifieds2000: an online auction house and classified advertisement network.
Internet Corporation For Assigned Names and Numbers (ICANN)
ICANN The entity that was created and accepted by the US as the company that will begin management of the DNS.
The contract between the US government and ICANN that puts in place a two year transition process in which ICANN will demonstrate its ability to safely manage domain names.
To get a complete list of articles from the New York Times, conduct a search on their web page using the search term "ICANN." Most of the articles summarize the process, so you should be able to get an adequate picture by reading one or two.
ICANN update on the status of the Domain Name Supporting Organization process.
ICANN update on the accreditation of new registrars who will enter into competition with NSI.
The Internet Society maintains a page on "The White Paper and Domain Name Systems Information and Press Releases" that will keep you up to date on ICANN meetings, processes and decisions.
InternetNews.com also provides some articles summarizing the DNSO and
accreditation steps taken by ICANN. See ICANN
Takes Domain Name Action, by N Tham, InternetNews.com, March 8, 1999
Releases Guidelines for Domain Registrars, by Michelle Masterson, InternetNews.com,
February 9, 1999.
World Intellectual Property Organization (WIPO)
WIPO (World Intellectual Property
Organization) main site.
Access all comments submitted to WIPO at the WIPO Comments Page (English Version)
American Intellectual Property Law Association (AIPLA) has indicated that the WIPO report goes too far in a few areas.
The Domain Name Handbook Web Page is a great source of information on domain name issues. This site includes news updates, listings of disputes, links to legal proceedings, and information on meetings by organizations such as ICANN and WIPO.
The American Association of Domain Names provides a chronological history of domain name disputes from 1981 to 1997. While not updated past 1997, this is the most comprehensive source of past domain name dispute on the web. The AADN also provides basic information about domain names basics.
Summaries of Cases related to Domain Names are maintained and updated at the Perkins Coie Internet Case Digest site.
One aspect of the NSI policy is that if the domain name holder can show a valid trademark registration prior to the initiation of a dispute, then NSI will not place the domain name on hold. Countries such as Tunisia provide an easy means of registering a trademark for concerned domain name holders, thus avoiding the NSI policy. For additional information see Domain Protect.
pokey.org, veronica.org and ajax.org -- Sites that raise issues about general Top Level Domains.
Brad Templeton's thoughts on liability for linking and framing: Legal opinion from a non-legal source on whether linking is copyright protected. Also discusses issues of contributory infringement, ability to identify authorship, and framing.
Hypertext Linking Called into Question: Brief discussion of Ticketmaster case. Provides links to the complaint, Microsoft's Answer, and Ticketmaster's Reply. Also has links to related articles.
Judge Enjoins Web Site's Use of Infringing Meta-Tag: Article discussing the Playboy Enterprises, Inc. v. Calvin Designer Label case. Contains links to the complaint and order issued in the case.
Shetland Islands Linking Lawsuit Settled: Article discussing settlement of Shetland Times case, and providing links to the court order.
Unauthorized Linking Prohibited in Framing Suit Settlement: Short article discussing the settlement in the TotalNews case. Also provides links related stories and court filings. Links to a discussion of the Ticketmaster case.
The Link Controversy Page: A very conprehensive site providing links to articles and cases.
Linking and Liability: Nice overview of the linking controvery. Begins by describing, in detail, the activity of linking. Then looks at the linking issue against the backdrop of current legal doctrine such as derivative work rights under copyright law, the doctrine of 'passing off', defamation, trademark infringement. Concludes by providing a summary of the Shetland News case.
Meta Tag Lawsuits: A concise overview of all meta tag cases and links to articles and other resources.
Oppedahl and Larson LLP's website provides additional articles by Carl Oppedahl. In addition to a critique of the NSI policy, the articles present an alternative analysis of trademark/domain name disputes that disfavors extension of trademark law in this area. A different page on the web site also provides a collection of sources and links regarding NSI's dispute resolution policy.
A wealth of information on Internet and IP law is available at the site
of the law firm Perkins