March 2014

Lexmark v. Static Control – 12 Years and Still Going Strong

March 31, 2014

Jarndyce and Jarndyce drones on. This scarecrow of a suit has, in course of time, become so complicated, that no man alive knows what it means. The parties to it understand it least; but it has been observed that no two Chancery lawyers can talk about it for five minutes, without coming to a total disagreement as to all the premises. Innumerable children have been born into the cause; innumerable young people have married into it; innumerable old people have died out of it.  . . . Bleak House, Charles Dickens We were writing about Lexmark v. Static Control 9 years ago. (2005 article). The case itself dates back to 2002. And, after the Supreme Court decision on March 25, 2014, it is not yet over. Lovers of Bleak House may want to shift their gaze in the direction of this case. At its outset this case involved allegations of copyright infringement and violation of the DMCA’s anti-circumvention provisions. Those issues were resolved by court decisions, but one issue lingered on: whether Static Control could proceed with its false advertising counterclaim against Lexmark under Section 43(a) of the Lanham Act, even though the parties are not direct competitors.  The Sixth Circuit held it could not, but the Supreme Court reversed, holding that it could. The Court ruled that a plaintiff who alleges injury to a commercial interest in reputation or sales flowing directly from…

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Mass Law Blog, Update Week Ending March 21, 2014

March 21, 2014

9th Circuit holds copyright registration of a collective work registers the component works within it. Alaska Stock v. Houghton Mifflin (link) The PTO held its first Public Meeting on the Establishment of a Multistakeholder Forum on Improving the Operation of the Notice and Takedown System Under the DMCA (link) Long-running DMCA copyright suit settles. Viacom v. Youtube (press release) (blog post) Parties settle remaining issues in Prince v. Cariou copyright fair use case (blog post) Columbia Law Prof. Jane Ginsburg’s article on EU linking decision, Hyperlinking and Infringement: The CJEU Decides (sort of) (link) Prof. Eric Goldman’s post on Gardner v. CafePress (copyright/DMCA case; link to case in post) (link) Sup. Ct. Cal., County of San Francisco, holds that Instagram’s unilateral change of terms of service is enforceable (link) Michael Robertson, founder of MP3Tunes, found liable for copyright infringement in SDNY trial (link)

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Viacom v. Youtube: Mother of All DMCA Copyright Cases Settles

March 20, 2014

According to my count, I’ve written seven posts on the Viacom v. Youtube DMCA copyright case. The first time I mentioned Youtube and the DMCA was in October 2006, over 7 years ago. Referencing Mark Cuban’s comment that Youtube would be “sued into oblivion” I stated: Surprisingly few observers have asked the pertinent question here: do the Supreme Court’s 1995 Grokster decision and the DMCA (the Digital Millennium Copyright Act) protect YouTube from liability for copyright-protected works posted by third parties . . ..? In fact, Youtube was acquired by Google for $1.65 billion. It was then sued by a group of media companies, resulting in a marathon lawsuit that never went to trial, but yielded two district court decisions and one Second Circuit decision on the issues I identifed in 2006. As I described in a two-part post in December 2013/January 2014, the second appeal to the Second Circuit had been fully briefed and was awaiting oral argument. Now the case has settled, on confidential terms of course. However, demonstrating the extent to which the interests of the media companies and Youtube have converged, the joint press release contained the unusual statement that the “settlement reflects the growing collaborative dialogue between our two companies on important opportunities, and we look forward to working more closely together.” We may never know the terms of the settlement, but rumor has it that the plaintiffs received…

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MyMovingReviews.com Unable to Obtain Dismissal Under CDA

March 14, 2014

According to Massachusetts U.S. District Court Judge O’Toole the defendants in Moving and Storage, Inc. v. Payanatov are in the moving business and operate a web site at MyMovingReviews.com which, they claim, reflects neutral consumer reviews of moving companies. Not true, assert some of their competitors and the plaintiffs in this case. The plaintiffs allege that MyMovingReviews manipulates the reviews, deleting positive reviews of the plaintiffs and deleting negative reviews of their own company. Web sites that allow consumer reviews are protected from copyright infringement under the DMCA, and from tort (e.g. defamation) claims under the Communications Decency Act (CDA) assuming, in each instance, that they meet the often strict requirements of the statutes. The defendants claimed the protection of the CDA, and moved to dismiss under that law. Not so, held Judge O’Toole – The plaintiffs’ claims do not arise from the content of the reviews, whether they be disparaging, laudatory, or neither, but instead, the defendants’ alleged ill-intentioned deletion of positive reviews of the plaintiffs’ moving companies and deletion of negative reviews of their own company, coupled with various representations – that the website offers “accurate” data, that it is “serious about reviews quality,” and that readers “see the most accurate and up to date rating information to base your decision on.” The manner in which the information is presented, or withheld, is the conduct at issue, as well as the allegedly misleading ratings which…

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Mass Law Blog Update – Week Ending March 14, 2014

March 14, 2014

First Circuit holds that failure to register copyrights in underlying musical compositions dooms copyright infringement claims. Alecia v. Machete Music (link) N. Dist. Cal. court holds that websites copy of photo of politician is protected by copyright fair use doctrine. Dhillon v. Does 1-10 (link) The 9th Circuit has declared open season on the petition for rehearing or hear en banc in its decision in Garcia v. Google – anyone can file an amicus brief (link). This case has been the subject of massive criticism by the copyright community, and it seems likely that it is headed for en banc review. Techdirt: Google Points Out That Even the Copyright Office Thinks Judge Kozinski’s ‘Innocence of Muslims’ Rule is Wrong. Techdirt sums up recent developments in Garcia v. Google, including the fact that the plaintiff has been unable to obtain a copyright registration (see first bullet above). (link) Hearings of House Subcommittee on Courts, Intellectual Property and the Internet on March 13, 2014.  Topic this week was the DMCA (link) Atlantic article, Our Best Weapon Against Revenge Porn: Copyright Law? (link) Columbia Law Professor Jane Ginsburg (daughter of Supreme Court Justice Ginsburg), Aereo in International Perspective: Individualized Access and U.S. Treaty Obligations (link) David Nimmer (Nimmer on Copyright) says Second Circuit got it wrong in Aereo case. Responds Aereo: “ouch” (link) The courts are unable to agree on when an idea is “abstract,” and therefore…

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Copyright Duration and Termination Powerpoint, From CopyrightX Week 6

March 9, 2014

Prepared by Kim Meyer, my CopyrightX Teaching Fellow for class #6 in this 12 week MOOC.  @Kmeyer2015 Link to slides …..

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Boston Bar Association Interview/Profile

March 6, 2014

The Boston Bar Association has done a nice interview and profile of me on its blog, “Tipping the Scales.” Lee Gesmer is a founder and partner of Gesmer Updegrove LLP, a Boston-based firm formed in 1986 that focuses on the representation of technology companies and emerging businesses. Lee’s practice focuses on litigation in the areas of business and intellectual property law. He is a former Council member and former Co-Chair of the BBA Intellectual Property Section, as well as the Computer and Internet Law and Business Litigation Committees. 1. What inspired you to take the leap and start your own firm? My father owned his own business, and I worked for him summers in my teens. He taught me how important it is to work for yourself. He really believed America was the land of opportunity for people willing to take the risk of starting their own businesses. He embedded that idea in me at an impressionable age. When I graduated from law school, my plan was to work for a couple of good firms and get enough experience that I could start my own firm. Continue reading . . ..

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