by Lee Gesmer | Jul 14, 2005 | Copyright, DMCA/CDA
Copyright, Digital Millennium Copyright Act. Quick now, what’s a good legal strategy when you’re involved in a bitterly contested trade secret, copyright and trademark case? Sue the lawyers on the other side, accusing them of hacking, of course. At worst, you’ll distract them and knock them off their game; at best, you’ll force their disqualification, pushing them out of the case and making your opponent go to the expense and inconvenience (not to be underestimated) of hiring new counsel and and getting them up to speed on the case.
And, it doesn’t matter that your suit may be borderline or even frivolous. Every experienced lawyer knows that in the American legal system the risks of being sanctioned for bringing a frivolous suit are only slightly higher than finding a hundred dollar bill on a Times Square sidewalk during lunch hour.
So, what happened here? First, there is an underlying trademark and trade secret suit between the similarly named “Healthcare Advocates” and “Health Advocate” that is of no particular interest to anyone except the parties. One of the issues is whether Healthcare published its alleged trade secrets on the Internet in the late 1990’s. Health Advocate, the defendant, is represented by the Harding Earley law firm, the lawyers who are at the receiving end of the lawsuit in question.
Seeking to investigate Healthcare’s publications on its Internet site in the late ’90’s, Harding Earley used the Internet Archive’s “Wayback Machine” to research Healthcare’s old web sites. The Wayback Machine (described in detail by Wikipedia here) is a remarkable Internet resource. Recognizing that old web pages disappear and that the early days of the Internet would be lost if they weren’t preserved, in 1996 the Wayback Machine began archiving the Internet for posterity, and thus far it has archived a petabyte of data – (the equivalent of 500 billion pages of standard printed text. (It’s also worth mentioning that the Internet Archive includes live music. The “live music archive” section of the site contains 2,886 live performances by the Grateful Dead. If you can’t wait to get started, click here).
If you own a web site and for some reason you don’t want to be archived by the Wayback Machine, you can opt out. The Wayback Machine permits website administrators to use the voluntary SRE (Standard for Robot Exclusion) to identify files or directories that cannot be “crawled” and indexed. Exclusion is accomplished by inserting a file called robots.txt on a web server. According to Internet.org this not only prospectively excludes a site from being crawled, but will “exclude any historical pages from the Wayback Machine.”
To return to our story, the case against Health Advocate was filed in 2003. Healthcare had been operating a website since 1998. In early July 2003, the robots.txt instructions were inserted by Healthcare. The next day (coincidence?) Harding Earley used the Wayback Machine to access Healthcare’s website material. Harding Earley hit the Healthcare site (using the Wayback Machine) very aggresively, and the robots.txt instruction failed to completely bar Harding Earley from accessing this material, nor did it warn the lawyers that the Healthcare material was “off limits.” The Harding Earley lawyers admit, however, that they had to “hit” the Healthcare URL repeatedly in order to gain access to it.
Fast forward two years, leaving out unimportant details. In early July 2005, based on the conduct described above, Healthcare filed suit against Harding Earley in the United States District Court for the Eastern District of Pennsylvania, Healthcare Advocates, Inc. v. Harding, Earley, Follmer & Frailey.
Most of Healthcare’s claims against the lawyers are hardly worth discussing (Trespass? Intrusion Upon Seclusion? Yeah, right…).
The only claim that might have merit is that Harding Earley violated the Digital Millenium Copyright Act (DMCA). Section 1201(a) of the DMCA states: “No person shall circumvent a technological measure that effectively controls access to a [copyright] work protected under this title.” Healthcare claims that robots.txt is a technological measure that controls access to the archived copies of its web site, and that the Harding Earley law firm circumvented that measure.
There are several problems with this argument. First, it’s not clear that Harding Earley took any affirmative steps to “circumvent” robots.txt, or that the law firm was even aware that Healthcare had attempted to restrict access to the material. In other words, Harding Earley did not use some form of de-encryption technology (common to DMCA claims). Did creating an automated script to hit the site repeatedly constitute circumvention under the DMCA?
Second, the DMCA defines a technological measure as one that “effectively protects a right of a copyright owner . . . if the measure, in the ordinary course of its operation, prevents, restricts, or otherwise limits the exercise of a right of the copyright owner under this title.” It’s not certain that the Standard for Robot Exclusion (implemented by robots.txt), a voluntary protocol, meets the DMCA’s definition of a technological measure. Moreover, the fact that the law firm got access simply by accessing the URL may suggest that the technological measure was not “effective.”
Third, since the archived website was accessed in connection with discovery in pending litigation, there may be no claim for copyright infringement. Absent the potential for copyright infringement, at least one case decided under the DMCA (Chamberlain v. Skylink) suggests that mere access to protected content may be insufficient to trigger the DMCA. As the Court noted in that case, the DMCA provides an additional avenue of protection for copyrightable content, but does not create a new property right.
Fourth, the lawyers can argue that it is significant that the web site content in question was fully and publicly accessible for five years. They may be able to argue that the the content was effectively licensed to the public or placed in the public domain when it was originally put on the web site, undermining the argument that the defendant’s access to it was in some way unauthorized.
Fifth, the plaintiff’s DMCA claim is clearly not what was contemplated by the law. The DMCA has traditionally (to the extent that term can be used for a statute of relatively recent vintage) been used to protected encrypted content, not external locks used to limit access to that content. Aggresive use of the DMCA in unanticipated ways is nothing new, but thus far has failed. Plaintiffs have unsuccessfully attempted to use the DMCA to prevent the sale of aftermarket printer cartridges and software codes embodied in garage door openers. We predict a similar conclusion is the likely outcome in this case.
Lastly, it’s worth noting that plaintiff’s theory, if successful, would discourage archivists like the Internet Archive from using voluntary measures like robots.txt upon pain of creating a DMCA violation if the measure fails, and therefore would open a host of copyright issues for the Archive that could endanger its existence.
Thanks to Joseph Laferrera, who has written a number of insightful articles on the DMCA (Court Limits Reach of DMCA – The Chamberlain Case and Court Preserves Aftermarket Competition Under the DMCA – The Lexmark Case), for his assistance in preparing this piece.
For some additional interesting commentary on this case by Rebecca Bolin, see LawMeme, here.
by Lee Gesmer | Jul 12, 2005 | Technology
Technology. Tim Berners-Lee is widely recognized as the inventor of the World Wide Web. Today, he is the Director of the World Wide Web Consortium, Senior Researcher at MIT‘s CSAIL, and Professor of Computer Science at Southampton ECS.
Mr. Berners-Lee’s current project is the development of a Semantic Web, a dramatic enhancement of the current web which is described in detail here.
This Spring (2005) my partner Andrew Updegrove interviewed Mr. Berners-Lee regarding the Semantic Web.
by Lee Gesmer | Jul 12, 2005 | Copyright
Following the Supreme Court’s June 27, 2005 decision in MGM v. Grokster I wrote a short article about the case, in the style of a client consulting a lawyer about a file-sharing system.
Attorney: Judy, what brings you to my office today?
Client: John, I have an exciting idea, and I want to run it by you to make sure it passes legal muster. I’ve been involved in indie music and film for years; I have hundreds of contacts in the entertainment industry. People don’t realize what a huge body of uncommercialized work is out there! I’ve developed the most radical peer-to-peer file-sharing software you can imagine. It makes Napster, Grokster, Morpheus and all of the others look medieval by comparison. I think that musicians and video producers will contribute their works to this network to get publicity. My revenue model will be based on banner advertising. It’s perfect! I have no cost of inventory – my only costs are computers, networking, and sales commissions for my ad reps. The best thing is that although anyone can put their files on my network, the technology creates proprietary file structures, so that people can’t grab my files, convert them into MP3s, and publish them on a competing system.
Attorney: Judy, this sounds very promising. However, there are some legal issues that we should discuss. You know that on June 27th the Supreme Court issued its decision in the Grokster case?
Client: I vaguely knew that something was pending before the Supreme Court, but I’ve been too busy with my programmers to read the news this week. How does this case affect me?
Attorney: Well, the Court held that MGM could proceed with its copyright case against Grokster, and reading the decision it seems a forgone conclusion that the lower court will find that Grokster violated the copyright laws. The Supreme Court didn’t buy Grokster’s argument that it shouldn’t be held liable for contributory infringement because there were potential noninfringing uses for its software. So, is there any chance that people could rip copyrighted music or videos, convert them into your format, and use your network to engage in illegal file sharing?
Client: I suppose there is; I really can’t control that. Am I participating in copyright infringement if copyright pirates take advantage of my system, even if I don’t illegally copy files myself? We would never condone or participate in that kind of conduct, but I don’t see how we could stop it from happening.
Attorney: You may not have to. The facts in Grokster were pretty extreme. The evidence showed that at least 90% of the files available on Grokster’s system were unauthorized copies. Also, Grokster made some serious mistakes – there was evidence that they actively encouraged infringement …
Client: Wow, they really dug their own grave …
Attorney: …. they held themselves out openly as an alternative to Napster, made no effort to filter copyrighted material, didn’t block users who shared copyrighted files, and they even rejected an offer to help them monitor and reduce infringement.
Client: Interesting. Did the Court announce some kind of rule or holding that I can use as a guide for my company?
Attorney: They did. They said, and I quote, that it is illegal to distribute a device (including software), “with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement.” If you do that, you will be liable for acts of infringement by third parties who use your software.
Client: Well, I certainly can control what my company says. I’ll be careful never to indicate to the public that the purpose of my system is to copy unauthorized works
Attorney: Well, be careful Judy. Any internal emails, business plans or other communications would also show your intent, not just statements to the public.
Client: Thank you, I understand that John. But what does the Supreme Court mean when it talks about “fostering infringement”? Attorney: “Affirmative steps taken to foster infringement,” to use their exact language.
Client: What do they mean by that? Could the old media companies claim that I am fostering infringement simply by making this system available, despite my good intentions? After all, simply starting this file sharing system is an “affirmative step,” right?
Attorney: Yes, but it appears the Supreme Court wanted to avoid discouraging the creation of the kind of system you’re describing. They specifically stated, and again I quote, “mere knowledge of infringing potential or of actual infringing uses would not be enough here to subject a distributor to liability.” They emphasized that illegality requires “purposeful, culpable expression and conduct,” and that they did not want to discourage innovation.
Client: Well, that sounds good. But you said that in Grokster the Court was influenced by the fact that only 10% of the files shared were “legal,” and the rest were infringing. As a practical matter, I can’t prevent my system from being taken over largely by illegal file sharers. What if my system ends up the same way?
Attorney: Taking the Supreme Court at face value, there is no per se illegality based on percentages alone. As long as you have the proper “intent,” the fact that your system is used for illegal purposes shouldn’t be a problem.
Client: Hmmm … if that’s the case, what’s to stop someone from coming up with the next generation of Napster or Grokster, hiring good lawyers to make sure they behave properly and don’t express illegal intentions, and then sit back and get fat and happy on advertising fees while illegal file sharers take over and expand their system?
Attorney: Nothing, that I can see from this case. Someone might be able to get away with a scheme like that. It almost goes without saying that they’d have to be able to fight off attempts by the media companies to expand the ruling in Grokster and shut them down, so a large litigation budget would be essential.
Client: What else could such a company do to be on the safe side?
Attorney: Well, like so many Supreme Court cases, the decision is very complex, and there are depths we may not have time to go into now. Although all three judges agreed on the ultimate ruling (reversing the lower court ruling in favor of Grokster), there are three different opinions, each joined in by three of the nine justices, so there are three factions within the nine member court. There are areas of disagreement, and one can see some complex cross-currents running through the three opinions that suggest that not all issues related to file sharing and copyright law have been resolved. That said, there are a few things you can do to be conservative. First, believe it or not, the Court thought the names of the services suggested their bad intent. For example, “Grokster” was derived from “Napster,” suggesting an illegal service. So, a file sharing service should have a neutral name. Second, I’d be somewhat concerned if someone knew that their system had been hijacked and did absolutely nothing to curtail the situation. So if it’s technically possible and financially feasible, use some filtering technology to minimize illegal file sharing. There’s more, but ….
Client: That’s OK John, I’ve heard enough for today. This has been much more educational than I anticipated. This conversation we’ve just had is attorney-client privileged, of course?
Attorney: Of course Judy. Best of luck on your new venture. Let me know if you need any further assistance, and don’t forget to give me the URL.
by Lee Gesmer | Jul 12, 2005 | Trademark
Trademark Law. Last year I wrote (together with Susan Mulholland, an attorney at my firm), an article on the WhenU line of cases. We reviewed the three legal decisions that had been published to date on the WhenU technology: two from the district courts in Virginia and Michigan holding that WhenU’s practice was permissible; and one, from the federal district court in New York holding that WhenU had violated the Lanham Act, the federal trademark statute.
What does WhenU do that resulted in three federal court cases? In brief, once downloaded by a user (concealed in a “Trojan Horse” application), WhenU’s software will continuously monitor (invisibly, to the user) the user’s Internet browser to determine whether content accessed by the user matches key words stored in WhenU’s client directory. When the software finds a match for an associated key word – often a trademark or service mark – it triggers the SaveNow program to transmit a WhenU-branded pop-up ad to the user’s computer. The pop-up ad is selected from a list supplied by WhenU’s advertising clients, and may be a competitor of the owner of the mark that triggered the pop-up. The pop-up ad provides a hyperlink to the web site of WhenU’s client that, if clicked on, results in the competitor’s web site opening on the user’s computer.
That was enough to send U-Haul, Wells Fargo and 1-800 CONTACTS running to court in protest. Unfortunately, they had only federal trademark law as the basis for their complaint, and the courts in Virginia and Michigan held that since WhenU didn’t “use” their trademarks in a way that was visible to potential customers — that is, it never actually displayed the trademarks — preliminary injunctions were inappropriate.
The New York federal district court disagreed, and issued a preliminary injunction.
The Second Circuit reversed that preliminary injunction on June 27, 2005, permitting WhenU to resume its use of the 1-800-CONTACTS trademark in this manner. In brief, the Second Circuit held that there was no trademark infringement because the WhenU ads do not display the 1-800-CONTACTS trademark.
This case is important decision in the developing law of the use of keywords on the Internet.
by Lee Gesmer | Jul 11, 2005 | What Were They Thinking
Yesterday’s masters of the universe are today’s cosmic dust.
Anon
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What Were They Thinking? A case that has received enormous attention in Massachusetts is the Massachusetts Board of Bar Overseers investigation into the activities of several attorneys for the defendants in the Demoulas case, a state court case involving claims of breach of fiduciary duty surrounding the ownership of a large New England supermarket chain.
The case itself was a legal odyssey, spanning years and numerous state court decisions, but it is the aftermath of the litigation that stunned lawyers in Massachusetts and around the country. The losing defendants, dissatisfied with the decision of State Superior Court Judge Maria Lopez (who has since resigned in ignominy over a criminal molestation sentencing fiasco) and suspecting bias on her part, concocted a charade intended to induce the judge’s then law-clerk to disclose the inner workings of the judge’s chambers while the case was in litigation, and presumably prove that the judge’s clerk, rather than the judge herself, wrote the final (and most important) decision in the case.
The saga of how Gary Crossen (then of Foley, Hoag & Eliot, and former ethics counsel to two Massachusetts Governors), Richard Donahue (a former President of the Massachusetts Bar Association, chair of its Commission on Professionalism and President of Nike, Inc.), and Kevin Curry, (a former Massachusetts Assistant Attorney General), lured the judge’s former law clerk out-of-state in order to tape record his “confession,” attempted to bully him into signing an affidavit, conducted surveillance on him, and more, is described in agonizing detail in the 229 page decision. As a fan of hard-boiled detective novels (including Boston’s current claim to fame, Dennis LeHane, author of Mystic River and other engrossing works), I can only say that in Boston, reality is stranger than fiction.
After years of hearings and delays Bar Counsel issued her decision recommending the “ultimate sanction,” disbarment of all three attorneys. Her decision is now working its way through the Board of Bar Overseers and will ultimately be in the hands of a single Justice of the State Supreme Judicial Court. The consensus in the community appears to be that bar counsel’s decision will be followed.
Once again, we ask, “what were they thinking”? Even if the Demoulas lawyers had established that the Judge’s clerk had “done it” (written the fatal decision, that is), so what? What would they have done with that information? Used it as a basis to attack the integrity of the decision? Hardly a winning strategy.
- You can read the case here
