Tag Archives: 2008

November 1 / All Articles, Copyright

Interpreting Chamberlain’s “Reasonable Relation” Between Access and Infringement in the Digital Mill

Seven years have passed since Congress enacted the Digital Millennium Copyright Act (DMCA), the statute which makes circumventing technological barriers to copyrighted works illegal. [1] In the meantime, the DMCA has been widely criticized, and, within the last two years, undergone a major change in interpretation by the Federal Circuit in Chamberlain Group, Inc. v. Skylink Technologies, Inc. [2] In Chamberlain, concerned that the DMCA had created an entirely new property right, the Federal Circuit added a new limitation to the scope of the DMCA. Chamberlain held that a plaintiff must prove a “reasonable relation” between access to a copyrighted work and infringement. What this “reasonable relation” means however, has yet to be defined.


The nature of the “reasonable relation” test goes to the heart of the DMCA and its impact on innovation. If the “reasonable relation” between access and infringement is too broad, the DMCA will stifle many ideas which build on protected works, because the public will be prevented from accessing works for the purpose of creating improved versions and interoperable products. Innovation depends in large measure upon building on the works of others. As Sir Isaac Newton famously said, “If I have seen farther than others, it is because I have stood upon the shoulders of giants.” [3] On the other hand, if the “reasonable relation” is too narrow, then the DMCA would prohibit too little access. Creative works in digital formats would be subject to massive piracy. Creators would then lose the profit incentive to create any works at all.


In this paper, I suggest six possible “reasonable relations:” 1) ‘but for’ causality, 2) reasonable foreseeability, 3) Sony‘s [4] substantial non-infringing use, 4) defendant’s intent, 5) vicarious liability, and 6) Judge Posner’s balancing approach in In Re Aimster. [5] I evaluate these possible “reasonable relations” in light of the policies underlying copyright law and the DMCA using the facts of Davidson & Associates v. Jung [6] as a test case. I show how these different possible “reasonable relations” would play out in the facts of Davidson because these facts demonstrate the complexity of digital technology. Moreover, Davidson illustrates the pitfalls and promise of the internet revolution.  In Davidson, the plaintiffs worried about mass piracy of video games they had invested millions of dollars to create. [7] Meanwhile, the defendants created an improved network on which to play the games [8] — precisely the type of innovation and creativity that copyright law is intended to promote.


The second part of this paper discusses copyright law and the DMCA. In the third part, I examine the interpretation of the DMCA in Chamberlain. The fourth part introduces Davidson and discusses the correct outcome given copyright law policies. I apply Chamberlain‘s interpretation of the DMCA to the facts in Davidson in the fifth part and discuss which “reasonable relations” would produce the right result in light of copyright law policies. Finally, I give my conclusions….


Zoe Argento


November 1 / All Articles, Patent

Shopping for Expedient, Inexpensive & Predictable Patent Litigation

Intellectual property has experienced an explosion in recent decades as the value of American corporations has become increasingly reliant on intangible assets. [1] This explosion is reflected in the massive increase in patents issued by the United States Patent and Trademark Office (“USPTO”) [2] and the corresponding spike in patent litigation. [3] Moreover, patent litigation has become a high stakes game [4] that is time consuming and unpredictable. [5] Faced with a system of patent litigation that most people agree is too expensive, too time-consuming, and too unpredictable, [6] plaintiffs frequently attempt to capitalize on their virtually unencumbered choice of venue to shop for the best district courts to file their suits. [7] This environment has destabilized the patent system, and reforms are needed to restore fairness, efficiency, and certainty in patent litigation.


This article will begin by providing a background of patent jurisdiction, forum shopping, and claim construction. Next, the article will explain the most prominent proposals for improving patent litigation. The article will then critically analyze these theories and conclude that greater efficiency and predictability could be achieved through improvements at the USPTO, adopting expedited procedures, designating certain judges to hear patent cases, and giving district court claim constructions greater deference on appeal….

Kevin A. Meehan


May 1 / All Articles, Other Intellectual Property

Second Life Strife: A Proposal for Resolution of In-World Fashion Disputes

This article proposes a system of dispute resolution for the virtual world of Second Life. Virtual worlds offer a unique opportunity to examine real world law in a similar environment. These environments might very well be the electronic market place of the future, replacing traditional two-dimensional web pages, but they also provide a fascinating way to experiment with legal theories. There are numerous ways in which the dispute resolution system may be implemented and numerous types of disputes to which it may be applied, but this article focuses on disputes that arise in Second Life’s vibrant fashion industry.


Fashion law in the real world operates in a contradictory way — low intellectual property protections do not result in a lessening of innovation, as one would expect, but rather, foster creativity. Against this backdrop of virtual worlds and electronic commerce, fashion-related disputes are used as a springboard to build a system of dispute resolution for a broad range of other conflicts.


I. Introduction


Second Life is a 3-D virtual world, created by Linden Labs, where the residents can build and own property parcels. [1] Further, residents can craft virtually anything and own the intellectual property rights to their creations. [2]


Just as in real life, however, conflicts arise. This article will outline steps for resolving disputes that arise “in-world” by using the example of fashion-related disputes. The wide range of issues that can arise, as well as the multitude of questions that follow, necessitate this course of action. For example, disputes over in-world casinos raise the question of accretion of real world income, while disputes over speech lead to questions of First Amendment protections. The scope of fashion disputes will not be limited to disputes between two users. Real world designers will also be able to use the dispute resolution process to put a halt to trademark violations, as well as stop the practice of directly copying real world designs for in-world couture. By focusing on fashion, this article will provide a blueprint for Second Life and other such virtual worlds to create a system of dispute resolution that will enable their continued growth.


Sarah E. Galbraith, J.D.


May 1 / All Articles, Computing

An Analysis of the Video Game Regulation Harmonization Effort in the European Union and Its Trans-Atlantic Chilling Effect on Constitutionally Protected Expression

Video games have become a prominent pastime for both children and adults in the United States (U.S.) and across the European Union (EU). [1] Today, individuals are spending more time and money on electronic entertainment than ever before. [2] Studies conducted by the National Institute on Media and the Family (NIMF) highlight the significant amount of time that U.S. youth spend with video games. [3] In its 2005 Video Game Report Card, NIMF found that eighty-seven percent of all eight to seventeen year old children in the United States played video games. [4] The following year, in the Eleventh Annual MediaWise Video Game Report Card, NIMF reported that forty-two percent of U.S. children play video games for at least one hour per day, with twenty-two percent playing for two or more hours per day. [5] Although the average age of U.S. video game players has risen to the late twenties, almost half of the most avid players are between six and seventeen years old. [6] A similar study in the EU reported that European gamers dedicate a significant portion of their free time to video games, although less than their U.S. cohorts. [7] A study in Germany, the nation with the most time dedicated to video game playing within the EU, showed that a typical German video game player spends an average of forty-one minutes per day on video games. [8]


In addition to similar video game consumption habits, violent, pre-meditated murders by video game players have stunned both the United States and Germany.   [9] As a result, legislators in both countries have taken action in attempts to restrict minors’ access to violent video games. [10] The results have widely differed between the two countries, with the United States electing to treat video games as protected speech under the First Amendment, while Germany has focused on content censorship. [11] Germany’s video game restrictions, which are much more burdensome than U.S. regulations, are seen as strict even when compared to the standards of other European nations. [12] This is of special importance since Germany took over the six-month rotating presidency of the EU in early January 2007. [13] Germany is using its position to lead a clampdown on violent video games across the EU. [14] Germany’s initiative bolsters previous calls for more control of video game violence by the European Commission. [15] The potential censorship presents a problem as many video games are created in the United States and then released internationally. [16] Censorship in Germany, and more importantly across the EU, could create a chilling effect on video game expression in the United States. [17]


This Note provides a summary of the U.S. approach on regulating minors’ access to violent video games, and the Constitutional barriers to such restrictions. Part I provides a description of the current U.S. system of video game ratings and content control, and focuses on the modern video game rulings that have afforded full First Amendment protection to their violent content. Part II discusses aspects of Germany’s video game regulations, highlighting its emphasis on content censorship as compared to regulations in the United States. Finally, Part III analyzes Germany’s over-protective video game regulations and censorship, and argues against the propagation of such restrictions throughout the EU. As a potential resolution, this Note suggests that the EU harmonize its current content ratings system throughout its member States in order to prevent drastic regulatory differences with the United States….


Kyle Robertson

May 1 / All Articles, Computing

Warrantless Search and Seizure of E-Mail and Methods of Panoptical Prophylaxis

A. The Fourth Amendment and the Protection of Privacy in Electronic Communications


U.S. citizens are in a constant battle for their rights to privacy, fighting the government’s increasingly pervasive surveillance and justicial needs. One area where court opinions conflict with the public’s expectation of privacy is over the realm of personal electronic communications. The general public believes electronic communications must be afforded a certain level of privacy that is not currently recognized by case law or statutes. [2] Under current case law, warrantless searches and seizures of your personal e-mail are not prohibited by the Fourth Amendment. [3]


Fueling the public’s disconnect is the fact that technology progresses faster than the law. [4] The Constitutional Framers did not consider the depth and variety of technology used daily by every individual, nor did they predict the repercussions their words would have upon new technological uses. [5] Congress did not anticipate the widespread, various uses of electronic communications when they drafted much of the applicable legislation. [6] Furthermore, most courts rely upon legal reasoning that only tenuously analogizes between traditional methods of communication or privacy protections in light modern electronic communications. [7]


Based upon this legal backdrop, courts generally refuse to recognize society’s expectation of privacy over electronic communications. [8] Courts still hold onto outdated legal analyses for outdated technologies–and apply them as best they can to the burgeoning world of new technologies. [9] As a result citizens must turn to extralegal protections, such as implementing various technologies to circumvent legal prescriptions. Individuals must work with these new technologies to protect their Fourth Amendment rights.


The classic two-prong test in judging whether the Fourth Amendment protects an individual’s right to privacy asks: (1) whether the individual expects privacy, and then (2) whether society finds this expectation reasonable. [10] The first prong, the subjective expectation of privacy, is difficult to contest because a defendant will almost invariably affirm that expectation. [11] Therefore, the second prong is what courts generally focus upon. [12] Yet it is this second prong that most often flies in the face of what the general public accepts–that courts’ interpretations of the Constitution do not reflect the subjective expectations of society.


Thus, where case law and statutory reforms have continually narrowed privacy protections over electronic communications, the citizenry’s only option is to demonstrate to the courts and the legislature how they wish their rights to be preserved. [13] Until then, this paradox of perceived privacy rights drives individuals to implement extralegal technical methods such as encryption and anonymization to protect what they perceive to be theirs by right. Whether the courts and legislature follow these trends is an issue that needs to be decided sooner rather than later. [14]


For the purposes of this article, electronic communications will be narrowly limited to electronic mail (“e-mail”) and in some cases also instant messaging communications (“IM”) or similar “one to few” messaging systems. American Jurisprudence defines electronic communications as “the exchange of ideas, messages, or information, by written word, and includes information communicated to or received by an individual and information communicated concerning an individual’s Internet usage.” [15] Practically speaking, this includes, at the least, e-mail, web-browsing histories, instant messenger communications, participation in synchronous “chat rooms” or asynchronous “bulletin board” messaging systems (“bulletin boards”), “buddy lists,” and address books. The scope of this accepted definition is too broad for the purposes of this article. In many cases, the technology and implementation may be sufficiently similar to merely extend the legal reasoning here to understand the protections afforded them.


B. Framing Hypothetical: You and Your Eco-Terrorist Friend


Consider a hypothetical: You are an environmental rights activist. One of your colleagues is a suspected eco-terrorist. Now your electronic communications are under investigation in connection with local eco-terrorist activities. Whether or not you are in communication with this suspected eco-terrorist, are your e-mails protected from warrantless search and seizure? If not, then what can you do to protect your own expected right to privacy over your e-mail?


The Fourth Amendment should be your source for protecting your e-mails when you are under scrutiny as a private citizen in a public cyberspace. Regardless of whether you have anything potentially illegal in your e-mail, you suspect that you have the right to be notified by a warrant of any search of your e-mail. A warrantless search of your e-mail, revealing private thoughts and details to strangers, may open you up to the type of indignity similar to that prohibited in Terry v. Ohio. [16] Yet, courts have refused to grant the contents of e-mail this Constitutional protection.


The remainder of this article will examine the case law and statutes controlling this situation and examine technological implementations that may protect your expectation of privacy in light of your exposure to the eyes of the government. It will then explore this lack of privacy as the type of panoptical society described by the philosophers Jeremy Bentham and Michel Foucault. Finally, it will close with a discussion of methods of “panoptical prophylaxis”–what extralegal technologies are available to individuals interested in protecting their privacy? Also, this article will discuss the issues of privacy and communications in virtual world environments and their effects on “real world” privacy expectations and protections.

March 26 / All Articles, Trademark

Is Genericide a Matter of Fact or of Merit?

In Bayer Co. v. United Drug Co., one of the most well-known genericide cases, Learned Hand famously pronounced:


The single question, as I view it, in all these cases, is merely one of fact: What do the buyers understand by the word for whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed …. [1]

Judge Hand’s statement is the classic and oft-quoted definition of genericide: when a formerly fanciful term becomes associated in the public mind with a specific good rather than a specific brand, the term enters the public domain and loses its trademark status. This is a factual distinction, based solely on the public’s understanding of the term’s meaning. Consequently, there can be no benefit to the mark holder for having acted to defend its mark, nor any sort of presumption of waiver or estoppel for failure to act. All that should matter is how buyers now understand the mark, as evidenced by factual indicia like their actions, statements, or survey responses.


However, courts’ analyses of genericness are rarely this straightforward. While most courts agree with Judge Hand that a trademark owner’s defense of its mark does not prove that the mark retains protection, many of them are willing to use the trademark owner’s actions as evidence that the mark has become generic. J. Thomas McCarthy, in his treatise on trademarks and unfair competition, notes:


There is a great deal of imprecise talk in the case law as to the impact, if any, of plaintiff’s failure to sue third-party infringers. While many defendants, and some courts, talk about such a failure to sue in terms of “abandonment,” other courts state with vigor that the failure to sue others is totally irrelevant. The truth lies somewhere in between. [2]

The situation is even more confusing than Professor McCarthy indicates. Some courts discuss abandonment and genericide-through-inaction separately, as if they were independent categories. [3] Some of the courts who “state with vigor that the failure to sue others is totally irrelevant” [4] subsequently weigh that failure to sue as evidence in the course of the same opinion. Learned Hand himself, in the same Bayer opinion in which he holds that the entire analysis ought to turn upon the buyer’s understanding, concludes that Bayer had allowed the term ‘aspirin’ to become generic by failing to take affirmative steps to show that it was not, and that, “Having made that bed, they must be content to lie in it.” [5] Clearly the “single question” of buyer understanding is neither as simple nor as absolute as courts’ pronouncements would lead one to believe.


Because few courts either say what they are doing or do what they say on this count, it can be difficult to determine what is actually going on. Through analysis of a number of historic cases and a few contemporary ones, this paper will explore the ways in which genericide has been treated. It will also investigate the extent to which courts’ vagueness in defining what a trademark owner must do to protect its mark has compelled mark owners to be excessively zealous in prosecuting infringers, out of fear that inaction may be used against them in the future….


Shoshana Stern

March 26 / All Articles, Patent

Inequitable Results in Transnational Patent Infringement Liability: Closing The Method Loophole

A set of recent patent infringement cases are primed to have major impacts and, some argue, inequitable effects on the current patent scheme in the United States. A problem has arisen concerning what kind of patent protection, or lack thereof, method and process patents should receive when certain steps of those methods or processes are implemented outside the U.S. Read literally, as the courts have, current law requires a method to have taken place in the U.S. for protection. But what results when a method or process patent is infringed partially in the U.S. and partially abroad? Should the patent receive protection by U.S. patent laws or has it not been infringed because the entire method has not been carried through in the U.S. from start to finish?


To illustrate the problem in a simple analogy, imagine a mother standing over the kitchen sink preparing dinner in full concentration. Her son and his friend sit in the middle of the kitchen floor playing catch with a ball. The mother, becoming aware of the game of catch, reprimands her son, telling him, as she has before, that the rule of the house is that catch is not to be played in the kitchen. She points to a list of rules hanging from the refrigerator that specifically states, “No catch in the kitchen.” The son waves his friend off through the kitchen door, until the son is throwing the ball from the kitchen to his friend in the living room and vice versa. Is the son still playing catch in the kitchen? Technically, he is not. A traditional game of catch requires two people, and there is only one in the kitchen. Thus, the son is not technically disobeying the rules.


Nonetheless, most mothers would override the written rule here, explaining to the son that his activities are meant to be included in the rule because any throwing or catching of the ball creates the same hazard. But what if the mother was bound to the rule on the refrigerator, however technically it was being read, and she could not reprimand the son further? Is the resulting restraint on the mother fair even though the son’s actions constitute, at best, an honest attempt to obey the rules or, at worst, a creative attempt to flout the rules on a technicality?


This is the problem facing the current U.S. patent regime with respect to process or method patents that are implemented internationally. Under this regime, a patented method is not considered infringed so long as a single step of that method takes place on foreign soil. [1] Thus, like the son who cleverly relocates his friend to the living room to avoid further trouble from his mother, alleged infringers are not technically infringing if they implement one or more steps of someone else’s patented method in a different country. [2] And like the mother who must respect the written rule on the refrigerator, courts have shown much deference to the rules that claim to deal with the extraterritorial application of patent rights, enforcing the current rule which allows this avoidance of infringement. [3] This seemingly inequitable result is one that stares U.S. patent law in the face as geographical borders erode making transnational infringement easier with each passing day….


Alejandro Valencia