InternetCases.com Podcast — March 18, 2005

This week’s podcast discusses the recent case of Roskowski v. Corvallis Police Officers’ Association, coming to us from the federal district court in Oregon. Here are some links to items mentioned in the podcast:



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NYJETS.COM for aircraft leasing doesn’t fly with WIPO panel

An administrative panel of the World Intellectual Property Organization (“WIPO”) has ordered the transfer of the domain name “nyjets.com” to the owner of the New York Jets football team. The panel determined, among other things, that the registrant’s unsupported assertions of plans to use the name for an aircraft leasing business did not prove it had rights or legitimate interests in the name.

NFL Properties LLC and New York Jets LLC brought this WIPO action under the Uniform Domain Name Dispute Resolution Policy, seeking a transfer of nyjets.com from Link Commercial Corp., a company located in the Bahamas. The Complainants argued that (1) the domain name was confusingly similar to the NEW YORK JETS and NY JETS trademarks, (2) the registrant had no rights or legitimate interests with respect to the domain name, and (3) the domain name had been registered and used in bad faith.

The panel awarded a transfer of the domain name. The transfer was ordered, however, only to the New York Jets and not NFL Properties, because the record showed that NFL Properties was merely a representative of the New York Jets regarding licensing and protection of trademark rights. The panel held that “[a]ppointment as a representative to exploit property does not necessarily confer rights in that property on the representative.”

The panel determined that the domain name was confusingly similar to the registered mark NEW YORK JETS. If further determined that Link had not proven it had rights or legitimate interests to use the domain name for an aircraft leasing business. The first mention of one “Norman Yacopino Jets” at nyjets.com came after the NFL and the New York Jets had challenged Link’s ownership of the name. Link had made “unsubstantiated assertions” that its preparation to use the name for this business pre-dated being contacted by the Complainants. The panel determined, however, that such assertions “[did] not constitute evidence of demonstrable preparations.”

In determining that Link had registered and used the name in bad faith, the panel looked to the elevated price Link at which it had offered the name for sale (no less than $2,000), and the fact that Link had a history of registering other domain names in bad faith.

NFL Prop. LLC v. Link Commercial Corp., Case No. D2004-1087 (March 10, 2005).

California court upholds medical board’s authority to post physician disciplinary information

The California Court of Appeal has upheld a trial court’s denial of a petition for writ of mandamus which would have ordered the board to remove from its website information about the plaintiff physician’s past disciplinary record. The physician had argued that certain California statutes (Bus. & Prof. Code §§ 803.1 and 2027) did not permit the board to post information on its website pertaining to the plaintiff’s completion of a probation period. The court held that the plain meaning of the statutes demonstrate that the board is specifically required to post on the Internet information about a physician’s disciplinary history. Furthermore, despite an apparent drafting error in the enacted version of §2027, the court held that a review of the legislative intent also supported the conclusion that posting the disciplinary history was mandatory.

Szold v. Medical Bd. Of California, — Cal.Rptr.3d —, 2005 WL 589433 (Cal.App. 4 Dist., March 15, 2005).

Communications Decency Act provides shield from liability for posting critical e-mail

In the case of Roskowski v. Corvallis Police Officers’ Association, the U.S. District Court for the District of Oregon has awarded summary judgment in favor of defendant, holding that a provision of the Communications Decency Act of 1996 provides immunity to the defendant for the posting of allegedly defamatory email online.

After plaintiff Roskowski resigned from her position as chief of police of Corvallis, Oregon, she filed suit against the Corvallis Police Officers’ Association for defamation. Roskowski claimed that she was damaged by certain anonymous email messages critical of her that were posted on a website that was established by the Association.

The Association moved for summary judgment, which the court granted. It held that Section 230(c) of the Communications Decency Act of 1996, 47 U.S.C. §230(c) provided immunity to the Association. This section of the Act provides, in relevant part, that “no provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”

In awarding summary judgment, the court held that (1) by merely providing a website the Association qualified as a provider of an “interactive computer service,” (2) the website was merely a vehicle for others to post or present their ideas, thus the Association did not control in any way the information provided, and (3) the Association was not a publisher of information as alleged by Roskowski.

Roskowski v. Corvallis Police Officers’ Association, 2005 WL 555398 (D.Or., March 9, 2005)

See also the discussion on InternetCases.com of the recent New Jersey case of Donato v. Moldow, 2005 WL 201121 (Ct. App. N.J., January 31, 2005).

Zippo test not applied to determine general personal jurisdiction

In the recent decision in Heidle v. The Prospect Reef Resort, Ltd., the U.S. District Court for the Western District of New York has declined to apply the well-known test set forth in Zippo Manufacturing Co. v. Zippo Dot Com, Inc. to determine whether to exercise general personal jurisdiction over an out-of-state defendant. The court held that notwithstanding other circuits’ application of the Zippo test in a general jurisdiction analysis, the Second Circuit applies such “sliding scale” test only in the context of a specific jurisdiction analysis.

Plaintiff Heidle, a New York resident, filed a diversity personal injury action in federal court in New York against Prospect Reef Resort, a company located in the British Virgin Islands. Prospect Reef moved to dismiss for lack of personal jurisdiction. The court granted Prospect Reef’s motion.

As part of her argument, Heidle had argued that the Zippo “sliding scale” test subjected Prospect Reef to personal jurisdiction in New York because Prospect Reef operated a website accessible in New York. While the Zippo test examines the level of interactivity of a company’s website to determine whether the company’s actions thereby provide sufficient contacts with the forum state for the exercise of personal jurisdiction, such an examination was not warranted in this case.

The question before the court was whether it could exercise general personal jurisdiction over the Prospect Reef. The Zippo case provides an analysis of whether specific personal jurisdiction would be proper. The court noted that “the Zippo analysis does not replace the traditional approach for determining the existence of personal jurisdiction over a certain defendant.” Instead of analyzing whether Prospect Reef’s website was “passive,” “active,” or “interactive” as required by Zippo, it applied traditional due process factors to determine that it did not have personal jurisdiction over Prospect Reef.

Heidle v. The Prospect Reef Resort, Ltd.
, 2005 WL 563085 (W.D.N.Y., February 28, 2005).

InternetCases.com Podcast — March 11, 2005

This week’s Podcast discusses the Second Circuit’s March 4 decision in the case of Faulkner v. Mindscape. It is a copyright infringment case that applies the standards set forth in the 2001 U.S. Supreme Court case of New York Times v. Tasini.

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(Approximately 920 kb, 5 min. 15 sec.)

Music courtesy of Blandy under a Creative Commons license.

Court tells ISPs they can’t have their servers back

In the case of Voicenet Communications, Inc. v. Pappert, 2005 WL 546645 (March 9, 2005), the Third Circuit has upheld the U.S. District Court for the Eastern District of Pennsylvania’s denial of injunctive relief that would have ordered government officials to return certain items of computer hardware to the technology companies from which they were seized in a criminal investigation. The court held that the plaintiffs had failed to demonstrate irreparable harm that would result from the government’s continued possession of the equipment.

Plaintiffs Voicenet and Omni provide access to Usenet, through servers called “arrays.” In 2003, state and local officials seized numerous arrays owned by plaintiffs after being informed that the software on the servers was being used to access illegal pornography. When the officials would not return the arrays, plaintiffs filed suit, claiming violations of their First Amendment rights, and seeking, among other things, a preliminary injunction that would order the return of the arrays.

The District Court denied injunctive relief and the Court of Appeals affirmed. Voicenet and Omni had argued that they and their customers would suffer irreparable harm if the court did not grant the preliminary injunction. The appellate court held that plaintiffs had not shown irreparable harm from being denied possession of the arrays, in part because the arrays could have been replaced for approximately $20,000. The fact that money damages could provide relief precluded an award of injunctive relief.

The court further held that the District Court properly denied injunctive relief that would have required the officials to return to plaintiffs the subscriber records residing on the servers. The officials had promised not to view the records without first notifying the plaintiffs, who could then seek injunctive relief to prevent such viewing. The plaintiffs had argued that giving such discretion to the officials contravened the holding of ACLU v. Reno, 929 F.Supp. 824 (E.D.Pa. 1996). The court in that case had explained that “the First Amendment should not be interpreted to require us to entrust the protection it affords to the judgment of prosecutors.” In this case, however, the court held that no prosecutorial discretion remained, as “the officers’ assurances were absolute.”

Voicenet Communications, Inc. v. Pappert, 2005 WL 546645 (March 9, 2005) (Not selected for official publication).

E-mail gets country club member suspended

The recent Florida Court of Appeal case of Shumrak v. Broken Sound Club, 2005 Fla. App. LEXIS 3055 warns country club members to watch what they say in email to their club’s powers-that-be.

Plaintiff Shumrak sent an email to a member of his country club’s board of governors, commenting on the club’s general manager who was under investigation by the board. The board must have taken great offense to Shumrak’s comments, because as a result of the email, Shumrak was slapped with a six month suspension from the club. The board had exercised its sole discretion under an article of the club’s bylaws which allowed for suspension where a member’s conduct might “endanger the welfare, safety, harmony or good reputation of the Club or its members.”

Shumrak sued the club, claiming his suspension was improper. The trial court dismissed on the basis that it could not review a disciplinary decision of a private social club. The Court of Appeal affirmed. It did not buy Shumrak’s arguments that the club was more like a homeowner’s association, thus suspension would implicate property rights and be subject to review. Apparently, because Shumrak would be “suspended” for a limited period of time, and not “expelled,” his property rights were not brought into play.

Shumrak v. Broken Sound Club, Inc., 2005 Fla. App. LEXIS 3055 (March 9, 2005).

Electronic scans of National Geographic were proper revisions under Tasini standard

The Second Circuit has upheld the U.S. District Court for the Southern District of New York’s grant of summary judgment in favor of the National Geographic Society and related entities, holding that the creation and distribution of electronic versions of National Geographic did not infringe the copyrights of the contributing photographers and authors. Applying the standard set forth in New York Times v. Tasini, the court determined that the electronic version was a “privileged revision” under Section 201(c) of the Copyright Act.

In 1996, the National Geographic Society took each and every issue of National Geographic Magazine since 1888 and scanned them electronically, two pages at a time. The resulting images were placed on CD-ROMs and sold to the public. The compilation was called the Complete National Geographic.

The plaintiffs in this case, photographers and authors of numerous photos and articles that appeared in National Geographic over the years sued the National Geographic Society and related entities for copyright infringement. The plaintiffs alleged that the copyrights in their works were infringed when the works appeared in the Complete National Geographic.

Defendants argued that the electronic compilation did not infringe the plaintiffs’ copyrights because it was a privileged revision of a collective work as provided in Section 201(c) of the Copyright Act. The district court agreed with the defendants and granted summary judgment in their favor. The Second Circuit affirmed.

Section 101 of the Copyright Act defines a collective work as a “work, such as a periodical, issue, anthology, or encyclopedia in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”

An obvious example of a collective work is any magazine. The photographers that take the photos appearing in the magazine and the authors that pen the articles may own the copyrights in those individual works, but all the elements combined together give rise to a new work based on the way in which the elements are selected or arranged. The publisher of the magazine can own the copyright in the way the elements are selected or arranged, i.e., the collective work, while the copyrights in the individual works making up the magazine remain with the photographers and authors.

Section 201(c) of the Copyright Act sets forth how an owner of a copyright in a collective work may use the individual works. “[T]he owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing [a] contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”

In this case, the court employed the test set forth in the Supreme Court case of New York Times v. Tasini, 533 U.S. 483 (2001) to determine that the replication of the pages of the National Geographic magazine was acceptable under Section 201(c) of the Act, and thus did not give rise to copyright infringement. The Tasini case required an analysis of how the individual photos and articles were “presented to, and perceptible by” users of the electronic versions. Because the entire works were merely scanned as they appeared in the original print versions, the original context of the magazines was “omnipresent” in the electronic compilation. The court held that the electronic compilation was simply a new version of the magazine, and therefore privileged under Section 201(c) of the act.

Faulkner v. Mindscape Inc., — F.3d —-, 2005 WL 503652 (2d Cir., March 4, 2005).

Decision gives guidance on domain names as trademarks

John Welch at the TTABlog provides a detailed analysis of the Trademark Trial and Appeal Board’s recent decision in In re Eddie Z’s Blinds and Drapery, Inc. which affirmed the examiner’s refusal to register BLINDSANDDRAPERY.COM as a trademark.

If you’re familiar with the Trademark Trial and Appeal Board, you can stop reading this post and click on over to the TTABlog to read about the decision. For a little bit of context, read the next two paragraphs.

The Trademark Trial and Appeal Board (TTAB in shorthand) is a panel of administrative trademark judges in the United States Patent and Trademark Office that, among other things, hears appeals of trademark applicants who feel that their trademark registrations were wrongfully refused. In this context, the outcome of a proceeding is to determine whether the trademark in question is entitled to registration. The board does not award damages for trademark infringement or provide injunctive relief.

A generic term is not entitled to registration as a trademark. For example, one could not trademark the word APPLE if he or she is using the word when selling, well, apples. (The question of using the word APPLE in connection with different goods like computers is a separate inquiry – in such a case APPLE would not be generic, but would be arbitrary.)

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