Tracy Swartz has written an interesting little article in today’s Redeye (for you non-Chicago readers, the Redeye is published by the Chicago Tribune and covers the trendier side of the news and the Chicago scene). The article talks about so-called “vigilante websites,” which provide users with a forum in which to report bad drivers by posting the license plate numbers of offenders. Interesting concept, and it presents some worthwhile questions about secondary liability for site owners. I’m quoted very briefly toward the end of the article. Hope you’ll check it out.
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No stay of action in PODFITNESS trademark case
Apple Computer, Inc. v. Podfitness, Inc., No. 06-5805, 2007 WL 1378020 (N.D. Cal. May 10, 2007)
Podfitness.com provides a service whereby users can download workout routines onto their iPods. When Podfitness filed trademark applications for PODFITNESS, PODFITNESS.COM, PODPOCKET, and PODWORKOUT with the United States Patent and Trademark Office, Apple filed notices of opposition with the Trademark Trial and Appeal Board (“TTAB”), seeking to prevent the marks from registering. Apple also filed a federal lawsuit against Podfitness, alleging that the company’s “entire marketing strategy appears to consist of hitching its wagon to Apple’s star.”
Defendant Podfitness moved to stay the proceedings pending the outcome of the oppositions before the TTAB. The court denied the motion to stay.
Podfitness provided two arguments why a stay would be appropriate. First, it argued that since the question of likelihood of confusion would be central to all of Apple’s claims, the court should wait to see how the TTAB rules on that point. Second, Podfitness claimed that Apple has initiated numerous other oppositions before the TTAB seeking to preclude others from registering trademarks containing word combinations which include the term “POD,” and therefore a stay would further the interests of judicial economy because the TTAB’s decision would comprehensively adjudicate Apple’s right to preclude others from using POD-formative marks.
In denying the motion for a stay, the court looked to the doctrine of “primary jurisdiction.” Under this doctrine, a court should stay proceedings which are properly within the jurisdiction of, and are in fact presently under consideration by, an agency with extensive regulatory powers over the subject matter and the parties involved.
Podfitness argued that a stay of the action pending the TTAB’s decision would promote a uniform and efficient adjudication of the parties’ rights, while, at the same time, avoiding the potential for inconsistent judicial determinations concerning Apple’s rights to preclude others from using POD-formative marks. Apple countered that since the TTAB’s decision would only determine the registrability of Podfitness’s marks, the Court would still have to adjudicate its claims for trademark infringement, dilution, false advertising and unfair competition regardless of the substance of the TTAB’s determinations. Accordingly, Apple argued, a stay would only serve to delay the resolution of the issues, perhaps for years.
The court agreed with Apple’s arguments, observing that the TTAB would be incapable of resolving all of the issues between the parties. Granting a stay would only serve to postpone resolution of the issues, forcing the court to eventually adjudicate what would inevitably be stale factual claims. And in the interim, Podfitness would be able to continue its allegedly infringing activity unfettered.
So the benefit of prompt adjudication won out.
A look back at the Fair Housing Council v. Roommates.com decision
Fair Housing Council of San Fernando Valley v. Roommates.com, LLC, No. 04-56916 (9th Cir. May 15, 2007)
Ed. note: Funny thing about the blogosphere — news gets old fast. The case of Fair Housing Council v. Roommates.com was released more than 2 weeks ago, and I’m just getting around to reviewing it. When the opinion came down, it got lots of attention [see, e.g., here and here]. I hope you won’t mind this belated review of an important decision.
The Fair Housing Councils of San Fernando Valley and San Diego, California sued Roommates.com, alleging that the the popular roommate matching service violated the federal Fair Housing Act and a number of state laws. The plaintiffs moved for summary judgment at the trial court level, arguing that Roommates.com is liable for making and publishing “discriminatory statements that indicate preferences based on race, religion, national origin, gender, familial status, age, sexual orientation, source of income, and disability, all in violation of fair housing laws.”
Both parties moved for summary judgment, and the trial court dismissed the case, holding that the Communications Decency Act [at 47 U.S.C. 230] provided Roommates.com with immunity from liability. The plaintiffs sought review with the Ninth Circuit. On appeal, the court reversed most of the holding as to Section 230 immunity.
At issue was Roommates.com’s series of online questionnaires that new members filled out when signing up for the service. Individuals signing up for the service were required to provide a variety of information, including whether they would be willing to live with members of the opposite sex, or with gay men or lesbians.
Roommates.com argued that it could not be held liable for violation of the Fair Housing Act, as the website was merely an interactive computer service allowing access to information provided by third party information content providers, and therefore Section 230 immunity should apply. The Ninth Circuit disagreed, however, providing two different reasons why immunity was inapplicable.
First, the court differentiated the case from Carafano v. Metrosplash, 339 F.3d 1119 (9th Cir. 2003). In Carafano, the Ninth Circuit upheld Section 230 immunity for a dating website accused of publishing defamatory material provided in response to online questionnaires used to generate user profiles. The present case differed from Carafano inasmuch as the interactive questionnaires in that case did not specifically solicit tortious content. It was the user of the site which provided the objectionable content. In this case, however, the Roommates.com site provided the mechanism and framework to solicit tortious content, i.e., content that would indicate a preference for a roommate which could potentially violate the Fair Housing Act.
Aside: Judge Kozinski uses a hypothetical involving a website called “harrassthem.com” to illustrate the above point. After the decision came down, Joe Gratz grabbed that domain name. He’s asking for suggestions about how the domain might be used.
Despite the differences between Roommates.com and the website in Carafano, the court found another, independent basis for determining that Section 230 did not apply. The mechanism by which users could search available listings made Roommates.com an information content provider itself, and thereby outside the scope of Section 230 immunity. For example, users could search for listings matching certain criteria (e.g., will only live with straight people). Results for searches would exclude listings that did not match the searcher’s criteria. The court held that this exclusion of information in the search results added a layer of information in addition to the information provided by the site’s members. Accordingly, by adding the layer of information, Roommates.com became an information content provider, and outside Section 230 immunity which only protects providers that distribute information provided by third parties.
Big, big news for Feedburner
Last week’s rumors are confirmed — Google is in the closing stages of a $100 million deal to purchase Feedburner. What great news for this terrific Chicago company. And congratulations to my friend Rick Klau, who has been on board with Feedburner for a couple years as VP of Publisher Services, and who no doubt has been an instrumental force in the company’s success. Wow.
CAN-SPAM retrospective
Venkat Balasubramani has written an interesting article on CNET, talking about recent litigation under the CAN-SPAM act. It’s an interesting read. To find out more about the law of electronic communications, be sure to read Venkat’s blog, Spam Notes.
Viral on Veoh: Episode 21
I’m in this week’s episode of Veoh Networks’ Viral, talking about the Safe Harbor provisions of the Digital Millennium Copyright Act (“DMCA”).
Facebook users — join the Internet Cases Club
I’ve started up a group on Facebook, and if you’re a member of the Facebook community, I invite you to join. I have no agenda for the group’s activities, if there ever are any. But the discussion board feature could be fun, and it also seems like it could be a good networking catalyst. Hope to see you there.
Here’s a link to the group page: http://turo.us/3Hrhf
(Drop me a line if you have any trouble accessing it.)
Wonkette in, now out, of Steinbuch v. Cutler
Steinbuch v. Cutler, No. 05-970 (D.D.C. May 16, 2007)
Back in late October 2006, the court in the case of Steinbuch v. Cutler allowed the infamous blogger Ana Marie Cox a/k/a Wonkette to be added as a defendant. [Read about that here.] The case raised the question of whether simply linking to another site could subject a blogger to tort liability. We’re now learning that Wonkette has been dismissed.
The court’s order granting the motion to dismiss hasn’t been loaded onto PACER yet, but here is a copy of the motion and brief Wonkette filed back in January. In that motion, she argued a number of reasons why the case against her should be dismissed, including immunity under the Communications Decency Act [at 47 U.S.C. 230]. It isn’t clear yet what the exact basis for dismissing the case was, but, according to this article the court agreed that the claims were time-barred.
The day after Wonkette was added to the suit, Eric Goldman suggested that Section 230 immunity would apply. And Wonkette’s brief is a nice walk down Section 230 lane.
E.D.N.Y. holds purchase of competitor’s trademark to trigger sponsored listing not trademark “use” under Lanham Act
Site Pro-1 v. Better Metal, LLC, No. 06-6508 (E.D.N.Y. May 9, 2007)
Site Pro-1 sued its competitor Better Metal, LLC, accusing Better Metal of committing trademark infringement when it purchased the terms “site,” “pro,” and “1” to trigger sponsored links on Yahoo! The facts of the case were “straightforward and not in dispute”: the mark SITE PRO-1 did not appear in the sponsored search results linking to Better Metal’s website.
Better metal moved to dismiss the complaint under FRCP 12(b)(6). The court granted the motion.
Relying heavily on the cases of 1-800 Contacts v. When-U, 414 F.3d 400 (2d Cir. 2005), Merck & Co., v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402 (S.D.N.Y. 2006), and Rescuecom Corp. v. Google, Inc., 456 F.Supp.2d 393 (N.D.N.Y. 2006), the court held that the internal use of the plaintiff’s mark to trigger the sponsored listings was not “use” as provided under the Lanham Act. The key question was “whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicate[d] source or origin.” Because the court answered that question in the negative, Site Pro-1’s infringement claim failed.
Hat tip to Eric Goldman.
California appellate court affirms dismissal of defamation suit against stock blogger
GTX Global Corp. v. Left, No. B192626, 2007 WL 1300065 (Cal.App. 2 Dist. May 4, 2007)
Andrew Left publishes the blog stocklemon.com, and in 2005, he made a couple of posts critical about plaintiff GTX. In turn, GTX sued Left for invasion of privacy and defamation. At the trial court level, Left moved to strike the complaint under California’s Anti-SLAPP statute [Code of Civil Procedure section 425.16], and the court threw out the case. GTX sought review with the California Court of Appeal, which affirmed the trial court’s dismissal.
When a defendant files an Anti-SLAPP motion in California, the court first considers whether the plaintiff’s cause of action arises from any act of the defendant’s taken in furtherance of that defendant’s right of petition or free speech. If the court finds the defendant has made the threshold showing, it then determines whether the plaintiff has demonstrated a probability of prevailing on its claim.
In this case, there were a number of statements made on the Stocklemon blog which GTX claimed were false and defamatory, including allegations that the company was headed by a convicted felon, and engages in stock fraud.
The court held that these statements arose from an act taken in furtherance of Left’s right of free speech, and that GTX had failed to establish a probability of prevailing on its claims. It held that for purposes of the Anti-SLAPP statute, the website was to be considered a public forum. But the public forum status of the place where the statements were made was not determinative — the court also held that the statements were connected with an issue of public interest.
In determining that GTX had failed to demonstrate a likelihood of prevailing on its claim, the court found that GTX had “adduced no evidentiary support for any of its causes of action.” The plaintiff did not “identify a single piece of evidence to support its allegations that defendant’s challenged statements were false or otherwise defamatory.”
Accordingly, the court affirmed the dismissal of the action against Left, and awarded Left the attorney’s fees he had incurred, both at the trial court level and on appeal.