Monthly Archives: May 2007

The Digital Millennium Copyright Act: Protecting the ISPs and bogging down technology

The Digital Millennium Copyright Act (DMCA), codified in 17 U.S.C. § 512, amended the U.S. Copyright Act of 1976.  The DMCA provides for severe criminal penalties for circumventing technical measures protecting copyrighted works. 

The DMCA protects Internet Service Providers (ISPs) from liability arising from acts by the ISP’s customers.  However, there are certain conditions that an ISP must meet in order to qualify for the Act’s safe harbor provisions.  To enjoy safe harbor protection, an ISP must:  

1. Implement a policy to terminate infringers;
2. Designate a service provider agent for notification of claims of infringement.  (The list of designated service provider agents is located at:
3. Provide means to receive notice of infringement and upon obtaining notice act expeditiously to remove, or disable access to the infringing material; and
4. Have no actual knowledge of the infringing activity.

Arguably, the DMCA has bogged down the development of technology.  For example, in Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984), a case decided prior to the passage of the DMCA, the U.S. Supreme Court held that a manufacturer of video tape recorders could not be held liable for contributory copyright infringement.  The Court found that although video tape recorders could be used to copy copyrighted television shows, there were commercially significant non-infringing uses for the device.  This decision facilitated the commercial widespread of video tape recording devices such as Betamax and VCRs.

In Universal City Studios v. Reimerdes, 111 F. Supp. 2d 294 (2000), a case decided after the passage of the DMCA, motion picture studios brought action under the DMCA to enjoin Internet website owners from posting or downloading software that decrypted digitally encrypted movies on DVDs.  The United States District Court for the Southern District of New York granted the injunction under the authority of the DMCA. 

Despite the obvious differences between the distribution of a machine that records unencrypted television shows and the distribution of code that allows the copying of encrypted DVDs, had the DMCA existed in 1984, what would have happened to the development of the home video recording industry?

FTC Opens preliminary antitrust investigation into Google’s acquisition of DoubleClick

Today Google owns the Internet search engine market and DoubleClick owns the Internet banner advertisement market.  Now Google is bidding $3.1 billion to dominate the search engine market, the banner advertisement market… and a lot of data.  

DoubleClick has the ability to track what sites people visit and Google has the ability to collect search histories.  Unfettered exclusive access to all this information could potentially allow Google, not the market, to set the prices for Internet advertisement.  We will be waiting for the Federal Trade Commission’s report.

A related news article can be found at:

KSR International Co. v. Teleflex, Inc – Obvious non-obviousness?

Teleflex International Co. held a patent titled “Adjustable Pedal Assembly With Electronic Throttle Control.”  One of the claims of the patent describes a mechanism where an electronic sensor is combined with an adjustable pedal to control the throttle in an automobile.  KSR International Co. added an electronic sensor to its previous automobile pedal design and Teleflex obviously sued for patent infringement. 

The District Court dismissed the case, holding that the claim contained in Teleflex’s patent was obvious.  The Federal Circuit reversed, applying its “Teaching, Suggestion, Motivation” test.  Under this test, the combination of existing processes to create new processes is not obvious when there is no prior art that explicitly or implicitly teaches, suggests, or motivates the combination.  

The Supreme Court reversed, holding that the Federal Circuit’s application of the test need not become “rigid and mandatory formulas” and finding that “any need or problem” can provide the patentee with a reason for combing processes.   The Supreme Court’s new obviousness standard will probably increase litigation on obviousness grounds (the Verizon v. Vonage appeal comes to mind)… However, the full impact of the new obviousness standard is certainly non-obvious.

The full text of the opinion may be found at:

Site Pro-1 Inc. v. Better Metal LLC: a better approach for deciding trademark infringement claims resulting from competitive metatag usage and keyword advertising?

This was a trademark infringement lawsuit filed by Site Pro-1, Inc, the owner of the registered trademark SITE PRO 1®, against Better Metal, LLC.  Better Metal is a competitor of Site Pro-1. 

Better Metal purchased a “sponsored search” from Yahoo! that caused its website to be included among the results listed when a Yahoo! search user searched for some combination of the terms “1”, “pro”, and “Site.”  The SITE PRO 1® mark was not displayed in the sponsored search result linking to Better Metal’s website.

The Court stated:

The key question is whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin. Here, there is no allegation that Better Metal did so, and therefore no Lanham Act “use” has been alleged. Indeed, the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff’s SITE PRO 1® trademark on any of its goods, or any advertisements or displays associated with the sale of its goods. Complaint, Ex. B. Neither the link to Better Metal’s website nor the surrounding text mentions SitePro1 or the SITE PRO 1® trademark. The same is true with respect to Better Metal’s metadata, which is not displayed to consumers.

The Court’s approach seems to be inline with the Second Circuit’s position regarding competitive metatag usage and keyword advertising.  Most courts do not share this approach. Under similar facts, Courts in Virginia, California, Pennsylvania, Minnesota, and many others, have reached contrary results.  

So which court has the better approach for deciding trademark infringement claims resulting from competitive metatag usage and keyword advertising?  The debate continues… 

The text of the opinion may be found at:

Email privacy at work: Your employer can lie to you about reading your emails… and then fire you for relying on these lies!

Most employees probably know that the emails sent from their work email accounts are probably being monitored.  However, what if your employer repeatedly assures you that all e-mail communications would remain confidential and privileged?  What if your employer further tells you that e-mail communications could not be intercepted and used by against you as grounds for termination or reprimand?  Can your employer still intercept your emails, read them, and then fire you for the contents…?  YOU BET!!

In Smyth v. Pillsbury Co., 914 F. Supp. 97 (1996), Pillsbury maintained a company e-mail system which the employees used to communicate among themselves.  Mr. Smyth was an employee of Pillsbury. Pillsbury assured Mr. Smyth as well as the other employees that all e-mail communications would remain confidential and privileged and that the e-mail communications could not be intercepted and used against the employees as grounds for termination or reprimand. 

The U.S. District Court for the Eastern District of Pennsylvania surprisingly held that despite the assurances made by Pillsbury, its employees did not have a “reasonable expectation of privacy in e-mail communications voluntarily made by an employee to his supervisor over the company e-mail system.”  The Court went on to hold that no “reasonable person would consider the . . . interception of these communications to be a substantial and highly offensive invasion of his privacy.” 

The Pillsbury case, although decided under Pennsylvania law and dating back to 1996, has been cited with approval by courts in other states, including Massachusetts, Rhode Island, New York, Oregon, and Texas.

So, what should this mean to you?

1.   Always assume that your employer will read every email you send from work or home (using remote access to your work email).
2.   If your employer assures you that your emails will remain confidential… do not believe it.
3.   If your employer assures you that your emails will not be used to reprimand or fire you… do not believe it.
4.   Email privacy at work does not exist.

Feel free to contact us if you have any Internet privacy or Internet legal issues.