Senate Updates Digital Privacy Law

It looks like the Petraeus affair has prompted a Senate panel to finally propose an update the 1986 Electronic Communications Privacy Act ("ECPA").  The ECPA, as the name implies, was written before the advent of the internet, e-mail, social media, and the like.  Thus, it is no surprise that the ECPA, as written, did not handle the explosion of the use of the internet, e-mail, and social media well.  A very broad overview of the ECPA and its sister statute:

The first part of the ECPA is essentially a prohibition against wiretapping.  In other words, it prohibits the interception of electronic communications without consent of one of  the parties transmitting the communication. The second part of the ECPA is the Stored Communications Act ("SCA").    The SCA prohibits a person from improperly accessing a "facility through which an electronic communication service is provided."  In other words, accessing e-mails stored on an ISP's server which store the communications.  There is also the Computer Fraud and Abuse Act ("CFAA"), enacted in 1984. 


The CFAA, enacted in 1984, addresses computer crimes such as hacking.  That is, it provides a list of computer-related crimes, including intentionally accessing a computer without authorization (or exceeding authorized access) and thereby obtaining confidential information or anything of value, perpetrating a fraud, or causing damage.  

Thus, each of these statutes prohibit different areas of electronic communication: the interception during transmission (ECPA), the unauthorized access to the facility storing the communication (SCA), and the unauthorized access of a computer storing the communication (CFAA). 

Back to the Senate proposal.  The Senate panel proposed requiring the government to obtain a search warrant before secretly gaining access to e-mail and other electronic communications of a person.  As one may expect, the impetus for this change is to protect a person's privacy and personal information.  This is particularly important given the current upswing in identity theft, computer fraud, and theft of trade secret or proprietary information.  In my humble opinion, the time is ripe to update each of these statutes to both protect the privacy of individuals, yet still allow law enforcement a method for gaining access to evidence. 

Trademarking the Term "TEBOWING"

Tim Tebow, the infamous Jets quarterback, who created the "TEBOWING" phenomenon is trying to get control of the term "TEBOWING."  For those who may not know, "TEBOWING" is the pose adopted by Tim Tebow during football games where he kneels and prays:

An apparent fan of Tim Tebow, Jason Vollmer, applied for a trademark of the term "TEBOWING" when Tim got wise and sought his own.  If you've read this blog before, particularly, the trademark primer you would know that one cannot simply obtain a trademark for a term, but must be using that term in connection with goods or services.  So, what are the goods and services that Tim Tebow is associating with the mark? Well, his applications list football-related CDs/DVDs, educational services, clothing, hats, posters, and the like.  Mr. Vollmer was using and selling a line of clothing, among other items, featuring the Tebow posture.  According to Tim Tebow's application, he has not begun to use the mark in commerce, yet (they are intent-to-use applications).  And, according to an article in the Los Angeles Times, Mr. Tebow wants to control of the mark in order to make sure that it is "used the right way."  

What makes this scenario interesting is that it seems obvious that Tim Tebow had no designs on doing anything (i.e. selling shirts, DVDs, etc.) with the term until another sought to take advantage of it.  Tim Tebow has learned from the San Francisco Giants' mistake with respect to his "trademark."  However, at some point, Tim Tebow will have to start using the mark "TEBOWING" in commerce, so it looks like his company, XV Enterprises LLC, will soon be in the business of selling "TEBOWING" paraphernalia. 

The Apple Does Not Fall Far From the Tree

It is well known that Steve Jobs "borrowed" the Graphical User Interface ("GUI") for its Mac from Xerox.  Legend has it that he also "borrowed" the mouse from Xerox, too.  Apparently, Steve Jobs visited Xerox who was showing off their GUI, but decided not to exploit it. So, Steve Jobs exploited the idea and made Apple's Mac a household name.  Now, with the launch of the iPhone 5, it appears that Apple may have "borrowed" the clock of the Swiss rail company for its iPad/iPhone clock app.  Swiss Federal Railways licenses the clock design from watchmaker, Mondaine. 

Here is the iconic Swiss rail clock: 

 

And, Apple's new clock app clock:

Needless to say, the Swiss Federal Railways are suing Apple for trademark infringement.  Just another lawsuit to add to the litany of them involving Apple.  Seems a bit ironic that Apple owes much of its "innovation" to others, but seems hellbent on chasing Samsung all over the world with lawsuits.  Steve Jobs proclaimed that Google's Android was a "stolen product," meaning that he accused Google of stealing his smartphone. 

A purpose of intellectual property law is to foster innovation and creativity by allowing someone to take advantage of their innovation for a limited time.  Then, it falls into the  "public domain" so that others can use that innovation and improve upon it.  Sometimes it is just a fine line between stealing another's intellectual property and innovation. 

Ben & Jerry's Upset at Being "Ben & Jerry-ed"

Ben & Jerry's who names its ice cream flavors by playing off names and words recently filed a lawsuit against a pornography studio, Caballero Video ("Caballero") for titling its films by playing off the flavors of Ben & Jerry's ice creams.  For example, Caballero boasts titles such as "Boston Cream Thighs," "Peanut Butter D-Cups," and "Chocolate Fudge Babes."  Ben & Jerry's ice cream flavors include "Boston Cream Pies," "Peanut Butter Cups," and "Chocolate Fudge Brownie."  The lawsuit includes other aspects of Ben & Jerry's intellectual property, but what caught my interest was the suing Caballero for doing essentially what Ben & Jerry does in naming its flavors. My guess would be if it was not a pornography company doing the "Ben & Jerry-ing" Ben & Jerry's would not be as upset.

The Lanham Act provides additional protection for "famous" trademarks by way of dilution.  Dilution refers to the unauthorized acts that tend to blur or tarnish the famous trademark by using it in a disparaging or unsavory way.  As you may imagine, this cause of action often targets the pornography industry.  One of the elements of a dilution cause of action is that the use of the trademark by the defendant (Caballero) dilutes the quality of plaintiff's (Ben & Jerry's) trademark by diminishing the capacity of the plaintiff's mark to identify and distinguish plaintiff's goods and services.  For a refresher on trademark basics go here. 

Needless to say, Ben & Jerry's succeeded in obtaining an injunction to stop Caballero from selling its Ben & Jerry series of titles.  However, Ben & Jerry's will still need to prove that Caballero's titles "dilute" its trademarks.  Because Caballero "borrowed" other aspects of Ben & Jerry's labeling, it may have an easier time showing dilution. 

SimsSocial v. The Ville

Electronic Arts, Inc. recently sued Zynga for copyright infringement alleging that Zynga copied the design choices, animations, visual arrangements, and character actions/movement from Electronic Arts's Sims Social game.  Sims Social released about ten months before Zynga's The Ville.  Apparently, Zynga is not new to such lawsuits.  There have been others involving Mafia Wars, CityVille, and FrontierVille.  Zynga settled all of these lawsuits.

As more and more of these types of games become prevalent and more and more uses find themselves absorbed in these games or other virtual worlds, there will be bigger competition to keep a user's attention.  Based on Facebook friends alone, the life cycle for users to play these games is about a year or so.  Which means that it is important to grab new players and keep their interest by coming out with new games or features.  For the unscrupulous, this would mean copying another's work rather than creating it independently.  By the time that a company created the new feature or game, the game may be passe.

I am not familiar with either Sims Social or The Ville, but I am sure that there will be updates on this case.  Stay tuned. 

Beastie Boys Rapper Says No to Turning His Music Into an Advertisement Jingle in His Will

I just read an article about the recently-deceased Adam Yauch's (of Beastie Boys fame) will which contains a provision prohibiting his songs from being used in an ad.  As I wrote earlier, branding is changing and companies are now trying to find new ways to get their brands before a consumer. So, it is no wonder that some artists are doing something similar with their art.  I have been guilty of looking up the name of a song I heard in a commercial, or recalling fondly a song from my youth playing in a commercial.  And, who could not appreciate this little gem from Honda, or this one?  And another favorite for mixing two different genres in a commercial. 

Yet, in some artists' minds (like Mr. Yauch) the use of one's song in a commercial cheapens the song.  I guess this is the other side of the coin that we see with fan fiction where a fan creates fiction based on another author's characters.  As I wrote earlier here and here, some artists embrace these fans' work thinking that it enhances their work (and, presumably, creates additional interest in the original work).  Other artists try to shut down these fan sites seeing it as an infringement on their intellectual property and ripping them off.  Now, as we see from the Adam Yauch article and the commercials linked above, there are two schools of thought with regard to the use of music in an advertisement.  Some artists despise it and will not allow their work to be featured in an ad, while others appear to embrace it. 

In my personal experience, I have searched for and purchased songs that I have heard on a commercial on several occasions.  Or, I have dusted off my old albums and put them in my Playlist de Jour because I heard a snippet of a song in a commercial.  What do you think?

A Cease and Desist Letter Written With Honey, Not Vinegar

Over the course of my practice, I have often had clients come to me after receiving a cease and desist letter.  Usually, the cease and desist letter, written by an attorney trained by or from one of the "Big Firms," promises hellfire and damnation to my client unless it immediately acquiesces to their client's laundry list of demands.  The demands are lengthy, and often include requiring my clients their first and second born.  I am not a big fan of these types of letters, in firing off cease and desist letters indiscriminately, or such intellectual policing tactics.  Unfortunately, sometimes such tactics are necessary when the other side is simply unreasonable and uncooperative.

As I often counsel my clients when they want me to send a cease and desist for them, it is usually better to try the nice approach first rather than immediately going for the mean approach.  In fact, I often try to get the client to agree to ending the cease and desist letter with an offer to have a dialogue about the issues raised in the letter in the hopes of avoiding having to litigate.  Other times, I try to get the client to think of ways to turn the issue into a "win-win," for my client and the other party. For many small business (and some medium businesses), litigation is bad business--well, except for us litigation attorneys who usually will get paid regardless of result. 

So, when I ran across this article about the attorney for Jack Daniels sending a cease and desist letter to author Patrick Wensick over his book cover art, I was impressed.  I disagree with the article saying that such a letter is "unlawyerly," since the letter gets across the conundrum that every intellectual property owner faces:  if you do not protect it, you can lose it.  Apparently, Mr. Wensick was impressed with the letter because he posted it on his website.  I am sure that Jack Daniels did not expect, but does welcome the free good publicity.  Moreover, as an intellectual property owner himself, Mr. Wensick clearly understands the issues and does not need a nasty letter telling him that he going straight to hell for infringing on Jack Daniels' label design.

Three cheers to Jack Daniels' attorney and a big thank you for reminding us that sometimes you can catch more bees with honey than with vinegar!