More Legal Tsuris for Google

It's not even funny any more. If it ever was.

I'm just saying.

Here's the latest on the Google v. American Blinds case:

The suit claims Google's practice of selling text ads related to keyword search terms infringes on American Blind's trademarks, because competitors' ads can appear on results pages delivered to users searching for the company. American Blind asked that Google be permanently barred from selling keywords.

In fact, the suit claims, Google makes it worse with its AdWords Keyword suggestions feature, which "actively and deliberately encourages American Blind's competitors to purchase... virtually every conceivable, though indistinguishable, iteration of those marks."

They make that sound like a bad thing. The good news for Google is that the judge granted Google's motion to dismiss the (usually bogus) tortious interference with economic advantage counterclaim by American Blinds. The bad news is that the rest of the counterclaims are staying in the case, at least for now. Not what you're looking for when you bring a declaratory judgment action.

Here's the full text of the decision. By the way, in the classically California way, this is an "unpublished opinion" that everyone's reading now. It says right on top, NOT FOR CITATION. Is there any hope for the common law?

Update: More from Kevin Heller, as usual.

Indirect Liability and Grokster

This post on the Marginal Revolution blog (where this blog advertises) links to (or tries to link to) an amicus brief filed by... a bunch of guys -- namely Kenneth J. Arrow, Ian Ayres, Gary Becker, William M. Landes, Steven Levitt, Douglas Lichtman, Kevin Murphy, Randal Picker, Andrew Rosenfield, and Steven Shavell. Their self-described interest as amici?

Amici are professors and scholars who teach and write on economic issues and, in particular, on the economics of innovation, the economics of intellectual property, and the economics of both deterrence and enforcement. . . . Amici file solely as individuals and not on behalf of the institutions with which they are affiliated. Amici represent neither party in this action, and write solely to offer an economic perspective on the important social issues at stake in this dispute.

Nice work if you can get it. All but two of them are University of Chicago (i.e., "law and economics") professors; the other two are Ian Ayres of Yale (formerly a Northwestern prof, which is why his name jumped out at me) and the other is from Stanford Law.

So what do they say? Their focus in the brief is on the usefulness of the doctrine of indirect or secondary liability in intellectual property. That's a topic of great interest to us around here, but we have always focused on trademark, where the issues can be quite different. But regarding copyright, here is the conception of the problem by these learned men (yes, all men), per their own brief:

In this dispute, the Court is being asked to clarify the conditions under which those conventional remedies should be supplemented by an additional cause of action: liability that would hold responsible a firm whose product or service facilitates copyright infringement. The argument in favor of this sort of “indirect” liability is that in certain circumstances it will be the only practical way to maintain the efficacy of copyright markets. That is, direct liability is so costly in certain situations that, without indirect liability, authors would in those settings no longer have a meaningful right to prevent unauthorized use of their work. The argument against indirect liability is that, because the products and services at issue here have both legal and illegal uses, any legal intervention must be cautious or else risk inadvertently
interfering unreasonably with legitimate activity.

And here is their conclusion, based (Cliff's Notes-like) on their legal argument headings and the summary at the end of the argument section:

Indirect liability is routinely imposed in instances, like the one at issue here, where direct deterrence is unlikely to be effective because of the high costs associated with identifying and pursuing individual violators. Indirect liability should not be excused simply because a product is potentially capable of non-infringing use. The rule adopted by the courts below gives manufacturers no incentive to deter infringement even when deterrence could be accomplished at low cost and without any significant interference with non-infringing uses. This rule mistakenly considers non-infringing uses in isolation, rather than evaluating them in light of substitute mechanisms already available to accomplish the same ends.

Economic analysis of this dispute reinforces what common sense also suggests: the case was resolved prematurely, before key questions were asked and key facts considered. Can copyright rights be sufficiently enforced through direct liability such that indirect liability is unnecessary online? Did the accused firms in good faith consider improving their technologies in ways that would reduce infringement but not significantly interfere with non-infringing use? Are there non-infringing uses of this technology that still appear substantial even when this technology is compared to currently available substitute mechanisms? These are central questions from an economic perspective. The courts below failed to ask any of them.

No, I didn't read all the briefs. But I doubt that one would do a better job of matching my own predilections on this topic than this one.

Translate This

Just had a bizarre experience while doing routine tracking of where readers of the blog come from. The most recent referrer was from an automated Google translation page -- translating the first screen of Likelihood of Confusion into Gallic.

I knew Google would get me back, sooner or later. And me, a shareholder!

It is a weird experience seeing Probabilité de confusion par Ron Coleman looking as if I actually wrote it in Frankish. Of course, I have no idea whether it's even remotely good French ("J'ai une poignée comme un plombier et j'avais l'habitude de faire l'écriture de miroir pour impressionner des dates").

Surprisingly there was no little moustache nor a beret on my picture, but natch that will be achieved in the next release.

Trademark Law: The Dismal Science

The Tata Group put out this press release about a trademark decision that some people seem to think is funny. It is evidently connected with this WIPO decision.

Likelihood of Confusion doesn't get it. No one said trademarks were supposed be fun, much less funny. Much less bodacious.

Hat tip to John Berryhill via the INTA List. Apparently he gets it.

Just Say No

Got a call from CBS News a few minutes ago. "You're a constitutional lawyer, right?"

"Yes," I replied. "It is constitutional for me to practice law."

Laughter. "We're looking for someone to comment on this latest appeal in the Schiavo case. Have you been following that case?"

"Oh, no, I'm sorry. Not professionally in the slightest."

I'm not sure it's even a constitiutional question they have, but I guess that tells you how little I know about the procedural aspects of the Schiavo case.

I really am a "constitutional lawyer" because I spend a lot of time on issues relating to the First Amendment, as witness this blog. But on the sad world of Terry Schiavo, I have no expertise to offer.

"If I'm a new inventor, I'm going to get sued right away."

Surprisingly, it was Antonin the Great who said that, according to an AP Report on today's Grokster action. And in this regard he and I are in disagreement. I think it's an argument reductio ad absurdum.
On the other side: Justice Kennedy quoted as saying that using profits from trafficking in stolen property to help finance a young technology business "seems wrong to me."
Round up on the Induce Act Blog.

Open Source -- Yes, There's Room to Debate

If you're lucky enough to be anywhere near Palo Alto on Thursday, you might want to check out this Open Source Debate being sponsored by the Federalist Society:

Join professors Lawrence Lessig and F. Scott Kieff as they debate the merits of open source, shared source, and traditional IP rights. Under what circumstances should open source be mandated, or at least encouraged? What are the legal and policy implications of open source -- does it foster or inhibit future advances in technology? What are the international implications of open source -- does one country or region with open source requirements operate at acompetitive advantage or disadvantage? These and other issues will be debated by two experts in the field.

Liberté, égalité, censure... and the First Amendment?

Last week Reuters "news" service reported about the pending request by Yahoo! for a what appears to be a declaratory judgment (I have not seen the papers) barring domestic (U.S.) enforcement of a French court's order forbidding the sale of Nazi paraphernalia. Enforcement would entail not only a big constitutional problem in the U.S. but massive potential damages.

After the original French decision came down, I told an interviewer in November, 2001, ""It's not surprising, because you have here a classic conflict between national legal principles. In the U.S. system, the First Amendment is guarded jealously by the vast majority of American judges. There is virtually no way an American judge could enforce a French ruling [banning Nazi paraphernalia] ... just as a French judge would not extradite a suspect to the U.S. who faced the death penalty because it is fundamental to French concepts of justice in 2001 that the death penalty is immoral."

I still think this is true, though it's not 2001 any more, and a number of things that no one ever dreamed would happen in the law, have happened. One of them is that the U.S. Supreme Court upheld the patently unconstitutional McCain-Feingold law. Secondly, the Supreme Court -- theme for the week, I know -- has more than once endorsed the controversial principle that the decisions of foreign courts may be considered in ruling on cases previoiusly thought to be subject only to the U.S. precedent, statutes and the U.S. Constitution. That Justice O'Connor would introduce a formula such as, "'The impressions we create in this world are important" as a factor entitled to any weight whatsoever in constitutional jurisprudence is particularly distressing. Not only is "impressions" in the "world" not a constitutional principle, nor a democratic one, but the statement itself is not even necessarily true as an empirical matter.

So I still like my 2001 prediction, but unlike when I made it, right now it would be a breath of welcome fresh air. And it's not because I like Nazis.

Q the Lawyers

A report in the online Financial Express says that Nissan is suing Audi over "Q." To wit: “We are seeking to bar Audi from using any names that could infringe on Nissan’s right over the letter ‘Q’,” she added.

Quazy. It's been ten years since the Supreme Court said that if you establish secondary meaning, you can have trademark rights in a certain color. But I guess when you can't win back your own name in trademark litigation, you may as well try for an entire letter of the alphabet.

According to Marty Schwimmer, cited in this article, Nissan could win if it convinces the court of its right to a "family" of trademarks. This "family" of trademarks concept is another judge-created doctrine that, in my humble mind, is a troubling per se species of trademark dilution that is allowed in through the infringement door and therefore avoids the more stringent test (e.g., fame, commercial use) required in order to prove (federal) dilution -- tests which are about themselves about to become even weaker if Congress again asks only "how high?" to trademark owners in this "branders take all" environment.

Not to worry, though. If Nissan wins, there will still be 25 letters left for everyone else.

Grapes of Rath

The Patently Obvious Blog reports that the Federal Circuit, still clinging to antique notions of national sovereignty, quaintly rules that although the U.S. is indeed a signatory to the Paris Convention (of course! Paris!), "the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law." In other words, Congress has to amend the Lanham Act to amend the Lanham Act. Evidently this "sovereignty" fetish applies to important matters like trademarks, not the death penalty and stuff.

Incidentally, the ruling means that a certain Dr. Rath (sounds like a James Bond nemesis, or maybe a very bad advice columnist, doesn't it?) (and it doesn't help that in German you pronounce it like "rot") cannot obtain a trademark registration for his last name in the U.S. despite his holding a foreign registration.

One more reason why they laugh at us in Europe, I guess...

Fair Googling a la Mode

Via the In the Agora blog, an update, with useful links, on the suit against Google by Agence France-Presse. Best link is to this article by the ubiquitous Professor Eric Goldman. (Note to self and 100 closest friends: Must read Goldman's blog more often.) Most interesting, Europhobic (that's me) angle: France itself is cooking up a project to rival Google's announced plan to "scan millions of books and periodicals into its popular search engine over the next few years."

Well, nothing like one of those Eurostate-financed boondoggles to suck the wind out of what's left of that economic juggernaut. If I weren't buying Google for the incredible up-side, maybe I'd buy it to beggar France!

Does Your Conscience Bother You?, Tell Me True.

Back to our regularly scheduled overreaching. The rent grab continues apace. According to this article, "The University of Alabama has filed a federal trademark infringement lawsuit against noted painter Daniel Moore, claiming that his football paintings of the last 26 years were not licensed to show 'Bama uniforms."

This may be the stupidest one of the year so far. Hello, Fair Use? Can I introduce you to Messrs. Waiver and Acquiescence? Please, take a seat next to Miss Estoppel and her friends Mrs. Laches and Mr. Sol Limitations...

Strike "'Bama" off the "public Ivies" wannabe list.

Tech Law Advisor Bellies Up to the Bar

Kevin "Tech Law Advisor" Heller showcases the best and the beautiful posts from the blawgosphere once again (and maybe the last time for a while?). Two links from Likelihood of Confusion and he says I'm his "boy."

No, it's okay. It's a Jersey thing.

Blog Juice?

Joy McCann, blogging on Dean's World, comments on a Slate article suggesting that bloggers are the Euro-American version of rappers.

In your bottle-full-o-bub' dreams, Joy!

Underneath Their Robes

Stumbled onto the fascinating and well-written Underneath Their Robes blog this morning, before the phones start ringing and those detestable faxes start slithering in. If you're in federal court as often as we are you will want to bookmark this one.

Defamation and Bloggers, Once and For All

Question I seem to get every week: What's with blogs and defamation? Coleman, are you pro? Con? Here's what appears to be a very well done article, originally published in the New Communications Blogzine, that is far more information than I'm going to give anyone for free.

One-World Government to U.S.: First Amend THIS

A United Kingdom court has entered a crippling libel award against Rachel Ehrenfeld, author of the book Funding Evil: How Terrorism Is Financed and How to Stop It, which is a tad critical of the ruling family of Saudi Arabia. Editor and Publisher, per Glenn, reports on the story. It's not that unusual for libel claims against American books to go to the UK for relief, because, unlike in the U.S., they might actually win. (UPDATE: But not always.) But what if, as the reports say regarding this book, the book was never even published there?

The Other Club asks a logical question: "I want to know how our Supreme Court can let the scofflaw Ehrenfeld get away with ignoring this judgment, since they've accepted that foreign jurisprudence can modify our Constitution."

UPDATE: Scott Ott, in a similar vein, anticipates the obvious next legal move in the Schiavo story.

Google, Google, Gone!

Gevald. It's all Google, all the time here! Via Instapundit -- now this! Google's secretive and politically -- well, incorrect, actually -- news and ad techniques are getting the back of the hand from bloggers!

Great buying opportunity, people!

Sidewalk Theory: Scraping RSS, and More Google

Apropos the Google / APF contretemps, Kevin Reynen of the Sidewalk Theory blog recently blogged on the concept of data (or content) scraping, which he maintains is essentially what Google has been doing to APF. Here is a thoughtful email from the Media Bloggers Association discussion list that Kevin has agreed to let me reproduce:

I wouldn't be so quick to defend Google. Is scraping content really fair use?

When researching the adoption rate of RSS by US daily newspapers we found a number of people had written code to scrape headlines from a site and reformat it as RSS. They are temporarily caching the response of an HTTP request, parsing that request for headlines, and displaying the modified results as an RSS feed. In most cases the reformatted version only exists when it is requested and is never saved.

Is this considered fair use of headlines?

What if I started mixing ads into a feed I was creating from your content?

What if I wasn't an individual reformatting your headlines for my use, but the developer of a popular browser add-on like the Google toolbar reformatting your entire page by adding links to your content that pointed to commercial services and profitted from this?

Microsoft tried this with SmartTags in 2001. Google is starting to do it now with the newest version of their Toolbar.

This move by Google has upset a few people, but not enough for Google to change the Toolbar reformatting into an opt-in service like AdSense instead of something you would have to opt out-of. There isn't even an easy no-follow or robot tag method for opting out. Are you going defend Google's right to reformat content until 25% of your readers are using a Google branded version of Firefox that reformats your work before you get upset about this?

Scraping and reformatting content is a slippery slope. If it's acceptable to scrape headlines and images from your site to display on my site, is it also acceptable to add links to your content if I control the software that renders your page? Does it make a difference if that software is on the reader's machine or my server?

I think a fundamental of fair use is that value has been added to the source's work rather than simply trying to profit from it. Is converting headlines to RSS adding value? That's arguable. When Goolge scrapes and reformats your content are they adding value to your work or simply trying to profit from it? IMHO since Google has gone public, they have started ignoring their "Do No Evil" mantra to better their bottom line.

Why does this sound familiar? Oh, yeah. It's fundamentally the argument Marty Schwimmer made when he pulled his blog feed off Bloglines.

UPDATE: Relevant discussion from Tech Law Advisor.

Lego my Trademark

Europe just keeps generating stories. Their IP system is different, you see, though the march toward harmonization in a global market continues apace. Evidently, Lego -- that incredible, creativity-inducing toy that made us '60's kids (and makes our own kids) such geniuses -- had a "trademark" in Germany for "a 2x4 stud block design." Now, crows Lego's chief competitor, Mega Bloks, it doesn't.

Could it ever? Since the decision by the U.S. Supreme Court in Traffix Devices , it has been clear that a trade dress claim cannot be made for "product configurations," such as "a Lego," but only for packaging. (Not always an obvious distinction.) This issue has been on the minds of more than a few global practitioners.

Anyway, it appears that Lego had found some way to protect -- monopolize -- its European business using trademark (whereas the appropriate protection would have been -- and, for a time, was -- patent). If the Mega Blok people are right, that's history -- as it is in Canada, too, since 2003, though they seem to have made some progress in China, which, however, is quite a Pyrrhic victory.

The good news for Lego: Their blocks still work a heck of a lot better than Mega Blok's blocks. (Believe me, I know -- my basement floor is coated with Legos and Duplos.) Sometimes you just have to compete on quality and value, Lego. It's not so terrible.