Monthly Archives: February 2012

Can impersonating someone and posting inflammatory comments about them on a fake Facebook page result in prosecution?

In November 2011, a Superior Court Judge sitting in Morristown, New Jersey refused to dismiss an indictment charging Dana Thornton with identity theft for impersonating her ex-boyfriend on a fake Facebook page and posting inflammatory comments about him. After an investigation by law enforcement, Ms. Thornton was indicted in August 2010 on one count of fourth-degree identity theft. She pleaded not guilty but if convicted she faces up to 18 months in prison.

The investigation originated when the Morristown prosecutor’s office was informed about a Facebook page that was set up without Lasalandra’s (Dana’s ex-boyfriend) permission. The prosecutor’s office then conducted an investigation and found that the Facebook page contained photos and personal information about Lasalandra. The page also contained comments made by Lasalandra in which he allegedly admitted using drugs, hiring prostitutes and having herpes. According to the prosecutor’s brief the posts included comments like “I’m a sick piece of scum with a gun” and “I’m an undercover narcotics detective that gets high every day.”

Ms. Thornton’s attorney defended by asserting that the indictment should be dismissed because identity theft does not include “electronic communications.” However, the Court disagreed and held that the law was “clear and unambiguous.” In other words, although the law did not specify the “means” by which the injury from identity theft might occur, that would not undermine the fact that a crime was committed.

Accordingly, the Court ordered that the lawsuit proceed.  It should be noted that the New Jersey legislature is reviewing an amendment that would specifically add electronic communications to the identity theft law. The proposed amendment can be viewed at: http://www.njleg.state.nj.us/2012/Bills/A2500/2105_S1.PDF

Comments/Questions: gdn@gdnlaw.com

© 2012 Nissenbaum Law Group, LLC

What does it take to prove Cyberbullying?

Cyberbullying occurs when one person repeatedly uses information technology such as blogs, chat rooms, cell phones, e-mails or instant messaging to deliberately threaten, harass or intimidate another person(s). Cyberbullying also includes cyberstalking; sending sexually offensive messages to the victim; monitoring the victim’s online activities; sharing private or intimate information about the victim with others; and/or intentionally infecting the victim’s computer with a virus. Technology has created the opportunity for new forms of harassment in a variety of ways and from any distance. With the rapid spread of social networking sites and other Internet communication forums, there has been a tremendous increase in the Cyberbullying cases both in the federal and state courts.

Cyberbullying is not just confined to children. Adults working at large companies or educational institutions can also be victims. Cyberbullying can not only result in hurt feelings but also in severe harm to the victim, up to and including precipitating a suicide.  In many states, there are statutes passed by the Legislature that outlaw Cyberbullying.

Unfortunately, in the absence of such a statute, the common law does not generally recognize Cyberbullying as an independent tort. However, the victims of Cyberbullying can often bring a garden variety cause of action for defamation or intentional infliction of emotional distress when they are the victim of such behavior.

To prove intentional infliction of emotional distress, the victim has the burden to show that the harasser’s conduct was “so outrageous in character, and so extreme in degree, as to go beyond all possible bounds of decency, and to be regarded as atrocious, and utterly intolerable in a civilized community.” Murphy v. American Home Prods. Corp, 58 N.Y.2d 293 (1983). The victim also needs to prove that the victim suffered sustained financial, physical or psychological injury due to the harasser’s conduct.

To prove defamation, the victim is required to show the following:

  1. The defendant made defamatory statement regarding the plaintiff
  2. The defendant published the statement to others; and
  3. Injury resulted to the plaintiff.

Immuno AG v. Moor-Jankowski, 77 N.Y.2d 235 (1991).

Thus, there are potential common law remedies for Cyberbullying even in the absence of a specific statute providing relief.

Comments/Questions: gdn@gdnlaw.com

© 2012 Nissenbaum Law Group, LLC

Can Sponsors Draft Agreements to Account For Potential Lockouts of Professional Sports Leagues?

Labor disputes caused a few professional sports leagues to call a timeout in 2011. For example, the National Football League locked out its players for nearly four months before the league and its players union agreed to a new collective bargaining agreement a little more than a month before the start of the 2011 season. Another example was the labor dispute involving the National Basketball Association.

The cancellation of games and the empty airtime on game nights presents a massive lost opportunity for companies that relied on these events as a means of advertising their product in front of millions of viewers. The legal questions this raises are complex, one of which is what provisions a business can incorporate into its sponsorship agreements with a league that will protect it in the event lockouts impair an originally scheduled professional sports season?

First, many sponsorship agreements include “force majeure” clauses. A force majeure clause generally excuses one party from failing to perform its contractual obligations due to an event that is beyond the non-performing party’s control. These clauses are commonly included in sponsorship agreements, but sponsors would be wise to also include language that incorporates a lockout or similar labor dispute in the definition of what constitutes force majeure. Specifically, the clause should address if and how long such a clause protects the league from its obligations to the sponsor and what the sponsor’s payment requirements are during such a period. The agreement’s language should also be broad enough to account for a variety of labor disputes that would impair the league’s ability to fulfill its obligations. Any definition of “labor dispute” should be broad enough to encompass (or should specifically enumerate) a lockout, strike, decertification, injunction or any other labor-related event that would preclude the scheduled games from being played.

Sponsors should also consider how any absence of games affects the sponsorship term to which the company and league agreed. For example, if an agreement between a soft drink company and a hockey league states that the agreement is to last for five years, and a one-year lockout falls within those five years, how does that affect the term of the agreement? One option would be for the sponsor to have the term that is lost due to a force majeure or similar event be suspended from the amount of time that is counted as completing the term of the agreement. Language could be inserted in the agreement that gives the sponsor the option of extending the agreement for a term that is commensurate with what was lost due to the labor dispute.

While sponsorship payments are generally not due during the offseason, the cancellation of regular season games can complicate what and when payment is due. A sponsor can negotiate into the agreement a reduction in the sponsorship fee for situations in which a labor dispute might postpone the regular season.  Since sponsors generally have to plan their advertising campaigns well in advance of the season, this sort of clause can help the sponsor avoid a situation in which it would be committed to regular payment despite a lack of games.

Comments/Questions: gdn@gdnlaw.com

© 2012 Nissenbaum Law Group, LLC

Should Appropriation Artists Be Protected By Fair Use?

Appropriation artists deliberately copy images and present them in a new version or context.  This art form has become a popular form of creative expression. But is it legal? 

The United States District Court for the Southern District of New York recently faced that question and determined whether appropriators of images belonging to others are entitled to use the defense of fair use against a claim of copyright infringement. Cariou v. Prince, 784 F.Supp. 2d 337 (S.D.N.Y. 2011).

The plaintiff in that case, professional photographer Patrick Cariou (“Cariou”), had spent six years in Jamaica. After gaining the trust of the Rastafarians, he had been permitted to take their portraits. In 2000, Cariou published a book of his photographs. The book contained those portraits as well as landscape photos he had taken throughout Jamaica. According to the book’s colophon page and his testimony, Cariou was the sole copyright holder of the images that appeared in his book.

The defendant, Richard Prince (“Prince”), was a well-known appropriation artist who had shown his work at several museums. During an exhibit at a hotel in St. Barts between December 2007 and February 2008, Prince showed a collage entitled “Canal Zone (2007)” which included 35 photographs that had been taken from Cariou’s book. Prince painted over some portions of the photos. Some were displayed in their entirety, while others were only partially shown. Prince intended to use “Canal Zone (2007)” as a means of introducing characters he intended to include in a planned series of artworks. Cariou eventually claimed that Prince had infringed on his copyright, but Prince asserted that his works were protected by the defense of fair use.

The principle that photographs are protectable by the our copyright laws is over 100 years old. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884). Cariou clearly possessed undisputed ownership of a valid copyright in the photos.

The Court then considered whether Prince’s use of Cariou’s copyrighted work should be protected as a type of fair use. When determining whether a particular use of a copyrighted work qualifies as fair use, courts will consider four factors:

1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2) the nature of the copyrighted work;

3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

4) the effect of the use upon the potential market for or value of the copyrighted work.

17 U.S.C. §107.

First, the Court considered the purpose and character of Prince’s use of the photos. It found its purpose to be substantially commercial, and interpreted Prince’s failure to obtain permission (and the co-defendant Gagosian Gallery’s failure to inquire as to whether Prince had obtained permission) to constitute bad faith. Cariou at 350-1. Thus, it determined that the first prong weighed heavily against Prince. In other words, it weighed against a finding that the doctrine of fair use applied.

Second, the Court found that Cariou’s photos were highly original and creative (as opposed to factual or informational). Again, the Court held that the use of such works without permission also weighs against fair use. Id. at 352.

Third, the Court considered the amount and substantiality of the portion of Cariou’s photos used in Prince’s works. It found that, in the majority of his works, Prince appropriated central figures that went to the very heart of Cariou’s works, and that this factor also weighed heavily against a finding of fair use. Id.

Finally, the Court found the fourth factor also weighed against fair use because Prince’s secondary use “unfairly damaged the original market for [Cariou’s] [p]hotos and, if widespread, would likely destroy any identifiable derivative market for [them].” Id. at 353. Because none of the four factors considered supported fair use, the Court found that the defendants were not entitled to the defense of fair use. Id. Accordingly, Cariou prevailed.

The Court’s decision in Cariou provides a framework for how other courts might treat appropriation artists who claim their alleged copyright-infringing behavior should be protected by fair use. This decision suggests that courts are less likely to accept a fair use defense when an appropriation artist produces a highly-commercial work that features the heart of the original work but the artist does not obtain the permission of the original author.

Comments/Questions: gdn@gdnlaw.com

© 2012 Nissenbaum Law Group, LLC

Does Google’s Keyword Advertising Constitute Trademark Infringement?

Proving that a mark was used in commerce has long been a requirement for plaintiffs claiming trademark infringement. After all, there is no need to protect a mark that is not being used.

But the case law concerning the definition of “use” was decided before the advent of the Internet. Accordingly, there are a host of new issues that Courts are wrestling with in the modern era. One of them is whether employing a word or phrase in what is called, “keyword advertising” is a “use in commerce” that may violate trademark protection.

Keyword advertising concerns the way people find relevant content on the Internet. When a person performs an Internet search, two types of search results arrive on the page. First, the search engine provides a list of links to websites that it determines to be relevant to the term that is searched. Second (and more important in this case), the search engine provides context-based advertising that includes links to products correlated to the user’s search. Advertisers are permitted to bid on keywords that users might enter into searches. When a user enters a keyword that has been purchased by an advertiser, the website of that advertiser will appear as a sponsored link on the search result page.

In a 2009, the United States Court of Appeals for the Second Circuit addressed this issue in Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009). The plaintiff in Rescuecom, a computer-related services company, had registered the term “Rescuecom” for trademark protection. As part of its advertising strategy, it purchased keywords from Google to promote its services. However, when it attempted to purchase the keyword “Rescuecom” from Google, it realized that Google had already sold the keyword to one of the plaintiff’s competitors. As a result, when Google users entered “Rescuecom” into a search, the competitor’s links would show up alongside the search results, in addition to the link to the plaintiff’s site.

Rescuecom alleged that Google’s sale of its trademark as a keyword constituted trademark infringement. The United States District Court for the Northern District of New York decided in Google’s favor and held that Rescuecom failed to allege any facts indicating that Google’s actions constituted a “use” of the trademark. Rescuecom appealed.

In order to prevail on a claim for trademark infringement, a plaintiff must establish that he or she:

1) has a valid, registered trademark that is entitled to protection;

2) that the defendant used the mark;

3) that the use was in commerce;

4) that the use was in connection with the sale or advertising of goods or services; and

5) that the use was without the plaintiff’s consent.

1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 406 (2d. Cir. 2005) (citing 15 U.S.C. § 1114(1)(a)).

The Rescuecom Court reversed the lower court’s decision and held that Google’s actions did constitute “use” of the plaintiff’s trademark. The Court found that “what Google is recommending and selling to its advertisers is Rescuecom’s trademark.” Rescuecom at 129. It stated that Google “displays, offers, and sells Rescuecom’s mark to Google’s advertising customers when selling its advertising services.” Id. Additionally, it “encourages the purchase of Rescuecom’s mark through its Keyword Suggestion Tool.” Id.

Google had argued that the inclusion of a trademark in an internal computer directory could not be considered trademark use. However, the Rescuecom Court held that if that were the case, “the operators of search engines would be free to use trademarks in ways designed to deceive and cause consumer confusion.” Id. at 130. The case was remanded for further proceedings.

Rescuecom is generally in line with the decisions made by the courts of other jurisdictions when hearing similar cases. In 2010, the Tenth Circuit held that a “use in commerce” existed where the plaintiff’s mark was used to promote a defendant’s services and consumers were provided with a link to a website where it could purchase products from the defendant. 1-800 Contacts, Inc. v. Lens.com, Inc., 755 F.Supp. 2d 1151 (D. Utah 2010). Other circuits have relied upon and agreed with the Rescuecom decision. See Fair Isaac Corp. v. Experian Information Solutions, Inc., 645 F. Supp. 2d 734, 760 (D. Minn. 2009); Network Automation, Inc. v. Advanced Systems Concepts, 638 F.3d 1137, 1145 (9th Cir. 2011).

Comments/Questions: gdn@gdnlaw.com

© 2012 Nissenbaum Law Group, LLC

Electronic Service of Process: Are Social Networking Sites replacing the Traditional Methods of providing notice of a Lawsuit?

With the advent of technology and massive use of social networking forums, it is only a matter of time before electronic service of process starts replacing the traditional methods of service of process.

Recently, a Judge in Minnesota was faced with the challenge of serving a husband with divorce papers where the wife had not seen her husband in years and had no physical address to serve him. The wife asked the court if she could send the notice by general delivery. According to the Judge, it did not make any sense to use general delivery as it would only result in waste of postage. Furthermore, the Judge did not trust publication of notices in legal newspapers because it is unlikely that someone would look at a legal newspaper to learn that their spouse wants to get divorced.

To resolve this, the Judge, authorized the wife to serve notice of process to her husband by email, Facebook, Myspace or any other social networking site. The Judge acknowledged the traditional ways of service of process but emphasized that the social networking sites provide a cheaper and more effective way.  This was a radical move because although electronic service of process is common in Canada, United Kingdom, Australia and New Zealand, it is extremely rare in the United States. Another example where the court authorized the use of electronic service of process was in a trademark infringing action where the defendant had neither an office not a home address. All it had was a computer terminal with an email address.

Lawyers across the nation have mixed reactions to this growing trend of using electronic service of process. Some believe that the traditional ways of communication have become obsolete in this world of social networking. Therefore, they believe that the courts should adapt to the new ways of communication. On the other hand, some have raised privacy concerns due to the broadcasting nature of these social networking sites. And some lawyer’s are concerned with the use of electronic service for pro se litigants. Many low-income people do not have home computers or email addresses. These people usually go to public libraries to access the Internet and not everyone is proficient to navigate the system. Therefore, the courts also need to address a reasonable way to deal with these litigants.

For now, all we can do is to just wait and watch the courts’ next move. And who knows, may be in the next few years the courts will also allow electronic service via text messaging.

Comments/Questions: gdn@gdnlaw.com

© 2012 Nissenbaum Law Group, LLC

Does Downloading of Digital Music Files over the Internet constitute Public Performance under the U.S. Copyright Act?

Recently, the United States Court of Appeals for the Second Circuit held that the downloading of a digital music file over the Internet does not constitute a “public performance” of the work under the Copyright Act. ASCAP v. U.S., 2011 WL 4536526, 1 (2011).

In that case, the plaintiff was the American Society of Composers, Authors and Publishers (ASCAP), an unincorporated membership association that licenses approximately 45% of all the musical works played online. Each member of the organization granted ASCAP a non-exclusive right to license the public performance rights to his or her compositions. When AOL LLC, Yahoo! and Real Networks (collectively, the “Applicants”) applied to ASCAP for a license to publicly perform the musical works from ASCAP’s repository via their Internet services, the parties were not able to agree on a licensing fee. Therefore, ASCAP applied to the United States District Court for the Southern District of New York for the determination of a reasonable fee. At the same time, ASCAP also alleged that downloading of music files over the Internet constituted a “public performance” under the Copyright Act for which the copyright owners must be separately and additionally compensated. ASCAP and the Applicants each moved for partial summary judgment on this issue. The United States District Court for the Southern District of New York granted partial summary judgment to the Applicants. ASCAP appealed to United States Court of Appeals for the Second Circuit.

The United States Court of Appeals for the Second Circuit affirmed the District Court’s grant of partial summary judgment on the grounds that downloads of music files over the Internet do not constitute public performances of the downloaded musical works. In making this determination, the Court first examined the meaning of the word “perform” as defined in Section 101 of the Copyright Act.  That Section defines performing a work as meaning to recite, render, play, dance, or act it, either directly or indirectly or by means of any device or process.” 17 U.S.C. § 101.  Since a download is neither a “dance” nor an “act”, the Court then determined whether a download of musical work fell within the meaning of the terms “recite”, “render” or “play”.

The Court looked at the plain meaning of the words “recite”, “render”, and “play” and concluded that all three words refer to actions that can be perceived contemporaneously. The Court held that the final clause of Section 101 of the Copyright Act also reinforced its conclusion of contemporaneous perceptibility by stating that “[t]o perform … a motion picture or other audiovisual work … [is] to show its images in any sequence or to make sounds accompanying it audible.” 17 U.S.C.  § 101.

The Court held that a download of music file is nothing but a transfer of music file “from an on-line server to a local hard drive”. US v. ASCAP, 627 F. 3d 64, 69 (C.A.2, 2010). Once the music is downloaded, the listener needs to take further action to play the song, and therefore, download of musical files in not contemporaneously perceived by the listener.  The Court then examined the definition of the word “publicly” as defined in Section 101 of the Copyright Act. Under that Section 101, to perform or display a work “publicly” means:

(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

                 17 U.S.C. § 101.

The Court held that the “definition of “publicly” simply defines the circumstances under which a performance will be considered public; it does not define the meaning of “performance.” ” Id. at 73. The Court also pointed out the difference between music streaming and music downloading. The Court noted that music streaming renders the music audible to the listener as it is received by the listener’s computer memory whereas music downloading does not immediately produce sound. Thus, downloading of music is merely transmitting music and not performing it. Thus, the Court affirmed the District Court’s decision. The United States Supreme Court declined to hear the case.

In sum, the general rule is that downloading music files over the Internet does not constitute a “public performance” under the U.S. Copyright Act.

Comments/Questions: gdn@gdnlaw.com

© 2012 Nissenbaum Law Group, LLC