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Lawyers Fighting Over Domain Names Never Looks Good

Law360 reported that two competing DUI defense lawyers are fighting over the domain name www.dontblow.com (article here, but subscription required).  Well-known DUI attorney Tyler Flood is the plaintiff.  He has been using the domain name www.DoNotBlow.com for almost a decade. Mark Hull started using the similar domain name in 2011 which prompted the suit.

You can see Flood’s trademark here:

Flood has sued for trademark infringement, false designation of origin, unfair competition, injury to business reputation and dilution, cyberpiracy and unjust enrichment.

Domain Name Disputes

Focusing on the domain name, a plaintiff has two choices to challenge the use of a similar domain name by someone else–file a UDRP complaint or file an Anti-Cybersquatting Consumer Protection Act lawsuit.

UDRP

The UDRP is an online process that is decided on the papers without discovery or live testimony. As the holder of a domain, you are required to submit to a “mandatory administrative proceeding” to determine rights to the domain. Regardless of whether you participate, your domain registrar must enforce the decision of UDRP Panel. If either side elects to go to court instead, the UDRP proceedings are usually put on hold.

To prevail in a UDRP claim, you must prove: (1) you have a trademark right that is identical or confusingly similar to the domain of the infringer; (2) that the infringer has no legitimate interest in the domain name; and (3) and that the person is using the name in bad faith.

The ACPA

If litigation through the courts makes more sense, then you should pursue your claim under the Anti-Cybersquatting Consumer Protection Act (“ACPA”) which is codified at 15 U.S.C. § 1125(d). To prevail under the ACPA, you must show the infringer (1) has a bad faith intent to profit from a domain name; and (2) registers, uses or traffics in a domain name that is identical, confusingly similar or dilutes your mark. Under the ACPA, the trademark does not have to be registered, but must: (1) be distinctive at the time of the registration of the domain name; or (2) is famous at the time of registration. Violators can be fined between $1,000 to $100,000 per wrongly used domain name. A successful plaintiff can also recover lost profits, the profits of the violator and court costs.

Defenses

The immediate defense that jumps out is whether “DoNotBlow.com” is too generic to deserve trademark protection.  In UDRP complaints, you usually ignore the .”com” part. Flood may have to show that the full phrase “DoNotBlow.com” has acquired a distinctive secondary meaning apart from its original meaning that identifies his particular services.

On the other hand, “Do Not Blow” does not generally describe legal services, so it has a better chance surviving a challenge than, say, “DUIDefenselawyer.com” on a generic basis.

It will be an interesting case to watch like we did when lawyers in Wisconsin fought over the bidding on competitor’s name to trigger Google ads.

 

 

Texas High Court Rules Improper Photography Law Unconsitutional; Or, Why You Care a Creepy Dude Is Not Guilty

The Texas Court of Criminal Appeals ruled in a 8-1 decision yesterday that the “Improper Photography and Visual Recording Act” is facially unconstitutional.  The case involved a guy who allegedly took pictures of kids at a water park.  You can read more here.

Before you say, you are not a creepy person taking pictures of random kids and therefore don’t agree or don’t care, if you believe photography is art protected by the First Amendment, you should care.

The Facts of the Case

The law provides, in relevant part:

 A person commits an offense if the person:

 (1) photographs or by videotape or other electronic means records . . . a visual image of another at a location that is not a bathroom or private dressing room: 

(A) without the other person’s consent; and

(B) with intent to arouse or gratify the sexual desire of any person.

Ronald Thompson was charged with twenty-six counts. Each count of the indictment alleges that appellant, “with intent to arouse or gratify the sexual desire of THE DEFENDANT, did by electronic means record another . . . at a location that was not a bathroom or private dressing room.”

We can all agree — creepy.

The Ruling

The first issue the court wrestled with was whether photography was conduct (subject to regulations) or speech protected by the First Amendment like other forms of art.  The court found that pictures, even bad ones, are expressive and therefore are subject to First Amendment scrutiny.   The court continued, “the process of creating the end product cannot reasonably be separated from the end product for First Amendment purposes” so the act of taking picture is also subject to First Amendment scrutiny.

The state reasoned, however, that the law regulates intent and therefore, even if considered speech, it can be regulated just like incitements to riot, threats or scams.  The court responded:

Sexual expression which is indecent but not obscene is protected by the First Amendment . . .  Of course, the statute at issue here does not require that the photographs or visual recordings be obscene, be child pornography, or even be depictions of nudity, nor does the statute require the intent to produce photographs or visual recordings of that nature. Banning otherwise protected expression on the basis that it produces sexual arousal or gratification is the regulation of protected thought, and such a regulation is outside the government’s power.

The court then found the law “penalizes only a subset of non-consensual image and video producing activity—that which is done with the intent to arouse or gratify sexual desire” meaning it was a content-based regulation.  As I can hopefully teach my Media Law students (hint for the test), when there is a content-based law, it is subject to a strict scrutiny analysis which means a regulation of expression may be upheld only if it is narrowly drawn to serve a compelling government interest.  A regulation is “narrowly drawn” if it uses the least restrictive means of achieving the government interest.

Like most other laws subject to a strict scrutiny test, this one failed, too.  It was not narrowly drawn.

The Takeaway

Although well-intentioned, the law simply covered too much.  This law would allow a police officer to ask every photographer taking pictures of people in the public what their intent was.  If I was taking pictures of my kids at the park, the police could ask me why.  If I am doing it to show how nice my city is, I am OK.  If I am doing it because I am creepy, it is against the law.

As the court noted:

The statutory provision at issue is extremely broad, applying to any non-consensual photograph, occurring anywhere, as long as the actor has an intent to arouse or gratify sexual desire. This statute could easily be applied to an entertainment reporter who takes a photograph of an attractive celebrity on a public street.

Having the police govern the intent of our photographs is not sustainable.

I am guessing our readers are not going to run out now and start taking creepy pictures because of this ruling.  But, it is comforting to know photographs are protected speech, the taking of photographs is subject to First Amendment analysis and the government does not have the right to ask me why I am taking pictures of people in public places.

With that said, we may not be thrilled this about this guy.  If he crosses the line, he could still get in trouble for child pornography, invasion of privacy, unauthorized use of likeness or other wrongs if he actually harmed any of the people he photographed or used them commercially.

Our Constitutional protections, however, often protect the people on the edges so the rest of us know we are secure.  Although the police may not be able to ask his intentions, if this guy is taping kids my kids at the park, I still can.

You can read the opinion here.

Unmasking the anonymous online critic – first, there is the matter of jurisdiction

On Friday, the Supreme Court of Texas issued a 5-4 decision holding a plaintiff needs to establish jurisdiction over an anonymous blogger before a court will allow pre-suit discovery that would likely unmask the blogger’s identity.  Both the majority and dissenting opinions in In re John Doe a/k/a The Trooper are available here.  It will certainly complicate the process of suing anonymous online defamers.

An anonymous blogger who went by “the Trooper” went after Reynolds & Reynolds Co. and its chairman. As we often recommend, the the company sought a pre-suit deposition from Google to try and identify the blogger.  The application was filed in Harris County, where the chairman resided.

In Texas, Rule 202 allows for a presuit deposition to determine whether you want to investigate possible claims.  It is cheaper and more efficient than filing a lawsuit.   The application to do this must be filed in the “proper court.”  You have to serve the petition on the company you want the discovery from (in this case Google) and the party who is the subject of the possible suit (in this case the Trooper).  The company did just that.  Google was unopposed.  The Trooper fought the discovery on a John Doe basis and argued he was not subject to jurisdiction in Texas and therefore the request was not filed in the “proper court.”

Jurisdiction means the subject of the suit must have some connection to state where the lawsuit has been filed.  For example, if you’ve never been to North Dakota, it would be a violation of your due process rights to be dragged into a lawsuit there.  The blogger argued he has no connection to Texas other than the fact his blog is viewable in Texas.

The Majority

The trial court was going to allow the discovery, but the Texas Supreme Court reversed.  The majority wrote:

To allow discovery of a potential claim against a defendant over which the court would not have personal jurisdiction denies him the protection Texas procedure would otherwise afford.   . . . [A] defendant who files a special appearance in a suit is entitled to have the issue of personal jurisdiction heard and decided before any other matter.  . . .  To allow witnesses in a potential suit to be deposed more extensively than would be permitted if the suit were actually filed would circumvent the protections. . .”

The court continued:

The Trooper cannot ignore this Rule 202 proceeding without losing his claimed First Amendment right to anonymity. By ordering discovery from Google, the court has adjudicated that claim. He has thus been forced to litigate the merits of an important issue before a court that has not been shown to have personal jurisdiction over him.

The Dissent

The problem with the ruling is that it will make it very difficult to unmask people online when you do not know their identity.  If the anonymous blogger does not have to at least reveal their state of residence, where is a defamation victim to go?  Four justices of the all-Republican Supreme Court dissented because “the Court requires a premature and impossible showing, in the process allowing an alleged tortfeasor to hide behind his anonymity regardless of whether the First Amendment allows it.”

The dissent explained:

In today’s case, involving the permissible scope of pre-suit discovery in Texas, the Court holds that the applicable procedural rule requires that personal jurisdiction be established over an anticipated defendant—even when that defendant’s identity is withheld—before such discovery may be granted. And it does so despite the fact that it would be impossible for a court to make the required minimum-contacts determination with respect to a potential party who refuses to reveal the jurisdictional facts (such as identity and domicile) that form the basis for that decision. This effectively abolishes a cause of action for defamation against a person who claims anonymity, particularly when the defamation occurs online.

In the context of an actual lawsuit, as opposed to a petition for pre-suit discovery, a defendant who claims they are not subject to jurisdiction is still subject to the discovery process.  The plaintiff can send discovery forcing the defendant to identify all of the defendant’s contacts with Texas generally and with regard to the specific incident.  Yet, in this case, it appears the anonymous blogger simply provided an affidavit that he had no contacts with Texas and there was no opportunity to dig further.  The dissent recognized this conundrum.

[A] court cannot conduct a minimum-contacts analysis while wearing a blindfold; when a party chooses to remain anonymous, a court is powerless to evaluate his connection to the forum state. Several federal district courts have noted as much, in the context of copyright infringement cases, when denying motions to quash subpoenas issued to Internet service providers to ascertain the identity of anonymous defendants. 

My two cents

From just reading the opinions, it is hard to tell how much information, if any, the anonymous poster provided other than a statement that he did not have any connection with Texas.  It seems to me there are sufficient safeguards in place that require at least some connection with the State before the discovery would be allowed — the victim of the defamation was in Texas which, in some circumstances, can be enough to establish jurisdiction for the actual lawsuit.  As the dissent points out, there are already tests in place to make sure the plaintiff has a valid complaint before the courts will allow discovery about an anonymous speaker.

Without some relief, what is the victim to do?  Where does he go to get the information he needs? Or, does he have to file a suit and follow the more formal and expensive process?  The rules do not allow lawyers to file suits unless we have done a good faith investigation of the facts and law.  Hence, the reason for presuit discovery.

Alas, all is not necessarily lost.  As pointed out by Strasburger’s Debra L. Innocenti, victims can still use out-of-court cyber-sleuths to help identify the defamer.  We are staunch defenders of the First Amendment, but we have been around long enough to know there is abuse of the ease with which someone can superficially damage people anonymously on the Internet, whether it be defamation, a competitor or a jilted ex.  The court has now taken away a standard tactic that helps people get redress when warranted.

The Supreme Court of Texas Rules Injunctions for Defamation Not Proper and Requires Proof of Damages

On Friday, the Supreme Court of Texas issued two important defamation rulings.  The first, Kinney v. Barnes, held that injunctions to prohibit defamatory speech do not pass constitutional muster.  The second, Burbage v. Burbage Funeral Home, raises the bar on the recovery of compensatory damages.

Injunctions preventing speech are an unconstitutional prior restraint

In Kinney, the plaintiff sought a permanent injunction preventing the defendant from further making further defamatory statements and making the defendant remove defamatory statements.  Texas courts had already ruled temporary injunctions preventing additional defamatory statements were unconstitutional prior restraints of free speech.

The Supreme Court of Texas clarified: “We hold that, while a permanent injunction requiring the removal of posted speech that has been adjudicated defamatory is not a prior restraint, an injunction prohibiting future speech based on that adjudication impermissibly threatens to sweep protected speech into its prohibition and is an unconstitutional infringement on Texans’ free-speech rights under Article I, Section 8 of the Texas Constitution.

Certain injunctions against obscenity or illegal commercial speech are still permitted, but defamation, alone, cannot support an injunction.  Because it is a prior restraint, an injunction would only be allowed “when essential to the avoidance of an impending danger . . . and only when it is the least restrictive means of preventing the harm.”  Preventing defamation, which can be subject to damages, does not satisfy that test.

You can read the case here - Kinney v. Barnes

What are appropriate damages?

Burbage, meanwhile, involved a messy interfamily squabble where one family member accused the other of engaging in elderly abuse against the matriarch.  The jury awarded the individual defendant $6,552,000: $250,000 for past injury to reputation; $2,500,000 for future injury to reputation; $1,000 for past mental anguish; $1,000 for future mental anguish; and $3,800,000 in exemplary damages.

The jury awarded the family-run funeral home $3,050,000: $50,000 for past injury to reputation; $1,000,000 for future injury to reputation; and $2,000,000 in exemplary damages.

The court opined:  ”Texas law presumes that defamatory per se statements cause reputational harm and entitle a plaintiff to general damages such as loss of reputation and mental anguish.  But this presumption yields only nominal damages. Beyond nominal damages, we review presumed damages for evidentiary support.”

Reviewing the evidence, the court noted there was a lot of speculation about the impact the defamatory statements would have on the business.  Speculative evidence is not sufficient.  The court also drew the distinctions between special damages, nominal damages, reputational damages, economic damages and their interplay with defamation and business disparagement.

In conclusion, the court wrote, “[t]he evidence does not show actual loss of reputation, that anyone believed the defamation, that the Burbage Funeral Home suffered an actual loss, or even the funeral home’s actual value. On the record here, we hold that no evidence supports the jury’s award of $3.8 million in actual damages.”

As a result, the court determined there was no actual damages.  With no actual damages, there could be no exemplary damages.   Therefore, the plaintiff got nothing other than a piece of paper confirming he was defamed.  Honor can be expensive.

Here is the opinion - Burbage

Lawsuits Against Social Media Sites Rarely a Good Idea – This One Probably Isn’t Either

A Houston area woman has sued Facebook asking for $123 million because Facebook was slow to take down a fake a profile created by her ex-boyfriend with pornographic images.

You can see the story here

 

The plaintiff sued Facebook and the ex-boyfriend for negligence, breach of contract, gross negligence, intentional infliction of emotional distress, invasion of privacy and defamation.  The request for $123 million is based on $.10 for every Facebook user.  You can read the amended petition here–Ali v. Facebook petition.

My guess is this case will likely be removed to federal court (both defendants are out of state) and then summarily dismissed as to Facebook.  As regular readers should know by now, website operators like Facebook are not liable for the content created by others under the Section 230 of the Communications Decency Act.  It provides that “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” This federal law preempts any state laws to the contrary: “[n]o cause of action may be brought and no liability may be imposed under any State or local law that is inconsistent with this section.”

Although sympathetic to the plight of the plaintiff, Section 230 unquestionably (and may result in sanctions against the plaintiff) immunizes Facebook from the negligence, invasion of privacy, intentional infliction of emotional distress and defamation claims.

It appears the plaintiff is heavily relying upon the fact it took Facebook a long time to take the fake profile down.  Facebook’s community guidelines do prohibit fake profiles. Facebook says it will take down posts and profiles in violation of the guidelines, but it never contractually commits to the users it will quickly police the site.  In fact, Facebook expressly says it will not guarantee an expedient removal stating:

If you see something on Facebook that you believe violates our terms, you should report it to us. Please keep in mind that reporting a piece of content does not guarantee that it will be removed from the site.

It is therefore questionable whether there is any contractual obligation on Facebook to take down offensive or fake profiles.  Regardless, most courts do not allow plaintiffs to artfully plead around the Communications Decency Act and have poured out similar breach of contract claims.

We will keep an eye on this case.  You can listen to my interview with KRLD Radio in Dallas about the case here. facebook lawsuit with Mitch Carr – KRLD

 

 

Social Media Law & Policy Report Article on Enforcing Online Promotion Terms Now Available

I wrote an article for the Bloomberg BNA Social Media Law & Policy Report entitled “How to Enforce Terms of Service for Online Social Media Promotions and Contests.”  We tried to squeeze in a few more keywords.  The full article is available at the link below.

Bloomberg BNA Social Media Law & Policy Report – WorkSite Acrobat Integration

Using Images Without Permission is No Monkey Business

Who owns the rights to a selfie taken by a monkey?  While it sounds like a law school exam, it is based on a real story as reported here by the American Bar Association.

According to the article, a monkey picked up the photographer’s unattended camera and began taking pictures.  This is one of the images captured by the monkey.

From the Wikimedia Commons website

The nature photographer claims he owns the copyright.  Meanwhile, the Wikimedia Commons website has been distributing the picture for free and has refused to take it down.

Usually, the rule is that whoever takes a photograph owns the copyright as discussed with the famous Ellen DeGeneres Oscars selfie.  Wikimedia is claiming animals can’t own copyrights unless a human adds a significant creative element to the picture. Hence, Wikimedia says there is no copyright with the picture.

Under U.S. Copyright law, to be entitled to the copyright, you have the be the “author” of the work which is normally the person who created the work and the basis for the general rule when it comes to photographs.

The U.S. Copyright Office has a rule that the work must be of “human authorship” and works created mechanically or by random selection, without any human contribution, are not eligible for a copyright.  The photographer’s claim that the picture was a result of his hard work may not succeed under U.S. law.  It’s not the amount effort that counts, it’s the inclusion of human creative originality.

The blawgosphere is offering many opinions on this.  For example, Steve Baird suggests that perhaps the monkey is the photographer’s assistant and therefore the credit for the picture goes to the photographer.  Matthew David Bozik opines that perhaps it is a joint work.  We will have to see what tactic the photographer takes.

In the meantime, what can you do to avoid the same problem short of making the animal sign a work for hire agreement?  You can do post-production work on the photograph that provides its own original creative touch to it without releasing the original.  While it may not be a selfie if you remotely take the picture, you would still be considered the one who clicked the button.  According to the articles, the photographer went through a lot of effort to make this happen – will he get the credit?

You can read more about the case herehere,  here and here.

Website Operator Not Liable for UGC; Also, Sun Rises in the East

Last month, the Sixth Circuit ruled that website operators are not liable for content provided by others (User Generated Content or UGC) because of Section 230 immunity under the Communications Decency Act in the Jones v. Dirty World Entertainment decision.

Based on the history of the CDA, that should be no surprise. However, internet lawyers were watching this case closely because a federal judge let a defamation case go to trial and this could have created a hole in the CDA defense.  Alas, the court of appeals ruled the way most experts expected and the world can return to normal.

We posted about the trial court’s decision before.  Last summer, a jury found TheDirty.com “encouraged the development of what is offensive” and was therefore liable for the defamatory posts about former Cincinnati Bengals cheerleader Sarah Jones. The jury awarded Jones $38,000 in actual damages and $300,000 in punitive damages.

As a refresher, Section 230 of the CDA provides: ”[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” Because the websites are not the publisher or speaker, the sites can’t be liable for defamation. Most courts immediately dismiss website operators from defamation suits when the claim is based on UGC.

Jones sued Dirty World Entertainment Recordings which owns TheDirty.com. The site, as expected, immediately filed a motion to dismiss the complaint because the claims were based primarily on the UGC. The trial judge denied the motion arguing the defendant purposefully seeks out and encourages defamatory content. The court wrote “the very name of the site, the manner in which it is managed, and the personal comments of defendant Richie” shows that the site “specifically encouraged development of what is offensive about the content.”

The court of appeals said the trial court erred when it held The Dirty was the “creator” or “developer” of the offensive content and when the trial court allowed a “encouragement test” that would cause a website to lose the CDA immunity.

The Sixth Circuit instead implemented the more accepted material contribution test requiring evidence the website operator was “responsible, in whole or in part, for the creation or development” of the defamatory content.  Based on this test, the appellate court found the website did not “author” the statements, pay for the content and did not require defamatory content to use the site.  The court also confirmed there was no liability for selecting the content or refusing to edit the content.

What does it mean?

The CDA has been a very effective tool for website operators.  Imagine if Facebook or YouTube could be sued for defamation.  Those sites would not exist.  With the good, comes the like of The Dirty.  There is an old saying that “bad facts make bad law.”  That almost happened in this case. TheDirty.com asks people to “submit dirt.” The submission form has entries for the “dirt,” and provides a link to upload photographs.  More reputable websites, don’t have this feature.  But, if The Dirty is protected, then you should have no worries that your more mainstream site will also be protected.  If there is going to be any changes to allow for liability for those who “encourage” defamation, the change will have to come from the state house and not the court house.

 

Facebook Demands Court Order for Local Threats – Internet Privacy Always Sounds Good In Theory

This weekend The Houston Chronicle reported Facebook did not turn over information requested by local authorities in response to death threats.  People have been criticizing social media companies for turning over data to government entities.  This time Facebook demanded a court order and now people are upset.  It shows how it is a difficult situation for online companies and sometimes they are damned if they do and damned if they don’t.

According to the article, a Facebook message said a user was “Going to kill everyone in Splendora on July 13th.”  Local officials asked Facebook for information, but the site told them to come back with a court order.  According to Facebook, the government officials never did.

A Facebook spokesperson is quoted as saying:

We promptly review and respond to all emergency requests. In this case, we reviewed the matter and asked to police to send us legal process or a court order for the requested information. The police have yet to send us any formal request.

 According to Facebook, on their Facebook and Law Enforcement page:

 We take the privacy of your information very seriously. If Facebook receives an official request for account records, we first establish the legitimacy of the request. When responding, we apply strict legal and privacy requirements. . . .

We work with law enforcement to help people on Facebook stay safe. This sometimes means providing information to law enforcement officials that will help them respond to emergencies, including those that involve the immediate risk of harm, suicide prevention and the recovery of missing children. We may also supply law enforcement with information to help prevent or respond to fraud and other illegal activity, as well as violations of the Facebook Terms.

This appears to be a Not In My Backyard situation online.  We all want Internet privacy, but when we perceive the threat is against our community, our principles get challenged.

I don’t believe the demand for a court order was out of line.  I am sure the law enforcement officials would have preferred just to be handed the information.  I stand to be corrected by those more familiar with criminal law procedure, but getting an appropriate order from a judge should not have been too onerous.  Although Facebook did not apparently turn over the information right away, I suspect this is not over and the investigation will continue.

UPDATE

A suspect has been taken into custody according to KHOU-TV11 after some unspecified cooperation from Facebook.  A 13-year-old girl is surely regretting her actions.

 

Supreme Court determines Aereo violates copyright – back to the drawing board

This morning, the U.S. Supreme Court ruled in a 6-3 decision that Aereo violates copyright law by retransmitting over-the-air programming without authorization.  This will shut down the controversial start-up or force them back to the drawing board to come up with a new system.  The sound you heard was a huge sigh of relief of all over-the-air networks, cable carriers and content creators because this would have caused everyone to re-evaluate how programming is broadcast, and more importantly, paid for.

For those not familiar with Aereo, it essentially allowed users to “rent” an antennae that would pick up a signal at a certain point.  Aereo would then take that over the air signal and send it to the user’s phone so they could stream the content from their phones.

The issue was whether this was a “public performance” of the copyrighted works.  Aereo said it was not because the users could receive the same content for free if they had antennas attached to their TV at home.  Aereo merely re-transmitted the same content to allows users to access it on their phone privately.

The networks sued Aereo almost as soon as it launched in 2012.  They argued the simultaneous broadcasts to thousands of paying customers represented an illegal retransmission of protected works — even if you called it renting an antenna.

Actually, everyone can give a sigh a relief.  Had Aereo won, the broadcast networks said they would stop providing content.  The cable companies pay the networks a lot of money to retransmit the over the air channels and this would have changed everything.

While this is a blow to Aereo and possibly innovation – at least through this specific model – the world as we knew it before Aero will continue.