Should Google be forced to offer privacy apps? EU fight offers test

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Originally posted on Fortune:

An app maker called Disconnect thinks consumers have a right to block advertisers, including Google [fortune-stock symbol=”GOOG”], from tracking what they do on their phones. The search giant, unsurprisingly, doesn’t see it this way and has repeatedly thrown Disconnect out of its Google Play store—meaning Android users have no easy way to access the tool.

Now, the app maker has filed a complaint with the EU, arguing that Google’s behavior is anti-competitive. The outcome could determine whether large companies like Google and Apple should be obliged to distribute more pro-privacy tools on their platforms.

In case you’re unfamiliar, Disconnect works by blocking third party advertising and analytic services that lurk in the background when consumers visit an app or website (users can view what sites Disconnect is blocking, and whitelist them if they choose). The tool can also help webpages load faster thanks to less ad bulk.

In its five…

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Illinois Updates Eavesdropping Law, Ambiguities Remain

Illinois has recently enacted a revised version of the Eavesdropping Act. (720 ILCS 5/14, et. seq.) Prior to 2015, Illinois was a “two-party consent” state. The Act prohibited recording police and other public officials without their consent. There were several prosecutions under the old version of the law. The new law makes it legal to make such recordings in public without consent.

Under the old law, the statute had the effect of barring the recording of loud arguments on the street, political debates in the park, or even public interactions between citizens and police officers. While the new law attempts to create a balance between privacy and the need to preserve the details of conversations with authorities, it is being criticized for creating a new set of problems.

Chief among the concerns from both criminal defense attorneys and prosecutors are the definitions of “surreptitious” and “reasonable expectation” of privacy.

For example. although the statute protects one right o secretly record one’s conversations, the reality is that with today’s ubiquity of cell phones, even if someone has a cell phone out on the table or is checking a cell phone during the conversation, it may be unclear whether that person is also using the cell phone to record a conversation.

Furthermore, the concept of a “reasonable expectation of privacy” is problematic. Critics say that ultimately this opens the door for a debate about whether one’s expectation of privacy was a reasonable or not.

Lastly, some have criticized the Act for creating a fast track for police to conduct surveillance on citizens private communications without a warrant. The law allows police to get a approval from a local states attorney under a broad set of circumstances as opposed to having to go in front of a judge and show probable cause.

Given these ambiguities in the law, many believe that it will take time and lawsuits in order to clarify some of the boundaries of these issues.

Theft or Transformation?

Can Someone Else Sell My Instagram Photos?

My readers know that I am always following developments in and around copyright law and the many ways that developing technology is challenging existing legal structures. [See Here] That’s why I was shocked when the following tweet came across my Twitter feed:

@fortune

For the uninitiated, Instagram is “a way to share your life through pictures” captured on a mobile phone, often using a “filter” to transform the image. In other words, Instagram is about sharing content that one creates. Under U.S. law, the author (creator) is the copyright owner.

Copyright protects works of creative artistic expression such photographs, and importantly, gives the owner the exclusive rights to reproduce, distribute, publicly display, publicly perform, and modify a work for a certain period of time.

My gut reaction was to think that New York artist Richard Prince’s canvases featuring other people’s Instagram photos is a clear case of copyright infringement. To paint a complete picture (pun intended), it must be noted that Prince has added a short message posted as a comment below what is otherwise just a screen shot of the original image.

However, as many legal pundits have commented, the situation may be more complicated. The is a good example of the new legal issues that our culture of mash-ups and remixes have created. The internet is awash with altered, reposted, and aggregated media like text, music, and video. Sophisticated, ubiquitous and surprisingly simple tools pervade a growing range of Internet-based platforms turning amateurs into auteurs. Without doubt these platforms have spawned a huge wave of creativity — but they also raise difficult questions about attribution and ownership.

It is not surprising that Prince is unabashed and unreserved in his appropriation of other’s photographs. This is not the first time Prince has landed in the legal cross-hairs for appropriating another’s art. In the landmark 2013 copyright case of Cariou v. Prince, Prince prevailed after being sued by French photographer Patrick Cariou. That lawsuit concerned Prince’s 2008 “Canal Zone,” a series of paintings that incorporated photographs by from Cariou’s 2000 book Yes, Rasta.

That case turned on an increasingly criticized formulation of the “fair use” doctrine, the “transformative use” test as applied by the U.S. 2d Circuit. “Transformative use” is not one of the four enumerated fair use factors. Rather, it is simply one aspect of the first fair use factor, which looks to the “purpose and character” of the use. The future of the Cariou “transformative use” test was cast in doubt by the 7th Circuit’s withering criticism of its application in the recent case of Kienitz v. Sconnie Nation .

Whether Prince’s “remix” works are “fair use” or little more than theft may depend on how the 2d Circuit chooses to apply the “fair use” test, should it come to that, given the 7th Circuit’s thorough criticism of the 2d Circuit’s previous application.

Five Best Ways to Protect Your Ideas

Idea

When I first meet a client, I am often asked “How can I protect my ideas?” While it may seem like a simple question, getting the answer right is often tricky. That’s because one can’t actually own an idea, in and of itself. Sounds confusing, I know. The five best ways to protect your ideas are 1) Identify, 2) Organize, 3) Register (or restrict), 4) Monitor, and 5) Enforce. This articles focuses on how to identify the best ways to protect your ideas.

Regardless of industry, Ideas are the keys to any successful business. While one cannot “own” an idea, one can protect one’s Intellectual Property rights that relate to the embodiment or manifestation of that idea. For example, Copyright, Patent, Trademark, Trade Secret and Publicity Rights are all forms of Intellectual Property rights that grant exclusive rights to the owner, both artistic and commercial.

Copyright protects works of creative artistic expression such as books, movies, audio-visual music, paintings, photographs, and importantly, software. Copyright protection requires that a work be “fixed” in tangible format (this includes electronic format) and gives the owner (called the “author”) of such works the exclusive rights to reproduce, distribute, publicly display, publicly perform, and modify a work for a certain period of time.

Patents (utility and design), Trademarks and Trade Secrets protect creative commercial expression sometimes known as “industrial properties,” as they are typically created and used for industrial or commercial purposes.

A Patent protects the invention or discovery of “any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof.” A Patent gives the inventor “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States for a period of time.

A Trademark is any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from others, and to indicate the source of the goods. In short, a trademark is a brand name or logo that is a distinctive sign which is used to prevent confusion among products in the marketplace. A Trademark enjoys protection indefinitely, as long as it is being used.

An industrial design right protects the form of appearance, style or design of an industrial object from infringement.

A Trade Secret is an item of non-public information concerning the commercial practices or proprietary knowledge of a business. Public disclosure of trade secrets may sometimes be illegal. A Trade secret enjoys protection indefinitely, as long as it is being kept secret.

Some rights are “statutory” in that they exist because they are granted by the Constitution of the United States, e.g. Copyright and Patent. Other rights arise from “use,” e.g. Trademark and Trade Secret rights. Some arise under State law, e.g., Rights of Publicity. Not all types of intellectual property require registration in order to obtain, maintain or enforce one’s rights. However, registration is HIGHLY RECOMMENDED if available, is required in certain circumstances and, even when not required, registration often confers several benefits that enable enforcement, reduce the risk and costs of enforcement, and provide additional incentives and remedies for enforcement.

The term “Intellectual Property” denotes the specific legal rights described above, and not the intellectual work, concept or idea itself. Oftentimes, the largest value of a businesses can be traced to its intangible assets. Knowing how to identify intangible assets and understanding which Intellectual Property rights apply to these assets is critical to the ability to protect and commercialize one’s ideas. Therefore, great care should be given to maintaining and enhancing their power and value. Value can be increased through a carefully planned and executed strategy. Innovative companies that successfully leverage their Intellectual Property rights will stand to benefit most from the opportunities presented by the current economic marketplace and demand for innovation.

 

Focus | Vision | Perspective | Passion

Executives face a confusing and dynamic set of challenges ensuring their business remains legally compliant. Yet few can afford the highly-qualified and versatile legal staff needed to deal with today’s complex legal & regulatory environment.

Adler Law Group was created to provide clients with a competitive advantage by enabling them to leverage their intangible assets and creative content in a way that drives innovation and increases the overall value of the business.

For a FREE, no-obligation 1 hour consultation to learn the best ways to identify, protect and leverage your ideas, please call: (866) 734-2568, click: http://www.adler-law.com, or write: David @ adler-law.com.

Adler Law Group – Providing innovative legal counsel that elevates aspirations to achievements.™

Why Every Trademark Owner Should Care About B&B Hardware

Does a Trademark Trial and Appeal Board (TTAB) decision that there is a likelihood of confusion between two trademarks prevent federal district court trademark litigation?

The purpose of a trademark is two-fold: to identify the owner or “source” of goods and services, and to prevent consumer confusion in the marketplace. Therefore, the test for trademark infringement under the Trademark Act of 1946 (Lanham Act), is whether use of a trademark is “likely to cause confusion” with an existing, registered mark. A person generally may neither use nor register a mark that would be “likely to cause confusion” with an existing trademark. If a person uses a mark that one believes is likely to cause confusion, the owner of the registered mark may sue in federal court for trademark infringement. 15 U.S.C. § 1114(1). If a person seeks to register a mark that is likely to cause confusion with an existing registered mark, the owner of the existing registered mark may oppose the registration of the new mark before the TTAB. 15 U.S.C. § 1052(d); see id. §§ 1063, 1067(a).

In B&B Hardware, Inc. v. Hargis Industries, Inc., 134 S. Ct. 2899 (US 2014), the United States Supreme Court was asked to decide whether the TTAB’s determination of a likelihood of confusion precludes a trademark litigant from re-litigating that issue in a federal court infringement action involving a likelihood of confusion element.

Plaintiff B&B Hardware Inc. (“B&B”) produced industrial fasteners for the aerospace industry under the mark SEALTIGHT since 1990. B&B’s SEALTIGHT mark was registered with the PTO in 1993. Subsequently, Hargis Industries, Inc. (“Hargis”) adopted the mark SEALTITE for its self-drilling, self-taping screws for use in the metal-building industry. Hargis applied to register SEALTITE with in 1996, but its application was initially refused due to the existence of B&B’s registration. Hargis then sought to cancel the B&B registration alleging that the B&B mark had been abandoned. However, prior to a final decision by the Board, B&B sued Hargis in U.S. District Court alleging infringement of its registered SEALTIGHT trademark.

A jury in the District Court found in favor of Hargis that there was no likelihood of confusion between the marks. The parties appealed to the Eighth Circuit which affirmed the District Court decision and the issue was ultimately taken by the U.S. Supreme Court.

Reversing the Circuit Court, the Supreme Court remanded the case for further proceedings, holding that a likelihood of confusion determination by the TTAB should have preclusive effect as long as the ordinary elements of issue preclusion are met and the usages of the marks are materially the same.

“Issue preclusion” or “res judicata” is an important concept for both fairness and judicial economy. Essentially, litigants should not get two bites at the same apple. In the past, the TTAB would suspend its proceedings if a case was simultaneously pending in District Court.

The key take away for trademark practitioners is strategic since trademark oppositions and cancellations do not result in a damages award or determination of infringement. Yet, its decisions can now be used as the basis for finding infringement in District Court where an adverse decision may have far-reaching effects.

Copyright Ownership in Software & Other Independent Contactors Agreements: Can Work-For-Hire” Be Retroactive?

Regardless of industry, intangible assets are often the greatest drivers of business opportunity and shareholder value. Companies increasingly recognize intellectual property rights are a critical part of the value of the total assets of the company. Great care should be given to maintaining and enhancing their power and value. Innovative companies that outsource the development of copyrightable works such as computer software, creative or media content and other “tangible” works with the expectation of owning both the resulting product and the underlying copyrights must be mindful of ownership risks.

Successfully leveraging copyright rights and assets is critical to the opportunities presented by the current economic environment. Yet, without clear ownership of copyright rights, a company can not exploit the exclusive rights it believes it owns. Under U.S. Copyright law, only the copyright owner has the exclusive right to reproduce, distribute, public display/perform and modify a work. This leads to the inevitable question: who owns the copyright to a work made for hire?

To be effective, agreements that assign ownership of copyrightable works must be in writing. It is not enough that the company or client may have commissioned and paid for the work. Written agreements that vest copyright ownership commonly appear in two forms. In the first, the developer of the work “assigns” his or her rights to the new owner. Under U.S. law, specific language of assignment must evidence the transfer.

Many software companies, in their zeal to create and commercialize their products, fail to consider the need to clearly establish ownership of software copyrights when using developers and programmers. This begs the question, can a company retroactively secure copyright to a work by later designating it as a “work made for hire?”

The Seventh Circuit first addressed the issue in Schiller v. Nordisco Corp., 969 F.2d 410 (7th Cir. 1992). The Court held that a “work made for hire” agreement must precede the creation of the work, because the writing requirement under the “work made for hire” doctrine is not merely a statute of frauds provision “designed to protect people against false claims of oral agreements.”

Under Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989), a work is “made for hire” only if it falls in one or more of the categories of intellectual property enumerated in section 101(2), of was specially commissioned and the parties had signed a statement to that effect.

The requirement of a written statement regarding the copyright on a specially commissioned work is not merely a statute of frauds, although that is the purpose emphasized by the cases. It is not only designed to protect people against false claims although there is authority that it must be signed before suit is brought. The signed-statement requirement in section 101(2) makes the ownership of property rights in intellectual property clear and definite, so that such property will be readily marketable.

The creator (author) of the property is the owner, unless he is an employee creating the property within the scope of his employment or the parties have agreed in a writing signed by both that the person who commissioned the creation of the property is the owner. The writing must precede the creation of the property in order to serve its purpose of identifying the (noncreator) owner unequivocally. Assignment under 17 U.S.C. § 201(d), conveys both the copyrights and with them the right to sue for infringement of them. SAPC, Inc. v. Lotus Development Corp., 921 F.2d 360 (1st Cir.1990).

The sale of the physical embodiment of intellectual property does not “of itself” transfer the intellectual property. 17 U.S.C. § 202. Obviously when a software programmer sells a CD-ROM to a customer (or uploads a software program to a Web-based vendor of downloads) it does not mean to transfer the copyright in them so that the distributor could copy the software and sell the copies without paying anything to the programmer. An agreement that divides ownership in this way would be inefficient Penn Central Corp. v. U.S. Railroad Vest Corp., 955 F.2d 1158, 1160 (7th Cir.1992)).

A Company’s ownership of copyright in works created by independent contractors may be a lesser concern than a company’s ability to sue for infringement of that copyright. “[T]he right to claim copyright in a non-infringing derivative work arises by operation of law, not through authority from the copyright owner of the underlying work.” 71 NIMMER ON COPYRIGHT § 3.06, at 3-34.34. We have cited Nimmer with approval on this point.

On this point Liu v. Price Waterhouse LLP, 302 F.3d 749, 755 (7th Cir.2002) is instructive. Price Waterhouse owned the copyright to a computer-software program, and Yang, an employee, was asked to help recruit a Chinese computer programmer to increase the speed of the program. Price Waterhouse entered into a series of agreements with Yang that provided Price Waterhouse would own the intellectual-property rights to the improved software. When Yang refused to give Price Waterhouse the source code to the improved software Price Waterhouse sued for infringement (and won) because the owner of a copyrighted work has the exclusive right to control the preparation of derivative works, the owner could limit the derivative-work author’s intellectual-property rights in the contract, license, or agreement that authorized the production of the derivative work.

Although the right to claim copyright in a derivative work arises by operation of law—not by permission of the underlying copyright owner— the parties may alter this general rule by agreement.

Companies must take the necessary steps to protect their intellectual property rights in outsourced development of copyrightable works (whether computer software, entertainment content or other “works of authorship”). First, understand the legal requirement that an agreements addressing ownership of copyrights must be in writing. Second, if a company intends to be the copyright owner, ensure that the company uses a written agreement establishing ownership of the work. Third, ensure that written agreements include appropriate “work made for hire” provisions, so the company will own the copyright in the work and in all derivative works for the full life of the copyright. Lastly, evaluate existing intellectual property to ensure that ownership of intellectual property rights has been effectively transferred to the company.

Copyright, Fair Use & Media

Digital Media

Digital Media

Media Creation & Consumption is Challenging Traditional Legal Notions.

At a time when #media creation & consumption has transformed, two recent cases, both involving Fox News Network on opposite sides of the “fair use” defense to copyright infringement, highlights the evolving and dynamic legal challenges facing business and content creators. In each case, Fox News loses on Summary Judgment.

Photographs, Fair Use & Social Media

The first case, North Jersey Media Group, Inc. v. Jeanine Pirro and Fox News Network, LLC, involves what many recognize as the “now iconic photograph of the firefighters raising the American flag on the ruins of the World Trade Center on September 11, 2001.” The photograph – which bears a striking resemblance to Joe Rosenthal’s World War II photograph of the Iwo Jima flag-raising – has become a similarly striking symbol of American patriotism.

That similarity was not lost on a production assistant for a Fox News program “Justice with Judge Jeanine” who posted the two images, unaltered, on the show’s Facebook Page, along with the phrase “#neverforget,” allegedly to commemorate the twelfth anniversary of the attack.

The case is noteworthy for its analysis of the “fair use” defense in a social media context. While the Copyright Act grants authors certain exclusive rights, including the rights to reproduce the copyrighted work and to distribute those copies to the public (17 U.S.C. § 106(1), (3)) one often quoted and widely misunderstood limit to those rights is the doctrine of “fair use,” which allows the public to draw upon copyrighted materials without the permission of the copyright holder in certain circumstances. The fair use doctrine is an after-the-fact defense to infringement, not a pre-emptive justification to use another’s work without permission.

Educated in journalism and media studies, the production assistant acknowledged that she understood a copyright to be something that is owned by someone else although she had no training in copyright law either in college or during her tenure at Fox News. She had been working at Fox News for approximately three years, had previously sought legal advice regarding use of photographs on the broadcast, but never in connection with posting images to the program’s Facebook page.

The key take-away for businesses and digital marketers alike is the need for vigilance when using third-party content on social media. Employee education and training on what copyright protects, what it doesn’t, and how it works may help prevent your business form facing a similar situation.

Media Monitoring, Digital Content & Copyright Fair Use

The second case, Fox News Network, LLC v. TVEyes, Inc., involves a company that monitors and records all broadcasts by more than 1,400 television and radio stations twenty-four hours per day, seven days per week. This content is indexed and organized in a searchable database that allows subscribers to search terms, determine when, where, and how those search terms have been used, and obtain transcripts and video clips of the portions of the television show that used the search term.

Fox News Network, LLC sued to enjoin TVEyes from copying and distributing clips of Fox News programs. TVEyes asserted that its system and services are permitted under the doctrine of “fair use.”

The court found that TVEyes service was a fair use. Unlike other services that simply “crawl” the Internet, culling existing content available to anyone willing to perform enough searches to gather it, the indexing and excerpting of news articles, where the printed word conveys the same meaning no matter the forum or medium in which it is viewed, the service provided by TVEyes is transformative. By indexing and excerpting all content appearing in television, every hour of the day and every day of the week, month, and year, TVEyes provides a service that no content provider provides. Subscribers to TVEyes gain access, not only to the news that is presented, but to the presentations themselves, as colored, processed, and criticized by commentators, and as abridged, modified, and enlarged by news broadcasts.

The key take away for technology companies that rely on content is what the court says about features of the Services (as opposed to the technology itself, e.g. the software/platform): the issue of fair use is for the full extent of the service, TVEyes provides features that allow subscribers to save, archive, download, email, and share clips of Fox News’ television programs. The parties have not presented sufficient evidence showing that these features either are integral to the transformative purpose of indexing and providing clips and snippets of transcript to subscribers, or threatening to Fox News’ derivative businesses.”

In other words, evidence that certain features are essential to the use of a service, may be sufficient to show how the features (service) exist above- and-beyond what stale or static content can show.

You Don’t Have to Muddle Through

When it comes to understating evolving technology legal risks, your business can’t simply muddle through. The professionals at the Adler Law Group can help you adopt conduct risk assessments, provide employee training and methodologies for approaching these challenges by setting objectives, determining scope, allocating resources, and developing practices that will efficiently and effective manage risks, while keeping pace with the business.

For a free consultation, call us at (866) 734-2568, send and email to info@ecommerceattorney.com or visit our web site www.adler-law.com