Eleventh Circuit Applies Copyright Act’s Collective Works Provision to CD-ROM Collection
By Dmitriy Tishyevich — Edited by Andrew Ungberg

Greenberg v. National Geographic Society
11th Circuit, June 30, 2008, No. 05-16964
Slip Opinion

On June 30, the Eleventh Circuit issued a divided en banc opinion, affirming by a 7-5 vote the panel decision in Greenberg II, which had vacated Greenberg I.

Writing for the majority, Judge Barkett held that National Geographic was privileged to reproduce its print issues. Section 201(c) of the Copyright Act distinguishes between the copyright of each individual work within a collective work — here Greenberg’s photographs — and copyright of the collective work in its entirety, here National Geographic’s “Complete National Geographic” (“CNG”), a CD-ROM collection of all the back issues of the National Geographic magazine. Citing New York Times v. Tasini, Judge Barkett wrote that § 201(c) granted the publisher privilege to reproduce an article contributed by a freelancer when it was part of (1) the collective work to which the author originally contributed; (2) any revision of that work; or (3) any later collective work in the same series. Emphasizing the importance of the context in which the works were presented, Judge Barkett found that the CNG CD-ROM collection qualified as a “revision” under § 201(c) and Tasini‘s interpretation of the term.

William Patry comments favorably on the majority opinion on his blog, and notes that a grant of certiorari is unlikely as there is no split in the circuits, and the issues decided are close to Tasini. He previously criticized Judge Birch’s approach as at odds with copyright’s constitutional goal of promoting the progress of science. Law.com provides a summary of the decision and the procedural history of the case.

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ICANN Opens Up Available Top Level Domains
By Joshua Gruenspecht — Edited by Andrew Ungberg

June 26, 2008
ICANN press release

The Internet Corporation for Assigned Names and Numbers (“ICANN”), the international organization in charge of allocating resources and establishing protocols on the Internet, last week removed the existing limits on internet generic top-level domains (“gTLD”s) and announced plans to accept applications from operators for new namespaces. Initially, the earliest domain names fell into a few select functionally classified categories, such as .com and .net; subsequent rounds of expansion added new categories such as .biz and .post. Now, however, ICANN will permit private operators to create and vend top-level domains of their own design.

According to ICANN’s Final Report on Introduction of New Top-Level Generic Domains, new gTLDs will continue to be approved by ICANN itself. It is as yet unclear whether registrars who are approved to distribute domain names using new gTLDs will not be required to follow the same Unified Domain Name Dispute Resolution Procedure (“UDRP”) that registrars who handle .com, .net, .org, .biz, .info, and .name are currently required to follow. ICANN itself, however, will follow an entirely new set of procedures. Approval of a new gTLD will take into consideration the string’s similarities to existing gTLDs, how closely it resembles existing trademarks, and whether it fits within existing international standards of “morality and public order,” among several other tests.

Names @ Work is already touting this as the next big trademark challenge for corporations concerned about maintaining their brand online, while Cyber Law Online is dismissing it as a minor shift with few real-world implications. Pangloss predicts that this will ultimately result in legitimate users dispersing across the newly broadened namespace, making it easier to identify determined trademark-infringing cybersquatters, although others are less optimistic.

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First Circuit Lifts Trademark Injunction to Make Way for Super Duck
By Miriam Weiler — Edited by Evie Breithaupt

Boston Duck Tours v. Super Duck Tours
First Circuit, June 18th, 2008, Nos. 07-2078, 07-2246
Slip Opinion

On June 18, the First Circuit lifted a preliminary injunction granted by the District Court of Massachusetts, which had enjoined Super Duck Tours, LLC (“Super Duck”) from using the phrase “duck tours” in its trade name and the cartoon of a duck in its logo. On July 2, 2007, Boston Duck Tours, LP (“Boston Duck”) filed a complaint in the district court alleging federal trademark infringement and unfair competition and seeking a preliminary injunction against Super Duck. The district court granted the injunction and Super Duck appealed.

The First Circuit held that the lower court clearly erred in concluding that Boston Duck was likely to succeed on the merits of its trademark infringement, by over-estimating the likelihood that use of the phrase and image would cause consumer confusion.

The court of appeals did not address the district court’s ruling regarding Super Duck’s purchase of the key word phrase “Boston duck tours” on Google. “Sponsored linking” or “keyword advertising” allows the purchaser of a keyword to link his or her website to the search engine’s results page with a highlighted link at the top of the page.

The district court found that Super Duck’s sponsored linking did not violate the injunction. It found that sponsored linking, however, does constitute “use” under the Lanham Act, which states that “a mark shall be deemed to be in use in commerce. . . (2) on services when it is used or displayed in the sale or advertising of services.” 15 U. S. C. §1127. The district court reasoned that the plain language of the statute and the majority of courts have considered sponsored linking “use.” (more…)

Ninth Circuit Applies Fourth Amendment to Text Messages at Work
By Anna Volftsun — Edited by Evie Breithaupt

Quon v. Arch Wireless Operating Company, Inc.
Ninth Circuit, June 18, 2008, No. 07-55282
Slip Opinion

On June 18, 2008, the Ninth Circuit held that the City of Ontario, California violated the Fourth Amendment when Ontario Police Department officials viewed text messages sent by a department employee. The court also held that Arch Wireless, the city’s service provider, had violated the Stored Communications Act (“SCA”), 18 U.S.C. § 2701-2711, when it disclosed messages to individuals who were not the addressees or intended recipients.

In late 2001, Sergeant Jeff Quon received a pager from his employer, the Ontario Police Department. The pagers’ wireless text-messaging service provider, Arch Wireless, had stipulated that the city was required to pay overage charges for text messages exceeding a set character limit. Quon paid the overage fee several times without further inquiry into the content of the messages until August 2002, when the Ontario police Chief Scharf moved to obtain transcripts of Quon’s text messages from a support specialist at Arch Wireless.

At least three department employees, including Quon’s immediate supervisor, reviewed the transcripts and read many of Quon’s personal messages, some of which were sexually explicit. Quon and several recipients of the messages brought suit in the District Court of Central California. They appealed the district court’s holding, arguing that Arch Wireless had violated the SCA. Quon also argued that the city violated his Fourth Amendment right to be free from unreasonable search and seizure, as well as his rights under the California Constitution.

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Federal Circuit Affirms Award of Attorney Fees for Inequitable Conduct and Litigation Misconduct
By Christina Hayes — Edited by Stephanie Weiner

Nilssen v. Osram Sylvania, Inc.
Federal Circuit, June 17, 2008, No. 2007-1198
Slip Opinion

The Federal Circuit affirmed the judgment of the U.S. District Court for the Northern District of Illinois granting a motion for attorney fees to Osram Sylvania, Inc. and Osram Sylvania Products, Inc. (collectively, “Osram”) due to the inequitable conduct and litigation misconduct of the appellants pursuant to 35 U.S.C. § 285. Section 285 of the Patent Act authorizes the award of attorney fees to the prevailing party in “exceptional cases.”

The Federal Circuit held that the district court did not clearly err in finding that the case was “exceptional” and that it was within its discretion to award attorney fees to Osram. Appellants argued that Nilssen’s inequitable conduct was “benign” and their litigation misconduct amounted to instances of “harmless oversight” and “permissibly rough litigation tactics.” The Federal Circuit refused to distinguish the inherent contradictory notion of benign inequitable conduct and further noted that the argument ultimately “amount[ed] to little more than an impermissible attempt to reargue the merits of [the district court's] holding.” With respect to the litigation misconduct, the court noted that “it ill behooves an appellate court to overrule a trial judge concerning litigation misconduct when the litigation occurred in front of the trial judge, not the appellate court,” concluding that the district court had sufficient evidence to have concluded that trial misconduct occurred.

Appellants further argued that a finding of inequitable conduct was insufficient to constitute an exceptional case. The court agreed that while there was no per se rule of exceptionality in cases involving inequitable conduct, its precedent provided wide discretion to district courts to award fees in inequitable conduct cases.

Dennis Crouch of Patently-O points out that there was no “individual smoking gun” here and agrees with the appellants’ argument that their actions were reasonable given that Osram was represented by Kirkland & Ellis, “well known for its relentless bull dog litigation style.”
The Patent Hawk also provides an overview of the case.
Filewrapper features an overview as well, complete with a timeline of the case.

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