A Congressional Hearing About Fair Use

February 24, 2014 · by ·

419527851_77ca29a596The House Subcommittee on Courts, Intellectual Property and the Internet of the Judiciary Committee of the House of Representatives, held a hearing on January 28 on The Scope of Fair Use.

What is Fair Use?

The doctrine of fair use, originally created by the courts, is now codified in §107 of the Copyright Act of 1976. The written testimony of Kurt Wimmer, General Counsel for the Newspaper Association of America, provided an interesting recap of some of the early fair use cases in his written testimony.

Fair use is an affirmative defense to a claim of copyright infringement. To assess whether a particular unauthorized use of a work protected by copyright is fair, courts are using four factors enumerated by §107.

They are:

(1) the purpose and character of the use;

(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;

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

No single factor is determinative, but the first factor, purpose and character of the use, is usually considered the more important one by the courts, along with the fourth one, commercial use.

A recent Commerce Department Green Paper stated that fair use is “inherently fact-intensive” (p. 21). Indeed, as the fair use defense is a mixed question of law and fact, it may be difficult to predict with certainty the outcome of a particular case. However, one of the witnesses, Professor Peter Jaszi from American University, provided in his written testimony references to two recent scholarly articles demonstrating that fair use may actually be predictable (Professor Jaszi’s written testimony p. 5).

Some Transformative Works…

The first factor plays in defendant’s favor in a copyright infringement suit if his use of the protected work was “transformative.”  A transformative work was defined by the Supreme Court in 1994 as “add[ing] something new, with a further purpose or a different character, altering the first [work] with new expression, meaning or message.”

That is important, as the purpose of copyright, under article I, § 8, cl. 8. of the  U.S. Constitution, is to “promote the progress of science and useful arts.” If the new work is transformative, the other three factors, even the fourth factor, commercialism, carry less weight.

One of the witnesses invited to testify was David Lowery, who has recently published a list of the Fifty Undesirable Lyric Websites, that is, unlicensed lyrics sites publishing songs’ lyrics without seeking permission.

David Lowery, who is also a songwriter, noted in his written testimony that he receives revenues from some sites, but not from others. From his point of view, this unauthorized use competes with the revenue he receives from licensed sites. The site which made top of his list, RapGenius, allows users to annotate and comment on the lyrics posted.

The example of RapGenius is interesting, as it is a lyrics and text annotation site. Users are invited to participate by adding their own comments and explanations about the lyrics posted on the site. Is this copyright infringement, or should this type of work be protected by fair use? Under §106 of the Copyright Act, the owner of the copyright has the exclusive right to prepare derivative works based upon the copyrighted work, but specifically subjects this right to §107.

Derivative work? Transformative work? What RapGenius does could also be described as mass digitization, which in turn may benefit the public by enabling research and comments. For instance, a blog used RapGenius to write a post about the frequency of some words in rap songs. I was interested reading that ‘crouton’, ‘sushi’ and ‘lobster’ are words shunned by rappers…

Anyway, RapGenius has recently entered into a licensing agreement with Universal Music.

But transformative works do not necessarily create a new work, they also may be transformative because they make a new use of prior protected works.

Not all the witnesses were of that opinion however. Professor June Besek from Columbia University expressed her concerns about this interpretation of a ‘transformative’ work,  noting that this “enables new business models, not new works of authorship. “ Kurt Wimmer testified that the transformative use concept has started to ascend since the late Nineties and that this has “unsettled the marketplace.”

New Uses of Protected Works

Of course, the mass digitization project to trump all mass digitization projects is the Google Books case.

In the recent Authors Guild v. Google case, Judge Denny Chin, from the Southern District Court of New York, found that Google’s mass digitization of books for its Google Books Project was “highly transformative,” as it had created “a comprehensive word index that helps readers, scholars, researchers, and others find books.” Judge Chin concluded that “[i]n [his] view, Google Books provides significant public benefits.”

Judge Chin quoted the Bill Graham Archives v. Dorling Kindersly case where the Second Circuit found in 2006 that the unauthorized use of thumbnails images of Grateful Dead posters in a book was fair use.

Kurt Wimmer testified that he did not agree with the court in the Bill Graham case, while Naomi Novik, a bestselling author who founded the Organization for Transformative Works, instead told members of Congress that, in her view, the use of the Grateful Dead posters was transformative, and did not replace the original work, as the chronological timeline of posters allowed readers to easily observe the transformation of their style throughout the years.

In that case, defendant had published a 480-page coffee table book about the story of the Grateful Dead, using a timeline format through the book which combined more that 2000 images in thumbnail format presented chronologically. Plaintiffs sued over the unauthorized use of seven images.

The Second Circuit emphasized in its first fair use factor reasoning that the work was a biography. Since §107 cites scholarship and research as one of the possible categories of fair use, the nature of the work played in defendant’s (and fair use) favor.

Here, 2,000 images were at stake, a rather modest number. Could  mass digitization be fair use?

Professor June Besek expressed concerns in her written testimony about whether fair use should indeed protect “copying the full contents of millions of works” (emphasis by Professor Besek, p. 3 of her testimony).

For Professor Besek, fair use is “extraordinarily expanding” as copying the content of millions of works may now qualify as fair use, and advised Congress to address the issue of mass digitization which, she believes, “is skewing the law.” Professor Besek concluded her written testimony by suggesting that “Congress might separately address the problems of mass digitization, including whether authors should be compensated for publicly beneficial uses” noting that, right now, compensation is not an option under §107.

A recent Southern District of New York case, cited by Kurt Wimmer in his written testimony, found that Meltwater, a SaaS offering news monitoring services to its clients, had infringed the copyright of the Associated Press when it scraped AP news from online sources using automated computer algorithms. The SDNY did not find the use transformative, as it did not add ”any commentary or insight in its News Reports.”  Instead, Meltwater was acting as a substitute.

However, Professor Jaszi testified that the recent mass digitization cases from the SDNY Google Book cases were “excellent examples“ of the fair use doctrine “fulfilling its purpose.”

Do We Need a Fair Use Reform?

Professor Jaszi does not believe so, stating that “fair use is working.” He warned Congress in his written testimony that “tweaks or improvements… could have serious and adverse unintended consequences” and would discourage new creativity (p.7 of Prof. Jaszi’s testimony).

However, he also testified that fair use could use legislative support, for instance by exempting non-commercial creators of derivative work from potential statutory damages, as this chills the exercise of free speech. Indeed, defendants may be taking a gamble when deciding to go to court, instead of merely taking down the allegedly infringing work after having been contacted by the copyright owner of the original work,as they risk having to pay statutory damages

Professor Jaszi cited while testifying the January 27, 2014 Second Circuit decision, Swatch Group v. Bloomberg, where the Second Circuit found that the unauthorized publication by Bloomberg of a sound recording of a conference call to discuss Swatch’s recently released earning report with investment analysts was fair use.

The Second Circuit held there that:

“[i]n the context of news reporting and analogous activities, moreover, the need to convey information to the public accurately may in some instances make it desirable and consonant with copyright law for a defendant to faithfully reproduce an original work rather than transform it. In such cases, courts often find transformation by emphasizing the altered purpose or context of the work, as evidenced by surrounding commentary or criticism”

The public interest to access information was thus served. In this case, no copyrightable work was created, but useful knowledge has been disseminated, and that benefits the public.

Should Fair Use Law be Updated?

Professor Jaszi does not believe that fair use needs to be updated to adapt to “the new conditions of digital information exchange” as the doctrine is flexible enough to adapt to new practices such as remixes or mass digitization (written testimony p. 6). Kurt Wimmer does not believe the law needs to be changed either, and wrote that the NAAA “believes that the courts, rather than Congress, should … be the appropriate forum for resolving issues surrounding fair use” (written testimony p. 6).

In her written testimony, Naomi Novik urged Congress “to resist any suggestion of narrowing fair use, including by trying to replace it with licensing.”

However, Professor Besek warned in her written testimony that “[a]n increasingly expansive fair use exception risks violating each of the [TRIPS Three Step Test]” as stated by Annex 1C, article 13 of the TRIPS:

“Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.”

It remains to be seen if Congress will undertake reforming fair use law.

Image is courtesy of Flickr user R.B. Boyer pursuant to a  CC BY-SA 2.0 license.


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Accessing Unsecured Documents via a Google Search Found Illegal by a French Court of Appeals

February 13, 2014 · by ·

3582507128_0c324ccaafThe Paris Court of Appeals found on February 5, 2014, that a blogger, who had accessed documents published on the extranet of the French food safety agency following a link found through a Google research result, was guilty of having remained fraudulently in an automatic data processing system. He was also found guilty of having stolen information.

Under article 323-1 of the French criminal Code, fraudulently accessing or remaining within all or part of an automated data processing system is punishable by two years imprisonment and a €30,000 fine. Fraudulent access occurs when a person enters an automated data processing system without authorization, knowing that she has no authorization.

In this case, the blogger, Olivier Laurelli, found the documents by chance while doing a Google search. He downloaded 8,000 files, 7.7 gigaoctets worth of data, and used some of these documents to illustrate a blog post on the danger of nanomaterials.

But these documents were not meant to be public, and were accessible only because of a security failure, as the documents had been mistakenly set as being readable.  Google had therefore been able to index them and this is why they had appeared in Laurelli’s search results.

The trial court found Laurelli not guilty in April 2013, but the prosecutor appealed. The agency chose not to appeal, perhaps not wanting to publicize further its extranet access security shortcomings.

Not Guilty of Fraudulent Access to Unsecure Intranet

The Paris Court of Appeals held that the evidence could not sufficiently establish that the blogger was guilty of fraudulent access in an automated data processing system, as he had only been able to access the data because the security failure.

But Guilty of Remaining Fraudulently in the System

However, the court noted that Laurelli admitted that, after stumbling upon the pages where the documents had been uploaded, he had traveled the extranet structure up to its entrance and had been able to see that it was protected by a password. The court noted that he was thus aware that the documents were not meant to be public. Therefore, he was found to have remained fraudulently in the agency’s system, and fined 3,000 Euros.

The trial court had reasoned differently when finding Mr. Laurelli not guilty, stating that he could have legitimately thought that, while some of the data on the site required an access code and a password, the data he had collected were free to access and that he could remain legitimately in the system.

Data Theft

As for data theft, the trial court had also found Mr. Laurelli not guilty, reasoning that the data had not been materially subtracted from the site. Even if Mr. Laurellli had indeed downloaded and saved it, it remained available and accessible to all on the server. Therefore the material element of the crime, taking someone else’s property, was not constituted.

However, the Court of Appeals, without elaborating, found that Mr. Laurelli had indeed stolen these files.

Laurelli has announced he will take the case to the French civil Supreme Court, the Cour de Cassation.

Image is courtesy of Flickr user Marcin Wichary pursuant to a CC BY 2.0  license.

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Not Up to Snuff: Perfume Still Not Protected by Copyright in France

January 10, 2014 · by ·

9464136024_2cc804c6fbThe French civil Supreme Court, the Cour de Cassation, reaffirmed on December 10, 2013 that perfumes are not copyrightable under French law.

In this case, a man had been sued for possessing counterfeit bottles of perfume at an open-air market in France, among them counterfeited bottles of Trésor, a best-selling Lancôme perfume. Lancôme and others perfume companies sued him for copyright and trademark infringement.

Lancôme and the other companies argued that since article L. 112-1 of the French Intellectual Property Code (FIPC) protects “all works of the mind, whatever their kind, form of expression, merit or purpose,” the fragrance of a perfume is therefore a work of the mind protectable under French law. They also argued that a perfume is original, and thus protectable, because it shows the creative input of its author.

The Court of Appeals of Nancy had held, following the general view of French courts, that a perfume is not copyrightable, but rather only implements a know-how and thus cannot benefit from the protection of the FIPC.

The Cour de Cassation was not convinced by the plaintiff’s arguments and confirmed that French copyright “protects creations in their tangible form, so far as they are identified with sufficient precision to allow their communication; the fragrance of a perfume, which, outside of its development process, which is not in itself a work of the mind, does not have itself a form with [the] characteristic [of a work of a mind] and therefore cannot be protected by copyright.”

General Principles of French Copyright Law

Article  L.111-1 states as a general principle that the author of a “work of a mind” enjoys, by the mere  creation of the work, an exclusive incorporeal property right enforceable against all. The law, however, does not define what is a “work of the mind.” Article L112-2 enumerates what is protected by French copyright, but the list is not exhaustive, and does not help define what “work of the mind” really means. Indeed, cutting grass, or baking, can also be described as works of the mind. That does not make a neatly clipped lawn or a batch of chocolate and orange cookies (my specialty) protectable by French copyright.

Even the Most Mundane Work of the Mind Can Be Protected

Article L.112-1 states that the FIPC “protects the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.” This article codifies the theory of art unity (unité de l’art) which allows the most mundane objects to be protected, as long as they have been created by an “author.”

To be Protected, a Work of the Mind Must Bear the Personality of the Author

However, only original works are protected. The law does not, however, define what “original” means. One way for French courts to decide whether a particular work of the mind is indeed original is to find out whether one can discern in it the personality of its author.

For example, the Cour de Cassation upheld on January 29, 2013, the decision of a Court of Appeal which had refused the protection of copyright to a piece of furniture because it ”was able to deduce from the absence of the imprint of the personality of the author on the disputed models, which would have made them original” and that they are therefore not protectable by copyright.

What About Perfumes?

One could argue that a perfume, or at least some perfumes, posses the imprint of the personality of their authors. Chanel Number 5, probably the most famous perfume in the world, was presented last year at an exhibition in Paris, cosponsored by the Chanel company, as reflecting the personality of Coco Chanel. The couturière had, however, commissioned in the 1920’s Numéro 5 by French perfumer Ernest Beaux.

But the French courts refuse to consider that the “nose” who creates perfume is an author. The Cour de Cassation confirmed a Court of Appeals on  June 6, 2006, which had held that a ‘nose’ could not be considered an author under the FIPC, and thus could not ask the company selling the perfume to give her royalties from the sale of this perfume.

The Cour de Cassation held that “the fragrance of a perfume, which comes from the simple implementation of expertise, is not, within the meaning of [article L.112-1 and L. 112-2 of the FIPC], the creation of a form of expression that can benefit from the protection of works of the mind  by copyright.”

Before the June 6, 2006 holding, some French lower courts had granted copyright protection to perfumes, and a few days after the Cour de Cassation case, the Dutch High Court ruled that perfumes are copyrightable (Kecofa B.V. v. Lancôme Parfums et Beauté) (see here for more information on the case).

What About Trademarks?

Interestingly, it may soon become easier to trademark a perfume in the European Union (EU). Under current EU law, it is possible to register as a trademark a sign which is not and of itself capable of being perceived visually, if it can be represented graphically. Under European Court of Justice case law, Sieckmann v. Deutsches Patent-und Markenamt (C-273/00), the representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. This case ruled out scents to be registered as trademarks in the EU.

But this may soon change. The European Commission published last March a proposal for a Regulation which would amend Council Regulation number 207/2009 on the Community trade mark (CTMR), and a Proposal for a Directive of the European Parliament and of the Council, which would recast Directive 2008/95/EC (TMD).

Article 2 of the Directive regarding “signs of which a trade mark may consist,” which would become article 3, would have a new paragraph (b) stating that a trademark may indeed consist of any signs, provided that such signs are capable of “being represented in a manner which enables the competent authorities and the public to determine the precise subject of the protection afforded to its proprietor.”

Savvy trademark practitioners will certainly then find convincing ways to “represent” a perfume. This may indirectly help IP attorneys to argue successfully in front of French courts that a perfume is identified in such a precise way that it can indeed be protected by the FIPC.

Image is  Find ick dufte!  courtesy of Flickr user Dennis Skley pursuant to a CC BY-ND 2.0  license.

 

 

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Gentrification, Moral Rights and Graffiti Art: a New York Story

December 10, 2013 · by ·

@ 5pointzOn November 12, 2013, Senior District Judge Block from the Eastern District Court of New York (EDNY) declined to issue an injunction which would have prevented the 5Pointz buildings in Long Island, New York, to be demolished. The EDNY published its opinion on November 20. The case is Cohen v. G&M Realty LP.

The seventeen plaintiffs in this case are graffiti artists who had painted their works on the walls of 5Pointz, which would be destroyed by demolishing the buildings. This is why they filed suit against defendants, real estate development companies and owners of the buildings, asking the EDNY to issue a temporary restraining order to prevent 5Pointz from being torn down.

Plaintiffs argued that any intentional distortion, mutilation, modification or destruction of 24 of their works would be prejudicial to their honor and reputation pursuant to the Visual Artists Rights Act of 1990 (VARA), the federal law which provides some moral rights to some visual artworks.

5Pointz

5Pointz is not just one building, but several buildings in Queens covering 200,000 square feet which have been covered by graffiti since the mid 90’s or so. In 2002, one of the plaintiffs, Jonathan Cohen, a professional artist under the name “Meres One, approached Gerald Wolkoff, who owns the building, to become the curator of the space. Wolkoff agreed and Cohen started selecting which artists could display their works. Each artist retained all copyrights to their work, and none were paid.

Graffiti artists from all around the world came to the site, which became known as 5 Pointz. The ever-changing facades and interiors became world-famous and were quite a sight from the 7 line, as the train snaked around the buildings.

What are Moral Rights?

Moral rights are non-economic rights that authors may enjoy, and are even considered human rights under article 27-2° of the Universal Declaration of Human Rights, which states that “[e]veryone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.”

Moral rights are:

a) The right of first disclosure, that is, the right to reconsider the work or to withdraw its publication; b) the right of attribution, that is, the right to be recognized as the author of the work, or to publish the work anonymously; and c) the right of integrity, that is, the right to have the work respected and to prevent is mutilation or distortion.

The Visual Artists Rights of 1990

VARA recognizes only two moral rights, the right of attribution and the right of integrity. However, the scope of VARA is limited to works of visual arts, defined by 17 U.S.C. § 101 as single copies of drawing, print or sculpture, or limited editions of 200 copies or fewer signed and numbered by the author.

Artists have the right to claim authorship of a work and the right to prevent its distortion or mutilation or other modification which would be prejudicial to the artist’s honor or reputation , 17 U.S.C. § 106A(a)(3)(A). They also have the right to prevent its destruction if the work is “of recognized stature” under 17 U.S.C. § 106A(a)(3)(B).

What is a Work of Art of “Recognized Stature”?

VARA, however, does not define what “recognized stature” means. The Southern District Court of New York (SDNY) proposed in 1994 in Carter v. Helmsley-Spear to use a two-tiered test to prove such stature.

First, plaintiff must show that the work has stature, meaning that it is ‘meritorious’. This is necessary as copyright protects works of authorship as long as they are original, but the level of originality required is very low. No need to be Picasso to have one’s drawings protected by copyright. But a ‘meritorious’ work would induce some awe that a competent amateur drawing may not bring.

But whose opinion about the work should the judge take into consideration? The second tier of the SDNY Carter test requires the plaintiff to prove that the stature is ‘recognized’ by art experts, the artistic community, or by some cross-section of society, but not necessarily everybody.

The EDNY acknowledged the two-tiered Carter test, and heard testimony from three of the seventeen plaintiffs during a preliminary injunction hearing. The court also heard expert testimony. Defendant’s art expert testified that in her view, people came to see 5Pointz not to see a particular work, but to see the ensemble.

The court seems to have been convinced by this testimony, as it found that 5Pointz could not be protected by VARA, as the law only protects a work of visual art, while 5Pointz is a “tourist site.”

The Transient Nature of Graffiti Art

Artists took turn at 5Pointz to cover some parts of the buildings, which were used to rotate quickly from one art work to another. Cohen is quoted in a 2007 interview with the Christian Monitor, cited by the EDNY, that some works only last 12 hours, some remain for two years.

Some walls, however, bore artworks which Cohen wanted to preserve, not allowing subsequent artists to paint over, among them the 24 works of the plaintiffs in this case.

The transient nature of graffiti, even its ephemeral nature, also weighed in the EDNY decision, as Judge Block noted that, because the artists knew that the buildings were intended to be demolished, they had “created their own hardships.”

During the trial, Wolkoff, the owner of the building, testified that he had told Cohen that the buildings would eventually be torn down. Some of the 5Pointz artists also testified that they knew the buildings would be eventually be torn down.

The EDNY also quoted a 2002 NDNY case, Pollara v.Seymour, where the court denied VARA protection to a mural commissioned to the artist as a “single use” piece for a particular event, reasoning that “[i]t defies the underlying purposes of VARA to assume that the statute was intended to protect works of artistic merit without regard to whether…[they] were otherwise intended to be preserved for posterity as works of artistic merit.”

The owners of 5Pointz have now white washed the buildings. However, the case is not over and a trial court will review whether plaintiffs are entitled to damages. While doing so, it will decide whether the 24 works are of recognized stature under VARA. If the trial court recognizes the plaintiff’s works are of “recognized stature” under VARA, defendants may have to pay monetary damages to the artists.

The EDNY noted that New York City could have exercised its power of eminent domain to acquire the site, but it chose not to do so. That leaves us with the regret that 5Pointz will not become officially what it had been, unofficially, for years: the world’s greatest museum of graffiti, in the very city where this art was first born.

Image is @5pointz courtesy of Flickr user Pelle Sten pursuant to a CC BY 2.0 license.

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Ethnic Origin, Disparagement and the Trademark Act: Another Slanted Case?

November 5, 2013 · by ·

4687481390_0d608449e6The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) affirmed last month the USPTO refusal to register the mark THE SLANTS because it is considered  disparaging. The case is In re Simon Shia Tam.

Simon Tam, the applicant, is the bassist of The Slants, a music group from Portland, Oregon, which plays dance rock music. Members of the group are all Asian Americans.

In November 2011, Mr. Tam filed a trademark application for the mark THE SLANTS in international class 41 which covers “entertainment in the nature of live performance by a musical band.” The USPTO refused to register the trademark as it considered the mark to be disparaging. The USPTO made the refusal final and Mr. Tam appealed to the TTAB, which affirmed.

A Two-Factors Test to Determine if a Trademark is Disparaging

The Lanham Act, U.S.C § 1052(a), prevents the registration of a trademark which “may disparage.”

The TTAB noted in its Harjo v. Pro-Football 1999 decision that determining if a matter is disparaging is “highly subjective.” In Harjo, the TTAB established a two-part test to determine if a particular mark is disparaging, which is now used by the USPTO and the TTAB when determining whether a matter may be disparaging under Trademark Act Section 2(a):

(1) What is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to the other elements in the mark, the nature of the goods and/or services, and the manner in which the mark is used in the marketplace in connection with the goods and/or services; and

(2)  If that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.

What is the Likely Meaning of THE SLANTS and Is It Disparaging?

The examining USPTO attorney found that SLANTS was disparaging, as it is “a negative term regarding the shape of the eyes of certain persons of Asian descent” and was “an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals.” The examining attorney provided several dictionary definitions to support his statement. He also noted that “the band’s name has been found offensive numerous times” and that the Japanese American Citizens League stated that the term “slant” is derogatory and should not be used.

The examining attorney again provided evidence in its appeals brief that the meaning of ‘slant’ in this particular application was one demeaning to people of Asian descent.

When answering the Office Action, applicant had argued that ‘Slants’ is a “plain English word… that only could, but need not, have a disparaging connotation” and submitted into evidence dictionary definitions in that sense. Applicant argued that the cases cited by the examining attorney in the office action were all cases where the meaning of the term could only be disparaging, such as ‘squaw’ or ‘heeb,’ whereas ‘slant’ could or could not be disparaging.

Applicant used the same argument in appeals, and submitted as evidence to the TTAB dictionary entries providing several meanings for “slant” as well as several trademark registrations for SLANT. But in these cases, the meaning of slant was “slope.” He also argued that the USPTO seemed to have refused to register the trademark because of the particular ethnic descent of the applicant, a statement which probably did not help his cause, but that the band nevertheless continues to claim on social media.

Indeed, many words have different meanings. What is important under the two-part test is the ‘likely meaning’ of the term in a particular trademark application.

Should Self-Disparaging Trademarks be Registered?

In an article on self-disparaging trademarks published in 2006 in the Columbia Law Review, Todd Anten noted that “[t]he reappropriation of slurs is a common source of empowerment among disparaged groups” (p.392).

It seems indeed that Mr. Tam chose to name his music group ‘the slants’ because of the disparaging use of the term, albeit not to disparage, but to reclaim the term. The examining attorney pointed that out in his final action letter: “Further, applicant (and his fellow band members) have repeatedly indicated that the name THE SLANTS is in fact a direct reference to the derogatory meaning of the term and in fact, they are embracing the derogatory meaning of the term.”

Mr. Tam had first tried the register THE SLANTS as a trademark in 2010, but did not succeed, on the same disparaging grounds, and the trademark was abandoned. In the response to the office action to this first trademark application, Mr. Tam argued then that THE SLANTS was “a positive term of self-reference that promotes cultural pride and recognition.”

Mr. Tama then wrote in a 2011 blog post that by registering a term which is derogatory toward Asians, his goal was to reclaim it: “We deliberately chose this outdated, generational term to inject pride into Asian American culture.” For example, The Slants’ debut album was called Slanted Eyes. Another of its albums is called Yellow Album. However, as noted by the USPTO examining attorney,“[t]he lack of a disparaging intent is not dispositive on the issue of Section 2(a) disparagement in the Federal registration analysis.” In other words, having the best of intentions is not a defense.

In a somewhat similar case, the USPTO ultimately accepted the register DIKES ON BIKES, albeit after quite a bit of back-and-forth correspondence with the registrant, a group of homosexual women organizing motorcycles rides. But in that case, the USPTO finally accepted to register the trademark as it was convinced that most members of the referenced group, homosexual women, accepted the term ‘dikes’ as non disparaging.

The Referenced Group

Mr. Tam argued when answering the first office action letter in his first attempt to register the trademark that “members of the referenced group have widely embraced Applicant’s Mark” and submitted evidence about the success of The Slants within the Asian community.

But it seems that the only way applicant could have convinced the USPTO/TTAB that the term ‘slants’ used in the trademark was not disparaging was to provide convincing evidence that a substantial composite of the referenced group does not consider ‘slant’ as demeaning, because, under the second part of the test, the meaning of the term has to be disparaging to a substantial composite of the referenced group.

That means in practice that the disparaging meaning of the term must already have been reclaimed by the majority of the referenced group before the trademark can be registered, and applicant must provide evidence of such to the USPTO or the TTAB. Applicant apparently failed at providing such evidence in his first trademark registration attempt. He choose instead to argue at his second attempt at registration that the term is not disparaging, and that the reason the trademark registration was denied is because of applicant’s ethnic background, a rather inflammatory argument.

The case seems ripe for appeal. Stay tuned…

Image is Chinatown at night courtesy of Flickr user Corey Burger pursuant to a CC BY-SA 2.0 license.

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Filed Under: Trademark, Uncategorized ·

Parody Social Media Accounts & the Computer Fraud and Abuse Act

October 15, 2013 · by ·

2291127824_087a497beaThe U.S. District Court of Oregon dismissed last month a suit brought by a middle school assistant principal claiming that, by creating fake social media accounts using his name and likeness, some students had violated the Computer Fraud and Abuse Act (CFAA).

Plaintiff Adam Matot is assistant principal of a middle school in Oregon. He claimed that two or more students there created fake social media accounts on Facebook and Twitter using Plaintiff’s name and likeness. The Facebook account had some seventy “friends,” which were allegedly able to see obscene pictures and read comments defamatory to the Plaintiff when accessing the fake account.

Plaintiff filed a first complaint last January, alleging computer fraud and abuse under the CFAA, 18 U.S.C. § 1030, and defamation.

He later filed an amended complaint, also naming the parents of one of the minors as defendants and claiming that they had negligently failed to supervise their child.

One of the parents filed a motion to dismiss the case for lack of subject matter jurisdiction which was granted by the District Court of Oregon on September 26.

Creating Parody Social Media Accounts Not a Violation of the Computer Fraud and Abuse Act

The CFAA is a federal law which prohibits access to a computer without authorization or exceeding authorization, with intent to defraud while using the computer.

§ 1030(a)(6) defines exceeding authorized access as “to access a computer with authorization and to use such access to obtain or alter information in the computer that the accesser is not entitled so to obtain or alter.”

Congress enacted this law in 1984 to fight computer hackers, yet some plaintiffs over the years have been trying to expand the scope of the law to support various claims. However, interpreting broadly a criminal statute is dangerous for civil liberties. Just think of it: a teenager playing games past his curfew is accessing the family computer without authorization, but should he be tried in a federal court for that offense?

In our case, Plaintiff claimed that, by violating the Terms of Service of the social networking site, defendants used their services without authorization and exceeded their authorization and thus violated the CFAA. The computers allegedly abused were those operating social media sites.

But the Oregon District Court was not convinced by the arguments, citing a 2012 Ninth Circuit case, U.S. v. Nosal, about a breach of company policy forbidding disclosure of confidential information. Chief Judge Kozinski, who wrote the opinion, noted that interpreting the CFAA broadly would make shopping or playing games on company’s time, using the employer’s computer, a federal crime. The Ninth Circuit held that exceeding authorized access within the meaning of the CFAA “does not extend to violations of use restrictions” (Nosal at 863).

Bullying

In the United States v. Drew case the prosecution unsuccessfully argued that a woman posing as 16-year-old boy on MySpace had violated the site’s Terms of Service prohibiting users to lie about their age or name and therefore had violated the CFAA. In this case, the woman used the fake account to develop an online relationship with one of her daughter’s classmates, a 13-year-old who later committed suicide shortly after the fake 17-year old told her harsly he di not want to be friends with her anymore. Cyber-bullying is a serious issue, and may have tragic consequences.

Plaintiff described in his first complaint the teenagers who created the fake social media accounts as bullies. But how would you describe an educator who claimed that some of the children he is in charge of educating should face prison sentences because they mocked him?

Plaintiff went after Defendants, minors who were students at the school where he is assistant principal, with a very heavy hand, even claiming  in the amended complaint, that he should be granted leave to state a claim under the Racketeer Influenced and Corrupt Organization Act (RICO) in case his claim under the CFAA would be dismissed…

As noted by Magistrate Judge Coffin in one of the two Findings and Recommendations that he filed, Congress enacted RICO to address organized crime and its economic consequences. Judge Coffin wrote that “Congress did not intend to target the misguided attempts at retribution by juvenile middle school students against an assistant principal in enacting RICO.”

While it may seem laughable that a federal law targeting organized crime should be a remedy for a (very) stupid student prank, I am also concerned about the negative consequence that such a suit could have on teenagers. Being sued in court under a federal criminal statute can be very scary, even for an adult.

Also, Plaintiff had asked the court for damages, punitive damages, limitation on the defendant’s Internet use and “forfeiture of equipment,’ which, I assume, are computers and/or hand-held devices used to create the fake accounts. He also asked the court to enjoin the teenagers from participating on social networking sites, at least for a “reasonable” period of time. Such a ruling would arguably have run afoul of the First Amendment.

Plaintiff also tried to characterize the material posted online as “pornographic and obscene material of a prurient nature.” Such speech is not protected by the First Amendment, but the Court was probably not convinced that the posts were pornographic. Plaintiff could have been more successful at pursuing a defamation claim in State court, but since the case was dismissed, one can only speculates on how a court would have ruled in this case.

Image is Computer on Fire courtesy of Flickr user Matt Mets pursuant to a CC BY 2.0 license.

 

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Two New California Laws: Right to be Forgotten for Minors and Protection from Cyber Revenge

October 3, 2013 · by ·

3563325190_8a682d4b93California  enacted on September 23rd a “right to be forgotten” law. SB 568 was passed to give “Privacy Rights for California Minors in the Digital World.” The law, which is now part of the California Online Privacy Protection Act, will take effect on January 1, 2015.

Under §22581(a) of the law, operators of web sites or apps “directed to minors” which have “actual knowledge” that a minor is using the site/app, must allow minors who are registered users of their service “to remove or, if the operator prefers, to request and obtain removal of, content or information posted on the operator’s Internet Web site, online service, online application, or mobile application by the user.”

Operators must provide notice to minors that such removal service is available to them and also provide them “clear instructions” on how to remove or to request removal of content or information. The notice must also inform minors that the removal “does not ensure complete or comprehensive removal of the content or information posted.”

Exceptions to the Right to Be Forgotten

There are five exceptions to this obligation to erase information:

1. A federal or a state law requires maintaining the content or information

2. The content or information was stored on or posted by a third party, including any content or information posted by the minor that was stored, republished, or reposted by the third party

3. The operator anonymizes the content or information posted by the minor in such way that the minor cannot be individually identified

4. The minor does not follow the instructions provided by the operator on how to erase or require deletion of the information or content

5. The minor has received compensation or other consideration for providing the content

Is Content Really Deleted?

Many sites already offer a delete button. Minors (and majors) can delete tweets and Facebook posts and it is easy to delete a blog post or even an entire blog in a few seconds. However, one can never be sure that the information has been deleted from servers.

Also, as data is frequently republished by third parties, deleting all the subsequent reposting of that information is impossible, hence the necessity of the third-party republication exception of the California law.

The Particular Issue of Cyber Revenge

This is good news from a free speech point of view, but it is not good news for victims of cyber bullying and cyber revenge. The New York Times published a sobering article on revenge porn last week, describing the plight of a young girl whose former boyfriend had posted online intimate pictures of her out of spite.

The article mentions that owners and operators of porn revenge sites are in most cases protected by federal law.

Indeed, under Section 230 of the Communication Decency Act (CDA), 47 U.S.C. §230, “[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.” The law provides a safe harbor to Internet service providers from speech posted by a third party.

Section 230 of the CDA has, however, no effect on criminal law or intellectual property law. That means that if the image of a naked minor is posted on a porn revenge site, and the State where the posting took place considers that such posting constitutes child pornography, the porn revenge site will not be able to use Section 230 of the CDA as a defense.

Also, if a posting falsely implies that the person featured would freely engage in sexual activities if asked and/or paid for this service, it would defamatory, and the victim could sue the site. However, most posts show a picture and identify the subject of the photograph, without further comment.

Copyright law could also be used to have a photograph taken down, but only if the subject of the photograph owns its copyright. That would be the case if racy ‘selfie’ is emailed to, say, a boyfriend, who later posted it on a site out of spite. In that case, the subject of the photograph could use another federal law, the Digital Millenium Copyright Act, to require the site to takedown the photograph. In order to be protected by copyright however, the ‘selfie’ would have to be original, but the threshold for protection is low.

It could also be argued that porn revenge is a breach of the federal stalking law, 18 U.S.C. § 2261A, passed as part of the Violence Against Women Act. This act, 18 U.S.C. § 2261A(2) specifically incriminates stalking using a computer.

Another new California law, SB 255, was enrolled on September 19 and specifically addresses the issue of cyber revenge. It is now a crime in California to publicize the picture of someone partially or completely naked, even if the person has given his consent to have this picture taken, defined as follows:

“Any person who photographs or records by any means the image of the intimate body part or parts of another identifiable person, under circumstances where the parties agree or understand that the image shall remain private, and the person subsequently distributes the image taken, with the intent to cause serious emotional distress, and the depicted person suffers serious emotional distress.”

The author of the bill, California Senator Anthony Cannella, argued that such law was necessary to protect victims of cyber-bullying, especially since some victims have committed suicide as a result of being bullied online.

The ACLU opposed the bill, arguing that “[t]he posting of otherwise lawful speech or images even if offensive or emotionally distressing is constitutionally protected. The speech must constitute a true threat or violate another otherwise lawful criminal law, such as stalking or harassment statute, in order to be made illegal. The provisions of this bill do not meet that standard.”

The ACLU cited in its argument the United States v. Cassidy case, where the defendant had argued that 18 U.S.C. § 2261A(2)(A) violated the First Amendment because it was overbroad. The District Court of Maryland found in favor of defendant, reasoning that the government’s indictment was directed at protected speech, described by the court as “anonymous, uncomfortable Internet speech addressing religious matters” (at 583).

The court also noted that this speech did not fall into any of the categories of speech outside First Amendment protection, that is, obscenity, fraud, defamation, true threats, incitement, or speech integral to criminal conduct.

The questions of whether porn revenge postings are protected by the First Amendment remains an open question, likely to be answered at one point by a court of law.

Image is Graffiti courtesy of Flickr user Cliff Beckwith pursuant to a CC BY 2.0 license.

 

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New York Attorney General Tackles Astroturfing

September 26, 2013 · by ·

604269_25f0635b99When I traveled two weeks ago in a Western town I had never visited before, I relied on the Internet to find a sports bar where I could watch the Yankees on a nice big flat screen while having some good, simple food. I found a great sports bar on a consumer review website, and I had a relaxing evening, even though I was not really sure where I was (the GPS in my car knew it though).

That was because the online review I had read and relied upon was probably written by a real satisfied customer of that restaurant.

But what if the restaurant had paid a third party to write fake (gloating) reviews about the establishment in order to lure unsuspected customers like me to come in?

There is a name for that practice, astroturfing, and astrotrufing is illegal, as it violates laws against false advertising and is considered an illegal and deceptive business practice.

On September 23, New York Attorney General Eric T. Schneiderman announced that 19 companies have agreed to stop writing fake online reviews and to pay more than $350,000 in penalties. The NY AG named this undercover investigation “Operation Clean Turf.”

There are many sites on the web whose business model is to provide a platform for crowd-sourced information. Among the most popular of these sites are Yelp, CitySearch, and Google, which have collaborated with AG Schneiderman on the “Clean Turf Investigation.”

The NY AG Office started noticing about a year ago a flux of suspicious online reviews. This led undercover investigators, posing as owners of a yogurt shop in Brooklyn, asking several companies to provide fake positive online reviews for that shop. Many of the companies contacted were happy to help and offered fake review services. Most of these reviews are written by freelancers from all around the world, who post comments about places and businesses they do not know about. The NY AG Office found during its investigation that freelance writers from the Philippines, Bangladesh, or Eastern Europe were paid $1 to $10 per review.

This practice is a concern for consumer review websites, as astroturfing threatens their very business model, which relies on their visitors to trust the legitimacy of their online reviews. An article written by Professor Michael Luca (Harvard Business School) and Professor Georgios Zervas (Boston University), published this month, found that some 16% of restaurant reviews on Yelp are fraudulent.

Yelp prohibits deceptive and fake reviews through its Terms of Service, and even filed a complaint last month in the California Superior Court for San Francisco County, alleging that a San Francisco law firm had posted several fake online reviews about the firm and its legal services. The complaint notes that “[t]he integrity of Yelp reviews is fundamental to Yelp’s business model (at 15) and argues that the law firm has violated California’s false advertising laws.

The action of NY AG is the first of its kind in the U.S., but we should expect AG Offices from other states to follow, as the issue is not likely to go away soon. AG Schneiderman even called astroturfing “the 21st century’s version of false advertising.”

The Federal Trade Commission (FTC) will probably tackle the issue soon as well, under Section 5 of the FTC Act which empowers the FTC to prevent the use of unfair methods of competition and unfair or deceptive business practices. The FTC could also provide guidelines to consumer review websites on best practices.

France has recently taken an interesting view on the issue. The French Association for Standardization, the AFNOR, published on July 4 a new NF Z74-501 norm about online consumer reviews. Websites may comply, on a voluntary basis, to a set of rules and procedures for reliable methods of treating and collecting online reviews of consumer products and services. If they do comply with the rule, they may post the NF Z74-501 seal of compliance on their site.

Whether or not astroturfing is prevented or its illegal use prosecuted by authorities, it is certainly a bad weed. (Sorry!)

Image is area 51 courtesy of Flickr user Michael Newton pursuant to a CC BY 2.0 license.

 

 

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‘The Fitchuation’ T-Shirt Did Not Infringe ‘The Situation’ Trademark

September 24, 2013 · by ·

4490088209_be2158df1cMichael Sorrentino, a former Jersey Shore cast member, recently lost his trademark infringement suit against retailer Abercrombie & Fitch (A&F).

Sorrentino was part of the cast of the (in)famous MTV reality television show from its December 2009 start. He gave himself the nickname ‘The Situation’ or ‘Sitch.’ The show quickly became popular and, on February 2010, A&F started selling on its web site t-shirts with “The Fitchuation” printed in front, a word play on ‘The Situation.’

However, A&F’s interest in Sorrentino and the Jersey Shore show turned quickly into disdain. When casts members, including Sorrentino, wore A&F clothing on the show, A&F released a statement in August 2011 stating that “[it was] deeply concerned that Mr. Sorrentino’s association with [its]brand could cause significant damage to [its] image.” A&F even offered up to $10,000 to Sorrentino and other members of the cast NOT to wear A&F apparel. (See August,16  2011 press release here)

Sorrentino owns with his brother Marc the MPS Entertainment Limited Liability Company, which holds several ‘The Situation’ registered trademarks. The trademark applications were filed late 2010, and the company sells apparel on its web site, some of them bearing ‘The Situation’ trademark.

Sorrentino and MPS (Plaintiffs) filed a trademark infringement suit in 2012 against A&F (Defendant), claiming that A&F infringed on their trademark ‘The Situation’ by selling and advertising its ‘Fitchuation’ t-shirts. On June 28, 2013, the Southern District of Florida granted summary judgment to Defendant, finding no trademark infringement.

No Likelihood of Consumer Confusion

The Southern District Court of Florida belongs to the 11th Circuit, and thus used the Alliance Metals v. Hinely Indus. Inc. multifactor test for likelihood of consumer confusion. These seven factors are:

–          Strength of the mark

–          Similarity of the mark

–          Comparison of the goods and services

–          Similarity of the parties retail outlets and customers

–          Similarity of Advertising media

–          Defendants’ intent

–          Actual confusion in the consuming public

Strength of the mark: Trademarks are traditionally classified by courts and commentators as (1) generic, (2) descriptive, (3) suggestive or (4) arbitrary or fanciful (see Zatarain’s Inc. v. Oak Grove Smokehouse, Inc). Arbitrary or fanciful terms “bear no relationship to the products or services to which they are applied” (Zatarain) and do not have to prove that they have acquired secondary meaning for the public, that is, that the public recognizes a particular term as designating a particular product. Think as an example ‘Apple’ designating a cell phone, not a fruit.

The Southern District Court of Florida found that ‘The Situation’ is an arbitrary and fanciful mark, as it bears no relationship to the product or service.

Similarity of the mark: Defendant had argued that ‘The Fitchuation’ t-shirt was a parody. The court did not elaborate on this argument, but nevertheless weighed in favor of Defendant on that factor. It noted that Defendant had used its own ‘Fitch’ trademark and that had reduced the likelihood of consumer confusion. The court also noted that “The Fitchuation” is “visually and phonetically different that “The Situation.””

Comparison of the goods and services: This factor weighed in favor the Defendant as there was no evidence that the public had confused its products with those of Plaintiff which, indeed, had not even started selling its own t-shirt line at the time A&F sold its ‘Fitchuation’ t-shirt.

Similarity of the parties retail outlets and customers: A&F sold its t-shirt exclusively though its stores and web site. There was no similarity of sales channels here, and there was no similarity of advertising media either.

As for Defendants’ intent, A&F did not have the intent to misappropriate the plaintiff’s goodwill. The t-shirt was a parody, and was not sold it to profit from Plaintiffs’ business reputation. The court cited the 1987 10th Circuit case Jordache Enterprises, Inc. v. Hogg Wyld, Ltd. where the court had found no likelihood of confusion between Jordache blue jeans and Lardasche blue jeans for plus size women, sold complete with a smiling pig and the word ‘Lardashe’ on the back of the pants.

Finally, there was no Actual confusion in the consuming public Plaintiff did not present any evidence to the contrary, and the court rejected a survey presented by Plaintiff as evidence as defective.

For all these reasons, the Southern District of Florida granted summary judgment to A&F on the trademark infringement claim.

Barring ‘Undesirable’ Customers from Wearing one’s Goods (Not a Good Idea!)

From the August 16, 2011 A&F press release about Jersey Shore cast members wearing A&F clothing:

“We are deeply concerned that Mr. Sorrentino’s association with our brand could cause significant damage to our image.  We understand that the show is for entertainment purposes, but believe this association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans.”

A&F is using the term “brand,” not “trademark.”A brand refers to the whole package, going to the store, emulating the models featured  in the catalog and adhering to company’s ‘values.’ A&F has “fans,” not customers, and the brand is “aspirational,” meaning that the customers buy the goods to emulate a certain lifestyle, most of the time a lifestyle above their current socio-economical mean. A customer may buy and wear, say, a branded tee-shirt, because he aspires to be part of the happy-few set wearing that particular brand. But what if some customers deemed ‘undeserving’ by a brand do start wearing its products?

You Are Not Worthy!

In 2005, Burberry was desperate to prevent ‘Chavs’ from wearing its famous check. At the time, they particularly favored a certain Burberry baseball cap. ‘Chavs’ gained the reputation to party (very) hard, and the Burberrys baseball cap became a symbol of infamy. Some night clubs even started banning them and Burberry eventually decided to stop producing them.

A&F is notorious for seeking to prevent some people from wearing A&F goods. After an A&F manager reportedly peeped that poor people should not wear A&F clothing, Greg Karber, a LA-based writer launched a campaign on You Tube urging people to donate A&F clothing to homeless people.

In essence, what Mr. Karber was trying to achieve is a non-commercial dilution of the brand. The Lanham Act prevents dilution of the distinctive quality of a famous mark, but the use has to be commercial. It defines dilution by tarnishment as an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Let’s hope that there will never, ever, be  a bill proposing that wearing a brand while not being ‘worthy’ of it could be deemed tarnishment as well.

Image is Snooki & The Situation: The Egg Version courtesy of Flickr user chicagogeek pursuant to a CC BY 2.0 license.

 

 

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SCA Protects Privacy of Non-Public Facebook Wall Posts

September 19, 2013 · by ·

5454778149_620c36dbfeThe U.S. District Court for the District of New Jersey ruled on August 20 that non-public Facebook wall posts are covered by the Stored Communications Act (SCA). However, the authorized user exception applied in this case, as a colleague who had legally access to Plaintiff’s Facebook wall had forwarded the controversial  post, unsolicited, to their common employer.

The case is Ehling v. Monmouth-Ocean Hospital.

Plaintiff Deborah Ehling was as registered nurse and paramedic working for Defendant Monmouth-Ocean Hospital Service Corp. (MONOC). In June 2009, she posted a message on her account, implying that the paramedics who took care of the man who had killed a security guard outside the U.S. Holocaust Memorial Museum in 2009 should have let him die.

The privacy settings of Ehling’s Facebook account limited access to her Facebook wall to her Facebook friends. No MONOC managers were her Facebook friends, but several of her MONOC coworkers were, including Tim Ronco, who apparently decided on his own to provide screenshots of the controversial Ehling’s Facebook post to a MONOC manager.

Plaintiff was then suspended with pay and was told that her comment reflected a “deliberate disregard for patient safety.” Plaintiff then filed a complaint with the National Labor Relations Board (NLRB) which found that MONOC had not violated Ehling’s privacy as the post had been sent unsolicited to management.

Plaintiff was eventually fired, and filed an action against MONOC,  but the court granted defendant’s motion for summary judgment. I will only talk about the violation of the SCA.

Stored Communications Act

Plaintiff claimed that Defendant had violated the SCA when accessing the messages posted on her Facebook wall.

The SCA, 18 U.S.C. § 2701, is part of the Electronic Communications Privacy Act (ECPA) of 1986. The SCA forbids unlawful access to stored communications, that is,“(1)intentionally access[ing]s without authorization a facility through which an electronic communication service is provided; or (2) intentionally exceed[ing] an authorization to access that facility.”

According to the Ehling court, Facebook wall posts are indeed electronic communications as defined by 18 U.S.C. § 2510(12) that is,“any transfer of signs, signals, writing, images, sounds, data, or intelligence of any nature transmitted in whole or in part by a wire, radio, electromagnetic, photoelectronic or photooptical system that affects interstate or foreign commerce.”

Facebook’s users transmit data over the Internet, from their devices to Facebook’s servers, and thus their posts are electronic communications within the meaning of the SCA. No new issue here. The New Jersey court cited the 2010 Central District Court of California case, Crispin v. Audigier, which stated that Facebook and MySpace were electronic communications providers. Again, nothing new.

Finally, Facebook posts are saved on its servers indefinitely, thus backing them up. Therefore, Facebook wall posts are in electronic storage within the meaning of the SCA, 18 U.S.C. § 2510(17)(B), which defines the storage of electronic communications for purposes of backing them up. We are all set, the SCA applies in this case.

Public Electronic Communications/Private Electronic Communications

The controversial issue was instead whether Plaintiff’s Facebook posts were public or private. This is important, as the ECPA only protects private communications. The Ninth Circuit had noted in the 2002 case Konop v. Hawaaiian Airlines, Inc. that “the legislative history of the [SCA} suggests that Congress wanted to protect electronic communications that are configured to be private, such as email and private electronic bulletin boards.”

But a completely public BBS is not protected by the SCA. Indeed, the SCA legislator wrote that:

“the bill does not for example hinder the development or use of electronic bulletin boards or other similar services where the availability of information about the service, and the readily accessible nature of the service are widely known and the service does not require any special access code or warning to indicate that the information is private. To access a communication in such a public system is not a violation of the Act, since the general public has been ‘authorized’ to do so by the facility provider”. (S. REP. NO. 99-541, at 36)

Konop was cited in Crispin v. Audigier, where the court reasoned that “there is no basis for distinguishing between a restricted-access BBS and a user’s Facebook wall or MySpace comments.” The New Jersey District court cited Audigier to conclude that non-public Facebook wall postings are covered by the SCA.

As the privacy settings of Plaintiff’s Facebook account prevented non-Facebook friends to access the messages on her wall, these messages were not really “public” and therefore the SCA applied to them. However, the authorized user exception of the SCA applied in this case.

Why the SCA’s Authorized User Applied in this Case

There is no liability under the SCA if access “[is] authorized … by a user of that service with respect to a communication of or intended for that user,” 18 U.S.C. § 2701(c)(2).

The court cited its own 2009 Pietrylo v. Hillstone Rest. Grp. case which had found that there is no violation of the SCA if the access to an electronic communication has been authorized. In the Pietrylo case, the manager of a restaurant had accessed the MySpace account of an employee, accessible only by invitation, by asking another employee to provide him the password. In Ehling, one of Plaintiff’s colleagues had voluntarily forwarded the electronic communication to the employer “without any coercion or pressure.” Therefore, the access was authorized. The difference is there, asking/coercing for access, or learn about the communication from an unsolicited third party.

Take away

Case law is consistent in this issue. While employers should not coerce or pressure employees to provide them access to the social media account of another employee, it is not illegal for them, under the SCA, to access a social media post if a third party willingly shares this information with them.

As for providing access to one’s own social media account to one’s employer, New Jersey recently enacted a law prohibiting employers to ask for user names, passwords, or other means for accessing employee’s electronic communications devices. Several states have similar laws, but New York is not one of them yet.

Image is Facebook wall courtesy of Flickr user Marcin Wichary pursuant to a CC BY 2.0 license.

 

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