e-Commerce Docket Sheet

Using a “patently unlawful” subpoena to access an adversary's e-mail stored by its Internet service provider may run afoul of the Stored Communications Act (SCA) and the Computer Fraud and Abuse Act (CFAA). Theofel v. Farey-Jones, No. 02-15742 (9th Cir. Aug. 28, 2003). During commercial litigation, defendants' attorney subpoenaed plaintiffs' ISP for “[a]ll copies of emails sent or received by anyone” at plaintiffs' company. The ISP provided posted copies of 339 “sample” e-mails for defendants' inspection, without notifying plaintiffs. The Magistrate Judge quashed the subpoena, calling it “massively overbroad” and “patently unlawful,” and sanctioned defendants for their conduct. However, the District Judge dismissed plaintiffs' civil suit against the defendants alleging violations of the SCA, the Wiretap Act, and the CFAA. The Ninth Circuit reversed and remanded the SCA and CFAA claims, holding as to the SCA that the subpoena was deceptive and so invalidated the ISP's consent to access the stored e-mails. As to the CFAA, the appeals court held that individuals other than a computer's owner may be harmed by unauthorized access, especially if they have rights to data stored on it.

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Pop-Up Advertising is Not Trademark, Copyright Infringement

Computer software that presents “pop-up” advertising for competitor sites when an individual computer user views the plaintiff's goods and services on the Internet is not a form of trademark or copyright infringement or unfair competition. U-Haul International, Inc. v. WhenU.com, Inc., Civ. No. 02-1469-A (E.D. Va. Sept. 5, 2003). Granting the defendants' motions for summary judgment on all remaining counts in the complaint, the District Court held that the advertising software at issue did not “use, alter or interfere” with the plaintiff's trademark or copyrighted material, and that it resided on individual users' computers as a result of the “invitation and consent” of those users. Rather than pop-up advertising being actionable as trademark or copyright infringement, or as unfair competition, the court characterized the marketing technique (as well as “her ugly brother” spam) as a burden of using the Internet.

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Online Movie Clips Infringe Movie Studio's Copyrights

A Web site operator may not distribute, without authorization, digital versions of short movie “trailers” a movie studio creates to promote copyrighted works, or its own versions of these trailers. Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., Civ. No. 00-5236 (D.N.J. Aug. 7, 2003). The site operator, Video Pipeline, streamed the studio's movie trailers (and later “clip previews” that it culled from the studio's movies) over the Internet, often charging other Web sites for the service. The District Court granted summary judgment on the movie studio's copyright claims and Video Pipeline's defenses, including fair use. The court noted that trailers have become “more than advertising material for other products,” noting that they have evolved into “valuable entertainment content in their own right.” Additionally, the court noted that the movie studio recently entered the market for online movie trailers and thus found itself competing directly against Video Pipeline. Several weeks later, the Third Circuit affirmed a preliminary injunction that the district court issued in 2002 against Video Pipeline's online distribution of the clip previews. Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., Civ. No. 02-2497 (3rd Cir. Aug. 26, 2003). The Third Circuit's analysis also rejected Video Pipeline's fair-use defense, finding that the clip previews lacked transformative quality and would likely result in harm to the market for the studio's movie trailers.

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Garage Door Opener Software Access Not 'Unauthorized' Under DMCA

Access to garage door opener control software by a competitor's replacement garage door transmitter device is not “unauthorized” under the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA) if the manufacturer of the opener did not place any restrictions on customers' use of replacement devices. The Chamberlain Group, Inc. v. Skylink Technologies, Inc., No. 02 C 6376 (N.D. Ill. Aug. 29, 2003). The court concluded that the DMCA should not be construed to prohibit a purchaser who has lost or damaged the manufacturer's device from using a replacement device to obtain access to the purchaser's garage. The court also expressed “appreciation” for the arguments made in amicus briefs that the use of the anti-circumvention provisions to prohibit after-market replacement parts would stifle innovation and increase consumer prices, and suggested that a motion for summary judgment by the defendant based on arguments such as these might prevail.

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Possibility of Detrimental Links Via Search Results Not Part of Confusion Analysis

The possibility that Internet users searching for a Web site will encounter the defendant's Web site with potentially detrimental links to pornography is not relevant to a likelihood of confusion inquiry. 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, No. 03 Civ. 4069 (S.D.N.Y. Aug. 15, 2003). The District Court denied plaintiff 24 Hour Fitness' motion for a preliminary injunction against the operator of the “247fitnessclub.com” Web site. The court noted that a search conducted using plaintiff's trademark yielded over 1 million hits, “any number of [which might contain] links of which Plaintiff or its prospective customers might not approve.” Any confusion or misdirection, the court observed, arose primarily from the fact that the plaintiff chose common descriptive terms to construct its mark.

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Selling Legitimate Goods No Infringing Domain Defense

The fact that the defendant legitimately sold the plaintiff trademark owner's products does not justify use of the plaintiff's trademarks as the defendant's domain names for its business. Avlon Industries v. Robinson, No. 01 C 3615 (N.D. Ill. Aug. 21, 2003). The District Court denied the defendant's motion to dismiss the suit, alleging, among other things, trademark dilution resulting from wrongful use of the plaintiff's trademarks. The court distinguished between the use of another's mark to advertise one's goods or services and use of another's mark as a domain name. The latter use, the court observed, was the equivalent of using another's trademarks as the name of one's business. Such a practice could cause initial interest confusion as customers seeking the plaintiff's Web site are diverted by the defendant's allegedly infringing domain name.

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Julian S. Millstein Edward A. Pisacreta Jeffrey D. Neuburger

'Patently Unlawful' Subpoena Toward ISP May Be Violation

Using a “patently unlawful” subpoena to access an adversary's e-mail stored by its Internet service provider may run afoul of the Stored Communications Act (SCA) and the Computer Fraud and Abuse Act (CFAA). Theofel v. Farey-Jones, No. 02-15742 (9th Cir. Aug. 28, 2003). During commercial litigation, defendants' attorney subpoenaed plaintiffs' ISP for “[a]ll copies of emails sent or received by anyone” at plaintiffs' company. The ISP provided posted copies of 339 “sample” e-mails for defendants' inspection, without notifying plaintiffs. The Magistrate Judge quashed the subpoena, calling it “massively overbroad” and “patently unlawful,” and sanctioned defendants for their conduct. However, the District Judge dismissed plaintiffs' civil suit against the defendants alleging violations of the SCA, the Wiretap Act, and the CFAA. The Ninth Circuit reversed and remanded the SCA and CFAA claims, holding as to the SCA that the subpoena was deceptive and so invalidated the ISP's consent to access the stored e-mails. As to the CFAA, the appeals court held that individuals other than a computer's owner may be harmed by unauthorized access, especially if they have rights to data stored on it.

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Pop-Up Advertising is Not Trademark, Copyright Infringement

Computer software that presents “pop-up” advertising for competitor sites when an individual computer user views the plaintiff's goods and services on the Internet is not a form of trademark or copyright infringement or unfair competition. U-Haul International, Inc. v. WhenU.com, Inc., Civ. No. 02-1469-A (E.D. Va. Sept. 5, 2003). Granting the defendants' motions for summary judgment on all remaining counts in the complaint, the District Court held that the advertising software at issue did not “use, alter or interfere” with the plaintiff's trademark or copyrighted material, and that it resided on individual users' computers as a result of the “invitation and consent” of those users. Rather than pop-up advertising being actionable as trademark or copyright infringement, or as unfair competition, the court characterized the marketing technique (as well as “her ugly brother” spam) as a burden of using the Internet.

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Online Movie Clips Infringe Movie Studio's Copyrights

A Web site operator may not distribute, without authorization, digital versions of short movie “trailers” a movie studio creates to promote copyrighted works, or its own versions of these trailers. Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., Civ. No. 00-5236 (D.N.J. Aug. 7, 2003). The site operator, Video Pipeline, streamed the studio's movie trailers (and later “clip previews” that it culled from the studio's movies) over the Internet, often charging other Web sites for the service. The District Court granted summary judgment on the movie studio's copyright claims and Video Pipeline's defenses, including fair use. The court noted that trailers have become “more than advertising material for other products,” noting that they have evolved into “valuable entertainment content in their own right.” Additionally, the court noted that the movie studio recently entered the market for online movie trailers and thus found itself competing directly against Video Pipeline. Several weeks later, the Third Circuit affirmed a preliminary injunction that the district court issued in 2002 against Video Pipeline's online distribution of the clip previews. Video Pipeline, Inc. v. Buena Vista Home Entertainment, Inc., Civ. No. 02-2497 (3rd Cir. Aug. 26, 2003). The Third Circuit's analysis also rejected Video Pipeline's fair-use defense, finding that the clip previews lacked transformative quality and would likely result in harm to the market for the studio's movie trailers.

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Garage Door Opener Software Access Not 'Unauthorized' Under DMCA

Access to garage door opener control software by a competitor's replacement garage door transmitter device is not “unauthorized” under the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA) if the manufacturer of the opener did not place any restrictions on customers' use of replacement devices. The Chamberlain Group, Inc. v. Skylink Technologies, Inc. , No. 02 C 6376 (N.D. Ill. Aug. 29, 2003). The court concluded that the DMCA should not be construed to prohibit a purchaser who has lost or damaged the manufacturer's device from using a replacement device to obtain access to the purchaser's garage. The court also expressed “appreciation” for the arguments made in amicus briefs that the use of the anti-circumvention provisions to prohibit after-market replacement parts would stifle innovation and increase consumer prices, and suggested that a motion for summary judgment by the defendant based on arguments such as these might prevail.

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Possibility of Detrimental Links Via Search Results Not Part of Confusion Analysis

The possibility that Internet users searching for a Web site will encounter the defendant's Web site with potentially detrimental links to pornography is not relevant to a likelihood of confusion inquiry. 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, No. 03 Civ. 4069 (S.D.N.Y. Aug. 15, 2003). The District Court denied plaintiff 24 Hour Fitness' motion for a preliminary injunction against the operator of the “247fitnessclub.com” Web site. The court noted that a search conducted using plaintiff's trademark yielded over 1 million hits, “any number of [which might contain] links of which Plaintiff or its prospective customers might not approve.” Any confusion or misdirection, the court observed, arose primarily from the fact that the plaintiff chose common descriptive terms to construct its mark.

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Selling Legitimate Goods No Infringing Domain Defense

The fact that the defendant legitimately sold the plaintiff trademark owner's products does not justify use of the plaintiff's trademarks as the defendant's domain names for its business. Avlon Industries v. Robinson , No. 01 C 3615 (N.D. Ill. Aug. 21, 2003). The District Court denied the defendant's motion to dismiss the suit, alleging, among other things, trademark dilution resulting from wrongful use of the plaintiff's trademarks. The court distinguished between the use of another's mark to advertise one's goods or services and use of another's mark as a domain name. The latter use, the court observed, was the equivalent of using another's trademarks as the name of one's business. Such a practice could cause initial interest confusion as customers seeking the plaintiff's Web site are diverted by the defendant's allegedly infringing domain name.

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Julian S. Millstein Edward A. Pisacreta Jeffrey D. Neuburger New York Brown Raysman Millstein Felder & Steiner LLP