Intellectual Property in Cyberspace -
Arizona State University College of Law
This class meets Tuesday/Thursday 10:30 -12 in room 111. The first class is Tuesday January 10.
This class seeks to delve deeply into current copyright, patent, and trademark topics ("intellectual property") that relate to digital technologies ("cyberspace") by means of a thorough reading of the assigned materials and vigorous class discussion. A willingness to read and think is mandatory, but otherwise no particular background is required. Those who have had some IP already should find their knowledge richer, and those who have no such background may have to do some digging here and there. The goal is for all of us to think hard about real doctrinal and policy problems associated with digital technologies and the internet. I would vastly prefer to do this without the distraction of a final exam or grade. In principle, therefore, I would be prepared to give an "A" to every student who attends, actively participates, and tenders a good paper. Whether I can do this, however, depends on whether more than 50% of the class meet these criteria for an "A" and, if so, whether I can get a waiver from the Dean to give that many "A" grades. So, whatever final curve is ultimately permitted, the final grade will be based 50% on attendance and classroom participation and 50% on a paper relating to any aspect of the course that we discuss (or on an agreed topic). There will be no formal final exam.
For reading materials, I am doing an experiment this year. The optional text is Lemley, Menell, Merges, Samuelson & Carver, Software and Internet Law (Aspen 4th ed. 2011). The text is "optional" because I intend to use it primarily for its edited cases (which likely will be heavily supplemented as we go through the semester and new cases come down). This Syllabus contains page citations to the assigned materials in the text, but also links to (or at least case names and citations for) the cases that we will be discussing. Those who do not wish to purchase the text are permitted to read just the raw cases that are assigned. "Additional Reading" is supplied for those who wish to delve more deeply into a given subject, but it is not required. Links to statutory and regulatory materials for most of what we will be studying this semester can be found on the Course Materials section.
I will wait to develop the full syllabus until the class can meet and I can get an idea of what the majority preference is for how to proceed through the semester. For the first day or two, we will discuss the Google Book Project and then go on to the copyright protection of computer software(under copyright and patent law). From there we will go on to things like the Digital Millennium Copyright Act, secondary liability (think Napster and Grokster), database protection, trespass to chattels, trademark enforcement (the recent eBay case), cybersquatting, etc.
A good (and free) electronic newsletter that helps one keep up with developments in cyberlaw generally is Bytes in Brief.
Click here for class Announcements.
Most Recent Syllabus Update: April 11, 2012
Tuesday January 10
For the first class, we will discuss the Google Book Project, as this is a topic that anyone can get into without a lot of technological knowledge. Read Authors Guild v. Google, 770 F. Supp. 2d 666 (SDNY 3-22-11) and Robert Darnton, Jefferson's Taper (NY Rev of Books 11-24-11).
Thursday January 12
Our first topic will be the copyright protection of computer software. The three primary cases, each the leading case dealing with one of the three primary problem areas for computer programs under copyright are the following, which we will take up in the order shown (and probably spend several class days on them):
Text pp. 31-75 & 115-131
CONTU Report (1978), Chapter 3
Computer Associates v. Altai, 982 F.2d 693 (2nd Cir. 1992)
Lotus Development Corp. v. Borland Internat'l, 49 F.3d 807 (1st Cir. 1995)
Sega Enterprises, Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992)
Some provisions of the statute that you will want to read in connection with these cases are section 101 (definition of "computer program"), section 117, and section 107. Useful background on software technology is Introduction to Computer Technology, Network Economics and Intellectual Property, (Chapter 1 of first edition of text, pdf format, 1.7 MB).
Additional Reading: Dennis S. Karjala, A Coherent Theory for the Copyright Protection of Computer Software and Recent Judicial Interpretations, 66 U. Cincinnati L. Rev. 53 (1997); Dennis S. Karjala, Copyright Protection of Computer Program Structure, 64 Brooklyn L. Rev. 519 (1998). Some of the same issues that were fought so long and strenuously for computer software may also arise in the coming years in the fields of biotechnology and nanotechnology: Dennis S. Karjala, Protecting Information in Computer Software, Biotechnology, and Nanotechnology, 16 Virginia J. L. & Tech. 42 (2011).
Tuesday January 17
We will continue our discussion of the three major computer software copyright cases assigned above.
Thursday January 19
Interlude on Golan v. Holder (SCOTUS, 1-18-12)(constitutionality of section 104A of the Copyright Act, providing for reviving foreign copyrights that were in the U..S. public domain for reasons not relating to expiry of term). On the one argument left for holding unconstitutional ridiculously long term extensions or extractions from the public domain, see Dennis S. Karjala, Judicial Oversight of Copyright Legislation, 35 U. N. Ky. L. Rev. 253 (2008).
Tuesday January 24
We will return to our discussion of the three major computer software copyright cases assigned above.
Thursday January 26
Our next set of topics will be RAM copying, derivative works, fair use, and copyright misuse.
Readings: Text pp. 86-98, 104-115, 131-138, 514-520; Cartoon Network v. Cablevision, 536 F.3d 121 (2nd Cir. 2008)(pp. 121-133); MAI Systems v. Peak Computer, 991 F.2d 511 (9th Cir. 1993), the small modification of section 117 in 1998 (section 117(c)), and the section 117 aspects of Storage Technology Corp. v. Custom Hardware Engineering & Consulting, Inc., 421 F.3d 1307 (Fed. Cir. 2005)(to page 1318); section 101 (definition of "derivative work"), section 107; Lewis Galoob Toys v. Nintendo, 964 F.2d 965 (9th Cir. 1992, Microstar v. Formgen, 154 F.3d 1107 (9th Cir. 1998), Assessment Technologies v. WIREdata, 350 F.3d 640 (7th Cir. 2003); Lasercomb American v. Reynolds, 911 F.2d 970 (4th Cir. 1990).
Additional reading: Dennis S. Karjala, Copyright Protection of Operating Software, Copyright Misuse, and Antitrust, 9 Corn. J. L. & Pub. Pol. 161 (1999)
Tuesday January 31
We will continue our discussion of Cartoon Network, assigned above. However, we will hold off on the other cases from that assignment so we can start boning up on the DMCA anticircumvention rules. Over the next several sessions, we will consider the following:
Text pp. 589-626
Copyright Act §§ 1201 & 1202
321 Studios v. MGM, 307 F. Supp. 2d 1085 (N.D. Cal. 2004)
Chamberlain Group v. Skylink Technologies, 381 F.3d 1178 (Fed. Cir. 2004)
Lexmark International, Inc v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004)
Avaya Inc. v. Telecom Labs (D.N.J. 11-4-11)(BNA Summary)
How to Decrypt a DVD: in Haiku Form
Gallery of CSS Descramblers (giving various examples trying to show the logical difficulties in the position that source code can be distinguished from other forms of written expression)
RealNetworks v. DVD Copy Control Ass'n, 2009 WL 2475338 (N.D. Cal. 2009)(DMCA violation to distribute DVD circumvention software and DMCA violation is not excused by possibility that the software allowed users to make a fair use backup copy)
Thursday February 2
We will continue our discussion of § 1201:
Storage Technology Corp. v. Custom Hardware Engineering & Consulting, Inc., 421 F.3d 1307 (Fed. Cir. 2005)
Davidson & Assocs [Blizzard] v. Jung, 422 F.3d 630 (8th Cir. 2005)
"Access" under the DMCA
Egilman v. Keller & Heckman, LLP, 401 F.Supp.2d 105 (D.D.C. 2005)
I.M.S. Inquiry Management Systems v. Berkshire Information Systems, 307 F.Supp.2d 521 (S.D.N.Y. 2004)
Additional reading: For Karjala's take on how the DMCA access provisions apply to software, see Dennis S. Karjala, Access to Computer Programs under the DMCA, 25 John Marshall J. Comp. & Info. L. 641 (2009)
"Without authorization" under the DMCA
Ticketmaster v. RMG Technologies, 507 F.Supp.2d 1096 (C.D. Cal. 2007)
Facebook, Inc. v. Power Ventures, Inc., 91 U.S.P.Q.2d 1430 (N.D.Cal.2009)
Tuesday February 7
We next take up the owner/licensee issue under § 117(a)
Text pp. 228-238
Vernor v. Autodesk, 621 F.3d 1102 (9th Cir. 2010)
Adobe Systems v. Hoop Enterprise, N.D. Cal. 2-1-12
Additional reading: Jordan Christopher Redman, MDY Indus. v. Blizzard: Software "Contracts" that Expand Copyrights Have Gone Too Far, 49 Jurimetrics J. 317 (2009)
MDY Indus. v. Blizzard Entertainment, 629 F.3d 928 (9th Cir. 2010)
Thursday February 9
We will continue with the 1201 and first-sale cases, emphasizing Vernor, Adobe, and MDY.
Tuesday February 14
Mike Donnelly, the principal party in MDY v. Blizzard (the Worlds of Warcraft bot case), and his attorney Lance Venable, will join us for a detailed discussion of the case and its background. You might also want to look at some of the trial record, especially Mike Donnelly's testimony at pp. H1-H40. It makes very interesting reading.
Thursday February 16
We will pick up the loose ends around § 1201 and look briefly at § 1202; consider also a recent 1202 case Personal Keepsake Inc. v. Personalizationmall.com (N.D. Ill. 2-8-12)
Tuesday February 21
We will start with the CFAA portions of the cases we have read, such as I.M.S. and Egilman. A brief introduction to the CFAA is available in this BNA summary of U.S. v. Rodriguez (11th Cir. 12-27-10). We will also take a look at A.V. v. iParadigms (4th Cir. 2010), focusing on the CFAA portions but we can discuss the fair use issues as well, as they are of general interest to students (not to mention the takers of the final exam in my copyright class a couple of years ago!). Added 4-11-12: U.S. v. Nosal (9th Cir. 4-10-12)(no CFAA liability for misuse of information acquired via authorized access)
Thursday February 23
Next we turn to § 512 and the ISP liability problem. Section 512 in a rough sense codifies the holding in RTC v. Netcom, 907 F. Supp. 1361 (N.D. Cal. 1995), so we will read that, and the statute, first. An important recent contribution to the contributory and vicarious infringement jurisprudence, with a strong connection to cyberspace, is Perfect 10 v. Visa International, 494 F.3d 788 (9th Cir. 2007). It is long, but both the majority and dissenting opinions are worth reading. Next we will look at Perfect 10 v. CCBill, 488 F.3d 1102 (9th Cir. 2007), and some more recent cases: Capitol Records v. MP3Tunes (S.D.N.Y. 10-25-11), Wolk v. Kodak Imaging Network (S.D.N.Y. 1-3-12), and UMG v. Shelter Capital (9th Cir. 12-20-11).
Finally, we will look at some cases addressing other provisions of § 512: RIAA v. Verizon Internet Services, Inc., 351 F.3d 1229 (D.C. Cir. 2003)(DMCA subpoena provisions; Online Policy Group v. Diebold, Inc., 337 F. Supp. 2d 1195 (N.D. Cal. 9-30-2004)(liability under 512(f) for misrepresentations to a service provider resulting in the removal of material from a web site); ALS Scan Inc. v. Remarq Communities, Inc. (4th Cir. Feb. 6, 2001)(ISP liability after substantially compliant notice under the DMCA)
Some of these cases are in the text at pp. 507-14, 583-89. Some CFAA discussion and additional cases are on pp. 1136-41.
Tuesday February 28
Interlude on renewal rights: Roger Miller Music v. Sony (6th Cir 2-22-12); We will then continue our discussion of the ISP cases and section 512.
Thursday March 1
Continue discussion of ISP cases from February 23.
Tuesday March 6
Conclude discussion of ISP cases from February 23. Begin reading the now defunct Stop Online Piracy Act (SOPA)
Additional reading: Wortham & Chozick, The Piracy Problem: How Broad (NY Times, 2-8-12); Bason, SOPA and PIPA Shelved (BNA 1-25-12); On the $58 billion of claimed losses due to internet piracy, see Rob Reid's humorous take in Copyright Math. Does the section 512 safe harbor protect against inducement? See Disney v. Hotfile (S.D. Fla 3-12-12)(BNA summary of Google's amicus brief).
Thursday March 8
Continue with SOPA and the remaining section 512 cases. Consider also the section 512 issues associated with the new Pinterest social networking phenomenon and some of the questions Connie Mableson has raised about it.
Tuesday March 13
Interlude on (or review of) scope of software protection under copyright: Oracle v. Google, 810 F. Supp. 2d 1002 (N.D. Cal. 2011).
Begin discussion of trademarks in cyberspace: Tiffany v. eBay, 600 F.3d 93 (2nd Cir. 2010); Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2nd Cir. 2009); Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004); MetroPCS Wireless v. Virgin Mobile, 2009 WL 3075205 (N.D.Tex. 2009). Some relevant provisions of the Lanham Act are sections 1114(1) and 1125(a). For a little international perspective, let's consider eBay v. Burberry (Paris Ct. App. 3-6-12).
Thursday March 15
Continue with trademark cases from March 13.
Tuesday March 20, Thursday March 22
Spring vacation, no classes
Tuesday March 27
Continue discussion of the trademark cases from March 13. Brief return to performance and display rights in ABC v. Aereo (SDNY 3-1-12).
Thursday March 29
The next topic is cybersquatting: Anticybersquatting Consumer Protection Act of 1999 (ACPA), 15 U.S.C. § 1125(d); P.L. 106-113 (full text of ACPA, including provisions for protecting individual names not registrable as trademarks); Uniform Disputer Resolution Policy (ICANN, Oct. 24, 1999); PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001); GoPets v. Hise (9th Cir. 2011); American University of Antigua v. Woodward (E.D. Mich. 12-5-2011); Lamparello v. Falwell (4th Cir. 2005); Virtual Works, Inc. v. Volkswagen of American, Inc. (4th Cir. Jan. 2001)(registration of "vw.net" was in bad faith under the ACPA because other names, like "vwi.net" were available and because registrant consciously thought at the time of registration that "vw.net" would likely be quite valuable to someone); Springsteen v. Burgar and Bruce Springsteen Club (WIPO Administrative Panel Decision, January 2001).
- Storey v. Cello Holdings LLC, 2nd Cir. 10-09-2003 (dismissal of earlier ACPA action with prejudice does not preclude bringing a subsequent UDRP or ACPA claim based on continued use of the trademark in a domain name and new activities showing bad faith)
- Referee Enterprises, Inc. v. Planet Ref, Inc. (E.D. Wisc. Dec. 2000)(registered mark in "Referee" infringed by use in "ereferee.com," "ereferee.net," and "ereferee.org"); but cf. Referee Enterprises v. Planet Ref, UDRP Decision, June 2000 (finding that respondent sports store had a legitimate interest in the "ereferee" name and that the term "referee" was generic so that, even if it had secondary meaning for a magazine title, all uses could not be preempted)
- Netlearning, Inc. v. Parisi (UDRP Proceeding Oct. 16, 2000)(ordering transfer of domain name notwithstanding that respondent's registration of "netlearning.com" preceded complainant's first use of "netlearning" as a trademark); Parisi v. Netlearning, Inc. (E.D. Va. 2001)(Federal Arbitration Act's restrictions on judicial review of arbitration awards do not apply to civil actions challenging UDRP panel decisions)
- Heathmount A.E. Corp. v. Technodome.com (E.D. Va. Dec. 29, 2000)(due process requirements for in personam jurisdiction do not apply to the ACPA's in rem procedure and Congress did not exceed its authority in deeming a domain name to be "property" for this purpose)
- Alitalia-Linee Aeree Italiane S.p.A. v. Casinoalitalia.com (E.D. Va. Jan. 19, 2001)(a mark owner may proceed under the ACPA either in personam against an infringer or, in certain circumstances where this cannot be done, the owner may proceed in rem against the domain name; a mark owner may not proceed against both at the same time)
- Northland Insurance Cos. v. Blaylock (D. Minn. Sept. 25, 2000)(registration and use of domain name containing another's trademark for the purpose of criticizing the trademark owner is not infringing nor does it violate the ACPA)
- If "X-sucks.com" is a permitted use of the trademark X, how about "ilikeX.com"? Ikea, apparently, is unhappy about the Swedish registration iloveikea.se (June 2009).
Tuesday April 3
We will cover the cybersquatting materials from Thursday March 29
Thursday April 5
The next (and final) topic will be patents in cyberspace, with a large focus on the fundamental issue of patent subject matter. Patent Act § 101. The Supreme Court, for better or worse (usually the latter), has been active in this area. Much goes back to Gottschalk v. Benson, 409 U.S. 63 (1972). Next we will look at the Court's most recent pronouncements, Bilski v. Kappos, 130 S. Ct. 3218 (2010), and Mayo v. Prometheus (3-20-12). Then we will take a look at some of the recent Federal Circuit decisions applying, especially, Bilski: CyberSource v. Retail Decisions (Fed. Cir. 8-16-11), Ultramercial v. Hulu (Fed. Cir. 9-15-11), Dealertrack v. Huber (Fed. Cir. 1-20-12), and MySpace v. GraphOn (Fed. Cir. 3-2-12). Another interesting case that falls outside the "abstract idea" analysis set up in Bilski is In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), which looks at the issue of whether a signal encoded with a watermark can be patent subject matter. Then we'll see where we are. If there is time, we can take a look at some Federal Circuit decisions outside the subject matter area.
Additional material: "Hitlerized" comment on Mayo v. Prometheus. Click here for an ABA roundtable discussion of software patents after Mayo.
Tuesday April 10
Interlude on (or return to) ISP liability with Viacom v. YouTube (2nd Cir. 4-5-12). Then we return to the patent materials from Thursday April 5.
Thursday April 12
Interlude on Rosetta Stone v. Google (4th Cir. 4-9-12). Continue with patent materials from Thursday April 5.