Peter Black's Freedom to Differ

Creative Commons for "geekgirl"? I don't think so ...

There has been a minor controversy in the Australian blogosphere over the past few weeks surrounding the term "geekgirl".  Ben Grubb at ZDNet Australia posted the latest developments in a blog post today:

On 20 May, ZDNet Australia reported on IT consultant Kate Carruthers wishing to use the term "geekgirl". Problem was, when she attempted to use it, she said she was told not to.

At the article's time of publication, Carruthers said the original trademark owner, Rosie Cross, had told her to stop using "geekgirl". This turned out to be incorrect, with Carruthers retracting that statement. It was Cross' partner, Carruthers said, that had instead contacted her.

You can find Carruthers' version of events here and Cross' here.

Read the rest of the story here. 

I don't wish to comment generally on the dispute between Kate Carruthers and Rosie Cross (although I should note for the record, that Kate is a friend of mine and I have never met Rosie Cross).  But I do want to question what Cross asserted on Twitter, according to the last line of Ben's piece:

After publication of the original article, Cross tweeted that she had "been working on a Creative Commons licence for #geekgirl". Maybe this will resolve things? Here's hoping.

The problem with that statement is that a Creative Commons license is not at all the appropriate license for a term such as "geekgirl".  This is because copyright does not subsist in names or titles.  For example, these names or titles were all held to be outside the scope of copyright protection:

• "The Man Who Broke the Bank at Monte Carlo" (see Francis, Day & Hunter Ltd v Twentieth Century Fox Corp Ltd [1940] AC 112);
• "Opera in the Outback" (see Lott v JBW & Friends Pty Ltd & Endeavour Corp Design No. SCGRG-99-679 [2000] SASC 3); and
• "Exxon" (see Exxon Corp v Exxon Insurance Consultants International Ltd [1982] RPC 69).

Similarly, copyright would not be held to subsist in the term "geekgirl", which means that you could not then license the term "geekgirl" under a Creative Commons license.

Although copyright could not be used to protect the term "geekgirl", trade mark law would be able to protect the term.  This is presumably why Cross, and now Carruthers, sought to trade mark the term (in different categories, of course).  But you can not license the use of a trade mark under a Creative Commons license.

Against this legal backdrop, it seems a little disingenuous for Cross to have said that she had "been working on a Creative Commons licence for #geekgirl" because if she had indeed "been working on" such a license, she would have very quickly realised that not only was it not the appropriate license, but that it was not legally possible for her to do so.  Despite this minor confusion, I hope that Cross is still seeking to license the "geekgirl" trade mark in certain instances and that she is actively investigating trade mark licensing options.

What is important to take away from this is that although Creative Commons provides a wonderful range of options for copyright owners, Creative Commons does not cover all forms of intellectual property, and that it is important to identify precisely what category of intellectual property it is that you are claiming before you seek to license that interest.

Have you ever seen two less likely allegedly similar marks?

The excellent intellectual property law blog IPKat asks have you ever seen two less likely allegedly similar marks?

Read the (somewhat obvious) answer here.

Mad Men Twitter fan fiction

Business Week has an interesting story on how Mad Men fans are using Twiiter in a way that is "blurring the lines between brand infringement and brand extension":

On AMC's hit show Mad Men, character Peggy Olson is the ambitious secretary-turned-copywriter at fictional Manhattan advertising agency Sterling Cooper. On the show, which is set in 1962, she's excellent at keeping secrets—such as how she bore a child out of wedlock. Off the show, she's more forthcoming. Olson—or rather, a person posing as her—uses the microblogging service Twitter to give fans a peek into her inner thoughts: "The men in the office are headed to the Oyster Bar. I'm going to the library. It doesn't seem quite fair," she wrote on Aug. 25.

Olson isn't the only Mad Men character on Twitter. Sterling Cooper creative director Don Draper began it all by issuing his first status update on Aug. 12. A few days later, seductive secretary Joan Holloway joined the fray, writing on Aug. 19, for instance: "Hoping @don_draper will be eating lunch outside of office again today, as he usually does. There's a sale on intimates at Macy's." That was the day Peggy Olson popped up.

In all, more than 15 Mad Men characters are Twittering, and more appear every week. All are posted by individual fans of the show and to date, none are known to be associated with the series. At least one blogger has speculated that Don Draper, Peggy Olson, and the others are actors hired by AMC interactive marketing agency Deep Focus, but AMC spokeswoman Theano Apostolou emphatically denies it. Several of the Mad Men Twitterers also said in interviews that they're independent fans, unaffiliated with Mad Men or AMC.

The unofficial Mad Men are using Twitter to push fictional characters into a new digital frontier—at the same time blurring the lines between brand infringement and brand extension. While a show's creators and distributors might ordinarily welcome the publicity that comes with seeing it depicted in a positive light beyond normal viewing times, they're also on alert for signs that their brand is being misused in some manner. Content owners are especially vigilant in an age when users can spread content quickly by means of social media, such as Facebook or Google (GOOG)'s YouTube. In July, Hasbro (HAS) sued the creators of an unauthorized version of its Scrabble word game (BusinessWeek.com, 7/24/08) that had become wildly famous on Facebook. For a time, Twitter disabled Mad Men accounts amid inquiries from AMC as to their origin—though AMC denies having asked for the accounts to be blocked.

Read more here.

Twitter squatters

Techdirt has a fascinating post on Twitter squatters:

In 1994, reporter Joshua Quittner famously registered the domain name mcdonalds.com, and wrote a whole article about how so many top brand names were available for registering by anyone who wanted them. Reading the article sounds pretty amazing in retrospect. The one and only domain name registrar at the time, InterNIC had a grand total of 2.5 people reviewing each and every application and trying to avoid "obvious" conflicts -- except that didn't seem to work. As Quittner points out, Sprint had registered MCI.com. There was eventually a bit of a battle over mcdonalds.com, and once people finally realized this was a big deal, a process, the Uniform Domain Name Dispute Resolution Policy (UDRP) process was created.

Of course, these days, there are many more ways that your brands interact online than just by your domain name. Erik Heels, an internet-savvy lawyer (and regular Techdirt reader) has gone through Twitter and discovered that of the top 100 global brands, only 7 have their main brand registered as a Twitter ID. Most of the others have Twittersquatters who have already taken the name. Heels, himself, grabbed the Twitter ID for Moet & Chandon and even made it look slightly "real." And, of course, it goes beyond just Twitter as well, where usernames at plenty of other services are increasingly important as well.

Many of these services have ad hoc processes by which they will "resolve" a dispute over a name, but Heels worries about how that will work. In the case of Twitter, basically the company just reserves the right to do what it thinks is right. But, that could obviously lead to some questionable situations -- and eventually even some lawsuits (remember the cease and desist sent by Burger King using Twitter? Why are the fast food burger joints at the center of all of these disputes?). Heels proposes extending the UDRP into a much more complete system for Uniform Username Dispute Resolution Policy or UURP. This way there's a clear process for anyone who disputes the use of a username in any particular service. It certainly seems like an idea worth discussing.

Read more here.

Who killed online Scrabble?

Techdirt has a good post on how Hasbro and Mattel killed online Scrabble:

We've been chronicling just how badly both Hasbro and Mattel screwed up in responding to the massive success of Scrabulous on Facebook. The ridiculously popular application was attracting over 500,000 users every day and (amazingly) making Scrabble cool again, pumping up sales of the physical board game. But, of course, the intellectual property lawyers freaked out and said "this must stop." The resulting legal threats and lawsuits created quite a lot of backlash and anger (and a boycott of Hasbro games). Venturebeat is now looking at the aftermath, and shows that the fight effectively killed all momentum for Scrabble on Facebook. Part of the problem may be that the game is now fragmented, with a Hasbro version serving some countries, a Mattel version serving others and the Scrabulous makers' "modified" Wordscraper on the market as well. The end result is that each has significantly fewer users than Scrabulous had. In fact, the monthly number of users pales in comparison to the daily number of users that Scrabulous had. Great way to kill a wonderful (free) promotion that was attracting thousands of new fans to the game.

Read it here.

Today Popeye, tomorrow Mickey Mouse?

This week the cartoon character Popeye came out of copyright protection and into the public domain.  Techdirt observes that it "be quite interesting to see what happens next, as it will be something of a preview of the eventual Mickey Mouse fight that will be coming":

Disney was able to continually extend copyright to keep Mickey Mouse out of the public domain for years -- in part because copyright wasn't an issue that the general public cared about or that really impacted them in a noticeable way. Obviously, over the past decade, that's changed quite a bit. Disney must know that it will have an awfully difficult time extending copyright yet again (though, the company will almost certainly try). In the meantime, though, what happens with Popeye in the UK may be a rough guide as to what will happen should Mickey Mouse hit the public domain.

And... the reality is that not very much different might happen.

That's because even though the copyright on the character has fallen into the public domain, the trademark remains -- and the current holder of the Popeye trademark in the UK, King Features (owned by Hearst), is expected to "protect its brand aggressively." That means people will still be quite limited in how they can use Popeye. If King Features is able to successfully use trademark law to keep Popeye under control, perhaps Disney won't go quite so crazy trying to extend the copyright on Mickey Mouse again... Either way, this little "experiment" will be worth watching.

Read it here.

Today Facebook, tomorrow Twitter

Techdirt asks did Burger King really just issue a C&D through Twitter?

Now that it's legal to serve papers to someone through Facebook, Burger King has apparently sent a cease and desist via Twitter to the user "whoppervirgins" for an unauthorized use of trademark. "Whopper Virgins" is the latest multi-million dollar ad campaign from Burger King to hit the airwaves, featuring documentary-like ads depicting Hmong, Inuit and Romanian villagers eating burgers for the first time. Sure, "theBKlounge" account may not really be Burger King, or the C&D could actually be an in-character joke. But, really, did nobody at the agency think to simply grab the twitter account "whoppervirgins" to begin with? From the start, this campaign seems to have attracted criticism. In addition to flak for being "corporate colonialism," "cultural bullying" and "the worst kind of Ugly Americanism," this campaign has been ridiculed for not doing enough good SEO to support the campaign. In any case, perhaps Burger King purposely planned these strange moves, in order to generate fodder for bloggers to chew on, since in all honestly, I am really, really craving a Whopper right now.

Read it here.  (And read my op-ed piece on service via Facebook here.)

New IP podcast

UCLA Professor Doug Lichtman has launched a new podcast, Intellectual Property Colloquium.  This is how he describes it:

The project is called the Intellectual Property Colloquium, and it is essentially an online audio program devoted to intellectual property topics. We aspire to be something like an NPR talk show, but focused on copyrights and patents, and aimed primarily at a legal audience. The programs are neither lectures nor debates. They are conversations, ideally thoughtful ones, with guests drawn from academia, the entertainment community, and the various technology industries.

Each program lasts one hour; is downloadable; and (the kicker) any lawyer who listens to our programs can earn (free) CLE credit in California, New York, and any state that accepts one of those through reciprocity. (We should soon be able to offer CLE in all the states, but for now the combination of California, New York, and reciprocity should cover most of our audience regardless.)

I host each program; and our first one, a lively conversation with Fred von Lohmann of the EFF, is up and ready to go. A schedule of up-coming shows is already posted on the site, as are a variety of subscription features that provide updates every time a new audio is available.

Subscribe to listen to the podcast here.

Taste we can believe in

Over at Madisonian.net, Ann Bartow highlights a trade mark parody we can believe in:

Is the DataPortability logo cursed?

TechCrunch's Michael Arrington reports that the DataPortability Workgroup is once again having legal problems over its logo:

The DataPortability Workgroup ... now faces its second legal challenge to, of all things, its choice of logo.

In February, Red Hat sent a cease and desist letter claiming trademark infringement over their Fedora logo. Instead of fighting Red Hat in court, DataPortability simply held a new logo competition and announced the winner last week.

With that behind them, the group has been focused on drafting technical best practices guideline and getting community feedback.

Today, though, the new logo has been challenged as well - this time by Vivendi Mobile Entertainment’s trademark agent, who claims to be “very surprised to notice your new logo for Dataportability which is very close and similar to their logo.” They add:

The mere comparison of the two signs is self-explanatory and we are sure that you will understand that our clients could not leave you to use such a logo in relation to identical of at least similar services.

Vivendi is using their mark in connection with a service called ZAOZA, a self-described “simple and fun architecture that permits the legal peer sharing of exclusive and quality content.” They are demanding that DataPortability immediately stop using the logo.

Dataportability co-founder Chris Saad says they aren’t going to fight this challenge, either, because it’s too distracting to their core mission:

We’re going to speak with our lawyers, tweak it slightly and move on. These C&D tactics are really disappointing and counterproductive… We’d really rather everyone focused on the Technical Best Practice Drafts we released last week.

Read more here.

Australian domain name transfer made easier

The Australian Trade Marks Law Blog reports that .au domain name transfer is to be made easier:

As of 1 June 2008, a new and more flexible registrant transfer policy comes into effect, allowing domain name registrants to transfer their domain name licence to another eligible entity for any reason. The new policy has been approved by the Australian domain name administrator .au Domain Administration Ltd (auDA) - the policy authority and industry self-regulatory body for the .au domain space.

Key Features of the New Policy

Exact details and wording of the new policy is not yet available. However, the following key features of the policy are available here and can be summarised as follows:

• .au domain names can not be registered for the sole purpose of resale;
• a 6 month holding period for newly registered .au domain names applies;
• after 6 months domain names may be offered for sale/transfer by any means;
• standard transfer forms will be used for processing transfers; and
• auDA will ask parties for voluntary and confidential disclosure of the sale method and price.

The current domain name registration policy including domain name eligibility criteria remain unchanged. Similarly, the new policy will have no effect on the current dispute resolution policy.

Read more here.

Trademark trouble for Google

Media Post's Just an Online Minute considers a series of trademark lawsuits against Google:

When Google decided four years ago to allow trademarked names to trigger paid search ads, the company had to have anticipated that litigation would result.

And it has. American Airlines, insurance giant Geico and computer services company Rescuecom are among those that have sued Google for trademark infringement. They’ve all complained that Google allows their rivals to bid to appear as a sponsored link when users type their names into the query box.

They tend to argue that they’ve built goodwill in their brand names and that it isn’t fair for rivals to capitalize on that by using those brands to trigger ads. Rescuecom went even further than that in a federal appellate court this week. In an argument before the Second Circuit, Rescuecom’s lawyer said that consumers who search on the company’s name expect to see the company — and only the company — in the sponsored results.

But that argument doesn’t appear to be supported by any empirical evidence. In fact, Eric Goldman, a professor at Santa Clara University School of Law, told MediaPost that studies show the contrary: People use brand names as shorthand for broad categories. Certainly in the offline world, people have long done so, using “xerox,” for example, synonymously with “copy.”

Another factor that Rescuecom — and American Airlines and the other litigants — aren’t considering is that people conduct searches for companies for a variety of reasons beyond simply wanting to navigate to retail sites. For instance, if people want to know about Rescuecom’s reputation, they probably don’t want to get that information from the company itself but from more objective sources. That’s one of the reasons why the digital rights group Electronic Frontier Foundation weighed in on the case, arguing that allowing companies the opportunity to bid on a trademarked term can help protect free speech.

Read more here.

Fox Business News misses out

News Corp loses its domain name battle over Fox Business News:

NEWS CORP.'S 6-MONTH-OLD FOX BUSINESS News has lost its battle for the same domain name.   

The World International Property Organization's Arbitration and Mediation Center has ruled that Florida businessman Derek Hodges, of Sebring, Fla., properly registered the domain name FoxBusinessNews.com in February 2007. Hodges runs Worldwide Directory Services, which resells domain names and also offers Internet marketing services.

Hodges had been using the name Fox Business News since 2002, but didn't register the domain name until Feb. 8, 2007--the same date that News Corp. CEO Rupert Murdoch announced its new business channel, then known as Fox Business Channel. Hodges said he had attempted to register the Fox Business News name in 2006, but wasn't able to at the time. Last year, news that Fox was planning a new channel prompted him to investigate whether he could still claim Fox Business News as a domain name. Fox didn't register the trademark for the name "Fox Business News" until last July.

The arbitration panel ruled that Hodges could continue to use FoxBusinessNetwork.com because he had presented evidence that he had used the term "Fox Business Network" for his company for several years. Hodges also has been known by the nickname "the British fox" since the late 1990s.

Read more here (from Media Post).

Trademarking nakedness

The Wall Street Journal Law Blog reports on an unusual case:

When the Law Blog strolls through Times Square and sees the so-called Naked Cowboy — the guitar-strumming street-singer whose uniform is limited to cowboy boots, a hat, and a pair of briefs — several questions occur to us: Doesn’t the Naked Cowboy get cold? When does the Naked Cowboy eat? Does the Naked Cowboy have a family?

But here’s a thought we never had: Does the Naked Cowboy ever worry about identity theft? How about trademark infringement?

Well, according to the New York Post, he indeed has law on the brain. The Naked Cowboy, whose real name is Robert Burck, is suing Mars Inc. for $6 million for dressing an animated M&M in Burck’s signature outfit and broadcasting it on a video billboard. While not quite a doppleganger, the animated M&M is reportedly dressed in a white cowboy hat, boots and briefs for several seconds of a nearly five-minute video that also features the candy in street scenes and as city icons, including King Kong and the Statue of Liberty.

“My initial response was like, ‘Wow that’s cool,’ ” said Burck, 37. “The artist seeks to create the world in his own image. Obviously I was overjoyed . . . . It took years for people not to say that’s a stupid idea. . . . All I’ve got is my underwear. It’s the most brilliant thing that’s ever been created from a marketing perspective. You can’t stop it.” Mars declined to comment to the Post.

Read more here.  And this is the Naked Cowboy:

What do Britons really value?

A fun story from The Guardian:

Porn? Sex? Britons value cruises much more

It used to be sex that mattered most, but the world of internet domain names was rocked by a more genteel pleasure yesterday as a tour operator made cruises.co.uk the UK's most expensive piece of dotcom property.

The website cruise.co.uk has paid the German travel company Nees Reisen £560,000 for the rival name cruises.co.uk. The price paid for that extra 's' in the address - called a domain name - dwarfs the last largest British dotcom domain deal, when recycle.co.uk was bought by City financiers ASAP Ventures for £150,000 in October.

The price for British domain names is still well behind the levels reached for US - or .com - addresses. Sex.com remains the world's most expensive domain name after it was bought for $12m (£6.1m). Many of the other top US names changed hands during the dotcom boom of the late 1990s including business.com for $7.5m and beer.com for $7m in 1999.

Read more here.

Surprising win for MySpace in domain name dispute

The Guardian reports on a win for MySpace:

MySpace has won the right to have the MySpace.co.uk domain name despite another firm having registered it six years before the social networking website launched.

The ruling, by domain registry Nominet's dispute resolution service, has caused controversy in the industry because Total Web Solutions of Stockport registered the myspace.co.uk name in 1997, long before the US social networking website launched.

"This dispute resolution service decision is counter-intuitive at first sight and serves as a warning that domain registrations are not guaranteed and need to be secured by pro-active management as well as a clear understanding of the dynamic nature of the industry," said Jonathan Robinson, the chief operating officer at web services company NetNames.

However, the ruling, made by independent expert Antony Gold, found that while myspace.co.uk had initially been used to offer email services and mini-websites to subscribers it had changed its model to exploit MySpace's popularity.

TWS started to use the myspace.co.uk address to lead to a "parked" web page with advertisements for social networking websites including MySpace.

The arbitrator decided that this was evidence of abusive registration, that TWS was profiting unfairly from the association with MySpace.

MySpace.co.uk was awarded to News Corporation-owned MySpace as a result.

Read more here.

Google to kill domain tasting

Good news from Google, according to the Domain Tools Blog:

A confidential informant says Google will stop monetizing all domains if they are less then five days old. This potential new policy change by Google could stop all Domain Tasting in its tracks. The Add Grace Period (AGP) is a time period when registrars can delete a domain at no cost, but in this time frame a registrant could register millions of these temporary domains and place Google Adsense for Domains on them. The result is the ability to produce millions of temporary websites that literally generate millions of dollars in income per week for Google. It was disclosed in court that one partner that Google had was generating as much as $3 million dollars a month from the practice and that was after Google’s revenue share. Oversee.net and other companies have been using this practice for years and it will have a direct impact on them. The gravy train of free money might be coming to a halt very fast. This policy change at Google should be announced to the channel partners soon and it will have a huge echoing impact on the Industry.

The Good news is that the Quantity of advertising will be spread among fewer domains now and so those domain owners that actually own real full domains should receive more money if bid prices start to rise as a result of this. However some advocates of Domain Tasting say that perhaps no one will be able to serve the niche for some ads and no one will make money on the unserved ads.

I think this is a return of the “Be Good” motto Google had a few years ago.

Read more here.

Cyberlaw and cyberlawgs

Blogging for the Electronic Frontier Foundation, Corynne McSherry looks at a rather "silly" trademark case:

Eric Menhart may call himself a cyberlawyer, but we think he has a lot of learn about cyberlaw -- and common sense. Menhart is the author of a blog about cyberlaw issues called, logically if not innovatively, "Cyberlawg."  (As he says in the top right  corner, “Cyberlawg = Cyberlaw + blog.”)  And he is "principal  attorney" in a firm called "CyberLaw P.C." OK, OK, we get it, he practices technology law. Based on this, he’s applied for a trademark on the use of the term “cyberlaw” in connection with the practice of, um, cyberlaw. That's like a soda company claiming a trademark in the use of the word soda in connection with the sale of soda. Or an apple farmer claiming a trademark in the use of the term apple in connection with the sale of apples. Or ... well, you get the picture.

What is worse, he's threatening other lawyers with legal action based on this silly "mark." Menhart has demanded that attorney Michael Grossman change the title of his blog about technology law, "CyberBlawg."  Presumably Stanford's Center for Internet and Society, with its Cyberlaw Clinic, as well as the Berkman's Center for Internet and Society, and Elliot Zimmerman's blog, CyberLaw.info, are in Menhart’s sights as well.

I wish I could say I was surprised by this one, but such overreaching invocations of IP rights are all too common -- even where, as in this case, there are no actual "rights" to speak of. But an IP lawyer should know that courts (and trademark examiners, and many tech companies that might be potential clients) don't look kindly on efforts to abuse trademark law to control everyday language. Here's hoping Menhart figures that out fast.

Read more here.

Why not auDRP?

Yesterday I noted a post by David Jacobson on Ricky Ponting commencing proceedings in the Federal Court about an unauthorised website (see here).  David Jacobson wondered why Ricky Ponting chose litigation over the domain name disputes resolution procedure administered by .auDA.  Today David Starkoff has the answer.  Read more here.

 

Cricketing domain name dispute

At Australian Regulatory Compliance Review, David Jacobson comments on an interesting domain name dispute:

Australian cricket captain Ricky Ponting has lodged an application (set for hearing in the Federal Court on 8 February 2008) claiming misleading and deceptive conduct against the operator of a website which described itself as "the official Ricky Ponting site": Ricky Thomas Ponting v Kevin Leonard Consulting Pty Limited (ACN 087 382 858) & Anor) (also see Computerworld story)

It is not clear why Ricky Ponting has chosen litigation rather than the domain name disputes resolution procedure administered by .auDA.

Read more here.

More and more domain name disputes

The Wall Street Journal Law Blog looks at the rising numbers of domain name disputes:

Any securitization lawyers out there looking for work? We’ve got a suggestion. Litigate domain-name disputes!

We love domain-name disputes. You know, like when Nutrisystem files a complaint against some cybersquatter who registered www.nutrisystems.com? Or the when F. Hoffmann-La Roche, the maker of Valium, files a grievance against someone who registered www.prescriptionvalium.com? Or when The Donald goes after some dude who registered www.trumptajmahal.com?

There’s something about them that takes us back to those crazy dot-com days at the turn of the millenium. But who knew that these disputes are hotter than ever? It turns out that the number of complaints filed by trademark owners against cybersquatters under the “Uniform Domain Name Dispute Resolution Policy” (UDRP) hit an all-time high in 2007, according to this data from the World Intellectual Property Organization. Check this out:

1999: 1
2000: 1,857
2001: 1,557
2002: 1,207
2003: 1,100
2004: 1,176
2005: 1,456
2006: 1,824
2007: 2,156

We checked in with Doug Isenberg ... a lawyer in Atlanta who runs The GigaLaw Firm, a solo practice specializing in representing companies in domain-name disputes and other areas of Internet law. Isenberg, who also maintains a blog on these issues called GigaLaw, attributes the ever-increasing number of disputes to the continued growth of companies doing business on the Web and the growing number of cyberscams.

Read more here.

Arrington: "Run the business clean, and build your own brands and community. That’s my advice."

On Christmas Eve, I posted this:

techPresident and Tech President

The website techPresident is upset by TechCrunch running a "Tech President Primary" and has emailed Michael Arrington of TechCrunch outlining their concerns.  After a fiery initial post complaining about the use of the term "Tech President" as "identity theft" (see here), techPresident has now adopted a gentler position:

... the basic issue for us is our concern that TechCrunch may be inadvertently stirring up confusion as to whether our nonpartisan blog, TechPresident.com, is holding a primary or endorsing a candidate. To be clear, the purpose of my first email to Michael Arrington was to politely, I thought, ask him to make a clarification to this end. When we didn't hear anything back, and saw an additional subsequent post, we decided that we had no choice but to make our concerns public.

...

As for whether there is a copyright or trademark violation, I am honestly not interested in the legal interpretation so much as I'm interested in seeing people do the right thing. Several experts have convinced me that the legal argument is murky at best over whether or not TechPresident is a copyrightable term, or a meaningful trademark. Fine, I withdraw my complaints against TechCrunch violating copyright or trademark.

What I still am concerned with is plain old public confusion. The simple and decent thing for TechCrunch to do is to post some kind of disclaimer, in the relevant places, making clear that its Tech President Primary and Endorsement are not connected to this blog. Then we can both go back to doing what is far more important, which is getting the political system to pay more attention to our common issues.

Read more here. While I agree the arguments in copyright and trademark law are weak for techPresident I do understand that confusion could be caused by TechCrunch using that same phrase.  Indeed, as an avid reader of both sites, I was confused when I saw the "Tech President Primary" promoted on TechCrunch, and up until reading techPresident's angry post I was uncertain as to whether any relationship existed between the two sites.  So techPresident may have initially overreacted but I understand their frustration (even though there is no obvious legal option for techPresident).

Read it here. 

Given this, I found Michael Arrington's recent post WebGuild Using Questionable Tactics To Promote Events intriguing and possibly a little hypocritical.  Here is an extract of what Michael Arrington had to say:

Are you going to the Web 2.0 Conference later this month? No, not the one put on by O’Reilly in San Francisco. I’m talking about the Web 2.0 Conference & Expo put on by WebGuild later this month.

Or do you plan on attending the popular Future of Web Apps Conference? Not the one put on multiple times per year by Carsonified. This is a different Future of Web Apps conference, also held by WebGuild.

Confused? So am I.

...

Putting legal issues aside, This is still not ok. O’Reilly and Carsonified took a lot of financial risk and time in building up their brands around their conferences. For someone else to come in, take the brand and put on their own conference around it is just not ethical. To compare this with people downloading music is a red herring. A better analogy would be a new band calling themselves U2 and selling CDs under that name. It just smells off.

In fact, attendee confusion is the biggest issue I have with the event. Someone new to the community may have heard about the Web 2.0 Conference or The Future Of Web Apps, click on one of the spam links and buy a ticket for an event they think is something else. I asked Baran if he thought some people might be confused by his conference names. His response was “I don’t know.”

The confusion issue is real. I actually first emailed Ryan Carson to ask him if he was putting on the Future of Web Apps conference in partnership with WebGuild. Given how immersed I am in this community, I’m pretty sure that if I was confused, others will be, too.

Apart from these issues, WebGuild seems like a legitimate organization. They hold monthly events with high profile speakers at Google and elsewhere. Baran claims they are a non-profit organization, and that he takes no salary from his position there.

So why wade into grey areas of trademark infringement and blog spamming?  Run the business clean, and build your own brands and community. That’s my advice.

Read the full post here.  I'll let you draw your own conclusions ...

Some Christmas IP

At The Huffington Post T Jeremy Gunn identifies the "real Christmas grinch":

Did you know that "Help Save Christmas" ®  is a registered trademark of Liberty Counsel (Reg.No. 3,273,650)? It's true. If anyone tries to print "Help Save Christmas" ® without noting Liberty Counsel's trademark on the phrase, they just might sue you.

That's not all.

Those caring lawyers over at Liberty Counsel have also registered "I [heart] Christmas." ® Reg.No. 3,273,656.

In another burst of tough love, the Alliance Defense Fund has now officially trademarked "Merry Christmas. It's okay to say it. ™" Sort of makes you afraid to say it, doesn't it?

I'm not making this up. 

So be careful what you say.

The Christmas Enforcers, who have been selling the myth of a supposed 'war on Christmas' for years now are on the loose again. They are going to make you take just the right dose of Christmas. Hold the cheer.

For the past few years, having forgotten the real "spirit of Christmas," a rag-tag bag of Politically Correct Christmas Crusaders have taken upon themselves the role of patrolling stores and byways to see who is saying "Merry Christmas" in just the right way and making a list of who should be punished.

Read more here.

techPresident and Tech President

The website techPresident is upset by TechCrunch running a "Tech President Primary" and has emailed Michael Arrington of TechCrunch outlining their concerns.  After a fiery initial post complaining about the use of the term "Tech President" as "identity theft" (see here), techPresident has now adopted a gentler position:

... the basic issue for us is our concern that TechCrunch may be inadvertently stirring up confusion as to whether our nonpartisan blog, TechPresident.com, is holding a primary or endorsing a candidate. To be clear, the purpose of my first email to Michael Arrington was to politely, I thought, ask him to make a clarification to this end. When we didn't hear anything back, and saw an additional subsequent post, we decided that we had no choice but to make our concerns public.

...

As for whether there is a copyright or trademark violation, I am honestly not interested in the legal interpretation so much as I'm interested in seeing people do the right thing. Several experts have convinced me that the legal argument is murky at best over whether or not TechPresident is a copyrightable term, or a meaningful trademark. Fine, I withdraw my complaints against TechCrunch violating copyright or trademark.

What I still am concerned with is plain old public confusion. The simple and decent thing for TechCrunch to do is to post some kind of disclaimer, in the relevant places, making clear that its Tech President Primary and Endorsement are not connected to this blog. Then we can both go back to doing what is far more important, which is getting the political system to pay more attention to our common issues.

Read more here.  While I agree the arguments in copyright and trademark law are weak for techPresident I do understand that confusion could be caused by TechCrunch using that same phrase.  Indeed, as an avid reader of both sites, I was confused when I saw the "Tech President Primary" promoted on TechCrunch, and up until reading techPresident's angry post I was uncertain as to whether any relationship existed between the two sites.  So techPresident may have initially overreacted but I understand their frustration (even though there is no obvious legal option for techPresident).

Google's Law

Greg Lastowka has published an interesting article titled "Google's Law":

Lastowka, Greg, "Google's Law" (September 2007). Available at SSRN: http://ssrn.com/abstract=1017536

Abstract: Google has become, for the majority of Americans, the index of choice for online information. Through dynamically generated results pages keyed to a near-infinite variety of search terms, Google steers our thoughts and our learning online. It tells us what words mean, what things look like, where to buy things, and who and what is most important to us. Google's control over results constitutes an awesome ability to set the course of human knowledge.

As this paper will explain, fortunes are won and lost based on Google's results pages, including the fortunes of Google itself. Because Google's results are so significant to e-commerce activities today, they have already been the subject of substantial litigation. Today's courtroom disputes over Google's results are based primarily, though not exclusively, in claims about the requirements of trademark law. This paper will argue that the most powerful trademark doctrines shaping these cases, initial interest confusion and trademark use, are not up to the task they have been given, but that trademark law must continue to stay engaged with Google's results.

The current application of initial interest confusion to search results represents a hyper-extension of trademark law past the point of its traditional basis in preventing consumer confusion. Courts should reject initial interest confusion doctrine due to its tendency to grant trademark owners rights over search results that could easily operate against the greater public interest. On the other hand, the recent innovation of trademark use doctrine improperly relieves trademark law of any role in the supervision of the shape of Google's search results. The absence of any state involvement in the shape Google's results will effectively cede the structure of our primary online index to Google's law. Google may enjoy substantial public goodwill, but what is best for Google will not always be what is best for society.

Part I of this article describes the history of Google and its business model. Google is not the only search engine today, but it is the leading search engine in terms of United States market share. Additionally, Google is playing the most important role today in search engine litigation. It is a unique search engine in many respects. During its evolution, Google followed a very different path than many of its competitors. Today its competitors are largely imitating its model, yet are unable to dethrone its centrality in search. Understanding how Google rose to prominence is essential to understanding its motives and how it might act in the future.

Part II of this article sets forth the contemporary law pertaining to search results. It begins with a short discussion of recent (failed) attempts to regulate Google's results through laws other than trademark. It then describes current theories of trademark law. It concludes by summarizing how trademark law has been applied to search engines, starting with early meta tag cases and concluding with Google's current attempts to insulate itself from liability under an expanded doctrine of trademark use.

Part III criticizes the current application of trademark law to search engines. It argues that the judicial innovations of both initial interest confusion and trademark use are inconsistent with the traditional purpose of trademark law and the new realities of the e-commerce marketplace. It concludes that a simple focus on the likelihood of confusion standard, which some courts have already supported, is overdue. It concludes by explaining why, despite the fact that trademark law today will likely permit Google's current practices, Google's bid for the carte blanche freedom permitted by trademark use doctrine should be rejected by courts. In its relatively new role as a protector of the social value of indices, trademark law must retain the ability to curb potential abuses of the commercial power enjoyed by Google.

Two significant decisions

There have been two significant decisions from the US this week - and both constitute bad news for Perfect 10. 

In the first, the US Supreme Court turned down Perfect 10's appeal of a decision holding that credit card companies were immune from liability for users' violations of state intellectual property laws.  From Media Post:

The Court let stand a ruling by the 9th Circuit which held that the federal Communications Decency Act shielded Web companies for users' violations of laws in California and other states. If that expansive opinion is followed by other federal courts, Web companies will be shielded from liability in a wide array of lawsuits stemming from state intellectual property laws, says Eric Goldman, an assistant professor at Santa Clara University School of Law and director of the High Tech Law Institute.

"This leaves on the books a very important 9th circuit ruling," Goldman says. "It wipes out a bunch of claims."

Perfect 10, which sells images of models to paid subscribers, sued credit card company CC Bill and Web hosting company CWIE for enabling piracy by doing business with sites that sold pirated images. Perfect 10's theory was that CC Bill and CWIE violated trademark law in California and other states by providing services to the infringing companies.

CC Bill and CWIE claimed immunity under the federal Communications Decency Act, which gives Web companies immunity from liability for information published by other content providers. That statute contains an exception for intellectual property claims, but the 9th Circuit held that the exception applies only to federal claims and not those brought under state law.

If other courts follow the 9th Circuit ruling, many state intellectual property laws could effectively be gutted, including Utah's recent Trademark Protection Act. Enacted earlier this year, that law attempts to ban marketers from bidding to appear as sponsored links when people conduct searches for the names of rival companies. Although that law was quietly passed in March, it hasn't yet gone into effect.

Read it here.

In the second, the 9th Circuit held that Google can display tiny photos in search results, even when the images are copyrighted, under the fair use doctrine.  From the Los Angeles Times:

The U.S. 9th Circuit Court of Appeals on Monday reaffirmed its earlier support for the socially redeeming value of searching the Internet for nudie pictures.

The San Francisco court, in reviewing a case it initially considered in May, reiterated its finding that Google could display tiny versions of photographs by Perfect 10 Inc., a Beverly Hills-based adult publisher, in search results, even when those images were copyrighted.

The court focused on the legal question of which party holds the burden of proving whether Google's use of Perfect 10's images constituted a "fair use" under copyright law. Fair use is a defense that allows the use of copyrighted works, under certain circumstances, without the owner's consent.

The appeals court initially said Perfect 10 had the burden of proving that Google couldn't make its case. It corrected itself Monday, saying it was up to Google to articulate its defense, even in a case such as this one, which dealt with whether the courts could issue a preliminary injunction.

Nevertheless, the court said, Google met that test. The justices ruled that a larger public interest in searching for information -- or, in this case, images of partially clad women -- amounted to a "transformative use" that trumped Perfect 10's copyright claims.

The small legal tweak did not change the appeals court's original May decision.

The court overturned part of a ruling by the U.S. District Court in Los Angeles, which had found that Google's thumbnail-sized images of Perfect 10's nude models constituted infringement. The lower court imposed an injunction barring the use of the images, but the appeals court invalidated that decision.

It also asked the district court to reconsider the question of whether Google or Amazon .com Inc., which also was named in the suit, could be held liable for damages because they linked to websites that displayed Perfect 10's copyrighted images without permission. The 9th Circuit judges wrote that the lower court erred and needed to consider whether the search engines knew of the infringement but failed to take simple steps to stop it.

Read more here.

Red Hot Chili Peppers sue Showtime over Californication

From The Huffington Post:

The Red Hot Chili Peppers on Monday sued Showtime Networks over the name of the television series "Californication," which is also the name of the band's 1999 album and a single on it.

The lawsuit alleges unfair competition, dilution of the value of the name and unjust enrichment, claiming the title is "inherently distinctive, famous ... and immediately associated in the mind of the consumer" with the Red Hot Chili Peppers.

Read it here.

Hallmark responds to Hilton lawsuit

From Media Law Prof Blog:

When Paris Hilton sued Hallmark Cards over its use of her image in a greeting card, she claimed that it had misappropriated her identity, invaded her privacy, falsely represented that she endorsed the product, and infringed her trademark, among other things. Now the company has responded. Says Hallmark, "Hilton apparently believes that she can control not only how she is commented upon, but who can say the words "that's hot." The law, however does not allow Hilton to quash such a portrayal, nor does it grant her the power to stop others from using her purported catch phrase to poke fun at her. Hilton's claims fail as a matter of law, and each should be dismissed without leave to amend."

Read it here.

An OpenSocial.com cybersquatter?

Mashable makes an interesting point:

You may have noticed th awful URL for Google’s OpenSocial website:  http://code.google.com/apis/opensocial.   Looks like they didn’t get OpenSocial.com in time (or at all). 

The OpenSocial domain is actually owned by an Australia-based company called VastPark, which ironically (or not so much) has visions of a platform similar to Google’s. VastPark would actually operate in virtual worlds, including Second Life and There.com. VastPark CEO Bruce Joy started is company years ago with this in mind.

What VastPark does is let you join virtual worlds and connect with others in other places. It’s got a strong focus on 3D, which is more like Second Life than many other web-based virtual worlds that have grown in popularity. Nevertheless, Venturebeat reports that VastPark hasn’t quite gained much traction. 

Joy is planning on a trip to Silicon Valley to see if he can raise as much as $15 million, but now that his domain name has gained so much attention, could he be thinking of selling? Probably not. The notability of his domain name alone could get him the attention he’d like from the press and others. And selling his domain name could change much of what Joy’s already built up towards his own OpenSocial.

Read more here.

Second Life Patent and Trademark Office

Virtual IP governance in Second Life.  From Blawg IT:

According to Virtually Blind, Second Life players FlipperPA Peregrine (aka Tim Allen) and Michael Eckstein have opened up a virtual Second Life Patent and Trademark Office (SLPTO) within the video game. This comes on the heels of six Second Life gamers suing Rase Kenzo (aka Thomas Simon) for stealing their intellectual property. The allegations range from Unfair Competition, to Copyright Infringement, to Civil Conspiracy. The designs allegedly stolen include clothing, shoes and beds.

The SLPTO does not have any immediate plans for generating income, its owners have wisely stepped back and decided to let Second Life denizens choose how the SLPTO can best be utilized.

Read more here.

g.cn

According to Valleyway, Google has purchased the shortest possible domain name to make it easier for Chinese users to find Google: g.cn:

Interestingly, "g.com," along with most other single-letter and single-digit domain names are reserved by the Internet Assigned Numbers Authority. The IANA is the master arbiter of domain names and addresses on the Internet. There are a few one-letter domain names out there, though: Z.com is owned by Nissan, Q.com by Qwest, and X.com is owned by PayPal. There was a proposal floated a few years ago to auction off the one-letter domain names, but nothing has come of it.

Read it here.

Open letter to WIPO

Via Michael Geist: IP Watch posts a open letter to the WIPO Secretary General that demonstrate the enormity of the problems at the UN institution.

"You Say Hulu. I Say Lulu. Let’s Take the Thing to Court"

From the New York Times:

NBC Universal and the News Corporation can’t seem to catch a break when it comes to a name for their new video-sharing service.

      

At first, a name was not a priority. The companies, saying they were fed up with piracy of their movies and television programs on YouTube, unveiled plans for the Web site in March and simply called the venture “New Site.” A formal name would come later.

That antiseptic moniker bored reporters and bloggers, who make up their own name: “YouTube Killer.” Catchy, but much too aggressive, the two companies warned.

...

Then, on Aug. 29, came a new Web site with a message from Jason Kilar, the chief executive of the planned site: “Welcome to Hulu!”

Huh?

Mr. Kilar explained that the name was picked because it is “short, easy to spell, easy to pronounce and rhymes with itself.” He added, “Hulu strikes us as an inherently fun name.”

But a tiny company in North Carolina was not laughing. The firm, an Internet publisher called Lulu, saw Hulu as a blatant attempt to trample on its good name. Lulu Enterprises filed a trademark infringement lawsuit against Hulu on Wednesday in Federal District Court in Raleigh.

In the lawsuit, Lulu’s founder, Bob Young, accused the media giants of unfair competition and cyberpiracy. “Widespread consumer confusion will occur and Lulu will be irreparably harmed,” Mr. Young said in the complaint.

...

For now, both sides are enjoying a spike in attention from Lulu v. Hulu. And while Hulu is staying quiet, Mr. Young of Lulu has been having a great time noting that the word “hulu” in Swahili means “cease and desist”.

Read more here.

Who owns your website?

Brett Trout asks, who owns your website?:

Think you own these things?

The design of your website;
The software code behind it;
Your domain name;
The graphics;
The content;
The terms of use and privacy policies.

Just because you paid for it does not mean you own it.

Read more here.

Olympic logos

Given all the recent controversy over the London 2010 Olympic logo (see here), Communication Designer Hitesh Mehta has compiled 50 Olympics logos from 1924 to 2016.  View all the logos here.

I think it is hard to beat Sydney and Nagano:

 

Photographing the Sydney Opera House

Question: does the law allow you take a photograph of the Sydney Opera House and then sell that photograph to someone else?

Answer: maybe, maybe not ... depends on who you ask and who you listen to ...

Let me explain ...

During the week I was sent a link to WebMink, a blog run by Simon Phipps, where he writes about this dilemma:

Opera House, Dawn; Copyright policy, Night-time

If you're a regular reader, you may be aware that I sell some of my photographs for commercial use over on iStockPhoto. It's earns pennies, but I like the thought of actually heading in the direction of my aspirations.

Anyway, I think this photo of Sydney Opera House is quite good, so I submitted it to iStockPhoto. I've recently received a rejection from them on the grounds that it would be a breach of Australian copyright law to sell this image. When you consider that I can stand in public places throughout Sydney and take photographs that include the Opera House, this restriction seems pretty ridiculous.

Read it here.  In the comments section following this post there is a letter from the Corporate Counsel of the Sydney Opera House (SOH), explaining that the Sydney Opera House Trust "vigorously protects the commercial exploitation of its intellectual property and does not approve use of the SOH brand in commercial contexts where there is no association between the relevant business and SOH":

Dear Simon

Thank you for your inquiry dated 28 May 2007 regarding regarding publishing of Sydney Opera House (SOH) images on the image library, iStockphoto. We understand that iStockphoto operates an image library where members publish their photos which are then licensed to third parties on a royalty-free basis. We welcome visitors to the Sydney Opera House precinct to photograph, film or video images for personal use only.

By publishing photos of SOH on a stock library, such as iStockphoto, this would be commercial use of the SOH brand (Commercial Use) and the use of our brand is something that we take very seriously. Where photographs of SOH are sold or licensed by you to third parties from iStockphoto for advertising, marketing purposes and other commercial purposes, that would also be making Commercial Use of the SOH brand.

Importance of SOH brand to Sydney Opera House
The SOH brand is a very powerful brand and is well recognised all around the world. This means that the brand is one of the most important assets of the Sydney Opera House Trust. The Sydney Opera House Trust manages the use of Sydney Opera House’s image and brand on behalf of the New South Wales Government. The Trust vigorously protects the commercial exploitation of its intellectual property and does not approve use of the SOH brand in commercial contexts where there is no association between the relevant business and SOH.

The Trust does this for two reasons - first - to protect the integrity of the brand and second, to protect its commercial value. As a non-profit arts organisation, the Trust is heavily reliant on sponsorships to support its operations and it offers brand association to sponsors of a certain value. In all cases however a sponsor is only permitted to link its product with the SOH brand in a manner that is approved by SOH and which aligns with SOH brand values.

We hope that you can appreciate that our image and exclusivity are our most valuable assets commercially, so it is important that we protect them for ourselves and our valued sponsors.

Commercial Use of SOH images
Where you do not have any association with SOH at all, the Commercial Use of SOH images by you may suggest that there is a connection or association between you and SOH, where in fact there may be none. We would also object to your licensing or selling SOH images to third parties as their Commercial Use of the images would suggest those third parties have an association with SOH, or have been authorised by SOH to use depictions of the Sydney Opera House in promoting them and/or their products or services - which may not be true. The Australian Trade Practices Act 1974 (Cth) prohibits conduct which is misleading or deceptive in this regard.

Intellectual property rights of Sydney Opera House
SOH owns copyright in a large number of images of SOH (or has negotiated permission to use those images from their owners). Some examples can be found on our image bank at http://www.sydneyoperahouse.com/sections/media_room/image_bank/?sm=5&ss=22. These images of SOH may be used by the media but not for advertising or other commercial uses.

SOH also maintains trade mark protection for a large number of trade marks including representations of SOH. Therefore, commercial use of certain images of SOH may infringe SOH's registered trade marks.

Reasons for removal of your image
We understand that some stock libraries remove infringing images posted by their members, often generating an email (often automated) which lists copyright infringement as the issue. Where your stock library removes SOH images and notifies its members of the reasons for their removal, we would prefer that those reasons refer to our intellectual property rights generally (as outlined above) - rather than just copyright infringement (which does not convey the range of intellectual property rights and other protection SOH relies on). However we understand that this is an issue for your stock library to amend. In this regard, we will contact your stock library to inform them of the above.

Thank you for your inquiry and we hope the above information answers your question. 

Regards

CAROLINE ANG
CORPORATE COUNSEL
SYDNEY OPERA HOUSE

Again, you can read it here.  The SOH seems to be relying on their vague "intellectual property rights generally" rather than just copyright infringement.  Presumably this is because Australian copyright law is clear; it is not an infringement of Australian copyright law to take a photograph of a building.  See s 66 of the Copyright Act 1968 (Cth):

The copyright in a building or a model of a building is not infringed by the making of a painting, drawing, engraving or photograph of the building or model or by the inclusion of the building or model in a cinematograph film or in a television broadcast.

Further, there is nothing in the Copyright Act that would make profiting from that photograph unlawful. 

So, as it not a breach of Australian copyright law, it is necessary consider the other arguments advanced by the SOH in that letter. 

First, the SOH argues that the law prohibits the commercial use of an image of the Sydney Opera House.  In particular, the SOH suggests that such commercial use would contravene the Trade Practices Act 1974 (Cth).  Section 52 of the Trade Practices Act provides:

(1)  A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2)  Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).

No definition of "misleading" or "deceptive" is given in the Act, so the meaning of those terms has been developed through case law.  Generally, conduct is misleading or deceptive if it "leads into error" or is likely to do so.   (For a good summary of the case law, see Equity Access Pty Ltd v Westpac Banking Corp (1989) 16 IPR 431 at 440-441 per Hill J.)  The argument advanced by the SOG appears to be that the commercial use of an image of the SOH would suggest that Simon Phipps and/or iStockphoto has an association with SOH, or has been "authorised by SOH to use depictions of the Sydney Opera House in promoting them and/or their products or services".  In my opinion, this is a very tenuous assertion and the SOH would struggle to establish that a third party taking a photograph and then selling that photograph would give rise to such an association as I don't believe that it would be a commonly held assumption that you would need the permission of the SOH to take a photograph of the SOH.  Furthermore, I think a similar conclusion would be reached under s 53(c)&(d) of the Trade Practices Act or the tort of passing off.

Second, the SOH argues that the "commercial use of certain images of SOH may infringe SOH's registered trade marks".  Again, using a photograph of the SOH is highly unlikely to cause confusion that that photograph was sponsored by the SOH. (See ss 43 and 120 of the Trade Marks Act 1995 (Cth).)

Basically, both the Trade Practices Act argument and the trademark argument depend upon the assumption that the commercial use of an image of the SOH connotes a connection, sponsorship or endorsement to or from the SOH.  I don't believe that assumption could be established in court.  Indeed, according to a recent article in The Australian newspaper, looking at whether Telstra could use images of Uluru and the SOH as part of its Second Life island, this argument has apparently never been tested in court:

Telstra hit over virtual Uluru

Simon Canning
May 24, 2007

TELSTRA is being investigated by Uluru's administrators and the Sydney Opera House Trust after cashing in on the images of Australia's two most famous landmarks as part of its massive investment in the online world Second Life.

Telstra's move is focusing legal minds on the commercial use of images in the booming area of virtual worlds, with thousands of Australians visiting Telstra's virtual "island" - known as The Pond - each day.

And now tribal elders are also wrestling with the implications of the sacred sites being used for commercial purposes online as significant questions begin to emerge about famous landmarks such as the Opera House, Sydney Harbour Bridge and Uluru being used in websites and games.

The Sydney Opera House has also revealed it is investigating commercial exploitation on the Telstra site.

...

The Sydney Opera House Trust also keeps a tight rein on the commercial exploitation of images of the building, which is one of the most recognised in the world.

"We are looking into the use of the Opera House image on that website at the moment and that's all we have to say," an Opera House spokesman said.

"It's very new to us."

Tony Anisimoff, a partner at commercial and intellectual property law firm Anisimoff Davenport Solicitors, which specialises in marketing and advertising issues, said the whole issue of recreating iconic buildings and sacred sites in commercial websites and games was a grey and untested area.

Mr Anisimoff said that in general copyright only protected blueprints and not the buildings themselves.

"The law does not recognise any such thing," he said.

"I know the Sydney Opera House Trust does occasionally object to the use of the Opera House and puts forward an argument that it's such an iconic commercial building that its use in a certain context implies an association, a sponsorship or an endorsement. But that sort of argument has never been run in court."

Read the full article here.  As I've outlined above, I think that that sort of argument is likely to fail.  However, it is interesting to note the different legal position between Uluru and the SOH.  The taking of photographs of Uluru for commercial purposes is regulated by the Environment Protection and Biodiversity Conservation Regulation 2000 (Cth). 
To take photographs in a Commonwealth reserve for commercial purposes, a photographer needs to:

• Contact the Commonwealth reserve and obtain a permit to take photographs for commercial purposes by paying the specified fee and entering into a Location Agreement; and
• Abide by the conditions imposed upon commercial photographers in the reserve by the Director.

If a photographer breaches a Location Agreement (or does not enter into one), a ranger or warden may require
him or her to hand over all copies of any photographs taken and any camera or other device used to take them.  (For more information, see the Australian Copyright Council Information Sheet G11.)

If the SOH wanted similar protection, it could lobby the Federal or New South Wales Government to introduce legislation or regulation that would prohibit the taking of photographs of the SOH for commercial use, except as authorised by the SOH.  Interestingly, there is already a NSW regulation that prohibits the use of any "camera (whether photographic, cinematic or video), for a commercial purpose" in a public area of the Sydney Harbour Foreshore, except as authorised by the Sydney Harbour Foreshore Authority.  (See Reg 4(d) of the Sydney Harbour Foreshore Authority Regulation 2006 (NSW).)  However, as the SOH is not part of the "Sydney Harbour Foreshore" as defined in the Sydney Harbour Foreshore Authority Act 1998 (NSW), this regulation does not apply to the SOH. 

In conclusion, it seems to me that the letter from the Corporate Counsel from the SOH is largely legal bluster and bravado.  Selling the photo to iStockphoto would not infringe Australian copyright law, and it is highly unlikely (although admittedly it has not been tested) to infringe either the Trade Practices Act or the Trade Marks Act.  It is worth noting, however, that the SOH could in the future seek from government legislation or regulation that would restrict the commercial use of images of the SOH.

Multilingual domain names

Michael Geist's recent column looks at the focuses on the delays associated with establishing multilingual domain names (often referred to as internationalized domain names):

Imagine if each time a Canadian Internet user entered an email or website address, they would be required to include a Chinese or Cyrillic character.  For millions of non-English speakers around the world, this is precisely what they experience when they use the Internet as the domain name system is unable to fully accommodate their local language.

Since their inception, domain names have been largely confined to ASCII text, based on a Roman character set used in the English language.  While this works well for people familiar with those characters, thousands of other language characters - from French accents to the Greek alphabet to Japanese Kanji - are not represented. This creates a significant access barrier for non-English speakers, who are forced to use the Roman characters for most aspects of their Internet addressing.

The Internet Corporation for Assigned Names and Numbers (ICANN), the agency responsible for administering the domain name system, has long pledged to remedy this issue by creating “internationalized domain names” (more appropriately described as multilingual domain names).  Indeed, nearly seven years ago the ICANN board passed a resolution recognizing "that it is important that the Internet evolve to be more accessible to those who do not use the ASCII character set."

Notwithstanding its stated commitment to multilingual domains, the issue has languished, a victim of indifference and even occasional hostility from ICANN leadership.

Read more here.

Trademarking "fuck"

The Orlando Weekly looks at the battle over your right to trademark dirty words:

Take a guess what they sell at www.fuckingmachines.com. Or just go to the site.

Once you verify that you are 18 or older, and that there are no local laws prohibiting you from viewing online porn, the site directs you to a catalog of every kind of sex toy imaginable, from vibrators to strap-ons to bondage gear. If you’re in the mood for some instant gratification, there are links to other web porn sites. It’s pretty much what you would expect these days on the Internet. The site went live on Sept. 25, 2000. In July 2005, the San Francisco-based company that owns it, Cybernet Entertainment LLC, asked the United States Patent and Trademark Office to trademark the word “fuckingmachines.” That’s standard practice for any business that wants to protect its interests.

Cybernet’s request met the government’s most preliminary standard: No one else was using the word “fuckingmachines.” But it didn’t clear another, more important hurdle: The patent office believes the word “fuck” is “scandalous,” and won’t allow Cybernet owner Peter Acworth to trademark it, or any variation of it.

...

According to the office’s website, there have been 39 trademark petitions that include the word “fuck,” five that have “fucking” – including one attempt to trademark the word itself – one with “cunt” and at least 50 with “shit,” again including at least one person who tried to trademark the word itself. None have been approved, though a handful of cases, like “fuckingmachines,” are still pending. “Bitch,” by the way, has been allowed in most cases. There are at least 135 approved trademarks that include the word “ass.”

But Acworth was also denied a trademark for “whippedass,” though that decision was later reversed.

His Altamonte Springs–based attorney, Marc Randazza, says another client had two trademarks refused because they had the letters “BS” in them.

“The trademark office has gone off the deep end with 2(a) rejections,” Randazza says, referring to Section 2(a), 15 USC §1052(a), which forbids trademarks with “immoral, deceptive, or scandalous matter.”

He thinks the rejection is unconstitutional. Randazza – who works for the firm Weston, Garrou, DeWitt & Walters, which is frequently involved in free-speech cases – is fighting the federal government for your right to trademark any dirty word you please. And his filing in the case is one of the most entertaining legal documents you’re likely to come across.

Read more here.