The MTTLR Blog

The recent controversy over Wikilinks‘ online posting of internal war documents (aka the Afghan War Diary) pertaining to the Afghan War have reminded some commentators of the similar debate surrounding Daniel Ellsberg’s leaking of the Pentagon Papers. Last week, NPR’s On the Media discussed Wikileaks with Yochai Benkler, the Jack N. and Lillian R. Berkman Professor for Entrepreneurial Legal Studies at Harvard Law School and Co-Director of Harvard’s Berkman Center for Internet and Society, who described Wikileaks as a new system, compared to journalism’s traditional methods of public disclosure of “secret’” documents.

But when the New York Times posted the War Diary, it reassured readers that, unlike Wikileaks, it had rigorously investigated the authenticity of the documents, rather than put them online without any vetting. In essence, the Times was attempting to reinforce the perception that online media journalists – if they can even be called that – are looser than the mainstream media. The Times seems more willing to engage in a balancing test of sorts – weighing national security against the desire for public disclosure. This became strikingly clear when the Times withheld publication of the warrantless wiretapping story for a year prior to finally publishing it, at the behest of the Bush Administration. Only when it became clear that the Bush Administration was considering seeking a Pentagon Papers-style injunction against the Times did the paper decide to publish the story.

Legally, Wikileaks and its “editor-in-chief”, the Australian activist and journalist Julian Assange, are taking no chances with this type of legal action. Wikileaks servers are located internationally in various countries to make it essentially “uncensorable,” as described in a recent New Yorker profile. Indeed, the New Yorker observed that “even though [Wikileaks] has received more than a hundred legal threats, almost no one has filed suit.” Assange himself has told litigants to “go to hell,” as the New Yorker noted. Compared to the reticence of media outlets like the New York Times to be that daring, perhaps online media sources like Wikileaks are carrying Daniel Ellsberg’s legacy more effectively than traditional outlets who fear legal action.

The United States Court of Appeals for the Federal Circuit (CAFC), on October 30, 2008, decided In re Bilski (545 F.3d 943), which had serious implications for the future of business method patents. The eleven members of that court found that a method of hedging risk in the field of commodities trading was ineligible subject matter and soundly rejected the broad “useful, concrete and tangible result” test of State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998). Instead, the nine judges of the majority opinion adopted the “machine or transformation test” as the exclusive test to determine if a claimed invention qualifies as a “process” under 35 U.S.C. § 101.  Under this test, a claimed process qualifies only if it: “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” (545 F.3d at 954). Under this test, the vast majority of business patents were in danger of being disqualified.

On June 28, 2010, the Supreme Court of the United States handed down Bilski v. Kappos (08-964), affirming the CAFC’s decision. The Court, however, rejected the CAFC’s assertion that the “machine or transformation” test is the sole test for determining if an invention is an eligible process under § 101. The Court, citing concerns that the “machine or transformation” test causes uncertainty in software and other high-tech patents, determined that although the test is “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101”, but the CAFC was free to develop “other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.” The majority opinion, written by Justice Kennedy, declined to “define further what constitutes a patentable process, beyond pointing to the definition of that term provided in § 100(b) and looking to the guideposts in Benson, Flook, and Diehr. “

Thus, the majority decision in Bilski is remarkably unhelpful in determining the bounds of § 101 eligibility. The court specifically states that business method patents are eligible subject matter, but offers no guidelines beyond referring to thirty year old precedents – precedents decided before business method patents were seriously considered. Kennedy writes that there is a need to protect innovation relating to the “information age”, but only states that the bar for eligibility needs to be high enough to prevent the patent office from being flooded with claims that would chill “creative endeavor and dynamic change.” Yet, while the court endorses the “machine or transformation test”, it very noticeably refrains from commenting on the validity of the State Street Bank “useful, concrete, and tangible” test.

Despite the inscrutable majority opinion, hints as to the future of the State Street Bank “useful, concrete, and tangible” test can be found in the two concurring opinions. Justice Stevens’ concurrence, joined by Breyer, Ginsberg, and Sotomeyer, would have categorically barred all business patents. It is very likely that Stevens could not garner the necessary support from Justice Scalia to make such a broad shift in patent law. Scalia did join in a short, separate concurrence written by Breyer that rejects the “useful, concrete, and tangible” test. Thus, at least five members of the Supreme Court view the State Street Bank test unfavorably.

The failure of the court to make any real distinctions on the eligibility of business method patents may spur congress into action. Kennedy’s opinion relied on 35 U.S.C. § 273, which grants a defense of prior use against business method infringement claims, to come to the conclusion that Congress “left open the possibility of some business method patents.” However, Senator Leahy, chairman of the judiciary committee, recently posted a short note on his website criticizing Bilski for “needlessly [leaving] the door open for business method patents to issue in the future” and stating that it was now “time for Congress to act.”

While the CAFC Bilski decision in 2008 may have temporarily closed the door on business method patents, it would be a fallacy to think that this Supreme Court decision opens the door wide again. A majority of the Justices on the Court, nearly all of the CAFC judges, and important members of congress are highly skeptical of business method patents.  Furthermore, by relying on a quirk of statutory interpretation to preserve the technical validity of business methods instead of making a substantial argument for or against, the Court is making it clear that they lack the will to act decisively on the matter.

Under State Street Bank rule, most business methods were eligible for patentability. After the CAFC Bilski decision, the vast majority of business methods were not eligible. Now, in the wake of Bilski v Kappos, there is only uncertainty. Those seeking to obtain patents on business methods will need to proceed cautiously and with full awareness of all developments in the area.

Much has been written about the enforcement of trademarks in cyberspace. The rationale behind trademarks is to allow companies to protect their identifiable brand names and goodwill developed through investing in service, quality, etc.  Traditionally the geographic scope of trademarks limited the likelihood of national — and transnational — disputes.

The global spread of the Internet and telecommunications has changed this dramatically, eroding the regional scope of trademarks.   The Brookfield, 174 F.3d 1036 (9th Cir. 1999), and PETA, 263 F.3d 359 (4th Cir. 2001), decisions, which held that initial interest confusion exists with regard to domain names, opened the floodgates for similar trademark decisions.  More recently, the litigation between Toys ‘R Us and Imaginarium highlighted the global tension arising out of companies seeking to preserve their trademarks in cyberspace.

Hence the transnational trademark problem arises: where two companies from two different countries have invested substantial resources in developing the same trademark, who should benefit from registering the domain name?

(Note: This problem particularly affects generic top-level domains (TLDs) like “.com” and “.org”, and less so country domains like “.co.uk”.)

Cyber lawyers will be quick to point to mechanisms for enforcing trademarks in cyberspace. As CNN v. CNNews.com, 162 F.Supp.2d 484 (E.D. Va. 2001), demonstrated, U.S. companies can utilize the Anti-cybersquatting Protection Act (ACPA) to force top-level domain (TLD) registries to turn over domain names similar to their trademarks. In CNNews.com, despite little to no evidence of bad faith or confusion, CNN was able gain in rem jurisdiction over the domain name and force the registry to forfeit it. Moreover, a company could resort to the ICANN dispute resolution mechanism (internationally WIPO) to settle a trademark claim. In both of these situations, however, one company is left unable (or less able) to use its trademark in cyberspace, a problem that undermines the value and importance of trademarks.

Although the CNNews.com example suggests that non-US companies may find it difficult to enforce their trademarks in cyberspace, there is a simple solution: change the architecture. On the surface, the structure of the internet is simply incapable of allowing two trademark holders to hold the same domain name. After all, ICANN, the pseudo-government of the internet, has specified particular registries for registering TLDs, and those domain registries only tie domain names to one server, one website.

However, as Lawrence Lessig famously suggested, law and its enforcement (in real or cyber space) is directly related to the architecture of the world in which it operates. The transnational trademark problem is solely the result of the world wide web’s architecture, and can be solved easily through the creation of national trademark TLD domain name system (DNS) servers.

DNS servers should be seen as internet phone directories in which ISPs look-up where a domain name points. If you want to find Otto’s Auto Repair Service in New York City, you could open a New York phone book and look up Otto’s phone number and address. In a similar way, DNS servers associate a server’s physical address with a domain name.

The existing doamin name system deviates from a phone book with regard to generic TLDs because DNS servers do not differentiate domain names geographically. If you look for Otto’s Auto Repair Service in a Chicago phone book, you will find a different phone number and address than in the New York phone book. If, however, you look for OttosAutoRepair.com in New York and Chicago, you’ll be directed to the same website. Whichever hypothetical Otto registers the domain name first undermines the others ability to set up shop in cyberspace — despite the fact that the two may not actually compete. Similarly, only one company with a particular trademark can have the domain, despite that same mark being held by another company in another country.

Like the Chicago and New York phonebooks, it is conceivable for countries to create different lists of trademarked domains. A country could pass legislation creating a national TLD DNS server for listing nationally trademarked domain names. This legislation could also require domestic ISPs to query the national registry before querying the ICANN-designated TLD DNS servers.

Thus, if Germany decides that it wants to give German trademark holders primacy with regard to domain names, it could pass the above legislation and require German ISPs to query its TLD DNS servers first. If a German company happened to hold the German trademark for “GAP”, a German user would be directed to the German company’s website, even though GAP.com is registered to the U.S. company in the ICANN-designated TLD DNS servers. If the German DNS doesn’t contain an entry for a particular domain name, the user would be forwarded to the usual TLD DNS servers.

Critics may view such a proposal as absurd, unnecessary government intervention in the internet, or a different instantiation of the Great Firewall of China. This, however, is nothing short of alarmist and misses the value added by such a system.

A country-based trademark DNS system would enable trademark holders to properly enforce their marks and reduce initial interest confusion for consumers. A consumer in Germany looking for a particular brand is more likely to be routed to the company he or she is actually seeking, as opposed to a foreign company. Moreover, this would greatly limit the impact of cybersquatters on foreign trademark holders.

Lastly, such a system would encourage companies to actively register their trademarks and domains overseas, adding clarity to the ownership of particular marks and reducing the frequency of disputes between foreign companies.

Google AdWords is a juggernaut of online advertising, generating huge amounts of revenue for both Google and for AdWords account holders.  It has revolutionized the way advertisers and consumers connect with each other online—and lately, it has also strained the boundaries of trademark laws around the world.  Trademark holders from multiple countries have sued AdWords for allowing the unauthorized use of marks as ad text and as keyword triggers for online advertising.  At the moment, the ultimate winner of this dispute is uncertain, but what is clear is that to the victor will go the spoils: the future of search engine advertising.  Yet the identity of the victor is not and should not have to be limited to either Google or trademark holders.  Governments should use this chance to reexamine trademark law in the light of e-commerce in order to develop a legal framework that would best harness the benefits of search engine advertising for all affected interests.

My Note, Google AdWords: Trademark Infringer or Trade Liberalizer?, explores the differing legal landscapes of the U.S. and the European Union with respect to AdWords trademark infringement cases.  It demonstrates how such judicial determinations fail to fully consider the benefits of search engine advertising in democratizing trade and creating a truly free, truly online global marketplace.  Instead, important trade players like the U.S. and the European Union should seize this moment to legalize the use of trademarks as keywords in search engine advertising, so that trademark law continues to further the interests of consumers and of firms.

The D.C. Circuit Court of Appeals recently held that the FCC was not authorized to prohibit Comcast from interfering with P2P networking applications, erecting what appears to be a large roadblock on the FCC’s path to net neutrality. The court held that the FCC’s ancillary authority under Section 4(i) of the Communications Act of 1934 did not extend it sufficient power to regulate broadband services absent explicit statutory goals.

The FCC had largely tied its own hands in the case: its designation of broadband as an ‘information service’ under the Bush administration was granted Chevron deference by the Supreme Court in the 2005 Brand X case, leaving it unregulated in an effort to promote investment. The agency simply adopted four principles of net freedom that they expected broadband companies to abide by and went home for dinner. However, with competition in broadband access arguably dwindling rather than burgeoning, public interest groups like the Open Internet Coalition are seeking increased regulation to protect consumer choice, and the FCC wants to lead the way.

As it turns out, the Comcast ruling may not be the big obstacle it first appears to be. The Brand X majority openly accepted the FCC interpretation over the Ninth Circuit’s version, stating that only judicial precedent holding a statute unambiguous can displace agency construction. In a dissent, Justice Scalia argued that the Court was ceding far too much by allowing the FCC to define ambiguous statutory terms and then flip its definition to suit its fancy in future disputes, a fear the majority seemingly shrugged off.  Here is a hypothetical presented by Justice Scalia in his Brand X dissent:

Imagine the following sequence of events: FCC action is challenged as ultra vires under the governing statute; the litigation reaches all the way to the Supreme Court of the United States. The Solicitor General sets forth the FCC’s official position (approved by the Commission) regarding interpretation of the statute. Applying Mead, however, the Court denies the agency position Chevron deference, finds that the best interpretation of the statute contradicts the agency’s position, and holds the challenged agency action unlawful. The agency promptly conducts a rulemaking, and adopts a rule that comports with its earlier position–in effect disagreeing with the Supreme Court concerning the best interpretation of the statute. According to today’s opinion, the agency is thereupon free to take the action that the Supreme Court found unlawful. 545 U.S. 967, 1016.

The FCC would appear, at least from Justice Scalia’s viewpoint, to have a semantic out. Michigan Law Professor Susan Crawford argues that the agency should simply relabel high-speed internet services as ‘telecommunications services’, which are subject to regulation under Title II of the Communications Act. Simple enough, no? Not according to one blogger, who analyzes the proposed methodology and concludes that it would open a Pandora’s Box. In fact, Crawford herself recognized difficulty with this strategy in a 2006 article for Berkeley Tech Law Journal:

Congress should act to cabin and explicate the scope of the Commission’s authority to regulate the internet. The difficult and important question of how to govern the internet should be answered explicitly rather than through formalistic re-characterization of internet services by an independent agency. 21 Berkeley Tech. L.J. 873, 931.

In contradicting her recent Op-Ed piece, she highlights an alternative route the FCC can take: ask Congress to redevelop FCC authority and provide more logical regulatory boundaries in light of the dramatic advances in communications technology over the past several decades. Congressional action would add legitimacy to the process and allow for the formation of a structural foundation that represents the importance of internet functionality in the modern age. In the meantime, the National Broadband Plan is moving forward and the FCC plans to launch more than 60 proceedings within the year, authorized or otherwise.

If Jesus told you to sue for copyright infringement to protect the purity of your religion, would you?  At least one person has answered “yes.”  If someone stole your “secret” religious text and criticized it on the internet, would you sue them for copyright infringement?  Scientologists certainly have.  These are not isolated incidents: different religious organizations are bringing claims of copyright infringement.  In one sense, there’s nothing extraordinary about these lawsuits—after all, religious organizations are entitled to use the protections of the law just like any other individual or entity.  But in another sense, there’s something unique about these lawsuits: the religious organizations’ motivations for suing aren’t typically economic.

My Article, In Search of (Maintaining) The Truth: The Use of Copyright Law by Religious Organizations, explains why and in what context religious organizations sue others who use their religious works.  It shows that religious organizations frequently sue for copyright infringement to further their own religious goals, such as preventing negative publicity and squelching dissent or criticism.  The Article argues that these motivations (and others explained in the Article) are antithetical to copyright law’s underlying purpose.  It also demonstrates that current copyright doctrines stifle, rather than facilitate, religious claims.  The conclusion reached from this analysis should not be surprising: religious organizations should not use copyright law to achieve their religious objectives.

In May 2008, Walter Swift was exonerated after serving 26 years in prison for a rape he did not commit.  Mr. Swift’s case, like many where an innocent person is convicted, didn’t have just a single error.  One problem was with the identification that not even the investigating detective believed.  Another problem was that forensic evidence that should have cleared Mr. Swift was withheld.

Before DNA became the standard forensic test for identifying the source of bodily fluids at crime scenes, forensic analysts tested for blood type antigens.  Depending on the antigens detected, the source of the bodily fluid could be identified as type A, B, AB, or O.  If the test failed to show the presence of any antigens, the bodily fluid would be identified as coming from a “non-secretor” to denote an individual who doesn’t secrete enough antigens to be detected by the forensic test.  Approximately 20% of the population is found to be “non-secretors.”  (For more details on this testing procedure, see Kathleen E. Boorman et al, Blood Group Serology (1988); Ivor Dunsford & Christopher Bowley, Techniques in Blood Grouping (1967); David Harley, Medico-Legal Blood Group Determination (1944); Leon N. Sussman, Blood Grouping Tests (1968).)

Although Mr. Swift’s blood type did not match the blood type found in fluids at the scene, he was tested by forensic analysts and found to be a non-secretor.  (It was withheld that prior testing found that Mr. Swift WAS a secretor, and therefore he could not be a match for the bodily fluids found at the scene.)  Mr. Swift’s purported non-secretor status allowed the prosecution to explain the absence of Mr. Swift’s antigens in the bodily fluids found at the crime scene.  Recent retesting of Mr. Swift found that he was in fact a secretor, and because this meant Mr. Swift could not have left the bodily fluids found at the scene, the court vacated his conviction.

I recently had the pleasure of speaking with Mr. Swift about his case.  While in prison Mr. Swift was required to attend group counseling.  During the course of this counseling, the inmates talked about their cases and Mr. Swift was startled to learn that 11 out of 15 (73%) members of the group were convicted as non-secretors!  It is worth noting that while secretor status is genetically controlled, without laboratory testing an individual would have no way of knowing or acting based on their secretor status.  Given this fact, the variation between the percentages of non-secretors in this group (73%) from the population (20%) is startling.  This variation can this be explained by both inadvertent mistakes and intentional malfeasance in the testing,  but regardless of the source of the error, this variation suggests a problem with the forensic science used against accused rapists (among others) in Michigan.

It is worth noting that Mr. Swift is not the only individual where recent retesting has proven that an individual convicted as a non-secretor is in fact a secretor.  After spending 23 years in prison, recent retesting has proven that Karl Vinson is a secretor, contrary to the testing showing him to be a non-secretor that was used to secure his conviction.  A motion to set aside Mr. Vinson’s conviction is currently pending in Wayne County Circuit Court.  Mr. Swift and Mr. Vinson are both notable for never giving up the search for justice.  How many others were not so persistent and remain in prison for crimes they did not commit?

When errors were identified from the Detroit Police Department Firearms Lab, District Attorney Kym Worthy started an immediate audit of trial convictions and guilty pleas that relied upon the crime lab’s findings.  The same must now be done for those convicted as “non-secretors” within the state of Michigan.  The prosecutors fought hard in search of justice for the victims of street crimes, and it is time for them to search for justice for those who have been victimized by the justice system itself.

My note, Regulating Robocalls: Are Automated Calls the Sound of, or a Threat to, Democracy? discusses the federal and state laws that limit the use of automated political phone calls. Robocalls are a popular campaign tool because of how cheap they are, with vendors like Winning Calls.com charging pennies per call to reach lists of thousands of voters. Because political calls are exempt from the federal Do Not Call Registry, many people who otherwise avoid phone solicitations receive unwanted political robocalls. This has caused some people to turn to a private do-not-robocall list and motivated states to pass a patchwork of laws:

This state-based approach has created a problem: conflicting laws that national campaigns have trouble navigating. This problem motivated one national political group to request an advisory letter from the Federal Elections Commission declaring that federal law preempts these state laws—despite a specific anti-preemption clause in the federal telecom laws—but that request was later withdrawn. My proposal calls for a new federal law to regulate the worst robocalls and preempt the confusing patchwork of state laws. Unless Congress acts, we can expect that the 2010 election will bring even more stories that feature shady calls going unpunished and mainstream campaigns being threatened for unwittingly violating the law.

Ask the average American how much an artist receives when his or her music is played on the radio, and most will suggest that the musicians earn a penny or two per play.  And if we’re talking about online radio, they would be right.  But in the context of terrestrial AM/FM radio the answer is, in reality, zero.  On February 4, 2009, the Performance Rights Act was introduced in the House and Senate which would require terrestrial stations to pay artists and musicians for the first time.  The proposed Act raises several issues:  why is the right being sought now, and why have copyright owners shifted reform focus from digital to terrestrial music outlets?

My article, The Super Brawl:  The History and Future of the Sound Recording Performance Right, explores these and other considerations in the upcoming issue of MTTLR.  The paper ultimately suggests that in addition to the Performance Rights Act, sound recording copyright holders should seek to expand their digital performance right online to encompass user-generated audiovisual works on sites like YouTube, Facebook, and Myspace.  In consideration for an annual blanket fee, these performance-based sites would be secure against DMCA notice-and-takedown proceedings and infringement actions from participating sound recording copyright owners. Such a compromise would permit sound recording copyright holders to receive just compensation for their works performed online, save sites like YouTube millions in administrative and legal fees, and permit users to freely and fairly post sound recordings online.

Microsoft’s long awaited cloud computing platform, Azure, opened for business this week.  Now available in 21 countries, the platform comes with a flexible and transparent payment schedule.  This might not sound as nifty as the iPad, but startups with small budgets are sure to take notice, particularly with the free trial options Microsoft is offering.  Azure represents a major step in the development and dissemination of cloud computing, as Microsoft associates its stable, business-oriented brand appeal with the cloud.

In December, MTTLR reported on the regulatory problems posed by cloud computing.  Weighing in on this ongoing debate two weeks ago at the Brookings Institution, Microsoft’s General Counsel Brad Smith suggested the role the United States government should take in regulating cloud computing.  A recent survey, commissioned by Microsoft, concluded a majority of Americans use cloud computing services despite being unfamiliar or only vaguely familiar with the concept of cloud computing.  These survey results could be misleading, as even industry leaders seem to disagree on the proper definition for cloud computing, but the survey does highlight the significant knowledge gap that presents one of cloud computing’s biggest challenges:  What happens when most Americans store their emails, financial files, photographs, and other personal information in something as nebulous as (appropriately) the cloud?

Several indicators point strongly toward regulation:  Transaction costs of public action on this matter are extremely high, the knowledge gap between users and providers is severe, and the chance of getting caught misusing information obtained over the internet is… well, certainly not a sufficient deterrent.  Microsoft suggests a federal regulatory scheme that takes a three pronged approach, addressing issues of privacy, security, and international sovereignty. 

Microsoft’s statement about the privacy and security of consumers and businesses is obviously well-timed and serves to strengthen reliance on Azure.  It also raises questions about whether or not it is desirable to impose comprehensive regulation on the internet.  Nonetheless, their proposal for regulation is persuasive, and contributes significantly to an ongoing debate that is sure to ramp up in 2010.