In Terms of Use and the Digital Millennium Copyright Act (DMCA) I described the six elements that a copyright owner must include in a “takedown notice” sent to a service provider that is hosting infringing content. Perfect 10 v. Google shows that a notice will not be effective if it lacks the required information.
Perfect 10, which creates and sells photos of nude models, brought suit against Google, alleging, among other things, copyright infringement based on caching and hosting of photos.
Perfect 10 had sent numerous takedown notices to Google. Google won a partial summary judgment because, as a matter of law, many of the notices were deficient. Specifically:
- E-mail notices were sent to Google’s webmaster rather than the designated agent specified on Google’s website.
- Copyrighted works that allegedly were infringed were not identified. Instead, for example, Perfect 10 sent cover letters, spreadsheets, and hard drives or DVDs, and expected Google to rummage through the electronic media to locate infringing files.
Perfect 10′s deficient notices are inexcusable. You don’t have to be a genius to send a perfect takedown notice – you just have to follow the rules.
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
BusyBox Logo
Erik Anderson developed certain software that he contributed to BusyBox, a compact set of embedded Linux utilities licensed under the GNU General Public License, Version 2 (the “GPL”). In October 2008, Anderson registered a copyright on the code that he contributed.
On September 2, 2009, Anderson’s counsel notified Westinghouse that it was infringing Anderson’s copyright because it was distributing BusyBox – both integrated into Westinghouse televisions and separately with other software – on terms that are more restrictive than the GPL. Westinghouse continued infringing Anderson’s copyright.
Anderson and the Software Freedom Conservancy brought suit against Westinghouse and 13 other defendants on December 14, 2009. Westinghouse initially mounted a defense, but stopped participating in the suit when it filed for bankruptcy.
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Let’s assume that your website has a particularly effective visual and interactive elements that you would not want another website to copy. How can you protect this “look and feel”?
Look and feel falls in the category of trade dress, i.e., visual appearance that signifies the source of a product or service. You may be able to obtain a federal trademark registration for the non-functional elements of the website’s look and feel and bring suit against infringers based on that registration. (Please see Trademark Protection in One Easy Lesson.)
Look and feel is not eligible for copyright protection because look and feel is not a work of authorship. (Please see Copyright Protection in One Easy Lesson.)
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
Someone has obtained a domain name that is the same as, or confusingly similar to, a trademark or service mark that you own. How can you take the domain name from this “cybersquatter”?
When he registered the domain name, the cybersquatter (the Registrant) agreed to ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).
Under the UDRP, you (the Complainant) will be required to prove the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which you have rights; and
(ii) the Registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
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Many software companies rely on a combination of copyright and trade secret protection for their products. There is a potential problem, however: The requirement to submit source code with a copyright registration is somewhat at odds with the confidentiality requirements of a trade secret.
Fortunately, the U.S Copyright Office offers some flexibility in its deposit requirements for software containing trade secrets. The applicant may deposit any of the following:
- First 25 and last 25 pages of source code with portions containing trade secrets blocked out; or
- First 10 and last 10 pages of source code alone, with no blocked out portions; or
- First 25 and last 25 pages of object code plus any 10 or more consecutive pages of source code, with no blocked-out portions; or
- For programs 50 pages or less in length, entire source code with trade secret portions blocked out.
Finally, an applicant who is unwilling or unable to deposit source code may deposit object code, though the software will be registered under the rule of doubt – meaning that the Copyright Office has not determined the existence of copyrightable authorship, so the value of the registration may be compromised.
These issues are addressed in greater detail in Copyright Office Circular 61.
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
Many people know that, when one leaves a job in California, the former employer typically cannot stop the former employee from working for a competitor. However, some people mistakenly believe that the right to compete includes the right to steal the former employer’s customers!
According to Civil Code Section 3426.1(d), a trade secret is “information…that [d]erives independent economic value…from not being generally known to the public…and [i]s the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” For many employers, a customer list is an important trade secret.
Subsection (c) of that Section specifies a variety of circumstances that constitute misappropriation of a trade secret, including those involving “[d]isclosure or use of a trade secret of another without express or implied consent”. Use of a former employer’s customer list to solicit business from those customers, thus, is likely to constitute misappropriation, irrespective of whether the solicitations ultimately are successful.
Threatened or actual misappropriation is subject to injunctive relief (Section 3426.2(a)). Section 3426.3 provides that one who misappropriates a trade secret may be liable for damages equal to the amount of the trade secret owner’s losses; the amount of any unjust enrichment gained; payment of a reasonable royalty; or twice any of the foregoing amounts in the event of willful and malicious misappropriation.
Bottom line: Once you leave a company’s employ, don’t use your former employer’s customer list or any of its other trade secrets.
Photo credit: Bartlomiej Stroinski via stock.xchng
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
Developers of proprietary software typically rely copyright and trade secret protection of their works. A recent California case (Silvaco Data Systems v. Intel Corporation) illustrates how far trade secret protection does, and does not, go.
Silvaco develops and markets electronic circuit design software. Silvaco won a suit against Circuit Semantics, Inc., claiming that CSI, with the help of two former Silvaco employees, misappropriated Silvaco trade secrets, in the form of source code, by incorporating them into CSI’s software. Silvaco obtained an injunction against continued use of the technology incorporating its trade secrets.
Silvaco then sued several CSI customers, including Intel, alleging that by buying CSI software, Intel misappropriated Silvaco’s trade secrets. The Court of Appeal for the Sixth Appellate District disagreed.
Intel never used the source code in question – it merely used executable code that CSI compiled from that source code. The court provided the following analogy: One might misappropriate a trade secret recipe by using it to bake a pie, but a person who eats the pie does not misappropriate the recipe.
Comments:
- The gist of the Silvaco case is that trade secret protection does not cover products made pursuant to the trade secret.
- Silvaco might have prevailed had it alleged copyright infringement by Intel, in that executable code is a derivative work (akin to a translation) of the underlying source code from which it is compiled. It is not clear why copyright infringement was not alleged – perhaps Silvaco did not register its copyright on a timely basis.
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
Last November, I wrote You Can Have a Successful Business Even if You Don’t Have a Patent. Many of the points that I made in that post are reiterated in an article that will be published this summer in the Berkeley Technology Law Journal.
The article, “High Technology Entrepreneurs and the Patent System”, is available to registered visitors on this blog’s Downloads page. Among the findings presented in the article:
- Whereas life sciences companies see patents as critical, software and Internet companies rely more on copyrights and trademarks.
- Patents are used to reduce competition and to attract capital; they do not provide strong incentives to innovate.
- The major reason why companies do not apply for patents is that they are expensive to obtain and to enforce.
- Many companies find it is more important to be the “first mover” than to obtain patents.
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
Several months ago, I wrote about the circumstances under which courts will find implied copyright licenses if there has not been an assignment of copyright (If You Don’t Set the Terms of a Copyright License, a Court Will). In a recent case (Estate of Hevia v. Portrio Corp.), the U.S. Court of Appeals for the First Circuit held that there was an implied license in a partnership context.
The decedent, Roberto Hevia-Acosta, was an architect. Following his death, his estate and heirs waged an intensive legal battle against his business partner over copyrights in the decedent’s architectural designs.
Looking primarily at the decedent’s intent, the court found that, as a matter of law, there was an implied license in favor of the business partner because:
- The very reason for creating the architectural designs was successful completion of the partnership’s project.
- Before his death, the decedent delivered the plans to his partner.
- He also provided his plans to the project engineer for incorporation into detailed blueprints, which then were submitted to the appropriate governmental entity.
Lesson: Although the court achieved a just result, a huge amount of time, money and effort could have been saved if the partners had entered into a proprietary rights agreement that included copyright assignments from each partner to the partnership.
Dana H. Shultz, Attorney at Law +1 510 547-0545 dana [at] danashultz [dot] com
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
The document Top Ten Intellectual Property Mistakes of Startup Entrepreneurs is available to registered visitors on the Downloads page.
Here are the ten mistakes that are discussed:
- Failing to use employee invention agreements
- Assuming that the company owns contractors’ work product
- Using another company’s license agreement
- Thinking that patents are the only IP that matters
- Filing a for provisional patent before the scope of the invention is clear
- Treating the federal government like non-governmental infringers
- Neglecting to identify and protect trade secrets
- Believing that “open source” means “no restrictions”
- Giving the “family jewels” to an overseas supplier
- Registering the wrong entity as the owner of IP
Related post: The Top Ten Legal Mistakes of Startup and Early-stage Companies
This blog does not provide legal advice and does not create an attorney-client relationship. If you need legal advice, please contact a lawyer directly.
Dana Shultz is a business-savvy lawyer with in-depth knowledge of law, business, technology, and the needs of startup and early-stage companies. Located in the San Francisco Bay Area (Northern California), Dana develops close working relationships with clients based on a positive attitude and rock-solid dependability so he can deliver High-touch Legal Services® - thus the name of this blog.