Mr. McCormack is a technology lawyer and Seattle native with noteworthy international experience. He received his B.A. in Speech Communication with an emphasis on rhetorical analysis (cum laude) from the University of Washington (1994), and a Doctorate of Jurisprudence from the University of Oregon School of Law (1997) with a special certificate of study in the area of intellectual property. His practice covers varied intellectual property issues, including copyrights, trademarks, trade secrets, patents, unfair competition, licensing, entertainment law, and litigation. Represented clients include: Getty Images, Microsoft, Washington Shoe Company and many other well-known businesses.

Hosted Email Exchange Server

Looking at the question of overhead, it seems to me that cloud computing combined with personal computer technology can decrease overhead. For example, in my practice I use a hosted email exchange server. This is a third-party vendor that hosts a mainframe that we tie into across the internet. Because this is a hosted email exchange server we pay a per-user license every month and have all of the bells and whistles that the latest edition of Outlook can provide. Now, Microsoft and other vendors offer hosted email Exchange server technology on a subscription basis, available to even solo practitioners

See several choices of vendors below:

I remember only a few years ago that if a small firm wanted to have the full functionality of Outlook, which can only be achieved through the use of an Outlook Exchange server, you had to buy such a server. Although the price of computers and technology has come down, such a server might cost between $5,000 and $10,000. In addition, there is the cost of maintenance, updates, upkeep, etc. As a result, most small and medium-sized firms chose not to use Outlook in its fullest form. They simply installed Outlook on their personal computers and used what function was there as best they could. Outlook, by the way, even in its non-Exchange environment, is still an amazing program. The big firms, however, had hosted Exchange servers and IT departments and all the bells and whistles that that package provided, including increased coordination of scheduling, increased communications, and information technology across the firm.

It is my personal belief that an email-hosted Exchange server has the potential to increase law firm productivity in a significant way. That has been my personal experience. Although these services are not advertised as “cloud computing”, that is exactly what they are.

In fact, hosted email Exchange servers are, in this practitioner’s opinion, the most well developed and sophisticated implementation of “cloud computing” that is on the market today.

Off-site Backup of Data

Another area of development that I have seen in the area of cloud computing is on-line storage. Backup of computer systems across a firm, even if the firm is a solo practitioner with one attorney and staff, has always been a problem. Computers fail. Data gets corrupted. While there are many safeguards that can be taken to help protect business data, the most obvious is an off-site backup of the data.

Until recently, an off-site backup of data meant having an automated .data drive or other similar media connected to a central server where files and information were stored to run on a daily or weekly basis, and then taken off site by a staff or an attorney in the event of a fire or water damage, or hard drive failure. This is an extra administrative burden on staff and attorneys, an additional overhead cost for setting up and maintaining the system, troubleshooting the system when it fails. And this all assumes that the system works as planned, and that if something does happen, the data is able to be fully restored. In short, data backup systems have been a pain-in-the-rear.

Recently, there have been developments in the cloud computing arena that allow off-site storage of data across the internet. Of course, it should be noted that the transmission of data packets is fully encrypted by most of these vendors in such a way that not only can a third-party not access them as the packets are traveling across the internet, but the vendor themselves cannot access them without your code key.

I have personal experience with one such application. When we installed the application, everyone in the office believed it was one of the coolest things they had ever seen. Several times when a file went missing or was accidentally deleted, with a few clicks of a mouse we were able to restore the file to its original or altered state. We did not need to call the IT department. We did not need to find which backup tape it was on. We didn’t need to follow any elaborate procedures for restoring the data. We simply right clicked on the folder and said “restore.”

Cloud computing is new, however, and its newest applications are still not perfect. I experienced problems with traditional backup methods. I experienced problems with this new on-line method, as well.

In fact, one of my hard drives failed. Although the vendor that I was using was backed by a substantial company and was a leader in the industry, this company ultimately had trouble restoring all of the data as promised. I found this to be amazing. Fortunately, the data loss was limited because when we suspected the hard drive was beginning to fail, we took the precautionary step of backing it up on an external hard drive ourselves. All of the money we spent on off-site storage backup with that company was refunded to us. I would have preferred the system to work.

My point here is that “cloud computing” or on-line backup services is neither bad nor good. In my opinion, the potential to increase productivity and increase data security is greatly increased by the advances in the use of off-site internet-enabled data backup. However, the technology is still relatively new and it would not be wise, in my experience, to rely solely on that technology. As the technology develops in the next three to five years I believe it will probably completely replace the older more traditional methods of data backup. But, in my experience, it’s not quite there yet.

On-line Storage

A similar story can be told about on-line storage. Of course, all law firms, small or large, have a computer where files reside and are shared between attorney or attorneys and staff. This is typically referred to as the file server. Cloud computing represents the possibility of having a virtual file server. A server based somewhere else that the attorneys and staff can save files to and share files from. The advantages to this approach are many. For example, it solves the off-site backup problem because the files themselves are off-site and presumably being backed up by the file storage vendor.

The ability to share files in this way also opens many doors in terms of remote access and computing. If files can be shared securely from any authenticated PC anywhere in the world, a lawyer or staff can easily work on files from home or anywhere in the world. In some ways this is a scary thought.

The question I ask is this: Is such a technology helpful or harmful to the long-term happiness and productivity of attorneys and staff? I think if you polled most young attorneys and staff they would say they welcome the increased flexibility of remote access to their client files and matters. However, I question the wisdom of such a conclusion. Assuming that the client has needs that must be met and deadlines that cannot be avoided, the requisite number of hours to get that work done is finite.

If it’s going to take 40 attorney hours and 20 staff hours to get the job done that number is not going to be increased or decreased by remote access to files. In fact, remote access and working from home might increase the hours requested based on travel and distractions. If the burden rests on an associate to get the bulk of that work done, will that associate be more effective working from home with remote access or more effective in the office getting the work done there? Ultimately the answer to that question is probably different for different people. Some people would have their overall happiness and productivity increased based on the increased flexibility, while others would likely have their productivity decreased from the flexibility.

Another model of cloud computing uses your software licenses, such as for Microsoft Office, and loads them onto its servers. You access the software through a browser whether Internet Explorer, FireFox, Chrome, or Safari. Interestingly, you can use Apple iMACs using Safari to use Windows software with this model. The vendor is Legal Workspace.

At my firm we do not use on-line file servers. Like the off-site storage backup, the technology is not as advanced as most vendors would have you believe. In fact, one very well known service provided by one of the world’s largest providers is so inherently flawed that one can only upload individual files. This means that if you have a folder with ten files in it, you cannot simply upload the folder to this online server, you have to upload each individual file. This is, of course, a ridiculous limitation. The reason I point this out is because it demonstrates the nascence of this technology in its current implementation.

I have talked with other practitioners who swear the technology is useful to them and they have gotten great benefit from it. I can imagine a time in the not distant future where everybody will be using cloud file servers. In my personal opinion, it is still too early.

Remote Access Of PCs From Home Or Other Locations

Some of the other panelists have more experience and have detailed some of the ins and outs of accessing computers remotely from home or other places. There are different ways to accomplish this goal. Many of the operating systems, including XP Professional, Vista Professional and Windows 7 Professional, have built-in VPN technology. VPN is “Virtual Private Network.” This technology is relatively easy to set up. Although, in my experience, it does typically require a dedicated IT person to set up and maintain. I have also had experience with third-party vendors such as GoToMyPC.com and PCNow.com. While these third-party vendors charge monthly subscriptions on a per user license, if this kind of remote access is needed in a small office, in my experience, it is easier and more reliable to use the third-party vendors. The concerns I raised above relating to whether this technology increases the economic return of a small, medium or large-sized firm is open.

If the firm has an on-site file server and the associate partner has access to the firm’s network via remote PC access, work can be done at home or while traveling, which as noted above, can be either good or bad. While the technology associated with remote PC access is certainly not new, it does represent the ability to harness the power of a worldwide network, the Internet, to help run businesses. My experience with remote PC access has been good and if used and monitored wisely, I believe the technology can increase a firm’s overall productivity and employee retention.

A cautionary note, however, in my experience this technology should not be used across the board for all attorneys and staff. I think this technology should be used sparingly and as an exception to the rule that one must come into the office to do work. Of course, that completely changes if you’re running an entirely virtual office.

Other “Cloud” Computing Technologies

Although not labeled as “cloud” computing, many great technologies might well fit into the rubric of the cloud concept. Services such as voice over IP phones, electronic faxes (sending and receiving), and even legal research through vendors like Westlaw and Lexis, represent advances in information technology that benefit small businesses like law firms.

Electronic faxes and digital voicemails are easily integrated into the hosted or non-hosted Outlook environment. A fax and email, a filing with federal court and a voicemail, do not become discreet sections of a file, rather they become integrated “information” that can be tapped, harnessed, categorized, and searched while the attorney or staff sits at their desk.

Westlaw / Nexis and Westlaw NEXT

Westlaw, which has offered on-line computer services for many years, is also another good example of a very traditional implementation of the “cloud computing” theory. When one is signed up for Westlaw or Nexis, one potentially has access to every case, statute, encyclopedia or secondary source of legal information that is available at any law library.

In fact, Westlaw NEXT offers the ability to search the entire Westlaw holding and review summaries of the results at no additional change (you pay a flat fee for the search access and for documents retrieved in full). Without Westlaw NEXT, the need and price of subscriptions dictate the scope of information available, but with lawyers more and more narrowing their practice into specialties or subspecialties, the ability to slice or subscribe to specific data or legal research segments makes subscription to these services more and more cost effective. The idea of having access to all legal materials – everywhere, is becoming a reality. In most cases, lawyers and law firms, large and small, will not be able to compete (quality and price) without using this technology to the fullest extent.

VoIP Phones

In my office, we recently implemented voice over IP phones through one of the local vendors. And our phone system went from four phones to seven phones. We went from four lines to the ability to handle up to 20 calls simultaneously. The price we are paying is increased but the increase in price is hardly proportionate to the increase in capacity. Interestingly, we can take any one of our phones, call our third-party vendor and have them adjust it to be in telecommute mode. Although we have yet to test this technology, we are told that phone could then be put in a suitcase, taken anywhere in the world that has connection to an internet and be used as though the person were sitting in the office next door. Anyone in the office (or anywhere) can call their extension and speak to them directly. Staff can also transfer a phone call to them at that extension or they can call out from the phone and appear as though they are calling from their office.

Conclusion

Technology is here. Use it. Be careful. Think about whether use of a particular technology makes sense. Is it safe? Is it cost effective? Does it increase the quality or the amount of work that gets done? Does it help the business, including lifestyle and retention issues? An open question: Does the use of such technology make a lawyer more or less competitive and/or efficient? If so, is that increase (or decrease) reflected in the billing rate? Are there ethical issues about being “competent” as a lawyer as it relates to the use of mandatory and optional technologies in the law office setting?

Mr. McCormack is a technology lawyer and Seattle native with noteworthy international experience. He received his B.A. in Speech Communication with an emphasis on rhetorical analysis (cum laude) from the University of Washington (1994), and a Doctorate of Jurisprudence from the University of Oregon School of Law (1997) with a special certificate of study in the area of intellectual property. His practice covers varied intellectual property issues, including copyrights, trademarks, trade secrets, patents, unfair competition, licensing, entertainment law, and litigation. Represented clients include: Getty Images, Microsoft, Washington Shoe Company and many other well-known businesses.

WHEN RUBBER MEETS THE ROAD – PRACTICAL APPLICATIONS AND CAVEATS ABOUT “CLOUD COMPUTING”

The “Potential” of Cloud Computing

While some of this technology is not necessarily new, it is new in terms of its price point and rollout for small and medium-sized businesses. Large firms have had this technology for some time. But, as the price comes down, “cloud computing” or cloud computing implementation as it relates to all information technology (email, phones, faxes, remote access, legal research), really represents the potential leveling of the technology playing field, allowing small firms to leverage those technologies to compete more effectively with some of the large firms.

As smaller firms, we are generally going to have lower overhead and more nimble practices. If we can be backed by the latest and greatest technologies, it can potentially allow us to compete more effectively for the best and the brightest young attorneys and staff, the best clients, and increase our own happiness and productivity while at the same time making more money. That is the “potential” of cloud computing.

The Practical Application of “Cloud Computing” – Is it Good or Bad?

As attorneys, whether we are solo practitioners, mid-sized firms, or departments in larger firms, we, like our clients, are governed by the laws of economics.(*) Setting aside the issues of providing the best service a professional can and is expected to give, as a service industry, our goal is to maximize billed service hours and minimize overhead costs.

At the same time we must keep ourselves, our attorneys and our staff healthy, happy and productive. In some ways the advent of the personal computer has changed the way law firms operate and also how the economics of the service industry are perceived. The advent of the personal computer has decreased the amount lawyers, particularly young lawyers, who dictate. Correspondingly, there is an increase in the number of lawyers who type everything they do. General wisdom indicates that a lawyer skilled in dictation is much faster and more efficient than a lawyer who types everything themselves. I dictated this paper. Dictation is great. Interestingly, I used a digital recording device and emailed the file to an off-site word processor who emailed me back the paper for my editing. I could have dictated this paper right into my word processor using the speech recognition built into Windows, although I have never taken the time to figure that out For now, I still prefer an actual person to unscramble my dictation.

The personal computer has made it easier for lawyers to type letters themselves, format pleadings, and even communicate via email. In other ways the personal computer has increased the modern lawyer’s efficiency. Our staff is more efficient, our research is faster and, literally, we need to get up from our desk less often. And this measure of productivity is inversely proportional: the more we integrate technology into our practices, the less often we are required to get up from our desks. Beware: surfing the web does not count!

An interesting question in my mind is whether there has ever been a net increase in efficiency based on the advent of the personal computer, or a net decrease in efficiency based on the personal computer? A follow-up question is, have our billing rates as attorneys correspondingly adjusted to reflect the increased efficiency or deficiency?

This same line of thought is applicable to the newest developments in personal computing, which is the topic of this CLE panel discussion, namely, “cloud computing.”

As a technology lawyer and practitioner who uses personal computers and cloud computing, I am not sure that cloud computing itself represents an advance in the efficiency of attorneys. I think this is an open question.

I do believe, however, that it potentially represents an advance in decreasing overhead and increasing, or potentially increasing, attorney and employee happiness, which relates to long-term profitability and retention. Setting lawyer and employee happiness aside, which involves too many intangibles to address in this context, just because an attorney or an employee wants to stay at home and do work does not necessarily mean that having that ability will increase their happiness or their productivity.

In my opinion, there is still no substitute for coming into the office and doing work. Doing work from home can be distracting and difficult.(**) That being said, as lawyers and legal professionals, we are sometimes tasked with protecting our client’s interests, a task that cannot always be accomplished between the hours of 9:00 and 5:00.

If we can use technology to allow ourselves to be more flexible in spending time with our families and meeting our personal obligations, while at the same time, first and foremost, serving and meeting our client’s needs, then use of the facilitating technology should result in an increased long-term profitability based on attorney and employee happiness and productivity.

Rich Lawyer / Poor Lawyer

Other good uses of a lawyer’s time (when not spent supporting information technology) include:

1) Being a great lawyer;

2) New business development;

3) Firm leadership and planning;,

4) Collection of delinquent accounts.

These four touchstones of good law firm practice and management all seem to have a higher economic return than information technology support. My guess is that even if we went back to typewriters and a supposedly less efficient way of practicing law, if we could keep ourselves focused on these four touchstones, we would do better work and make as much or more money than with all of the advances in personal computing, internet, and cloud computing.

That’s not to say, however, that the technology advances are not helpful, welcomed or good. Rather, as business people, we can’t forget about the economic mandates of our business. I am about to make some controversial statements. Please take these with a grain of salt and as they are intended – to provoke thought. E.g., Imagine being most efficient using technology and watching your fees shrink. Why? If it takes less time to accomplish tasks using technology, the hours that you bill will decline. Said another way, technology begs the question of whether to use flat fee and fixed rate arrangements more often.

Ultimately, a happy and productive lawyer is a rich lawyer. If you are a rich lawyer and still unhappy, no amount of computer technology or remote access is going to help you. If you’re a lawyer who does not do great work, find new clients, plan for the future, and collect on the work that you do, you will likely be a poor lawyer. No amount of information technology or cloud computer will help you.

Outside Vendors vs. In-House Specialists

Other important threshold considerations are these: Does a small law firm try to roll these technologies out with the help of staff or attorneys in-house? Or, do you hire a part-time IT vendor or use third-party vendors to implement the technology?

This again is an economic question. In my opinion, the lawyer in a small firm is like the captain of a ship. The captain of a ship needs to be driving the ship. The captain can’t be working in the engine room. The lawyers need to be focusing on deadlines. Lawyers need to be focusing on billing. The question to ask is: What is the return on one hour of lawyer billing versus the cost of one hour of IT support? Lawyers need to have as much uninterrupted work flow as possible. They need to focus on their work, their lawyer work, and not be managing or tinkering with technology. Setting aside the basic economics, if the technology piece gets assigned to an attorney or staff person in-house, what happens when that person is on vacation?

All that being said, the captain of a ship needs to know his or her ship. A good captain will know where the engine room is and likely what kind of engines are in the engine room. And, in some cases, how the engines work. See “Rich Lawyer / Poor Lawyer” above.

What about assigning information technology to the paralegals or the staff? In a small firm this is almost inevitable. Again, the question should be asked: is this wise? Is this efficient? Is there a better way? I think that question is open and can be answered in different ways depending on the people, the firm and the culture involved.

One thing is certain, however, a law firm staff needs to understand how to use their equipment. Functioning in the modern practice of law includes mandatory on-line filing of pleadings and exhibits in federal court, and the soon to be prolific or mandatory on-line filings in many state courts require technology. In my opinion, one cannot function in this modern law environment without knowing how to scan documents, create PDFs, manipulate PDFs on the computer, reduce the file size of PDFs, use email, and search email. Those are just the basics. These and other emerging skills arguably should be part of an ongoing in-house training regimen championed by a staff person..

Even if the firm is large enough to find a qualified staff or paralegal that can act as a part-time IT technician, that itself is a hard role to fill. One of the exciting developments of cloud computing is that there appears to be an increased number of qualified companies and third-party vendors offering services to small businesses. When a small company can rely on a third-party vendor with a good service record and the ability to make implementation easy, quick and non-technical, many of the problems associated with IT support are minimized.

These third party vendors include the hosted email Exchange server, the off-site file storage and backup companies, the off-site file servers, and the remote PC access vendors.

TO BE CONTINUED — LOOK FOR PART II!!

(*)Needless to say, we are also governed by the law, including the Washington State Bar Association, authorized by the Supreme Court, and the Rules of Professional conduct. This paper tries to focus on the business issues we face as lawyers and how technology can help or hurt those business endeavors. Said another way, we are not looking at the practice of law, we are looking at the business of law along with the technology and economic forces that can impact the business.

(**)A home-based office can be set up to accommodate the feeling of a separate office, and I have had good experience with that.

**This is important information for the Intellectual Property Community in Seattle and around the world. This is the first opinion of its kind.

Bernardo Burstein, Burstein & Associates PA, Jesus Sanchelima, Sanchelima & Associates, Miami, FL, for Plaintiff.

Timothy B. McCormack, McCormack Intellectual Property Law Business Law P.S., Seattle, WA, Tom John Manos, Tom J. Manos PA, Miami, FL, for Defendant.

Opinion

*1 This matter is before the Court on Plaintiff Olem Shoe Corp.’s Motion for the Issuance of Request to Register of Copyrights Pursuant to 17 U.S.C. § 411(b)(2) (D.E.# 76). Defendant Washington Shoe has accused Olem Shoe of infringing two of its copyrights. Olem Shoe alleges that Washington Shoe’s copyrights are invalid because Washington Shoe submitted inaccurate information to the Copyright Office when registering the copyrights. In the present motion, Olem Shoe asks the Court to submit a series of questions to the Copyright Office for an advisory opinion as to whether the Register of Copyrights would have refused registration if it had known of the allegedly inaccurate information. The parties have submitted numerous briefs regarding Olem Shoe’s questions, and the Court held two hearings on the motion on June 9, 2010 and on August 11, 2010. For the reasons stated during the hearings and below, the Court grants in part and denies in part Olem Shoe’s motion.

I. Background

Olem Shoe and Washington Shoe both sell women’s boots. This case is about two of Washington Shoe’s boot designs called “Ditsy Dots” and “Zebra Supreme.” As the names suggest, Ditsy Dots boots are polka-dotted, and Zebra Supreme boots have a patterned design like a zebra’s black and white striped skin. Washington Shoe sent Olem Shoe cease-and-desist letters accusing Olem Shoe of selling “knock-off” versions of the boots and infringing Washington Shoe’s intellectual property rights. Olem Shoe brought this suit for a declaratory judgment that its boots do not infringe Washington Shoe’s intellectual property rights. Washington Shoe answered and counterclaimed for, among other things, infringement of its federally registered copyrights covering the two-dimensional patterned designs on the faces of the Ditsy Dots boots (Registration No. VAu000756950, registered August 9, 2007) and the Zebra Supreme boots (Registration No. VAu001007893, registered January 8, 2010).

Washington Shoe moved for summary judgment on its copyright infringement counterclaims. In its opposition to the motion for summary judgment, Olem Shoe asserted, among other things, that the copyright registrations are invalid under 17 U.S.C. § 411 because Washington Shoe submitted inaccurate information to the Copyright Office with the registrations.

Subject to certain exceptions, 17 U.S.C. § 411 requires copyright holders to register their works in accordance with the requirements of the Copyright Act before bringing a claim for copyright infringement. See id. § 411(a).1 Thus, a party ordinarily must have a valid copyright registration in order to bring a claim for copyright infringement. See Reed Elsevier, Inc. v. Muchnick, — U.S. —-, —-, 130 S.Ct. 1237, 1242, 176 L.Ed.2d 17 (2010).2 Parties accused of copyright infringement often argue that inaccurate information submitted in an application for registration invalidates the copyright registration. In 2008, as part of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (PRO IP Act), however, Congress amended § 411 to provide that a certificate of registration satisfies the section’s requirements, “regardless of whether the certificate contains any inaccurate information, unless” the following two requirements are met:

*2 (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. § 411(b)(1). The PRO IP Act also created a procedure for district courts to seek the advice of the Register of Copyrights as to the effect of allegedly inaccurate information on the validity of a copyright registration. Section 411(b)(2) provides:

In the present motion, Olem Shoe has asked the Court to seek the advice of the Register of Copyrights under § 411(b)(2) regarding the effect of the inaccurate information that Olem Shoe alleges Washington Shoe submitted with its copyright registrations. Olem Shoe’s motion included a series of questions for the Court to submit to the Register of Copyrights. The Court held two hearings on the motion on June 9, 2010 and on August 11, 2010. As the Court discussed at the hearings, Olem Shoe’s original questions were unclear and suffered from several problems. The Court asked Olem Shoe to submit revised questions. After a couple of iterations, Olem Shoe submitted its latest set of questions on August 19, 2010. (See D.E. # 141-4).

II. Legal Analysis
A. Seeking the Advice of the Register of Copyrights Under 17 U .S.C. § 411(b)(2)

Before reaching the merits of Olem Shoe’s proposed questions, a discussion of 17 U.S.C. § 411(b)(2) is necessary. The interpretation of § 411(b)(2) appears to be an issue of first impression in the Eleventh Circuit. In fact, the parties (and the Court in its own research) have only been able to find one instance in which a court-the District of Puerto Rico-issued a request to the Register of Copyrights under § 411(b)(2). See Velazquez-Gonzalez v. Pina, No. 07-1512CCC (D.P.R. June 1, 2009); see also 5 WILLIAM F. PATRY, PATRY ON COPYRIGHT § 17:125.50 (2010) (“Few litigants or courts have been aware of the provision, and as a result it has been used, I believe only once.”). Nevertheless, the language of § 411(b)(2) is rather straightforward. A party must allege (1) that inaccurate information was included on an application for copyright registration with knowledge that it was inaccurate, and (2) that the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. If a party makes these allegations, the statute requires the Court to seek the advice of the Register of Copyrights.

Washington Shoe has advanced several arguments why the Court should not request the advice of the Register of Copyrights. In its opposition brief (D.E. # 90), in addition to arguing about the merits of Olem Shoe’s questions, Washington Shoe argues (1) that a request to the Register of Copyrights under § 411(b)(2) is an “extremely unusual” measure that only one court has taken; (2) that the issues raised by Olem Shoe have already been fully briefed in connection with Washington Shoe’s motion for summary judgment and are ripe for adjudication by this Court; and (3) that a request would only result in undue delay and increased expense. The Court disagrees. For one thing, just because a request under § 411(b)(2) may be “extremely unusual” does not obviate the Court’s duty to comply with the statute. And because the statute was enacted in 2008, it is not surprising that only one court has submitted a request under § 411(b)(2). More fundamentally, the statutory language-“shall request”-is mandatory. Simply because the parties have already briefed the issues raised by Olem Shoe does not permit the Court to disregard the compulsory language of the statute.

*3 In its sur-reply (D.E.# 106), Washington Shoe argues that the Court’s duty to request an opinion from the Register of Copyrights is only triggered if Olem Shoe proves the two requirements in § 411(b)(1). In other words, Olem Shoe must “show” that Washington Shoe included information on its applications that it knew was inaccurate, and that the inaccurate information was “so material” that, if known, it would have caused the Register of Copyrights to refuse registration. But that is not what the statute says. Rather, the Court’s duty is triggered where “information described under paragraph (1) is alleged.” 17 U.S.C. § 411(b)(2) (emphasis added).3

Olem Shoe alleges that Washington Shoe inaccurately characterized the Ditsy Dots and Zebra Supreme designs as unpublished when it filed the copyright registrations. According to Olem Shoe, Washington Shoe published the boots by displaying them at a public trade show in Las Vegas from July 30, 2007 to August 1, 2007, and in the case of Zebra Supreme, by selling the boots in retail stores. However, when Washington Shoe filed the Ditsy Dots registration on August 9, 2007, and the Zebra Supreme registration on January 8, 2010, it did not say that the boots had been published. Olem Shoe asks the Court to submit the following questions regarding publication:

1. Whether the Copyright Register would have refused registration No. VAu 756-950 for the two-dimensional unpublished work entitled Ditsy Dots had the Copyright Register known that the boots depicted in the photographs deposited for the 2-dimensional artwork had been previously published by [Washington Shoe]?
….

6. Whether the Copyright Register would have refused the registration No. VAu001007893 for a two-dimensional unpublished work entitled Zebra Supreme-Olem had the Copyright Register known that the boots depicted in the photographs deposited for the 2-dimensional artwork had been previously published by [Washington Shoe]?

(D.E. # 141-4 at 2.)

The Court views the topic of these questions to be appropriate under § 411(b)(2). Even Washington Shoe’s counsel conceded during the August 11 hearing that Washington Shoe appears to have published the boots before it filed the copyright registrations. (See D.E. # 140, Hr’g Tr. at 8, Aug. 11, 2010.) Therefore, the Court will seek the advice of the Register of Copyrights on this subject. However, even after the Court has provided Olem Shoe multiple opportunities to revise its questions so that they are understandable to a person who is not familiar with this case, the Court is not satisfied that Olem Shoe has done so. Accordingly, it will re-phrase the questions as follows:

*4 1. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu000756950 for 2-dimensional artwork applied to 3-dimensional rain boots (“Ditsy Dots,” filed August 9, 2007) if the Register of Copyrights had known that, although Washington Shoe characterized the work as unpublished, Washington Shoe displayed the boots at a public trade show before filing the registration?

2. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu001007893 for 2-dimensional artwork applied to 3-dimensional rain boots (“Zebra Supreme-Olem,” filed January 8, 2010) if the Register of Copyrights had known that, although Washington Shoe characterized the work as unpublished, Washington Shoe displayed the boots at a public trade show and sold the boots in retail stores before filing the registration?

ii. Questions 2 and 7 Regarding Alleged Creation by a Third Party

Olem Shoe also alleges that Washington Shoe’s copyright registrations are invalid because the patterned fabric used to create Washington Shoe’s boots was created by a third party manufacturer not known to Washington Shoe. Olem Shoe asks the Court to submit the following questions:

2. Whether the Copyright Register would have refused the [Ditsy Dots] copyright application had the Copyright Register known that the pattern on the fabric of the boot depicted in the photographs deposited by the copyright claimant had been affixed to said fabric by a third party not known to [Washington Shoe]?
….
7. Whether the Copyright Register would have refused [the Zebra Supreme] registration had the Copyright Register known that the pattern on the fabric of the boot depicted in the photographs deposited by the copyright claimant had been affixed to said fabric by a third party not known to [Washington Shoe]?

(D.E. # 141-4 at 2.)

As best the Court can tell, Olem Shoe’s theory is as follows:

1. Washington Shoe employees created the Ditsy Dots and Zebra Supreme patterned designs on computers.
2. Washington Shoe then sent electronic files with the designs to China.
3. A manufacturer unknown to Washington Shoe, and not under Washington Shoe’s control, affixed the designs to the fabric that Washington Shoe’s boot supplier used to manufacture the boots.
4. The act of affixing Washington Shoe’s designs to the fabric is a separate copyrightable event.
5. Thus, the unknown manufacturer that affixed the designs to the fabric-and not Washington Shoe-owns the copyrights on the boots depicted in the photographs Washington Shoe submitted to the Copyright Office.

Olem Shoe’s theory seems to reflect a fundamental misunderstanding of copyright law. Under Olem Shoe’s theory, artists would lose the rights to their works unless they utilized their own manufacturing facilities to turn their works into end-use products. For example, a book printer, not the author, might own the copyright to a book. The Court expressed doubt about Olem Shoe’s theory during the hearings and asked Olem Shoe to submit cases to support its theory. In a supplemental brief, Olem Shoe cites just two cases, neither of which is relevant here. Olem Shoe cites Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954), for the unremarkable proposition that copyright law protects only the expression of an idea, not the idea itself. See id. at 217. This would be relevant if Washington Shoe had simply asked a manufacturer to design fabric with, for example, zebra stripes, and the manufacturer created the designs itself. Obviously, Washington Shoe could not then copyright the idea of boots with zebra stripes. Here, however, Washington Shoe created specific designs, complete with dimensions, to be physically applied by others to its boots. Washington Shoe’s copyrights cover those designs. The Chinese manufacturer’s act of manufacturing fabric with those designs was not a separate copyrightable event.

*5 The other case Olem Shoe cites, MGB Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486 (11th Cir.1990), is similarly irrelevant. In MGB Homes, the Eleventh Circuit denied a homebuilder’s claim of coauthorship of a copyrighted advertising flyer depicting the floorplan of a home. The homebuilder was the “author of the concept” for the home depicted in the flyer. Id. at 1487 n. 2. However, the homebuilder’s only contributions to the final drawings were a “thumbnail sketch of the floor plan he desired … and approval authority thereafter.” Id. at 1493. Someone else actually created the flyer and the floorplan depicted in the flyer. Just as with Mazer above, MGB Homes might be relevant if Washington Shoe had asked someone else to create the designs for its boots based on an idea or a rough sketch. But that is not the case. Washington Shoe created the final patterned design for its boots.

Because Olem Shoe’s questions are based on a flawed theory, it has failed to allege that Washington Shoe submitted inaccurate information to the Copyright Office. Accordingly, because they are irrelevant, the Court will not submit Questions 2 and 7 to the Register of Copyrights.

iii. Question 3 Regarding Derivation of Ditsy Dots

Olem Shoe also alleges that Washington Shoe submitted inaccurate information with the Ditsy Dots copyright registration because it failed to disclose that the boots depicted in the photographs submitted the Copyright Office were derived from a pre-existing drawing. Olem Shoe asks the Court to submit the following question:

Olem Shoe’s theory here seems to be that the 3-dimensional boots were derived from Washington Shoe’s previous 2-dimensional drawing, and that Washington Shoe should have disclosed the existence of the 2-dimensional drawing when it filed its Ditsy Dots registration. Perhaps this theory would have merit if the Ditsy Dots copyright registration at issue here were for a 3-dimensional work. However, the copyright registration is for the 2-dimensional artwork on the boots. Accordingly, Olem Shoe fails to allege any inaccurate information Question 3, and the Court will not submit it to the Register of Copyrights.

iv. Question 9 Regarding Derivation of Zebra Supreme

Olem Shoe also alleges that Washington Shoe submitted inaccurate information with the Zebra Supreme copyright registration because it failed to disclose that the design was derived from another similar design. Washington Shoe’s art director first created a design called “Rose Zebra Supreme” that had roses superimposed on zebra stripes with a silver lining. He then used the Rose Zebra Supreme design to create the Zebra Supreme design by removing the silver lining from the stripes and by removing the roses. (D.E. 79-1, Affidavit of Roel Salonga ¶ 3.) Washington Shoe registered the Rose Zebra Supreme design with the Copyright Office on May 21, 2009 (Reg. No. VAu000988278). When Washington Shoe registered the Zebra Supreme design in January 2010, however, it did identify Zebra Supreme as a derivative work, and it did not list Rose Zebra Supreme as preexisting material. Olem Shoe asks the Court to submit the following question:

*6 9. Whether the Copyright Register would have refused the application had the Copyright Register known that the claimant created the pre-existing work (Rose[ ] Zebra Supreme) Reg. No. VAu 988-27[8] for the same design except the roses and from which the work (Zebra Supreme-Olem) subject of Reg. No. VAu001007893 was derived?

(D.E. # 141-4 at 3.)

The Court views the topic of this question to be proper under § 411(b)(2). Accordingly, the Court will submit it to the Register of Copyrights, but it will rephrase the question as follows:

3. Would the Register of Copyrights have refused Washington Shoe Company’s Registration No. VAu000756950 for 2-dimensional artwork applied to 3-dimensional rain boots (“Ditsy Dots,” filed August 9, 2007) if the Register of Copyrights had known that, although Washington Shoe did not identify the work as being a derivative work, Washington Shoe created the artwork by altering its previously registered copyright Registration No. VAu000988278 (“Rose Zebra Supreme,” filed May 21, 2009)?

v. Questions 4 and 5 Regarding “Reconstruction” of Ditsy Dots

Finally, Olem Shoe makes much of the fact that Washington Shoe apparently re-filed photographs for the Ditsy Dots copyright registration in 2009. According to Washington Shoe, the Copyright Office lost the original photographs submitted in 2007 and asked Washington Shoe to submit new photographs. Olem Shoe characterizes this procedure as “unorthodox” and alleges that Washington Shoe’s submission in 2009 was an improper “reconstruction” of the registration. Olem Shoe asks the Court to submit the following two questions:

4. Whether claimant’s filing of two “new” photographs in 2009 for the 2007 copyright registration (Ditsy Dots) would have been refused by the Copyright Register as an improper reconstruction?

5. Whether claimant’s filing of two “new” photographs in 2009 would have been refused by the Copyright Register even if it were to clarify or amplify the registration filed on August 9, 2007?

(D.E. # 141-4 at 2.)

Completely lacking from these questions is any allegation of inaccurate information. Olem Shoe does not allege that Washington Shoe submitted inaccurate information when it responded to the Copyright Office’s request. Moreover, the questions do not even make senseOlem Shoe wants the Court to ask the Copyright Office if it would have accepted photographs that it has already accepted. The Court will not entertain such nonsense. Accordingly, the Court will not submit Questions 4 and 5 to the Register of Copyrights.

III. Conclusion

For the foregoing reasons, it is hereby ORDERED that Olem Shoe’s motion is GRANTED IN PART, DENIED IN PART. Subsequent to this Order, the Court will issue a request under 17 U.S.C. § 411(b)(2) for the Register of Copyrights.

DONE and ORDERED.
Parallel Citations
2010 Copr.L.Dec. P 29,968

The Register notes the court’s concern regarding the structure of 17 U.S.C. § 41l(b)(2) and the potential that the provision might be abused by litigants. See, Footnote 4 of the Order on Motion for Issuance of Request to Register of Copyrights. Since the Office played an instrumental role in the amendment of 17 U.S.C. § 411(b)(2) as part of the Prioritizing Resources and Organization for Intellectual Property Act of 2008, the Register takes this opportunity to relay its insight regarding the provision. The amendment to 17 U.S.C. § 41l(b)(2) was adopted in order to address situations in which courts of appeals have misunderstood Copyright Office registration practices and came to erroneous conclusions about alleged misstatements on applications for registration. See Raquel v. Education Management. Corp., 196 F.3d 171, 177 (3d Cir. Pa. 1999), vacated and remanded, 531 U.S. 952 (2000)(1). See also Greenberg V. National Geographic Society, 244 F.3d 1267. 1273 (11th Cir. Fla. 2001)(2). As a result of these decisions, 17 U.S.C. §411(b)(2) was amended to ensure that no court holds that a certificate is invalid due to what it considers to be a misstatement on an application without first obtaining the input of the Register as to whether the application was properly filed or, in the words of § 411(b)(2), “whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.” The Register readily admits that in many, and perhaps even most, cases in which it is alleged that there is a misstatement on an application that might lead a court to conclude that the registration cannot be relied upon as satisfying the statutory prerequisite for an infringement suit, there may be little need for the assistance of the Register because the answer will be apparent. However, 17 U.S.C. § 411(b)(2) was enacted because a court will not always know what information would or would not make a difference in the Register’s determination whether to register a copyright.

While 17 U.S.C. § 41 l(b)(2) requires the court to seek the Register’s advice when there is an allegation that an application contains inaccurate information, the Register observes that the statute says nothing about the timing of the request. The Register suggests that, at a minimum, the court retains the power to delay the request until a factual record has been developed, e.g., through affidavits or discovery. The Register believes that if a court concludes that the bare allegations are unsupported by any facts, the court would be free to refrain from issuing requests to the Register. The court could, for example, entertain a motion for partial summary judgment prior to referring certain questions to the Register. If the court concludes that there is no factual basis for certain allegations, such as an allegation that the plaintiff is not the author or copyright owner of the work in question, the court might come to a conclusion on such issues as a matter of law, in which case there may be no need to refer the question to the Register. In other words, before asking the Register whether she would have refused to register a copyright if she had known about a particular alleged misstatement of fact on an application, a court should feel free to determine whether there is in fact a misstatement of fact.(3) In addition, the Register agrees with the Court’s conclusion that a court will not be bound by the Register’s response to a request made pursuant to § 411(b). However, since the issue is whether the inaccuracy of the misstatement on the application would have caused the Register to refuse registration, the Register respectfully submits that it would be appropriate for the court to give deference to the Register’s response in such matters, since the Register is in the best position to state what the Register would or would not do under the stated circumstances.

Dated: October 14, 2010

_____________________________
MARYBETH PETERS
Register of Copyrights

(1) In Raquel, the Supreme Court vacated the Third Circuit’s decision that concluded that a statement regarding the “nature of this work’” on an application was inaccurate and would have occasioned the rejection by the Register of Copyrights of Raquel’s application for copyright registration if the Register had realized it was inaccurate. The case was remanded for further consideration in light of the position asserted by the Solicitor General in his brief for the United States, as amicus curiae, filed September 20, 2000, and the Copyright Office’s July 5, 2000, Statement of Policy, 65 Fed. Reg. 41508, both of which identified the Third Circuit’s misunderstanding of longstanding Copyright Office registration practices.
(2) In that case, the Eleventh Circuit misunderstood the Copyright Office’s longstanding registration
practices regarding identification of authorship identified in an application for registration.
(3) The Register cautions, however, that if that issue depends even in part on interpretation or understanding of the Copyright Office’s registration practices, the more prudent practice – and the practice anticipated in §
41 l(b) – would be to refer the question to the Register. For example, in Raquel, supra, the court
misunderstood the purpose of the “Nature of this Work” space on the copyright registration application and concluded that the copyright claimant had made a false statement of fact in completing that part of the application. The court’s conclusion was based on an misunderstanding of the function of the “Nature of this Work” space on the application, a misunderstanding that could have been corrected if the court had sought the guidance of the Register.

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Harnessing the Power of the Internet for Your Practice

The only Washington case to mention inevitable disclosure is an unpublished Washington Court of Appeals case, Solutec Corp. v. Agnew, 88 Wash. App. 1067, 1997 WL 794496 (Wash. App. 1997) (noting the lack of Washington law on inevitable disclosure) (unpublished){1}. Solutec has no precedential value; therefore, it is for this Court to decide whether inevitable disclosure should be considered law in Washington for purposes of this case. See Wash. Rev. Code Ann. 2.06.040.

Additionally, inevitable disclosure was not essential to the Solutec case. The main issue in that case was whether certain edible wax formulas were trade secrets, because the defendants had actually threatened to use the formulas, asserting that they were not trade secrets. See Solutec 1997 WL 794496 at *1, 4 (trial court made a specific finding that defendants had threatened to misappropriate plaintiff’s trade secrets). The Solutec decision also does not discuss the inevitable disclosure doctrine directly, it simply cites favorably to PepsiCo in a short two-paragraph discussion.

1. Inevitable disclosure improperly restricts the freedom of individuals to pursue their careers by changing jobs.

Inevitable disclosure operates as a constraint on freedom of employment by allowing employers to enjoin former employees from working for competitors without a covenant not to compete. See PSC Inc. v. Reiss, 111 F. Supp.2d 252, 256 (W.D.N.Y. 2000) (“in cases that do not involve the actual theft of trade secrets, the court is essentially asked to bind the employee to an implied-in-fact restrictive covenant based on a finding of inevitable disclosure.

Such a constraint on freedom of employment is contrary to Washington’s trade secrets and employment laws. In what is easily the most comprehensive case addressing Washington trade secrets law, the Washington Supreme Court, sitting en banc in a case subsequent to the unpublished Solutec decision, stated that “[a]s a general rule, an employee who has not signed an agreement not to compete is free, upon leaving employment, to engage in competitive employment.” Ed Nowogroski Ins. Inc. v. Rucker, 137 Wash.2d 427, 437 (Wash. 1999). The court went on to say that former employees remain under a duty not to disclose their former employer’s trade secrets and that when those trade secrets are improperly used, then that competitive activity can be enjoined or damages can be awarded. Id. at 437-8. Nothing in that opinion indicates that employees can be enjoined from working in their chosen profession under the Washington UTSA absent a showing of actual or threatened misappropriation. While the Washington Supreme Court did not address inevitable disclosure directly,{2} inevitable disclosure is contrary to the Court’s broad proclamation in favor of employee mobility. Indeed, courts that have rejected the inevitable disclosure doctrine have consistently emphasized the constraints it places upon freedom of employment in the absence of a non-compete agreement as a main reason for rejecting the doctrine. See e.g., Bayer Corp. v. Roche Molecular Sys., Inc., 72 F. Supp.2d 1120 (N.D. Cal. 1999) (stating that applying inevitable disclosure when there is no showing of actual or threatened use or disclosure “creates a de facto covenant not to compete”); EarthWeb, Inc. v. Schlack, 71 F. Supp.2d 299, 311 (S.D.N.Y. 1999) (“[c]learly, a written agreement that contains a non-compete clause is the best way of promoting predictability during the employment relationship and afterwards”); and PSC, 111 F. Supp.2d at 256-7.

2. Inevitable disclosure gives too much power to employers.

In addition to creating de facto covenants not to compete, inevitable disclosure gives employers a powerful tool by which they can improperly threaten and cower employees into staying with the company. See EarthWeb, 72. F. Supp.2d at 310-11 (describing how inevitable disclosure can be a “powerful weapon” in the hands of an employer and how the threat of litigation can have a “chilling effect” on employees’ legal right to switch jobs).

In contrast, a non-compete agreement is negotiated in advance, mutually agreed upon, and provides specific guidance regarding prohibited actions. See EarthWeb, 71 F. Supp.2d at 310-11 (describing the numerous problems with applying the inevitable disclosure doctrine, which the court described as “fraught with hazards,” including the lack of a “frame of reference because there is no express non-compete to test for reasonableness”).

With the inevitable disclosure, however, employers can get all of the benefits of a non-compete agreement (including the threat of it, which is perhaps the most important of all) without having to give up or negotiate anything. See EarthWeb, 71 F. Supp.2d at 310-11 (stating that the “chilling effect” caused by the “risk of litigation” posed by inevitable disclosure and other “constraints should be the product of open negotiation”). Inevitable disclosure is simply not consistent with Washington law, which supports the rights of employees to freely move between jobs.

3. Adoption Of Inevitable Disclosure Is Contrary To Washington’s Public Interest.

Separate and apart from inherent fairness to employees, there is a strong argument that freedom of employee movement helps promote a state or region’s economy, especially in the field of technology, and that restrictions on employee movement can impede growth. For example, Professor Ronald Gilson has argued that one of the main reasons for the boom in Silicon Valley, compared to Massachusetts Route 128,{3} was due to California’s refusal to enforce non-compete agreements, allowing much more employee mobility and consequently, a greater sharing of knowledge. Ronald J. Gilson, The Legal Infrastructure of High Technology Industrial Districts: Silicon Valley, Route 128, and Covenants Not to Compete, 74 N.Y.U.L. Rev. 575 (1999); see also AnnaLee Saxenian, Regional Advantage: Culture and Competition in Silicon Valley and Route 128 (1994). Indeed, Gilson specifically argued against the adoption of inevitable disclosure, arguing that it could end California’s economic advantage over other regions. See Gilson, 74 N.Y.U.L. Rev. at 622-27.

While adoption of inevitable disclosure might have a more dramatic effect on California, due to its general refusal to enforce covenants not to compete, a stronger argument could be made for applying it in California for just that reason. In contrast, Washington enforces reasonable non-compete agreements. See Knight, Vale and Gregory v. McDaniel, 680 P.2d 448, 451-52 (Wash. App. 1984) (citing Sheppard v. Blackstone Lumber Co., Inc., 540 P.2d 1373 (Wash. 1975). If employers want to restrict valuable employees from working for competitors in Washington, then they can negotiate a non-compete agreement with that employee. Similarly, employers have remedies under traditional trade secrets laws for former employees that actually disclose or threaten to disclose trade secrets. Inevitable disclosure simply gives employers a weapon that they already demonstrated it will use improperly. And as professor Gilson demonstrates, inevitable disclosure is contrary to the interests of the public at large.

In September 2002, a California appellate court ruled that the theory of “inevitable disclosure” is not recognized in California. The decision, Whyte v. Schlage Lock Co., 101 Cal. App.4th 1443 (Cal App. 2002), is important for trade secrets law, even though several federal courts have already rejected the “inevitable disclosure” theory. The Whyte court made clear that the “inevitable disclosure” theory conflicts with California’s strong policy in favor of every employee’s right to take the job of his or her choice. It also rejected the idea that the phrase “threatened misappropriation” in California’s Uniform Trade Secrets Act is a proxy for “inevitable disclosure” lawsuits. The critical portions of California’s Uniform Trade Secret laws are exactly the same as Washington’s statutes.

On January 2, 2002 a New York appellate court ruled that the doctrine of inevitable trade secret misappropriation is greatly disfavored and presumably not the law of New York. (Marietta v. Fabhurst, 2002, WL 31898398 (N.Y.A.D. Dept. 3 2002). However, the district court started to change its opinion in 2006. In Estee Lauder Cos. V. Batra, for example, the court found “[e]ven where a trade secret has not yet been disclosed, irreparable harm may be found based upon a finding that trade secrets will inevitably be disclosed…” Estee Lauder Cos. V. Batra, 430 F Supp 2d 158, 174 (S.D.N.Y. 2006). Here are some case notes:

1. Estee Lauder Cos. V. Batra, 430 F Supp 2d 158, 174 (S.D.N.Y. 2006) “Even where a trade secret has not yet been disclosed, irreparable harm may be found based upon a finding that trade secrets will inevitably be disclosed, where…the movant competes directly with the prospective employer and the transient employee possesses highly confidential or technical knowledge concerning []marketing strategies, or the like.”

2. Payment Alliance International, Inc v. Ferreira, 530 F. Supp. 2d 477, 481(S.D.N.Y. 2007).The court in this case directly discussed Marietta Corp. v. Fairhurst, “Thus, while these cases suggest that proof of inevitable disclosure would not provide a basis for injunctive relief independent of an express restrictive covenant. In fact, “a number of recent decisions, principally from federal district court applying New York law, have used proof of inevitable disclosure as a basis for enforcing restrictive covenants.”

3. IBM v. Mark D. Papermaster, 2008 WL 4974508, (S.D.N.Y. 2009)->The Court cited Estee Lauder v. Batra to support its order that the defendant is enjoined from working for or with direct competitor of plaintiff until further order of the Court.

{1} Washington law is quite clear in stating that unpublished opinions have no precedential value. See Wash. Rev. Code Ann. § 2.06.040 (“All decisions of the court having precedential value shall be published as opinions of the court. Each panel shall determine whether a decision of the court has sufficient precedential value to be published as an opinion of the court. Decisions determined not to have precedential value shall not be published.”).
{2}There was no dispute in Nowogroski regarding misappropriation, the issue was whether the information in question was a trade secret or not.
{3}In 1968, technology employment in Route 128 was triple that of Silicon Valley. Over the next few decades, Silicon Valley surged past Route 128. See Gilson, 74 N.Y.U.L. Rev. at 586-87.

Copyright infringement can occur willfully or “accidentally,” but copyright law prohibits both. One federal court recently held, “there is no need to prove anything about a defendant’s mental state; [copyright infringement] is a strict liability tort.” A strict liability tort is a legal wrong that does not require a “mental intent.”

In other words, a copyright owner, does not need to prove a defendant intentionally infringed the copyright in order to create liability because it is a “strict liability” tort [1]. If you copy a picture from the Internet without permission, for example, you can be liable for damages even if you did not know the picture was copyrighted. That is the essence of “strict liability.”

Further, if you hire someone (an employee or an independent contractor or a web designer) you are also liable for using a pictures posted to your website by that third party even if you did not know what they did. Said another way, the business displaying the copyrighted work without permission on their website is liable as the end user.

In fact, two or more people can be liable for the same act or acts of copyright infringement. This is called “joint liability.” If parties have joint liability, then they are each liable up to the full amount of the damages. Courts have found joint liability in such circumstances as a corporation’s president being jointly liable for publication of imagery from a CD-Rom. Other examples include website owners held liable for a third-party uploading content on their website (owner of website, infringed copyrights by distributing copyrighted photographs, even when website operator did not know that the photographs had been uploaded onto website).

If your web designer is liable so are you. Sadly, the party with the deepest pockets is the one that will likely get sued. In most cases that is the business owner that hired the web designer. The damages for this type of infringement can also be quite steep.

Under federal law, a copyright owner can be entitled to a $750 to $30,000 per infringement. If it is shown that the infringement is willful the law allows as much as $150,000 per infringement.

Recent jury awards have ranged from $675,000.00 to in excess of $1 Million dollars in damages for copyright infringement. One recent jury in Western Washington awarded over one-million dollars in damages for unauthorized use of as few 5 photographs or images. In another recent case a jury awarded $675,000 for infringing as few as 30 copyrighted works. The old adage, “ignorance of the law is never an excuse” applies to copyright law because even if you didn’t know, you might still be liable.

In some cases a standard business liability insurance policy (“slip and fall” policies) will cover copyright infringement claims made against a business. This is called “advertising insurance.” Ask your insurance agent if you have such coverage or consult a knowledgeable intellectual property or insurance lawyer can help determine if you have such coverage.

Above all, do not use copyright content without permission. A good general rule of thumb is, “if you did not take the picture, it is not yours.”

Double check your business insurance policies to make sure you are covered for “advertising” injuries because these types of claims can sneak up on you and in many cases you might be completely unaware of latent liabilities. Lastly make sure you have a good contract with any website developer and use only reputable companies. A development company located abroad might seem cheap until you get served with a copyright infringement lawsuit.

[1] Educational Testing Service v. Simon, 95 F. Supp. 2d 1081, 1087 (C.D. Cal. 1999) (holding copyright infringement occurred because the plaintiff owned the copyright and the defendant copied protected material).

Originally Published in the January 2010 Edition of Seattle Business Magazine

Intellectual property is the United States’ second largest export (second only to agriculture). We have come a long way since the manufacturing glory days of Henry Ford. In the twenty-first century we still make tangible products but it is the intangible trademarks, copyrights, patents, and trade secrets that help make the bottom line count. The following introduction to intellectual property provides a brief overview of the intangible property protections that can help businesses and non-profit organizations.

Web Site Issues

A variety of legal issues can arise in developing and operating a web site. As the development of e-commerce unfolds, an organization’s web site presents valuable potential benefits to the organization. A web site, however, also exposes an organization to potential liabilities and violations of state and federal legislation and international laws. This is one of the fastest growing areas of the law. It is impossible to address every conceivable legal issue that might arise in the operation of the successful business. Organizations must, at least, consider a basic range of legal issues when developing and operating a web site.

Trade Secret Infringement

Trademark infringement is another common area of dispute. Trademark infringement actions can cover everything from domain name disputes and improper use of a company’s name, mark or symbol to infringement of the distinctive elements used to distinguish one’s web site on the Internet. Some trademarks are registered with the federal government. Some trademarks are registered on a state-by-state basis. Still other trademarks are protected without any registration at all under state common law. In comparative advertising it is usually acceptable to use another’s trademark so long as the advertisement does not cause consumer confusion as to the source or sponsorship of goods.

Copyright Infringement

Copyright protects creativity. The efforts of writers, artists, designers, software programmers and other talents need to be protected so that hard work can be rewarded. Copyrights, like patents and trademarks, are an effective tool against unauthorized manufacture, use, sales, or imports of one’s creative expression, including package design and in some cases product configuration.

Copyright registrations can be enforced at the United States border, creating a cost-effective way of stopping unlawful competing products from entering your key markets.

Trade Secret Infringement

A trade secret is any valuable or technical information used in business to gain competitive advantage that is also kept secret. Examples include the formula for Coca Cola and your customer or client lists. In order to qualify for trade secret protection, reasonable efforts must be made to maintain the secrecy of the business information. Trade secrets are protected under both state and federal law.

Licensing Intellectual Property

Licensing intellectual property to third parties allows a company or a non-profit corporation to exploit and capitalize on its assets. A company should appreciate that licensing empowers businesses to overcome constraints (e.g., capital, manufacturing capacity, research and development capacity, market knowledge, distribution, or trademark and patent protection, or limited employees) sooner and faster than they could otherwise, making them more competitive. Before licensing intellectual property, a company should fully understand its intellectual property rights and applicable laws.

Patent Infringement

Patent protection is helpful in stopping unauthorized manufacturing, use, sales, or imports of one’s invention in the countries where the patent has issued. Patents can be very expensive but are sometimes worth the cost. It is important to think about what can be patented and if the cost of procuring the patent is worth the benefit.

Patents provide their owners with a monopoly of a particular invention/idea for a limited period of time. Patented inventions can range from the “turtle” bumps that separate our roadways to business methods and software for managing multi-tiered hub and spoke mutual funds. In many cases, patented inventions will be marked as “patented.” In some cases, however, patented inventions may not be properly marked. Interpreting what a patent covers or does not cover requires expert legal knowledge and sometimes expert technical knowledge. If patent infringement becomes an issue, the best advice is to seek expert advice.

The Right of Privacy and the Right of Publicity

The common law of many states protects individuals against intrusions into their personal privacy. There are four basic types of common law privacy intrusions. The four basic common law privacy intrusions are:
(1) unauthorized appropriation of a person’s name or likeness;[1]
(2) placing another person in a false light;[2]
(3) disclosure of private facts which are highly offensive and not newsworthy;[3]and
(4) unreasonable intrusion into an individual’s seclusion.[4] The right of publicity is similarly defined as the appropriation of the commercial value of a person’s identity, name or likeness without the person’s consent.[5]

As one can imagine, the posting of pictures or other information to one’s web site or bulletin board by customers can raise issues of: (1) copyright infringement; (2) violations of the right of privacy; and (3) violations of the right of publicity.

Defamation

The law of defamation, i.e., liable and/or slander, varies slightly from state to state, although the same basic principles apply everywhere. Defamation occurs when something false is spoken or written about a particular person and when that person is damaged by the defamation.[6] Ordinarily, one who repeats or republishes defamatory material is liable as if he or she had originally published it.[7] Entities such as news vendors and/or other distributors of defamatory material are sometimes not liable for defamation if they did not know of or have reason to know of the defamatory material.[8]

The Communications Decency Act, 47 U.S.C. § 230, provides some liability limitations to on-line service providers for defamation actions even when they know their services are being used to disseminate defamatory materials.[9] Specifically, the law says, “[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” Both “interactive computer service” and “information content provider” are defined broadly and would appear to encompass most on-line service providers, including entities operating entirely on the World Wide Web. [10]

The plain language of the statute and some case law dicta suggest that the Communications Decency Act might provide on-line service providers with a liability limitation that reaches far beyond simple defamation cases, reaching into other areas such as violations of privacy and publicity rights.

First Amendment Issues

In an age of “information” the First Amendment of the United States Constitution takes on new importance. Among other unique applications of the First Amendment, one court actually held that a United States export restriction on computer source code violated the First Amendment.

There are two legal tracts that are usually followed by courts when determining First Amendment protections in the United States. An analysis proceeding from the first tract offers greater protection and judicial scrutiny of regulations limiting the content of speech. The underlying idea is that any regulation limiting the content or “goods” found within the marketplace of ideas is unconstitutional, under any pretext (with a few notable exceptions).

The second tract allows the government, within the context of, “least restrictive means,” to put time, place, and manner restrictions on speech. The idea is that so long as the government is not regulating the content of the speech flowing into the market place it can say how and when the ideas may flow– if it has a legitimate reason.
The O’Brian case is a good example of a case from the second tract. The O’Brian court held that because the act of burning a draft card was not–itself—pure expression (but a combination of speech and non-speech acts), the government could regulate the time, place and manner of such expression because a “legitimate reason” was articulated. Because the Court found that the act of burning a draft card in public was not pure expression the stricter scrutiny of a first tract analysis was escaped.

The primary tension that runs through the “second tract” cases dealing with information dissemination is whether a given piece of information (book or aeronautical chart) is a product or expression. When courts find that information is a product, as opposed to pure expression, then product liability is imposed.

The legal trend in these cases seems to reason that useful products like the navigational charts are products and books and magazine articles are not products, even if the information in the books is useful. One exception to the First Amendment’s protection of expression is found in Brandenburg v. Ohio. Brandenburg holds that speech inciting imminent lawless activity is unprotected.

Brocklesby v. United States[11] holds that a graphical instrument approach chart is a product, subject to strict liability law even though the charts are based on governmental data.[12] As a general proposition the Brocklesby case represents the idea that under product liability law information can be considered a product if the information is manifested in a tangible medium like aeronautical charts.

The court in Winter v. G.P. Putnam’s Sons held that an encyclopedia containing misleading information about harvesting the most deadly kind of mushrooms was not a product for the purpose of product liability under the Restatement of Torts s 402(A).[13] The court reasoned that product liability is “geared to the tangible world.”[14] But, the court recognized that books have a material part and an expressive part and held that a “How to Use” book is “pure thought and expression.”[15] The legal distinction between the ideas in a book and the book itself can be found in a variety of cases. These cases generally hold that the information contained in books should not be considered a product for products liability purposes, whether the information is useful or dangerous.

In McKown v. Illinois Publishing and Printing the court refused to hold a newspaper liable for injuries to one of its readers resulting from the use of a dandruff remedy contained in one of the paper’s articles.[16] The court agreed with the statement that, “negligent words are not actionable unless they are uttered directly, with knowledge or notice that they will be acted on, to one to whom the speaker is bound by some relation of duty.”[17] This case was later held to stand for the proposition that ideas hold a privileged position in our society and are therefore not equivalent to commercial products. [18]

In Walter v. Bauer the court denied a strict tort liability claim that information contained in a chemistry book was unreasonably dangerous. [19] The court held that the chemistry book was not a product.[20] Further, the court noted that the plaintiffs proposed theory would put a chilling effect on the First Amendment Freedoms of Speech and Press because authors might become liable for writing on any topic that is potentially dangerous, such as beekeeping or timbering.[21]

In Cardozo v. True the plaintiff was poisoned while cooking when she tasted a bit of the ingredients mentioned in a recipe book. The ingredient she tasted was poisonous until cooked.[22] Her claim was premised on a theory of breach of warranty because the cook book contained inadequate instructions. In denying the claim the court drew a distinction between the physical book and the ideas contained within the book.[23] The court also recognized that it is unthinkable to require a merchant bookseller to evaluate the thought processes of the many authors and publishers who supply books for sale.[24] Another similar case is Brimingham v. Fodor’s Travel Publications where the court held that a travel book was not a product under products liability law.[25] The case involved a person who bought the travel guide and subsequently was injured on a dangerous beach.

In Herceg v. Hustler Magazine, Inc. the court holds, as a matter of law, an article explaining how to engage in the practice of autoerotic asphyxia cannot be considered incitement under the First Amendment and is thus protected speech. [26] Further the court found that imposition of civil liability damages on Hustler Magazine for publishing the article “Orgasm of Death” violated the First Amendment. [27] The court also identified four elements that must be established for a court to find that the Hustler publication was insightful under Brandenburg:

1) autoerotic asphyxiation is a lawless act;
2) Hustler advocated this act;
3) Hustler’s publication went even beyond “mere advocacy” and amounted to incitement; and 4) the incitement was directed to imminent action.[28]

The Rice v. Paladin Enterprises, Inc. case involved a hit man who followed instructions on how to become an assassin for hire found in a book about the practices and procedures of killers for hire. [29] The court reasoned that, “the only category of unprotected speech which the book “Hit Man” could conceivably be placed is incitement to imminent, lawless activity under Brandenburg.”[30]

The court, however, did not find that the book would incite, even if it did advocate lawless activity.

Liability Issues

Fundamentally, one of three basic theories of liability must be shown in order for a business or non-profit business to be liable for damages in most typical intellectual property cases. Understanding these theories of liability can help to avoid getting slammed with a needless and costly lawsuit. Also, understandably, these liability theories help one to understand how the different intellectual property laws will apply to various factual situations. The three basic theories of liability are:
(1) direct infringement;
(2) contributory infringement; and
(3) vicarious liability.[31]

Direct Infringement

A direct infringement theory of liability is used when the person who infringed the copyright or violated the right of privacy, etc. is asked to pay for the alleged damage (e.g, “you damaged me and therefore you should pay for my damages”).

By way of example, individual on-line users typically engage in direct infringements, such as posting copyrighted or private works on a bulletin board system or unlawfully copying material from a web site.

Contributory Infringement / Liability

Equally typical, the direct infringers noted above may have few financial resources or are difficult to track down, making a claim for contributory or vicarious liability against an on-line service provider more attractive. The Supreme Court has recognized that vicarious liability is a broad third-party liability theory, of which contributory infringement is a species.[32]

As a general rule, “one who, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing activity of another, may be held liable as a contributory” infringer.”[33] The “knowledge” element of contributory copyright infringement is objective; that is, the alleged contributory infringer must know or have reason to know of the work in question that constitutes an infringement. [34]

Ordinarily, one who repeats or republishes defamatory material is liable as if he or she had originally published it. [35] Entities such as newspaper vendors or other information distributors are generally not liable for defamation if they did not know of or have reason to know of the defamatory material being distributed by them. [36]

There are two categories of actions that typically give rise to contributory liability. The first is when the defendant acts in concert with the direct infringer by contributing labor to the infringing activity. Newspaper vendors and/or other distributors of defamatory material, for example, are sometimes liable for contributory infringement when they know or have reason to know they are distributing defamatory material. The second kind of action that typically gives rise to contributory liability is when the defendant acts in concert with the direct infringer by contributing materials or equipment necessary for the infringement to occur.[37]

Vicarious Liability

Under a more general theory of vicarious liability, two elements must be established. First, the (vicariously liable) third party has the right and ability to supervise infringing activities by the direct infringer (but not necessarily knowledge of the same).[38] Second, the (vicariously liable) third party must have a direct financial interest in the direct infringement.[39]

Considering the different theories of liability is also helpful when considering strategies for reducing Internet related liability issues. The three basic theories of liability that should be considered are:
(1) direct infringement;
(2) contributory infringement; and
(3) vicarious liability.

Limiting Direct Infringement Actions

Direct copyright infringement occurs when a particular business or one of its employees, agents, etc. violates someone else’s copyright while acting on behalf or for the profit of the particular business. Third party liability, on the other hand, as explained above, is when a particular business is liable for the infringing activities of unrelated third parties. Limiting claims of direct infringement can sometimes be as easy as avoiding activities that infringe other people’s legal rights. The following is a list of activities to avoid or approach with caution.

Avoid using other people’s trademarks

Avoid use of other people’s trademarks, package configurations, distinctive elements of a competitor’s web site, etc., without their permission. Use of a competitor’s trademark is often acceptable in comparative advertising or when discussing a competitor.

Avoid using other people’s patented inventions

Avoid using or emulating any invention that is marked as “patented” or “patent pending” without the advice of counsel. Patent infringement can be very expensive; approach with caution.

Avoid using or copying material that is presumably copyrighted

Avoiding the use of material that is presumably copyrighted will reduce the likelihood of a copyright infringement action. Material that is presumably copyrighted includes: (1) email, (2) Usenet and news group posting, (3) bulletin board system (BBS) posting, (4) mailing list posting, (5) postings to Internet Service Providers (such as America Online and Microsoft Network), (6) interactive chat communications (IRC), (7) recordings of communications via Internet telephone and Internet video conferencing, (8) web page contents, (9) computer graphics, (10) sound, and (11) video.

Avoid violating other people’s privacy and publicity rights

As mentioned above, liability for posting someone else’s picture can violate the copyrights and also the privacy or publicity rights of the person appearing in the picture. Do not assume that insulation from copyright liability will protect you from liability for other actions based on privacy and publicity rights. When in doubt, get permission from the people whose image appears in a particular photograph, etc.

Avoid saying things that can be construed as false or untrue

Defamation of a person’s character and/or casting someone’s reputation in a false light can cause litigation woes if the person being defamed decides to take legal action. Imprudent
E-mail, or postings to a computer bulletin board can give rise to these types of actions. While truth is always an absolute defense, it is best to consider what proof you have before saying things about other people and companies that might not be true.

Direct infringement defamation actions against businesses are relatively rare. Actions based on an employee’s false statements, however, can give rise to a defamation suit based on vicarious liability with greater frequency.

Limiting Contributory Infringement Actions

Contributory infringement is when one acts with knowledge of an infringing activity or induces, causes, or materially contributes to an infringing activity of another.

If a business becomes aware that it, or its employees, agents, etc., are engaged in an infringing activity, then the business must take corrective steps.

So long as corrective steps are taken, the “knowledge” element of the contributory infringement cannot be met.

In addition to having knowledge of an infringing activity, a business must also be involved, e.g., contribute to the alleged infringement in some way, for a contributory infringement action to stand.

In some cases a business might unwittingly contribute labor or equipment or provide a forum that contributes to an infringing activity. To help avoid unwitting contributory infringement computer bulletin boards and/or web sites, that accept material from third parties, one should follow the “passive conduit” model. That is to say, on-line forums should be self-regulated and contain disclaimers to the same effect. An example disclaimer might read:

Company XYZ exercises no control over the content of the information passing through our on-line service or posted to our web site. The forum provided is self-regulated. Any unlawful acts are the sole responsibility of the individuals committing such acts.

Please be sensitive to the rights of ownership and assure compliance with the law. To the extent that an unlawful activity occurs, our registered copyright agent is available to receive reports of such. Even though the forum is self-regulated, we will cooperate with the parties involved in helping to prevent and correct unlawful activity occurring though the use of our on-line services.

Active control or management of a computer-related forum, on the other hand, can give rise to contributory infringement because both knowledge infringing activities and participation/facilitation of the infringing activities is potentially present.

As mentioned above, certain provisions of the Communications Decency Act provide on-line service providers with an extra layer of liability protection for defamation actions. Under the protective provisions of the Communications Decency Act, an on-line service provider can take a more active role asserting “editorial control”/self-regulation of their sponsored systems with less fear of being liable as a “publisher” of defamatory material. In some cases, the same provisions of the Communications Decency Act might provide liability insulation for other alleged wrongful acts such as violations of publicity and privacy rights. The same is also true of the Digital Millennium Copyright Act, discussed later in this book.

Limiting Vicarious Liability Actions

Vicarious liability has two elements: (1) the right and ability to supervise infringing activities (but not necessarily knowledge of the same); and (2) direct financial interest in the direct infringement. Minimizing claims of vicarious liability can be accomplished by reducing the likelihood that either of the two elements mentioned above will exist.

The right and ability to supervise infringing activities

Following a “passive conduit” model for web services, as mentioned above, should reduce the chances of being vicariously liable for infringing activities occurring on one’s web site or Internet service. If one’s web site or Internet service is simply a conduit for information, the “right and ability to supervise infringing activities” will not exist to any significant extent. As mentioned above, the Communications Decency Act and the Digital Millennium Copyright Act provide safe harbors for on-line service providers wishing to exercise some editorial control of their on-line services.

Direct financial interest in the direct infringement

In order to be vicariously liable for a third party’s infringing activity one must have a “direct financial interest in the direct infringement.” The best line of defense against this element of a vicarious liability claim is that there is no direct financial benefit attributable to the direct infringement. In situations where a fee is charged for an on-line service, the safest approach is to charge a flat fee. A flat fee, like the rent charged by a landlord, is constant, having no fluctuation in relation to any infringing activities. [40]
Thus, in most cases, a flat fee is not directly related to any particular infringing activity.

RECAP: Intellectual Property Liability Issues

Fundamentally, one of three basic theories of liability must be shown in order for a business or non-profit business to be liable for damages. The three basic theories of liability are: (1) direct infringement; (2) contributory infringement; and (3) vicarious liability. Limiting claims of direct infringement can sometimes be as easy as avoiding activities that infringe other’s people’s legal rights.

Avoid: (1) using or copying copyrighted material; (2) using other people’s trademarks; (3) using other people’s patented inventions; (4) violating other people’s privacy and publicity rights; (5) saying things that can be construed as false or untrue.

Contributory infringement is when one acts with knowledge of an infringing activity or induces, causes, or materially contributes to an infringing activity of another. To help avoid unwitting contributory infringement, computer bulletin boards and/or web sites, that accept material from third parties, should follow the “passive conduit” model. That is to say, on-line forums should be self-regulated and contain disclaimers to the same effect.

Information service providers should limit and diminish any “editorial” control over user provided content. Vicarious liability has two elements: (1) the right and ability to supervise infringing activities (but not necessarily knowledge of the same); and (2) direct financial interest in the direct infringement.

Minimizing claims of vicarious liability can be accomplished by reducing the likelihood that either of the two elements mentioned above will exist.

[1] George B. Delta, et al., Law of the Internet 6-4 (1998) (quoting Restatement (Second) of Torts § 652 C (1977)).
[2] Id. (quoting Restatement (Second) of Torts § 652 E ).
[3] Id. (quoting Restatement (Second) of Torts § 652 D).
[4] Id. (quoting Restatement (Second) of Torts § 652 B).
[5] Restatement (Third) of Unfair Competition § 46 (1993).
[6] See, e.g., Cubby, Inc. v. CompuServe, Inc., 776 F. Supp. 135 (S.D.N.Y. 1991).
[7] Id. at 139.
[8] Id.
[9] See Zeran v. America Online, Inc., 958 F. Supp. 1124 (E.D. Va 1997) and Blumenthal v. Drudge, 992 F. Supp. 44 (D.D.C. 1998).
[10] An “interactive computer service” is defined as “any information service . . . that provides or enables computer access by multiple users to a computer server . . . .” 47 U.S. C. § 230 (f)(2). An “information content provider” is defined as “any person or entity that is responsible . . . for the creation or development of information provided through the Internet.” 47 U.S. C. § 230 (f)(3).
[11] See Brocklesby v. United States, 767 F.2d 1288, 1294-95 (9th Cir. 1985) (applying Restatement for the purpose of California law), cert. denied, 474 U.S. 1101, (1986); Saloomey v. Jeppesen & Co., 707 F.2d 671, 676 -77 (2d Cir. 1983) (applying Restatement for purpose of Colorado Law); Aetna Casualty & Surety Co. v. Jeppesen & Co., 642 F.2d 339, 342 – 43 (9th Cir. 1981) (applying Nevada law); Fluor Corp. v. Jeppesen & Co., 170 Cal. App. 3d 468, 475, 216 Cal rptr. 68, 71 (1985)(applying California law).
[12] Brocklesby v. United States, 767 F.2d 1288, 1294-95 (9th Cir. 1985) (applying Restatement for the purpose of California law), cert. denied, 474 U.S. 1101, (1986).
[13] Winter v. G.P. Putnam’s Sons, 938 F.2d 1033, 1034 (9th Cir. 1991).
[14] Id.
[15] Id.
[16] McKown v. Illinois Publishing and Printing, 289 Ill. App. 59, 6 N.E. 2d 526 (1937) (O’Connor, J.).
[17] 6 N.E. 2d 526 at 530.
[18] Sears Roebuck and Co. v. Employers Insurance of Wausau, 585 F.Supp. 739 (N.D. Ill., 1983) (explaining the holding in McKown v. Illinois Publishing and Printing, 289 Ill. App. 59, 6 N.E. 2d 526 (1937) (dandruff case)).
[19] Walter v. Bauer, 439 N.Y.S2d 821, 451 N.Y.S2d 533 (App. Div. 1982), 88 A.D.2d 787 (chemistry book case).
[20] 439 N.Y.S2d at 822-823.
[21] Id.
[22] Cardozo v. True, 342 So.2d 1053 (Fla. App. 1977) (recipe case).
[23] Id. at 1056.
[24] Id.
[25] Brimingham v. Fodor’s Travel Publications, 833 P.2d 70.
[26] Herceg v. Hustler Magazine, Inc., 814 F.2d 1017, 1024 (5th Cir. 1987).
[27] Id. at 1030 (Edith Jones, J., concurring and dissenting that the majority is grating almost complete protection from tort liability under the First Amendment).
[28] 814 F.2d 1017, 1022.
[29] Rice v. Paladin Enterprises, Inc., 1996 WL 515786 (D.Md. 1996).
[30] Id. at 5.
[31] See generally, On-line Copyright Issues: Recent Case Law and Legislative Changes Affecting Internet and Other On-line Publishers, J. Pat. and Trademark Off. Soc’y, January-February 1997)
[32] Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 435 (1984).
[33] Gershwin Publishing Corp. v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162 (2d Cir. 1971).
[34] Cable/Home Communication Corp. v. Network Prod. Inc., 902 F.2d 829, 844 (11th Cir. 1990).
[35] Id. at 139.
[36] Id.
[37] 2 P. Goldstein, Copyright § 1.1 (2d ed. 1996); see also Boz Scaggs Music v. KND Corp., 491 F. Supp. 908, 913 (D. Conn. 1980); Universal Pictures Co. v. Harold Lloyd Corp., 162 F.2d 354, 366 (9th Cir. 1947); Cable/Home Communication Corp. v. Network Prods., Inc., 902 F.2d 829, 845-47 (11th Cir. 1990).
[38] See Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963).
[39] See generally, On-line Copyright Issues: Recent Case Law and Legislative Changes Affecting Internet and Other On-line Publishers, J. Pat. and Trademark Off. Soc’y, January-February 1997) (winner of the prestigious Rossman Award for Outstanding Publication of 1997).
[40] See generally, et al., On-line Copyright Issues: Recent Case Law and Legislative Changes Affecting Internet and Other On-line Publishers, J. Pat. and Trademark Off. Soc’y, January-February 1997) (winner of the prestigious Rossman Award for Outstanding Publication of 1997).