Internet Law
by Tom W. Bell

Ch. 07: Intellectual Property


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Table of Contents

Ch.  Subject
01:  Course Management
02:  Introduction
03:  "Law" Online
04:  Free Speech
05:  Privacy
06:  Trespass to Chattels
07:  Intellectual Property
    A. Overview
    B. Copyrights
      1) Primary Liability
      2) 2ndary Liability
      3) DMCA Defenses
      4) DMCA Liability
    C. Trademarks
      1) Domain Names
      2) Metatags, etc.
    D. Patents
    E. Trade Secrets
    F. Publicity Rights

08:  Encryption
09:  Hacking
10:  Commerce
11:  Jurisdiction
12:  Lawyers Online
13:  Review

A. Overview of Intellectual Property Issues

The Internet opens up new markets for, and new threats to, intellectual property. Does information really want to be free, as some pundits claim? Or would it be more accurate to say that some people want to get information for free while others want to profit from and protect it?

Prof. Bell's Map of Intellectual Property, (2003) (offering a schematic overview of the various types of intellectual property and how they relate to each other) [PDF format]

Tom W. Bell, Fair Use Vs. Fared Use: The Impact of Automated Rights Management on Copyright's Fair Use Doctrine, 76 N. Carolina L. Rev. 557, 581-83 (1998) (summarizing reasons for protecting copyrights and for the fair use defense) [an alternate source]

Tom W. Bell, Virtual Trade Dress: A Very Real Problem, 56 Md. L. Rev. 384, 406-09 (1997) (summarizing reasons for protecting trademarks and trade dress) [an alternate source]

Esther Dyson, Intellectual Value, 3.07 Wired, July, 1995, at 136 (arguing that the Internet makes it easier to profit from services than from content)

Jesse Walker, Copy Catfight, Reason, March, 2000, at 44 (arguing that intellectual property laws threaten to stifle popular culture)

Trend of Maximum U.S. General Copyright Term, from Tom W. Bell, Escape from Copyright: Statutory Failure vs. Market Success in the Protection of Expressive Works, 69 U. Cin. L. Rev. 741, 783 (2001) (graphing the growth in copyright's term and attributing it to public choice pressures)


  1. As we will see throughout this chapter, the Internet poses both new risks to intellectual property rights and new ways to profit from them. To what extent do you think that a lack of adequate legal protections has decreased the amount or quality of information available on the Internet? What changes, if any, would you suggest that we make to existing intellectual property laws?

  2. Lawmakers have consistently responded to changes effectuated by the Internet by increasing statutory protections for intellectual property. Why do you think that they have done so?

Useful Resources and Optional Reading


Bell's Class #14: Please read the material in Ch.07.A.


B. Copyrights

1) Primary Liability for Copyright Infringement

Kelly v. Arriba Soft Corp., 336 F.3d 811 (9th Cir. 2003) (affirming judgement that "thumbnail" reproductions of images published on web constitute fair use, but remanding for further deliberations on question of whether defendant's display via in-line links of full-sized versions of plaintiff's images likewise qualified as fair use) [an alternate source.]

Los Angeles Times v. Free Republic, 2000 U.S. Dist. LEXIS 5669, 54 U.S.P.Q.2D (BNA) 1453, 2000 Copy. L. Rep. (CCH) P28,075, 28 Media L. Rep. 1705 (D.C. Cal. March 31, 2000) (finding that defendant website's unauthorized copying and posting of plaintiffs' news articles did not qualify for the fair use defense) [an alternate source]

UMG Recordings, Inc. v., Inc, 92 F. Supp. 2d 349 (S.D.N.Y. 2000) (granting plaintiff's motion for partial summary judgment on grounds defendant's reproduction and distribution of plaintiff's sound recordings not excused by fair use or other affirmative defenses) [an alternate source]

Microsystems Software, Inc. v. Scandinavia Online AB, 98 F. Supp. 2d 74 (D.C. Mass. 2000) (permanently enjoining the publication by defendants or anyone "in active concert or participation with them" programs designed to defeat plaintiff's copyrighted Cyber Patrol filtering software on grounds that in decompiling it defendants created an unauthorized reproduction of Cyber Patrol) [an alternate source]


  1. In subsequent proceedings of the UMG Recordings litigation, was found to have engaged in willful infringement and was assessed statutory damages of $25,000 per CD copied. See, 2000 U.S. Dist. LEXIS 13293, 2000 Copy. L. Rep. (CCH) P28,141 (S.D.N.Y. Sept. 6, 2000). The court ultimately entered judgement for plaintiff totaling $53,400,000 in statutory damages, costs, and attorneys' fees. See 2000 U.S. Dist. LEXIS 17907 (S.D.N.Y. Nov. 14, 2000).

  2. Notwithstanding the order in Microsystems Software, the and cphack.exe files--or at least The Breaking of Cyber Patrol document where the defendants' describe their work and which arguably violates the order (see infra note 3)--remain freely available. See, e.g., CyberPetrol Mirror List. Do third parties necessarily violate the order by posting such files? The plaintiffs apparently think so. See, e.g., Declan McCullagh, Mattel sends me a subpoena, wants politech reader list, March 19, 2000 (reproducing an email that McCullagh received from plaintiffs strongly suggesting that his mirror of the enjoined files violated the court's order and attempting to subpoena a log of all parties who had downloaded the files).

  3. Does "The Breaking of Cyber Patrol" fall within the scope of the court order in Microsystems Software? One might argue that because it quotes portions of Cyber Patrol's decompiled program, the essay constitutes a derivative work within the scope of the order. One of the defendants offers another argument toward the same end:
    All the court documents refer to "cphack.exe and". Since is a package that includes the essay as well as the source code for the three programs and binary for one of them, I think the essay is included in the material at issue. The plaintiffs have claimed in their press releases that they were only upset about the "Bypass Code" (i.e. cphack), not the critical essay, but their court filings have always been careful to include everything. A rational person examining the facts of the case might well suspect that the essay, which reveals the poor workmanship of Cyber Patrol, might be much more upsetting to them than the decryption software, which they can easily render ineffective with a slight patch to their own product. That could explain why they've been careful to get the court to rule on the essay, while playing up the software as the villain in the press releases. But that is only speculation.
    See Matthew Skala, Is the essay banned, or just the cracking program? in Cyber Patrol break FAQ (Sept. 29, 2001).

Useful Resources and Optional Reading

  • U.S. Copyright Office

  • For background on the technical and legal significance of MP3 files, see Recording Indus. Ass'n v. Diamond Multimedia Sys., Inc., 180 F.3d 1072, 1073-74 (C.D. Cal. 1999). That case also proves practically significant, despite its narrow legal scope, for holding that the Rio (and presumably any other personal MP3 player) does not qualify as a "digital audio recording device" subject to the technical restraints and royalty obligations imposed by the Audio Home Recording Act of 1992, 17 USC § 1001 et seq.

  • For the Microsystems Software court's analysis of how the defendants violated the copyright in Cyber Patrol, see Microsystems Software, Inc. v. Scandinavia Online AB, Civ. NO. 00-10488-EFH (D. Mass. March 28, 2000) (findings of fact and conclusions of law) (unreported).

  • In Microsystems Software, Inc. v. Scandinavia Online AB, 226 F.3d 35 (1st Cir. 2000), the court dismissed an appeal from parties against whom Microsystems had wielded the trial court's order but who had declined to intervene in the proceedings below. Although the court did not comment on whether or not the order reached to such third parties, it did observe that the plaintiffs had no power to resolve that question. "[T]he appellants place great weight on Microsystems's statements and its transmission of a copy of the injunction to the appellants. But the direction of the injunction is for the district court to determine, and the statements and actions to which the appellants advert are in no way attributable to the court." Id. at 41 n. 5.

  • Declan McCullagh, Free Links, Only $50 Apiece, Wired News, Dec. 28, 2000, reports on a service (scheme?) offered (attempted?) by in an effort to garner licensing fees for links to clients' web pages.


Bell's Class #15 and #16: Please read the material in Ch.07.B.1


2) Secondary Liability for Copyright Infringement

Religious Technology Center v. Netcom On-Line Communication Services, 907 F. Supp. 1361 (N.D. Cal. 1995) (finding neither ISP nor BBS directly or vicariously liable for copyright infringement by their users, but remanding on question of contributory liability) [one alternate source and another alternate source]

Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc., 75 F. Supp. 2d 1290 (D.Utah 1999) (granting preliminary injunction on defendant's unauthorized reproduction and distribution of plaintiff's copyrighted work and on the publication on defendant's website of addresses of third party websites infringing plaintiff's work) [an alternate source]

A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (affirming in part and reversing in part injunction on defendant's MP3 file sharing service) [an alternate source]

Metro-Goldwyn-Mayer Studios Inc., et al. v. Grokster, Ltd., et al., __ U.S. __, 125 S. Ct. 2764 (2005) (remanding for further deliberation on grounds that software distributors could be found secondarily liable copyright infringement if they knew their software would be used primarily to infringe copyrighted works and if evidence clearly indicated that the distributors intended such use) [an alternate source]


  1. Although the court in Los Angeles Times v. Free Republic assumed for the purposes of defendants' motion for summary judgement that copyright infringement could be proven, it observed that "the 'copying' of news articles at issue in this case is to a large extent copying by third-party users of the Free Republic site." 2000 U.S. Dist. LEXIS 5669, *19 (D.C. Cal. March 31, 2000). In a portion of the opinion not assigned as reading, the court observed,
    Plaintiffs contend that defendants provide instructions and tools that permit third-party copying, that they have the ability to control what is posted on their website, and that they have removed certain postings from time to time. Defendants agree that they have the technical ability to remove material from the site, but argue that it is not feasible to monitor the large quantity of daily postings the site receives. They do not respond directly to the assertion that they provide tools and instructions that permit third parties to copy plaintiffs' articles; rather, they acknowledge that "the Free Republic web site provides a virtual 'bulletin board' forum which enables and allows registered users to post whatever content they wish."
    Id. at *19 n. 29. If the defendants' liability for third parties' postings had been at issue, how should the court have decided it?

  2. The Religious Technology Center opinion that we read in this section, published at 907 F. Supp. 1361, issued from the same litigation that generated the separate opinion, published at 923 F. Supp. 1231, that we will read below at Ch.07.E.

  3. For Judge Posner's critique of the Napster opinion-a critique that helped to set the stage for the Supreme Court's review of Grokster-see In re Aimster Copyright Litig., 334 F.3d 643, 649 (7th Cir. 2003), which argues that the Napster court erred "in suggesting that actual knowledge of specific infringing uses is a sufficient condition for deeming a facilitator a contributory infringer."

  4. For the trial court decision that gave rise to the appellate decision assigned above, see A&M Records, Inc. v. Napster, Inc., 114 F. Supp. 2d 896 (N.D.Cal. 2000) (finding plaintiffs' contributory and vicarious copyright infringement claims have reasonable likelihood of success, rejecting defendant's fair use, copyright misuse, First Amendment, and waiver defenses, and enjoining defendant from facilitating the copying or distribution of plaintiffs' copyrighted compositions or sound recordings).

  5. For the order that the trial court issued on remand, following the appellate decision assigned above, see A&M Records, Inc. v. Napster, Inc., 2001 Copr. L. Dec. P 28,213, 2001 WL 227083 (N.D. Cal. March 5, 2001) (MDL No. C 00-1369 MHP) (ordering defendant to remove infringing files from its index within three days of receiving from plaintiffs information identifying protected works) [PDF format].

Useful Resources and Optional Reading

  • See Glenn R. Simpson, Pirate alert! eBay's tracking you down, ZDNet News, February 28, 2001, for a report that eBay has begun monitoring its online auction for the sale of copyright-infringing items. Reputedly, eBay has changed hands-off policy not because it fears being held secondarily liable but rather because recent court victories indicate that it can screen auction listings without being held liable for fraudulent or otherwise illegal sales.

  • Sega Enterprises Ltd. v. Maphia, 948 F. Supp. 923 (N.D. Cal. 1996) (finding operator of computer bulletin board contributorily liable for copyright infringement) [an alternate source], modifying, 857 F. Supp. 679 (1994).


Bell's Class #17: Please read the material in Ch.07.B.2


3) DMCA (Digital Millennium Copyright Act) Defenses to Online Copyright Infringement

A&M Records, Inc., et al v. Napster, Inc., 2000 U.S. Dist. LEXIS 6243, 2000 WL 573136, 2000 Copr. L. Dec. P 28,072, 54 U.S.P.Q.2d 1746 (N.D. Cal. May 5, 2000) (No. C-99-05183 MHP) (denying on grounds that it does not qualify for the "safe harbor" described in § 512(a) of the DMCA defendant's motion for summary judgment) [an alternate source]


  1. The Digital Millennium Copyright Act, Pub. L. 105-304, 112 Stat. 2860 (Oct. 28, 1998) [PDF format], includes five titles, only one of which, Title II, the Online Copyright Infringement Liability Limitation Act, concerns us here.

  2. Section 512(3)(c)(v) of the DMCA requires a copyright owner instituting notice and takedown proceedings to have "a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law." In a case of first impression, the court in Rossi v. Motion Picture Association of America Inc., 391 F.3d 1000 (9th Cir. 2004) [PDF format], held that the "good faith belief" required by that provision imposes a subjective, rather than an objective, standard.

  3. For an example of a defendant escaping secondary liability for copyright infringement by invoking the safe harbor provisions in § 512(c) of the DMCA, see Hendrickson v. Ebay, Inc., 165 F. Supp. 2d 1082 (C.D. Cal. 2001).

  4. For an analysis of the interplay between § 512 of the Copyright Act, subject of the present discussion, and § 1201, subject of the discussion below at Ch.07.B.4., see Universal City Studios, Inc. v. Reimerdes, 82 F. Supp. 2d 211, 217 (S.D.N.Y. 2000): "Section 512(c) provides protection only from liability for copyright infringement. Plaintiffs seek to hold defendants liable not for copyright infringement, but for a violation of Section 1201(a)(2), which applies only to circumvention products and technologies. Section 512(c) thus does not apply here."

Useful Resources and Optional Reading


Bell's Class #18: Please read the material in Ch.07.B.3 and Ch.07.B.4


4) DMCA (Digital Millennium Copyright Act) Liability for Interference with Copyright Protection and Management Systems

Kelly v. Arriba Soft Corp., 77 F. Supp. 2d 1116, 1121-23 (C.D. Cal. 1999) (granting summary judgment on DMCA claim on grounds that copyright management information on plaintiff's photographs was not removed by the defendant's Internet visual search engine and remained available by link) [an alternate source], affirmed in part and reversed in part on other grounds, 280 F.3d 934 (9th Cir. 2002)

Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000) (granting injunctive and declaratory relief on grounds it violates DMCA to publish or link to program designed to circumvent DVD encryption) [an alternate source]


  1. The Digital Millennium Copyright Act, Pub. L. 105-304, 112 Stat. 2860 (Oct. 28, 1998), includes five titles, only one of which, Title I, the WIPO Copyright Performances and Phonograms Treaties Implementation Act of 1998, concerns us here. It bears noting that, notwithstanding their codification in Chapter 12 of the Copyright Act, the provisions of Title I of the Digital Millennium Copyright Act really do not protect copyrights themselves so much as they protect various extra-statutory means of protecting copyrights. To clarify that distinction, it might help to picture a precious sculpture etched with its owner's name and locked in a vault. The sculpture represents a work protected by conventional sorts of copyright protection, whereas the etched name represents a copyright management device and the vault a copyright protection system, both of which the DMCA's provisions protect from interference.

  2. The final order in Universal City Studios enjoined defendants "and all persons in active concert or participation with them who receive actual notice of this order by personal service or otherwise" from "posting on any Internet web site . . . offering to the public . . . or otherwise trafficking in DeCSS" or any similar product or service and from "knowingly linking any Internet web site operated by them to any other web site containing DeCSS, or knowingly maintaining any such link, for the purpose of disseminating DeCSS." Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 346, 346-47 (S.D.N.Y. 2000). The court denied plaintiffs an award of attorney's fees. Id.

  3. The court in Universal City Studios, Inc. v. Corley, 273 F.3d 429 (2nd Cir. 2001), quoting extensively from the opinion that we read, resoundingly affirmed the trial court's disposition of the case.

  4. For a story relating new developments likely to make it still harder to protect the encryption of DVDs, as well as offering an update on the struggle to ban the DeCSS utility, see Declan McCullagh, Descramble that DVD in 7 Lines, Wired News, March 7, 2001.

Useful Resources and Optional Reading

  • Copyright Protection and Management Systems, 17 U.S.C. §§ 1201-05

  • RealNetworks, Inc. v. Streambox, Inc., 2000 WL 127311, 2000 U.S. Dist. LEXIS 1889 (W.D. Wash. Jan. 18, 2000) (granting preliminary injunction on defendant's traffic in Streambox VCR and similar products designed to allow downloading and storage of RealMedia files from RealServers; denying preliminary injunction on traffic in defendant's Ripper and similar products designed to convert RealMedia files into other formats on grounds that RealMedia file format not shown to constitute a technological measure preventing the creation of derivative works).

  • U.S. Copyright Office, Digital Millennium Copyright Act Summary (December 1998) [PDF format]


C. Trademarks

1) Domain Names

Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2nd Cir. 2000) (applying Anticybersquatting Consumer Protection Act, in case of first impression, to affirm injunction against use of contested domain name) [an alternate source]

People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (affirming injunction on defendant's use of PETA.ORG for "People Eating Tasty Animals" on grounds it caused initial interest confusion, did not qualify as parody, and violated Anti-Cybersquatting Protection Act) [an alternate source]

World Wrestling Federation Ent., Inc. v. Michael Bosman, Case No. D99-0001 (WIPO Arbit. & Med. Center Jan. 14, 2000) (applying ICANN policy, in case of first impression, to transfer registration of domain name to complainant on grounds of bad faith use) [an alternate source]


  1. What does Sporty's Farm indicate about the pace with which the law relating to domain names has changed, and the impact of those changes? The Second Circuit's disposition of that particular case will, at least, stand undisturbed for some time, as the U.S. Supreme Court denied the petition for a writ of certiorari. See 530 U.S. 1262 (2000).

  2. For a case raising some of the same issues addressed in People for the Ethical Treatment of Animals v. Doughney, see Jews For Jesus v. Brodsky, 993 F.Supp. 282 (D.N.J. 1998) (granting preliminary injunction on use of "" domain name on grounds plaintiff likely to prevail on claims of trademark infringement, dilution, and unfair competition) [an alternate source]. On appeal, the Third Circuit affirmed Jews For Jesus without comment. Jews For Jesus v. Brodsky, 159 F.3d 1351 (3rd Cir. 1998). It thus did not address some interesting issues raised by the trial court's decision, such as the finding that Brodsky had used the subject mark in commerce and that he could not avail himself of a parody defense.

  3. For a case holding that, contrary to People for the Ethical Treatment of Animals v. Doughney, Internet users do not suffer unduly from "initial interest confusion" when they misinterpret domain names, see Strick Corp. v. Strickland, 162 F. Supp. 2d 372 (E.D. Pa. 2001). "'Internet surfers are inured to the false starts and excursions awaiting them' and are 'unlikely to be dissuaded, or unnerved' when, after 'taking a stab at what they think is the most likely domain name for a particular web site" guess wrong and bring up another's webpage.'" Id. at 377, quoting Chatam Int'l, Inc. v. Bodum, Inc., 157 F. Supp. 2d 549, 559 & n. 17 (E.D. Pa. 2000).

  4. Regarding the extent to which decisions issued under ICANN's UDRP bind U.S. courts, see Weber-Stephen Products Co. v. Armitage Hardware and Building Supply, Inc., 54 U.S.P.Q.2d 1766, 2000 WL 562470 (N.D. Ill. May 3, 2000) (No. 00 C 1738) (holding that court not bound by outcome of pending ICANN administrative proceeding but declining to determine standard of review or degree of deference to be given result of those proceedings).

  5. The Federal Arbitration Act, 9 U.S.C.A. § 1 et seq. (2001), sharply limits judicial review of arbitration awards. Do those limits apply to arbitrations conducted under ICANN's Uniform Domain-Name Dispute Resolution Policy? Apparently not. See Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745 (E.D. Va. 2001) (holding that FAA does not limit judicial review in civil actions seeking review of arbitrations conducted under UDRP).

  6. The ACPA allows in rem actions to be brought in any district where "documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court." 15 U.S.C.S. § 1125(d)(2)(c)(ii) (2001). Some plaintiffs have invoked that provision in a novel forum-shopping strategy: 1) file suit under the ACPA in a favorable forum; 2) send a file-stamped copy of the complaint to the relevant domain name authority; 3) demand that the domain name authority "deposit with the court documents sufficient to establish the court's control and authority regarding the disposition of the registration and use of the domain name to the court," pursuant to § 1125(d)(2)(D)(i)(I); and 4) argue that under § 1125(d)(2)(c)(ii) those documents establish the "situs" of the domain in the district of the pending lawsuit. A plaintiff may contend that this strategy authorizes adjudication of the dispute even if the party who registered the domain name resides overseas, beyond the personal jurisdiction of a U.S. court. Fleetboston Fin. Corp. v. Fleetbostonfinancial, 138 F. Supp. 2d 121 (D. Mass. 2001), signals that courts will not allow plaintiffs to establish in rem jurisdiction on such a reading of the ACPA, however, which "would permit a procedure that plainly offends traditional notions of fair play and justice." Id. at 134. The court instead ruled that the ACPA allows a plaintiff to bring an in rem action only in the judicial district in which the domain name authority is located. See also Mattel, Inc. v. Barbie-Club, 00 CIV. 8705 (DLC), 58 U.S.P.Q. 2d 1798, 2001 WL 436207, 2001 U.S. Dist. LEXIS 5262 (S.D.N.Y. May 1, 2001) (accord).

Useful Resources and Optional Reading


Bell's Class #19: Please read the material in Ch.07.C.1.


2) Metatags, Framing, and Deep-Linking

Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (finding use of contested mark in meta-tag likely to cause "initial interest" confusion) [an alternate source]

Digital Equipment Corp. v. Altavista Technology, Inc. 960 F.Supp. 456 (D. Mass. 1997) (preliminarily enjoining framing on grounds it was likely to cause consumer confusion and exceeded limits of licensing agreement) [an alternate source]

Ticketmaster Corp. v., Inc., 2000 WL 1887522, 2000 U.S. Dist. LEXIS 12987, Copy. L. Rep. (CCH) P28146 (C.D. Cal., August 10, 2000) (No. CV99-7654-HLH (BQRx)) (unpublished opinion) (denying motion for preliminary injunction on claim that deep-linking constituted unfair competition) [an alternate source]


  1. For another of the surprisingly few cases applying trademark law to unauthorized framing, see Hard Rock Cafe Intern. (USA) Inc. v. Morton, 1999 WL 717995 (S.D.N.Y. Sep 09, 1999) (NO. 97 CIV. 9483 RPP) (enjoining unauthorized framing on grounds it was likely to cause consumer confusion).

  2. The Ninth Circuit affirmed Ticketmaster in a very brief unpublished opinion. See Ticketmaster Corp. v., Inc., 2 Fed. Appx. 741, 2001 WL 51509, 2001 U.S. App. LEXIS 1454 (9th Cir. Jan. 22, 2001) (No. 00-56574) (affirming denial of preliminary injunction).

  3. The court in Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 803-04 (9th Cir. 2002), affirmed a grant of summary judgement regarding the defendants' unauthorized use of "playboy" and "playmate" in the metatags of a webpage promoting Terri Welles, who was named Playboy magazine's "Playmate of the Year" in 1981 and who thereafter served as a Playboy model for some years. The Ninth Circuit excused the defendants' use of plaintiff's marks not as fair use, a defense the court reasoned would apply only had defendants' used the marks to describe Welles' services, but rather as nominative use, a defense applicable because no descriptive substitute for the marks existed, the defendants' used no more of plaintiff's marks than necessary, and the defendants' did nothing to suggest sponsorship or endorsement of Welles' site by plaintiff. Id. at 800-01. With regard to the metatags in particular, the court said:
    A large portion of Welles' website discusses her association with Playboy over the years. Thus, the trademarked terms accurately describe the contents of Welles' website, in addition to describing Welles. Forcing Welles and others to use absurd turns of phrase in their metatags, such as those necessary to identify Welles, would be particularly damaging in the internet search context. Searchers would have a much more difficult time locating relevant websites if they could do so only by correctly guessing the long phrases necessary to substitute for trademarks. We can hardly expect someone searching for Welles' site to . . . [use] "the nude model selected by Mr. Hefner's organization . . . ." Yet if someone could not remember her name, that is what they would have to do. Similarly, someone searching for critiques of Playboy on the internet would have a difficult time if internet sites could not list the object of their critique in their metatags.
    Id. at 803-04. The court applied a similar analysis to excuse defendants' use of plaintiff's marks in headlines and banner advertisements on Welles' webpage. Id. at 802-03. The court reversed the grant of summary judgement to defendants', however, with regard to the repeated, stylized use of "PMOY 81" in the website's wallpaper, reasoning that it was not necessary to describe Welles. Id. at 804-05.

  4. For an interesting case concerning a search engine's right to sell banner advertising triggered by the use "key" search terms, see Playboy Enterprises, Inc. v. Netscape Communications, 55 F. Supp. 2d 1070 (C.D. Cal. 1999) (denying motion for preliminary injunction on grounds that plaintiff's infringement and dilution claims unlikely to succeed because marks in question also function as words in common use), affirmed, 202 F.3d 278 (9th Cir. 1999) (unpublished opinion). The trial court subsequently granted summary judgment to defendants in a brief opinion that, unlike the court's earlier opinion, did not apparently rely on (or indeed even mention) the claim that plaintiff's marks also functioned as words in common use. See Playboy Enterprises, Inc. v. Netscape Communications, 2000 WL 1308815, 2000 U.S. Dist. LEXIS 13418 (C.D. Cal. Sept. 12, 2000) (No. SACV 99-320 AHS EEX, SACV 99-321 AHS EEX). The Ninth Circuit reversed and remanded. See 354 F.3d 1020 (9th Cir. 2004).

Useful Resources and Optional Reading

  • Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029 (N.D. Ill. 2001) (finding that fair use doctrine and relationship between the parties excused defendants' use in metatags of plaintiff's trade name--but granting preliminary injunction with respect to defendants' use on webpages of plaintiff's logo and their use in domain names of plaintiff's trade name)

  • The court in Gucci America, Inc. v. Hall & Assoc., 135 F. Supp. 2d 409 (S.D.N.Y. 2001) (No. 00 Civ 549 RMB), denied co-defendant Mindspring Enterprises, Inc.'s motion to dismiss plaintiff's trademark infringement claims notwithstanding Mindspring's argument that the Communications Decency Act of 1996, 47 U.S.C. § 230(c)(1), granted it immunity from such claims. That section reads, "No 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." The court relied on the plain language of § 230(e)(2), which reads, "Nothing in this section shall be construed to limit or expand any law pertaining to intellectual property."

  • Ticketmaster Corp. v. Microsoft Corp. (S.D. Cal. complaint filed Apr. 28, 1997) (alleging that linking violated trademarks) (settled--probably because Ticketmaster devised a technical solution)

  • Washington Post Co. v. Total News, Inc., 97 Civ. 1190 (PKL) (S.D. N.Y., filed Feb. 20, 1997)
    • Complaint (Feb. 20, 1997) (alleging that framing violated trademark and other rights)
    • Order and Dismissal (June 5, 1997) (relating terms of settlement)


Bell's Class #20: Please read the material in Ch.07.C.2.


D. Patents

Internet Business Method Patents, Nolo's Legal Encyclopedia (2003) (reviewing law relating to Internet business method patents)

Compare, Ordering Via One-Click with, Help: Placing an Order: How to Buy.


  1. The court in v., 239 F.3d 1343 (Fed. Cir. 2001), vacated the trial court's award of a preliminary injunction on defendant's alleged infringement of's business method patent and remanded the case for further proceedings. The parties thereafter reached a confidential settlement. Judging from Barnes & Noble's shopping service, can you guess at some of the terms of that settlement?

Useful Resources and Optional Reading


Bell's Class #21: Please read the material in Ch.07.D & Ch.07.E.


E. Trade Secrets

DVD Copy Control Assn., Inc. v. Bunner, 116 Cal. App. 4th 241, 10 Cal. Rptr. 3d 185 (6th Dist. 2004) (holding, on remand from California Supreme Court, that trial court improperly granted injunction on distribution of DeCSS, which had already become public knowledge) [an alternate source (PDF format)]

Religious Technology Center v. Netcom On-Line Communication Services, 923 F. Supp. 1231 (N.D. Cal. 1995) (denying in relevant part plaintiffs' motion for a preliminary injunction on defendant's dissemination of its alleged trade secrets) [an alternate source]


  1. In litigation related to the DVD Copy Control Association cases cited above, the court in Pavlovich v. Superior Court,, 109 Cal. Rptr.2d 909 (Cal. App. 6 Dist 2001), held that California courts court could exercise personal jurisdiction over out-of-state defendant Matt Pavlovich. The Supreme Court of California reversed. 58 P.3d 2 (Cal. 2002). The U.S. Supreme Court briefly stayed that California decision, sub nom DVD Copy Control Ass'n, Inc. v. Pavlovich, 2002 WL 31927297 (U.S., Dec. 26, 2002), before lifting its stay, 2003 WL 46660 (U.S., Jan. 3, 2003).

  2. The decision of the trial court in DVD Copy Control Association to not enjoin links to third-party websites containing the trade secret at issue contrasts sharply with the scope of the injunction issued by the court in Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294 (S.D.N.Y. 2000), discussed supra at Ch.07.B.4. The DVD Copy Control Association court reasoned that "such an order is overbroad and extremely burdensome. Links to other websites are the mainstay of the Internet and indispensable to its convenient access to the vast world of information. A website owner cannot be held responsible for all of the content of the sites to which it provides links. Further, an order prohibiting linking to websites with prohibited information is not necessary since the Court has enjoined the posting of the information in the first instance." 2000 WL 48512 at *4. To what do you attribute the approach of the Universal City Studios court?

  3. The court in Religious Technology Center v. Netcom On-Line Communication Services, 1997 U.S. Dist. LEXIS 23572 (N.D. Cal. Jan. 3, 1997) (No. C-95-20091 RMW), revisited its findings regarding the secrecy of plaintiff's trade secrets:
    [T]he court believes that its statement in its September 22, 1995 order that "posting works to the Internet makes them 'generally known' to the relevant people" is an overly broad generalization and needs to be revised. The question of when a posting causes the loss of trade secret status requires a review of the circumstances surrounding the posting and consideration of the interests of the trade secret owner, the policies favoring competition and the interests, including first amendment rights, of innocent third parties who acquire information off the Internet.

    RTC offers studies it conducted of the general public's knowledge of its allegedly secret works. On the basis of these studies, RTC argues that there is no evidence that the Internet postings have rendered the Advanced Technology works generally known. However, as discussed above, the court agrees with defendant that RTC's studies are not persuasive since the general public is not the relevant population for determining if a claimed trade secret is generally known. The relevant inquiry is whether the documents for which trade secret protection is sought are "'generally known' to the relevant people -- the potential 'competitors' of the Church." [Netcom, 923 F. Supp. 1231, 1256 (N.D. Cal. 1995)]. Nevertheless, defendant has not established the extent to which the specific processes and instructions contained in the works are known generally or to potential competitors.
    1997 U.S. Dist. LEXIS 23572 at *40-*42. The court thus amended its preliminary order to enjoin defendant Erlich from reproducing, transmitting, or publishing plaintiff's alleged trade secrets.

  4. The Religious Technology Center opinion that we read in this section, published at 923 F. Supp. 1231, issued from the same litigation that generated the separate opinion, published at 907 F. Supp. 1361, that we read above at Ch.07.B.2.

Useful Resources and Optional Reading

  • For cases in accord with Religious Technology Center, 923 F. Supp. 1231, see Religion Technology Center v. F.A.C.T.NET, Inc., 901 F.Supp. 1519, 1526-27 (D. Colo. 1995) (denying plaintiff's motion for a preliminary injunction on grounds, in relevant part, that the works in controversy had been exposed to the public by publication on the Internet and elsewhere, thereby probably disqualifying them for protection under the Colorado Trade Secrets statute) and Religious Technology Center v. Lerma, 897 F.Supp. 260, 266 (E.D.Va. 1995) (denying plaintiff's motion for a TRO and preliminary injunction against defendant Washington Post's on grounds, in relevant part, that the works in controversy had been exposed to the public through publication on the Internet, thereby probably disqualifying them for protection under the Virginia Trade Secrets Act).

    DVD Copy Control Association, Inc. v. McLaughlin, 2000 WL 48512 (Superior Ct. Santa Clara County, Cal. Jan. 21, 2000) (No. CV 786804) (not officially published) (granting preliminary injunction barring defendants from disclosing on the Internet plaintiff's proprietary encryption system for protecting DVD)


F. Publicity Rights

Stern v. Delphi Internet Services Corp., 626 N.Y.S.2d 694 (N.Y. Sup. Ct. 1995) (dismissing right of publicity claim on grounds that defendant ISP qualified as news disseminator engaging in an incidental use of plaintiff's name and image) [an alternate source]

Michaels v. Internet Entertainment Group, Inc., 5 F. Supp. 2d 823 (C.D. Cal. 1998) (granting preliminary injuction on, in relevant part, defendant's violation of plaintiffs' publicity rights) [an alternate source]


  1. What does the interactive nature of the Internet, as opposed to conventional mass media, suggest about the practicality--and wisdom--of enforcing rights of publicity?

  2. In proceedings subsequent to those reflected in the opinion we read, the court in Michaels v. Internet Entertainment Group, Inc. 1998 U.S. Dist. LEXIS 20786, 27 Media L. Rep. (BNA) 1097, 48 U.S.P.Q.2d (BNA) 1891 (C.D. Cal. Sept. 11, 1998), entered summary judgment for defendant Paramount, which through its tabloid news program, Hard Copy, had broadcast eight very brief excerpts of the videotape under contention. The court held, in relevant part, that "there is no genuine issue of fact as to whether the Hard Copy broadcast's use of Lee's name and likeness was protected by the First Amendment and statutory newsworthiness privilege . . . ." Id. at *18.

  3. Adjudications under ICANN's Uniform Domain Name Dispute Resolution Policy have generated conflicting holdings with regard to celebrities' rights to domain names incorporating their stage names. Compare Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO Arbit. & Med. Center May 29, 2000) (ordering transfer of JULIAROBERTS.COM to the actress of the same name on grounds that she has a common law trademark) with Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, Case No. D2000-153 (WIPO Arbit. & Med. Center January 25, 2001) (declining to order transfer of BRUCESPRINGSTEEN.COM to complainant singer of the same name on grounds that he had failed to show that respondent had no right or legitimate interest in the name or that respondent had registered and used the name in bad faith). Springsteen proves interesting not only for its holding, but also its pointed criticism of Roberts and related cases.

Useful Resources and Optional Reading


Bell's Class #22: Please read the material in Ch.07.F.


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