| District Court Construes
DMCA in Context of USENET Infringement |
3/13. The U.S.
District Court (CDCal) issued its Order
Granting Defendant AOL's Motion for Summary Judgment [PDF]
in Harlan
Ellison v. Robertson, a copyright infringement
case. (This Order is a very long download.)
Highlights. Ellison asserted that AOL was directly,
contributorily, and vicariously liable for infringing copies
of his works that were posted to a USENET newsgroup, and made
available to AOL users by AOL by virtue of AOL being a USENET
peer, and by not removing the items when demanded. AOL
asserted the defense of immunity under the Digital Millennium
Copyright Act (DMCA). Title II of the DMCA added a new
language to the Copyright Act, at 17 U.S.C.
§ 512, creating four new limitations on liability for
copyright infringement by online service providers. The four
limitations are transitory communications, system caching,
storage of information on systems or networks at direction of
users, and information location tools. See also, Copyright
Office's summary
of the DMCA [18 pages in PDF]. The Court held, among other
things, that AOL is immune under the transitory communications
provision. In so holding, the Court rejected Ellison's
arguments that AOL's involvement in the USENET peering system
was analogous to the Napster's peer to peer network. The U.S. Court of Appeals
(9thCir) rejected Napter's claim of immunity under the
DMCA in A&M
Records v. Napster, 239 F.3d 1004 (2001).
Background. Harlan
Ellison is the author of, and holder of copyrights in, numerous
fictional works. Defendant Stephen Robertson scanned some
of Ellison's works and converted them into digital files.
Robertson then copied these files onto a USENET newsgroup
named alt.binaries.e-book. The Court noted that this newsgroup
"seems to have been used used primarily to exchange
pirated and unauthorized digital copies of text material,
primary works of fiction by famous authors, including
Ellison."
Robertson accessed the Internet through an ISP, Tehama County
Online. He was not an AOL user. His USENET service was
provided by RemarQ Communities, Inc., a subsidiary of Critical
Path. While Robertson, RemarQ and Critical Path were all
initially named as defendants, the present order only pertains
to defendant AOL, whose involvement was as a USENET peer.
USENET. The Court offered this explanation of the User
Network, or USENET. "Peers in USENET enter into peer
agreements, whereby one peer's servers automatically transmit
and receive newsgroup messages from another peer's servers. As
most peers are parties to a large number of peer agreements,
messages posted on one USENET peer's server are quickly
transmitted around the world. The result is a huge
informational exchange system whereby millions of users can
exchange millions of messages every day."
The Court also stated that "After Robertson uploaded the
infringing copies of Ellison's works to the alt.binaries.e-book
newsgroup, they were then forwarded and copied throughout
USENET onto servers all over the world, including those
belonging to AOL. As a result, AOL users had access to the
alt.binaries.e-book newsgroup containing the infringing copies
of Ellison's works."
The Court wrote that at the time of Robertson's copying,
"AOL's retention policy provided for USENET messages
containing binary files to remain on the company's servers for
fourteen days."
Notice of Infringement. Ellison's attorney sent a
notice of copyright infringement to AOL, pursuant to the
notice and take down provisions of the Digital Millennium
Copyright Act (DMCA), to the e-mail address provided by AOL to
the U.S. Copyright Office. AOL did not remove the infringing
items. The e-mail address provided by AOL to the Copyright
Office was a non functioning address.
Complaint. Ellison filed his original complaint in U.S. District Court (CDCal)
against Robertson, AOL and others, in April 2000. A consent
judgment was entered against Robertson in June 2000. Ellison
filed a second amended complaint in October 2000 alleging
direct copyright infringement, contributory copyright
infringement, various copyright infringement, unfair
competition under Section 43(a) of the Lanham Act, and
trademark dilution (against defendants other than AOL). In
January 2001 Ellison reached settlements with RemarQ and
Critical Path. In November 2000 Ellison dismissed the Lanham
Act claims against AOL.
Cross Motions. The present order concerns only
Ellison's and AOL's cross motions for summary judgment and
summary adjudication, in which Ellison asserted direct,
contributory and vicarious infringement by AOL, and AOL argued
that Ellison cannot establish the prima facie elements of his
infringement claims, and raised defenses arising under the
Digital Millennium Copyright Act (DMCA).
The District Court stated that the issue is as follows:
"When an overenthusiastic fan uploads his favorite
author's novels to a newsgroup on the internet, what is the
liability of an internet service provider, such as AOL, for
allowing the books to reside for two weeks on their USENET
server? The impact of the Digital Millenium Copyright Act on
this issue presents a question of first impression in the
Ninth Circuit."
The Court first analyzed Ellison's allegations of direct,
contributory, and vicarious liability in detail. It ruled that
"AOL's role in the infringement as a passive provider of
USENET access to AOL users cannot support direct copyright
infringement liability." Direct infringement is limited
to those who do the actual copying, such as Robertson.
The Court found that Ellison "has presented a triable
issue of fact as to whether AOL materially contributed to the
direct infringement of Ellison's copyrights by others."
The Court noted that Ellison's attorney had notified AOL of
the infringing copies at the email address provided by AOL to
the Copyright Office.
Finally, the Court granted AOL judgment on the issue of
vicarious infringement.
The Court then provided a detailed analysis of the Sections
512 (a) and (c) of the DMCA, and applied them to this case. §
512(a) provides, in part: "Transitory Digital Network
Communications. A service provider shall not be liable for
monetary relief, or, except as provided in subsection (j), for
injunctive or other equitable relief, for infringement of
copyright by reason of the provider's transmitting, routing,
or providing connections for, material through a system or
network controlled or operated by or for the service provider,
or by reason of the intermediate and transient storage of that
material in the course of such transmitting, routing, or
providing connections, if ... no copy of the material made by
the service provider in the course of such intermediate or
transient storage is maintained on the system or network in a
manner ordinarily accessible to anyone other than anticipated
recipients, and no such copy is maintained on the system or
network in a manner ordinarily accessible to such anticipated
recipients for a longer period than is reasonably necessary
for the transmission, routing, or provision of connections
..." and certain other conditions are met.
The Court concluded that "AOL's storage of Robertson's
posts on its USENET servers constitutes ``intermediate and
transient storage´´ that was not ``maintained on the system
or network ... for a longer period than is reasonably
necessary for the transmission, routing, or provision of
connections.´´ " It also found that AOL satisfied the
other conditions of § 512.
Judge Florence Marie Cooper wrote the order. She was appointed
to the Court by former President Clinton in 1999. She was
previously a Judge of the California Superior Court for Los
Angeles County. |
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| Supreme Court Denies Cert
in Patent Cases |
3/18. The Supreme
Court of the U.S. denied certiorari in Tokyo Electron
America v. Tegal, No. 01-962, and Tegal v. Tokyo Electron
America, No. 01-993. See, Order
List [PDF] at page 3. This an appeal from the U.S.
Court of Appeals (FedCir) in a patent infringement action.
Tegal filed a complaint in
U.S. District Court (EDVa)
against Tokyo Electron
America (TEA) alleging infringement of its U.S.
Patent No. 4,464,223, which relates to plasma etching
equipment that is used in fabricating semiconductor chips.
3/18. The Supreme
Court of the U.S. denied certiorari in Andrx
Pharmaceuticals v. Biovail, No. 01-1050. See, Order
List [PDF] at page 5. This an appeal from the U.S.
Court of Appeals (FedCir) in a patent infringement action
involving a drug used to treat hypertension and angina. See, opinion
of the Court of Appeals. |
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| 9th Circuit Rules in PSLRA
Case |
3/15. The U.S.
Court of Appeals (9thCir) issued its opinion
[PDF] in In
re: The Vantive Corporation Securities Litigation.
This is a securities class action involving construction of
the heightened pleading requirements of the Private Securities
Litigation Reform Act (PSLRA).
The Vantive Corporation sold and serviced customer
relationship management software, known as front office
software, that enabled field personnel to deliver customer
service across many channels, including the Internet, a call
center, or in person.
Plaintiffs filed a complaint in U.S.
District Court (NDCal) against Vantive and some of its
officers and directors alleging securities fraud. The
plaintiffs, who are represented by the law firm of Milberg
Weiss, sought class action status. The District Court
found that plaintiffs failed to meet the pleading requirements
of the PSLRA, 15
U.S.C. § 78u-4(b)(1), (2), and dismissed. The Court of
Appeals affirmed. |
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| 6th Circuit Rules on Duty
to Defend Patent Suits |
3/18. The U.S.
Court of Appeals (6thCir) issued its opinion
in Weiss
v. St. Paul Fire And Marine Insurance, a case
regarding the duty of insurers to defend and indemnify their
insureds in patent infringement actions under advertising
injury coverage.
Background. St. Paul
Fire and Marine Insurance (St. Paul) provided liability
coverage for Mor-Flo, a manufacturer of water heaters. In
another action, Mor-Flo was sued for patent infringement.
Mor-Flo requested that St. Paul defend and indemnify it. St.
Paul refused. Mor-Flo lost that suit, and paid the patent
holder over $9.9 Million in damages and over $2.2 Million in
fees and costs.
District Court. A successor in interest to Mor-Flo's
duty to defend claim filed a complaint in U.S. District Court (NDOhio)
against St. Paul alleging breach of its duty under the
insurance policy to defend and indemnify for advertising
injuries. Federal jurisdiction was based upon diversity of
citizenship. The District Court held that St. Paul owed
Mor-Flo a duty to defend the patent infringement action and
that it was liable for the attorney's fees and costs incurred
by Mor-Flo in defending that action. However, the District
Court held that St. Paul had no duty to indemnify.
Court of Appeals. The Appeals Court, construing the
insurance contract pursuant to Ohio state law, reversed the
District Court on the issue of duty to defend, and upheld the
District Court on the issue of duty to indemnify. |
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| FCC Commissioner Martin
Addresses ITU Conference |
3/18. Federal Communications
Commission (FCC) Commissioner Kevin Martin
gave a speech
at the ITU World Telecommunication Development Conference in
Istanbul, Turkey, titled "Seizing Digital
Opportunities".
He advocated removing "regulatory underbrush",
maintaining transparent processes, and relying on the private
sector. He stated that "The more private sector interest
we can generate in our markets, the more services will be
available to our consumers and at prices they can afford.
Competition, small and large, is the best mechanism for
encouraging infrastructure buildout and achieving universal
access." |
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| Sen. Grassley Urges Passage
of TPA Bill |
3/18. Sen. Charles
Grassley (R-IA) gave a speech in the Senate in which he
stated that "It is time for the Senate to pass Trade
Promotion Authority for President Bush." The House passed
HR 3005,
the Bipartisan Trade Promotion Authority Act of 2001, on
December 6. The Senate
Finance Committee approved its
version [75 pages in PDF] of HR 3005, by a vote of 18 to
3, on December 12.
Trade promotion authority (TPA), which is also known as fast
track, gives the President authority to negotiate trade
agreements which can only be voted up or down, but not
amended, by the Congress. TPA strengthens the bargaining
position of the President, and the U.S. Trade Representative (USTR),
in trade negotiations with other nations.
Sen. Grassley stated that "We will sit on the sidelines
and our competitors will continue to make deals that exclude
us -- it's a game plan for failure. Without TPA, American
negotiating power to bring down trade barriers is severely
limited. Foreign competitors will continue to weave a web of
preferential trade and investment opportunities for themselves
and we will fall further behind. |
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| More News |
3/18. The Office of the U.S.
Trade Representative (USTR) announced that it is seeking
public comments on U.S. negotiating objectives and the work
program launched at the Fourth Ministerial Conference of the World Trade Organization (WTO)
in November at Doha. Comments are due by May 1. See, USTR
release.
3/18. The Federal Communications
Commission (FCC) announced that it is seeking public
comments regarding ways to improve its electronic licensing
systems. The deadline to submit comments is March 28. See, FCC
notice [PDF].
2/19. Sen. Paul
Wellstone (D-MN) wrote a letter
[PDF] to Senators asking them to co-sign a letter to the Federal Communications Commission
(FCC) urging it "to adopt an ``opt-in´´ approach to
protecting privacy, ensuring that a consumer must
affirmatively consent to the sharing by telephone companies of
his or her Customer Proprietary Network Information (CPNI)
before such information is shared."
3/18. The Federal Bureau of
Investigation (FBI) announced that "more than 89
persons in over 20 states have been charged in the first phase
of a nationwide crackdown on the proliferation of child
pormography via the Internet." FBI Director Robert
Mueller said in a release
that "We will diligently shut down any and all websites,
Egroups, bulletin boards, and any other mediums that will
foster the continued exploitation of our children."
3/15. The U.S.
Court of Appeals (7thCir) issued its opinion
in Beanstalk
Group v. AM General and General Motors, a case
regarding construction of a contract regarding the licensing
of the "Hummer" trademark. The District Court
dismissed the complaint pursuant to Rule 12(b)(6), FRCP. The
Appeals Court affirmed, two to one. Posner wrote the opinion.
Rovner dissented.
3/18. The U.S. Patent and
Trademark Office (USPTO) published in its web site the
Third Edition of the Trademark
Manual for Examining Procedures. |
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| About Tech Law Journal |
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Contact: 202-364-8882; E-mail.
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Privacy
Policy
Notices
& Disclaimers
Copyright 1998 - 2002 David Carney, dba Tech Law Journal. All
rights reserved. |
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| Tuesday, March 19 |
The House will meet at 12:30 PM for morning hour and 2:00 PM
for legislative business. No votes are expected before 6:30
PM. The House will consider a number of measures under
suspension of the rules.
9:30 AM - 4:30 PM. The Federal
Trade Commission (FTC) and the Department of Justice (DOJ)
Antitrust Division will
continue their joint hearings titled "Competition and
Intellectual Property Law and Policy in the Knowledge Based
Economy." From 9:30 AM until 12:00 NOON, there will be
presentations on "Business Perspectives on Patents".
From 1:30 until 4:30 PM, there will be presentations on
"Business Perspectives on Patents: Biotech and
Pharmaceuticals". See, agenda.
Location: Room 432, FTC, 600 Pennsylvania Ave., NW.
10:00 AM. The Senate
Appropriations Committee's Subcommittee on Commerce,
Justice, State, and the Judiciary will hold a hearing on the
proposed budget estimates for FY2003 for the FTC,
and other agencies. FTC Chairman Timothy Muris will testify.
Location: Room 138, Dirksen Building.
10:00 AM. The Senate
Judiciary Committee will hold a hearing on several pending
judicial nominations: Terrence O'Brien (to be a judge of the
U.S. Court of Appeals, 10th Circuit), Lance Africk (U.S.
District Court, EDLa), Paul Cassell (U.S.D.C., DUtah), Legrome
Davis (U.S.D.C., EDPenn). See, agenda.
Location: Room 226, Dirksen Building.
12:00 NOON. The FCBA's
Executive Committee will meet.
1:00 - 2:15 PM. The Internet Committee of the National Association of Attorneys
General (NAAG) will meet. (The NAAG spring meeting is
taking place from March 19-22.) Location: Salon E, Ballroom
Level, Marriott Hotel, Metro Center.
5:00 PM. The House Rules
Committee will meet to adopt a rule for consideration of HR
3925, the "Digital Tech Corps Act of 2002".
Location: H-312, The Capitol. |
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| Wednesday, March 20 |
9:30 AM. The Senate
Commerce Committee will hold a hearing on competition in
the local telecommunications marketplace. Sen. Ernest Hollings
(D-SC) will preside. Location: Room 253, Russell Building.
9:30 AM - 4:30 PM. The FTC and the Department
of Justice (DOJ) Antitrust
Division will continue their joint hearings titled
"Competition and Intellectual Property Law and Policy in
the Knowledge Based Economy." From 9:30 AM until 12:00
NOON, there will be presentations on "Business
Perspectives on Patents: Hardware and Semiconductors".
From 1:30 until 4:30 PM there will be presentations on
"Business Perspectives on Patents: Software and the
Internet". See, agenda.
Location: Room 432, FTC, 600 Pennsylvania Ave., NW.
10:00 AM. The Federal Election
Commission (FEC) will hold a public hearing on its Notice of
Proposed Rulemaking (NPRM) [PDF] regarding campaign
activity on the Internet. The witnesses will be Robert
Bauer (Perkins Coie),
Alex Vogel (National Republican
Senatorial Committee), Laurence Gold (AFL-CIO), and James
Bopp (James
Madison Center for Free Speech). See, FEC
notice. Location: FEC, 9th floor meeting room.
10:00 AM. The Senate
Judiciary Committee's Subcommittee on Technology,
Terrorism, and Government Information will hold a hearing on identity
theft. Sen. Dianne
Feinstein (D-CA) will preside. Howard Beales, Director of
the Federal Trade Commission's
(FTC) Bureau of Consumer Protection, will testify. See, witness
list. Location: Room 226, Dirksen Building.
CANCELLED. 10:00
AM. The FCC's
Technological Advisory Council will hold a meeting. See, notice
in Federal Register. See, cancellation
notice in Federal Register, March 11, 2002, Vol. 67, No.
47, at Page 10920. The next meeting is April 26; see, FCC
notice of March 12.
12:15 PM. The FCBA's
Cable Committee will host a luncheon. The speaker will be Catherine
Bohigian, Legal Advisor to FCC Commissioner Kevin Martin.
The price to attend is $15. RSVP to Wendy Parish at wendy @fcba.org by 5:00 PM on
March 18.
12:30 PM. Roy Stewart will speak at a luncheon hosted
by the Association of Federal
Communications Consulting Engineers. Stewart is currently
Chief of the FCC's Mass Media Bureau; he will become Chief of
the Office of Broadcast License Policy in the new Media
Bureau. For more information, contact Noel Luddy at luddyen @aol.com or 301
299-2270. Location: Wyndham City Center Hotel, 1143 New
Hampshire Ave., NW.
1:30 - 2:15 PM. FTC Chairman Timothy
Muris will speak at the National
Association of Attorneys General's spring meeting.
Location: Marriott Hotel, Metro Center.
2:00 PM. The House
Appropriations Committee's Subcommittee on Commerce,
Justice, State, and the Judiciary will hold a hearing on the
proposed budget for FY 2003 for the USTR.
Location: Room H-309, The Capitol.
6:00 - 8:00 PM. The FCBA will
host a Continuing Legal Education (CLE) seminar titled Telecommunications
201. Location: Capital Hilton Hotel, 16th and K Streets,
NW. |
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| Thursday, March 21 |
8:30 AM - 12:00 NOON. The law firm of Steptoe & Johnson and
The Open Group will host a workshop titled "Liability and
Information Assurance: The Role of Law, Regulation, and Self
Regulation". The workshop will focus on allocating
liability for breaches of information security, and the
various roles that law, regulation, and private contractual
agreements can or should play in the allocation of
responsibility for information security failures. RSVP to salbertaz @steptoe.com.
For more information, contact mschneck @steptoe.com.
Location: 1330 Connecticut Ave., NW.
10:00 AM. The Senate
Appropriations Subcommittee's Subcommittee on Commerce,
Justice, State, and the Judiciary will hold a hearing on the
administration's proposed budget estimates for FY 2003 for the
Federal Bureau of Investigation, Immigration and
Naturalization Service, and the Drug Enforcement
Administration. Location: Room 116, Dirksen Building.
10:00 AM. The House Financial
Services Committee will hold a hearing titled "The
Effects of the Global Crossing Bankruptcy on Investors,
Markets, and Employees". Location: Room 2220, Rayburn
Building.
11:30 AM. FTC Chairman Timothy
Muris will be the keynote speaker at the Privacy &
American Business Eighth Annual Conference: Managing the New
Privacy Revolution. Location: Omni Shoreham Hotel, 2500
Calvert Street, NW.
12:15 PM. The FCBA's
Transactional Practice Committee will host a brown bag lunch
on satellite and other international telecommunications
transactions. RSVP to Brian Madden at 202 416-6770.
Location: Leventhal Senter
& Lerman, 2000 K Street, NW.
2:00 PM. The House
Government Reform Committee's Technology and Procurement
Policy Subcommittee will hold a hearing on titled "How
The Federal Government Can Transition From Old Economy Speed
to Become A Model for Electronic Government". Location:
Room 2154, Rayburn Building.
POSTPONED. 2:30
PM. The Senate
Commerce Committee's Subcommittee on Science, Technology,
and Space will hold hearing to examine federal research and
development issues. Location: Room 253, Russell Building.
3:30 PM. Margaret
Radin (Stanford University Law School) will give a lecture
titled "Contract Today and Tomorrow: Binding Commitment
in the Networked World". Location: Georgetown University
Law Center, Faculty Lounge, 5th Floor, McDonough Hall, 600 New
Jersey Ave., NW.
8:00 PM. Deadline to submit applications to the NTIA
for Technology
Opportunity Program (TOP) grants for FY 2002. See, notice
in Federal Register. |
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| Friday, March 22 |
The House will not be in session.
9:00 AM. The House
Government Reform Committee's District of Columbia
Subcommittee will hold a hearing titled "Privacy v.
Security: Electronic Surveillance in the Nation's
Capital". Location: Room 2154, Rayburn Building.
10:00 AM - 1:00 PM. The Network
Reliability and Interoperability Council (NRIC) will hold
a meeting. See, FCC
notice [PDF] of March 14, and notice
in Federal Register. Location: Room TW-C305, FCC, 445 12th St.
SW. |
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| Monday, March 25 |
| The House will be in recess for the Spring District Work
Period. (The House will return on Monday, April 8). The Senate
will also be in recess. |
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