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Thursday, February 6, 2014

Cyberlaw Review 2014: Digital Copyright, Digital Divide, Domain Name Disputes, Trademarks, Entrepreneurship, Intermediary Liability, and Internet Freedom

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Bloomberg BNA asked leading attorneys, government officials, and online experts for their views on the most important legal developments in online law during 2013 and on what policy areas they believed would be the most important to their practices in 2014. We asked that the responses be short and to the point, similar to a “tweet” or status update. The result is the collection of brief insights published below, many of which have been lightly edited and categorized by subject matter.

The comments below--each attributed to the author, the author's law firm or organization, website, Twitter username and blog--are published for informational purposes only and do not constitute legal advice.

Digital Copyright

2014 could be the year of the “next great copyright act.” Commentary and ideas will come from an array of stakeholders that, in many ways, are quite different from those who participated in hearings for the current act in the 1970s, and anything and everything may be on the table for discussion. Eleanor M. Lackman (@EMLackman), Partner, Cowan DeBaets Abrahams & Sheppard LLP, New York. Blogs at CDAS IP, Media and Entertainment Law Blog.

Significant in 2013: Author's Guild v. Google (the Google Books case), which the SDNY finally decided on summary judgment this fall after 8.5 years. Mark Lemley (@marklemley), Professor of Law, Stanford Law School, Stanford, Calif.

Judge rules Google Books is fair use. Rest of world says, wait, the Google Books lawsuit was still going on? James Grimmelmann (@grimmelm), Professor of Law, University of Maryland, Baltimore. Blogs at The Laboratorium.

Copyright law handles large issues fairly well, but the digital world has revealed its inadequacy regarding smaller disputes. Hopefully, by this time next year, real strides will have been made towards an inexpensive and efficient solution to such micro-disputes. Copyright small claims, anyone? Brad R. Newberg (@bradnewberg), Partner, Reed Smith, Falls Church, Va.

Copyright, linking, site blocking, jurisdiction, metasearch, intermediaries, right to browse, all pending in ECJ. Interesting times. Graham Smith (@cyberleagle), Partner, Bird & Bird LLP, London. Blogs at Cyberleagle.

Significant in 2013: Fox v. DISH Network (the 9th Circuit holding that DISH's Hopper DVR was not copyright infringement) Mark Lemley (@marklemley), Professor of Law, Stanford Law School, Stanford, Calif.

In view of the ongoing anti-SOPA/PIPA atmosphere, it is unlikely that Congress will introduce any new bills addressing online piracy in 2014. James L. Bikoff, Partner, Silverberg, Goldman & Bikoff, LLP, Washington, D.C.

Russia plans to amend its “Internet anti-piracy” law in 2014 to broaden its scope of application. The law allows to block on-line content upon a request from an owner alleging copyright infringement. However it currently applies only to movies and TV series. Igor Motsnyi (@MotsnyiLegal), Partner, Motsnyi Legal Services, Moscow.

The dialogue on DMCAv2 will broaden with greater nuance and detail, but new legislation will not be enacted in this Congress. Philip Corwin (@vlawdc), Founding Principal, Virtualaw LLC, Washington, D.C. Blogs at Internet Commerce Association.

The Ninth Circuit revised its earlier DMCA decision in UMG v. Shelter Partners to conform to Second Circuit law, avoiding a potential circuit split on the issue of what constiutes right and ability to control within the meaning of the DMCA. Ian Ballon (@ianballon), IP & Internet Litigation Shareholder, Greenberg Traurig LLP, Silicon Valley & Los Angeles.

The question for all of us is how to structure an intellectual property framework for the Internet age--one that respects the needs of creators, is consistent with the global nature of the Internet, and is inclusive of a broader range of stakeholders. Konstantinos Komaitis (@kkomaitis), Policy Advisor, The Internet Society, Geneva.

The rewards for timely registration of digital copyrights will continue. A jury in Agence-France v. Morel just awarded a photographer $1.2 million in statutory damages even though actual damages and infringer's profits were $303,889. Andrew Berger (@IPInBrief), Counsel, Tannenbaum Helpern Syracuse & Hirschtritt LLP, New York. Blogs at IP In Brief.

There is a significant split of authority over what constitutes a public performance in cases involving the transmission of over-the-air television over the Internet which will be addressed by the Ninth Circuit and possibly the Supreme Court in 2014. Ian Ballon (@ianballon), IP & Internet Litigation Shareholder, Greenberg Traurig LLP, Silicon Valley & Los Angeles.

Two important 2013 decisions highlight a stark contrast in the ability to re-sell physical and digital goods. In Kirtsaeng, the U.S. Supreme Court held that the copyright first sale doctrine applies to physical objects (books), even those manufactured abroad. But in ReDigi, the trial court held that the first sale doctrine does not apply to digital files (music). How to lawfully alienate or re-sell “digital chattels” remains unclear. John Ottaviani (@jottaviani), Counsel, Partridge Snow & Hahn LLP, Providence, R.I. Blogs at Business + Intellectual Property + Internet Law: A View From the Ocean State.

Digital Divide

In 2014 the wireless revolution will continue, breaking new records for deployment and adoption worldwide, connecting more of the world's neediest communities to the global Internet, enabling innovation, education, and wealth creation. Julie Zoller, Senior deputy Coordinator, State Department (International Communications & Information Policy), Washington, D.C.

More than 100 internationalized domain names -- names in native language script -- will bring millions of new Internet participants. The Internet is about to significantly expand. Jon Nevett, Co-Founder & EVP, Donuts Inc., Bellevue, Wash.

Domain Name Disputes

Circuit splits on interpretation of the ACPA will continue to grow as claims against domain name service providers increase David E. Weslow (@davidweslow), Partner, Wiley Rein LLP, Washington, D.C.

The intersection of new rights protection mechanisms (RPMs) and new gTLDs will produce a proliferation of inconsistent and irreconcilable UDRP and URS decisions that may finally compel ICANN to take some responsibility to assure arbitration provider quality control. Philip Corwin (@vlawdc), Founding Principal, Virtualaw LLC, Washington, D.C. Blogs at Internet Commerce Association.

Trademarks

In the world of smartphone apps, it is becoming increasingly difficult to achieve trademark clearance, as the goods and services of trademark owners come into much closer contact than in the past “brick and mortar” model. Specifically, the marks and logos of apps that may perform widely different functions can still appear side-by-side in online app stores and on smart devices, thus complicating the traditional trademark clearance analysis. Lynne Boisineau, Partner, McDermott Will & Emery, Irvine, Calif.

Since everyone else will mention Google Books, I'll say that a development with longterm significance is the emerging judicial consensus that eBay v. MercExchange's rule that presumptions of irreparable harm are insufficient to grant a preliminary injunction applies to the Lanham Act no less than to copyright and patent. Because trademark owners have often coasted on a routine equation of likely confusion and irreparable injury, litigation will have to change to recognize this new reality. Another notable development is increasing empirical knowledge about consumer reaction to trademark keywords and other common online advertising strategies (e.g., sponsored links). This empirical work was not done for litigation purposes, and it exposes old trademark confusion concerns as overrated but raises new questions about how much consumers understand about search generally. Rebecca Tushnet (@rtushnet), Professor, Georgetown University Law Center, Washington, D.C.

Two cases of note from 2013 are Chloe SAS v. Sawabeh, Inc. (the Tradekey case) and Petroliam Nasional Berhad v. GoDaddy, Inc. (the PETRONAS case). In Tradekey, a California district court held an intermediary secondarily liable for online sales of counterfeit goods. In PETRONAS, the Ninth Circuit held GoDaddy was not secondarily liable for cybersquatting under the ACPA even though it sold domain forwarding services to the cybersquatter. The Ninth Circuit held broadly that the ACPA provided no cause of action for “contributory cybersquatting.” James L. Bikoff, Partner, Silverberg, Goldman & Bikoff, LLP, Washington, D.C.

Entrenpreneurship

Emerging e-commerce businesses like subscription services, flash sales, social curation, re-commerce, and collaborative consumption sites are transforming sectors of the fashion industry like instant download did to music. The question for 2014 is which ones will learn to monetize, and which will fall by the wayside like Napster by failing to account for IP issues. Howard S. Hogan, Partner, Gibson, Dunn & Crutcher LLP, Washington, D.C. Blogs at Fashion Law and Business Report.

Intermediary Liability

Internet intermediaries are private bodies that do not possess the legitimacy nor the legal tools to engage in legal content determinations; expecting them to do so on the basis of liability inevitably creates an environment of fear and costs, as they explore ways to comply with this regime. Konstantinos Komaitis (@kkomaitis), Policy Advisor, The Internet Society, Geneva.

The French high court held that Google is not liable for defamation due to key words produced by Google Suggest, because the service is automatic, which excludes intent to defame. Bradley L. Joslove, Partner, Franklin Societe D’ Avocats, Paris.

Internet Freedom

State bar associations will continue to struggle with the conflict between attorney speech rights and bar regulation. Josh King (@joshuamking), General Counsel, Avvo, Seattle, Wash. Blogs at Socially Awkward.

Other Posts in This Series

Cyberlaw Review 2014: Snowden Leaks, New Domains, Global Jockeying For Internet Governance Role Still Dominate Cyberlaw Hot Topics in 2014

Cyberlaw Review 2014:  Cloud Computing, Computer Crime, Consumer Protection, Data Breaches

Cyberlaw Review 2014: Digital Copyright, Digital Divide, Domain Name Disputes, Trademarks, Entrepreneurship, Intermediary Liability, Internet Freedom

Cyberlaw Review 2014: Internet Governance

Cyberlaw Review 2014: Internet of Things, Online Contracts

Cyberlaw Review 2014: ICANN's New Top-Level Domains

Cyberlaw Review 2014: Privacy Regulation

Cyberlaw Review 2014: Social Media, Software Patents, Telecom Regulation

Cyberlaw Review 2014: Electronic Surveillance, Emerging Payment Technologies

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