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Trademarks and website headings

In a decision by the Full Court of the Federal Court of Australia, it was decided that use of the generic term "Lift Shop" in the title of a webpage was not trademark infringement.

See:  Lift Shop v. Easy Living Home Elevators [2014] FCAFC 75

See also comment.

A Town Like Alice

The U.S. Supreme Court decided the Alice Corp v. CLS Bank patent case today.

In a unanimous decision authored by Justice Thomas, the Supreme Court today affirmed the Federal Circuit’s en banc decision invalidating the patents asserted by Alice Corporation against CLS Bank International as ineligible for patent protection under 35 U.S.C. §101 because they are directed to an abstract idea. See Alice Corporation Pty. Ltd. v. CLS Bank International et al. (U.S. June 19, 2014). 

In an opinion by Justice Thomas, today’s Supreme Court opinion held that:

[T]he claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.

In applying Mayo step one, the Court determined that Alice’s claims were drawn to the abstract concept of intermediated settlement (i.e., the use of a third party to mitigate settlement risk). Rejecting Alice’s arguments that the abstract-ideas category is confined to preexisting fundamental truths that exist apart from any human action, the Court ruled that intermediated settlement has long been a fundamental practice in our system of commerce, and recognized that Alice’s claims to intermediated settlement were not meaningfully distinguishable from the risk hedging claims it previously held to be abstract in Bilski v. Kappos, 561 U.S. 593 (2010).

In a brief concurring opinion, Justice Sotomayor, joined by Justices Ginsburg and Breyer, opined that claims to business methods are ineligible per se for patent protection, because they do not qualify as a process under 35 U.S.C. §101.

See note from WilmerHale and prior blog posts below.

Machines v Lawyers

"Some observers, not implausibly, blame the recession for these developments. But the plight of legal education and of the attorney workplace is also a harbinger of a looming transformation in the legal profession. Law is, in effect, an information technology—a code that regulates social life. And as the machinery of information technology grows exponentially in power, the legal profession faces a great disruption not unlike that already experienced by journalism, which has seen employment drop by about a third and the market value of newspapers devastated. The effects on law will take longer to play themselves out, but they will likely be even greater because of the central role that lawyers play in public life."

See Full Article - Machines v. Lawyers

Privacy in the Digital Era

The Australian Government announces the release of the Discussion Paper for this Inquiry, Serious Invasions of Privacy in the Digital Era (DP 80).  
The Discussion Paper provides a detailed account of ALRC research so far, and includes 48 proposals and a number of questions for people to consider and provide feedback on. The ALRC is proposing a model for a new statutory cause of action for serious invasions of privacy to be included in a new Commonwealth Act, and also is putting forward other alternative proposals to strengthen privacy protection.
The Discussion Paper is available in HTML, PDF, and as an ebook.
·         See Media Release >>

·         See Discussion Paper >>

Software and Internet patents

On Monday, the United States Supreme Court is scheduled to hear arguments in what has been described as the most important intellectual property case in a decade: Alice v. CLS Bank.  One party in this case is an Australian company, that owns the patent in question.

Prior blog posts are here and here

A NYTimes opinion article is worth reading.

Cloud Speeds

An interesting non-legal article looking at the various Cloud services and comparing speeds:  ComputerWorld.

Who Owns the Internet?

Two Harvard Law School experts — Jonathan Zittrain '95, Professor of Law and Faculty Co-Director, Berkman Center for Internet and Society, and Susan Crawford, John A. Reilly Visiting Professor in Intellectual Property — weigh in on a lawsuit in federal court that may decide whether Web access remains open and neutral.  Read More 

Privacy Guidelines in Australia

The Privacy Guidelines are no longer consultation drafts – the final version was released today (link below).

They have reversed their view on the application of the Privacy Act to foreign website operators.  So much so that the guidelines now conclude that “Where an entity merely has a website that can be accessed from Australia, this is generally not sufficient to establish that the website operator is ‘carrying on a business’ in Australia

Signature in Email

An interesting recent Federal Circuit Court decision to the effect that a person’s name at the bottom of an email was a signature - 
Austral-Asia Freight Pty Ltd v Turner [2013] FCCA 298
http://www.austlii.edu.au/au/cases/cth/FCCA/2013/298.html

Lawsuit over bad Yelp review

See this story regarding a lawsuit by a builder against his customer who posted a bad review on Yelp.

The article includes the following:

For a while, online reviewers have been free to say whatever they like about businesses without much in the way of fact-checking by the review websites that host their comments.
And because review sites like TripAdvisor, Yelp and Angie’s List often refuse to remove negative reviews without a court injunction, many businesses resort to responding to reviewers personally through the sites.
But others, like Deitz, have decided to cut out the middle man and lawyer up — no doubt because sites like Yelp are exerting increasing influence over consumers' buying decisions, from which plumber to hire to fix a leaky toilet to which spa to patronise to get a massage.
Thanks to their efforts, anonymity as an online reviewer may be a thing of the past.
In a major win for business owners in the US, a Virginia appeals court ruled earlier this month that Yelp must reveal the identities of seven users who wrote negative reviews of a local carpet cleaning business.
In that case, the customers weren't actually patrons of the shop, business owner claimed, which made their reviews false statements rather than opinions protected by the First Amendment. Yelp wasn't happy about the ruling, but they forked over the names anyway.

COPYRIGHT POLICY, CREATIVITY, AND INNOVATION IN THE DIGITAL ECONOMY

On December 12, 2013, the U.S. Department of Commerce’s Internet Policy Task Force held a roundtable to discuss issues involving copyright and the internet raised in the recently released “Green Paper.”  A copy of the Green Paper can be found here or here.

Lessig v. Liberation over takedown notice

Professor Lessig has sued Australian music label Liberation in the U.S. in relation to a computer generated take down notice sent to YouTube, to take down video of Lessig giving a seminar in Asia that included music licensed exclusively to Liberation in Australia.

If this case proceeds, there are interesting jurisdictional and fair use / fair dealing points that arise.  If the use of the music was fair use in the U.S., but not fair dealing in Australia, and the video is available in Australia, one would assume that there is copyright infringement in Australia.

Brisbane Times article
The video in question
EFF press release

Google and Defamation and Jursidiction

Google Australia has a defamation case against it tossed out, on the basis that it is Google Inc. that is operating the search engine and Blogger.

See SMH

Informational Privacy on the Web

A Data Broker Offers a Peek Behind the Curtain
The Acxiom Corporation is to open a Web site that will allow individual consumers to see some of the information that the company has collected about them.

http://nyti.ms/17slfwv

Computer Implemented Method Patentable in Australia

RPL Central Pty Ltd v Commissioner of Patents [2013] FCA 871

Broadly, the claimed invention related to the assessment of the competency or qualifications of individuals with respect to recognised standards. It was implemented using a computer.

Claim 1 included the following steps:

(a)    a computer retrieving via the internet from a remotely-located server a plurality of assessable criteria associated with the recognised qualification standard, said criteria including one or more elements of competency, each of which is associated with one or more performance criteria;
(b)    the computer processing the plurality of assessable criteria to generate automatically a corresponding plurality of questions relating to the competency of an individual to satisfy each of the elements of competency and performance criteria associated with the recognised qualification standard;
(c)    an assessment server presenting the automatically-generated questions via the internet to a computer of an individual requiring assessment; and
(d)    receiving from the individual via their computer a series of responses to the automatically-generated questions, the responses including evidence of the individual’s skills, knowledge and experience in relation to each of the elements of competency and performance criteria, wherein at least one said response includes the individual specifying one or more files on their computer which are transferred to the assessment server.

The Federal Court of Australia today determined that this claim recited patentable subject matter.

Thredbo.com Decision

The Federal Court recently released its decision in the case brought by the owners of thredbo.com.au against thredbo.com.

The decision is: Kosciuszko Thredbo Pty Limited v ThredboNet Marketing Pty Limited [2013] FCA 563

realestate.com.au Federal Court decision

On Friday, the Federal Court of Australia handed down its decision in the realestate.com.au v. realestate1.com.au case.

The decision is [2013] FCA 539.

The case concerned a generic term, that was used as a domain name, but where significant advertising had built up recognition of the brand.  The Applicant lost on consumer protection grounds but was successful in relation to trade mark infringement.  The case shows the risks of using a dictionary term as a brand, and the importance of a trade mark registration.

"245    However that observation about the ordinary case does not really address (as neither Perram J nor Chesterman J were called upon to address) a situation where the highly descriptive nature of the second-level domain (“realestate”) makes a suffix such as “.com.au” essential to brand or name recognition. Consumers with some familiarity with realestate.com.au as a brand are likely to look beyond “realestate” and to the entire domain name in order to establish identity. A real danger of confusion again arises because in the scanning process which may occur on a search results page, some consumers will miss the indistinctive “1”. I have therefore concluded that the use of “realestate1.com.au” as part of an internet address on a search results page, constituted the use by Real Estate 1 of a mark that was deceptively similar to REA’s realestate.com.au trade marks."

Hotel Executive In Trouble over TripAdvisor reviews

A hotel PR person posted TripAdvisor reviews (mostly about restaurants) and got it serious trouble for it.  See stories here and here.

ASX rules on Social Media

The Australian Stock Exchange has continuous disclosure rules.  See Guidance Note 8, which has guidance about social media.  See also BRW article.

Are Online Reviews Reliable?

A recent newspaper article discusses whether online review websites, such as TripAdvisor, are reliable.

See Bad Reputation.

U.S. Patent Decision - The Alice Case

CLS Services v. Alice Corporation was decided yesterday by the Court of Appeals for the Federal Circuit, en banc.  See Judgment.  Alice Corporation is an Australian company.  Its U.S. patent was held to be invalid as it did not claim patentable subject matter.

"Upon consideration en banc, a majority of the court affirms the district court’s holding that the asserted method and computer-readable media claims are not directed to eligible subject matter under 35 U.S.C. § 101."

There were a number of judgments.  The footnote to one judgment states:

"No portion of any opinion issued today other than our Per Curiam Judgment garners a majority. The court is evenly split on the patent eligibility of the system claims. Although a majority of the judges on the court agree that the method claims do not recite patent eligible subject matter, no majority of those judges agrees as to the legal rationale for that conclusion. Accordingly, though much is published today discussing the proper approach to the patent eligibility inquiry, nothing said today beyond our judgment has the weight of precedent."

Copyright in the Digital Era

A recent note on copyright:

Seven Copyright Principles for the Digital Era 
By John Villasenor. Brookings Institution, February 5, 2013 

YouTube redesign

YouTube has had a revamped look for channels in limited beta testing since early February, but it's now ready to spread the new-layout love to interested folks. Dubbed "One Channel," the design refresh places an emphasis on making a user's page look slick across different screen sizes and devices, adapting its style for the occasion -- yes, even on TVs. Along with a look that provides more visual breathing room, a wide image called Channel Art adorns the top of a page, giving the whole affair a stronger Google+ vibe. Now, channel owners can even snag a visitor's attention with a trailer that'll greet them if they aren't a subscriber. The refresh also introduces the ability to organize video playlists with custom sections. Raring to take Mountain View up on the fresh looks? Jab the second source link to get started. If you change your mind after taking the plunge, however, Google's letting users switch back to the old format for a limited time.


Why do you think that Google is doing this?

Australian Federal Court Limits Patentability

A recent Australian Federal Court decision limits the scope of patent protection for business methods implemented by computer.  The invention in question related to securities investing and, more specifically, to construction and use of passive portfolios and indexes.

The court denied patentability, stating:

"The implementation of the method of the claimed invention by means of a computer, at the level articulated in claim 1, is no more than the modern equivalent of writing down the index on pieces of paper. On the face of the Specification, there is no patentable invention in the fact that the claimed method is implemented by means of a computer. The Specification asserts a patentable invention, not in the use of the computer, but in the particular series of steps that give rise to the generation of the index. Those steps could readily have been carried out manually. The aspect of computer implementation is nothing more than the use of a computer for a purpose for which it is suitable. That does not confer patentability.

The enquiry into what constitutes a patentable invention is still evolving. It is not to be tied to particular notions of what was understood to be a manufacture at any particular point in time. However, while new developments in technology might be seen to widen the notion of what is patentable, the modern availability of computers as a standard means of implementing arithmetic or computational processes, which could have been implemented manually in the past, does not carry with it any broadening of the concept of a patentable invention."

See Research Affiliates LLC v Commissioner of Patents [2013] FCA 71

Google Australia does not control the Google search engine

Google Australia Pty Ltd does not like being sued in Australia.  In a recent Australian lawsuit, Google said:

  • Google Australia is a wholly owned subsidiary of Google International LLC and Google Inc is the ultimate holding company 
  • Google Australia is not authorised to, and has no ability to, control or direct the conduct of Google Inc and is not responsible for the day-to-day operations of Google Inc 
  • Google Inc owns and operates the domains google.com.au and google.com. The search engines at the domains mentioned are exclusively provided by, operated by, and controlled by Google Inc 
  • Google Australia does not have any ability to control or direct action in respect of blocking URLs from google.com.au

The Australian court found: "There is no reasonable prospect of Mr Rana proving that Google Australia owns the domains in question, or that it has the ability to control or direct the conduct of Google Inc."  Thus, the claims against Google Australia were dismissed.

The Court also stated:
"In short, whether or not a search engine could be considered a publisher of defamatory material is not settled in Australia, and accordingly, it would not be appropriate to refuse to give leave to serve the proceedings and on that basis effectively dismiss Mr Rana’s claim against Google Inc: A v Google New Zealand Ltd"

See Rana v Google Australia Pty Ltd [2013] FCA 60 

IP Theft

"Our message is quite clear: the protection of intellectual property and trade secrets is critical to all intellectual property rights holders, whether they be from the United States or whether they be from Chinese companies or other companies around the world,'' Robert Hormats, the under secretary of state for economic growth, energy and the environment, said.

Though China is regarded as the most aggressive actor, Mr Hormats said other countries are guilty as well. He cited Russia and India as two countries active in the theft of intellectual property.

See SMH

Social Networks and Right of Publicity

From a Kenyon & Kenyon newsletter looking at legal trends for 2013:

An important “Right of Publicity” issue for 2013 is the use by social networks of their members' names and/or likenesses in advertising. Many social networks have broad Terms of Service which purport to allow them to exploit any content that a member posts on the networks' websites. Social networks take the position that these service terms permit them to use aspects of their members’ identities in advertisements appearing within the social networks. As social networks grow and compete for advertiser dollars, they will naturally want to allow advertisers to create the most effective ads possible. Studies have shown the persuasive potential of an online connection's recommendations (due to the apparent lack of bias), and therefore many advertisers are likely to request advertising that uses the identities of a social network's users.

How should damages be assessed for privacy and cybersecurity breaches

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