Intellectual Property
January 2002 Vol. 41, No. 2
Statements or expressions of opinion or comments appearing herein are those of the editors or contributors, and not necessarily those of the association or section.
Contents
* Is that boat really intended for this safe harbor?
* Establishing a presence on the World Wide Web: an Internet primer
* Proposed amendments to copyright transfer and license termination notices
Is that boat really intended for this safe harbor?
Copyright 2001 by David Loundy
One of the few parts of the "Communications Decency Act" (47 U.S.C. §230) left standing after the Supreme Court invalidated the statute's motivating provisions (see Reno v. ACLU, 117 S.Ct. 2329, 2334 (1997).) is the "safe harbor" or "Good Samaritan" provision (§230(C)) which provides protection from suits arising from the on-line transmission of the speech of another. A recent case has continued the tradition of giving this section a broad reach, but it is a case that raises some interesting implications.
In Barrett v. Clark, No. 833021-5, Sup. Ct. of Cal., July 25, 2001, available at http://www.Loundy.com/CASES/ Barrett_v_Clark.html, the court was faced with a claim of defamation resulting from the posting of certain comments about the plaintiffs to usenet news. The plaintiffs are doctors who are actively involved in exposing what they see as health care fraud and quackery. The defendants are advocates of alternative medicine. Obviously the two camps do not get along, thus the lawsuit.
The issue before the court was whether the plaintiffs' defamation suit constituted a violation of the California anti-SLAP statute (Strategic Lawsuits Against Public Participation-a suit intended to curb otherwise protected discourse). The court found that most of the statements at issue were merely heated statements of opinion which were not out of character for a news group discussion, and would not be seen as statements of fact suitable for a finding of defamation and accordingly, would undermine the plaintiffs' claims and support the defendants' anti-SLAP counterclaim.
The one exception the court found was the posting of a "self described 'opinion piece' by Tim Bolen claiming plaintiff Polevoy stalked Christine McPhee." It is important to note, however, that the opinion piece was re-posted by the defendant Ilena Rosenthall. This re-posting raises the interesting issue. The safe-harbor provision of the statute preempts any conflicting state laws, such as claims of defamation, see §230(e)(3). So, does the safe-harbor provision protect Ms. Rosenthall? The court held that it does.
Section 230 states that the purpose of the section is to encourage the development and use of the Internet as a forum for political discourse, cultural development and intellectual activity, but also to aid in the development of tools used to restrict access to inappropriate materials and to remove disincentives against using such private forms of content restriction. (§230(a).) This section is motivated by two cases in particular, Cubby, Inc. v. CompuServe, Inc., 776 F.Supp. 135 (S.D.N.Y. 1991), and Stratton Oakmont, Inc. v. Prodigy Servs. Co., 1995 WL 323710 (N.Y.Sup.Ct. May 24, 1995).
The Compuserve case held that if a service provider does not know or have reason to know about defamatory content that is made available by a service user, the service provider will not be held liable for defamation claims generated by that content, even though the content resides on the service provider's servers. The Prodigy case, however, states that if a service provider takes steps to provide and advertises that it offers a 'family friendly' environment, it had better do a good job of making sure that defamatory content has been removed from its servers. Essentially, these cases establish two ends of the spectrum-no effort to remove defamatory conduct produces no liability, but taking steps to remove defamatory conduct produces liability if done incorrectly. Because of this dichotomy, many service providers saw the safest course of conduct as letting the defamers have their fun while the service provider intentionally refuse to watch. The safe-harbor provision was intended to change this view by allowing steps to sanitize on-line services without the threat of liability otherwise established in the Prodigy case. Thus the primary motivation was not to protect people like Ms. Rosenthall re-posting defamatory remarks about Dr. Barrett, but rather it was intended to protect Ms. Rosenthall's service provider and others carrying her usenet news postings.
O.K., let us forget history and intent, and just read the statute. Section 230(c)(1) states that "[n]o provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider." Of course this section is filled with statutorily-defined terms. Is usenet news an "interactive computer service"? Section 230(f)(2) defines the term to mean "any information service, system, or access software provider that provides or enables computer access by multiple users to a computer server" Other than a possible issue in that usenet news is carried over a network of servers, the answer appears to be, yes. Is Ms. Rosenthall a provider or user of such a service? Neither of these terms are defined, but it is clear that Ms. Rosenthall is a user of the usenet news service and at least one server in the network. Is Ms. Rosenthall providing speech of another information content provider? An "information content provider" is defined as "any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet on any other interactive computer service." §230(f)(3). Mr. Bolen, who posted the initial defamatory comments, fits this definition. Therefore, by re-posting Mr. Bolen's comments, Ms. Rosenthall appears, and was held by the court, to be a user re-posting the speech of another interactive content provider, and therefore statutorily insulated from a claim of defamation.
Let us work through the implications of this holding. If you post something on-line that is defamatory, it is not the speech of another, therefore you are not protected by section 230. If you merely post something that someone else has posted on-line, you are covered by the section's protections. However, if you take a defamatory statement made by another, but not provided by "the Internet or any other interactive computer service," then you do not fit the terms of the safe-harbor provision and you could be liable for your defamatory posting. In short, if a friend says that his boss is a crook, and you type it in and post it to a news group, you are liable. However, if the friend e-mails the same statement to you, which you then cut-and-paste into a post to the same news group (presumably, even without attribution to the original "information content provider") then you are shielded from liability.
Somehow, I don't think this was the intended result of the statute.
One possible way of addressing this issue is to say that future Ms. Rosenthalls are not re-posting the speech of others, but are engaging in their own speech. If the defamatory comments are posted without additional comment, then it is clearly a re-transmission of the speech of another in a fashion so similar to that of a service provider that the statute does not readily allow for the two classes of re-transmitters to be differentiated. How do you say someone in the position of Ms. Rosenthall is liable, but not her ISP, under the current wording of the statute? You could say that a future Ms. Rosenthall is liable if she adds her own commentary to the extent that her comments comprise a defamatory statement through their incorporation of the defamatory content (which by itself she is not to be held liable for re-transmitting). The statute says that a user is not to be held liable for re-transmission of any information provided by another information content provider, however, it does not say that a user cannot be held liable for the explicit endorsement of a defamatory statement made by another. Unfortunately, this is starting to require some fine line drawing as to when accompanying comments are sufficient to override the statutory bar against liability, and engaging in this particular line-drawing does not appear to fit the stated Congressional intent.
Although the holding in this case is attractive to many Internet users (as long as they are not the ones being defamed), and does promote the stated goal of fostering free discourse on the Internet, it does produce an odd result in the way that it treats on-line content depending on its medium of origin, rather than based on the intent of the poster or the effects of the speech. This result is not likely to be what was intended by Congress. Perhaps it is time for Congress to clarify just how far this safe-harbor provision is intended to reach.
Establishing a presence on the World Wide Web: an Internet primer
Notes from the Intellectual Property Section Seminar April 2001
Copies of the more extensive handouts may still be available from the ISBA; if not, contact the authors of the particular topic of interest.
About E-commerce
Aaron Brooks, Holmstrom & Kennedy PC
Aaron Brooks's topic was "About E-Commerce" and focused on cutting edge issues relating to digital signatures. He discussed the Electronic Signatures in National Global Commerce Act (E-Sign), which became effective October 1, 2000. He also discussed the relationship between E-Sign and the Uniform Electronic Transactions Act (UETA), and possible preemption of Illinois legislation by E-Sign. He concluded that each state must choose its approach to electronic transactions by either adopting UETA or risk having its existing digital signature legislation be preempted by E-Sign.
E-mail: confidentiality, employee use and spamming
Reginald Hill
E-mail is one of the most useful and used tools provided by the Internet and other recent technological improvements. Lawyers are integrating e-mail into all facets of their practices, in many cases at the insistence of clients. E-mail use raises several issues for lawyers, namely, keeping client confidences, maintaining attorney-client privilege, discoverability of e-mail in litigation, e-mail policies for the lawyer and client, and miscellaneous effects of e-mail, such as jurisdiction and creating a discriminatory work environment.
The ISBA has issued an advisory opinion (96-10) concluding that lawyers may use electronic mail, including e-mail over the Internet without encryption, to communicate with clients. Some jurisdictions have opined otherwise, advising encryption may be required. The essential issue is the expectation of privacy, including the client's expectation. Nonetheless, encryption technology, digital signatures and secure electronic courier services are becoming increasingly popular and desired for highly confidential information.
Expectation of privacy is again the primary issue for inadvertent disclosure of and maintaining attorney-client privilege. Interception of e-mail, though theoretically possible, is rare. Moreover, interception under most circumstances, is prohibited by the Electronics Communications Privacy Act, 18 U.S.C. Section 2510, et seq.
E-mail policies are advisable for clients and attorneys and should include (1) written policy with employee sign-off; (2) guidelines and/or prohibitions on personal use; (3) disclosure of any monitoring policy and security devices (4) education to avoid informal and damaging e-mails; (5) prohibition of all inappropriate content; and (6) retention guidelines. "Spam," the general label for unsolicited "junk e-mail," is increasingly an issue for e-mail users. Most Internet service providers prohibit and have been successful, even in the courts, in blocking spam. Many states, including Illinois, have laws regulating unsolicited e-mail. The Illinois Electronic Mail Act, 815 ILCS 511/1 et seq., prohibits false or misleading subject lines and misrepresentation of the source or point of origin for e-mail directed into the state.
Anticybersquatting Consumer Protection Act (ACPA)
Steve Baron, D'Ancona & Pflaum
Steve Baron of D'Ancona & Pflaum introduced the federal Anticybersquatting Consumer Protection Act (ACPA) and provided guidance on how to analyze whether a claim falls under ACPA, how to meet the "bad faith" standards of ACPA and what remedies are available under ACPA. He also addressed the pros and cons of proceeding under ACPA versus pursing arbitration under ICANN.
Trademark dilution: for the rich and famous
Daniel Kegan, Kegan & Kegan, Ltd.
Federal law, Illinois law, statutes in many other states, many foreign jurisdictions, and current Internet domain name disputes provide relief for trademark dilution of famous marks. Sometimes nonfamous but distinctive marks may be protected, sometimes dilution by blurring, by tarnishment, by cybersquatting. The current Uniform Domain Name Dispute Resolution Policy (UDRP) is uncertain in process, result, and jurisdictional law applied. Appropriate antitrust market analysis and survey research design may present helpful empirical data. To prevail on a dilution claim it helps to have a famous mark and large resources to prove broad fame.
Ethics, lawyers, and the Internet
Amanda Howland
As Internet use continues to explode, the legal community is forced to go on line to remain competitive and keep pace with the needs of our technological society. As a result, the ethical issues that arise are numerous and frequently novel. Lawyers must familiarize themselves with the many ethical pitfalls associated with Cyberspace to protect themselves from potential disciplinary action.
Attorneys using Web sites and the Internet need to:
* Know what laws and rules apply. There are substantial differences in each state's ethics laws. A good source for information can be found at <www.abanet.org/ adrules/>.
* Beware of the "unauthorized practice of law." The issue of when an attorney is practicing in another state without a license has become a growing concern. With e-mail, Web sites and video-conferencing, many firms are able to provide legal services anywhere in the United States and at substantially lower costs than local firms.
Practical suggestions to reduce potential problems include:
* List the states in which the firm and its lawyers are licensed to practice.
* If indicating a specialization, list all jurisdictions in which the firm is a certified specialist and all lawyers who possess such certificates.
* Keep your web content accurate and current.
* Review your Web site content regularly--especially beware of hackers.
* Use disclaimers. Disclaimers are usually used to advise visitors that the site:
-is for informational purposes only
-visitation to the site will not create an attorney client relationship
-the site is not a solicitation
-the site does not provide legal advice.
* Be especially careful with information sent during "real time" chat rooms or electronic forums as these formats are considered "in person" contact.
* Know your jurisdiction's rules on participating in online referral services.
* Consult with clients before using e-mail to transmit client documents and consult them before transmitting highly sensitive documents.
* Use password protection and transmit client documents as attachments.
* Encrypt highly sensitive client documents.
Panel moderator
Don Reynolds, Foley & Lardner
Don Reynolds moderated the panel. He commented that moderating a group of prepared people before an interested audience is a rare joy. Every one of the participants in our program was informed, prepared, interested, and interesting. I have been a moderator several times. Never has it been so easy, so enjoyable, and so educational.
Everything you ever wanted to know about domain name dispute resolution but were afraid to ask
David J. Loundy, The John Marshall Law School
and Steven L. Baron, D'Ancona & Pflaum
A month earlier, March 2001, the Intellectual Property Section presented another seminar, by David Loundy and Steven Baron. The Anti-cybersquatting Act, Trademark Infringement, ICANN Proceedings, and more ... were covered.
Trademark counsel often review labels and packaging. The federal government has issued new rules defining what constitutes an organic food. You can link to or download the regulation's text at <http://www.ams.usda.gov/nop/>, where you'll also find more links to information about organic foods. The rule becomes effective 60 days from its publication in the Federal Register on December 22, 2000; producers will have 18 months to comply in order for their foods to be labeled as organic. Remember that trademark rights grow from lawful use of a trademark in association with the goods and services.
Proposed amendments to copyright transfer and license termination notices
The Copyright Office had proposed amendments (66 FR 22139) to its regulation governing notices of termination of transfers and licenses covering the extended renewal term. The current regulation is limited to notices of terminations made under section 304(c) of the copyright law. The Sonny Bono Copyright Term Extension Act created a separate termination right under section 304(d). Under the proposed regulation, procedures governing notices of termination of the extended renewal term would cover notices made under either section 304(c) or 304(d). Substantive changes include the following:
1) Section (b)(i) of the proposed regulation requires that if the termination is made under section 304(d), the notice should provide a statement to that effect; 2) A new §201.10(b)(vi) is added requiring notices issued under section 304(d) to contain a statement "that the rights in the extended renewal term which are being terminated have not been subject to a previous termination." This is a statutory requirement imposed in section 304(d).
ISBA advisory ethics opinions on Web
ISBA Advisory Opinions on Professional Conduct are posted and available on ISBA's Web site, <http://www. isba.org/EthicsOpinions/>. There's a search engine and a subject index, as well as a link to Cornell University's page for Illinois Legal Ethics.
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