It might seem axiomatic that whenever you develop a new product or service you ought to immediately register a trademark or servicemark to ensure marketplace protection. And I’m not talking about trademarking “That’s Hot” or “You’re Fired!” I’m talking about real, useful stuff. Like Oxyclean.® Or Chia Pet.®

(Fun fact of the day: you can only use the ® symbol if your mark is registered with the USPTO. Otherwise you are stuck using the ™ symbol, which is just a claim of ownership over a mark.)

Most of the time, promptly registering a trademark is a good idea — not only does it help you establish rights in your own mark, it gives you early warning if you’re going to wind up in a dispute (and ample opportunity to change your mark before you invest too much time, money, and heart into it). But not always. For a good example of the latter situation, just look at the current dispute between ZeniMax Media, the publisher of a series of role-playing games called The Elder Scrolls and forthcoming game entitled The Elder Scrolls V: Skyrim, and Mojang, creator of the popular game Minecraft, and forthcoming game entitled, Scrolls.
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What do you get when you mix a racy photo, alleged computer hacking, Twitter, and a Congressman named Weiner? (Besides Jon Stewart’s debut as an R&B producer.) That’s right, faithful readers, you get a smorgasbord of 21st century legal issues, and an example of why privacy is harder to keep than ever. You also get a great reason to think twice about what you save on your computer. And you get the joy of what is undoubtedly the best name for a scandal since “DickiLeaks.”

You’ve probably heard about Congressman Anthony Weiner, and the tough week he’s had. To recap, Weiner’s hard drive was “hacked” and a bulging photo (labeled “package.jpg”!) was sent to a college student from his Twitter account. Then the interwebs started chirping and the politician non-denial denials started (“I can’t say with certitude” [that it isn’t my bulging crotch making the Internet rounds]). Then the conservative bloggers found some absurd photos of Weiner showing off his pecs in front of framed photos of his family. And before you know it, we’ve got tearful televised confessions (“The picture was of me, I sent it”), and voila, a new word is seared into the American collective consciousness: Weinergate! It’s hard not to feel both bad for and perplexed by Weiner, even if he isn’t exactly the first New York Congressman to get caught sending racy pics this year. But I can also only feel so bad about any situation that results in one of my coworkers walking into a department meeting and announcing, “I can’t get enough Weiner!”

Of course, at this point, we all know that Weiner’s initial explanation for the sudden proliferation of his groinal region on the Internet — that his Twitter account was “hacked” — was as bogus as it sounded. But what if we lived in a magical world where a politician’s initial explanation for a totally inexplicable scandal was actually true? Let’s look at what anti-hacking laws say Weiner could have done. (Besides resigning, hiding out for a year, then taking a cushy job on cable news).

(Note: not covered here are potential claims for copyright infringement based on the unauthorized distribution of the photo itself, a favorite theory in the ever-popular celebrity-trying-to-block-a-sex-tape segment.)
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This isn’t a rhetorical or philosophical question, nor is it the proper response to a clue on Jeopardy! In fact, it may soon be decided in a court of law.

On March 18, 2011, Apple Inc. filed a complaint in federal court against Amazon.com over Amazon’s “unauthorized use of Apple’s APP STORE™ trademark.” Apple claims that Amazon has been unlawfully using the term “APP STORE” in connection with Amazon’s “Appstore Developer Portal” and “Angry Birds Rio” software. Of course, what this is really about is that Apple is annoyed by Amazon’s “Appstore for Android” — whose name bears a certain resemblance to Apple’s own iTunes App Store.

Phones with Google’s Android operating system are a major competitive concern for Apple. The obvious solution to this would be for Apple to take advantage of its marketing juggernaut and already superior market share to beat out Android in the marketplace. But there are no lawyers involved in that, rendering it totally un-American. So instead, Apple has followed in the proud footsteps of luminaries like Donald Trump (tried to trademark “you’re fired!”), Paris Hilton (tried to control the phrases “that’s huge” and “that’s hot”), and Subway (claimed to own the word “footlong”), by going to court to claim trademark rights in the phrase “APP STORE.”
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Let’s play a bizarre twist on a familiar trivia game I like to call “Six Degrees of Sun Tzu.” If I challenged you to connect the author of Art of War (a 2,500 year old Chinese treatise on military strategy) to the author of a listserv posting (the distinctly 21st century phenomenon of social media), how many degrees do you think it would take you to do it? Here’s betting you won’t beat Judge Dolly M. Gee of the United States District Court for the Central District of California, who accomplished the feat in just one move.

Judge Gee recently (and hilariously) smacked attorney Kenneth Stern upside the head for filing a lawsuit claiming that the forwarding of a single, 23-word sentence he had posted to a listserv email list constituted copyright infringement. The Court’s legal analysis opens by quoting a phrase — in Chinese characters — from Sun Tzu’s Art of War(the Court translates it in a footnote): “He will win who knows when to fight and when not to fight.” What, you ask, could possibly prompt the Court to cite with approval the theories of an ancient Chinese military general in a copyright infringement case? Here are the facts:

Worried that a forensic accounting firm he had retained was overcharging his client, Stern posted a question to the Consumer Attorneys Association of Los Angeles listserv, asking if anyone else had experienced overbilling problems with the CPAs. Another listserv member emailed the posting to his sister (a non-member), who was a client of the accounting firm. She, in turn, forwarded it to the CPAs. Then it got interesting.
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Monday brought two interesting developments in the never-ending saga of people trying to pry shares of Facebook from Mark Zuckerberg. First, the lawsuit that spawned the uber-successful film The Social Network — and a damn fine blog post about the same— seemingly came to an end. (I assume Zuck clicked “Like” next to the story.) And second, the lawsuit that will inevitably spawn The Social Network IIsuddenly got a lot more interesting. (And maybe now Facebook will take those long-standing calls for a “Dislike” button more seriously.)

“At Some Point, Litigation Must Come to an End. That Point Has Now Been Reached.”

First, something the wunderkinds at Facebook can party about. The Ninth Circuit Court of Appeals rejected the attempts of Tyler and Cameron Winklevoss (not-so-affectionately referred to as the “Winklevii” in the movie) to set aside a settlement agreement which purported to resolve their claims against Facebook. Apparently, the Winklevii will have to live with $165 million (based on current estimates). And although Judge Alex Kozinski’s opinion rejecting their appeal isn’t nearly as sexy and exciting as Aaron Sorkin’s depictions of the heated depositions during the case — all in favor of just having Sorkin write real life for the rest of us, say aye — there are some legal concepts worthy of note, as well as a few choice samples of judicial snark. [Ed. Note: Aye.]
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I’ve always been a fan of spotlighting important legal issues that seem to fall between the cracks. So if net neutrality is “the most important public policy you’ve probably never heard of,” and if last year’s documentary filmmaking allowance was the most important DMCA exception nobody seemed to notice, then the Ninth Circuit’s February 17, 2011 decision in MDY Industries v. Blizzard Entertainment is the most important denial of a motion for rehearing that no one is talking about — especially if, like me, you love video games, justice, and legalese-laden 48-page opinions that read kind of like Conrad’s Heart of Darkness.

The Lawsuit

Admittedly, the premise of this case is pretty ridiculous. But beneath that ridiculous premise, and the pages upon pages of legal minutia, is a pretty important and interesting legal issue that has real influence on your everyday life.

MDY Industries centers on a “bot” (short for robot) program called “Glider.” Using the Glider software allows World of Warcraft gamers to put a WoW character on autopilot, thereby avoiding the laborious chore of “leveling” the character and acquiring weapons and gold. In other words, Glider allows WoW gamers to skip the nascent stages of character development and proceed straight to the joy of being powerful and wealthy — something many WoW gamers will never actually experience in real life. Conceptually, using Glider is similar to “gold farming” — i.e., paying someone in a developing country to acquire virtual money for you. (It would be fascinating to know what effect Glider has had on the hundreds of thousands of gold farmers in the developing world.)

The legal fight began more than four years ago, when MDY preemptively sued Blizzard for a declaration of its rights after Blizzard’s counsel visited MDY founder Michael Donnelly at home in October 2006, “threatening suit unless MDY immediately ceased selling Glider and remitted all profits to Blizzard.” Naturally, Blizzard had been very unhappy about Glider and (among other things) the effect Glider was having on WoW’s virtual economy.

From Donnelly’s perspective, his company made $3.5 million by selling a legitimate aftermarket product that made WoW more enjoyable for many gamers. From Blizzard’s perspective, it not only had to spend money dealing with “bot” complaints from its users, but it also lost substantial revenues from gamers who otherwise would have spent many more billable-months in their quests to obtain virtual fame and fortune (e.g., instead of subscribing to WoW for one year, a player might only subscribe to WoW for 6 months, since the player could achieve more in less time).
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You may not know it to look at me, but I have a very macabre sense of humor. I adore the books of Edward Gorey and, in particular, The Gashlycrumb Tinies, a spot-on and (for those who are into tragic juvenile demise) hilarious parody of children’s ABC books in which each of the rhyming couplets recounts various unusual ways in which children have met ghastly fates: “A is for Amy who fell down the stairs. B is for Basil assaulted by bears. C is for Clara who wasted away. D is for Desmond thrown out of a sleigh…” (Not that I’m ever bored at work, but I’ve had a photocopy of “N” posted on my computer for years: “M is for Maud who was swept out to sea. N is for Neville who died of ennui.”)

I’m also a huge fan of Shockheaded Peter, a nightmarish and (again, for those who love young children meeting ironic fates…should my own daughter be concerned by this?) hilarious spectacle/stage production based on a 19th Century German book of children’s cautionary tales by Heinrich Hoffman, in which rude and naughty children all meet gruesome, yet well-deserved ends. Take, for example, “Fidgety Phil,” the tale of a boy who refuses to sit still at the dinner table and is impaled by cutlery when he pulls off the tablecloth at dinnertime. Or “Snip Snip,” in which an incessantly thumb-sucking boy bleeds to death after an evil tailor cuts off his thumbs (his mother reacts simply by saying toldya so!). The last line of virtually every song concludes with the matter-of fact sentiment: “And he was DEAD.” “And she DIED.” The end. You can imagine what happens in “The Dreadful Story of Harriet and the Matches”…

Well, remember the Troubling Tale of the Two-Steppin’ Toddler? No, it isn’t in the Second Act of Shockheaded Peter, but it certainly qualifies as a Litigation Cautionary Tale in my book.

This Dreadful Story — or, as it is more commonly known in legal circles, the Lenz v .Universal case — began with a dancing baby. We’ve covered this ground before, but let’s review the highlights:
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Last week, Pac-10 Commissioner Larry Scott learned the hard way that conference expansion is a little trickier than subbing a “12” in for the“10” in your logo.

As many news outlets reported over the weekend, the soon-to-be-Pac-12 conference has discovered that the domain pac12.com has already been claimed by a fan of the late (unless he isn’t) Tupac Shakur, who has been using the site to offer an Amazon widget selling 2Pac albums. The Pac-10 has responded by filing a claim with the World Intellectual Property Organization, seeking control of the Pac12.com site.

Most people seem to assume this is nothing but a momentary hiccup in the conference’s plans. After all, the Pac-10 is a well-established — and well-funded — preeminent national sporting organization, and a one-page CD ad with the heading “Tupac Lives!” doesn’t exactly strike fear into the hearts of conference partisans everywhere. But, if it can’t (or won’t) cough up a check with enough zeroes on it in order to buy the Pac12.com domain peacefully, the conference may have a real problem wresting away control of the domain by legal force.

Why is that, you ask? The answer requires us to first play a quick game of alphabet soup.
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What do you do if you discovered that your favorite website, YouPorn, is secretly gathering information about your Internet use? If you were California residents David Pitner and Jared Reagan, it seems you would sue the website in federal court and accuse it of violating your privacy, thereby announcing to the world that you are an avid porn watcher. (Privacy FAIL! Pitner and Reagan are not alone in their interests — according to the lawsuit, YouPorn ranks #61 in website popularity [other sources place it in the mid-70s…so now we’re no longer impressed] — but they are alone in having announced it to the world…until more individuals join the potential class action, that is.)

Let’s rewind. What exactly did YouPorn do and how did the plaintiffs figure it out? According to a recent study conducted by the Department of Computer Science and Engineering at the University of California, San Diego, YouPorn is one of 46 major websites that is engaged in “history sniffing” — a technical term that sounds just about as salacious as “YouPorn” itself, which is probably why some people prefer “history hijacking.” As you may have noticed when surfing the Web, links corresponding to URLs that you’ve visited before render differently than URLs you’ve never visited. According to UCSD’s study, history hijacking attacks occur when a site inserts invisible links into its web page and has Java Script inspect the links’ properties to determine whether the user has visited that URL — they will appear purple if the site has been visited and blue if they haven’t. Out of the Alexa global top 50,000 websites, the study discovered at least 46 (and possibly as many as 63) occurrences of history sniffing, on websites covering a wide range of topics from sports to finance to news to…whatever YouPorn is about.
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