Final Form TPP Released

The final form of the Trans-Pacific Partnership or TPP trade agreement has been released and as expected it comes down hard on infringers and piracy.

Art. 18.2: Objectives

The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.

While many of the provisions mirror the current law in the United States, there are some expressions of artist rights that are affirming, such as:

Art. 18.60: Right of Distribution

Each Party shall provide to authors, performers and producers of phonograms the exclusive right to authorize or prohibit the making available to the public of the original and copies of their works, performances and phonograms through sale or other transfer of ownership.

With respect to penalties, the United States model appears largely intact.

Art. 18.74-3. Each Party shall provide that, in civil judicial proceedings, its judicial authorities have the authority at least to order the infringer to pay the right holder damages adequate to compensate for the injury the right holder has suffered because of an infringement of that person’s intellectual property right by an infringer who knowingly, or with reasonable grounds to know, engaged in infringing activity.

Art. 18.74-6. (a) & (b) provide for statutory damages sufficient to deter others (Ref. Art. 18.74-8) and punitive damages will be added, together with costs and fees under Art. 18.74-17.

One point of note is with respect to criminal penalties under Art. 18.77 – The TPP provides for imprisonment of infringers for not only commercial piracy but for anything determined to have “a substantial prejudicial impact.”

Art. 18.77 Criminal Penalties
. . .
Including criminal penalties for (b) significant acts, not carried out for commercial advantage or financial gain, that have a substantial prejudicial impact on the interests of the copyright or related rights holder in relation to the marketplace.

What may constitute a “a substantial prejudicial impact” under the TPP is not defined, but in California, this number has already been established to be the distribution of as few as 10 copies through means such as BitTorrent. Cal. Pen. Code § 653aa

Another issue of note is the imposition of penalties for “aiding and abetting.” This would be expected to extend liability for development of tools and means for piracy, such as web pages, software and possibly even discussion forums which expressly promote piracy.

Art. 18.77 -5

With respect to the offences for which this Article requires a Party to provide for criminal procedures and penalties, each Party shall ensure that criminal liability for aiding and abetting is available under its law.


The full text may be found at the USTR web site.


Maverick Eye Data Analysis “Sees Through” Dynamic IPs

In a recent case filed on behalf of Glacier Films for infringement of the film American Heist, it is revealed BitTorrent monitor Maverick Eye has developed a system to “see through” dynamically assigned IP addresses allowing the tracking of infringing activity by a single infringer through multiple IP assignments.

As stated in the complaint –

14.  The defendant’s ISP CenturyLink is known to dynamically reassign IP addresses, sometimes assigning an IP address to a party for days, and at other times only for a very short period of time.

15.  Dynamically assigned IP addresses with very short durations may be problematic in identifying a specific infringer as there is only a limited window of data available to the rightsholder in the investigation of the identity of the infringer.

16.  While the identity of the subscriber is readily ascertainable even if only an instant of infringing conduct is observed, limited data creates a greater burden for a rightsholder in using subscriber data to correlate with observed infringer data to identify a specific liable infringing party who acted through the IP address of the subscriber.

17.  To assist in overcoming this issue, plaintiff’s investigator Maverick Eye, UG has developed technology to identify other IP addresses also likely assigned the same subscriber and therefor used by the same defendant.

18.  By expanding the window of known activity associated with a singular defendant across several IP addresses plaintiff is able to use a broader pool of observed activity to assist in identifying the actual infringer and liable party.

The complaint identifies 6 IP addresses all assigned to a single defendant and seeks statutory damages and costs and fees.


Copy:  Glacier Films v. Doe 3:15-cv-02016

Courts Affirm And Return to BitTorrent Joinder

Cobbler Nevada v. Does, 1:15-cv-05283 (N.D. Ill., Oct. 23, 2015)

In Bit Torrent litigation courts are affirming and returning to joinder, or the combining of many defendants into a single case as the proper and most efficient means to permit both plaintiffs and defendants to participate in the judicial process.

Joined cases generally allow the more efficient and economical management of claims. Individual cases may cost $5,000 or more each to prepare and file. When a case is against a single party, all those costs may then be borne by a single defendant. When multiple defendants are joined, the costs are spread out among the several defendants and no one party bears the full costs of a single case.

Many jurisdictions began to deny joinder or place restrictions on joinder when courts were faced with allegations of abuse. But investigations are finding such claims of abuse are often unsupported or overblown. In one case after the court ordered severance, defendants then complained that individual Doe cases were even “more nefarious.” Voltage Pictures, LLC v. Revitch, 6:14-cv-00301-AA, (Jan. 23, 2015.) Faced with defendants that first complained that joinder was improper and then argued that single party cases were unfair, and even demanding joinder, courts realized the real complaint of most defendants has nothing to do with joinder, but simply that defendants do not want to be caught.

As has been realized, arguments against joinder by defendants were a short-sighted effort to drive up costs for plaintiffs. Defendants forgot that when found liable they must then pay those costs. As a result, many defendants, and the courts, are returning to joined cases.

As per the opinion of Judge Coleman:

Looking to both the plain language of Rule 20 and the substantial body of persuasive authority in this district, this Court finds that Rule 20(a)(1) does not require a single transaction, direct transactions, or temporal overlap. Accordingly, multiple defendants need not participate in the swarm at the same time in order to be properly joined.

Here, Cobbler alleges that each defendant used BitTorrent to participate in a BitTorrent swarm and to download and upload identical pieces of the same copyrighted work within the span of less than one month. These allegations are adequate to establish that the defendants acted as part of the same series of transactions or occurrences. Furthermore, the purpose of judicial efficiency is best served by the continued joinder of the parties at this stage of the litigation.

Other jurisdictions following this trend include Washington (Dallas Buyers Club, LLC v. Does, 14-cv-1684 (W.D. WA., October 31, 2014)) and Oregon (Survivor Productions, Inc. v. Popcorn Time Users, 3:15-cv-01587-AA, (D. Or. Sept. 15, 2015))

The full text of the Judge Coleman opinion:
Cobbler Nevada v. Does, 1:15-cv-05283 (N.D. Ill., Oct. 23, 2015)

Popcorn Time Breakup Exposes Dirty Secret

While Hollywood prepares to go from suing end users to the developers, the pressure has forced some key members of the Popcorn Time application to depart.  As is being reported in the Popcorn Time discussion forum and on Torrent Freak, the developers are becoming all too aware of the risks in their efforts.

One thing that is coming to light is that the application, touted as “free,” is not free at all as it is designed for users to purchase add-ons and VPN software to avoid facing litigation and fines, or worse.

Already people in Europe have been arrested for promoting Popcorn Time and in the United States the civil litigation side has pointed out that using the Popcorn Time application may expose a party to criminal liability:

From the complaint in The Cobbler v. Users of Popcorn Time; 3:15-cv-01550-ST

40.   Popcorn Time cannot be considered to have any reasonable legal or legitimate use.

41. The mere possession of a software program like Popcorn Time is the type of conduct that the State of Oregon has criminalized in ORS 164.235, which reads in part: 164.235 Possession of a burglary tool or theft device. (1) A person commits the crime of possession of a burglary tool or theft device if the person possesses a burglary tool or theft device and the person:

(a) Intends to use the tool or device to commit or facilitate … a theft by a physical taking; or

(b) Knows that another person intends to use the tool or device to commit or facilitate a … theft by a physical taking.

What is now apparent is some of the developers are seeing the financial rewards are no longer worth the risk as court records are showing the first Consent Judgments and Orders being entered against those caught using the application.

For a copy of one of the civil cases in the United States: The Cobbler v. Popcorn Time Users

Understanding Fair Use

Re:  Authors Guild v. Google, Inc.,13-4829, 2nd Cir. , Oct. 16, 2015

In a case that likely has one more stop along the way, the Second Circuit has issued its opinion in Authors Guild v. Google that relates to the Google Books project and the considerations of Fair Use.

As per the opinion:

Google has made digital copies of tens of millions of books, including Plaintiffs’, that were submitted to it for that purpose by major libraries. Google has scanned the digital copies and established a publicly available search function. An Internet user can use this function to search without charge to determine whether the book contains a specified word or term and also see “snippets” of text containing the searched-for terms. In addition, Google has allowed the participating libraries to download and retain digital copies of the books they submit, under agreements which commit the libraries not to use their digital copies in violation of the copyright laws.

In a simplistic view: Google has put millions of books online. But it is important to understand some key facts in this case, which include:

The Google Books search function also allows the user a limited viewing of text. In addition to telling the number of times the word or term selected by the searcher appears in the book, the search function will display a maximum of three “snippets” containing it. A snippet is a horizontal segment comprising ordinarily an eighth of a page.
      . . .
Google also disables snippet view entirely for types of books for which a single snippet is likely to satisfy the searcher’s present need for the book, such as dictionaries, cookbooks, and books of short poems. Finally, since 2005, Google will exclude any book altogether from snippet view at the request of the rights holder by the submission of an online form.

While it is true that Google has placed millions of copyrighted books online, it does not allow the viewers to read them, only to find out whether or not they might want to read them. As was critical in this case:

Google’s program does not, at this time and on the record before us, expose Plaintiffs to an unreasonable risk of loss of copyright value …

Google’s making of a digital copy to provide a search function is a transformative use, which augments public knowledge by making available information about Plaintiffs’ books without providing the public with a substantial substitute for matter protected by the Plaintiffs’ copyright interests in the original works or derivatives of them.

So the simplistic view is that Google is allowed to put millions of books online, but the proper understanding is that Google has created the world’s most effective card catalog to allow people to search and find books they may want to read, without making the books themselves available to read online.

After pages of tortured analysis of facts and factors, it all comes down to:

The ultimate goal of copyright is to expand public knowledge and understanding, which copyright seeks to achieve by giving potential creators exclusive control over copying of their works, thus giving them a financial incentive to create informative, intellectually enriching works for public consumption. . . .

Thus, while authors are undoubtedly important intended beneficiaries of copyright, the ultimate, primary intended beneficiary is the public, whose access to knowledge copyright seeks to advance by providing rewards for authorship.

There will be the inevitable confusion as many books on the Google Books project are available online in complete form, but it needs to be understood that the copyrights in those books have expired or been waived by the authors, thus they are properly free to the public.

For the full text:  Authors Guild v. Google, 13-4829

Evasion of service caused an infringer $10,000

In Dallas Buyers Club, LLC v. Vladamir Ivashentsev [Case No.: 3: 15-cv-00220-AC], the Court found Vladamir Ivashentsev willfully infringed the copyrights of Dallas Buyers Club, LLC (“DBC”). Mr. Ivashentsev willfully attempted to evade service and refused to participate in court proceedings with notice. He was properly served by publication.

Also, the Court awarded statutory damages in the sum of $10,000 in favor of DBC. The award was intended to compensate DBC as well as to provide proper notice and deterrence to others.

Further, the Court enjoined Mr.  Ivashentsev from infringing DBC’s copyrights in the motion picture “Dallas Buyers Club”, including without limitation using the internet to reproduce, distribute or copy the movie. He was also directed to destroy all unauthorized copies of DBC’s motion pictures and to delete all software used to make or distribute those copies or exchange unlicensed content using the BitTorrent protocol. Similarly, he was enjoined from using BitTorrent or the Internet for the copying or downloading of unlicensed copyrighted content.

DBC was also awarded reasonable costs and fees pursuant to FRCP 54.

Internet sites – not a reliable source for legal advice

Killer Joe Nevada, LLC, copyright holder of the movie “Killer Joe”, subpoenaed Mr. Reston Eilers in an attempt to get information about potential copyright infringement taking place apparently at his residence. They tried to find out who is the infringing party, making sure that only the right people are haled into court.


However, despite receiving notices, Mr. Eilers had not responded or complied with them. Thus, the Court issued an order to show cause why he had not complied with the court’s prior order to appear for deposition. Mr. Eilers is not a lawyer and not familiar with legal proceedings.


During the show cause hearing, the Court admonished Mr. Eilers for ignoring legal process saying, “You’re telling me it’s because you didn’t think you had to comply because of this information you had been receiving off of the Internet. Bad information. Now you’re in a lot of trouble, okay, because you’ve been not complying.”


The Court added that ignoring notices because of some stuff found in the Internet is not an excuse for avoiding legal process.


The Court told Mr. Eilers, “What you should have done, from the beginning, is not go to the Internet and do the research and follow that advice; instead, you should have contacted Mr. Crowell when you got the papers with his letters saying “What’s going on? What do I need to do?” Right? Burying your head in the sand is not the appropriate response.”


Finally, the Court gave advice to Mr. Eilers to inform the others not to ignore legal process and not to rely on internet sites, saying, “It may not be worth it to them, but part of what I’m doing is sending a message to you and others that you know, okay, that you can’t ignore the legal process. And it is in your best interest at this point to get onto whatever Internet sites you’ve been looking at and tell people out there that they’re giving out the wrong information and if they ignore these lawsuits they also are going to get hit by the Court for costs and fees….”


This article is lifted from the case Killer Joe Nevada, LLC v. DOE-, Case No. 6:15-cv-00494-ST

Reliance on the internet for legal advice caused subscriber legal troubles …

To address the issues of Internet piracy, Killer Joe Nevada LLC “Copyright Owner” filed an action to enforce its copyrights in the motion picture, “Killer Joe” against an unknown party (“infringer”) identified as Doe- Pursuant to a subpoena, the Internet Service Provider (“ISP”) identified Reston Eilers as the subscriber assigned to the ISP account associated with the infringing activity.


To ascertain whether the subscriber is an innocent third party and, if so, the identity of the infringer, copyright owner sent several letters to Mr. Eilers to elicit his cooperation. However, Mr. Eilers did not respond to any of these letters. Copyright owner then asked the Court to issue an FRCP 45 subpoena to compel Mr. Eilers’s assistance in its investigation. Because Mr. Eilers evaded service, he by was served by U.S. mail. Again, Mr. Eilers failed to respond. Thus, the copyright owner obtained a court order compelling his response. Served with the Order, a new subpoena, and a cover letter, Mr. Eilers again failed to respond or appear. Accordingly, the court issued a Show Cause Order to Mr. Eilers.


At the show cause hearing, Mr. Eilers assured the court that he is not the infringer who downloaded copyright owner’s motion picture. He asserted that there was no evidence before the court to indicate otherwise. However, the court said that the issue is not whether Mr. Eilers is the infringer, but his refusal to respond to a subpoena served on him by U.S. Mail, delivery thereof was confirmed, and his subsequent failure to comply with the court’s Order to respond to the copyright owner’s subpoena.


Mr. Eilers explained that his failure to respond was in reliance on an advice provided by various Internet web pages that oppose copyright owner’s actions or copyright enforcement. The Court said that any advice to ignore court orders or a subpoena, whether served in person or by mail, is incorrect and provides no legal excuse.


Therefore, the Court found Mr. Eilers in contempt of the Court’s Order and the copyright owner was awarded reasonable costs and fees.


Lifted from the case Killer Joe Nevada, LLC v. DOE-

[Case No. 6:15-cv-00494-ST]

Deleting Files Costs $200,000 In Sanctions And Adverse Inference

Destroying evidence is always bad. Getting caught is often assured, and even worse. In the case of Clear-View Technologies v. Rasnick, et al., in the Northern District of California the severity and expanse of duties to preserve evidence have been further clarified. One thing the court makes clear, sometimes the only thing worse than a smoking gun, is a missing gun that has been thrown away leaving only traces of smoke.

As the court starts off:

Deployment of “Crap Cleaner” software—with a motion to compel pending. Lost media with relevant documents. False certification that document production was complete. Failure to take any steps to preserve or collect relevant documents for two years after discussing this very suit. Any one of these transgressions by Defendants … and their prior counsel might justify sanctions. Taken together, there can be no doubt.

Preservation of evidence is a duty, and it does not start when suit is filed.

“The duty to preserve evidence begins when litigation is ‘pending or reasonably foreseeable.’ Thus, ‘[s]poliation refers to the destruction or material alteration of evidence or to the failure to preserve property for another’s use as evidence in pending or reasonably foreseeable litigation.’ This is an objective standard, asking not whether the party in fact reasonably foresaw litigation, but whether a reasonable party in the same factual circumstances would have reasonably foreseen litigation.”

This does not mean evidence must be preserved when a party learns about a suit or when a party is served with a complaint, it means the evidence must be preserved from the time when a reasonable person thinks they might be sued. The proverbial, “I’ll see you in court!” can result in a duty to preserve and further deletion may result in sanctions. (Or as the Court quotes, in this case, the statement “[K]eep it up and you’ll find [yourself] in court[.] Call Clyde again and I sue[.] Mark my words.”)   The standard is not subjective. This is an objective standard. Even if a party is not aware of their duty, ignorance is not an excuse.

But this case had it all. Laptops and cell phones were “lost.” Emails were deleted. Documents were not produced. And likely most damming element, parties installed and ran software called CCleaner or “Crap Cleaner” which was specifically designed to delete data in a manner that it could not be recovered. Having software that is designed to hide evidence might be suspect in and of itself, evidence of its use is something courts cannot overlook.

The result of this cover up was the court ruling:

Defendants and their prior counsel therefore are jointly and severally liable for the following fees, which the court finds reasonable in light of the extraordinary effort required to uncover this widespread abuse: … $212,320.

But even more significant than the money to be paid, was the court’s ruling on further sanctions.

All this warrants the adverse instruction that the unproduced material may be deemed to support [Plaintiff’s] contentions. The court orders the jury be instructed as follows:

Defendants have failed to prevent the destruction and loss of relevant evidence for [Plaintiff’s] use in this litigation. This is known as the “spoliation of evidence.”

I instruct you, as a matter of law, that Defendants failed to preserve evidence after its duty to preserve arose. This failure resulted from its failure to perform its discovery obligations.

You also may presume that [Plaintiff] has met its burden of proving the following two elements by a preponderance of the evidence: first, that relevant evidence was destroyed after the duty to preserve arose. Evidence is relevant if it would have clarified a fact at issue in the trial and otherwise would naturally have been introduced into evidence. And second, the lost evidence was favorable to [Plaintiff].


The result: everything missing or deleted, no matter how innocent it might be, is presumed to be favorable to plaintiff.

The full text of the opinion: Clear-View Technologies v. Rasnick, et al., 13-cv-02744 (N.D. Cal. May 13, 2015.)

The Name Game

There is an often misunderstood element of trademark law that is oversimplified to: You can’t trademark your name.  This comes from the Trademark Manual of Examining Procedure, or TMEP 1301.02(b)  Names of Characters or Personal Names as Service Marks

Under 15 U.S.C. §1127, a name or design of a character does not function as a service mark, unless it identifies and distinguishes services in addition to identifying the character.  If the name or design is used only to identify the character, it is not registrable as a service mark.  

People seem intent on simplifying this and reading the first part: “a name or design of a character does not function as a service mark…” and then last part, “If the name or design is used only to identify the character, it is not registrable as a service mark.” And completely skipping the middle: unless it identifies and distinguishes services in addition to identifying the character.  And therein is the key:  simply being a name, even a famous one, is not enough.

For example, in In re Lee Trevino Enterprises, Inc., 182 USPQ 253 (TTAB 1974) it was determined that the name of golfer Lee Trevino identified exactly what you might expect – a golfer named Lee Trevino.  As no other services or goods were associated with the name, it could not be registered.

But when the name means more, registration is allowed. The trademark registration database is filled with famous names that represent more than the mere people that carry them on their driver’s license. There are several FRANK SINATRA registrations for everything from entertainment services (as you would expect) to spaghetti sauce.  And the list of ELVIS related marks goes for pages.

So the adage, “you can’t trademark your name” is both true and incomplete. It might be better presented as, “you can’t trademark your name for being a name.”

There is further guidance in TMEP 1202.09(a)   Names and Pseudonyms of Authors and Performing Artists

Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist….

As with TMEP 1301.02(b), the name as a name is not registrable.  But take note of the distinction in TMEP 1202.09(b)   Names of Artists Used on Original Works of Art

An artist’s name or pseudonym affixed to an original work of art may be registered on the Principal Register without a showing that the name identifies a series.

Again, the question is does the name represent a person, or is it used to designate something about the goods or services or their origin.  The name, as a badge carried by a work of art representing its origin becomes registrable.

The USPTO has an excellent web page on this topic:

As to the recent news about artist Rihanna and her efforts to trademark her real first name ROBIN being opposed by D.C. Comics for being too similar Batman’s sidekick’s name ROBYN, the issues of that matter have little to do with a person’s name acting as a trademark.  For many people it was news that ROBIN was Rihanna’s real first name. (If a name is not used to identify someone then it is not subject to a TMEP 1301.02(b) rejection.)

The ROBIN – ROBYN conflicts are purely based on classic confusion, namely, will people be confused and think Rihanna associated goods and services sold under the ROBIN brand name will be somehow affiliated with Batman’s sidekick the Boy Wonder ROBYN.  Of course this all goes away in the movie deal when Rihanna signs on to play the actual Robyn in the next movie.  Stay tuned.

The ROBIN – ROBYN opposition filed by D.C. Comics may be viewed here: ttab-91221868_ROBYN-ROBIN_Opp