Contributory Liability for Trademark Counterfeiting in an Ecommerce World

Scott Gelin and G Roxanne Elings analyze the current standard of contributory liability in the wake of Tiffany (NJ) Inc. v. eBay, in which the Second Circuit affirmed the Southern District’s finding that eBay is not liable to trademark owners for counterfeit sales of their products by third parties on its site. After highlighting certain ambiguities in the current state of the law, the authors propose practical tips to help brand owners protect against counterfeit sales, and to help service providers and selling platforms avoid secondary liability.

Using Clean Hands to Justify Unclean Hands: How the Emergency Exception Provision of the SCA Misapplies an Already Controversial Doctrine

While the government’s encouragement—and even reliance—on third-party monitoring of citizens is not a new phenomenon, the emergency exception to the SCA adopted in the Patriot Act oversteps constitutional bounds by providing the executive with the incentive to exaggerate potential threats in order to gain the collaboration of the telecommunications companies. The policies underlying this strategy are similar to those explained and adapted by the Sixth Circuit while articulating its Clean Hands Exception.Brendan Coffman argues that by allowing the government to gain access to evidence it normally would not be able to obtain, and ignoring the normal parameters of the exclusionary rule, the Sixth Circuit created a regime encouraging complicity between law enforcement and private citizens. Similarly, the arguments running contrary to the Clean Hands Exception ring true when assessing the emergency exception: the government has too great an incentive to encourage third parties to violate the privacy rights of others, and the third parties, especially telecommunications companies, are ultimately trapped in a Hobson’s Choice.

Software Developers, On Guard!: Offering Software for Sale Can Trigger a Bar to Patentability Even If the Software Is Untested and Incomplete

Paul A. Ragusa and Jack Chen discuss the on-sale bar to patentability in the context of nascent software. They conclude that a simple investigation concerning whether software code was complete at the time of an offer for sale is insufficient to establish the critical date for the purposes under 35 U.S.C. § 102(b) (“Conditions for patentability”).

Foreign Formats – Licensing Optional?: Why ABC’s “Bombshell” Memo regarding Foreign Formats Isn’t Scandalous at All

On June 24, 2008, ABC Executive Vice President Howard Davine wrote a memo to ABC’s executive producers and show-runners which suggested that there may be no need to license a foreign television show when all that is being taken from the show is the “underlying premise.”Alexandra Schwartz argues that there is, in fact, no difference between the decisions to license a U.S. format and a foreign format. While Mr. Davine’s memo may be provocative, Schwartz concludes that it reaches a sensible legal solution. Simply put, show-runners and executive producers need not contract and pay for every concept they produce as a result of seeing or hearing about a foreign TV show, movie, or book.

Girl Talk, Fair Use, and Three Hundred Twenty-Two Reasons for Copyright Reform

The music of the artist known as Girl Talk consists of hundreds of pre-existing samples taken without permission from popular songs. As Girl Talk becomes more prominent, lawyers, journalists and bloggers have entered the debate regarding whether the use of pre-existing samples from copyrighted works is a “fair use” as defined in the U.S. Copyright Act of 1976.Brian Pearl analyzes the merits of the “fair use” argument in light of sparse and largely unsympathetic case law regarding music sampling and ultimately concludes that Girl Talk’s use of pre-existing samples fails to qualify as a “fair use.” The Article further proposes an amendment to the Copyright Act that would enable Girl Talk to record legally while fairly compensating the owners of the sampled works.

Elite Knockoffs and Nascent Designers

The current debate over increased protection for fashion design is largely focused on whether additional protection is necessary or if it is actually counter-productive for the industry. The proper contrast is between protection of authorship versus protection of reputation. David Faux argues that, while elite design houses enjoy some tools for protecting their reputations, beginning designers need legislation that will enable them to enforce rights based on notions of authorship.

Mixed Signals: Takedown but Don’t Filter? A Case for Constructive Authorization

Scribd, a social publishing website, is being sued for copyright infringement for allowing the uploading of infringing works, and also for using the works themselves to filter for copyrighted work upon receipt of a takedown notice. While Scribd has a possible fair use defense, given the transformative function of the filtering use, Victoria Elman and Cindy Abramson argue that such filtration systems ought not to constitute infringement, as long as the sole purpose is to prevent infringement.