Tech law update 11 July 2010

NZ developer wins worldwide-injunction

(Disclosure: with a little help from a New Zealand law firm) New Zealand high-availability software firm Maximum Availability has won an injunction in a United States court against a US competitor that (it alleges) made false claims about MA’s products. The interim order prevents the competitor from further distributing the specific materials anywhere in the world, and requires them to send a clarification to all parties who received the information. More details are here.

YouTube defeats Viacom – a boost for NZ’s safe harbour?

A US judge has dismissed Viacom’s massive copyright claim against YouTube, saying that YouTube was protected by the “safe harbour” provisions of the US’s Digital Millennium Copyright Act. The DMCA safe harbour provisions are similar to New Zealand’s own, found in section 92B of the Copyright Act (see my Computerworld article here).

The question with safe harbour laws such as New Zealand’s and the DMCA, is at what point is does the ISP “leave the harbour”? What is the “something more” that an ISP must do to lose that protection? The YouTube case provided a perfect opportunity to test those rules. The judge said that YouTube remained in the safe harbour, despite having considerable knowledge of infringing activities:

[The judge] disagreed with Viacom’s claims that YouTube had lost the so-called “safe harbor” protection under the DMCA. Viacom … maintained Google did not qualify, because internal records showed Google was well aware its video-hosting site was riddled with infringing material posted by its users. [The judge] ruled that YouTube’s “mere knowledge” of infringing activity “is not enough.”

“To let knowledge of a generalized practice of infringement in the industry, or of a proclivity of users to post infringing materials, impose responsibility on service providers to discover which of their users’ postings infringe a copyright would contravene the structure and operation of the DMCA,” the judge wrote.

He said that YouTube had no way of knowing whether a video was licensed by the owner, was a “fair use” of the material “or even whether its copyright owner or licensee objects to its posting.”

New Zealand’s s92B is undergoing further amendment (as part of the tortuous reform process mainly centred on s92A), but the general process remains. The YouTube case is already under appeal, but whatever the final outcome, will be of interest in New Zealand due to the similar (though not identical) safe harbour provisions in New Zealand’s Copyright Act.

Judge Harvey gives NZ’s first multimedia judgment

Judge David Harvey has delivered what is said to be NZ’s first digital judgment, a 9MB PDF including embedded images and YouTube links. (New Zealand still hasn’t sorted out online publication of all judgments, but fortunately the Herald is hosting the DIA v TV Works judgment here.)

Judge Harvey is widely known as New Zealand’s most tech-savvy jurist, and uses his knowledge and interest in technology to push the odd boundary (in a judicious manner, of course). His ruling in this case is being celebrated in online circles (admittedly pro-gambling sites) and we can be grateful that Judge Harvey heard this case, as he was able to bring his understanding of not just internet technology but also online custom to bear. Let’s hope other judges follow his lead. Also, if digital judgments are now en vogue, surely it is time for e-filing?

As a point of contrast, I’m reminded of this story from a few years back:

Judge Peter Openshaw, 59, brought an Internet terror trial to a halt when he admitted he struggled to cope with basic terms like “website”. The Judge said he was completely lost by the terminology during the questioning of a witness about a Web forum used by alleged Islamist radicals. He told stunned prosecutors at Woolwich Crown Court in south east London: “The trouble is I don’t understand the language. I don’t really understand what a website is.”

Tech Law news 18 March 2010

IP dispute leads to Court order to seize source code

Computerworld reports on an Auckland High Court injunction requiring Codeshed, a software developer, to hand over the source code of its software to a customer. The injunction is an interim measure in a wider dispute between Codeshed and its customer, centering on the ownership of the intellectual property in the code. The customer obtained the injunction on a without-notice basis (previously known as an ex parte application) which meant the customer has to give an “undertaking as to damages” – i.e. once the final dispute is heard, if it turns out the customer is wrong, the customer must compensate Codeshed for having the injunction served on it. An ex parte injunction requiring the handing over of valuable IP is a relatively extreme remedy (it can include lawyers turning up on your doorstep with a court order in hand!) but the judge decided it was justified in this case (pending final resolution of the dispute).

According to the article, the matter is now being arbitrated, which usually means it will not be publicly commented on (by the parties) any further.

No iMonopoly for Apple

In Australia, Apple has been told that it does not have a monopoly on the letter “i” for technology products. The Trade Marks ruling said:

“[Apple] has not therefore demonstrated to my satisfaction that the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Goods come from [Apple] merely because the Trade Mark terminates in the letter “i”, however that letter may be presented. Nor do I think the fact that the Trade Mark is made up of the letters of [Apple’s] IPOD trade mark in reverse order would cause a significant or substantial number of relevant consumers to wonder whether the Goods were those of [Apple]”.

Amazon’s 1-click patent confirmed – with a Kiwi connection

Amazon’s infamous 1-click patent has been confirmed by the US Patent & Trademarks Office. To refresh, this patent is “A method and system for placing an order to purchase an item via the Internet” and, on the face of it, covers much of e-commerce. It has been rejected in the EU, and was not applied for in New Zealand. It has been widely criticised (rightly so) since first being granted. In 2005 New Zealand actor Peter Calveley filed a formal challenge to the patent with the USPTO. After some wrangling in the re-examination, Amazon was forced to make some very minor amendments to the patent in 2007. The amended patent has now been re-examined and affirmed by the USPTO.

While this highlights the need for reform of the patent system, a major development may occur next month when the US Supreme Court is expected to rule on the Bilksi case, involving the patentability of business methods.