Hawaii Legislature 2014 — Summary of Proposed Computer Tech Legislation

Posted by on Jan 31, 2014 in Data Security, Employment and Labor, Privacy, Schools, Social Media, Trademark

It’s time to roundup the bills related to computer technology that the Hawai‘i legislature is considering in its 2014 regular session.  Click here for a chart summarizing the proposed legislation.  Here are the highlights:

Social Media and Internet Account Passwords:  Several bills to prohibit improper requests for access to personal social media accounts of employees and students were introduced in the 2013 session.  None of the them passed.  This year, HB2415 renews the effort to outlaw improper social media password requests.

Internet Sales Tax:  HB1651 would require online companies with arrangements with Hawaii merchants for referral of business  to collect use taxes on sales made in Hawaii.  This bill would affect online retailers like Amazon, who allows local merchants to sell their products through Amazon Marketplace.

Restrictive Covenants:  In an effort to encourage the development of technology business in Hawai‘i, a state with a relatively small geographic area, two bills (HB2617 and SB3126) would prohibit technology businesses from requiring employees to enter into noncompete agreements and restrictive covenants.  “Technology business” is defined as “a trade or business that relies on software development, information technology, or both.”

Cybersquatting: SB2958 would put the burden on a cybersquatter to prove that it did not register a domain name in bad faith or with intent to use it in an unlawful manner, provided that the person claiming cybersquatting can demonstrate the potential of immediate and irreparable harm through misuse of the domain name.

Cybersecurity Council: SB2474 would establish the Hawai‘i cybersecurity, economic, education, anfrastructure security council.

Mobile Devices: Three bills (HB1509HB1896, and SB2729) would make it a State offense to use a mobile electronic device while operating a motor vehicle.  Certain counties already have similar laws.

3D Printing: In response to the rising availability of 3D printers, HB1802 would make it a crime to create, possess, sell, trade, or give another person a firearm made with digital manufacturing technology.

Computer crimes: A series of bills criminalizes various kinds of computer activity, including unauthorized access to a computer or network and damage to a “critical infrastructure computer” (HB1640); theft of a computer (HB1644);  or personal electronic device for storing or retrieving personal information (HB2080); and revenge porn (SB2319).

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Introducing SM Safety Services

Posted by on Oct 2, 2013 in Advertising and Marketing, Copyright, Employment and Labor, Litigation, Miscellaneous, Social Media, Trademark

Social media can be risky business.  Whether an organization embraces or ignores social media, it or its employees probably already have a presence on a social network.  That simple reality can be costly for an organization without proper measures in place to deal with the risks of social media misconduct.  Readers of this blog are familiar with cases where business saw their reputations marred by employees who post embarrassing photos online about work mishaps or found themselves in legal trouble for firing an employee who vented on Facebook about a co-worker.

To help organizations manage the risks of social media activity, I’m proud to introduce SM Safety, a new line of services offered by my law firm.  The approach of SM Safety can be summarized in three words, each corresponding to a level of service that meets a particular need: checkup, plan, and audit.

A SM Safety Checkup is a low-cost way to ensure that an existing social media policy is legally compliant and effective.

A SM Safety Plan is for organizations who need assistance with preparing a new social media policy or enhancing an existing policy.

A SM Safety Audit is a comprehensive review of an organization’s overall presence in the social media space to identify exposure to legal risks due to social media use.

Each SM Safety service is offered for a flat fee.  To learn more about SM Safety or to obtain a quote, visit the SM Safety Services page on this site.

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Sex, Apps, and Rock-and-Roll

Posted by on Aug 22, 2013 in Litigation, Trademark

Rock legend gets to continue lawsuit against HP for selling penis-measuring app named after himEvans v. Hewlett-Packard Co., 2013 WL 4426359 (N.D. Cal. Aug. 15, 2013)

English: Photo of Chubby Checker when he was i...

(Photo credit: Wikipedia)

Want to test the urban myth that a man’s shoe size is a good measure of his you-know-what?  Well, there’s an app for that.  Or there was.  And the app store that sold it is being sued by the app’s namesake, who isn’t thrilled that his name was associated with a digital ruler for male nethers.

“The Chubby Checker” was an app for estimating the size of a man’s genitals based on his shoe size.  Hewlett-Packard’s subsidiary, Palm, Inc., offered the app for sale on its app store.  The name of the app is a pun based on “Chubby Checker,” the stage name of rock-and-roll legend Ernest Evans.  Evans and the companies who owned registered marks associated with the name “Chubby Checker” sued HP and Palm for trademark infringement and dilution, federal unfair competition, and various state law claims.

The defendants tried unsuccessfully to dismiss the trademark infringement claim.  The complaint sufficiently alleged a claim of contributory infringement against the defendants, the court found.  Plaintiffs alleged that the “Chubby Checker” name and mark was internationally famous.  The defendants also allegedly maintained “primary control” over the use of the mark by setting up a detailed application and approval process for the app.  Thus, the court ruled that it was plausible to infer that the defendants knew or could have reasonably concluded that the plaintiffs would not have consented to license the “Chubby Checker” mark for use with the app.

The defendants fared better in their attempt to dismiss the state law claims.  The defendants invoked Section 230 of the Communications Decency Act, which immunizes internet service providers from tort liability based on content published by third parties.  The plaintiffs did not allege that the defendants created the app.  Instead, third parties created the app.  Since the defendants were internet service providers rather than content providers, Section 230 required dismissal of the state law claims.

LegalTXTS Lesson: This ruling could be a major setback for app store operators.  Essentially, it means an app store could be sued for contributory trademark infringement whenever one of the apps it sells is the subject of trademark litigation.  That might make some sense if the app store set up an approval process that includes review of the intellectual property rights used by apps (e.g., see how the app Pic Bubbler fared in the review process for the Apple App Store), but not if such review is missing from the app approval process (Google Play, for example, employs a minimal review process).  And you can bet the app store operator is a prime target for litigation if it’s a deep pocket.  Like in this case, who would you rather sue—HP, or the creator of The Chubby Checker, which apparently sold a mere 88 copies at 99 cents each?

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Click Confusion Not the Same as “Actual Confusion”

Posted by on Feb 8, 2013 in Social Media, Trademark

Spike in YouTube Views and Google Search Errors Insufficient to Prove “Actual Confusion” in Trademark Infringement ClaimScorpiniti v. Fox Television Studios, Inc., 2013 WL 252453 (N.D. Iowa Jan. 23, 2013)

Scorpiniti v. Fox Television Studios, Inc. is the latest case involving use of Internet popularity to prove infringement of a trademark or trade dress.  In this case filed in Iowa’s federal district court, the plaintiff unsuccessfully argued that a sudden rise in the number of hits on a YouTube page bearing the mark in question is evidence of “actual confusion.”

The plaintiff, Louis J. Scorpiniti (Scorpiniti) registered the mark “THE GATE” with the U.S. Patent and Trademark Office for use in relation to “television broadcasing.”  In 2007, Scorpiniti was developing his own religious-themed music television show, The Gate.  Scorpiniti created a website for the show and completed a pilot (which he posted on YouTube) and the first episode (which he posted on his Facebook page).  He never broadcasted his show on TV.

Fox Television Studios, Inc. (Fox) filed an application with the USPTO to register the mark “THE GATES” for use in relation to a new TV series, “The Gates”, about a police officer who moves into gated community inhabited by supernatural beings.  Scorpiniti initially filed a Petition for Opposition to Fox’s mark, but later withdrew the petition and chose instead to sue Fox for trademark infringement.  The Gates aired on ABC stations from June to September of 2010.

To prove infringement, Scorpiniti had to show that Fox’s use of THE GATES “creates a likelihood of confusion” between the two TV programs.  One of the factors relevant to determining if there is “likelihood of confusion” is evidence of actual confusion.

The pilot episode of The Gate that Scorpiniti posted on YouTube experienced a spike in the number of views during the summer of 2010 when ABC was advertising The Gates.  Scorpiniti argued that this was evidence of actual confusion.  The court disagreed.  Also unpersuasive to the court was the fact that a Google search of the term “abc the gate” yielded results in which Fox’s TV show was misspelled as “The Gate.”  Spelling errors in an internet search or the fact that someone stumbles upon Scorpiniti’s YouTube video due to a search illustrates inattentiveness or carelessness on the part of the searcher, not actual confusion, the court said.  Any viewer who mistakenly viewed the pilot episode of The Gate while searching for The Gates would be able to tell that the two shows come from different sources based on differences in their appearance, content and production value.

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You “Like” Me? I Must Be Famous!

Posted by on Dec 13, 2012 in Advertising and Marketing, Social Media, Trademark

One of the requirements for proving a claim for trade dress dilution is that the claimant’s trade dress must be “famous.”  15 U.S.C. § 1125(c)(4).  Surveys to establish famousness are notoriously expensive.  Can social media provide a cheap alternative  to a survey?  Not exactly, but one court made a step in that direction.  Paramount Farms Int’l LLC v. Keenan Farms, 2012 WL 5974169 (C.D. Cal. Nov. 28, 2012), is the first case I know of that recognizes brand recognition among social media users as an indication of famousness.

In analyzing whether the plaintiff established the required elements of a trade dress dilution claim, the court in Paramount Farms noted that the plaintiff had a Facebook page with almost 300,000 “likes.”  The court did not regard the “likes” as conclusive evidence of actual recognition of the plaintiff’s associated trade dress, but did note that the brand’s Facebook popularity gave credence to other evidence that the trade dress has become famous.

Well, a Facebook “like” might not be protected under the First Amendment, but at least it’s good for something.

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