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Technologist Andrew Chow, JD

Well, not yet anyway, but it makes me wonder what daring lawmaker will introduce that piece of legislation at some point in the near future.  (Hopefully it won’t be anyone in Massachusetts.)  However, Carl Kruger, a state legislator in New York, has recently introduced a bill to make it illegal for pedestrians to use an “electronic device” while crossing the street.  So if you use your cell phone or iPod while crossing, you face a $100 fine.

The rationale for the bill?  I suppose that depends on how cynical you are.  The stated rationale according to Kruger is to minimize the casualties that distracted pedestrians cause.  The more cynical among us may believe that such an “interesting” piece of legislation garners Kruger a great deal of publicity that he would have otherwise never received.  And the most cynical among us may even believe that such a law would do nothing but generate tons of revenue for the cash-strapped state.  But I’m a lawyer so I could never be that cynical.  Ahem. 

But let’s give the state senator the benefit of the doubt and say that the law is meant only to punish and deter distracted pedestrians.  Is it any more distracting than say, looking down at your feet while walking?  Or talking to a colleague who’s walking with you?  Or being engaged in deep thought?  Or doing any number of other things?  I would even argue that talking on the phone or listening to your iPod (at a reasonable volume) while walking is perhaps even less distracting than looking down at your feet or talking to someone you’re walking with, because at least you can still keep your eyes ahead on where you’re going. 

Many of us have seen the recent video of the woman in the mall who walked into a fountain while texting.  And let’s face it … it’s funny.  The type of funny that could best be categorized as “I’m-glad-it-wasn’t-me-because-it-easily-could-have-been” funny.  Having been a distracted pedestrian on more than one occasion—and who hasn’t?—I can relate.  In fact, given the apparent upsurge of this phenomenon, let’s even coin a new term for it.  Let’s call those texting-while-walking folks, ”Petextians.” (Hey, it’s the best I can do this late in the day.) 

Bad sniglets aside, do we really need laws against it?  Doesn’t a good cautionary laugh and widespread circulation in the media and on the Internet help to achieve the same result?  Seriously, who wants to be that woman (or for that matter, the lawyer who’s representing her in the ensuing ridiculous lawsuit).  It highlights the problem better than any law ever could.  And no matter what anyone may say, it’s just not the same thing as laws which seek to restrict such activities by drivers (or even bicyclists).

First of all, while talking on the phone or texting or even listening to an iPod while walking can certainly be dangerous in some instances, it just doesn’t rise to the same level of danger as someone doing so while driving a car.  I suppose the question is this:  To whom is it dangerous?  We’ve all heard stories of distracted or drunk drivers killing entire families or multiple people in accidents, but oftentimes walking away without injury themselves.  Cars can be lethal weapons that can hurt a lot of people.  (Even a speeding bicyclist can hurt a few people if distracted.)  So laws that attempt to punish and deter distracted driving make sense because of the magnitude of harm that they seek to prevent.

But distracted pedestrians?  In most instances, these folks will really only kill or injure themselves.  I’m not saying that some poor driver wouldn’t be traumatized if a “petextian” walked in front of his car and got hit, but it’s really hard to save people from themselves especially in this fast-paced, multi-tasking existence that all of us seem to have now.  I’m also not arguing that minimizing these sorts of individual casualties is an unworthy legislative goal, but just how much should government micro-manage the daily affairs of an individual?  We all walk, after all.  Just how big should the “nanny state” get?

Given how widespread this prospectively prohibited conduct is in a city as big as New York, the potential for abuse and selective enforcement of such laws is enormous.  Just wait until these laws pass and then a ton of videos are posted on YouTube showing cops, politicians, and celebrities crossing the street on the phone or listening to their iPods without ever once having to pay a fine.  Or maybe police officers will just target  the “pretty” girls.  Or better yet, maybe states will just “re-purpose” those ubiquitous traffic cameras with face recognition technology and folks will receive their $100 fines in the mail.  What a great revenue generator that’ll be for a state.

Such laws may sound ridiculous, but don’t count New York out just yet.  Remember that it was the first state to pass a ban of handheld cell phone use while driving.  And all it takes is just one state—particularly a large populous state like New York or California—to open the floodgates to all sorts of new laws.  So when will some enterprising politician introduce the “No Looking Down at Your Feet While Walking” Act?

Last summer, when I read about the Susan G. Komen Foundation’s aggressive enforcement efforts against other charities to protect its “FOR THE CURE” trademark used in breast cancer research, I thought back then that it could be problematic for the company.  Not necessarily from a legal perspective, but from a public relations one.  And that’s extremely important to keep in mind, because the sorts of issues the Komen Foundation are facing now are the things that keep trademark lawyers up at night.  And when I read about the Foundation’s continued efforts last month, the story wasn’t going to die so quickly.  Such is the nature of the internet.

Before you condemn the Komen Foundation, keep in mind that what’s smart from a legal perspective isn’t always the best PR strategy.  The 2 areas can at times be mutually exclusive.  I’ve had several instances over the years when advising clients that the way in which they’re using their trademarks could be problematic—just think back to trademarks that have become generic such as escalator, aspirin, and cellophane—to understand what I mean. 

The companies which owned those marks failed to police and enforce the ways they were being used (both internally and by others), only to have the marks enter the English lexicon and become unprotectable.  Remember, it’s not VELCRO, but VELCRO brand hook-and-loop fastener.  So it’s not unusual for friction to exist between a company’s legal department and its marketing department, let alone its PR department.  What makes sense legally sometimes translates into a poor PR strategy.  And there’s no easy fix. 

Just ask North Face when it pursued a teenager a couple of years ago who sold a line of clothing called “SOUTH BUTT.”  North Face’s cease-and-desist letter not only circulated throughout cyberspace, but as a result of the company’s enforcement efforts, the story garnered a great deal of media coverage—with the theme being that a big, bad company was “bullying” a teenage entrepreneur.  He garnered a lot of public support and sold a lot of clothes.  North Face eventually settled with him.  Like I said, it’s these sorts of stories that keep trademark lawyers up at night.  You’re damned if you do and damned if you don’t.

The Komen Foundation must—not should, may, or could—but must police the use of its trademark by others or else it risks losing rights in it.  That’s a legal question not open for debate.  And the Foundation is no different than many companies, such as Intel, which also vigorously protect their marks.  As to whether it’s being too aggressive by going after hundreds of smaller local cancer charities which incorporate some derivation of ”FOR THE CURE” into their marketing efforts, that’s both a legal and PR question, but when Steven Colbert makes fun of you like he did recently, you’ve got a PR problem. 

Legally, how much enforcement is enough isn’t set in stone and is highly dependent on the facts of each case.  If a company is taking reasonable steps to notify potential infringers and demands that they cease-and-desist their use of the mark in question, that’s an important first step—which is what the Komen Foundation is doing.  Of course, whether they have to send out hundreds of letters to even small local charities trying to support cancer research in each and every instance is another matter, but such a strategy is sound from a legal perspective.   And deterrence is an important part of enforcement too.  

From a PR perspective, however, raising money for cancer research is quite a sympathetic cause—more so than a kid selling SOUTH BUTT jackets.  And just because you have the legal right to do something doesn’t mean that you should.  Or at least exercise it to such a degree that it could cost the Foundation more down the road, especially a charity which only exists due to the good grace and generosity of others.  But I leave those questions to the PR experts.

Stories abound in the media about how lawyers abuse the legal process.  But judges do so as well—although perhaps not as frequently—and attorneys often can’t do much about it (at least not quickly).  Such was the case for a judge in Tennessee who was reprimanded by state authorities for “excessive delay” after waiting nearly 11 years to rule on a case. 

“Excessive delay.”  Ya think?  Not 11 weeks.  Or 11 Months.  But 11 YEARS.  Judge F. Lee Russell took a case under advisement in 1999 and didn’t rule on it until October of 2010—and only after he learned that he was facing discipline.  Absolutely unbelievable and inexcusable.  And needless to say, not very judicious.

It’s hard to believe he was only reprimanded and not forced to resign.  If a lawyer waited that long to do something (if that were even possible), not only would he rightly be sued for malpractice, but his disciplinary punishment would likely be far more severe than a mere reprimand. 

What’s most egregious is that Judge Russell apparently didn’t grasp that his behavior affected the lives of the litigants.  Most lawyers understand this all too well.  Waiting for a judge to issue a ruling is never much fun, but that’s precisely what the end result of litigation is all about.  As the old saying goes, “justice delayed is justice denied.”  But the adage was never intended to be applied to a ridiculous case like this.  Shame on this judge and on the Tennessee disciplinary authority for only giving him a slap on the wrist.  Objection!

I love it when tech giants battle over stuff, particularly in the legal arena.  When you have two parties with virtually unlimited resources and an unfettered willingness to spend money on lawyers, it makes for interesting reading … and hopefully for more interesting law at some point down the line.  We don’t always have such excitement in the Boston legal community.

Such is the case with Microsoft’s recent filing at the Trademark Trial and Appeal Board (“TTAB”) (of the United States Patent and Trademark Office) contesting Apple’s attempt to trademark the term “APP STORE.”  Microsoft argues that “APP STORE”  is “generic for retail store services featuring apps and unregistrable for ancillary services such as searching for and downloading apps from such stores.”  The company further contends that “APP”  is “a common term for mobile software applications, while “STORE” is a common term for a “place where goods are sold.” 

Following so far?  A generic term can’t be registered for use as a trademark because it refers to the actual product class of which a particular product is a member and therefore can’t be protected as a mark.  It would be like trying to register the term “VIDEO GAME” for video games or—for those of us over 40 who still remember video games’ predecessors—the term “PINBALL” to describe pinball machines.

Microsoft’s argument has merit and the company has a reasonable basis to contest the mark.  Of course, this doesn’t mean that Apple won’t win in the end, but it should be an interesting read when the TTAB decision come out—at least to us trademark lawyers.  (And the parties may then have the opportunity to fight it out in federal court.)  Needless to say, neither party suffers from a lack of resources to fight to the bitter end.  But they could settle too, if for instance, Apple lets Microsoft use the term to describe its own “App Store.”

There are numerous factors which the TTAB and a court can take into consideration when determining whether a mark is generic, including:  how the potential trademark owner itself uses the term; whether third parties use the term as a common name for their own products; what the dictionary definition is (if any) for the term as a common name for a particular type of product; whether there are other available terms to describe the common name for the products; the period of time in which the trademark has been in use; how the press and others use the term; and of course, the results of any survey evidence that either party introduces (which are usually subject to vigorous attack by the other party).  There are other factors too, but these tend to be the main ones for determining “genericness.” 

Without going into too much detail here, Microsoft does have some favorable evidence to support its claim, as does Apple.  While there are a ton of trademark cases that discuss generic marks, a 4th Circuit decision comes to mind, Hunt Masters, Inc. v. Landry Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001).  In that case, the court found that the term, “CRAB HOUSE” to describe a restaurant that, uh, served crabs “is a generic term referring to a class of restaurants that serve crabs.”  It found:

Here, the meaning of the individual words is fairly clear. A crab is “any of numerous chiefly marine broadly built crustaceans,” while “restaurant” is one of the many definitions of the word “house.”  Webster’s New International Dictionary 1096 (3d ed. 1961). Other common words that are often used as synonyms for “restaurant” include bar, parlor, and shop. When preceded by a type of food, these words describe various classes of restaurants, such as ale houses, tapas bars, ice cream parlors, and coffee shops. Each term denotes a class of restaurant serving a particular type of food, just as”crab house” denotes a class of restaurant that serves crabs. 

The court also rejected the plaintiff’s survey evidence when assessing genericness.  So “CRAB HOUSE” was deemed to be unprotectable.  While there are a few factors that differentiate this case and some of its principles from what Microsoft is arguing at the TTAB (such as time frame related to evaluating genericness), given the abundance of legal precedent in this area, the company can reasonably argue that ”APP STORE” is a generic term (or a merely descriptive one) for a place that sells applications.  Much of the fight will be over the term “APP.”

Of course, as any intellectual property or technology lawyer will tell you, trademark law is a highly nunaced area of practice, so these cases can turn on distinctions that at times seem more imaginary than real—especially in a sector as fast-paced as technology.  We’ll just have to wait and see.

Sigh.  Although I’m not surprised–especially given this pernicious and false belief that if it’s on the internet then it must be free–it’s been estimated that 43 sites which engage in digital piracy account for about 21 billion visits per year.  That’s roughly 3 times the current population of the Earth.  As an intellectual property attorney, I always find such statistics sobering given the rampant copyright and trademark infringement which occurs on the internet.  Predictable, but sobering nonetheless.  And no doubt the public hates those lawyers who pursue the infinitesimally small percentage of infringers that they’re able to find and sue, let alone actually stop or collect against.  The battle continues!

When I first heard about the Associated Press (“AP”) accusing Shepard Fairey, the artist who created the ubiquitous red and blue Obama poster emblazened with the word “HOPE,” for copyright infringement, the first thing I thought of was “fair use,” most notably the concept called “transformative use.”  The AP alleged that Fairey infringed its photograph of Obama when he developed his poster.

Then I read the story shortly thereafter about Fairey filing a “declaratory judgment” lawsuit in New York asking a federal court in Manhattan to “declare” that he was not infringing the AP’s photograph.  Fairey doesn’t deny that he based the painting on the photograph, but claims that it was a fair use, which is a defense against copyright infringement. 

Although I haven’t had a chance to read the complaint yet, transformative use is the principal part of Fairey’s defense.  And it’s a meritorious one that will make for an interesting legal analysis—assuming the case gets that far.  So what is “transformative use” exactly?  The Supreme Court addressed this issue most recently in Campbell v. Acuff-Rose Music, Inc. in 1994.  The Court described a transformative use as follows:

The enquiry here may be guided by . . . looking to whether the use is for criticism, or comment, or news reporting, and the like. The central purpose of this investigation is to see . . . whether the new work merely “supersede[s] the objects” of the original creation or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether and to what extent the new work is “transformative.”  Although such transformative use is not absolutely necessary for a finding of fair use, the goal of copyright, to promote science and the arts, is generally furthered by the creation of transformative works. . . . and the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.  (emphasis added)

So the court will be focusing on to what extent Fairey’s painting adds something new to the original AP photograph, i.e., its “expression, meaning, or message” and thereby “transforms” it.  While a fair use analysis can be quite lengthy and complicated (and is very fact-specific), Fairey will certainly be able to make a credible argument that his colorful and abstract painting combined with the word “HOPE” alters and transforms the photograph’s meaning or message. 

In fact, it’s unclear to me exactly what message the original photograph would be communicating by itself.  Is Obama looking confident?  Reflective?  Poised?  Attentive?  Presidential?  It’s somewhat subjective and it will be interesting to see how the AP characterizes the picture’s message.  It’s really more a question of opinion, which works strongly in Fairey’s favor.  (And what does “hope” consist of anyway?)  So Fairey has a strong defense in this regard.  But one thing that I learned about litigation over the past 15 years or so is that it’s a very fluid and dynamic environment and can change rapidly.  Unforeseen things happen.

So in practical terms, what’s the lesson to be learned here?  Here’s the basic one:  Contacting a party or sending a cease and desist letter can be risky business sometimes.  In any type of infringement action—whether it’s patent, trademark, or copyright—notifying the other side that you believe it’s infringing on your intellectual property rights gives them the ability to go running into federal court and seek declaratory relief.  After all, you’ve just told them that a problem exists.

Your notification to them of possible infringement creates what’s called a “justiciable controversy” and can give them the ability and standing to go into court to seek a declaration that they’re not infringing, just as Fairey has done.  Of course, each federal circuit has its own rules as to what creates a justiciable controversy, so Massachusetts may use a different standard than another state—although the standards will usually not differ all that much.

So why is this a problem?  If you’re located in Boston, Massachusetts and the possible infringer is located in California, that party can now go into a federal court in California and file its action and get the “home field” advantage.  The court would very likely have jurisdiction over you.  So in addition to now having to hire counsel in California to defend yourself, you would also be forced to go there to give and take depositions and engage in other forms of “discovery.”  It can be very incovenient and expensive.  That’s the point.

This is why whenever somebody contacts me about either sending a cease and desist letter or is the recipient of one, it’s crucial to really sit down and strategize as to what your next move should be.  If litigation is a probable outcome and you’re dealing with a well-financed adversary, then it may be best to strike first and file an action in your home state where it would be most convenient for you.  (It’s been my experience, however, that many clients—especially those who have never been through the litigation process before—are somewhat leery of filing litigation first given its potential expense and duration.) 

Of course, these are general guidelines only and each situation will have its own facts and nuances that will dictate how best to proceed.  The practice of law doesn’t usually lend itself to easy answers, particularly where issues of infringement are concerned.  Many factors need to be taken into consideration.

So, Fairey did the smart thing.  Rather than wait and let the AP sue him—especially given the meritoriousness of his case—he struck first.  It will be interesting to see how things develop.  And it’s always possible that the case will settle before the court has a chance to rule.  In many instances, filing an action such as this is simply designed to show the other side that a person is serious about protecting his/her rights and that a compromise might be in everyone’s best interest.  But Fairey has a strong case.  We’ll have to wait and see.

Does the flood of information ever end?  Do we have to know everything about everyone—in real time?  While location-tracking software is not new (well, not too new, anyway), Google’s expected move into this market only further reinforces Scott McNealy’s eerily prophetic saying, “You have zero privacy anyway.  Get over it.”  But now when you “get over it,” all of your friends will be able to see exactly where you were and when.

Google just launched its Latitude software that lets mobile phone users share their mapped location with their network of contacts—if they so choose.  This is nothing new, per se, given the existence of other companies such as Loopt, BrightKite, and Dopplr (for example), as well as most people’s familiarity with GPS, but Google’s entry into the marketplace provides further evidence that the technology is becoming even more widespread.  Maybe too much so.  But when the 800 pound gorilla talks, everyone listens.

According to the article, Google “hopes it will help people find each other while out and about and keep track of loved ones.”  Those are helpful and noble intentions.  What parents wouldn’t want to know where their teenagers are?  Or be able to direct a lost friend to your precise location?  But hope is a fickle thing.  And what Google hopes for and how Latitude will actually be used are two entirely different things.  We all know what the road to hell is paved with.  Lawyers make their living off of it (more on that in a moment).

Google requires that people expressly sign-up for the service and gives them the opportunity to tailor their preferences as to who they can share their location with, as well as the type of information shared.  While that gives the user some degree of control, it’s probably only a matter of time before a bored 16 year-old in hacks into the system and tracks people. 

Even if this doesn’t occur anytime soon, a disgruntled ex-husband may be able to track his ex-wife who forgot to take him out of her “network.”  While entire companies have sprung-up offering this type of GPS-based (and typically illegal) service, now a person can do so without any special equipment whatsoever.  Just a little bit of software and a forgetful spouse.  It goes without saying that stalking is a very real problem in this digital age and tools that used to be available only to law enforcement are becoming increasingly more common.

The fact that such software is even available is part of the larger privacy debate that will be with us for quite some time.  There are no easy answers in a society that never seems to have enough information about others.  Yet from a litigation perspective, few people may realize that all of this location data is stored by a provider for varying degrees of time and subject to subpoena and disclosure in the proper circumstances. 

Thus, in criminal or civil cases where a person’s time and location is an issue, it provides yet one more tool for lawyers to pursue when representing their clients.  Just ask those divorce attorneys in Massachusetts and elsewhere about getting all of that “E-Z Pass” toll information to discover cheating spouses.  Modern convenience has its costs.

So the age old Perry Mason question, “Where were you on February 4, 2009?” now becomes, “Why were you on the corner of 53rd and 7th Avenue at 3:12 p.m. on February 4, 2009?”  And while it may—may—help lawyers such as myself get to the truth faster in a courtroom, the human part of me (and yes, that still exists) finds it it to be unsettling.  So bad grammar aside, the question, ”Where you at?” now becomes, “Why you there?”  Ah technology . . . .