Q2 2018 Quick Links, Part 5 (Potpourri)

My email inbox has gotten out of control, and I had to declare partial email bankruptcy. In this post, I’m largely quoting highlights from 18 cases I had flagged for closer review or possible posting over the past 18 months that instead festered in my inbox for too long. FWIW.

Gibson v. Swingle, 2017 WL 728284 (Cal. App. Ct. Feb. 24, 2017). The latest opinion in an apparent decade-long online trolling campaign.

Swingle believed the matters he published were true because anonymous individuals on the Internet said they were, and he believed those individuals were Gibson acting incognito. When Gibson asked, “What is it going to take to get you to stop publishing attacks on me on the internet?” Swingle responded, “You can’t.”…

Swingle argues his deposition testimony pertained only to his Internet posts about a “Gibson,” which did not necessarily mean plaintiff. The argument is without merit. During deposition, Gibson asked Swingle whether he made statements specifically about Gibson. Swingle admitted he did….

Assuming, as Swingle represents, that the documents reflected statements actually made on the Internet, Swingle made no showing that he had personal knowledge about who the authors were, about whether the statements were true, or whether the authors knew whether their statements were true. Much of what passes for evidence in the comments section of a blog is not admissible in court.

Glassdoor, Inc. v. Superior Court, 2017 WL 944227 (Cal. App. Ct. March 10, 2017).

a substantial preponderance of national authority favors the rule that publishers, including Web site operators, are entitled to assert the First Amendment interests of their anonymous contributors in maintaining anonymity…

Glassdoor is not an avowed stranger to the speaker, as was the objector in Matrixx. It is the acknowledged publisher of the speech at issue. Such a publisher has a strong interest in protecting the right of its users to speak anonymously….

[Glassdoor’s] usefulness to potential readers depends on the degree to which posters feel able to frankly recount their employment experiences without fear of adverse consequences. In the case of a current employee, such consequences can be severe, up to and including termination of employment. Even a past employee may be exposed to retaliation by, for instance, unfavorable references. Anonymity may provide a would-be poster’s only real protection against such consequences. By providing it, Glassdoor creates an opportunity for users to safely provide content of interest to other users. In exchange Glassdoor receives content which, it hopes, will draw readers to its site and from which it undoubtedly hopes to derive revenue….

Doe could of course engage counsel to appear on his behalf, but there is no reason to believe that this would yield better representation than Glassdoor will provide. Indeed, one consequence of denying standing to a publisher in Glassdoor’s position would be to cast upon the anonymous speaker the potentially prohibitive cost of defending the right to anonymity….

Most content providers like Doe are unlikely to receive, and do not expect to receive, any economic reward for the content they provide. MZ’s rule would require them to decide whether to engage in an activity creating a significant risk of substantial pecuniary harm while offering no prospect of material reward. The prudent decision is to refrain from posting….If the publisher is prepared to ameliorate this inhibiting effect by stepping into its contributors’ shoes when their anonymity is threatened, we see no sound reason to forbid it….

some attacks on anonymity may be mounted for their in terrorem effect on potential critics. Here, for instance, such a suit might be intended to deter other past or present employees from criticizing MZ—an effect that would violate the public policy manifested in California statutory law, which prohibits employer restrictions on, or punishment for, speech regarding conditions of employment….

In any action predicated on anonymous speech, regardless of legal theory, the plaintiff should not be able to discover the speaker’s identity without first making a prima facie showing that the speech in question is actionable….

We do not believe a plaintiff in MZ’s position is entitled to compel the disclosure of an anonymous poster’s identity without first clearly identifying, on the record, the specific statements claimed to have given rise to liability. It is not sufficient—if in fact it is true—that MZ identified the challenged statements in communications with opposing counsel. It is the court, not counsel, that must determine whether a prima facie showing of actionable statements has been made. It is impossible to perform such a task without knowing the exact statements on which liability is predicated. Moreover, if it is not obvious from the face of the statements that they indeed conveyed an actionable meaning, the plaintiff must clearly specify the meaning it contends was conveyed by them, and any extrinsic facts necessary to lend them that meaning—the equivalents, respectively, of what are known in defamation as the “innuendo,” or defamatory gist or sting, and the “inducement,” or factual context necessary to render facially neutral words defamatory….

The vagueness with which MZ framed its claims in the face of Glassdoor’s repeated demands for specificity is redolent with the possibility that greater specificity might disclose not valuable secrets but a lack of merit in the claims themselves.

From FN3:

Glassdoor has not contended that it is protecting its own First Amendment interests in this matter, but such a contention might have considerable color if urged in a proper case. After all, Glassdoor is itself a publisher of the speech at issue and the present matter threatens to impair its ability to continue to publish speech supplied to it by anonymous content providers. In this regard its interests resemble those of a news outlet resisting disclosure of the identity of a confidential source. Its position differs only in that it does not, apparently, exercise any editorial control over the speech it publishes, acting instead as a passive conduit for the speech of others. It is far from clear that this fact should deprive it of the status of a speaker seeking to protect its own First Amendment rights.

J.I. v. New Jersey State Parole Board, 2017 WL 1057462 (N.J. Sup. Ct. March 21, 2017).

J.I. is a sex offender subject to community supervision for life. After his release from confinement, J.I. was allowed full access to the Internet, with one exception: he could not visit an Internet social networking site without the approval of his District Parole Supervisor.

After J.I. had served thirteen months on community supervision for life without incident, his District Parole Supervisor totally banned his access to the Internet except for employment purposes. The District Parole Supervisor justified the ban based not on J.I.’s conduct while on community supervision for life, but rather on his conduct years earlier—the accessing of pornography sites and the possession of pornography—that led to a violation of his parole. A Parole Board panel affirmed, apparently with no input from J.I.

Following imposition of that near-total Internet ban, J.I. accessed several benign websites, such as those of his church and therapist, after repeated warnings not to do so. As a result, the parole authorities completely banned J.I. from possessing any Internet-capable device. The Parole Board upheld that determination and denied J.I. a hearing. The Appellate Division affirmed.

We now reverse and remand to the Parole Board. Conditions imposed on CSL offenders—like those imposed on regular parolees—are intended to promote public safety, reduce recidivism, and foster the offender’s reintegration into society. Arbitrarily imposed Internet restrictions that are not tethered to those objectives are inconsistent with the administrative regime governing CSL offenders. We agree with the position taken by federal courts that Internet conditions attached to the supervised release of sex offenders should not be more restrictive than necessary.

The sheer breadth of the initial near-total Internet ban, after J.I.’s thirteen months of good behavior, cannot be easily justified, particularly given the availability of less restrictive options, including software monitoring devices and unannounced inspections of J.I.’s computer. After the imposition of the total ban for J.I.’s Internet violations, J.I. should have been granted a hearing before the Parole Board to allow him to challenge the categorical Internet blackout. The complete denial of access to the Internet implicates a liberty interest, which in turn triggers due process concerns.

ZL Technologies v. Does 1-7, 2017 WL 3048761 (Cal. App. Ct. July 19, 2017).

Although, as noted, the fact that statements were published on the Internet using a pseudonym may suggest an average reader should “view them with a certain amount of skepticism”, the name and professed purpose of the Glassdoor website, and the formatting of reviews posted there, created a setting in which the audience reasonably might anticipate receiving a mix of content, including factual statements and opinion. Unlike the Craigslist website “ ‘Rants and Raves,’ ” where offensive speech was posted in Summit Bank, for example, the website name “Glassdoor” does not immediately suggest a culture in which users will post content that is “fast and loose with facts”, or reflect an “anything goes” mindset. Rather, the name suggests what the website provided, a transparent or open door, a means of ingress or access, for those seeking inside information about jobs and companies. Glassdoor advised readers that its website offered “an inside look at jobs and companies” in the form of “ ‘employee generated content’—anonymous salaries, company reviews, interview questions, and more”—providing job seekers “all the information [they] might need,” “detailed information,” to make “career decision[s].” Although the term “company reviews” suggested employees would share opinions, the website’s emphasis on providing “information” also strongly intimated factual material would be included.

Ducks Unlimited, Inc. v. Boondux, 2017 WL 3579215 (W.D. Tenn. August 18, 2017): “Plaintiff has not established that initial-interest confusion is actionable in this case because it has not presented evidence that Defendants have deceptively used the Boondux Logo to lure consumers to Boondux’s website or its booth at tradeshows or shown how, if at all, Boondux’s advertising efforts are deceitful.”
A footnote adds:
“Initial-interest confusion takes place when a manufacturer improperly uses a trademark to create initial customer interest in a product, even if the customer realizes, prior to purchase, that the product was not actually manufactured by the trademark-holder.” The Sixth Circuit has been reluctant to extend initial-interest confusion as an actionable theory under the Lanham Act outside the narrow context of disputes over internet domain names. In that context, actionable initial-interest confusion may occur where, for example, the defendant uses the plaintiff’s word mark in the defendant’s internet domain name to direct consumers to the defendant’s website. Boondux has not used Ducks Unlimited’s name or word mark in the domain name for its website, www.boondux.com.
Guardian Pool Fence Systems Inc. v. Sunwest Industries, Inc., 2017 WL 2931413 (C.D. Cal. June 1, 2017):
A company discussing a competitor on its own website does not alone amount to trademark infringement or generate confusion. A reasonably prudent consumer would draw very little from the fact Guardian appeared as a topic on the All-Safe website….
While very few consumers did click on the topics, those that did found blog posts discussing pool safety in general terms. There is nothing within the blog posts referencing Guardian. The use of the term Guardian in the topic names is confusing, but it is confusing in that it makes little sense given the ultimate content of the posts tagged with the topic. It does almost nothing to suggest that Guardian is in any way the source of the pool nets for sale through All-Safe, and pool nets are not directly offered for sale anywhere in blog posts. Or to put it differently, it should not create confusion “as to the origin of the good or service” promoted on the website. Further, the Ninth Circuit has remarked that reasonable consumers “expect to find some sites that aren’t what they imagine based on a glance at the domain name or search engine summary.” The Court expects reasonable consumers to be capable of dismissing dead-end topics labels as oddities, indicative of almost nothing….
The Court also notes that All-Safe’s website prominently displays the All-Safe logo, and only this logo, on every page. This “broader context” of the topics pages mitigates against any possible confusion as to a connection with Guardian. Ultimately, while it is likely that a consumer would be confused about the point of the topics, it is not probable that a reasonably prudent and experienced online shopper would conclude that Guardian was affiliated with All-Safe or that Guardian was the source of All-Safe’s nets, which were not even offered for sale on the website. Accordingly, the Court finds that Guardian has not borne its burden of demonstrating a likelihood of confusion.
All Safe counterclaimed that Guardian was buying its trademarks as keywords. This also fails:
Guardian nowhere uses the All Safe mark on its website, and its domain name does not incorporate the phrase “all safe.” Additionally, clear labeling of a search result as an advertisement can help eliminate any possibility of confusion. Here, the advertisement including the term “all safe pools” was clearly marked as an advertisement, which further counsels against a finding of confusion. Accordingly, the Court finds the fact that All-Safe has shown an instance where All-Safe’s trademark appeared in an online advertisement for Guardian’s website, which also clearly incorporated Guardian’s non-infringing domain name, to be insufficient to justify a finding of a likelihood of confusion.
Sazerac Brands LLC v. Peristyle LLC, 2017 WL 4558022 (E.D. Ky. July 14, 2017):
When Peristyle’s initial website launched in February 2016, the words “Rip Van,” “Van Winkle,” and “Pappy” were contained in the site as keyword metatags. According to Peristyle, its web designer used the words without authorization and the words were “meant to be used as a placeholder and replaced before the website went live.” The words were never replaced as planned, and the website launched despite the words’ inclusion. Sazerac learned of this and raised the issue with Peristyle, who then removed the words from the site by June 2016. Sazerac alleges this temporary inclusion of the words as metatags constitutes trademark infringement, as the words are all variations of Sazerac’s RIP VAN WINKLE and PAPPY VAN WINKLE marks….
Peristyle has submitted evidence that leading search engines such as Google, Yahoo, and Bing stopped ranking websites based on keyword metatags a number of years ago. And more recent case law supports this position. [cites to Network Automation and Ascentive v. Opinion].
Although Sazerac points to strongly worded language from the cases that find trademark infringement based on metatag use, that language predates Peristyle’s evidence of technological change. Sazerac fails to explain why metatags should still form the basis for Lanham Act liability in light of major search engines’ change in policy, and Sazerac also presents no evidence that Peristyle’s temporary inclusion of the metatags caused or was likely to cause any consumer confusion. Based on the current record, no reasonable factfinder would find against Peristyle on this claim.
Keyword metatag lawsuits are stupid.
Shen v. Albany Unified School District, 2017 WL 5890089 (N.D. Cal. Nov. 29, 2017). This case involves a student’s private Instagram account that spewed vile racist content about teachers and other students, and other students liked and commented on it. The student creating the account was expelled from school; the other participating students were disciplined as well.
Plaintiffs Rick Roe and Paul Poe liked some of the posts without adding any text. This too is expression covered by the First Amendment….This action broadcasts the user’s expression of agreement, approval, or enjoyment of the post, which is clearly speech protected by the First Amendment….
The parties’ disagreement is sharpest in the case of Nick Noe. Noe and defendants contest whether he has any First Amendment claim at all from just following the @yungcavage postings. Defendants say that he does not because he was, at most, a passive consumer of content and not an active speaker. Noe’s own declaration goes to some length to state that he joined only at C.E.’s request and that he “never accessed the account to view any of the dialogue or images that were posted” and was not aware of its content until he was questioned by AUSD officials on March 21. Both sides frame their debate in terms of whether Noe was engaged in affirmative expressive conduct, but the better approach is to view his activity as that of a reader. The First Amendment protects readers as well as speakers….
Looking for a moment beyond the speech issues, the disciplinary action against Noe is troubling in many respects. From the record before the Court, it appears that Noe did nothing more than have access to the posts, and the District agrees that Noe’s conduct was “completely devoid of any affirmative expressions or purpose, action, or ideology.” It is not clear how Noe or any student would have known that online access or viewing alone could result in a suspension, and it is even less clear how a suspension for those reasons squares with our traditional ideas of freedom of thought, due process, and fairness. Giving schools the power to control what students are permitted to look at online is a deeply problematic proposition….
AUSD’s authority under Tinker to discipline C.E., the creator and main content supplier for the @yungcavage account, is not open to serious question….That fits well here because a cascade of disruptive events immediately followed the public disclosure of C.E.’s @yungcavage account. After the disclosure, the students who first gathered in the hallway were “all too upset to go to class” and “were crying hysterically and talking loudly about the posts.” One school administrator stated, “I had never seen a group of students as upset as these girls were. The intensity of the crying and the yelling was very disturbing and disruptive.”…
Defendants also properly disciplined plaintiffs Philip Shen, Kevin Chen, the Doe plaintiff, Rick Roe, and Paul Poe, all of whom expressed approval of or liked posts that specifically targeted students at AHS…
Whatever the outer boundary might be of Tinker’s interference inquiry, these cases establish that students have the right to be free of online posts that denigrate their race, ethnicity or physical appearance, or threaten violence. They have an equivalent right to enjoy an education in a civil, secure, and safe school environment. C.E., Philip Shen, Kevin Chen, the Doe plaintiff, Rick Roe, and Paul Poe impermissibly interfered with those rights.
Some of the plaintiffs have tried to minimize their culpability by saying that their likes were made casually and thoughtlessly. But a plaintiff’s subjective state of mind is irrelevant. Under Tinker, the inquiry is whether the speech at issue interfered with the rights of other students to be secure and let alone….
While AUSD was within its rights to discipline most of the students here, the four remaining plaintiffs stand in a different position. The record does not show that plaintiffs Kormi, Bales, Nick Noe, and plaintiff Doe in the Roeaction either approved of or adopted any content targeting specific individuals at AHS….Endorsement or encouragement of speech that is offensive or noxious at a general level differs from endorsement or encouragement of speech that specifically targets individual students.
Blue Star Land Services LLC v. Coleman, 2017 WL 6210901 (W.D. Ok. Dec. 8, 2017). The court issued a DTSA ex parte seizure and explains:
Plaintiff claims that the “law of the case” doctrine precludes the Court from considering Defendants’ Motion with regard to Plaintiff’s misappropriation claims because the Court’s earlier ex parte seizure order necessarily held that the Complaint satisfied a standard beyond Rule 12(b)(6)’s plausibility requirements. Granted, the Court found “extraordinary circumstances” justifying an ex parte seizure and that “it clearly appears from specific facts” that Plaintiff satisfied the DTSA’s eight ex parte seizure order requirements. 18 U.S.C. § 1836(b)(2)(A)(i)–(ii). However, an ex parte order, without the presence of opposing counsel’s advocacy, does not constitute law of the case.
Here is the underlying court order and plaintiff’s motion. Do you see anything “extraordinary” compared to a standard employee departure + creation of new competitive venture?
Open Source Security, Inc. v Perens, 2017 WL 6539874 (N.D. Cal. Dec. 21, 2017).
The defendant Bruce Perens — who is a respected programmer known for his founding of the Open Source Initiative — criticized OSS’s business model for distributing its security patches on the ground that it violated the open-source license and thus potentially subjected users to liability for copyright infringement or breach of contract…
The court holds that Mr. Perens’s blog posts are opinions and are not plausibly defamation. The court dismisses the complaint with leave to amend and denies the anti-SLAPP motion without prejudice
Del-Orden v. Bononos, Inc., 2017 WL 6547902 (S.D.N.Y. Dec. 20, 2017). There have been a string of troubling rulings requiring Internet services to follow the Americans with Disabilities Act. This case is a sample of how the cases are going:
The Court today joins the growing number of courts to hold that commercial websites qualify as “public accommodations” within the meaning of the ADA, such that the ADA’s protections extend to blind persons who claim discriminatory access to such websites….
The Court agrees with Bonobos that whether the ADA applies to such a website is an open question in the Second Circuit. However, the Court is persuaded by various authorities—including an instructive Second Circuit decision applying the ADA to insurance services, decisions of district courts in this Circuit, and the decisions of other circuit courts of appeal —that the ADA applies to commercial websites in general. The Court is further persuaded that, even if this were not so, the ADA clearly applies to private commercial websites which (as here) operate in tandem with the merchant’s conventional (i.e., brick and mortar) places of public accommodation….
given Congress’s intention that the ADA be read broadly in light of its remedial aims and that it be construed to keep pace with changing technology, the term “other sales or rental establishment” can be fairly read in today’s world dominated by e-commerce to encompass a commercial website. A finding that such websites are covered by Title III thus would have a textual basis in the statute….
Congress’s purposes in adopting the ADA would be frustrated were the term “public accommodation” given a narrow application, under which access to the vast world of Internet commerce would fall outside the statute’s protection. Today, few areas are more integral to “the economic and social mainstream of American life” than the Internet’s websites.
Golo LLC v. Highya LLC, 2018 WL 2086733 (E.D. Pa. May 4, 2018). The defendants are ad-supported consumer review websites. Golo objected to reviews about it, and it sued for Lanham Act violations. The court dismisses for lack of commerciality: “On their face, the reviews do not promote any competing product, and do not explicitly propose a commercial transaction. They simply offer an analysis of Plaintiff GOLO’s product, and in doing so, do not go so far as to make any specific recommendations to consumers.”
Ex Parte Jordan Bartlett Jones, 2018 WL 1835925 (Tex. Ct. App. April 18, 2018). Regarding Texas’ sui generis “revenge porn” law, the court says it’s a content-based restriction that triggers strict scrutiny. The law doesn’t fit into the constitutional exclusion for “obscene” content. The law fails:
Section 21.16(b)(2) could be narrowed by requiring that the disclosing person have knowledge of the circumstances giving rise to the depicted person’s privacy expectation. But because Section 21.16(b) does not use the least restrictive means of achieving what we have assumed to be the compelling government interest of preventing the intolerable invasion of a substantial privacy interest, it is an invalid content-based restriction in violation of the First Amendment….
Section 21.16 is extremely broad, applying to any person who discloses visual material depicting another person’s intimate parts or a person engaged in sexual conduct, but where the disclosing person has no knowledge or reason to know the circumstances surrounding the material’s creation, under which the depicted person’s reasonable expectation of privacy arose. Furthermore, its application is not attenuated by the fact that the disclosing person had no intent to harm the depicted person or may have been unaware of the depicted person’s identity.
Experian Information Solutions, Inc. v. Nationwide Marketing Services Incorporated, 2018 WL 3130680 (9th Cir. June 27, 2018).
Experian’s lists are entitled to limited protection. Experian’s selection process in culling data from multiple sources and selecting the appropriate pairing of addresses with names before entering them in the database involves a process of at least minimal creativity. The listings are compiled by first collecting and comparing multiple sources, and then sorting conflicting information through the creation of business rules that Experian created to select from among the conflicts….Experian’s employees choose from multiple and sometimes conflicting sources, and they use their judgment in selecting which names and addresses to include in the database.
Experian’s employees, like the compiler in Key Publications, also exclude information they deem irrelevant to the interests of Experian’s marketing clients, information such as business addresses, and the names and addresses of the very elderly and incarcerated….
Experian’s methods, however, do not entail simple replication of the data that Experian receives, as was the situation in Feist….Experian’s selection process produces different, and at least according to Experian, more reliable data than the other four largest database compilers in the United States….
It is undisputed that Natimark’s database was materially smaller than Experian’s. While Experian’s database at the relevant time included approximately 250 million pairings, Natimark’s database contained name and address pairings for only 200 million consumers. Even assuming Natimark’s pairings were exact copies of their counterparts in the Experian database, the match rate would only be 80% and insufficient to establish a bodily appropriation of Experian’s work.

Silvertop Assocs., Inc. v. Kangaroo Mfg., Inc., 1:17-cv-7919 (NLH/KMW) (D.N.J. May. 29, 2018).

FFS, we’re back to the copyrightability of banana costumes. The putative copyright owner claims “the unique features of the banana design [are] the overall shape and cutout holes of the costume, the black ends of the banana, and the vertical lines running down the middle of the banana. ” The court says it’s a useful article, but applies Star Athletica. The cutout holes are utilitarian because they are needed for arms and legs. However:

The Court can easily identify the features of the Banana Costume having a pictorial, graphic, or sculptural quality.

These features include: a) the overall length of the costume, b) the overall shape of the design in terms of curvature, c) the length of the shape both above and below the torso of the wearer, d) the shape, size, and jet black color of both ends, e) the location of the head and arm cutouts which  dictate how the costume drapes on and protrudes from a wearer (as opposed to the mere existence of the cutout holes), f) the soft, smooth, almost shiny look and feel of the chosen synthetic fabric, g) the parallel lines which mimic the ridges on a banana in three-dimensional form, and h) the bright shade of a golden yellow and uniform color that appears distinct from the more muted and inconsistent tones of a natural banana.

The Court finds that, if these features were separated from the costume itself and applied on a painter’s canvas, it would qualify as a two-dimensional work of art in a way that would not replicate the costume itself. The Court thus finds, although it uses elements that might in and of themselves not be protectable standing alone, that the design when considered as a whole is separable and eligible for copyright protection. Plaintiff’s  design is not like the familiar iconic outfit of a cheerleader known to all at issue in Star Athletica. Rather, it has unique pictorial, graphic, or sculptural features that did not exist until it was created. To be sure, the Banana Costume is unlikely to end up in the Philadelphia Museum of Art but it represents artistic and stylistic choices. Its unique features reflect an “imaginative spark.”…

The Court understands there are admittedly few features to a banana but it does not necessarily follow that there are consequently only a few unique ways of designing a banana costume. In fact, the contrary appears to be true. Rasta Imposta provides this Court with twenty-one banana costumes available in the marketplace that are easily distinguished from Rasta Imposta’s design, which suggests that the limited number of options requirement necessary for merger to apply is absent. The Court has reviewed this submission and notes several unique ways of designing a banana costume. The shape and curvature can vary, as can the existence and color of tips to the banana. Bananas can also be designed to appear ripe, overripe, or unripe, ranging in color from yellow, to brown, to green. The shape can be long or more stout, relatively elongated or thin or more plump. The banana may be whole or partially peeled. There can also be the production of vertical lines and the texture and material can differ….

The Court notes that the two deluxe costumes are both yellow in color and almost identically so, with Kangaroo’s costume having a slightly more golden hue. However, both have black tips at both ends appearing to be roughly the same size and exactly the same color. Both have a near identical curvature with lines of the same yellow shade running vertically in roughly the same locations. The material and texture also appear substantially similar. But for the slightly different shades of yellow, it would be near impossible for the Court, or any factfinder, to distinguish between the two.

Stevens v. Corelogic, Inc., 2018 WL 3040129 (9th Cir. June 20, 2018).

Regarding 1202(b)(1) and 1202(b)(3) protecting copyright management information, both provisions”require the defendant to possess the mental state of knowing, or having a reasonable basis to know, that his actions “will induce, enable, facilitate, or conceal” infringement. The Photographers have not offered any evidence to satisfy that mental state requirement. Their primary argument is that, because one method of identifying an infringing photograph has been impaired, someone might be able to use their photographs undetected. That assertion rests on no affirmative evidence at all; it simply identifies a general possibility that exists whenever CMI is removed….a plaintiff bringing a Section 1202(b) claim must make an affirmative showing, such as by demonstrating a past “pattern of conduct” or “modus operandi”, that the defendant was aware of the probable future impact of its actions….the plaintiff must provide evidence from which one can infer that future infringement is likely, albeit not certain, to occur as a result of the removal or alteration of CMI.”

H-D USA, LLC v. Sunfrog LLC, 2018 WL 1757655 (E.D. Wis. April 12, 2018). This is a hugely problematic ruling that, if it stands, signals the death of the print-on-demand industry. Prior blog post. The court opinion. The permanent injunction.

Harley-Davidson has identified twelve different types of products sold by SunFrog that bear designs that infringe its trademarks, including ladies’ t-shirts, men’s’ t-shirts, youth t-shirts, ladies’ V-neck t-shirts, men’s’ V-neck t-shirts, long-sleeve shirts, tank tops, sweatshirts, hoodies, leggings, mugs, and hats. SunFrog lists each of these twelve types of goods separately on pages and drop-down menus in its website. Not every H-D Mark appeared on every type of good, although the majority did. Further, Harley-Davidson’s infringement analysis, reflected in voluminous charts appended to its submissions, shows only one particular infringing design used on each of the twelve types of products. However, most of the product types have been offered with multiple, distinct infringing designs, many of which bear two or more H-D Marks.

In March and April of 2017 alone, SunFrog’s website featured more than 100 different infringing designs on thousands of products. That represents more than 1,325 different individual counterfeit products and more than 2,575 unauthorized uses of the H-D Marks. Of course, as SunFrog’s corporate counsel notes, the designs appearing on the website do not translate into products unless someone actually orders a product. According to counsel, the vast majority of mockups never result in a single sale….

Harley-Davidson placed SunFrog on notice of its trademark rights by submitting at least seventy objections, starting in October 2016 and continuing to May 2017, encompassing well over 800 items. SunFrog responded by removing the challenged designs. Yet infringement continued, as new infringing designs would rapidly replace those that had been removed, and all the while SunFrog continued to market, promote, advertise, and sell such products on its website. For a significant period of time, SunFrog’s conduct showed that it expected it would have to do no more than respond to takedown notices in order to adequately address the intellectual property rights of third parties.

Despite Harley-Davidson providing SunFrog with a link to each accused product on the website, SunFrog typically took at least two days and as long as seven days to deactivate the product listing. For example, of the 548 products for which Harley-Davidson submitted takedown complaints that were the subject of the declaration of Abel Low, a Harley-Davidson Brand Protection Manager, (Docket #10), SunFrog took three or more days to remove 78% of those products and 4–7 days for 35% of them.

In addition to the time it took SunFrog to remove products identified by Harley-Davidson in its takedown notices, SunFrog continued to display many of the products even after they were “removed.” SunFrog continued to display such products in search results on its website. Further, it continued to use image URLs, product URLs, and sales-tracking URLs for “removed” products to drive traffic to its website. SunFrog’s URLs are widely distributed on social media and other websites, and persons clicking on those URLs for a “removed” product would be linked to SunFrog’s website and receive either a page advertising other SunFrog products or a message inviting the consumer to “start over” and conduct a search for products. In some cases, when a user would encounter an infringing product in a search result page and click on it, he would be redirected to a page selling a non-infringing product. SunFrog’s removal of the sales pages of some infringing products during March and April 2017 did not stop SunFrog or its sellers from advertising and offering new infringing products bearing identical H-D Marks or even identical infringing designs that SunFrog earlier acknowledged and “removed” in its responses to H-D’s prior complaints.

Despite Harley-Davidson’s numerous and repeated complaints, SunFrog continued up to the filing of this lawsuit on May 19, 2017 (and beyond) to advertise, offer for sale, and sell numerous infringing products. First, SunFrog continued to advertise and sell numerous infringing products in April and May 2017 bearing the identical H-D Marks cited in Harley-Davidson’s prior takedown complaints in March and April of that year. Second, SunFrog continued to allow the same anonymous sellers that were repeat infringers of the H-D Marks and identified in Harley-Davidson’s prior takedown complaints—such as “BW999” and “Bomman”—to offer and sell hundreds of infringing products.

Third, SunFrog continued to advertise and sell infringing products bearing designs identical to those identified in Harley-Davidson’s prior takedown complaints. On March 31, 2017, Harley-Davidson objected to many such products, including three that SunFrog stated it had “removed” in response to the takedown complaints. Shortly after these “removals,” dozens of new infringing products bearing these same three designs were posted on the website and were still available for purchase as of May 15, 2017….

SunFrog counters by noting the volume of user-generated designs and takedown notices. At its peak, SunFrog had roughly 150,000 user-generated designs uploaded to its website every day. Further, “during a relatively brief period, Plaintiffs’ [sic] submitted at least [810] takedown requests that SunFrog responded to by removing the allegedly infringing designs.” SunFrog believes its practices with respect to its notice and takedown tool are in accord with industry norms, and as will be detailed below, it has continued to develop new anti-piracy tools….

on May 30, 2017, Harley-Davidson moved for a preliminary injunction. On June 21, 2017, SunFrog filed a brief in opposition, claiming it had implemented “non-monetary relief” that “fully resolve[d]” Harley-Davidson’s concerns and that the motion was moot because SunFrog was: (1) no longer using or displaying any of the H-D Marks on its website; (2) no longer using or displaying any images with the H-D Marks on its website (i.e., no infringing designs or products); (3) no longer selling infringing products after removal; and (4) no longer allowing repeat infringers to sell any infringing products.

Despite these representations, infringement continued. First, SunFrog continued to advertise and offer to sell numerous infringing products bearing the same H-D Marks cited in Harley-Davidson’s prior takedown notices, and SunFrog continued to display numerous infringing designs on its website which Harley-Davidson had identified in its motion. The motion identified 115 different infringing designs available during May 2017, and 93 of those were still available on June 22, 2017. More than 40 of these 93 designs displayed one of the H-D Marks in the product title or description.

Second, SunFrog continued to allow some of the same prolific sellers to continue selling infringing products. Third, SunFrog advertised and offered for sale infringing products created before and after May 30, 2017. Fourth, SunFrog expanded the types of products it offered from shirts, leggings, and mugs bearing the H-D Marks to also include hats. Fifth, SunFrog continued to include infringing products in search results on its website. Searches on the site on July 3, 2017 for HARLEY-DAVIDSON, HD, H-D, and FATBOY continued to return results for infringing products bearing those marks. Sixth, SunFrog continued to allow infringing designs to be present in the All Art database. Seventh, SunFrog continued to allow sellers to create new infringing designs, apply them to blank products, and sell them.

Even after Harley-Davidson’s July 5, 2017 reply brief reported these continuing violations, SunFrog persisted. At the scheduling conference on July 14, 2017, SunFrog again represented that the motion for preliminary injunction was moot because it had resolved all of Harley-Davidson’s concerns. In response, Harley-Davidson provided evidence at that conference of SunFrog’s continuing infringement up to the time of the conference. As in prior submissions, Harley-Davidson proffered evidence that SunFrog continued to sell previously identified infringing products, allowed the creation of new products using previously identified infringing designs, and included infringing products in search results. Furthermore, SunFrog continued to use URLs for infringing products….

As SunFrog continued to grow, it became more difficult to prevent even a small number of users from creating constant infringement problems. To proactively make SunFrog less attractive for such conduct, SunFrog began to implement keyword blocking to prevent designs described with words that it had learned over time had a high probability of being associated with intellectual property infringement from going live on SunFrog’s website in the first place. While keyword blocking was and remains a “hugely successful” tool in SunFrog’s arsenal, some repeat offenders realized that they could get around the control by hiding keywords in the visual designs they uploaded….

Frustrated by the sheer volume of troublesome submissions and seeking to find a way to proactively monitor them, SunFrog began investigating, in November 2017, a suspicion that a few parties had learned to use “bots” to automate the process of creating and uploading designs, often using existing designs as the building blocks. That same month, SunFrog took steps to prevent bots from uploading designs to its website, which reduced the daily number of user-generated designs uploaded to SunFrog’s site to roughly 10,000 per day. While still daunting, this reduction in the volume of submissions not only improved the response time for takedown requests, it also allowed SunFrog to temporarily channel the many anti-piracy tools it has developed in one direction if SunFrog becomes aware of a more specialized content problem. Reducing the amount of submissions also allowed SunFrog to develop new tools to monitor uploads and to take action against infringing content.

Currently, SunFrog is focusing specific resources on preventing users from sharing designs that may infringe on Harley-Davidson’s intellectual property. Two employees monitor keywords in a Harley-Davidson rights holder account and look for activity on social media platforms like Facebook on a daily basis. SunFrog’s customer service employees have received training on how to monitor orders for infringing products, with instruction to cancel and refund orders containing Harley-Davidson’s intellectual property and to notify the legal department upon finding an infringing design. SunFrog says that it continues to develop new anti-infringement tools, though it does not describe what those tools might be.

SunFrog reports that in the past four years, it has terminated 3,394 accounts. Further, “[s]ince tuning up its hard won anti-infringement apparatus and using it to [protect] [Harley-Davidson’s] Intellectual Property from third parties who might attempt to upload infringing designs to SunFrog’s website, SunFrog has identified a small number of accounts abusing [Harley-Davidson’s] Intellectual Property and subsequently terminated 13 accounts.” It does not report when this occurred, though ostensibly it was after the lawsuit was filed. SunFrog also has implemented a zero-tolerance policy for accounts attempting to infringe upon Harley-Davidson’s rights.

Further, SunFrog offered Harley-Davidson access to a rights holder account in order to monitor and disable designs incorporating its marks and “requested a small modicum of cooperation from [Harley-Davidson] as to any additional keywords that should be monitored and as to the ways and channels in which [Harley-Davidson] was discovering the infringing activity.” Harley-Davidson retorts that SunFrog’s efforts have been lacking, noting that it found infringement through quick, easy searches of the All Art database, by clicking on links for infringing products that it had already disclosed to SunFrog, through searches of Facebook, including SunFrog sellers’ Facebook pages that previously advertised infringing products, and Google searches using the combinations of the term “SunFrog” and the H-D Marks. None of this searching involved extensive efforts and none used any special technology….

The Court observed last year that this is a fairly straightforward case of counterfeiting. Nothing about the development of the evidence changes the Court’s view. This includes SunFrog’s plea that it is working hard to improve its anti-infringement policies and procedures. Genuine as those efforts may be, federal law did not and does not require Harley-Davidson to wait and see whether they will bear fruit….

It is undeniable that SunFrog made a “trademark” use of the H-D Marks. SunFrog vigorously advertised and offered for sale goods bearing those marks. Upon request, it printed and shipped them to buyers. It kept most of the revenue. SunFrog used the H-D Marks to (falsely) identify its goods as coming from or being licensed by Harley-Davidson and to distinguish those goods from others’. This is use of the H-D Marks as trademarks….

True, the website users actually craft the designs that incorporate the marks. But this does not matter, as SunFrog’s involvement standing alone constitutes use of the marks. Using a mark involves placing it “in any manner” on the goods in question or displays associated with them, and undoubtedly Harley-Davidson’s marks were not maintained in the All Art database without SunFrog’s effort, did not get onto SunFrog’s goods without the use of SunFrog’s own printers, nor did they make it to purchasers without being shipped by SunFrog….

SunFrog, of course, not only advertises and offers infringing designs for sale and prints them onto products, it also ships the finished products and handles payment processing. Unlike the showroom, SunFrog exerts control over nearly every aspect of the advertising, sale, and manufacture of the infringing goods, save designing the mockups. By any measure, then, SunFrog uses the H-D Marks….

SunFrog says it is identical to eBay because it has an “industry standard notice and takedown procedure.” It therefore believes that it should be immune to contributory liability. Yet the disconnect between SunFrog’s business and eBay’s is hard to overstate. First and foremost, SunFrog is not on the hook in this case for contributory infringement, as was the focus in Tiffany. Rather, because SunFrog advertises and sells infringing products, operates printers that print the products, packs them for shipping, ships them, and then processes payment, it is directly liable.

Recall that eBay does not make anything, nor does it take goods into its custody for shipping. Sellers offer goods that they have bought or made. They then ship them to buyers. eBay has little involvement besides bringing the parties together for a fee. In fact, eBay had only used Tiffany’s trademarks on its website to advertise products; it did not make any jewelry nor did it suggest that Tiffany sponsored or endorsed the products it advertised. As a result, the Court of Appeals found that there could be no direct trademark liability arising from eBay’s limited use of the marks. SunFrog occupies the opposite posture, as it does most of the legwork in the transaction for an infringing item, including physically placing the H-D Marks on products. If SunFrog is like eBay in the sense that its users, and not SunFrog, are the ones generating infringing designs, there the similarities end….

whereas eBay was not the entity offering Tiffany jewelry for sale, SunFrog undoubtedly is the seller of the apparel and other items on its website. This brings it within the broad definition of counterfeiting in the Lanham Act, which includes not only making but also offering counterfeit goods for sale….

These precedents spell doom for SunFrog’s head-in-the-sand approach to infringement. First, SunFrog actively markets products bearing infringing designs through social media sites like Facebook, and it encourages and trains its sellers to do so as well. Indeed, the company makes three-quarters or more of its profits through Facebook ad referrals. SunFrog also allows sellers to access the All Art database to retrieve infringing designs and peddle goods bearing those designs. Arguably, then, it actively induces infringement in the Inwood sense by encouraging users to go to its website and create and order infringing goods (which, of course, SunFrog itself prints).

Second, with respect to the “reason to know” prong of Inwood, SunFrog has turned a blind eye to the infringement plaguing its business. At the front end, it failed to stop repeat infringers despite knowing their identities as a result of numerous takedown notices. Harley-Davidson submitted seventy notices in just a few months, covering over 800 infringing products. Those were removed, but identical or similar designs popped up again just as quickly, often by the same designers or sellers. Moreover, the removal process frequently took days, despite Harley-Davidson providing direct links to the offending pages. And all the while, SunFrog expanded its apparel offerings, which served to make the infringement more pervasive….

While SunFrog’s conduct shows that Harley-Davidson’s notices were not literally ignored, SunFrog failed time after time to develop reforms to its practices that actually addressed the problem in a meaningful way. However sunny a view it takes of its efforts to improve its anti-infringement apparatus, the apparatus simply did not work….

SunFrog allowed obviously infringing goods to come off its own production lines, to be packed and shipped by its employees, and then pocketed most of the profits, all without investigating the possibility of infringement or the identities of those who designed infringing goods. SunFrog knew it did not have a license to use the H-D Marks, and only willful blindness could keep it from realizing that it was nevertheless selling goods bearing those marks….

it is simply ludicrous for SunFrog to put conceptual space between itself and its employees. SunFrog complains that it “holds licenses for several properties, ranging from college sports to film properties, and individual SunFrog employees who package items as they flow out of the printers could not discern between shirt designs that are licensed and those that are not.” SunFrog is a corporate body that has no existence outside its officers and employees. That it does not train its workers to spot infringing designs is not a reason to protect it from liability….

It may cut deeply into SunFrog’s bottom line to employ comprehensive, thorough anti-infringement policies and procedures. But what matters is that SunFrog pleads ignorance while sitting atop a mountain of resources that could be deployed to develop effective technology, review procedures, or training that would help combat infringement. Instead, it chooses to rest upon incongruous legal defenses.

In short, SunFrog cannot build a business around promoting and manufacturing infringing designs and then be freed from liability merely because it offers a notice-and-takedown procedure.

[The court found dilution, saying among other things:] Many of the offending products include vulgar, political, or religious content that Harley-Davidson would not have approved to appear on licensed products. Others modify or mutilate the H-D Marks, or display marks that Harley-Davidson does not license, which again Harley-Davidson would not have approved of. There is perhaps no greater tarnishment of a famous brand than using it in an unauthorized way that likely will offend potential purchasers of genuine goods. …

SunFrog did not come to court on bended knee, like eBay did in Tiffany, hoping to join in the effort to curb trademark infringement. SunFrog came in fighting, apparently hoping to defend its business model on legal theories of dubious value. In other words, although eBay sought to defend its reputation as a safe place to do business, id., SunFrog battled for its right to exploit infringement for profit. Moreover, even when it does try to show off its burgeoning capability to detect and deter infringement, SunFrog maintains that the process has been more expensive and cumbersome than it likes.

One need only consider SunFrog’s lackluster defense at summary judgment to know that it had little chance of succeeding in this lawsuit. The Court cataloged SunFrog’s failure to raise more than a handful of factual disputes, and none concerning material facts. It also thoroughly explained why SunFrog’s legal theories do not hold water. Rather than roll up its sleeves from the start to develop and implement anti-infringement practices that actually worked, SunFrog tried to avoid liability entirely by pointing the finger at everyone else involved. But trademark law is practical, and its doctrines fit the realities of the marketplace. In law, as in business, cleverness and technicality are poor substitutes for hard work and honesty. SunFrog willfully counterfeited Harley-Davidson’s marks….

the Court, having considered the entire factual record in this case, along with the pertinent legal authorities, finds that a just award of statutory damages in this case is $300,000 per mark per type of counterfeit good, for a total statutory damages award of $19,200,000.

Glennon v. Rosenblum, 2018 WL 3241209 (N.D. Ala. July 3, 2018):

Public internet forums abound. It is intolerable in a civilized society for an individual to use these platforms to broadcast scandalous lies about a complete stranger. As this case illustrates, the internet amplifies the reach of such corrosive falsehoods while obscuring their source and support or the lack thereof. Not every case of internet cruelty will surmount the high bar for outrage. But here, Ms. Rosenblum went through the trouble of couching her lies in an elaborate story, giving them an air of plausibility by setting them in the real estate context in which Ms. Glennon actually works. Ms. Rosenblum concedes that she published these lascivious falsehoods solely to inflict emotional and professional harm upon a woman she had never met. Ms. Rosenblum also chose a website that was public and evidently did not verify the content it offers so that the story would be broadly read. Under these circumstances, the Court finds that the elements of outrage have been satisfied….

The Court has already concluded that Ms. Rosenblum’s story is defamatory. Therefore, the Court orders those websites still carrying Ms. Rosenblum’s story to remove it from their platforms. The Court also orders that search engines, such as Google, de-index the story to ensure that it does not appear as a search result when Ms. Glennon’s name is searched.