Once upon a time in Narnia, a little Scots boy lost a battle with corporate lawyers … - The Scotsman:


AN 11-YEAR-OLD boy was last night ordered by a court to hand back his birthday present – a Narnia-based website address – after one of the biggest legal firms in the world said it belonged to its multi-millionaire client.
Comrie Saville-Smith, from Edinburgh, an avid fan of the CS Lewis novels, was given the domain name narnia.mobi as a gift by his parents after it became available online.

But yesterday the World Intellectual Property Organisation (WIPO) in Switzerland ruled in favour of New York-based law firm Baker & McKenzie, representing Lewis's estate, that the name belonged to its client.

Last night Gillian Saville-Smith, Comrie's mother and a writer, described the decision as a "scandalously one-sided appraisal of the evidence" and added: "We are shocked by the decision. We put up a spirited fight because we wanted to prove that you do not have to hand something over just because someone richer and more powerful tell you to do so."

The family's international legal battle began in April, when they received an unexpected and irate telephone call from the US lawyers demanding they hand over the domain name and threatening legal action.

The Saville-Smiths refused and rejected the offer of a refund for the cost of the site, then another offer asking them to set their own price for the address.

Mrs Saville-Smith and her husband, Richard, a charity adviser and accountant, had paid £70 for the domain name from the internet registration company Fasthosts, keeping it as a surprise for their son's 11th birthday to coincide with release of the film of the second Narnia book last month.

They then received a 128-page legal document before the case went before the WIPO.

Responding to yesterday's judgment, Mrs Saville-Smith continued: "This decision by a one-man panel, supposed to be impartial, allows a multi-million-dollar company to seize a domain name purchased entirely legitimately by ourselves which has not been used in any way improperly or illegally.

"We provided clear statements and evidence to prove we had not profited, nor sought to, from this domain name – yet these statements and evidence have simply been ignored.

"Our lawyer has presided over 80 World Intellectual Property Organisation panels. It is clear from the judgment that the panel had pre-decided to award the decision to the CS Lewis Company.

"There was absolutely no evidence of a 'bad faith' registration put forward by the CS Lewis Company's lawyer's, which was required by the WIPO rules to find against us.

"Justice has not been served, and instead the interests of corporate power and money have wrongly triumphed. 'Narnia' had great meaning before its huge commercialisation in recent years and this judgment effectively says money, not the truth, is all that matters now regarding CS Lewis's magnificent fictional kingdom – despite the values and spirituality that originally lay behind it."

The Saville-Smiths said they could not afford to continue the legal fight.

Stranger than fiction? How the tale unfolded

30 APRIL: Law firm Baker & McKenzie calls and demands that the Saville-Smiths hand over the domain name.

5 MAY: Mr Saville-Smith writes to firm: "You seek an amicable settlement, but in your first contact you threaten my wife with legal action."

8 MAY: Law firm e-mails: "Please advise whether you would be willing to transfer the domain name to CS Lewis Pte Ltd."

8 MAY: Mr Saville-Smith replies: "I am not infringing their trademark, so I see no reason why I should to accede to your request."

Later that day the law firm contacts the family, saying: "What would you consider a reasonable offer?"

9 MAY: Mr Saville-Smith writes back: "We don't want to sell the domain name, as it is a special present for a ten-year-old boy."

28 MAY: The family receives a copy of a 128-page legal complaint filed with the World Intellectual Property Organisation in Switzerland.

Posted by mikki at 11:42 AM | Permalink

“Rethinking Trademark Fair Use” Now Posted:

My full-length article about the practical problems with trademark fair use (and possible reforms) is now available on SSRN. It will appear in the Iowa Law Review at the end of 2008. A shorter “prequel” was published earlier this year.

This is the abstract of the new paper, entitled Rethinking Trademark Fair Use:

The ever-expanding scope and strength of trademark rights has caused justifiable fears of a threat to free expression. Until now, however, concerned scholars generally focused on perfecting the substance of legal rules that balance free speech against other goals. This effort is misplaced because most cases raising these issues in recent years ended in judicial decisions that favored speech. The real danger arises from the procedural structure of trademark law’s various “fair use” doctrines, which generate excessive ambiguity and prolong litigation before ever reaching such positive outcomes. Resulting administrative costs discourage speakers from using trademarks expressively in the first place, creating a classic chilling effect. This Article is the first to analyze these problems with trademark fair use comprehensively and recommend pragmatic reform to address the problems. Instead of adding more bells and whistles to already complex law, we should craft simpler affirmative defenses that reduce uncertainty and allow for quick adjudication.

I’d welcome any and all comments, either here or off line!

Posted by mikki at 04:04 PM | Permalink

Good News from Three Spam Cases in the U.S.:

They say (whoever "they" are) that good things come in threes, and that certainly seems true for law enforcement against spammers this week. In New York, Adam Vitale was sentenced to 30 months in prison and ordered to pay $183,000 in restitution for a week of spamming AOL back in 2005... In Illinois, an FTC settlement requires Spear Systems and company executives Bruce Parker and Lisa Kimsey to give up $29,000, stop making "false or unsubstantiated claims about health benefits" of their products, and bars them from violating CAN-SPAM ever again... And finally, in Seattle, the Robert Soloway case continues... More...

Posted by mikki at 04:04 PM | Permalink

Legal Technology - 9th Circuit Rules on Text-Message Privacy:


Most employees know that their bosses are usually within their rights snooping on workers' e-mail, but text messaging has been in murkier territory.

A federal appeals court sought to clarify matters in a ruling last month by distinguishing between electronic communication that employers store on their servers, or pay someone to store, and communication that is contracted out to third parties.

Employers must have either a warrant or the employee's permission to see messages that are not stored by the employer or by someone the employer pays for storage, the court ruled in a landmark opinion issued on June 18 in the matter of Quon v. Arch Wireless, et al. (No. 07-55282, DC No. CV-03-00199-SGL).

The ruling, by Judge Kim McLane Wardlaw from the 9th U.S. Circuit Court of Appeals in San Francisco, is being hailed by digital privacy advocates, and could create new administrative hurdles for companies to clear before handing out wireless devices to employees.

Employers may now need to use more concrete language in their privacy policies, and make sure that they explicitly assert access to text-messages as well as e-mail to encompass communications that are not under their physical control. To spare lengthy court battles later, written agreements covering employees' work-issued cell phones, for example, probably should say employers have the right to see all e-mail and text messages that workers send with the devices.

Among other privacy advocates, Jeff Chester, founder and executive director for the Center for Digital Democracy, praised the ruling.

"Mobile privacy is increasingly a political and legal battleground -- it's a very confusing regulatory landscape, there are no clear rules in the crazy quilt of the mobile communications systems," Chester says.

The ruling limits all kinds of entities' access to consumers' communications, he says: "Preserving as much privacy for the mobile consumer, and limiting the ability of government and commercial entities to readily access your mobile information is important, and the court did the right thing here."

Corporate e-mail has typically been stored on a company's own servers or on server space it pays for, which employers control, according to federal law. Text messaging has typically been managed by outside providers.

The lower court had ruled that employers have access to text messages because they are stored by the outside contractors, but the 9th Circuit found that the storage was incidental. Greater privacy protections apply, the court said, because employers are paying only for messaging services.

It is not clear, however, how employers should now manage the relationship with an employee who splits the bill for a work-issued cell phone or other message device, a common arrangement. In that case, the employee might be reluctant to give his or her employer full access to text messages, since some are presumably personal.

"It's going to highlight for businesses the need to think through, 'what kind of information do they need? What kind of access do they need to have? And what kind of documentation do they need to have in place to get that access?'" says Joel Reidenberg, a professor at the Fordham University School of Law and an expert on information privacy law. "A ruling like this is going to force companies to be more nuanced and careful in their data management, and that's a good thing."

Posted by mikki at 11:43 AM | Permalink

How Well Does Software Work as a Service?:


You might be tired of the phrase "think outside the box," but that's what Software as a Service does -- the "box" being your computer. Though many are leery of having their critical software served up over the Internet, Web 2.0 advances are making SaaS more practical, and desirable.

Posted by mikki at 12:19 AM | Permalink