The Website and Blog of Joshua R. Kagan

Biting Back at the Monster

I love reading about things like this.

Monster Cable Products Inc., a maker of audio/visual cables, recently sent a cease and desist letter to a much smaller company called Blue Jeans Cables.  Monster claims that Blue Jeans’ products infringe several of Monster’s design patents.

I’m not going to bother with legal commentary or any further explanation on this one because, as it turns out, the president of Blue Jeans happens to be an attorney with over two decades of litigation experience.  Audioholics reports that he responded with a rather pointed letter.  Here are the last few paragraphs of it:

            I have seen Monster Cable take untenable IP positions in various different scenarios in the past, and am generally familiar with what seems to be Monster Cable’s modus operandi in these matters.  I therefore think that it is important that, before closing, I make you aware of a few points.

            After graduating from the University of Pennsylvania Law School in 1985, I spent nineteen years in litigation practice, with a focus upon federal litigation involving large damages and complex issues.  My first seven years were spent primarily on the defense side, where I developed an intense frustration with insurance carriers who would settle meritless claims for nuisance value when the better long-term view would have been to fight against vexatious litigation as a matter of principle.  In plaintiffs’ practice, likewise, I was always a strong advocate of standing upon principle and taking cases all the way to judgment, even when substantial offers of settlement were on the table.  I am “uncompromising” in the most literal sense of the word.  If Monster Cable proceeds with litigation against me I will pursue the same merits-driven approach; I do not compromise with bullies and I would rather spend fifty thousand dollars on defense than give you a dollar of unmerited settlement funds.  As for signing a licensing agreement for intellectual property which I have not infringed: that will not happen, under any circumstances, whether it makes economic sense or not.

            I say this because my observation has been that Monster Cable typically operates in a hit-and-run fashion.  Your client threatens litigation, expecting the victim to panic and plead for mercy; and what follows is a quickie negotiation session that ends with payment and a licensing agreement.  Your client then uses this collection of licensing agreements to convince others under similar threat to accede to its demands.  Let me be clear about this: there are only two ways for you to get anything out of me.  You will either need to (1) convince me that I have infringed, or (2) obtain a final judgment to that effect from a court of competent jurisdiction.  It may be that my inability to see the pragmatic value of settling frivolous claims is a deep character flaw, and I am sure a few of the insurance carriers for whom I have done work have seen it that way; but it is how I have done business for the last quarter-century and you are not going to change my mind.  If you sue me, the case will go to judgment, and I will hold the court’s attention upon the merits of your claims–or, to speak more precisely, the absence of merit from your claims–from start to finish.  Not only am I unintimidated by litigation; I sometimes rather miss it.

          I will also point out to you that if you do choose to undertake litigation, your “upside” is tremendously limited.  If you somehow managed, despite the formidable obstacles in your way, to obtain a finding of infringement, and if you were successful at recovering a large licensing fee–say, ten cents per connector–as the measure of damages, your recovery to date would not reach four figures.  On the downside, I will advance defenses which, if successful, will substantially undermine your future efforts to use these patents and marks to threaten others with these types of actions; as you are of course aware, it is easier today for your competitors to use collateral estoppel offensively than it ever has been before.  Also, there is little doubt that making baseless claims of trade dress infringement and design patent infringement is an improper business tactic, which can give rise to unfair competition claims, and for a company of Monster’s size, potential antitrust violations with treble damages and attorneys’ fees.

            I look forward to receiving the information requested and will review it promptly as soon as it is received.

                                                            Sincerely,

                                                            Kurt Denke

Wonderful.  Absolutely wonderful.

Briefly This Week

Here are some of the issues I’m following this week:

• A company named Psystar made headlines yesterday by offering to sell low-cost computers that are pre-loaded with the retail version of Mac OS X 10.5 “Leopard,” the next-generation operating system that Apple includes on new Macs and sells at retail as an upgrade for other Macs.  The problem is that Leopard’s EULA specifically forbids installing it on non-Apple hardware.  Now Psystar is threatening to challenge the enforceability of Leopard’s EULA if Apple mounts a legal action.  Probably a bad idea.
• Zango v. Kapersky: A software vendor is upset with the developer of an anti-spyware app that classified its product as malware.
• Elektra v. Barker: More on whether “making available” a copyrighted file constitutes infringement.

CSS3 and Secondary Liability for Unauthorized Distribution of Fonts

The Internet has created interesting copyright law questions for many different kinds of media, from the photographs in Kelly v. Arriba Soft to the audio recordings in A&M Records v. Napster.  Typically these cases turn on whether the defendant–typically the trailblazing operator of some new Internet-based service–has distributed the plaintiff’s copyrighted material without authorization.

As Kelly illustrated, web pages are absolutely fair game for copyright infringement actions when they contain infringing materials.  Take a closer look at this very post as it appears in your computer’s web browser.  There are a few small graphics here and there such as the small “Linkedin” icon to the right, but the vast majority of this page is text.  As the author of the substance of this text–the “words” of it–I own the copyright to it and, by publishing it on this blog, I’m granting you a license to download, read, and use it under certain license terms that are outlined in the Creative Commons License that I’ve indicated at the bottom of the page.  But how about the “design” of the words?  I don’t own the copyright to the typography or font.  I certainly don’t have a right to distribute the font, and I’m certainly not authorized to convey any rights to you in that regard.  Luckily, thanks to the basic design of HTML and the Web, this has traditionally never been a problem.  No web page actually contains or distributes a copy of a font.  Web pages instead rely on tags written into the HTML which simply tell the receiving party’s computer’s web browser (in this case your web browser) which font or fonts to use for rendering the web page’s text.

So, for example, if I want the text of this post to display in the font called “Helvetica,” I insert a tag that tells your web browser to display that text in “Helvetica” and rely on your computer already having that font and using it to display the text.  If for some reason your computer does not have that font, your web browser will probably substitute the typeface with some other one, perhaps “Times New Roman.”  There’s no potential for copyright infringement here because the web standards in place simply don’t provide a mechanism for the distribution of a font; we’re merely using ones that you (the viewer) already have.

As you can imagine, this results in a frustrating situation for many web designers.  The inability to “push” fonts to visitors’ computers means that web designers are typically limited to a very small selection of “web-safe fonts,” or typefaces that are likely to be installed by default on wide variety of computers and operating systems.  Apple and others in the software business have recently been promoting a new standard for the web called CSS Level 3 (or “CSS3″) which provides, among many other things, a way for web designers to easily embed a copy of a font into a web page.  In theory, this would mean that a web designer could use any font he likes in his designs instead of being limited to only a handful of “web-safe” fonts.  The latest version of Safari, Apple’s freeware web browser application for Windows and Mac OS X, is among the first to support CSS3 and Apple has begun promoting this.  Specifically, the Safari website contains the following text as of this writing:

With CSS3 web fonts in Safari 3.1, web designers can go beyond web-safe fonts and use any font they want to create stunning new websites using standards-based technology. Safari automatically recognizes websites that use custom fonts and downloads them as they’re needed.

Typography designers are understandably disturbed by this sort of marketing because it could give some web designers the mistaken impression that it’s permissible to distribute copies of a font without authorization from the owner of the copyright in that font.  This sort of marketing language bears a scary resemblance to the U.S. Supreme Court’s holding in MGM v. Grokster, in which the Court unanimously declared that one who “actively induces” copyright infringement is secondarily liable for that infringement.  I don’t think it would be a stretch to call Apple’s “use any font they want to create stunning new websites” text an “active inducement” of that infringing activity.

Of course, there are obvious differences between the Grokster application and Safari.  Grokster was designed specifically to attract former users of Napster’s peer-to-peer network following that service’s annihilation, for the same purpose as Napster.  The Safari application is merely a cutting-edge web browser.  Indeed, Safari itself doesn’t provide for file distribution at all; it only provides a way to download information that has been posted.  There’s also a weak argument that Apple’s Safari website is aimed at end-users (communicating what they can expect from the application) and not web designers (telling them what they should do).  But, for the purposes of secondary liability, none of this matters.  At the end of the day, Apple’s Safari website is actively telling visitors that web designers can distribute any fonts they want for users to download through CSS3, and this sort of marketing language is dangerous.  There’s nothing wrong with offering CSS3 compatibility and advertising that fact, but in a post-Grokster world, Apple and other software companies with cutting-edge technology need to be more careful about publishing information that seems to promote use without regard to infringement.

Disclaimer: This weblog is an informational resource only. It is not designed to offer legal advice.

Update: I remembered this morning that PDFs can also include copies of the fonts used therein, depending on the settings of the software used to make them.  Some PDF creation software, like the one built into Mac OS X, seems to embed font files for every font used in a document.  Unless the PDF format provides some way to prevent end-users from accessing and using embedded fonts, this poses the same question as CSS3.

Briefly This Week

Here’s a summary of the stories I’ve been following this week:

• Elektra v. Barker and London-Sire v. Doe:  Can merely “making available” a file on a P2P network constitute copyright infringement, or does infringement require that a plaintiff prove that the file was actually downloaded by a third party?  Maybe not.  Coincidentally, I’m currently working on a seminar paper on this very topic.
• Fair Housing Council of San Fernando Valley v. Roommates.com, LLC.:  Roommates.com was denied § 230 immunity by the Court of Appeals for the Ninth Circuit.  Eric Goldman comments on his blog.
  
• Perfect 10 v. Visa:  This is a secondary liability suit in which a copyright owner unsuccessfully sought damages from a group of credit card companies that process transactions for infringers overseas.  On appeal, the plaintiff has now been joined with an amicus brief filed by the MPAA, RIAA, and others, as well as another amicus brief filed by the an organization that polices with counterfeit apparel and sneakers.  I’ll comment on this sometime soon once I’ve had an opportunity to read the briefs.
• A class-action was settled by Apple last week after some consumers complained that the flat panel displays on their Apple notebook computers don’t display as many colors as they should, leading to inferior image quality.  This week, an identical suit was filed complaining that Apple’s “iMac” line of all-in-one desktop computers have the same problem.  Apple might settle again simply to avoid negative press, but the truth here is that all flat panel displays from all manufacturers have this issue.  No flat panel display can mimic every color that the human eye can see, so they all fake it using a technique called dithering.