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EFFector - Volume 18, Issue 22 - Trademark Owners Can't Control Your Desktop


EFFector - Volume 18, Issue 22 - Trademark Owners Can't Control Your Desktop

EFFector       Vol. 18, No. 22       July 7, 2005

A Publication of the Electronic Frontier Foundation     ISSN 1062-9424

In the 338th Issue of EFFector:

Trademark Owners Can't Control Your Desktop

Decision in Internet Ads Case Protects Consumers

New York - The Second Circuit Court of Appeals issued a decision last week that promises to prevent trademark owners from asserting control over the computers of consumers who visit the trademark owners' websites. The case, 1-800 Contacts v. WhenU, questioned whether it was a trademark violation for Internet "adware" company WhenU to provide users with software that gives them advertisements related to keywords found in their online searches. The Second Circuit found that the use of a trademark in software used to generate ads is not a "use in commerce" under trademark law.

EFF filed an amicus brief in the case with the assistance of Professor Eric Goldman of Marquette University Law School. In the brief, EFF argued that consumers should not be prohibited by trademark law from installing software that allows them, when typing "1-800-Contacts" into a search engine, to see information (including advertisements) from the company's competitors as well as from the company.

"A trademark owner is not entitled to control your desktop just because you happen to be visiting its website," said Fred von Lohmann, EFF senior staff attorney. "This decision is good news for consumers who want the freedom to install tools that help them customize their web-surfing."

Ruling in 1-800 Contacts v. When U: (PDF)

For the full press release: Sues for Right to Use Trademark to Report on New Drug

EFF Files Suit to Protect Journalist From Legal Intimidation

San Francisco, CA - EFF filed a lawsuit last week against French pharmaceutical giant Sanofi-Aventis Group on behalf of Medical Week News, publishers of the medical news website

The lawsuit comes after Sanofi-Aventis, the world's third largest pharmaceutical company, threatened Medical Week News with legal action based on its use of the word "Acomplia" in its website domain name.

Acomplia is the name of a Sanofi-Aventis drug intended to combat obesity and assist with smoking cessation that has shown promise in clinical trials in the United States and in Europe, and has just been submitted to the US FDA and European regulators for approval. is an independent online newsletter devoted to reporting news about the drug.

In the lawsuit, filed in US District Court in San Francisco, Medical Week News asserts its fair use right to use the word "Acomplia" in publishing independent news about the drug.

"Reporters, critics, and commentators all need to use trademarks in order to discuss and report on trademarked products and services," said Fred von Lohmann, EFF senior staff attorney. "Trademark law has always recognized that as a fair use when books and magazines do it. Publishers should enjoy the same fair use rights on the World Wide Web."

"People find information on the Web by entering the subject that is of interest to them in search engines," said Milton R. Benjamin, Publisher and President of Medical Week News. "People hear the word Acomplia on television and go to the Internet for more information. If we were unable to use the name Acomplia in our website, tens of thousands of people never would find the most comprehensive source of objective news and information about development of this drug."

Mr. Benjamin is a veteran journalist who has served in senior editorial positions at Newsweek and the Washington Post.

The lawsuit asks the court to declare that Medical Week News is entitled to continue to use the word "Acomplia" in the domain name and website.

Complaint: (PDF)

For this release:

WIPO: Trying to Run Reform Into the Ground

Late last year, the World Intellectual Property Organization (WIPO) took the historic step of agreeing to consider the impact of its decisions on developing nations - including assessing the impact of intellectual property law and policy on technological innovation, access to knowledge, and even human health. Discussion of reform was called the "Development Agenda," and WIPO established a series of high-level meetings to make specific reform proposals to the General Assembly this September. EFF has attended each meeting in an effort to shed light on an important but often-ignored organization that influences IP policy all around the world.

The second of three meetings on the Development Agenda concluded last week, and the opponents of reform have made their strategy clear: tie-up the meetings in procedural posturing to forestall substantive debate on the real issues. Even as the nations in the "Group of Friends of Development" tried to discuss unassailable reforms like an ethics code for WIPO, the proceedings kept getting sidetracked by countries that wanted to cut off debate.

The United Kingdom - along with the US, Canada, Australia, Japan, Switzerland, and other wealthy OECD countries known at WIPO as "Group B" - responded to each attempt to debate substantive issues by stating that discussion should take place in another committee: the moribund Permanent Committee for Cooperation for Development Related to Intellectual Property (PCIPD).

The PCIPD includes "Development" in its name, but that's not the whole story. As the Brazilian delegate noted, moving discussion to the PCIPD would run the risk of burying the Development Agenda. It "would effectively be a garbage can for development concerns" because PCIPD is a "less hierarchically significant committee" than the current meeting.

The PCIPD reports to the WIPO Conference - a body that the WIPO General Assembly voted to disband in 2002. Before the first Development Agenda meeting in April, the PCIPD had not met for *over two years.* And it's previously been an advisory-only body focused on addressing technical assistance - only one part of the Group of Friends of Development reform proposals. Even if the PCIPD could be redesigned in the future to handle the Development Agenda and was given the power to implement its recommendations, it would mean more unnecessary procedural hurdles before reforms could even be discussed.

This strategy is particularly odious because it is being raised in a special, plenary-level gathering that was convened and specifically tasked with considering proposals for WIPO reform and providing recommendations to the full General Assembly in September 2005. The mandate of the gathering is so clear that, after six days of meetings with very little substantive debate, it's hard not to question the motivations behind the UK and Group B proposal. Why wouldn't any observer regard this as a cynical ploy to stifle change?

In response to charges that it's "passing the buck," the UK delegation said, "It's more like passing the baton in a relay race. It doesn't matter who has the baton as long as we are moving forward."

But races are run on a track, where progress can be measured and the finish line is obvious. The opponents of the Development Agenda seem intent on running WIPO reform into the ground.

Archive of running notes on the second Development Agenda meeting:

More about the Development Agenda:

A Flag-Waving Salute to Open Digital TV

As Fourth of July fireworks fade, don't forget another cause for celebration this month: our independence from the Broadcast Flag. July 1, 2005, was the date set for the FCC's Broadcast Flag mandate to take effect. But thanks to a court challenge by Public Knowledge, EFF, library associations, and consumer rights groups, the DC Circuit vacated the mandate. It ruled that the FCC couldn't order hardware makers to cripple their digital TV products. Because of that victory, manufacturers like Elgato or pcHDTV can continue to produce open hardware to turn your computer into a digital video recorder, and consumer electronics companies are free to design high-definition television recorders that put you, the viewer, first.

We extend the holiday thanks to the thousands of EFF and Public Knowledge supporters who wrote or called their senators last month when it looked as though Hollywood would slip a Broadcast Flag amendment into an appropriations bill. You told them this wasn't a Flag for freedom, and they listened. Congress hasn't passed a Flag bill, and we know your representatives will have your concerns in mind if the Hollywood lobbyists try again.

A Broadcast Flag rule would harm innovators, forcing them to get government approval to offer new technologies. It would also harm open source developers, whose open software and hardware wouldn't satisfy the rule as "robust" against user modification. And it would harm the public, limiting our ability to choose compelling, interoperable devices to watch and remix television the way we want.

So amid the holiday flag-waving, here's thanks for a Flag that no longer waves.

For this piece online:

You, Your Boss, and Your Blog

Whenever there's talk about blogging horror stories, inevitably the conversation turns to people getting fired for blogging. What kinds of things can your boss fire you for? Aren't there laws to protect you for "whistle-blogging" about the rotten things your company is doing to the environment? If you use your work computer to blog, does your employer have the right to monitor you? What about if you're working from home, using your own laptop?

EFF has just added a new section to our "Legal Guide for Bloggers" that's aimed at helping you sort out these questions. While the guide can't and doesn't substitute for the legal advice you need if you're in trouble, it provides information that will help you understand your rights under the law. "If you don't know your rights, you can't defend them," said EFF Staff Attorney Kurt Opsahl. "We want to arm bloggers with a solid foundation in labor law so they know when an employer steps over the line."

The section was developed with help from Stacey Leyton, a labor lawyer with Altshuler, Berzon, Nussbaum, Rubin & Demain, and is based on US law. The "Legal Guide for Bloggers" is regularly updated with new information, and has been linked to more than 100,000 times since being introduced last month.

Labor law section of EFF's Legal Guide for Bloggers:

More about bloggers' rights:

For the original version of this piece online:

BayFF on Bloggers' Rights, July 19

To kick off EFF's 15th Anniversary celebrations, we're holding a special BayFF exploring the legal issues surrounding blogging. The roundtable discussion will feature EFF Staff Attorney Kurt Opsahl, local celebrity bloggers, and blog tool gurus.

WHAT: BayFF on Bloggers' Rights -

WHEN: 7:00 p.m. to 9:30 p.m., Tuesday, July 19, 2005

WHERE: 111 Minna Gallery - 111 Minna Street San Francisco, CA 94105 Tel: (415) 974-1719

Please RSVP to (415) 436-9333 x129 or


Kurt Opsahl- Moderator

Kurt Opsahl, who leads EFF's bloggers' rights campaign, is one of the attorneys representing online journalists in Apple v. Does, the case in which Apple Computer, Inc., is seeking to unmask the journalists' confidential sources for articles about a future Apple product. Read more about bloggers' rights and Apple v. Does at

Violet Blue - Panelist

Violet Blue is a hardworking sex writer, editor, adult book and video reviewer, and machine artist. By day she works as Assistant Guest Editor at the popular erotic blog Fleshbot. Visit Violet's blog at (warning: not work safe).

danah boyd - Panelist

danah boyd is a Ph.D.researcher at the School of Information Management and Systems at UC Berkeley studying how people negotiate their presentation of self in mediated social contexts to unknown audiences. Most of her work revolves around articulated social networks, blogging, and other social software. She blogs at Zephoria (, (, and Many-to-Many ( Learn more about danah at

Mary Hodder - Panelist

Mary Hodder is an information architect and interaction designer for several web service companies with social media sites. Previously a web products manager at Technorati, Mary works with companies in open source, photo sharing, and blog aggregation. She blogs at Napsterization ( and was an original author at bIPlog, the Berkeley Intellectual Property Weblog (

Jackson West - Panelist

Jackson West brings a fresh voice, wit, and style to SFist, the San Francisco version of the popular New York weblog Gothamist. He serves up regular restaurant, book, film, theater, music, and nightlife reviews and edits SFist for free - and he loves every second of it. Visit Jackson's blog at

This event is free and open to the general public. You must be 21+. Refreshments and birthday cake will be served.

Hang Out with the Geek Gods and Support EFF at DefCon Summit, July 28

Coming to DefCon? Join us at the pre-DefCon Summit, hosted by the Las Vegas DefCon group, dc702. Seven EFF staffers will be there, plus at least 16 other featured guests. And all proceeds from the ticket sales will benefit EFF!

Here are the details:

Date: Thursday, July 28, 2005
Time: 9:00 p.m. - 12:00 a.m.
Ice House
650 S. Main Street
Las Vegas, NV
Tickets: $30 pre-sale, $40 @ door (if available)

Why should you attend? The Summit brings together DefCon & Black Hat speakers, past and present, as well as many of the biggest names in the computer security world. They're coming together in a small, private venue to meet with you! There will be no more the 200 tickets sold, including featured guests.

Check out for more details or to purchase tickets. Hope to see you there!

Running for a Cause

Why not add a little freedom-fighting to your daily run? Running Well donates a full 50 percent of net proceeds to EFF when you purchase running shoes or apparel from their website and select EFF as the beneficiary. Check it out and pass the word along!
(Running Well)


miniLinks features noteworthy news items from around the Internet.

* miniLinks miniLinks features noteworthy news items from around the Internet.

Martha Stewart: Freedom To Tinker
MS experiments with circumventing the protections on her ankle monitor: "You can figure out how to get it off," she is quoted as saying. "It's on the Internet. I looked it up":

Forget Patenting Software - Someone Should Patent Indomitability
Kudos to the FFII, the FSF, and all the other organizations that succeeded against the odds in hitting the brakes on US-style software patents in Europe:

Broadcasting Treaty Deliberations Move to Secret Base Within Hollowed-Out Volcano
Broadcasters meet outside the US, outside formal WIPO, to discuss future treaty issues:
(Importance Of...)

Dear German ISPs, Please Break the Internet, Thx, Copyright Holders
German ISPs are being asked to poison their DNS caches to redirect Germans from potentially infringing websites:
(CoCo Blog)

Would You Like Some Music Whilst Scrabbling to Discover if Your Software is Legal?
RealNetworks begins an "aggressive search-term" campaign to win over those searching for Grokster - perhaps unaware that the Supremes frowned on Grokster's similiar courting of Napster users:
(Press release;

The Other Kind of File Sharing
Local law officers will soon have access to the FBI database, with the databases for the Drug Enforcement Administration and the Bureau of Alcohol, Tobacco, Firearms, and Explosives to come:

Boy, That Sounds Awfully Familiar
The EU Commission has proposed simplifying licensing for online music, with Commission official Tilman Lueder arguing that "piracy is not the issue" when it comes to flagging digital music sales:
(MarketWatch) The proposal itself:

Don't Stop Grokkin'
Mike Godwin's must-read take on the Grokster decision:

Teens Bypass School Filters; Threatened with Felony Charges
What's next - arresting kids who sneak into the adult section of the library for trespassing?
(Kurztown Area Patriot)

How Did "Mad Hot Ballroom" Survive the Copyright Cartel?
How documentary filmmakers have to edit 'round reality to avoid liability:

For the People's Eyes Only
The Center for Democracy and Technology has a cool project that makes the Congressional Research Service reports easily available to the people who paid for them - you:

Proposal for a Device in Which Money Is Shoveled into Point A, and Incinerated at Point B (Fig. 1)
A GAO report points out the the patent office has spent over a billion dollars on their IT systems, with little to show for it:
(Promote the Progress)

Gilbert, Sullivan, and ID Cards
A fine musical "tribute" to the plans to introduce national ID cards in the UK:

Trailer for "Alternative Freedom" Documentary: "In a WORLD without LICENSES..."
Richard Stallman, Larry Lessig, DJ Dangermouse, and EFF's own Jason Schultz fight IP maximalists...robot renegade IP maximalists:

Enter the Consistency Circumvention Device
Jupiter Research consultant advocates DRM, then, when it annoys him, bypasses it:
(Importance Of...)


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