@eLaw.com.hk by yip tse & tang, solicitors + notaries 葉謝鄧律師行

Mareva Injunctions, Anton Piller Order and Committal to Prison

Injunctions have to be applied for in the High Court. Injunctions are common in enforcing intellectual property rights such as copyrights, and trade marks infringements. In many cases, the Court requires the Plaintiff to undertake to the court that he will pay the Defendant's costs and damages if the case turns out that the Plaintiff did not have a good reason to apply or he eventually fail in the proceedings. Therefore, great care has to be taken when considering whether such kind of application should be made.

Injunctions may contained a "Penal Notice". A penal notice serves the purpose of warning the Defendant that he has to observe and comply with the order of injunction and that failure to do so can amount to contempt of the Court and possibly result in imprisonment.

Meta tags

Meta tags are words embedded in the HTML files of a web-page. It is not visible on a web page. It becomes visible on clicking the 'view source' of the program menu of Netcape, the browser. It is likewise in the case of Microsoft's Internet Explorer,. Meta tags contain data by way of keywords which enable search engines to "locate" the documents on the Internet through certain search engines. Use of appropriate keywords would enable easy search and hence location of a web-site. Some keywords are more famous such as MP3, music, sex. The most often quoted case is decided in the US. It is Playboy Enterprise Inc. v Calvin Designer Label, involving the Defendant's use of the word 'playboy' as keyword in the meta-tag. It was held by the Court that it amounted to an infringement of Playboy's trade mark and injunction was therefore granted. Hong Kong does not have any case directly related to the use of meta tags. It is not so clear as to what the Court's attitude would be if similar case happens in Hong Kong.

The following is an example:

HK Finance.com v. Prosticks.com

This is the first case commenced in Hong Kong court and in respect of hyperlinking of web-sites operated in Hong Kong.

The parties are Hong Kong-based financial news and information web-sites. The Plaintiff filed the claim in the Court of First Instance of High Court in Hong Kong on 30th May, 2000.

HK Finance.com alleged that Prosticks.com placed hyperlinks on the website hosted at the URL of www.prosticks.com. The links on click allowed visitors to bypass HK Finance.com's front page. As the front page consisted of advertisements, visitors got into the deep-linked page without viewing the advertisements. HK Finance.com relies on its web-site statement as a cause of action. The statement stated that no material was to be copied and included without authorization. It was claimed by HK Finance.com that such act amounted to copyright infringement.

Washington Post v. TotalNEWS, Inc.

This is a US case.

Washington Post is a prominent news publishers in the United States. It alleged that its web pages were presented in "frames on Defendant's page. Washington Post claimed that that TotalNEWS's framing of the news was "the Internet equivalent of pirating copyrighted material."

The litigation was later settled out-of-court on 5th June 1997. It was agreed that TotalNEWS may continue to link to the news organizations' sites using text-only links and framing in the manner as in the past is not allowed.

Ticketmaster v. Tickets.com March 2000

This is a US case.

Tickets.com is a leading one-stop online provider of entertainment, sports and travel tickets, event information and related products and services. The company sells tickets through the Internet, retail outlets, call centers and interactive voice response systems. At www.tickets.com, consumers can obtain information on thousands of events and entertainment organizations, purchase tickets and shop for related products and services. Tickets.com's automated ticketing solutions are used by over 4,100 entertainment organizations such as leading performing arts centers, professional sports organizations and various stadiums and arenas in the U.S., Canada, Europe, Australia and Latin America.

Tickets.com has provided hyperlinks to Ticketmaster's web pages at Ticketmaster.com for tickets not available at Tickets.com. .

On March 27, 2000 federal Judge Harry L. Hupp for the Central District of California ruled in favor of Tickets.com in the case of Ticketmaster Corp. v. Tickets.com (99-7654). In that case, Ticketmaster alleged that Tickets.com committed copyright infringement against Ticketmaster by the use of hyperlink from tickets.com to ticketmaster.com. Apart from the copyright allegation, there was also other causes of actions pleaded by Ticketmaster.

In his ruling, Hupp concluded "hypertext linking does not itself involve a violation of the Copyright Act since no copying is involved."

Hupp described the process of hyperlinking as follows: "The customer is automatically transferred to the particular genuine Web page of the original author. There is no deception in what is happening. This is analogous to using a library's card index to get reference to particular items, albeit faster and more efficiently." Hyperlinking therefore does not involve the reproduction, distribution or preparation of copies or derivative works. According to Hupp, it did not constitute a "display [of] the copyrighted work publicly?" as the web page called up by the user is the original web page created by the author.

Ticketmaster nevertheless succeeded the claim relying on the facts of 'deep linking'. Deeplinking was ruled to be an act of copyright infringement, unfair competition and false advertising made by Ticket.com.

Comments

This case has good reference value for Hong Kong. Some have argued that simple hyperlink infringes the copyright of the linked web-sites. Hong Kong's copyright law has similarly treated 'copying' as being one of the restricted acts. With the ruling that hyperlinking does not involve copying, it is rather safe to suggest that hyperlink does not infringe the restricted act of copying.

However, it remains untested whether hyperlink infringes other restricted act. The most obvious restricted act is 'making available copies to the public.' Under the Copyright Ordinance, such has included making available of copyright works by wire or wireless means on the Internet. It is arguable that hyperlinking is an act as such.

Ticketmaster v. Microsoft [1997]

This is a US case.

In May 1997 Tickmarter took legal action against Microsoft Corp., accusing it unauthorized use of Ticketmaster's name and logo. The companies had been in negotiations over a link from Microsoft's "Sidewalk" Web sites for different cities to Ticketmaster's own Web site. After the negotiations failed, Ticketmaster contends, Microsoft nonetheless included the link in its site. In 1997 Ticketmaster Group Inc. filed suit against Microsoft for federal trademark infringement and unfair competition.

Microsoft operates a Web site called Seattle Sidewalk which functions as a guide to recreational and cultural activities in the Seattle metropolitan area. Seattle Sidewalk provided many links to related Web sites including a link to Ticketmaster, which operates a popular ticket selling Web site. That link, however, bypassed the Ticketmaster home page and went directly to the respective pages for purchases to events listed in the Seattle Sidewalk page. For instance, a listing on the Seattle Sidewalk page for the Seattle Symphony would include a direct link to a Ticketmaster sub-page that would allow users to purchase their symphony tickets.

This is a prime example of "deep linking," and Ticketmaster raised a number of objections to this practice. These are Ticketmaster's complaints:

· What Microsoft has done has the effect of by bypassing their home page Seattle Sidewalk users who would then not be able to be exposed to the extensive advertising and announcements which were posted there. This diminished the value of that advertising and ultimately the rates that could be charged to future advertisers.

· Microsoft was able to generate advertising revenues on the basis of this link because Microsoft posted a banner advertisement on the same page it displayed the Ticketmaster name and link. And, according to Wagner (1997) Ticketmaster alleged that the links were done in such a way that they "presented information incorrectly and out of context.”

The case has raised the fundamental problem with deep linking which circumvents advertising and other identifying or promotional features on the home page. Deep linking not only reduces the value of the target site's advertising but deprives that Web site of its proper exposure and recognition.

In defence, Microsoft argued, "Ticketmaster breached an unwritten Internet code in which any Web site operator has the right to link to anyone else's site" (Tedeschi, 1999). Microsoft also argued that it had a First Amendment right to publish this public information.

Ticketmaster reached an out of court settlement with Microsoft in February 1999. The terms of the settlement were not disclosed.

Shetland Times Oct 1996

This is a judgment decided by the Court in Scotland. This case involves facts of deeplinking but the determination is not based on deeplinking. Rather it is based on copyright infringement.

The defendant, Shetland News is a news web-site on the Internet. The Shetland Times newspaper operated the Shetland Times Online news web-sites with headlines. Shetland Times alleged that Shetland News has linked to the Shetland Times Web site and displayed its headlines without any attribution.The Shetland News used the headlines of Shetland Times as the text of the hypertext links. The headlines of the hypertext links on the defendant's web-site is an exact copying of the headlines found at the Plaintiff's web-site.

When clicking on the Defendant's hyperlink, it will directly lead the user to the news content on the Plaintiff's web-site. Such leading has therefore bypassed the Shetland Times front page and other pages in between which consist of advertisement of Plaintiff's commercial advertisers.

In October 1996 Scotland's Court of Session ordered an injunctiona against the Defendant and commented by saying that it was, "finding it plausible that a headline is a literary work and that the News's practice of incorporating the Times's headlines verbatim in its link lines violated the latter's copyright" (Kaplan, 1997). The Scotish Court did not rule on the matter of deep linking.

After the Court's ruling the Shetland News terminated its links to the Shetland Times Web page.Shetland News like many other web-site owners or webmasters, may be of the view that copying the headlines and putting on them hyperlinks are nothing wrong. Such linking in fact has the advantage of bringing more traffic and hence value to the Plaintiff's web-site.

Hyperlinking and Deeplinking

The world wide web has enable various web-sites, albeit owned individually by their owners, to virtually operate like one 'book'. The use of hyperlinks on web pages practically results in zero differentiation among contents of each of the web-sites. Any web-sites and in fact any pages on the Internet can be easily hyperlinked and such hyperlinking can be done without any knowledge or authorisation of the web-site being hyperlinked.

Web-site operators have the temptation of linking the inner content of certain web-sites interesting to them, thereby enriching their contents but at the same time, bypassing the front page and less inner pages of the web-sites. Such doing can or may offend the owner of the web-site being hyperlinked as integrity of the web-site is 'damaged', pages are bypassed thereby reducing the number of banner exposure.

A prudent web-site owner should adopt the following rule of thumbs when considering linking:

1. design the web-site with simple hyperlink only. Hyperlink should lead the user to the home page (first page) of the linked web-site.

2. use of trade mark or logo in the hyperlinks should be authorised by the trade mark and logo owner

3. do not deeplink other web-sites without prior consent or authorisation

4. do not link other web-sites by 'framing' unless with prior consent or authorisation.

Secure Digital Music Initiative (SDMI)

In 1999 the Recording Industry Association of America (RIAA), a New York not-for-profit corporation with a place of business in Washington D.C. 20036, corralled technology companies to form the Secure Digital Music Initiative (SDMI). The group set out to establish a system through which the public's use of digital audio files could be strictly governed. RIAA is . It represents entities which manufacture and distribute sound recordings, including the five major labels and many of their subsidiary labels.

SDMI quickly gained its reputation as a place where RIAA members could manipulate technology manufacturers.

Digital audio watermarks are frequency patterns imbedded within a recording that carry instructions. SDMI compliant files utilize techniques such as digital watermarking to dictate "usage rules" to SDMI compliant devices. For instance, dictating SDMI devices enforce the rules placed on a song by the record company about the number of copies that may be made of a file.
Security professionals have found the audio watermarks utilized by SDMI to be relatively easy to defeat.

The DMCA outlaws bypassing "digital straight jackets" put in place by the Copyright holder. It also outlaws telling others how to bypass those straight jackets. The computer code that describes how to circumvent the technology also teaches how the technology works. The RIAA, SDMI and Verance do not want security professionals published the code because it describes how the technology works and they have all made threats against security professional like Professor Felten of Princeton University, his research team and the conferences that publish his work that they are 'providing a circumvention device in violation of the DMCA'.

Professor Felten is one of the plaintiffs in EFF's challenge of the DMCA. The noted scientist is the leader of a research team that participated in the Secure Digital Music Initiative's (SDMI) "Public Challenge" (also know as "Hack SDMI") and successfully defeated the technology. His team authored, "Reading Between the Lines: Lessons from the SDMI Challenge," explaining their research findings that was accepted for publication at the 4th International Information Hiding Workshop Conference in April 2001. Just prior to the conference, the Princeton Professor received a letter from Matt Oppenheim from the Recording Industry Association of America (RIAA) and the Secure Digital Music Initiative (SDMI) that threatened a lawsuit against Professor Felten's team and their universities and the workshop organizers if the paper was published.

The Electronic Frontier Foundation asked the court to declare that Felten and the rest of his research team have the right to publish their paper and discuss their findings with others. The argument is based on the right of free of expression under the First Amendment of the US Constitution and fair use under the copyright laws.

June 2001

Pavlovich v. DVDCCA (the CA DVD case)

According to the Electronic Frontier Foundation, the DVD Copy Control Association (DVD-CCA), a newly formed mouthpiece of the MPAA, is suing dozens of individuals who put DeCSS on their Web sites (in various places around the country and around the world), alleging that plaintiffs misappropriated trade secrets when they reverse engineered DVD technology. On December 13, 2000 the California Supreme Court granted defendant Matthew Pavlovich's petition for review based on lack of personal jurisdiction over him, sending the matter back to the trial judge to show why the non-California resident should remain in the case, marking a victory for EFF.

At issue: Same First Amendment implications as the NY case; also whether the pretense of "trade secrets" will enable companies to punish those engaged in lawful reverse engineering.