Digital Discourse / Archives for Scott Bain

SIIA Calls for Increased IP Protections from ICANN as New gTLD Applications are Announced

June 13, 2012 By

SIIA is reviewing 1,930 new generic top level domain (gTLD) applications—unveiled today by the Internet Corporation for Assigned Names and Numbers (ICANN )—in order to identify potential intellectual property threats as part of the public comment and objection process. SIIA believes that ICANN must do more to ensure that proper safeguards are in place to protect intellectual property rights before any new gTLDs are approved and go live on the Internet.

SIIA supports, respects and has participated in the ICANN multi-stakeholder process, and a number of our members are new gTLD applicants themselves. Now that the scope and content of applications are known, ICANN will have another opportunity to address intellectual property concerns, and must do so. The rights protection mechanisms that ICANN has required gTLD applicants to implement are inadequate. While some gTLD applicants are voluntarily providing more protection than ICANN requires, this is not the case with all applicants.

SIIA and other concerned groups have promulgated “Enhanced Safeguards for New gTLDS Targeting Creative Sectors”—or gTLDs that pose a particular threat to become havens for infringement and related criminal and illegal activity. SIIA will evaluate and publicly comment on how applications stack up against these standards—especially whether the registry (the gTLD applicant) has committed to offer publicly accessible, authenticated, verified Whois data for all second-level domain names within the registry, and to implement standards that ensure prompt investigation and resolution of rights holder complaints.

The ICANN gTLD program, as currently formulated, represents a significant challenge to trademark and copyright owners,” continued Bain. “ICANN’s program may open up new opportunities, but it also presents a whole new frontier of potential—and likely—abuse by those seeking to profit from the name, reputation, and content of others. Intellectual property owners will need to familiarize themselves quickly with the Rights Protection Mechanisms in the gTLD Applicant Guidebook, and expend even more resources and time to protect themselves against cybersquatters and infringers.

Scott BainScott Bain is Chief Litigation Counsel & Director, Internet Anti-piracy at SIIA.

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Filed Under: Anti-Piracy, Policy, Policy - Intellectual Property Tagged With: , ,

SIIA Shuts Down Notorious Software Pirate, Gaining Large Financial Sum and Cooperation with Further Investigations

April 24, 2012 By

SIIA announced today that it has settled a copyright infringement lawsuit against a major California software pirate. SIIA’s efforts have led to the shutdown of the company’s illegal operations, a five-figure settlement amount, and cooperation from the business to pursue those who supplied the illegal software.

On behalf of SIIA member company Adobe Systems, Inc., SIIA investigated, and filed a lawsuit against, Aldo Secaida of Covina, California, for engaging in copyright and trademark infringement by manufacturing, selling and/or distributing unauthorized copies of Adobe software. Secaida sold the pirated software via the website www.brilliantbuys.co.uk. SIIA filed the lawsuit in U.S. District Court for the North District of California.

The settlement not only eliminates a major illegal online software operation, but it also provides us with information to go after others who are ripping off businesses and consumers. This is an important win for companies such as Adobe that employ thousands of people and contribute millions of dollars to our economy. When American software products are illegally copied and sold, consumers are hurt, workers are hurt and our economy is hurt. SIIA runs the software industry’s most comprehensive anti-piracy campaign to obtain justice for our members and to protect consumers and legitimate businesses.

In addition to paying the five-figure settlement amount, Secaida is now cooperating with SIIA to identify the upstream sources of the illegal products he sold. Secaida told SIIA:

“I thought my online scheme of peddling questionable software was a good way to make some easy money, but it has caused me far more harm than good. Most of the software I acquired was illegal to begin with, and reselling it was just as illegal. I completely regret my actions and look forward to helping SIIA shut down my suppliers.”

During the last three years, SIIA has filed more than 100 lawsuits in the U.S. against illegal eBay sellers as well as sellers on other websites dealing in counterfeit, OEM, academic, region-specific and other illegal software and publications. Defendants have paid millions of dollars in damages, and, in some cases, criminal charges were pursued and defendants sentenced to jail time.

Sources in the U.S. and in Europe can contact SIIA about a company, Web site or online auction seller’s suspicious business practices in three ways:

• E-mail: piracy@siia.net
• Telephone: +1-800-388-7478
• Online: www.siia.net/piracy/report

For more information about the SIIA Internet Anti-Piracy Division, or to read SIIA’s software buying guides, visit the Software Anti-Piracy page.

Scott BainScott Bain is Chief Litigation Counsel & Director, Internet Anti-piracy at SIIA.

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Filed Under: Anti-Piracy Tagged With: ,

ICANN Extends gTLD Application Deadline; All Eyes Are on April 30 Publishing Date

April 12, 2012 By

ICANN extended its deadline for new generic top level domain (gTLD) applications from today until next Friday, but as POLITICO points out in today’s Morning Tech, everyone is waiting for April 30. That’s the date ICANN intends to publish the gTLDs applied for.

There are indications that several thousand applications have been submitted, and SIIA will be reviewing and analyzing the list, and notifying its members of potential applications they may want to object to.

Morning Tech quoted SIIA in its write-up about the new system and how it can change the foundations of the Internet:

‘We’re going to go from a world of .com, .org and.gov to a situation where we’ll have hundreds or thousands of new strings,’ said Scott Bain. ‘It will force a change in how people think of domain names and how they get to sites. Search engines will be more important for finding the right domain – is it nike.com or nike.sports.”

Among other actions, SIIA will be also providing advice to the U.S. government (NTIA) to assist it in the process by which ICANN’s Governmental Advisory Committee will issue “early warnings” to certain applicants.

Scott BainScott Bain is Chief Litigation Counsel & Director, Internet Anti-piracy at SIIA.

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Filed Under: Policy, Policy - Intellectual Property Tagged With: ,

Senate passes Smith-Leahy America Invents Act without amendment

September 9, 2011 By

Last night, by an 89-9 vote the Senate passed H.R. 1249, the Smith-Leahy America Invents Act, setting the stage for President Obama to sign the bill into law and implement the first comprehensive reform to the Patent Act in more than 50 years. SIIA and its member companies have worked diligently toward this goal for more than 6 years, and passage of the bill represents a significant victory for our industries. We believe that this legislation will improve patent quality and reduce (though certainly not eliminate) wasteful litigation over bad patents.

The bill can be found here. SIIA issued a press release last night applauding passage of the bill.

In passing the House version of the bill as is, the Senate rejected amendments by (1) Sen. Sessions, which would have removed a special interest provision restoring Medco’s patent on the Angiomax drug, which had lapsed due to alleged malpractice by its law firm; (2) Sen. Cantwell, which would have eliminated the business method patent “transitional program,” and (3) Sen. Coburn, which would have restored the Senate’s language prohibiting fee diversion, in lieu of the House’s version which creates a special fund for the U.S. Patent & Trademark Office (USPTO) which is still subject to the Congressional budget approval process.

While a detailed summary is beyond the scope of this communication, some of the key provisions of the Act include:

* Harmonization of the U.S. system with most of the rest of the world, by granting priority to the “first inventor to file” rather than “first to invent,” which often triggered complicated and expensive interference proceedings, and sometimes permitted patent owners to overcome would-be prior art in litigation. The new provision will, for example, make it more difficult in some cases for inventors to overcome the novelty and nonobviousness requirements, because there will be no more “swearing back” to establish an earlier date of invention (i.e., to get around prior art dated before the patent application filing date).

* Along with “first inventor to file,” establishing a prior user defense (with some exceptions for universities).

* As mentioned above, ending of the diversion of USPTO fees by Congress for other purposes. The USPTO still must submit an annual budget to be approved by Congress, but this provision seemingly grants the USPTO latitude to establish a larger budget based on the fees it collects. The eventual outcome hopefully will be shorter patent pendency times, and higher quality patents (e.g., due to better trained and perhaps better paid examiners, better resources, and more attention to questionable applications).

* Permitting third party submission of prior art during patent examination.

* Deeming “tax strategies” within the prior art and thus unpatentable. This provision has a key exception, however, covering a wide range of computer programs on tax and financial management inventions.

* Establishing a post-grant review process of any patent by the USPTO that can be triggered by third parties.

* Establishing a supplemental examination process for the benefit of patent owners, to “correct” possible inequitable conduct.

* Heightening the requirements for joinder of patent infringement defendants.

* Amending the false marking provision to require a showing of “competitive injury,” which is intended curtail the flood of false marking claims being filed by private parties that are not competitors of the patent owner (and often not in any related business) simply seeking a profit from the false marking statute.

* Eliminating the best mode defense in litigation.

* Establishing an eight-year “transitional program” for post-grant review of certain business method patents (including a provision that increases likelihood of a stay of litigation involving such patents).

The effective dates of these provisions vary. Some will be effective on the date of enactment. Others will be effective one year later, and still others (namely, some of the USPTO procedures) will be phased in.

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Filed Under: Anti-Piracy, Government, Patent, Policy Tagged With: ,

Tomorrow’s gTLD hearing will be far-reaching

May 3, 2011 By

Tomorrow morning, a House subcommittee will tackle an issue that has been under the radar for most Internet users and rights holders, but is of critical importance.  ICANN, the governing body of the Internet domain name space and addressing structure, has announced plans to introduce hundreds or even thousands of new “generic top level domains” (gTLDs) to the Internet. 

Virtually any string of letters and numbers is fair game, and anyone can apply (assuming you have the six-figure application fee and the wherewithal to run a Registry).  The gTLDs that are approved will then be open for second-level registrations, and brand owners and others will be faced with a Hobson’s choice: spend millions of dollars in new “defensive registrations” to protect their marks, or sit back and risk an exponential expansion of the cybersquatting and online infringement problems.  Members of the House subcommittee will question an ICANN witness, rights owners and others about this proposed program, and related Internet governance issues.

While the U.S. government and Congress always has had an oversight interest in ICANN (the U.S. government, after all, created ICANN), the impetus for this hearing seems to have been ICANN’s contentious debates with its “Government Advisory Committee” and its apparent rejection of a number of GAC “recommendations” regarding the new gTLD roll-out.  The GAC consists of representatives from the governments of the world, and while their advice is not binding on the ICANN Board, it is (or was) widely believed that ICANN rejects GAC advice at its peril – after all, without support of the governments, ICANN’s authority to govern the domain name space, and indeed its very existence, seem in doubt. 

Among the advice given by the GAC is that the new gTLD roll-out should include greater rights-protection mechanisms, should be more narrowly tailored to fit the actual needs of the Internet community, and should give communities and governments the opportunity to nix strings that are (in essence) offensive, contrary to public interest, etc. — in essence, any controversial string.  While the various versions of ICANN’s Draft Applicant Guidebook have taken into account some suggestions of the GAC and rights-holders, the core of the gTLD program has remained the same.  ICANN released its latest – and it says, last — draft of the Guidebook in April, and plans to finalize the roll-out procedure during its June meeting in Singapore. 

Once the process opens up for applications, ICANN expects to process up to 500 gTLD applications at a time. There is a lot of speculation about how this would affect the Internet, but one thing is for sure.  If rights holders have a hard time enforcing their copyright and trademark rights online right now, the problem will be exponentially worse in a world with hundreds of new gTLDs.

A second significant issue of concern for the House is the deterioration of the “WHOIS” databases for determining the owner and operator of web sites.  While the tool originally was intended to allow Internet users and others to know “with whom they are dealing” when they visit a web site online, the system is now broken to the extent that WHOIS is completely unreliable and often useless.  This is particularly true from the standpoint of rights enforcement and law enforcement. 

Sites that are engaging in illegal activity have little incentive to provide accurate WHOIS information if they are not forced to do so, and Registrars too often do not require their registrants to provide accurate whois information (“Mickey Mouse,” for example, is commonly given as the web site registrant’s name) and permit – even encourage – proxy registrations that effectively allow anonymous operation of a web site.  Congress has been concerned about these developments and will have some tough questions for the witnesses tomorrow.

–Scott Bain, Chief Litigation Counsel and Director, Internet Anti-piracy

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Filed Under: Policy Tagged With: , ,

Costco v. Omega oral argument summary

November 11, 2010 By

On Monday, November 8, 2010, the Supreme Court held oral argument in Costco v. Omega, No. 08-1423.  I attended, and provide a brief summary below.  As you may recall, SIIA submitted an amicus brief in the case supporting Omega, which seeks to prevent Costco’s unauthorized, grey market import and resale of watches bearing Omega’s copyrighted design.

SIIA’s brief argued that (1) Costco’s first sale defense does not apply in this case because the first sale doctrine only applies to copies “made under this title,” and a copy made in another country is not “made under this title” (copyright law is not extraterritorial); and (2) the court’s decision should not imply any effect on longstanding licensing practices in other industries, which do not implicate the first sale doctrine because “ownership of a copy” is not transferred.

This case arose when Costco sought to purchase watches from Omega for resale in U.S. Costco stores, and the parties could not reach an agreement (there was some ambiguity about whether the parties could not agree on price, or whether Omega simply refused to sell them to Costco).  Costco was not able to obtain the watches via authorized distributors, but somewhere in Omega’s distribution chain, a supplier apparently broke its distribution agreement and the watches were imported into the U.S. to a Costco agent/importer, and passed on to Costco.  Omega sued under, among other provisions, section 602 of the Copyright Act, which prohibits unauthorized importation of copyrighted works.  [Read more...]

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Filed Under: Anti-Piracy

Software Industry Awaits Supreme Court Ruling In Bilski Case

June 4, 2010 By

With approximately one month left in the current Supreme Court term, it is likely that the highly anticipated decision in Bilski v. Kappos (formerly Bilski v. Doll) will be issued soon.  This may occur as soon as Monday June 7, when the next round of opinions is scheduled to be released, and almost certainly will occur by the end of the month, when the Court recesses for the summer.

The decision may be one of the most important intellectual property law opinions in years, and could have far reaching ramifications for the software, IT, and financial services industries among others.  Indeed, more than forty companies and organizations filed amicus briefs to advance their respective positions – including a brief I filed on behalf of SIIA and the software industry. At issue in the case is perhaps the most fundamental of questions in IP law:  what things and activities are eligible to be patented.

The SIIA’s brief argued that software should remain eligible for patent protection, as it has for the past several decades.  The industry has grown, thrived, and matured during that time, and patent protection and eligibility has played a role in that success.  While problems with the patent system remain, those problems relate to other aspects of the law, and/or its application, such as weeding out purported inventions that are obvious in light of the prior art.  Problems also exist in the examination system itself, including the fact that the Patent & Trademark Office is widely believed to be underfunded, resulting in long delays in examination, and limited time and expertise that can be spent on any single application.  An ongoing concern of the patent law community is that Congress annually diverts a substantial portion of PTO user fees for unrelated purposes.  Patent Reform debate and proposed legislation have occupied Congress for the past several years. [Read more...]

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Filed Under: Anti-Piracy, Content, Court Cases, Education, Policy, Software Tagged With: , , , ,