What Happens If File Sharing Can Also Be Prosecuted As Trademark Infringement?

from the messy dept

In the arguments over ACTA, one criticism seemed widely accepted: that it tries to bundle together two quite different challenges — tackling counterfeit goods, like fake medicines, and dealing with unauthorized file sharing. One popular suggestion was that ACTA should be split in two in order to handle those separately – for example, David Martin, the politician who played a key role in convincing the European Parliament to reject ACTA this week, supports this approach.

But a case reported on TorrentFreak suggests that the distinction between the two worlds is starting to blur:

A New York federal court has ordered a rare default judgment in favor of John Wiley & Sons, one of the world’s largest book publishers. Robert Carpenter from Poughkeepsie, New York, has been ordered to pay the publisher $7,000 in damages for sharing a copy of “WordPress All-in-One For Dummies” on BitTorrent. According to Judge William Pauley, the man is guilty of both copyright and trademark infringement.

The judge specified that $2,000 of those damages were “for Carpenter’s counterfeiting of Wiley’s Trademarks”. As TorrentFreak notes:

To our knowledge, this is the first time that sharing files on BitTorrent has been viewed as counterfeiting, a description that’s usually reserved for fake goods sold as the real deal.

That’s troubling, because it would seem to open the door for anti-counterfeiting measures aimed at tackling serious trademark infringement to be applied routinely to P2P sharing of copyright files simply because they are exact copies of originals. That, in its turn, would mean that separating ACTA’s measures against counterfeit goods from those dealing with online infringement might not be enough to solve the treaty’s problems, since the former would still apply to the digital world. Yet another reason to bin ACTA completely and to start again from scratch.

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Comments on “What Happens If File Sharing Can Also Be Prosecuted As Trademark Infringement?”

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mudlock (profile) says:


How can there be trademark infringement, it _IS_ a Wiely & Sons product, no one ever claimed anything to the contrary. If he wrote his OWN book and claimed it was a W&S, or “For Dummies”, product, then it could be trademark infringement, but then, it couldn’t possibly be copyright infringement.

Absolutely ridiculous. (Of course, default judgments usually are: Go to court, kids; it’s good for you!)

John says:

Oh dear that is bad bad news.

The only kind of intellectual property I still had respect for was trademark, i.e not passing yourself off as someone else, a kind of identity fraud.

I don’t see how a copy can be pretending you are someone else but hey, I am not a lawyer paid to turn up into down.

If they can squirm around that and the system doesn’t just throw it out as absurd, then that has to go too. Ouch.

Is intellectual property a form of mental illness? I thought it was something to do with pragmatics.

Anonymous Coward says:

Re: Re:

IP is sort of like a mental illness, it certainly is a delusion.

Trademark’s value was not in it being IP it’s value is in consumer protection, for a judge to not only devalue but effectively remove what used to be the principal point of trademark law and shift it permanently into the realm of imaginary property rights damages consumer protection while making IP law even more ridiculous.

Hopefully, however, it will lead to the opposite of what the IP brandishing companies intend and spur the people to remove all IP laws and force them back to actually providing things people want at a price people can afford, business in other words.

That Anonymous Coward (profile) says:

Question if the goods are counterfeit, how can they at the same time be copyrighted? Either the item is a true reproduction of the copyrighted work or it is not.

Another question is how can there be a penalty reserved for selling fake goods, for goods not sold?

Then one has to walk in the weeds past how does an IP address alone lead to the bad people, why are courts giving over names of people not in the jurisdiction of the court, and how can they honestly accept that allowing 1000 people in a case isn’t going to overwhelm the court with each and every Doe having different answers and all of them needed to be a part of each and every ruling in the case?

DogBreath says:

Re: Re:

Question if the goods are counterfeit, how can they at the same time be copyrighted? Either the item is a true reproduction of the copyrighted work or it is not.

Perhaps Judge Pauly sees the “digital product” as proverbial “schrodinger’s cat”, as in it both exists in an intangible state (on the internet) and therefore it can never be determined if it is a true reproduction or a false original (by his reasoning skills, or lack thereof). He did the most sensible thing and declared it to be both copyright and trademark infringement (or he finally figured out what question the answer “42” was for… i.e.: How many times can I get away with making bad rulings from the bench?).

Based on his copyright/trademark ruling, until someone figures out a way to observe atoms flowing on the internet without disturbing their quantum signatures, we will never know if we’re looking at a copy of an original, or an original of a copy (during the period when time flows backwards). The only way to be certain that it was original would be to store it on an Imaginary Property Quantum Hard Drive, which then would need to be immediately destroyed to prevent anyone from ever making a copy of the original. (Note: Only one Imaginary Property Quantum Hard Drive can exist. If there was more than one, the others would be only copies and in direct violation of I.P.Q.H.D. copyright, trademark, and yes, probably even patents.)

In Judge Pauley-land, everybody using the internet is guilty of any and all types of infringement, you just haven’t been sued/prosecuted/received a demand for money letter… yet.

TtfnJohn (profile) says:

Re: Re: Re:

Even if there is only one Property Quantum Hard Drive is that by Quantum Physics it can exists in two places simultaneously and possibly in two time lines simultaneously. They’re all the the original one just in a different state, time and location.

So which one is the non infringing one in the world of quantum IP?

Anonymous Coward says:

Re: Re:

How does it matter if it’s a true reproduction? If You made an exact opt of a Columbia jacket down to the last stitch and monetized it as a Columbia jacket, it’s still a violation of trademark isn’t it?

And if you did the same thing with a movie with a specific titled released by a specific studio would you not be in violating the trademarks of the studio and project’s title?

TtfnJohn (profile) says:

Re: Re: Re:

If you sell the jacket as Columbia then that moves into the area of fraud as you’re clearly not Columbia which isn’t a trade mark issue. You may also invoke counterfeit here.

If you make an exact copy of a movie including title and cast then I’d think that would clearly be a copyright issue. If you marketed it as Hellaciously Good Movies, who made the original then trade mark would kick in as you’re not them.

If you bittorrent a copy of the original movie then we get back to IP copyright silliness which we disuss so much around here.

The expense of making a true repoduction, not the original, in the case of a movie or video trumps that as being an option.

As a thought problem/experiment both questions are interesting but each, in their own way are too expensive to do in the real world and would probably not repay whoever did it. An interesting question as you frame it though.

Anonymous Coward says:

Re: Re: Re: Re:

I don’t agree. The title, production company, distributor name are all protected by trademark. If you are not them and are distribution copies of a film that includes those names- or even advertises it as such, i.e. “Ironman” and you are engaged in commerce by monetizing it by ad revenue, subscription or purchase; then I think you have a problem.

I’m not 100% certain but I believe that usually counterfeit manufacturers are charged with trademark violation, not fraud. Possibly both. All you really have to do to violate trademark is to distribute a product in commerce using a trademark that you’re not authorized to use and it’s a violation.

It’s a fascinating development because the implications are so broad with DMCA safe harbor protections stripped away. And interestingly, it targets the main villains that the MPAA says it’s gunning for, while likely not applying to non-commercial file swappers and torrent users.

G Thompson (profile) says:

Re: Re: Re:2 Re:

All you really have to do to violate trademark is to distribute a product in commerce using a trademark that you’re not authorized to use and it’s a violation.

Only if you are passing off that product as an absolute original and not as a manufactured item of dubious origins.

This is the problem with intangible items. If you created a replica DVD of Ironman and made it look like to any moron in a hurry similar to the ‘real’ product whether you actually have the movie on the DVD (or it’s blank) is a trademark violation of the original trademark holder.

In this case the book in question was NOT a physical item and was not sold or intended (intent plays a huge role) as a Replica passing itself off as an original, therefore trademark should not come into play.

Trademark is intended as a mark of commerce (hence the name) to show providence and allow the consumer to know they are buying good(s) by a specific organisation with all the goodwill(reputation) that has been created by that product and organisation. Passing off a replica that may or may not be of the same quality dilutes the goodwill of the organisation. This is why trademark ONLY can be used for goods that are still in commerce. If the product or “mark” is not in commercial usage then the trademark lapses.

IMHO this decision was absolutely wrong by the Judge

Anonymous Coward says:

Re: Re:

From your citation:

The Court reasoned that although the Lanham Act forbids a reverse passing off, this rule regarding the misuse of trademarks is trumped by the fact that once a copyrighted work (or, for that matter, a patented invention) passes into the public domain, anyone in the public may do anything they want with the work, with or without attribution to the author.

It seems like a key element is passage into the public domain.

Anonymous Coward says:

tackling serious trademark infringement to be applied routinely to P2P sharing of copyright files simply because they are exact copies of originals.

Errr no, in most cases they are not exact copies, especially in movies and music. Those files are compressed or downgraded for size of file purposes. Not many want to download a 9 gig movie or a set of wav files. Ebooks are often changed as to format for the same reason or to tailor the download for a particular e-reader. While e-publishers may do the same thing it is unlikely they are using the same software to result in an exact duplicate file.

MrWilson says:

Re: Re:

It’s still the same content regardless of how you format it. Are photocopies of book pages violations of trademark because you might photocopy a color page in black and white? That’s absurd. There’s no act of trying to confuse consumers when you photocopy a book page or reformat a book as needed to transmit it via bit torrent.

DogBreath says:

The email the judge in this case received after his decision:

Dammit Judge William Pauley!

You were supposed to W-A-I-T until A-F-T-E-R we passed ACTA, or slipped the same language into another law/treaty in the middle of the night just before a three day holiday weekend, and during the start of another war or just after a major international incident, so no one would know of our devious plot until it was too late.

Way to jump the gun, Pauley!

Signed, your corporate/government (same thing really) overlords.

P.S. The check is NOT in the mail, at least not for you.

That Anonymous Coward (profile) says:

Re: The email the judge in this case received after his decision:

This was Pauley?

Pauley is sitting on another copyright trolling case and has given the troll almost 9 months to get around to chasing Does. So much for the 4 month rule about having to file…


Funny as other NY judges are severing these cases and pointing out how extortive they are here is a Judge just handing out candy to the trolls.

That Anonymous Coward (profile) says:

Re: Re: Re: The email the judge in this case received after his decision:

This case sets a dangerous precedent that the trolls will capitalize on.
IIRC One of the lesser Str8 pron copyright trolls tried trademark infringement in their filings, but like all trolling operations a court was never offered the chance to rule on those merits. It was another bite at the apple to try and get better settlements out of people.
Literally there are thousands of these cases out there, and they all follow the same patterns. Occasionally you get slight variations – trademark, tugboat liability, its not actually copyrighted for the time frame we allege the infringment, I lied on the copyright application about the dates to qualify for $150,000 vs actual damages, its a movie covered by an older copyright but we moved scenes around and got a new copyright in just our names, et al.

I expect to see a new flurry of “trademark” copyright trolling cases filed, as the trolls look to avoid the few limitations the courts have placed onto the mass copyright trolling cases. I expect to see them fourm shopping trying to get Judge Pauley rather than one of the Judges who have said these cases are mostly bull and an abuse of the courts time and resources.

Anonymous Coward says:

Well, I guess you can add “trademark law” to the list of things that’ll never be passed again, right after “copyright law” and “international trade agreements”. Every time a new one shows up, Hollywood’ll jump on board and slather their agenda all over it, then mass public outcry will shut it down.

That Anonymous Coward (profile) says:

Re: Default judgment

One wonders if the Judge looked into the service of the alleged defendant.

I’ve noticed in several of these copyright troll operations they are providing defective service, then moving for default. Only after the defendant is contacted by an outside party for a comment for a news story do they even know they were ever sued.

Jacob Blaustein says:

Re: Re: Re: Re:

FUCK FUCK FUCK… ok it’s only in that jurisdiction right, it can’t do anybody any harm anywhere else right. Someone just has to tell the higher courts that it’s just the same exact book, and that the judge at that case was simply asleep at the wheel. Right? right? 🙁

Anonymous Coward says:

Re: Re: Re:2 Re:

The Southern District of NY includes Manhattan, home to many media companies like Viacom, NBC/U, etc. I expect a line outside of Judge Pauley’s court seeking judgment for trademark infringement against a long list of serial offenders. There’s no DMCA safe harbor provision for trademark and now there’s a precedent in that district.

It’s more likely that the studios will bitch slap a few 98 lb weaklings to beef up the precedent then use that to leverage some meaningful cooperation from the internet ecosystem.

TtfnJohn (profile) says:

Re: Re: Re: Re:

If the defendant didn’t show up and, as a result, it was an automatic judgement giving the plaintiff all the plaintiff wanted then it’s about the weakest sort of precedent you can have. To have some binding strength on future similar cases it usually requires that both/all parties were present to present evidence and have a ruling based on that.

Anonymous Coward says:

Re: Re: Re:2 Re:

That’s not true John. The judge made a finding. It’s not conclusive in Southern District of NY, but it will be used for guidance and precedent by other judges in that District and perhaps beyond. The only thing that would trump it would be an appellate court decision, though it could be diluted by an opposite finding under similar facts in that District. The latter would be somewhat extraordinary as these guys are kind of fraternal and respect the findings/rulings of their peers.

Anonymous Coward says:

“That’s troubling”

yeah, it’s very troubling for anyone into pirating stuff, because it is another clear avenue for legal action, one that isn’t stuck behind DMCA or other impediments. It’s a clear and simple yes or no issue.

It’s nice to see a jugde that understands that a knock off copy (even if it’s a perfect copy) is still a counterfeit.

Ophelia Millais says:

Re: Re: Re: Re:

Rejoice! At last, your dream of shutting down vast parts of the Internet can be made real. As you know, if the issue is copyright, then ISPs and UOC hosts aren’t liable for their users’ infringements. But with trademarks, it’s gonna be a whole different ball game: since there’s no trademark-infringement Safe Harbor or takedown notice procedure for those service providers, and with this judicial precedent, there’s seemingly nothing stopping trademark owners from trolling and litigating those businesses who are “profiting from piracy” right out of existence, or at least to the point where they only offer and allow access to authorized, centralized services. A new day is dawning for the content gatekeepers…if all goes according to plan, 2013 is going to be the new 1993! Awesome!

Anonymous Coward says:

There is a Precedent

Some Karaoke Production companies have been suing Karaoke Hosts who use downloaded content in public. Since they don’t own the copyright to the music, they sue for Trademark Infringement, via their logos are on screen with the lyrics. Of course, when seeing the logo in the bar, at a karaoke show, no one knows if it was from a paid for thus licensed disk or downloaded, but what does that matter?

That Anonymous Coward (profile) says:

Re: There is a Precedent

Part of the problem in the Karaoke cases is they have adopted the SBA model of demanding people turn over their records to prove they purchased all of the content from legit sellers and if you can’t appease them they demand payments. They also feel that if you buy their CD and then format shift it to a hard drive that your stealing from them, even if you have a cd that matches everything on the hard drive. There are also people duped into purchasing what they are lead to believe are authorized copies that are not. Rather than sue the source, they sue the operators and then think about suing the source… but there is more money to be had by letting more counterfeits get out there to collect on than to stop it at the source.

Anonymous Coward says:

It seems like if you’re copying a motion picture, the title and certainly the studio names are protected by trademark. If the copy is not authorized by the trademark holder, presumably it is a violation of trademark. Whether it is an exact copy is likely irrelevant, as the copy (exact or not) is offered as the titled film and presumably includes the likeness of the trademarked logo and name.

Anonymous Coward says:

Re: Re:

Making an animated movie of the jungle book and slapping Disneys logo on it would be trademark infringement.

The Disney logo being on Disney’s version of the jungle book however is not only not misrepresenting anything it would be downright rude to remove it.

The argument usually given by Trademark holders for why they enforce their trademarks against counterfeiters is that the products are of lesser quality and the customer is being duped. No customer is being duped in the case of an exact copy of a digital product.

Anonymous Coward says:

Re: Re: Re:

It still is.

Disney didn’t make the copy, they are the only one with the rights to do that. So by putting their trademark logo on the copy (even if it’s a perfect digital copy of the work) would still appear to be a trademark violation.

let’s look at the knock off purse, as an example. Some of those products are made on the same production lines, with the same materials, by the same workers. But the ones that are not sanctioned by the trademark holder are counterfeit. They are exactly the same (or just about) but they are not approved by or sanctioned by the trademark holder.

I think this is a major in for anyone producing content. Bypass the copyright laws, and go right to something that is cut and dry – are you the trademark holder or are you not?

G Thompson (profile) says:

Re: Re: Re: Re:

Ah but if the trademark “logo” was already there it is not infringing since the original holder did it.

An exact copy of intangible goods requires no intentional placement of a trademark that was not originally intended to be there, this is why we have the word COPY in copyright. A copy of intangible goods is NOT a manufactured replica and therefore NOT a breach of trademark.

This is the problem with intangible goods. In counterfeit goods they are actually manufactured somewhere and then the logo in your example is physically emplaced by intent to confuse and defraud.

Also it is interesting in that if “The Jungle Book” was originally trademarked to Disney for the purpose of Movies, films etc and they no longer commercially sell that product the trademark is instantly lapsed since trademark only applies whilst ‘in trade’ . The logo of “Disney” is still being used in trade yes, but again unless they physically created a DVD and placed the LOGO of Disney (or other distinguishing marks) then there is no trademark breach, only a maybe breach of copyright

G Thompson (profile) says:

Re: Re: Re:3 Re:

Yep, a trademark is only valid whilst still used in commerce, if something is no longer sold the trademark lapses.

Also a trademark is only for specific classifications. Which means something like the “Disney” is only trademarked for specific purposes ONLY whilst they use that trademark in commerce with that name so if they for example had “Disney” trademarked in the foodstuff classification and were selling “Disney Twizzles” and then stopped selling it, after a reasonable time another entity could call there Twizzles “Disney Twizzles” (especially if they had a common world trademark like a surname of Disney) and it would be valid and not in breach.

Note: this doesn’t mean Disney lawyers would not try to bring every bit of their arsenal to bear on the person with the name Disney though who had the audacity to do such a heinous thing *eyeroll*

sophisticatedjanedoe says:

Bittorent pornotrolls and trademark infringement allegations

Fake libertarian Stagliano also tried to push trademark infringement allegations in porn bittorent trolling cases back in April, but less than in 2 weeks trolls (Hoppe, Lipscomb, Fiore, Kotzker) quickly dismissed more than a dozen of these frivolous cases after a reasonable ruling by a Massachusetts judge Alexander Williams:

Plaintiff?s trademark infringement claim is governed by the Lanham Act. Under the Lanham Act, infringement of federally registered trademarks occurs when the accused, without the trademark owner?s consent, uses the trademark ?in commerce? and ?in connection with the sale, offering for sale, distribution or advertising of any goods or services? in a way that is likely to ?cause confusion, or to cause mistake, or to deceive.? 15 U.S.C. ? 1114(1)(a). Plaintiff alleges that Defendants have violated 15 U.S.C. ? 1114(1)(a), see Compl. ? 54, but fails to provide sufficient factual allegations that that Defendants sold, distributed, or advertised any goods bearing Plaintiff?s trademark ?in commerce.? Rather, Plaintiff alleges that Defendants acted together in a swarm to obtain a copy of a movie bearing Plaintiff?s unauthorized trademark.

Although Plaintiff may have a right of action against the individual or individuals who created this counterfeit copy for distribution, the Court fails to see how Plaintiff?s allegations support a claim for trademark infringement against the putative Defendants.

Anonymous Coward says:

Re: Bittorent pornotrolls and trademark infringement allegations

While this might impact the treatment of torrents, do you think that the ruling holds for downloading or streaming? Particularly if it was from a site that was involved in commerce by monetizing the content by subscription or ad revenue?

sophisticatedjanedoe says:

Re: Re: Bittorent pornotrolls and trademark infringement allegations

I’m not a lawyer, but I think that any monetizing, even one that does not pay for the hosting, complicates the situation dramatically. And since this particular ruling assetrs non-commercial nature of the alleged violation, I don’t think it is applicable to streaming/downloading where money is involved.

Anonymous Coward says:

Re: Re: Re: Bittorent pornotrolls and trademark infringement allegations

That was my read. I think that any service perhaps other than torrents or none commercial P2P is imperiled by this decision. And the Pauley decision, examined in this context affirms the trademark violation aspect of the complaint. I’m trying to think now if this theory could be stretched to include linking sites such as Tvshack and the like. Also, I think that if it could be proven that defendants were exchanging movies back and forth, an argument could be made for “commerce” as something of value (movie torrents) is being exchanged; as well as conspiracy to infringe trademark based upon collective action.

Crosbie Fitch (profile) says:

Let me fix that for you

“Yet another reason to bin ACTA completely and to start again from scratch.”

Yet another reason to bin copyright, patent, and trademark, and revert to law that restricts itself to securing people’s natural rights, instead of abridging them to grant monopolies to special interests.

We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness. –That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed

Also see The (un)Nature Of Copyright.

…for those who wonder why these privileges create such problems for society, when it is purported they have been created to solve society’s problems.

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