X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Julia Ann Matheson, an intellectual property specialist who has handled trademark matters for Internet search-engine company Google Inc., has made short shrift of one usurper after another of her client’s good name. Over the past two years, the partner at Finnegan, Henderson, Farabow, Garrett & Dunner in Palo Alto, California, filed complaints with the World Intellectual Property Organization in Geneva, the main forum for resolving domain name disputes, against a Korean company that launched a Web site called Googlr.com, a Hong Kong firm that operated googel.com and a Dutch man who tried to get a free ride on her client’s back with a site called google4mp3.com. In each case, Matheson established that the copycat intended to sow confusion among Internet users by mimicking Google, hoping to siphon off a trickle of the traffic headed toward the world’s fourth most popular Web site. None of the owners of those sound-alike domains offered a defense. The remedy in each case was the transfer of the offending Internet address to Google, headquartered in Mountain View, California. Given the company’s zealous defense of its Internet domain, you’d think that Google would respond with equal legal force to anyone brazen enough to hijack the name Google.com itself. But when someone managed to do just that for a few days in September, the company resorted to diplomacy rather than law in an attempt to resolve the matter. Part of the problem was that the usurper could not be conclusively identified. The larger issue was that, in all likelihood, the culprit was the Chinese government. Interference with the Internet in China is one of several perplexing international issues that has bedeviled in-house and outside lawyers who represent Internet companies. Recently, various governments that seek to control the flow of online information within their borders have begun to target Internet search engines such as Google that provide access to that information. The legal staffs at companies targeted by foreign censors are scrambling to keep up. When Mary Catherine Wirth joined Yahoo 2 1/2 years ago, for example, the legal team she now oversees as senior counsel in charge of international litigation and compliance barely existed. “When I started here you would be hard pressed to find anyone who had a background in international Internet law because there was no such thing,” says Wirth, who specialized in First Amendment issues at O’Melveny & Myers and McCutchen, Doyle, Brown & Enersen before joining Yahoo. “That’s the really interesting part of this job. You’re out there actually participating in the development of law.” Wirth oversees a legal unit on which the sun never sets. The company employs about 20 in-house lawyers overseas, most of them attached to Yahoo’s joint ventures around the world. Back in the home office in Sunnyvale, California, four of the more than 30 in-house lawyers there work just about full time on international matters, says Wirth. Yahoo’s chief contribution to date in the development of international Internet law has come in a case that is still in litigation. A French group has been trying to force Yahoo to ban listings of Nazi memorabilia from its auction site. The group alleges that the listings violate a French law. The plaintiffs obtained a court order against Yahoo in a French court. But Yahoo, represented by a legal team led by Robert Vanderet, a partner in O’Melveny & Myers’ Los Angeles office, is challenging the French order in a case pending before the Ninth Circuit U.S. Court of Appeals. Yahoo presents an especially inviting target for foreign legal actions, having long since outgrown its early role as a search engine that retrieved content produced by others. Yahoo now has partnerships and joint ventures with local Internet companies in nearly two dozen foreign countries and offers an array of electronic commerce services in addition to Internet searching. Other companies that have stuck with a simpler business model, meanwhile, are still watching out for new legal challenges. “Our job is to help people find Web sites,” says Sharon Anolik, associate general counsel and chief privacy officer at Ask Jeeves Inc., based in Emeryville, California. “It certainly does provide us some solace that claims are being directed at the content providers themselves, and frankly we think that’s where it should be directed.” Even so, the increasing number of cases in which foreign governments or groups have demanded removal of content from U.S.-based Web sites or have sued for damages allegedly inflicted abroad by the content is “something we are watching closely,” says Anolik. “But we have not yet received any removal requests.” Google has received such requests. Researchers at Harvard Law School’s Berkman Center for Internet & Society, who monitor such matters, say Google has acceded to those requests by keeping allegedly offensive Web sites out of search results. While company lawyers were not available to comment on the specifics, Google is looking to strengthen its legal staff when it comes to handling various international issues. The company is searching for a “compliance and privacy counsel” who will “help in developing policies for complying with laws and regulations worldwide.” China, in particular, poses thorny legal and political issues for Internet companies eager to make their services available to Chinese computer users. Often, traditional lawyering gives way to delicate back-channel negotiating when it comes to dealing with China. The Chinese government has maintained heavy-handed control of the Internet since the advent of the global communications network. Individual users are required to register with the government while Internet service providers and Web publishers must sign a document called the Public Pledge on Self-Discipline for the China Internet Industry. Among other provisions, the document requires companies not to publish “pernicious information that may jeopardize state security and disrupt social stability.” According to Harvard’s Berkman Center, Internet users in China are regularly prevented from viewing as many as 19,000 Web sites deemed by the government as threats to national security. In September, researchers at Berkman discovered that Chinese users attempting to reach Google were automatically redirected to one of several Web sites, including a search service operated by Beijing University. Another search engine, AltaVista, was also blocked in China. Many lawyers agree that unauthorized redirecting of Internet users from one site to another presents a clear-cut case of a trademark misappropriation, among other possible legal causes of action. But that assumes that companies can establish precisely who’s responsible for the online diversion. “Given that China always officially denies the blocking, it’s hard to talk to anybody about it,” says Wirth. Yahoo has been intermittently blocked in China for years. Susan Marsch, AltaVista’s general counsel, contacted a “variety of sources” after the company’s search engine ran into Chinese roadblocks in the fall. Her list of contacts included Michael Gisser, a partner at Skadden, Arps, Slate, Meagher & Flom. Gisser was the firm’s senior partner in Hong Kong for six years before he relocated recently to Los Angeles. He had previously represented AltaVista in corporate finance matters and is viewed as being well connected in China, according to Marsch. But the company was not encouraged by what Gisser learned from his contacts in China. On paper, AltaVista may have had a good trademark-violation case to pursue. It might also have been able to press an interference-of-trade complaint before the World Trade Organization. “You can go down that path, but we were told that we probably wouldn’t get anywhere, at least not in my lifetime,” says Marsch. Instead, she concluded that “this isn’t a legal issue in China in the sense that it would be here.” Executives at Google also decided that traditional lawyering was not likely to get them very far when the company ran into interference with its search engine in China. After consulting with Kulpreet Rana, Google’s director of intellectual property, and general counsel David Drummond, Google’s co-founder Sergey Brin turned to a non-lawyer � Esther Dyson, who formerly chaired the Internet Corporation for Assigned Names and Numbers, the international entity that manages domain names � for advice on dealing with the situation in China. “I don’t recall exactly what I said, and I wouldn’t repeat advice I offered in private anyway, but I’m sure I told them to stand up for truth and liberty and freedom,” says Dyson. However, she also advised Google to abandon any thought of litigation because “it’s not going to be terribly productive to sue the Chinese government.” Rana says the company was faced with a situation in which “none of us in-house had any understanding of what happens in China behind closed doors.” In this case, according to Rana, Google worked with “an attorney who has relationships with people within the [Chinese] government who are in charge of some of these activities.” Rana and others at Google declined to disclose the lawyer’s identity. Google officials were also vague on the details of the lawyer’s negotiations with Chinese officials, but insisted that the company did not make any changes to its servers to accommodate China’s concerns. As it turned out, access to Google’s search engine was quickly restored in China though search results have remained subject to censorship. According to the Berkman Center, for example, searches for sensitive terms such as “falun gong,” the banned spiritual movement, and “Jiang Zemin,” China’s president, which produce thousands of results for Internet users around the rest of the world, turn up dry for computer users in China. American lawyers who have dealt with intellectual property matters in China say they understand Google’s strategy in dealing with the Chinese. “We had a matter in China where we were having to make a decision whether to seek an injunction in a copyright case,” recalls Jay Monahan, associate general counsel at eBay Inc., the online auction company. “We were told that the injunctive remedy had only been introduced something like two months earlier. It had never been tried, and there had never been a copyright injunction in the history of China. So what do we do? We don’t have the luxury of simply saying, ‘Here’s what the law says.’ Instead, it’s ‘here’s what the law says, here’s what the business demands, here’s what the press is probably going to say.’ I know for Google that had to have been a gigantic factor in its China matter. You don’t need a lawyer to tell you what copyright law says or what Internet control regulations are in China. You need somebody to tell you what the Chinese government is thinking.” The legal system in China “is developing, but it started from ground zero,” says Arthur Wineburg, a partner in the Washington, D.C., office of Pillsbury Winthrop who organizes an annual conference on intellectual property rights in Asia. “We can’t expect things to change overnight. They have put a bunch of good laws on the books but they haven’t been shown to mean much yet.” What that means, he says, is “that the only way to get things done is diplomatically.” But even doing that, adds Wineburg, is never an easy task. “You have to figure out which group or entity is causing the problem and then you have to figure out someone who has a relationship with that entity. It’s not transparent, so it’s a lot more complicated to figure out who that right person is.” Maria Lin, a partner in the New York City office of Morgan & Finnegan who specializes in international intellectual property law and helped draft China’s patent law, agrees that Google “may be correct not to take a legalistic approach because such an approach may not be available.” Assuming that the Chinese government interfered with access to Google because of its objection to the content found on particular Web sites, the company would not likely have had a legal remedy because the government, as a matter of policy, restricts the free flow of information. “We have constitutional guarantees against such restrictions,” says Lin of the United States. “China, like much of the rest of the world, does not.” No search engine, meanwhile, has attracted more criticism over its response to Chinese interference than Yahoo. But Wirth, the company’s chief in-house international lawyer, says the criticism is unfair. “Google and AltaVista don’t have a physical presence in China or actually do business in China,” says Wirth. By contrast, a joint venture between Yahoo Hong Kong and a Chinese company affiliated with Beijing University operates Yahoo China, which is licensed by the Chinese authorities and has offices and personnel in Beijing. “That entity, along with every other Internet service provider in China, was asked to join what’s called the Internet Society of China and to agree to its self-discipline pledge,” says Wirth. “The pledge doesn’t require Yahoo China to do anything over and above what China’s laws already require.” The company’s U.S.-based Web site has entered into no such agreement, she adds, nor have Yahoo’s other Chinese language sites such as Yahoo Hong Kong and Yahoo Taiwan. Yahoo maintains nearly two dozen other country-specific Web sites that are offered in the local language, carry local content and comply with local laws. “We have to remove ‘blasphemous’ material from the Yahoo Italy site when it is reported to us,” says Wirth. “In France, it’s illegal to display a swastika or any Nazi-related material. Our France site complies with that law. In Japan, it’s illegal to display election-related materials, so when it’s reported to us, we need to remove it. Each of our local properties conforms with local law.” As for Yahoo’s dealings with the Chinese, Wirth says, the company has decided that it is “worth staying in China with a little less content.” To stay online there, she adds, the company must “comply with local law, as every nation requires.”

This content has been archived. It is available exclusively through our partner LexisNexis®.

To view this content, please continue to Lexis Advance®.

Not a Lexis Advance® Subscriber? Subscribe Now

Why am I seeing this?

LexisNexis® is now the exclusive third party online distributor of the broad collection of current and archived versions of ALM's legal news publications. LexisNexis® customers will be able to access and use ALM's content by subscribing to the LexisNexis® services via Lexis Advance®. This includes content from the National Law Journal®, The American Lawyer®, Law Technology News®, The New York Law Journal® and Corporate Counsel®, as well as ALM's other newspapers, directories, legal treatises, published and unpublished court opinions, and other sources of legal information.

ALM's content plays a significant role in your work and research, and now through this alliance LexisNexis® will bring you access to an even more comprehensive collection of legal content.

For questions call 1-877-256-2472 or contact us at [email protected]

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.