New Jersey Law Journal December 10, 2001
Copyright 2001 NLP IP Company - American Lawyer Media
December 10, 2001
HEADLINE: Filling in the Gaps
BYLINE: By JonathanBick
The Internet, and the tort of misappropriation, pose new challenges to preserving the value of information
The author is a solo practitioner (BickLaw.com) and an adjunct professor of Internet law at Pace Law School and Rutgers Law School. He is also the author of 101 Things You Need To Know About Internet Law (Random House 2000).
The Internet bristles with intellectual property and information subject to legal protection, such as proprietary information and personal data. Consequently, the tort of Internet misappropriation is an attractive doctrine for protecting intellectual property that qualifies neither for statutory protection based on copyright or patents, nor for traditional unfair competition protection based on confusion of source. In short, misappropriation is a gap filler tort. The tort of Internet misappropriation is actionable when a party takes information from a commercial rival's Internet site and uses that information to cause damage to that rival. Attorneys are regularly being called on to counsel clients about the vagaries of Internet information misappropriation. Federal, New Jersey and New York courts have identified the Internet as a source of protected rights in information and the tort of misappropriation as a basis for a complaint enabling the enforcement of legal rights in information.
For example, in October, the Supreme Court of Indiana found in Felsher v. Univ. of Evansville, 755 N.E.2d 589; 2001 Ind. LEXIS 903 (2001) ) that a university was not entitled to invasion of privacy or trademark claims against a former professor who created imposter Web sites and e-mail addresses, but an injunction was appropriate to stop these activities based in part on the tort of Internet misappropriation.
The defendant created imposter Web sites and e-mail addresses to harm the reputation of the university. The plaintiff could not base its claims on provisions of the Lanham Trade-Mark Act, 15 U.S.C. 1114, 1125(a), (c) (trademark infringement, trademark dilution, unfair competition and false designation of origin) because these trademark actions require commercial use of the domain name (See 15 U.S.C. 1125(c)(4)(B) (1999) (noncommercial use of a mark is not actionable under this section).)
Since the plaintiff in this case did not assert a right to relief under the Lanham Act, the court did not debate whether the "commercial use" requirement for trademark actions is satisfied by domain name registration and corresponding presentation of information on a Web site. Instead, the court found that an appropriate remedy was misappropriation of a corporation name or likeness, which is found under the state unfair competition law and trademark statutes, as well as common-law torts.
Whether a client is a small business that needs to know whether it can take action against a hacker, or a large company whose Internet data may be misused on a Web page, the tort of misappropriation will be an inescapable part of every tort lawyer's practice. To a lesser extent, an individual dissatisfied with the treatment of his or her personal data via the Internet may also have a claim based on misappropriation.
The size and nature of the Internet pose new challenges to preserving the value of informational products, principally electronic databases that contain immense amounts of information. The digital nature of Internet information enables it to be cheaply and rapidly copied and disseminated virtually worldwide, whether through a Web site on the World Wide Web or by e-mail.
The nature of the Internet in turn promotes riding on Internet-related investments that are related to database informational products. U.S. case law has made it clear that free riding in the marketplace is inherently undesirable and normally unlawful when a subsequent seller of a product may take advantage of the original manufacturer/seller's reputation or expenditures to create consumer demand that injures the original seller in the course of doing so.
Misappropriation, because of its ability to halt the unauthorized and uncompensated use of such investments, has the promise to be an effective weapon against unfair Internet business tactics.
The tort of misappropriation is generally associated with unfair competition litigation. An unfair competition claim involving misappropriation usually concerns the taking and use of the plaintiff's property to compete against the plaintiff's own use of the same property.
Unfair competition is an umbrella cause of action that covers all violations of fair and honest business practices. Misappropriation of trade secrets, trademark and trade name violations, and trade dress infringements are all forms of unfair competition. Unfair competition with respect to intellectual property is most commonly associated with trademark law.
Trademark law recognizes the right of a party that has expended labor
and money to make a distinct mark to a unique pecuniary interest. The
tort of misappropriation of publicly disclosed information is a branch
of the law of unfair competition that recognizes a new and additional
The Internet is particularly susceptible to the unauthorized access, taking and use of another's information property for two reasons. First, the Internet is primarily composed of publicly disclosed informational content. Second, Internet content is standardized in such a way as to make the access, copying and use of such content easy for even the neophyte Internet user.
The unauthorized taking and use of Internet information can occur in many forms. Internet hackers can break into an e-mail account to read or send e-mails or simply copy information found on an Internet site. Other hackers specialize in gaining unauthorized access to Internet network systems. Still others obtain access to targeted Internet databases.
The unauthorized access, taking and use of another's information property
may be done by a disgruntled employee, a business competitor or a security
specialist. To employ the remedies for misappropriation, who executes
the bad act is less important than showing the bad act has benefited
a competitor. A cause of action for misappropriation of Internet information
assets exists when one can prove that such assets exist, and that they
were improperly used without authorization by a competitor.
Black's Law Dictionary defines the tort of misappropriation as "the application of another's property or money dishonestly to one's own use." The application of the tort of misappropriation to the Internet is squarely based on the U.S. Supreme Court's articulation of the tort of misappropriation in International News Service v. Associated Press (248 U.S. 215 (1918) nearly a century ago.
In International News Service, the Court held that the owner of information that was gathered for commercial use was worthy of protection from interference with a business competitor. The result was to enjoin a defendant from taking or using any of the plaintiff's information until its commercial value had vanished.
Needless to say, the defendant in this case was engaged in the copying of news stories from traditional bulletin boards and the plaintiff's newspapers and selling them as its own, rather than from electronic bulletin boards and Web sites. However, the competitive relationship between the parties was the same then as now. Most important, the Supreme Court concluded that, the tort was misappropriation rather than misrepresentation and consequently the defendant's actions amounted to unfair competition in business.
The Court has never attempted to classify news as property. It chose to characterize the Associated Press' interest in the news as "quasi-property" because, as noted in Justice Brandeis' dissent, "the knowledge for which protection is sought in the case at bar is not a kind upon which the law has heretofore conferred the attributes of property." Consequently, the application of this case to Internet matters does not require the court to find that Internet content must be property in order to apply the tort of misappropriation.
This finding is important for two reasons. First, determining the property
right in much Internet content is difficult. Second, in the case of
Internet misappropriations, the material that both parties normally
are concerned about must be evaluated for purposes as between them,
irrespective of the rights of either as against the public.