FENNEMORE CRAIG I-LAW
December 18, 2000

Fennemore Craig counsels clients on Internet, branding and e-commerce issues and protection and commercial exploitation of patents, copyrights, trademarks, and trade secrets. Clients include a range of domestic and international businesses from Internet start-ups to large multi-nationals, in industries ranging from computer software and hardware to pharmaceuticals, toys, games, optics, and electronics.

• Of all the arbitration forums available for Uniform Dispute Resolution Policy (UDRP) proceedings for domain name disputes, WIPO is by far the most popular. WIPO took 68.5% of all UDRP cases in November. Perhaps WIPO's dominance exists because trademark owners, who are the ones selecting the forum, have won 67.5% of all the cases filed with WIPO. Another 15.8% of cases have been settled, leaving alleged infringers victorious only 16.7% of the time. Link

• WallmartCanadasucks.com was found not to be confusingly similar to Wal-Mart's trademarks, even though the domain name registrant had lost two earlier domain name disputes with Wal-Mart over similar "sucks" variations. Link Link

• Concerned about a U.S. registrar's registration of domain names using Chinese characters, China has claimed domain over all registrations of domain names with Chinese characters. China's Internet Network Information Center (CNNIC) is offering its own domain name registrations using Chinese characters. Link

• PETsMART, a Fennemore Craig client, has purchased the pets.com domain name from the now bankrupt sock puppet that formerly owned it. The purchase does not include the sock puppet. Link

• Cybersquatting is a worldwide problem. Here are three cases involving domain names for companies located in Mexico:
  eresmas.com Link
  hechos.com Link
  tvazteca.com Link

• British intelligence agencies want the right to record and seize all records of emails, internet connections and phone calls for individuals living in Great Britain. Link

• Having settled its lawsuits with the big recording industry giants, MP3.com reopened its cd locker service, offering both a free and pay service. Link

• Defamation on the Internet is currently a hot topic. A New Jersey court has decided to protect the identity of four anonymous online posters who criticized a software company at a Yahoo! bulletin board. Link Link

• And in what is believed to be the first libel decision against an anonymous online critic, a doctor won a $675,000 judgment against an anonymous online critic who accused the doctor of taking kickbacks. Link

• An Illinois judge has held that a father must stand trial for damages caused when his high school-aged son digitally grafted the face of a classmate onto pornographic images on a website. The alleged victim claims that the father was negligent in failing to supervise his son. Link

• Malaysia says it will prosecute any Muslim person who insults Islam on the Internet. The enforcement is limited to Muslim persons because Islamic law only applies to Muslims. Link

• In another decision that raises the thorny issue of Internet jurisdiction, a German Court has held that any web publisher can be held liable in Germany for publishing Holocaust denial or pro-Nazi materials online, no matter where around the world the publisher is located. The case involved an Australian who published a denial of the Holocaust on his Internet site . Link

• The Recording Industry Association of America (RIAA) has asked the U.S. Copyright Office to arbitrate a royalty dispute with web-based music publishers over online music broadcasts. Link

• The U.S. Copyright office has issued a rule that requires radio stations that broadcast over the Internet to pay a separate royalty for music used on the web broadcast. The Copyright Office stated that webcasts did not fall into the exemptions for over-the-air broadcasts. Link Link

• A copyright in an architectural work does not prevent others from creating, distributing, or publicly displaying pictures of a building if the buidling is "ordinarily visible from a public place." The Ninth Circuit has now interpreted this rule to cover sculptures, graphics and other artistic works that have become part of the design of the building. Link

• The Federal Court of Appeals (usually the court with the last word on patent matters) has further limited the use of the "doctrine of equivalents", which is likely to result in patent owners having an even more difficult time enforcing their patents against alleged infringers than in the past. This doctrine assists patent holders to defend against competitors who sell knock-off products that are slightly modified versions of patented inventions, by convincing courts that the allegedly infringing product, while not literally infringing the patent's claims, comes very close to doing so. However, under the new ruling, the doctrine will not be available to inventors who, during the processing of their applications at the USPTO have, for just about any reason, narrowed the claims which define their inventions. Bottom line: if during the processing of a patent application the subject matter is narrowed, applicants will be held to the narrowly defined invention, and will have difficulty convincing the court that the patent should be protected against anything more than is specifically written in the patent claims. Link Link

• Victoria's Secret, the owner of the mark MIRACLE BRA for both bras and swimsuits, successfully defended against a direct trademark confusion claim brought by the A&H Sportswear, the owner of MIRACLESUIT for swimsuits. However, the Third Circuit Court of Appeals ordered that Victoria's Secret face a reverse confusion trademark claim instead. Reverse confusion arises when the junior user of a trademark (Victoria's Secret) is substantially better known than the senior user of a trademark (A&H) so that consumers think that the senior user -- despite being first -- is affiliated with the junior user. Link

• The U.S. Supreme Court has heard oral arguments and will be deciding whether trade dress protection is available for a design covered by an expired design patent. Link

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