FENNEMORE CRAIG I-LAW
February 1, 2001

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.

• Th-Th-That's AOL folks. The FCC has approved the merger of Time-Warner and AOL. FCC approval was the last major regulatory hurdle faced by the companies..Link Link
  

• The Department of Justice has published guidelines for federal police officers and prosecutors to follow when searching computers, e-mail, etc., in cases involving computer crimes. The links below will pull up (in order) the report itself and some media coverage. Link Link

• In one of the first European court decisions on "deep-linking," a German court has issued an injunction barring an online recruitment firm from linking to the website of a competitor. Deep-linking occurs when the link by-passes the home page of the linked site (not to mention all of the banner advertising)..Link

• Next month, the French government will begin imposing a tax on blank CDs and other items that can store media, as a way of partially compensating French content providers for income lost due to piracy. The French government recently abandoned a plan to tax computers, video cameras and similar equipment for this purpose. Denmark imposes a similar CD tax while the German government taxes computers for this purpose. Link

• The ACLU and the American Library Association are going to sue (separately) the U.S. government to strike down the new federal law requiring Internet filtering software for computers in public schools and libraries on the grounds that the law violates the First Amendment. Link Link

• But they promised it was Michael Jordan's shoelace. A court has held that Ebay is not liable for fake sports paraphernalia auctioned on the site. Link Link

• And the survey says. . . . A new survey indicates that employers are not very concerned about employees using the Internet on company time and that employers are even establishing policies to reflect flexibility on the issue. Link

• Following on the heals of a French Court's decision barring auctioning of Nazi materials on Ebay, a court in Italy has ruled that it can shut down online sites based in foreign countries for violating Italian law. Big questions remain as to how the Court will enforce its order. Link

• The U.S. Congress will be holding hearings on the process used by ICANN to select the new top level domains (TLDs). As readers of I-LAW will recall, last November, ICANN approved seven new TLDs - .aero, .coop, .info, .museum, .name, .pro, and .biz, but declined many other proposed TLDs suggested by 40 other applicants. Link

• The ACLU has also attacked ICANN for the way it selected the TLDs. The ACLU claims that the process favored corporate interests over individuals. Link

• The U.S. Patent and Trademark Office has told Congress that it need not pass any more laws to deal with cybersquatting. The USPTO issued the report as required by Congress in legislation passed in 1999. Link

• How do those horses manage to tread water for so long anyway? Ralph Lauren, the owner of the famous POLO trademark and the polo.com website, has decided to take no further action in its claim against the owner of po-lo.com, a site used by the owner of a "saddlery and harness" business. Link

• Pillsbury's dough boys have decided to turn up the heat on software techies who use Pillsbury's "bake-off" trademark to describe the process where software engineers get together and test software against network protocols and each other to see which software works best. The techies argue that they have used the term this way since 1987, the mark has become generic, and cooking and software are so unrelated that no one would be confused. Link

• The owner of bodacious-tatas.com was forced in a UDRP proceeding to give up the domain name to Tata Sons Ltd., the owner of the mark TATA. TATA has been used since 1917 and has an annual "turnover" of $9 billion in its industrial core business. The fact that the cybersquatter's tatas were "bodacious" was not enough to distinguish the domain name from plain old TATA. Link

• In the long running battle over ownership of epix.com, the owner of the trademark EPIX is the loser (so far). A district court in Oregon found that confusion between the trademark and the website was not likely because the Court believed that the goods and services are in different markets and the channels of trade used were different. Also, there was no evidence of bad faith by the registrant of epix.com. A dilution claim did not help the owner of EPIX because there was no evidence of fame. Link

• The U.S. Patent and Trademark Office has issued new (final) examiner guidelines relating to gene-based patents. Under the revised rules, an inventor needs to identify a "specific and substantial credible utility" for inventions. Link

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