FENNEMORE CRAIG I-LAW
June 4, 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.

FENNEMORE CRAIG NEWS

• Richard Oney practices in the area of intellectual property, including preparation and prosecution of U.S. and international patent applications, intellectual property acquisition, transfer and licensing, due diligence review, infringement and validity analysis, and litigation. Rich has significant experience in copyright, trademark, trade secret, unfair competition, and Internet matters, including domestic and international licensing and protection of software technology. His patent experience includes preparation and prosecution of patent applications in those industries as well as in Internet and electronic commerce, business methods, audio, communications, sporting goods and mechanical inventions. Rich has litigated numerous technology and intellectual property matters, including patent, copyright, trade secret, domain name and licensing matters involving software, electronics, medical and pharmaceutical companies.
• Rich received his B.S. (1976), with high distinction, in electrical engineering, from the University of Nebraska and his J.D. (1983), cum laude, from Arizona State University College of Law. He also is a member of the State Bar of Arizona, the Maricopa County Bar Association, the American Bar Association, and is admitted to practice in the U.S. Court of Appeals for the Ninth Circuit, the U.S. Court of Appeals for the Federal Circuit, the U.S. District Court for the District of Arizona, and the U.S. Court of Federal Claims.

ONLINE & E-COMMERCE ISSUES

• While the process for a trademark owner to "stake a claim" to a new .biz domain name has begun (and will last until July 9), staking a claim does not guarantee that the trademark owner will get the domain name. Rather, the process alerts others that one believes that one owns the trademark rights to a domain name. However, when multiple applicants claim a domain name, the name will be assigned randomly. The .info process is slightly different but no more helpful to trademark owners. For a .info domain name, trademark owners will have a "sunrise" period in which to file applications for their exact trademarks. If multiple claimants file, they will be given time to resolve the dispute themselves, but if they do not do so, the domain name will also be assigned randomly. Link Link Link
  
  
• The U.S. Department of Commerce has approved the ICANN-VeriSign deal, which has been signed, to continue VeriSign's control of the .com domain. As part of the Department's approval, VeriSign agreed to give up the exclusive rights to run the .net domain six months earlier than planned and to subject itself to annual audits. Link Link Link
  
  
• The operator of the new domain .pro says .pro will be offering .pro domain names for registration by November or December. These domain names will be for accredited professionals only.Link
  
  
• The Business Software Alliance's recently released survey revealed that software piracy losses approached $11.8 billion in year 2000. About one out of three business software applications was pirated in 2000 and over 150 companies have settled software piracy charges totaling $6.2 million. Link Link
  
  
• The U.S. Attorney General has made it clear what he thinks of Internet privacy: Not much. General Ashcroft views such privacy as a stumbling block to law enforcement efforts. Link
  
  
• Amazon's change in its privacy policy (which gave the Internet giant the ability to disclose personal customer data in certain circumstances) is not illegal, said the FTC. Link
  
  
• According to a new survey, a majority of banks are unprepared to meet the privacy requirements established in the U.S. law that becomes effective on July 1, 2001. The privacy law was part of the act that changed the anti-trust laws to allow banks, insurance companies and securities companies to merge and share information. Link
  
  
• Over 77% of U.S. businesses electronically monitor employees, according to a report from the American Management Association. Link
  
  
• Studies are showing that men and women are using e-mail differently. Women tend to use e-mail extensively as an extension of the way they talk and connect and build relationships with others. . . . Men are terse. At the same time, the researchers have also noticed that e-mail allows inhibited people, male or female, to be more expressive. Link
  
  
• Internet metaphor of the month: The White House was hit with a "denial of service" virus rendering the whitehouse.gov website inaccessible. Link Link

DOMAIN NAMES

• As reported in a previous I-Law issue, a cybersquatter was sued by Ford Motor company after switching the destination of his domain name "[vulgarity]generalmotors.com" from the General Motors' website to the Ford website. What was unknown previously is that the cybersquatter is the same person being sued by the movie industry for posting DVD de-encryption software on the Internet. He defends the vulgar domain name as a "hyperlink joke." Link
  
  
• Czech-mate. A porn website named after Czech President Vaclav Havel's wife has been sued by the Czech President. Some of the women displayed on the first few pages of the site are reported to bear a striking resemblance to the Czech First Lady. Link
  
  
• Aimster, the file sharing company that piggybacks on AOL's instant messaging service, was found to be cybersquatting on AOL's trademarks with numerous domain names including aimster.com. However, Aimster plans to sue to keep its domain names. The first link is an article about the UDRP ruling and the second link is an article about Aimster's plans to sue AOL.
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• A cybersquatter was forced to transfer hughhefner.com to Playboy. Ironically, the pornography empire displaced an entity called Good Samaritan, which completely failed to respond to the UDRP action. Hmmm, usually it is Good Samaritans displacing cybersquatting porn empires. Link
  
  
• We have diapers, a crib, a baby bottle and...a domain name??? Yes, that's right. A hospital in Silicon Valley has teamed up with a domain name provider to issue free domain names to any baby born in the hospital. moon-unitjr@zappa.com, here we come. Link
  
  
• A UDRP proceeding for determining ownership of a domain name is not "arbitration" under federal law. Therefore, a court's review of a UDRP decision is not limited to an evaluation of "arbitrator misconduct, serious procedural flaws, or 'manifest disregard of the law'." Link
  
  
  
• Is antidisestablishmententarianism.com available? According to domainstats.com, 35 million domain names have been registered, 22 million of those in the .com domain. Good luck finding your domain. Link
  
  
• Lockheed Martin has recovered the domain name lockheedmartin.org. Interestingly, the unsuccessful registrant of the domain name argued that he was a critic of the Chinese government who needed a neutral sounding corporate domain name to get his e-mails and his website past China's censors. Link

TRADEMARK ISSUES

• Take it off, take it all off. The University of North Carolina has sued a porn site over the site's use of the school's UNC trademark both on the site next to pictures of nude women and in the domain name uncgirls.com. The University is seeking to have all of its trademarks removed from the site and the domain name.
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TRADE SECRET ISSUES

• Employees who take an employer's customer information are liable for the act, even if the customer information does not rise to the level of a trade secret. Link

COPYRIGHT ISSUES

• Superbowl champs sacked by the Supreme Court. An artist who sent a proposed drawing of a logo to the Baltimore Ravens when the team was picking its name, has won his claim that the team stole his idea. The Supreme Court let stand the lower court's decision in favor of the artist, thereby ending the team's legal challenge to the decision. Game over. Link
  
  
• The clash between copyright law and public views about downloading music continues. A new report suggests that the public's belief in free Internet music will be more powerful than copyright law, and that the music industry should begin developing new revenue models to protect itself rather than relying on copyright law to do the job. Link
  
  
• Another decision is gone with the wind. The U.S. 11th Circuit Court of Appeals has lifted an injunction prohibiting the publication of a Gone With The Wind sequel/parody (depending on your point of view), called "The Wind Done Gone." The book re-tells the original story, but from the perspective of a slave. The Court viewed the injunction as an improper prior restraint that violates the First Amendment. Link

PATENT ISSUES

• An error made by an applicant in the patent prosecution process will not be enforced as a limitation on interpreting the patent, so long as a person of reasonable intelligence would not be misled into relying on the error. Link

C. OWEN PAEPKE (602) 916-5384

ANNE L. KLEINDIENST (602) 916-5392

RAY K. HARRIS, Chair (602) 916-5414

RICHARD E. ONEY (602) 916-5303

DAVID K. GRAY (520) 879-6852

STEPHEN R. WINKELMAN (602) 916-5407

SUSAN STONE ROSENFIELD (602) 916-5317

STACIE KEIM SMITH (602) 916-5451

JAMES M. SHINN (602) 916-5436

SUSAN MOON (602) 916-5394