FENNEMORE CRAIG I-LAW
May 7, 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.

• Stephen R. Winkelman, author of Fennemore Craig I-Law, represents and counsels clients on branding, trademarks, Internet, domain name, and other global intellectual property issues. Steve has significant experience managing worldwide trademark portfolios for domestic and international businesses in a variety of industries ranging from Fortune 100s to emerging start-ups; planning and implementing numerous trademark foreign filing programs; providing trademark clearance, prosecution and maintenance; counseling on copyrights, branding strategies, agreements, enforcement and international licensing; counseling, planning and implementing strategies for domain name acquisition and domain name protection; and successfully litigating numerous cases involving trademark, trade dress, copyright, cyberpiracy, domain name, false advertising and unfair competition.
  

• Steve received his B.A. (1985), in history, from the University of Michigan and his J.D. (1990), cum laude, from the University of Michigan. He is a Member of the International Trademark Association, the Intellectual Property Section of the State Bar of Arizona, and the Technology Law Section of the State Bar of Arizona.

• Rip it off. Rip it all off. Chippendales, the male dance review company, has sued a company that has been marketing itself as the Black Chippendales. Link

• ICANN has finished negotiations with the two companies that will be managing the new generic top level domains, .biz and .info. The ICANN board now has 7 days to object to the contracts, and if there is no objection, the contracts will be signed. The Department of Commerce will then need to approve the deals. Link
  

• The U.S. government has temporarily put on hold the controversial deal between ICANN and VeriSign that would extend VeriSign's control over the .com domain. The hold will last until May 14, so that the Department of Commerce has time to review the deal before deciding whether to approve it. Link

• This is not your father's domain name. A company upset with General Motors, has registered a domain name that includes an obscene word with "GM." Originally, typing in the domain name took one directly to GM's website. After GM complained, the domain name was pointed to Ford's website. Needless to say, neither Ford nor GM is pleased with the situation. Ford has sued to put a stop to the link. Link.

• You knew it was going to happen one day. Protest sites have been quite successful despite many legal questions about their viability. Now, WalmartCanadaSucks.com, a Wal-mart protest website, may be facing its own protest site, WallmartCanadaSucksSucks.com. [Unfortunately, the link to this news report has been removed from its website.]

• News reports state that the State Bar of Arizona has issued an ethics opinion telling commercial law firms that they should not use domain names that end in .org, as that suffix misleadingly suggests that the firm is not-for-profit. Link

COPYRIGHT ISSUES

• The measure of actual damages for a copyright claim is the value of a reasonable license..Link

• The U.S. Copyright Office has published rules that require radio broadcasters to pay royalties for an Internet simulcast of copyrighted works. Currently, broadcasters were exempt from paying such royalties for over-the-air broadcasts, but the exemption was not extended to the Internet. Link

• Is it a bird? Is it a plane? No, it's Copyrightman. Stan Lee, the creator of many comic book superheroes such as Spiderman, the Fantastic Four and Daredevil, has been sued for copyright infringement over his latest creation, an Internet superhero comic book series, The 7th Portal. Two individuals claim that Mr. Lee stole their prior work, which they had pitched to Mr. Lee in 1998. Link

• On May 1, the Second U.S. Circuit Court of Appeals held oral argument in a case to determine whether it is illegal to publish or link to DVD encryption-cracking technology. The case, previously reported in I-LAW, was brought by Hollywood against online hacker magazine 2600 regarding links to DeCSS software. Link Link

• The Recording Industry Association of America (RIAA) has threatened to sue a professor under the Digital Millennium Copyright Act (DMCA) if he publishes a paper explaining how he hacked through the digital music encryption technology adopted by the RIAA. To avoid a lawsuit, the professor did not publish the paper. Some are arguing that the situation gives ample ammunition to those who argue the DMCA violates free speech rights and should therefore be struck down by the courts. Link Link Link

• Napster users continue to thwart the company's efforts to use filtering technology to stop copyright violations. By changing file names, users stay one step ahead of efforts to filter out the alleged improper copying. Link

• Nyuk, Nyuk, Nyuk. The California Supreme Court held that an artist has not right to use the likeness of the Three Stooges on t-shirts. The Court held that Larry, Curley, and Moe's rights of publicity (through their heirs) trumped the artist's first amendment rights. Link

PATENT ISSUES

• The Acting Director of the U.S. Patent and Trademark Office testified that new legislation making business method patents more difficult to obtain was unnecessary. The testimony was given in early April before the House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property. Link

• In President Bush's proposed budget, the USPTO will have a spending cap of $1,139 million, even though revenues are expected to be $1,346 million. The $207 million difference will not be used to fund improved office operations, but instead used to fund the rest of the government. Link

• A website has created a gallery of the strange and amusing patents actually found in the Patent Office. No doubt the Peanut Butter and Jelly sandwich patent, as reported in a previous issue of I-Law, will soon be joining the list. Link

ONLINE & E-COMMERCE

• And the survey says... A new survey says that firms spent $2.8 billion in online marketing in 2000, an increase of more than 70% over 1999. Consumers were estimated to have spent $24.2 billion online. Link

• BountyQuest, the website that pays people to provide evidence that patented inventions were actually invented earlier by someone else (called "prior art"), says it has uncovered prior art that deals with part, but not all, of Amazon.com's one-click patent. The one-click patent is at issue in the suit between Amazon.com and BarnesandNoble.com. link

• Courts are reaching different conclusions on whether anonymous posters should remain that way. A federal judge in Washington has ruled on the side of privacy, holding that the identity of anonymous bulletin board posters could not be discovered even though the posters, in an investor chat room, allegedly posted defamatory information about a company. Link

• E-mails about the deluge of e-mails don't count. A new study shows that workers spend 49 minutes a day managing their e-mail. Link

• More than 75% of major U.S. companies monitor their employees by checking their e-mail, Internet, phone, or computer files or by videotape, according to a report just released. Link

• A single e-mail message sent to a plaintiff in Mississippi was sufficient contact for Mississippi courts to have jurisdiction over the defendant. Link

• An Internet webcaster's attempt to webcast the execution of Timothy McVeigh has been rejected by a federal judge. Link

DISCLAIMER

The information contained in this e-mail has been prepared by Fennemore Craig for informational purposes only and is not legal advice. It is provided only as general information which may or may not reflect the most current legal developments. This information is not provided in the course of, and receipt of it does not constitute, an attorney-client relationship, and it does not substitute for obtaining legal advice from an attorney licensed in your state. Legal advice should take into account the specific facts of your situation, and you should not draw any particular conclusions from the information presented here. You should seek professional legal counsel before acting upon any of the information contained in this e-mail. Before sending information to us, however, please speak with one of our lawyers and get authorization to send that information to us.

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