FENNEMORE CRAIG I-LAW
November 20, 2000

As a friend of Fennemore Craig, we thought you might be interested in Fennemore Craig's I-Law, a bi-weekly e-mail from Fennemore Craig's Intellectual Property Group that provides an update on e-commerce, Internet, trademark, patent, licensing and copyright news. Each issue will contain a sentence or two about the latest story with a link for those who want additional information. Periodically, on particularly important news, a more in-depth analysis will be provided.

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.

If you have any questions or comments, please contact Steve Winkelman at swinkelm@fclaw.com or 602.916.5407.

Fennemore Craig
www.fennemorecraig.com
602.916.5000

Fennemore Craig News Online & E-Commerce Domain Names
Copyrights Trademarks Patents

FENNEMORE CRAIG NEWS

Steve Winkelman and Rich Oney have joined Fennemore's IP group. They bring years of experience in the areas of trademarks and patents. Rich Oney has joined the firm as a Director and Shareholder, and Steve Winkelman has joined the firm as Of Counsel. Oney will practice in Intellectual Property, Patent Law, Internet, and E-commerce Law. Winkelman will also practice in Intellectual Property, Internet, and E-commerce Law, as well as Trademarks, Branding, Domain Names, and Copyright Law.

Oney was formerly with the Weinberg Legal Group and previously had his own law firm, Oney Law Firm. He is a former director of the World Trade Center Arizona and is currently a member of the Maricopa County and American Bar Associations in the Intellectual Property, Business Law, and Litigation Sections. Oney is also a current member of the Intellectual Property and Business Law Sections of the State Bar of Arizona. He is a member of the Arizona Patent Law Association and a founding member and former director of the Arizona Software & Internet Association (formerly known as the Arizona Software Association).

Winkelman was formerly with the Weinberg Legal Group. He is a member of the Maricopa County and Federal Bar Associations and is a member of the Intellectual Property Section of the State Bar of Arizona, National Institute for Trial Advocacy, and International Trademark Association.

ONLINE & E-COMMERCE ISSUES

On October 1, 2000, the U.S. e-signature law went into effect making electronic signatures as legally binding as penned signatures. Link

  • Congress is also considering attaching language to appropriation bills that requires schools and libraries to use Internet filtering software. Link
  • While music soothes the savage beast, neither law nor technology soothes the online consumer enough to stop online music sharing. Indeed, despite new security technology and a legal finding of infringement against the online music sharing company NAPSTER, it does not appear that online sharing of content by online users will be declining any time soon. Link
  • Nonetheless, the Recording Industry keeps trying. In the first half of 2000, the Recording Industry Association of America (RIAA) notified 4,500 websites that they were illegally trafficking in copyrighted works. Link
  • Also, MP3Board.com had dismissed its lawsuit seeking a judgment against the Recording Industry declaring that linking to commercially successful songs on other websites was legal. This means that this critical linking issue will be heard as part of the separate copyright infringement lawsuit brought by the big boys in the recording industry against MP3Board.com. Unlike Napster, MP3Board.com does not give out software that copies music on the Internet, but instead only indexes and provides links to such music. Link
  • Joker. Joker. Joker. Nevada has approved online gaming for Nevada residents. Link
  • In an interesting case that highlights the problem of national jurisdiction in a borderless eworld, the City of Chicago wants to sue the owners of a website that has put U.S. Presidential votes up for sale. The problem is the site is hosted in Bulgaria by a company in Austria. Link
  • Professors who sued a website for publishing students' negative reviews of their classes withdrew the suit and paid the website's attorneys' fees in order to settle the matter. Link
  • ebay's etrouble. A lawsuit against ebay may proceed (after refiling) on the theory that ebay failed to police the legitimacy of sport memorabilia items sold on ebay that turned out to be fakes. Obviously, liability for the accuracy of auctions would be a severe blow to ebay, which lists 4 million items every day. Link
  • Viewing porn can be dangerous to one's employment. Merrill Lynch let go 15 more U.K. employees who were using the company's computers for more than obtaining the latest stock quote over the Internet. Link

DOMAIN NAMES

  • ICANN has announced that new gTLDs will soon be available to supplement .com, .net and .org, but no decision has yet been made as to what they will be. The proposed new gTLDs were included in the 47 applications filed with ICANN. Will there be .web? .art? .sex? .info? .site? .tel? No one knows (at least not until November). ICANN is also releasing more details on how registration of the new domain names would be handled. Some proposals would allow trademark holders first crack, while others would not. But this has not stopped some entrepeneurs (or speculators, depending on your point of view) from rushing to the trademark office to register various trademarks ending with any number of possible new TLDs. They believe that they can use these intent-to-use trademark applications to secure rights in new TLD domain names. Link Link Link Link
  • ICANN also has okayed a new top level country code, .eu. Link
  • At the end of October, Asian languages will be available for domain name registrations. Link
  • The ICANN Uniform Dispute Resolution Policy is widely seen as a success, but concerns about inconsistency, lack of standards and copyright issues have been raised. Link
  • On a related note, according to recent reports, trademark owners are winning 80 percent of cases under Uniform Dispute Resolution Policy proceedings. Recent winners include Reuters and Chanel. Link
  • NSI is being sued for refusing to release expired domain names for purchase by others. Link
  • Celebrities continue their hot streak in recovering domain names. Among others, the pop singer Madonna has recovered the domain name madonna.com from a pornographer. Madonna had smartly registered her name as a trademark with the U.S. government some years ago. Link Link Link
  • On the other hand, a WIPO arbitrator has recently held that fan websites, like bridgetjones.com have some limited protection in UDRP proceedings. Link

COPYRIGHT ISSUES

  • Another political flip-flop. The House has passed a bill reversing last year's decision to take away a recording artist's right to reclaim ownership of old recordings after 35 years. Last year's change had been passed without discussion or a hearing. No word yet on whether the Senate will go along. Link
  • One of the major problems with copyright law is that it applies photocopy thinking to cut-and-paste technology. The 11th Circuit is facing how to apply the old law to one aspect of today's new technology in a case involving copyrights for photos in National Geographic Magazine. The magazine republished the photos in a CD-ROM compilation of its magazines, and the photographer claims this violated his copyrights. National Geographic argues that the CD-ROM is just a reprint of the original magazine, just like a microfiche copy. The issues are similar to those raised in the Tasini case, which is now pending in the U.S. Supreme Court. In that case, the Second Circuit held that newspapers must obtain new permission from free-lance writers to republish their works on-line or through electronic news services. Link

TRADEMARK ISSUES

  • In a very important "keyword" decision, a Federal District Court has ruled against PLAYBOY and held that a search engine did not infringe PLAYBOY'S trademarks by selling banner advertising to other adult content sites that would pop up whenever someone searched for the term PLAYBOY. The judge viewed this use of PLAYBOY as a non-trademark use. Link
  • A trademark office guideline was issued on August 15 to address how the USPTO will handle applications to register trade dress and colors in light of the U.S. Supreme Court's decision in Walmart Stores v. Samara Brothers. Link
  • Attorneys' fees in the amount of $300,000 were awarded to a trademark owner in a lawsuit against a cybersquatter. The court ruled that the cybersquatter's infringement was intentional. This case is also interesting because the judge held that the trademark E-STAMPS was not generic. Link
  • Apparently without consulting with the E-STAMPS judge, the U.K. Trade Mark Registry has released a circular discussing how it will handle marks that have an "e-" or "m-" prefix. Link
  • A judge has ruled that ".web" (and presumably other gTLDs) are generic and cannot be registered as trademarks. Link
  • Several people think the term "ebook" is generic for electronic books, but this has not stopped Gemstar-TV Guide International, a large publisher, from trying to register the term as a trademark. While registration may not be likely, smaller e-publishers are worried about having to fight the publishing giant over the issue. Link
  • The Fourth Circuit Court of Appeals has ruled that 3 years non-use of a trademark does not necessarily demonstrate abandonment of a mark. Rather, 3 years of non-use is prima facie evidence of abandonment which can be rebutted by objective evidence of an intent to resume use. In the case before the Court, a fire engine company's 3 years of non-use of a mark on fire engines constituted a prima facie case of abandonment. However, the abandoment claim was rebutted by the company's continued use of the trademark on t-shirts, hats, and other marketing paraphenalia. Link
  • American Online's use of "ONLINE TODAY" only in a drop down menu was sufficient trademark use to avoid abandonment of the mark, according to the U.S. Federal Circuit Court. Link

PATENT ISSUES

  • BarnesandNoble.com and Amazon.com continue to fight over Amazon.com's one-click patent. Link
  • A bill that would make it harder to obtain a business method patent for taking a brick-and-morter technique and applying it to the online world has been introduced to Congress. Nothing is likely to happen on the bill this year, but who knows what a new election will bring. Link
  • Software patents are not common (or legal) in most of Europe, but powerful corporate interests want to change that. 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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