The Keys to Keyword Advertising
March 01, 2004
Until recently, courts have had relatively little to say about the practice of keyword advertising — <i>ie</i>, triggering Internet advertisements to appear when users search for a keyword identical to a competitor's trademark. Practitioners could look only to a single decision denying Playboy Enterprises, Inc.'s ("PEI") motion for a preliminary injunction against Netscape Communications Corp. ("Netscape") and Excite, Inc. ("Excite"). Now, four courts have recently issued decisions reaching starkly different results on keyword advertising practices, including a Ninth Circuit decision reversing summary judgment that had been entered against PEI in its litigation with Netscape and Excite. While much remains to be resolved, certain factors have been particularly influential.
FTC Approves 'Merger to Monopoly' in Innovation Market
February 10, 2004
The intersection of intellectual property and antitrust has been the subject of much fanfare over the past decade. The antitrust agencies have held numerous workshops where enforcement officials and practitioners have debated the scope and limitations of antitrust when such principles intersect with IP rights. The most notable work product generated as a result of this focus has been the 1995 Guidelines setting forth antitrust policy for the Licensing of Intellectual Property issued by the Department of Justice (DOJ) and the Federal Trade Commission (FTC).
IP News
February 10, 2004
Recent rulings of importance to your practice.
Utmost Caution: The Standard of Conduct for SSO Participants
February 10, 2004
The legal odyssey of Rambus, Inc. ("Rambus") over the last 4 years is a cautionary tale for companies that participate in standards-setting organizations (SSO) while developing and maintaining patent portfolios. Although Rambus has successfully defeated claims brought by Infineon Technologies, A.G. ("Infineon") that Rambus engaged in fraud while participating in an SSO, and while Rambus appears poised to beat back claims brought by the U.S. Federal Trade Commission (FTC), the cost to the company has been substantial.
Dilution Differences
February 10, 2004
The Federal Trademark Dilution Act (FTDA) provides that the owner of a famous mark is entitled to injunctive relief against another's use of a mark or trade name that causes dilution of the distinctive quality of the famous mark. In <i>Moseley v. V Secret Catalogue, Inc.</i>, 537 U.S. 418 (2003), the U.S. Supreme Court considered whether the FTDA requires proof of actual harm or merely a likelihood of harm. The Supreme Court's decision raised the dilution bar by holding that a prerequisite to relief under the FTDA is proof of "actual" dilution, <i>ie</i>, objective proof of actual injury to the economic value of the mark, rather than a mere showing of a presumption of harm based on a subjective "likelihood of dilution" standard.
IP News
January 01, 2004
Highlights of the latest intellectual property news and cases from around the country.
File Sharing: A Problem for Congress or the Courts?
January 01, 2004
Online digital file sharing enjoys massive popularity. Its wide use, however, threatens to destroy the interests of copyright owners. Yet, its broad consumer support and touted technological potential have raised questions about who should bear the risks of such activity, and who — <i>ie,</i> Congress or the courts — should make such determinations.
When One Patent Application Begets 10: Today's Hyperproliferative U.S. Restriction Practice
January 01, 2004
Restriction practice (<i>ie</i>, the restriction of a patent application to prosecution of a single claimed invention (per filing fee)) has been around since the mid-1800s. In recent years, hyperproliferation of restriction requirements, especially in the biotechnology, chemical and software arts, has occurred. It has not been uncommon for the U.S. Patent and Trademark Office (PTO) to assert that a patent application contains 10, 20, even 100 distinct inventions. In fact, the PTO itself recently stated that there had been an application in which the PTO had determined that there were 400,000 distinct inventions. Excessive use of restriction requirements has the potential to stagger a corporate patent budget, because multiple divisional applications must be filed to prosecute all claims, and hence, all "inventions" of the original application. If a company has budgeted for one patent application, it is then faced with filing multiple applications to receive the complete patent coverage that was envisioned. This leads to increased costs of the filing, prosecution and maintenance; multiplication of patents with overlapping subject matter and related claims; shortened statutory patent terms (depending on the timing of filing of the divisional applications), and a question of whether complete patent coverage is truly achieved by compartmentalizing the "invention" into many patents.
FTC Recommendations Seek Balance Between Competition and Patent Law
January 01, 2004
As has been widely reported, this past October the Federal Trade Commission (FTC) released a 300-page report titled "To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy." The report, including its 18-page executive summary, is available on the FTC Web site at <i>www.ftc.gov.</i> It is the end product of 24 days of hearings.
Selling 'Free and Clear': Will It Continue?
January 01, 2004
Section 363(f) of the Bankruptcy Code provides an extraordinary tool to trustees and debtors in possession -- the ability to sell property "free and clear." This unique power, unavailable to a seller outside bankruptcy, not only facilitates the tasks of liquidation or reorganization, but it may even be the critical incentive for entering bankruptcy in the first place. It has now become the principal focus of many Chapter 11 cases.
