Patent Quality Improvements in the Works at the USPTO
June 29, 2006
In its ongoing efforts to improve the examination of software patents and resolve continued concerns over their quality, the U.S. Patent and Trademark Office ('PTO') has partnered with IBM, Open Source Development Labs ('OSDL'), and the open source community to try and achieve this goal. Among the proposals is the idea of establishing a searchable database containing an index of open source computer code. This database should make it easier for software code developers and patent examiners to locate relevant prior art.
The Bad News Is, You Have a 401(k) Plan
June 29, 2006
The good news is your firm has a contributory retirement plan and you are a participant. The bad news is that to manage your money, control much of your retirement destiny and thus the future financial welfare of you and your family, your firm has placed this responsibility in the hands of someone who is almost certainly clueless about such matters.<br>That person is you.
Do Keyword Search Terms Constitute 'Use' of a Trademark?
June 29, 2006
It has been judicially noted that '[t]he Court must avoid excessive rigidity when applying the law in the Internet context because emerging technologies require a flexible approach.' <i>Edina Realty Inc. v. TheMLSonline.com</i>, D. Minn., No. 04-4371, March 20, 2006, <i>citing Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp.</i>, 174 F.3d 1036, 1054 (9th Cir. 1999) (4 ECLR 384, May 5, 1999). Recently, conflicts involving one of the emerging Internet technologies, namely sponsored online key word advertising, have yielded, not only judicial flexibility, but also a fair amount of ambiguity in applying the laws of trademark infringement in Internet advertising contexts. Two recent federal district court decisions on the issue ' <i>Edina Realty v. TheMLSonline.com</i>, D. Minn., No. 04-4371, March 20, 2006; and <i>Merck & Co. Inc. v. Mediplan Health Consulting Inc. d/b/a RXNorth.com</i>, S.D.N.Y., No. 05 Civ 36550, March 30, 2006 ' illustrate the current legal muddle in their diametrically opposite conclusions on the threshold question at the heart of each analysis: Does the purchase and use of key word search terms constitute 'use' of a trademark under the Lanham Act?
In re EchoStar Communications: Implications for Opinion Practice in Patent Cases
June 29, 2006
The Court of Appeals for the Federal Circuit finally has opined on the scope of waiver of privilege in patent infringement litigation when an accused infringer relies on an attorney opinion to defend against a charge of willful infringement. <i>In re EchoStar Commc'ns Corp.</i>, 2006 U.S. App. LEXIS 11162 (Fed. Cir., May 1, 2006).
Future Of Online Dispute Resolution Is Being Tested
June 29, 2006
How a federal judge in Trenton, NJ, rules in a patent infringement case could decide the future of online dispute resolution. <br>The case pits Cybersettle, the White Plains, NY, leader in the field, against National Arbitration Forum (NAF), a Minnesota-based company hired to administer New Jersey's No Fault Automobile Insurance Personal Injury Protection (PIP). At the end of May, U.S. District Judge Mary Cooper heard arguments on cross motions for summary judgment on the scope of Cybersettle's 2001 patent, No. 6,330,551, for a 'computerized dispute resolution system and method.'
Bloggers Entitled To Immunity
June 29, 2006
Bloggers cannot be hit with libel suits on the basis of anonymous postings on their Web sites because federal law grants them immunity by explicitly stating that they cannot be treated as the 'publisher' of such comments, a federal judge has ruled.
Who Inherits Your e-Mail?
June 29, 2006
The Internet has allowed new assets to spring into existence for consideration by competent tax and estate planners. All Internet assets are intangible personal property ' they cannot be seen, felt or perceived by the ordinary senses. For tax and estate planning purposes, each Internet asset is subject to one of three different legal classes.
Asset Creation, Seclusion And Money Laundering In The Virtual World
June 29, 2006
As more and more people take up residence in the virtual world ' sometimes also called digital or synthetic worlds ' through their participation in one of the many 'Massively Multiplayer Online Role-playing Games' (MMPORGs) currently available online, the potential for monetary abuse and malfeasance also increases. While the original virtual worlds were built by private gaming companies for their subscriber base and were fully controlled by the designers and their all-encompassing End-User Licensing Agreements (EULA), new MMPORGs have emerged that provide individual players with more freedoms ' including the ability to create, seclude or launder wealth. The likelihood of this new technology being co-opted for unscrupulous purposes is great, since historically the same has happened in response to other advances in technology.
Retroactive Licenses and Claim Settlements: The Law of Unintended Consequences
June 29, 2006
It is fairly typical for an owner of intellectual property who has convinced an infringer to cease and desist the infringing activity to offer a retroactive license covering the period of past infringement as part of the settlement agreement. Granting a retroactive license to the direct infringer can be dangerous, however. Not only will the license forgive the direct infringement; it also will erase any possible inducement or contribution claim the patentee has against a third party. Because the retroactive license is unnecessary in most cases, before granting it a patentee should be very certain it has no inducement or contribution claims against third parties.
