Domain Name Escrow Service

The Law Office of Michael N. Cohen, PC offers domain name escrow services. Most parties prefer the use of an experienced domain name attorney for the transfer of an important domain name to reduce the likelihood of fraud. Please visit our website for more information regarding our domain name escrow service.

Top Trademark Attorneys US 2008

The Law Office of Michael N. Cohen, P.C. is proud to annouce that it was ranked amoung the top trademark firms in the United States in the April 2009 edition of Intellectual Property Today Magazine.

Intellectual Property Today Magazine is a promenient monthly publication focused on legal issues in patent, trademark and copyright law.

Candy.com Domain Name Sells for $3,000,000!

Is this about the power of candy or the power of domain name real estate? It was reported that Candy.com was sold by the Florida based G&J Holdings for $3,000,000 to Melville Candy Company of Massachusetts. This is the same company runned by Rick Schwartz who sold iReport.com to CNN for $750,000. After the sale of toys.com sold earlier this year for $5,100,000, the candy.com sale is the second largest domain name purchase for 2009.

Hopefully Schwartz had his domain name attorney draft a solid domain name sale agreement so that there are no disputes regarding the transaction.

Supreme Court to Review Patent Case Regarding Business Method and Software Patents

The fate of business method patents may be decided very soon since the US Supreme Court has decided to take on Bilski v. Doll. The case will set a significant precedent that will impact the validity of business method and even software patents. The Supreme Court will review the US Court of Appeals for the Federal Circuit’s decision of Bilski which upheld a rejection of a patent application of a method for managing risk in commodities trading.

As of now, there is much debate as to the patentability of business methods and software, like in the Bilski case. Typically the issue is whether these types of patents are just too broad and/or abstract. The Federal Circuit narrowed the standard by stating patent law only protects inventive processes that involve a “particular machine” or “transform an article from one state to another.” The result of this decision would lead to greater scrutiny of business method and software patents. This is a departure from the prior standard of Section 101 which states “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent…”

So what’s at stake? Typically the software, finance, and pharmaceutical industries want less scrutiny and broader patent eligibility because they rely heavily on these types of patents. Many companies in these industries could lose existing and future patents rights if the stricter machine/transformation test above stands. Will this lead to an increase of Section 101 challenges to a patent’s validity in patent litigation? Probably if the Supreme Court allows Bilski to stand.

Interestingly, remember my prior blog about Sonia Sotomayor and her background in IP law? If the timing is right, she may be involved in reviewing Bilski. Hopefully, the decision will be a thoughtful one given her expertise in IP litigation.

Domain Name Dispute of googblog.com With Google’s Trademark

Google came out victorious in a cybersquatting case against the owner of googblog.com. Just who owned googblog.com? A 17-year-old boy named Herit Shah from Gujarat, India. Google filed the dispute through the World Intellectual Property Organization (“WIPO”), claiming that googblog.com is confusingly similar to Google’s trademarks.

Further, Google uses ‘GOOG’ as their NASDAQ financial stock ticker since 2004. Google claims trademark rights to the term ‘Google’ as far back as 1997.

Google’s domain name dispute lawyer got Shah to admit “I was in a bad faith that i can legally keep the domain googblog.com but when i kept myself in the place of google i understood i really did very unfair to google. since two weeks i have been trying to delete the domain googblog.com, but i am unable to because godaddy has put my domain on hold, on your consent godaddy may delete the domain or unhold it. I sincerely apologise to Google for infringement, misuse of their intellectual property (GOOGBLOG.COM).”

Pre-litigation negotiations between the Google and Shah failed. Google was only victorious when it was forced to file the Complaint through WIPO. That’s why it’s critical to discuss domain name disputes early with your domain name dispute attorney. See Google Inc. v. Herit Shah
Case No. D2009-0405.

Sonia Sotomayor an Intellectual Property Attorney?

It turns out President Obama’s nominee to the Supreme Court was a partner at a firm that handled intellectual property litigation. In fact she ruled on an important copyright case, Tasini vs. New York Times, while she served as a federal judge for the U.S. District Court of the Southern District of New York. However, the case was later reversed by the appellate court and was then appealed again by the U.S. Supreme Court, in New York Times Co v. Tasini 533 U.S. 483 (2001). The case involved a claim of copyright infringement brought by freelance journalists against the New York Times and other news organizations (the “publishers”), when the publishers distributed articles written by the journalist to Lexis/Nexis, a legal database, without the permission of the journalist. The publishers claimed a privilege accorded collective work copyright owners by §201(c) of the Copyright Act.

At the District Court level, Sotomayor ruled in favor of the publishers, claiming that they were entitled to reproduce the articles within Lexis/Nexis under the protection of the collective work copyright. (The collective copyright entitles the copyright owner rights to the collection as whole, but not to the individual authored works which are separately copyrighted works). However, both the appellate court and the U.S. Supreme Court reversed Sotomayor’s decision ruling in favor of the freelance journalists.

The Supreme Court reasoned that as the articles appear in Lexis/Nexis, they do not appear as a collective work, rather “[w]hen the user conducts a search, each article appears as a separate item within the search result.” The Court further stated “the Database does not reproduce and distribute the article ‘as part of’ either the original edition or a ‘revision’ of that edition."

Obtaining Your Domain Name Back From Cybersquatters Through UDRP

A common scenario for established or new companies occurs when its primary domain name has been seized by a cybersquattor. For example, imagine your company name and trademark is “Sizaroma.” You were able to register www.sizaroma.com but later www.sizaroma.net, www.sizaromas.com, and www.sizaaromas.com were registered by someone else, probably a guy in China who in bad faith, has no intention of ever using domains. Or worse, he later puts up a competing website in bad faith with similar goods and services feeding off the goodwill that you have worked so hard to create. That my friends is a cybersquatter. So what are your options? One of the best is a Uniform Domain Name Resolution Policy proceeding (“UDRP”). A UDRP is like a streamlined litigation done with an arbitration panel, usually with the National Arbitration Forum or WIPO. A complaint is filed, and the cybersquatter is allowed a chance to respond. You do not have to serve the defendant like in a typical lawsuit. Nor is there a trial or any discovery. Further, there is no jurisdictional issues, so if the defendant is in China, a claim can still be made against him.

The net result is a transfer of the domain name. No money damages or injunction from using the trademark can be issued in UDRP, rather it's strictly about getting your domain name back. So the beauty of UDRP is that it is straight to the point, and can be completed within a few months rather than a long dragged out litigation that could last for a year or longer.

There are however other means for domain name disputes, such as filing a federal lawsuit under the Anticybersquatting Consumer Protection Act ("ACPA"), or perhaps a traditional trademark infringement lawsuit. An IP attorney would have to evaluate each scenario to determine the most appropriate method.