Cybersquatting of New Domain Names

Here’s some interesting news: The likelihood of cybersquatting remains high for .com's but is much less ICANN’s new domains. According to a recent study by a top-level domain (TLD) consulting firm called Minds+Machines, internet domains other than .com (such as .net, .biz and .info) aren’t currently pursued by cybersquatters. Furthermore, the study suggests that the new assortment of generic top-level domains (gTLD’s), recently created by ICANN will not attract cybersquatters either. These domains include .mobi, .cat, .name, .asia, .pro, .tel and .travel.

The study was conducted thusly: Minds+Machines examined domain name registration of more than 1,000 Fortune 100 brands. They reason that if a trademark name is available at a domain, neither the company nor cybersquatters are concerned with the open real estate. The danger of trademark infringement is assumed to be low, given the apparent lack of interest in the site. According to the study, 100 percent of the companies were registered in .com sites. The already-established gTLD’s outside of .com (.org, .net, .biz and .info) had between 65 and 87 percent name registration. The new categories mentioned above had less than 30 percent registration.

These numbers do show that cybersquatting is an issue in the .com category. However, they fail to prove anything about the future of internet domain value. Will these new domains continue to be ignored in the long term? It’s hard to say. Current internet patterns may not be indicative of the future. Fifteen years ago, could anyone have predicted the current power of social media?

AMEX Black Card Trademark Infringement

American Express’s Centurion Card, also known as the “black card” has become an iconic status symbol in American pop culture. The card has no limit and a whopping 2,500 annual fee. Introduced in 1999, the card quickly gained attention in books, rap songs, and TV shows. American Express really had a hit on their hands. But they didn’t trademark it. Visa actually owns www.blackcard.com, more recently in mid 2009, granted issuance of a registered trademark for Black Card.

Last month, Amex filed a complaint with the New York district court, alleging that Visa has:
“perpetrated a scheme to confuse the public and misappropriate for itself the enormous goodwill of the Centurion Card by launching its own, imitation “Black Card” that not only rips off the Centurion Card’s “Black Card” alias, but also, as shown below, copies the trade dress of the unique, distinctive Centurion Card. Even more brazenly, defendant (which audaciously incorporated under the name Black Card LLC and promotes its card at the website www.blackcard.com), is seeking to register a family of BLACK CARD trademarks so that it can claim the exclusive right to use that mark, which the public long has associated exclusively with the Centurion Card and American Express.”

American Express is going to be fighting an uphill battle. The term “black card” was widely used to refer to the card almost from its inception. It’s unthinkable that Amex didn’t immediately slap a trademark on it. Through the power of 1B intent to use applications, Visa was able to lock in an application in 2005 even though they didn't start using "Black Card" until 2009. AMEX will have to prove its priority of use and association of the term "black card” in the mind of consumers.

Baseball Trademark Infringement Slugout with Major League and Upper Deck Trading Cards

Last week, Major League Baseball settled a trademark infringement case against the Carlsbad, CA based trading card company, Upper Deck. Upper Deck failed to completely eliminate the MLB logo from some lines of their 2010 baseball cards.

Although Upper Deck’s 2010 baseball cards did not display MLB’s logo on any of its packaging or cards, the logo was visible in certain photos, on several of the players’ uniforms and hats. Upper Deck failed to airbrush off the logos. And yes, even a minuscule MLB logo on a player’s hat is still a trademark. Exclusive rights to a trademark mean exclusive rights.

In October of last year, rights to the MLB name and logo were given to Topps Company, Inc., Upper Deck’s main competitor.

The settlement wasn’t for small change, either. Just one specific part of the settlement, for certain 2009 misuses of the logo, was for $2.4 million dollars. In addition to that, Upper Deck must pay MLB an amount for the unlicensed cards it sold in 2010. Further, Upper Deck must get MLB's approval for any future use of baseball jerseys, pants, jackets, caps, helmets or catcher’s equipment in products featuring players.

Should’a double checked, before they hit the print button…

Trek Trademark Infringement...Dismissed!

In true David vs. Goliath style, an obscure California winery held its ground in court yesterday against Trek, the largest U.S. manufacturer of bicycles and related products. Novato-based Trek Wines was sued by Trek Bicycle Corporation in October 2009 for trademark infringement, in the matter of Trek Bicycle Corporation v. Trek Winery, LLC, in the Western district court in Wisconsin. Trek Bicycle Co. accused the winery of federal and state trademark infringement when three cases of their wine made it to Wisconsin (Trek bikes’ home state) last year.

U.S. District judge Barbara Crabb granted Trek Wine’s motion to dismiss, stating that “Plaintiff cannot argue seriously that three isolated sales show that defendants have made such purposeful availment of the benefits of Wisconsin’s laws that they could reasonably anticipate being hauled into court in this state.” According to the North Bay Business Journal, two of the cases sold in Wisconsin went to relatives of Trek Wine owners. The other was sold to a Trek Bicycles employee, according to Judge Crabb, “to confirm that defendants were able and willing to sell wine into the state.” (Come on Trek, a setup?)

American small business owners can rest assured; their registered trademarks are every bit as valid as those registered by the big boys.

Facebook Patent Unleashed!

Facebook obtains potentially powerful patent on Newsfeed technology

In 2006, Facebook filed a patent application on its much-imitated Newsfeed technology. Last week the patent was granted. Facebook has yet to announce any plans for legal action, but Web sites all over must be feeling more than a little apprehensive. After all, Twitter is essentially one big news feed. Google, Myspace and Flickr all use a similar technology.

The USPTO granted coverage to “the generation of activity elements associated with a user through a social network, tethering an information link associated with at least one these activities, limiting access to material in question to a predetermined list of users and assigning an order of publication for these different elements.”

Before Facebook sues anyone for patent infringement, it must consider the potential fallout from such a drastic move. In 2007, when Facebook tried out its first News Feed technology, called Beacon, users felt violated and many deleted their accounts. Mark Zuckerberg, Facebook CEO, issued a public apology and rescinded the service (although it slowly crept back in without any large-scale reactions). Facebook better use its new weapon of mass destruction tactfully. But it probably will use it. Stay tuned…

Software Patents and Business Methods Patents, Are They Patentable?

Are software and business methods patentable? If you have been Googling the topic recently, you may have heard that the US Supreme Court and the Federal Circuit have heard a series of different cases during the past few years regarding it. Before I get into the history below, the short answer is still generally yes for software patents, with exceptions, but probably not for pure business methods, with exceptions of course!

Some of the earliest cases in the 70’s held that abstract ideas are not patentable, thus computer software which is composed of algorithms/mathematical concepts were held not to be patentable. This was an initial strike against software patents! Later in the 80’s the Supreme Court ruled on Diamond v. Diehr. The patent in question related to an invention for a method to determine how rubber is heated so it can be best “cured.” The invention was tied to a computer that calculated heating times of the rubber. The claims included a computer program claim and method claims. The Supreme Court held that the invention was not simply a mathematical algorithm, but was a valid process and
therefore patentable.

Throughout the years however, other cases came out that conflicted with Diehr. It wasn’t until the 90’s, in the seminal Supreme Court case of State Street Bank v. Signature Financial Group, which seemed to clarify the patentability of software patents. This patent related to a method of running mutual funds. Again, the issue revolved around the patentability of a mere mathematical algorithm or business method. The Supreme Court held the patent as valid and thus allowing a business method to be patentable subject matter. A key point was that the software must yield a “useful, concrete and tangible result”. So for many the feeling was that the patent claims needed to be drafted such that the software or processes were tied to a computer or processor to achieve a useful, concrete and tangible result to be patentable.

Fast forward to 2008, the Federal Circuit ruled on the In re Bilski matter which garnered a lot of media attention as to the patentability of business methods and computer software. The main claim at issue in the Bilski patent was for a method of hedging risk in the field of commodities trading. The claim was considered to be a pure business method because it dealt with simply a mental process (information that is analyzed and acted upon). The Court walked away with a new test requiring that a process is patentable if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." This new machine-or-transformation test really called into question pure method claims, and software method claims as well.

Then in late 2009 the Bilski matter was pushed to the Supreme Court to decide if the machine-or-transformation test is a proper test to determine patentability of business methods. The Supreme Court will rule on the case sometime in mid 2010. Upholding of Bilski will likely require all business method patent claims to be tied to a machine and require processes to either transform an article or be timed to a machine. More will follow after the Bilski decision later this year!

Copyright Infringement Harry Potter Style

A 36 page children’s book from a now-deceased and totally obscure British author may have lead to Harry Potter. Last week, the Associated Press reported that J.K. Rowling and her publisher are being sued for copyright infringement.

The estate of Adrian Jacobs, who died penniless in 1997, alleges that Rowling’s fourth book, “Harry Potter and the Goblet of Fire,” was lifted from “The Adventures of Willy the Wizard,” written by Jacobs in 1987. The trustee of Jacobs’ estate, Paul Allen, is suing for over $500 million pounds.

According to Rowling: “The claims that are made are not only unfounded but absurd, and I am disappointed that I, and my UK publisher Bloomsbury, are put in a position to have to defend ourselves.” Unfortunately for Jacobs’ estate, it will be hard to prove that Rowling did in fact plagiarize. Mere ideas are hard to copyright, and from the sound of it, that’s all Jacobs had. Wizard and magic lore is hardly unique intellectual property. Copyrights are given for the execution of a work.
Apparently, Allen’s attorney, Max Markson, has a different view. He was quoted saying he thinks it’s a billion-dollar case