domain-name-http- www.jpgSan Diego – Recently, ICANN (Internet Corporation for Assigned Names and Numbers) announced a new plan to dramatically increase the number of generic top-level domain names, or GTLD’s, by the end of 2012.  With the expansion of possibly hundreds of additional GTLD’s, this could mean a deluge of opportunities cybersquatters and problems for trademark holders.

Internet addresses will now have a completely different look with domain names ranging from broad terms such as .auto to more specific ones like .canon.  What this means for trademark owners is that they will have new opportunities to reinforce their brand.  However, with those new opportunities come more expenses and challenges with protecting and defending the trademarks at issue.

ICANN foresees these issues with the expanded GTLD database and is working toward solutions.  For example, it is utilizing a trademark clearinghouse to track registered domain names and will rapidly take down any domain names that are found to be infringing trademarks.  ICANN expects to see thousands of domain applications for .eco, .green, .berlin, and .paris, among many others.  Its new system will be able to accommodate names written in native scripts like those from Asia.

The fees associated with registering these new domains are quite costly, to say the least. Applicants who want to operate new, top-level domains from January 12, 2012 to April 12, 2012 can expect an application fee of $185,000 and an annual fee of $25,000.   However, many businesses looking to protect their valuable trademarks may be compelled to set up a registry of their own to thwart cyber squatters.  In some instances, the rights to a top-level domain registry may be decided through an auction, which could increase costs to businesses even more.

For larger companies with deep pockets, the opportunities outweigh the costs.  Companies that want their brand names in the public eye as much as possible will be able to get more of a brand-name look on their web addresses. 

jail.jpgLos Angeles – Twenty-three-year-old British computer student, Richard O’Dwyer is facing possible extradition to the United States to be charged with copyright infringement for illegally linking copyrighted material to a website that he created.

The website, TVShack.net which is now showing a government notice that is has been seized,  had links to thousands of movies and television shows, but did not directly host them.  O’Dwyer was arrested on May 23 in England, and then released after a family member posted his bail. 

If O’Dwyer is brought back to the U.S., he could be sentenced to up to five years in a federal prison if found guilty of copyright infringement.  O’Dwyer and his family are fighting the extradition attempt and are pleading with the UK government to deny the extradition demand because they believe the charges are disproportionate, unnecessary, and deeply traumatic.  O’Dwyer’s mother apologized for her son’s foolishness and claims that he did not understand U.S. copyright laws and the implications for breaking them.

O’Dwyer’s attorney is also defending Gary McKinnon, the alleged military hacker.  McKinnon also faces extradition back to the United States.  The fact that O’Dwyer’s website never actually hosted any of the copyrighted material and that the server was not based in the U.S. may be adequate defense to keep him from being extradited.

San Diego – Best Buy recently sent a cease and desist letter demanding that online retailer Newegg cease use of “Geek On” in an advertising campaign.  Best Buy also objects to the colors used in the Geek On logo – primarily black and orange – which happen to be the same colors used in Best Buy’s Geek Squad logo.   

To make matters worse, Newegg also made fun of Best Buy employees in a recent TV commercial (see embedded video), and is publicizing Best Buy’s cease and desist letter and Newegg’s response.  In fact, Newegg posted the reply on its facebook page.  The page is complete with the following swipe at Best Buy: “However, we do not wish to offend any Best Buy employees, so in response [to the cease and desist letter] we’ve added a disclaimer to our videos:  

“THIS ADVERTISEMENT PHOTOPLAY IS A WORK OF FICTION. ANY SIMILARITY TO REAL PERSONS (LIVING OR DEAD), BUSINESS ESTABLISHMENTS, PLACES, EVENTS, OR OTHER MATERIAL IS COINCIDENTAL AND UNINTENTIONAL. IT IS SOLELY INTENDED TO PARODY AND DRAW ATTENTION TO ANY BUSINESS ESTABLISHMENTS (BUT NONE IN PARTICULAR) THAT PROVIDE POOR CUSTOMER SERVICE, AND NO INFERENCES SHOULD BE DRAWN ABOUT THE IDENTITY, AFFILIATION OR LOCATION OF ANY PARTIES OR BUSINESSES DEPICTED. NO ANIMALS WERE HARMED IN THE MAKING OF THIS COMMERCIAL.”

With the recent facebook posting and the ramping up of the mocking it seems clear now that Newegg’s entire Geek On advertising campaign could be to poke fun at Best Buy the way Apple did in its commercials that poked fun at Microsoft.   Hopefully Best Buy is aware of this by now and has something interesting up its sleeve.  Stay tuned.

cell-phone.jpgLos Angeles – Microsoft, Nokia, Hewlett Packard, and other technology companies joined forces in filing objections to Nortel’s proposed bankruptcy sale of more than 6,000 patents to Google, claiming that the deal would give Google an unfair advantage in the cell phone business.  

Nortel is a Canadian telecommunications company that filed for bankruptcy protection in January 2009.  As of June 13, the deadline for bids to be submitted, Google was the highest bidder, offering to pay $900 million to Nortel for the patents. The winning bidder will walk away with a formidable patent portfolio that will give it rights to develop and license certain technologies used in wireless phones and infrastructure, Internet search, and social networking.  LTE, one of the patents in the portfolio, is a 4G mobile-data technology that could be valuable for future generations of smartphones.

The companies opposing the sale to Google are concerned with the terms of the sale and insist that they be modified to protect the rights of license holders and standard-setting bodies.  In papers filed Monday in United States Bankruptcy Court in Wilmington, Delaware, Microsoft stated, “Without changes, the proposed sale would result in considerable disruption in the development and enhancement of various existing technologies and give the prospective purchaser an unfair competitive advantage.”

Microsoft added that the winning bidder should be required to clarify what rights companies and standard-setting groups may have to use Nortel’s patented technologies.  According to the proposed sale contract, Google has agreed to purchase the patents that are “subject to” most existing licenses.  The auction is scheduled for June 20.  Many are speculating that this will be the biggest patent portfolio sale in history.

clouds-desert.jpgSan Diego – With Apple’s new iCloud service barely out of the gate, Apple has already been sued in the US District Court in Arizona for trademark infringement.  The plaintiff is a company called iCloud Communications.  While the Arizona-based iCloud alleges that it has used the iCloud trademark since 2005, it apparently has never registered the trademark with the U.S. Patent and Trademark Office.  That mistake is likely to cost the company lots of money. 

In its complaint, iCloud Communications alleges that it provides cloud computing services in addition to VOIP and other services.  In addition to having spent more than $500,000 building up its data center and telecommunications hub in Phoenix, the company claims to have spent tens of thousands of dollars per year on marketing the trademark. 

On June 1, 2011, Apple filed 11 iCloud trademark applications including this one which appears to cover the primary services at issue.  Five days later on June 6, 2011, Apple made the official iCloud announcement.  Though iCloud Communications claims that Apple was aware of its rights to the iCloud trademark, such a claim is greatly weakened by the fact that iCloud Communications has never registered the iCloud trademark federally.  As of this writing, iCloud Communications curiously still has not filed a trademark application for iCloud.

iCloud Communications’ states that Apple’s size and marketing power has already caused irreparable harm stating: “[D]ue to the worldwide media coverage given to and generated by Apple’s announcement of its ‘iCloud’ services and the ensuing saturation advertising campaign pursued by Apple, the media and the general public have quickly come to associate the trademark ‘iCloud’ with Apple, rather than iCloud Communications.”

We assume that the case will settle with a payment from Apple to iCloud Communications which will likely change its name.

supreme_court.jpgLos Angeles – The United States Supreme Court upheld a 2009 decision that Microsoft must pay $290 million in damages in a patent infringement case involving its Word software technology.  In doing so, the court upheld the current clear and convincing standard for invalidating patents.

In 2009, Microsoft was found guilty of infringing on patents of i4i, Inc.., a decision which it appealed.  The Toronto-based i4i is a world leader in the design and development of collaborative content solutions and technologies.  i4i currently holds the patent for building a method of processing custom XML, which a jury found Microsoft guilty of infringing on with its 2003 and later versions of Word.

As we reported in an earlier Microsoft vs. i4i Patent Lawsuit May Rattle Tech Industry blog post on April 21,  Microsoft was seeking to change the laws for invalidating patents.  Typically, in order to invalidate a competitor’s patent, clear and convincing evidence must be proved, a standard that makes it difficult to invalidate patents once they are granted.  Instead, Microsoft and others were pushing for the less formidable “preponderance of the evidence” standard, claiming that it would level the playing field for both parties in a patent infringement case. 

Unfortunately for Microsoft, the high court did not agree with its argument for the new standard.  Supreme Court Justice Sonia Sotomeyer argued that the current stricter standard has been upheld by Congress for years and has never been under consideration for change.  She stated, “any recalibration of the standard of proof remains in its hands.”

bus.jpgSan Diego – The Sarah Palin Political Action Committee (Sarah PAC) has embarked on an East Coast bus tour which is causing quite a stir.  No, not because Paul Revere warned the British.  It is because Palin is using an already trademarked name to promote the tour.

Palin is calling her tour “One Nation”, which is from the Pledge of Allegiance: “One nation, under God.” However, former Tea Party Express member Kelly Eustis claims that he is the owner of the “ONE NATION POLITICAL ACTION COMMITTEE” trademark, which was just recently registered.  Eustis says that he informed Sarah PAC of the infringement only to receive an abrasive response from Palin’s treasurer, Tim Crawford. 

“They are pissed for me even bringing up that they’re using our name!”, commented Eustis.  He went on to say that Crawford stated, “It’s about the Constitution!” and that Sarah PAC would defend their bus tour publicly if needed.  Eustis believes he is being bullied by Palin’s group and is surprised at how brazen they are at walking all over other groups, even from the conservative movement, simply because they can.

In October 2010, the NAACP, La Raza, the Sierra Club, and the AFL-CIO organized an anti-Tea Party march in Washington D.C., calling it “One Nation Working Together.”  Eustis immediately had his trademark lawyer respond with a cease and desist letter in regards to the use of the One Nation name.  The letter cited trademark infringement and unfair competition under state and federal law, including the Lanham Act.  Despite the letter, La Raza is still operating under the One Nation name.

At this time, Eustis’ and Palin’s attorneys are actively engaged in the issue.

clouds.jpgLos Angeles – It appears that copyright holders may finally recover some lost revenue for their music, thanks to Apple’s new iCloud and iMatch.  However, the recent unveiling of the web storage and streaming service has sparked a debate that leaves many concerned about the future of digital music and video.

iMatch is a service that automatically scans a consumer’s music library for ripped songs that weren’t obtained through iTunes or were possibly downloaded illegally, and then matches them to a library of over 18 million authorized songs and then adds the authorized versions to the consumer’s iTunes library.  Apple will provide the service for an annual fee of $24.99.  Apple has not revealed what the revenue split will be, but reports suggest that record labels will receive 58% of the revenue, music publishers will receive 12% of the revenue, and Apple will retain 30%.

To some, the iMatch service appears to be Apple’s way of saying, “If you can’t beat ‘em, join ‘em” and that it is only legitimizing music piracy.  Critics believe that it is providing amnesty to music pirates and only will reinforce the behavior.  Apple CEO Steve Jobs defended the service by stating, “iCloud is a good step towards post-piracy realism in copyright-based industries; a step towards a music industry that’s based in rational mutually-beneficial economic transactions rather than in animosity, blame, and fear.”

Somewhat surprisingly, the music industry is largely in favor of the service.  Every day, artists lose millions of dollars in revenue to consumers who illegally stream music onto their computers or mobile media devices.  With the new service, it is estimated that iMatch could generate $500 million annually if only 10 percent of iTunes users subscribe.  This sounds like a conservative estimate, given that there are plenty of iTunes users who would prefer to replace their illegally downloaded music with higher-quality, legitimate tracks and possibly free themselves of a guilty conscience. 

It looks like Apple may have found the happy medium between what some perceive as extremism by the RIAA and the outright theft of copyrighted materials that leads to lost revenue for artists. 

sweaters.jpgSan Diego – American clothing retailer ‘Forever 21’ is threatening to file a lawsuit against fashion blogger Rachel Kane for trademark infringement, copyright infringement, unfair competition and dilution of the ‘Forever 21’ brand.   ’Forever 21’ is an American company with locations in twenty countries offering reasonably priced apparel and accessories to young men and women. 

Kane, who publishes a fashion blog called WTForever21.com, has until June 10 to take down the site.  WTForever21.com is a blog that offers comical commentary on what Kane perceives as fashion faux pas by Forever 21.  She  pokes fun at particular clothing items that she finds ugly or ridiculous and often ends her posts with the phrase: “Forever 21, WTF?”.  In a post about the store’s Loop Yarn Sweater Vest, Kane wrote, “Guacamole and vomit stains will blend right the eff into this doodoo colored thing.”

The cease and desist letter sent by a trademark lawyer for ‘Forever 21’ claims that the name of the blog “refers to an abbreviation for colloquial expression that the general public may find offensive, and such colloquial expression is being used in conjunction with our Company’s name, registered trademark, and domain name.”  Kane insists that she is only being playful as she practices her First Amendment rights and is, in fact, a big fan of the clothing giant.  “Don’t get me wrong, I LOVE ‘Forever 21’, she posted in her blog.  “Most of my closet is comprised with their tasteful, trendy and totally awesome selections.  But every now and then, something goes horribly awry.”

Kane’s site does mention that it is not affiliated in any way with ‘Forever 21’.  That made no difference to ‘21’, who promises to sue if the blog doesn’t come down.   The company did, however, laude her “indicated patronage” and claim that they respect one’s right to express his/her opinion. 

While this isn’t a slam-dunk case for Forever 21, it is generally a bad idea to use another company’s trademark in your own domain name.  The reason is that it can very easily lead to at least initial interest confusion which is actionable.  Overall the merits may not matter much because we suspect that Ms. Kane will be more willing to change her blog name than fight a large corporation.

Infrared_lamp.jpgLos Angeles – California-based Apple Computer is applying to patent a new infrared technology that could help combat the illegal pirating of movies and music. 

With the increasing popularity of the Apple iPhone, it is not uncommon to see concert-goers holding their iPhones up in the air, recording the live show, only to later upload it onto the Internet.  What many of these music fans may not realize is that doing so constitutes copyright infringement.

Apple’s new anti-piracy technology would allow movie theatres and concert venues to use infrared beams to prevent iPhones from being used to illegally record the entertainment.  This is similar to the technology that is used in theatres to distribute sound to individual hearing aides for the hearing-impaired.  For use in concert venues, the music bands could surround the stage with infrared transmitters that would send a signal to the devices preventing the recording.  Alternatively for video, the signal could automatically place a watermark on the image that was being recorded onto the iPhone.  For example, someone who was attempting to record an Usher concert could have Usher.com automatically stamped on any recorded images.

This technology will undoubtedly be loved by the thousands of artists who lose money every day to copyright theft.  However it will be met with expected criticism from the device users themselves.  If iPhone users didn’t know about anit-piracy laws before, they will soon.  It will be interesting to see how Google will respond to this technology since android Smartphones have recently surpassed the iPhone in popularity.