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Internet Domain Expansion Could Present Infringement Issues
In the internet domain system's biggest shake-up in 26 years, internet minders voted in June to allow virtually unlimited new domain names based on themes as varied as company brands and political causes.
The Internet Corporation for Assigned Names and Numbers (ICANN), the body that sets the rules associated with internet domain registry, instituted a new arrangement in which groups can petition next year for website suffixes using nearly any word in any language. The program won't be cheap, though, as applicants will pay a $185,000 application fee and a $25,000 annual maintenance fee.
ICANN says the move will spur greater innovation and alleviate the shortage of some web addresses, such as those using the “.com” and “.org” suffixes. Other internet experts also see the potential for organizations to take greater control of their brands, since suffixes (“.ipad” for instance) could take people directly to products. Plus, they might help companies guard against product counterfeiting on the internet. However, some worry the new suffixes enabled by the expansion plan could lead to trademark and copyright infringement issues.
According to Boyle Fredrickson shareholder Andy McConnell, corporate executives and attorneys are wise to consider how this change might affect their intellectual property assets. “This may provide companies with a new tool for highlighting their identities and networking with their constituents,” he explains. “But even companies not interested in paying the application and maintenance fees will have to monitor the process to head off potential trademark or brand-name infringement from other applicants.”
“One thing is clear,” McConnell adds. “Whoever gets a valuable suffix first may stand to do very well.”
For more on how this change may affect your company’s internet strategy, contact your Boyle Fredrickson attorney.
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Major Changes to US Patent Laws Coming
The U.S. House of Representatives on June 23 approved significant changes to the U.S. patent system. The Senate passed a similar bill in March, and the House and Senate will now reconcile differences between the two bills, when if passed will be sent to the President.
The most significant change brought about would put the United States under a first-inventor-to-file system for patent applications, which is common in many other countries. Currently the U.S. operates on a first-to-invent system.
The Senate and House will also have to work out differences on Unites States Patent and Trademark Office (USPTO) funding. Since 1992, the office has lost nearly $1 billion because it gets less from Congress than the fees it collects. The Senate bill ensured the USPTO can keep all user fees it collects. The House, however, acceded to Appropriations and Budget Committee demands that Congress retain control over the USPTO's purse strings. As a compromise, it was agreed to set up a reserve fund for fees collected that exceed what Congress allots to the USPTO in a given year.
The new legislation also sets up a process for third parties to submit information regarding a patent application and establishes a new administrative framework for post-grant reviews that allows disputes involving patent quality and scope to be settled, ideally without lawsuits.
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Boyle Fredrickson News
Boyle Fredrickson, Wisconsin's largest intellectual property law firm, was profiled in the April 15, 2011 edition of the Business Journal of Milwaukee. The story detailed the firm’s continued growth through the recession.
Boyle Fredrickson was recently rated the highest intellectual property law firm in Wisconsin by Chambers and Partners, publisher of legal directories and attorney rankings for more than 20 years. Congratulations also to Boyle Fredrickson shareholders Tim Newholm, Andy McConnell, Jim Boyle, and John Fredrickson who were identified as leading individuals in the rankings.
Congratulations to Boyle Fredrickson shareholder Kirk Deheck, who recently assumed the chairmanship of the Wisconsin State Bar Association's Intellectual Property section.
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Gratz Addresses Association of Corporate Counsel
Boyle Fredrickson shareholder Michael Gratz addressed the Wisconsin Chapter of the Association of Corporate Counsel during the group's annual conference in May. According to Gratz, who was joined by U-Line corporate attorney Kristen Chapman, companies involved in mergers and acquisitions are wise to take stock of their intellectual property assets so the value of those assets can be integrated into the overall valuation of their companies.
“Many companies do a great job of keeping inventory of their physical assets but struggle to put a dollar amount on their intellectual property, which can be substantial,” advised Gratz, who added that intangible assets often account for as much as 75 percent of a company's value. “Unfortunately, the pace of business today, especially during a merger or acquisition, often pushes the task of IP valuation to the bottom of the to-do list. Fortunately, a little due diligence doesn't have to require a ton of time.”
Gratz provided attendees with a worksheet to use in quickly evaluating IP assets. For a copy of the worksheet, contact your Boyle Fredrickson attorney.
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Local Case Highlights Internet Keyword Complexity
A Wisconsin case pitting two personal injury law firms against one another is leading many corporate leaders to take a closer look at how internet search strategy could relate to their intellectual property rights on the internet.
In 2009, Robert Habush of Habush Habush & Rottier (HHR) filed a lawsuit against competing firm Cannon & Dunphy (CD), which had purchased the names “Habush” and “Rottier” as keywords for internet searches. Consequently, a person who typed in “Habush” or “Rottier” in leading search engines Google, Yahoo and Bing would find links to CD's website as sponsored search results.
HHR argued to the Wisconsin court the purchase of the names violated their right to privacy under Wisconsin law and sought an injunction prohibiting CD from using their names in keyword searches. The court concluded HHR was not entitled to an injunction because CD's use of “Habush” and “Rottier” was reasonable. HHR intends to appeal the court's decision.
To avoid this troublesome scenario, a company should consider purchasing its corporate name(s), key trademark(s), and other relevant identifiers to ensure that sponsored links do not direct searchers to competitors. For more on how this ruling might affect your business, contact your Boyle Fredrickson attorney, who can also provide a detailed brief on the case.
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