This is an excellent article that takes on the issue of design patents being issued in situations where even the low threshold of originality required for copyright protection is too high, such as in the case of design patents on business forms.  Excerpt:

The standard for copyright protection is notoriously low — the work must be independently created by the author and possess a minimal degree of creativity. Nonetheless, even with that generous standard, the courts and the Copyright Office recognize that certain works do not contain even that minimum level of creativity such that they are categorically refused copyright protection. Blank forms, and other forms that do not convey information, fall within this category. 

In contrast, and for good reason, the standard for design patent protection is much more burdensome. Design patents protect new, original, ornamental, and non-obvious designs. This more difficult standard, which generally subsumes the copyright standard, would lead one to assume that anything failing the low copyright would not be eligible for design patent protection.  Then again, one might be wrong. The Patent and Trademark Office has issued design patents for blank forms and recent case law has either upheld design patent protection for blank forms or declined to categorically refuse such protection.

This article explores the blank forms doctrine in copyright law, the overlap between copyright and design patent protection, why the law's refusal to protect blank forms under copyright law is necessarily inconsistent with the law's protection of blank forms via design patents, and possible judicial, Congressional, or administrative solutions to resolve this inconsistency.

Read the whole article here.

ChoicePoint - the case that really started it all - announced today that it has settled with 43 states over the 2005 breach of its database that exposed mass quantities of consumer information.  A shock at the time, perhaps, but similar disclosures have become a daily occurrence.  You might recall that the ChoicePoint breach involved thieves posing as small business customers who were able to gain access to ChoicePoint's database, possibly obtaining the personal information of 163,000 people according to the FTC.

In January, ChoicePoint Settled with the FTC for approximately $15 million.  At that time, at least 800 cases of identity theft had reportedly been traced to the breach. 

The U.S. Dist. Court in Washington State has dismissed a CAN-SPAM Act case on the basis that the plaintiff suffered damages that were more like those typically experienced by consumers, rather than those experienced by ISP's.  At issue in Gordon v. Virtumundo was whether the plaintiff was an "internet access service" that was "adversely affected" by the subject spam.  Noting that the plaintiff had not suffered the ISP or IAS specific types of burdens described by Congress (such as harm related to bandwidth, hardware, Internet connectivity, network integrity, overhead costs, fees, staffing and equipment costs), the court concluded that although the statutory definition of an IAS is very broad, the nuisance/consumer type damages alleged were not the type required to be suffered in order to have standing under CAN-SPAM. 

According to the opinion, the limited private action under CAN-SPAM is to provide a remedy to true ISP's that have to hire extra resources, provide more bandwidth, and generally incur other direct damages as a result of the volume of spam they handle, not to provide consumers with a cause of action.  The decision also held that the state law claims in the case were pre-empted.   The case is James S. Gordon et al. v. Virtumundo, Inc., et. al., Case No. 06-0204-JCC.

Photo courtesy of Robyn Lee under Creative Commons.

And we thought we were immune from the risks of IP law that our clients face each day.  If the debacle over patented estate planning techniques were not enough, we now have to be concerned about copying the pleadings of others, lest we face a copyright infringement claim!  The Wall Street Journal Law Blog has an interesting post on this topic.  Most interesting from my perspective for the lack of knowledge of copyright law demonstrated by the comments, presumably from lawyers. 

For example, one comment reads: "Any pleading filed with a court is

Click to read more ...

Follow the money. . ..  Do you want to know how the "domainers" are making money off of the internet these days? CNN's Bu;siness 2.0 magazine has a good article about Kevin Ham, who is presumably the best at everything from typosquattintg and domain tasting, to straight domain name brokering.  The article covers some of the creative ways these folks are squeezing money out of the net these days (to the tune of perhaps $70 million a year for Ham), and it explains to some extent why the web looks more and more like an endless vista of parked pages cluttered with random ads and links.  Thanks to David Canton for pointing out that article.

Search engines and ISP's have widened the moat with this decision from the 9th Circuit, which essentially holds that Google's practice of copying thumbnail versions of photographs from third party web sites, with "in-line linking" to the full size version of those photos at their original location on the web, constitutes fair use.  Goldman's summary here.

When a deal finally closes, do you preserve all of your mark-ups and drafts for the file, or do you ceremoniously destroy everything but the final version?  I know lawyers that fall into each of those camps.  Ken Adam's makes the case for saving everything with some good examples, and includes a sample client-file retention policy.

Imagine the scene: In house counsel from Google, Microsoft, AOL and Yahoo rise to explain to the restless crowd of several hundred owners and protectors of famous trademarks, just why it is that they allow competitors to bid on those famous trademarks to trigger ads for the competitor's products. The phrase "smoothing ruffled feathers" was used more than once in the ninety minute presentation. The brave presenters were Peter Becker of Microsoft, Laura Covington of Yahoo, Lauren Fisher of AOL, and Rose Hagan of Google.

Kudos to INTA for pulling that one off, but perhaps it's not so surprising that these lawyers would face a seemingly hostile crowd. The search engines have a sizable PR and education job to do when it comes to the emotionally charged issue of keyword advertising, and what better venue than an audience of trademark holders to make their case.

In fairness, the search engines are attempting to operate within the law and balance the rights of consumers, advertisers, and trademark holders, and the law is currently evolving on the topic. And, they have some very good basic points. One common theme is that they should be able to operate under the same that apply in the brick and mortar world. Some good analogies were made (ones I've made in the past) such as the right to purchase shelf space in the supermarket next to a competitor, or the practice of printing coupons for competing products on the back of receipts at the super market (i.e., you buy some Pampers, and get a coupon for for Huggies). These things are tolerated in the "real" world, but in the intangible world of online commerce, keyword advertising draws a much more visceral response.

The most striking thing gleaned from the presentations from my perspective is just how differently the search engines treat the issue of keyword advertising as a matter of policy.  Google is clearly the most aggressive of the crew, and they allow the purchase of trademarks to trigger the ads of competitors, with the caveat that the text of the sponsored ad must not use the trademarked trigger term. The theory is, I believe, that Google thinks it has a winner on the argument that the use of trademarks to trigger ads is not "trademark use."  Because you need such trademark use, together with a likelihood of confusion to make a trademark infringement case, you can never get there with Google's approach.  If the trademark is never used in the triggered ad, and the use of the trademark as a trigger does not count for trademark purposes, no infringement issues.  It also has the benefit of being very clean, and very easy to implement.  No judgement is involved, and it can all be automated.  Very scalable.

Yahoo, AOL and Microsoft on the other hand, all take a more measured (and less scalable) approach, and allow for the purchase of trademarks to trigger ads only if the triggered ad clearly involves a fair use of the trademarked term. Yahoo (I believe) goes even further and actually requires that the trademarked term be used in the text of the sponsored ad.  The theory here is that if the ad is truly fair use (such as comparative advertising), that is most clearly demonstrated by the appropriate use of the trademark in the sponsored ad (for example "Thinking about a Dodge Durango? Compare the safety rating of the Toyota Tundra before you buy." )

In the end, it was clear that the search engines are attempting to operate within the law, or as near to the fringe as they can tolerate, and to perhaps push the line a bit. It was little solace to many in the audience, as a number of the follow up "questions" demonstrated the continuing frustration of trademark holders. They can't stand the idea that competitors can get in front of their customers by purchasing THEIR TRADEMARKS!  (even though across the hall the marketing department is probably doing the same thing to their competitors.)  If you can't beat em' . . ..

Just in case you didn't know, the International Trademark Association (INTA) is right in the middle of its Annual Meeting, which this year is being hosted in Chicago. There are oodles of good programs dealing with various aspects of trademarks, branding, and the issues that arise with them in the online marketing context.  One session focused entirely on online resources that are useful when investigating domain names and domain name holders, whether to clear domains for your own use, or track down the bad guys who are wreaking havoc with you by using domains similar or identical to your trademarks and tradenames.  Here are some of the sites mentioned by the speakers (you will want to bookmark these, or at least a link to this post!):

Alexa.com provides current and historic traffic volume data on internet sites, and allows you to compare the traffic between competing sites, which is useful in a number of contexts.

Archive.org is where you can find the "Way Back Machine", which allows you to look and see how long a site has been around, and track changes that have been made to the site over time.

BetterWhoIs.com is a comprehensive, easy to use clearinghouse for domain name WHOIS information, and is a favorite with the presenters.

Domain Tools was said to provides lots of advanced features for finding information about domains, and domain name holders, some of which is free, and some of which comes with a small fee.  For example, for a fee of about $150 per year, you can evidently access Domain Tools archive of WHOIS information, which provides a chain of title of sorts for domain names.   It also has a reverse IP search available, and typo generator, that assists in identifying domain typos on your domain.

Geektools.com provides a set of technical resources for network engineers and system administrators, which  includes whois and traceroute.

Nation Arbitration Forum provides an easy to search database of their UDRP decisions which makes it very simple to see if there have been any arbitrations involving a particular domain or party.

WIPO also provides a searchable database of its UDRP decisions, but it is not quite as user friendly.

SnapNames was identified as a favorite resource for back ordering domain names.  It is free to back-order a domain, and if it is "caught" by SnapNames, a fee of about $65 is due at that time.  Small price to pay for the benefit of eliminating potential problems with domains of interest.

SamSpade.org  is a freeware integrated network query tool for tracking down spam.

There was also an interesting discussion of the problems posed by the anonymous domain hosting services that are popping up everywhere.  Domains by Proxy was mentioned specifically as one of the more popular services. A good practice pointer - when sending out cease and desist letters to these domains, the letters should go to Domains by Proxy (or the other anonymizing registrant), because THEY ARE THE REGISTRANT and owner of the domain.  That is the way they set up their business model. They will likely respond by saying they are not the real owner of the domain, etc., but the word from the presenters was that if you persist, you can expect Domains by Proxy to respond fairly quickly by posting the actual registration information in the WHOIS record for that domain.