Internet Issues

Trademark Internet Issues:

• The Internet, and the computers that drive it, ushered in a surge of trademark uses and abuses.

• Although the duality of domain names (that they function both as Internet addresses and as trademarks - more) is now recognized, similar issues still linger.  Search-engine search-term auctions remain an intellectual property frontier.

• Trademark laws protect both the trademark owner and protect consumers from marketplace confusion.  The Internet marketplace and consumer expectations, however, are seldom static.  Measuring the potential for confusion in a dynamic milieu is not easy.

• The Internet's new-business streams run so fast that they leave many industrious folks out there without a sound understanding of how to select, use or protect their marks.

• other topics - trademark myths, naming and branding, oppositions, trademark searches, trademark registrations, domain names, slogans

Copyright Internet Issues:

• The Internet & the computers that enable it have created a flood of copyright and name/image privacy issues.

• Downloading, copying, sending, hyperlinking - all just clicks away.

• The ease of those clicks masks the risks.

• Even rather casual Internet users can be faced with complex copyright infringement issues.

Website owners often are inexperienced in protecting their own copyright interests, and frequently are hyperlinking & copying & displaying without differentiating permissible fair use from impermissible unauthorized copying & distribution.  They can be seriously at risk.

A website audit is seldom on anyone's radar screen, when it should be.

other topics - about copyrights, about hyperlinking, no idea protection, idea theft
 

Hyperlinking:

Hyperlink only with permission granted

• Most website pages have content protected by copyright.

• Facts embodied in content are not subject to copyright protection, but the authorship is.

• Via copyright protection, the copyright holder has the exclusive right to make copies of the work and to distribute copies of the work, among other exclusive rights.

• Hyperlinking to another's website, particularly to an internal page within the website, is probably a prohibited distribution of a copy of a protected work without permission.

• On the practical level, some website owners have a strong preference for site-entry through the pages it selects.

• Even federal agencies want hyperlinks to their websites clearly identified, so that users will know whose website the page is on.

Hyperlinking to a website's entry page is still an issue in flux.  Most website owners want the publicity, or we wouldn't be out on the Internet.  Delighted with some of such hyperlinks, but not comfortable with others.  The jury is still out.

other topics - who protects copyrights, trademark internet issues, domain names, patent it or not, naming and branding

Patent Internet Issues: (to copyright myths, trademark myths)

• The Internet & computers opened new avenues and modes of communications and doing business.

• Just about the same time the awesome protection of the patent laws was extended to "methods of doing business" (MOD).

• The USPTO and patent practitioners continue to wrestle with the problems of applying the patent laws' new and nonobvious standards in the MOD field.

• Other technical fields have multi-decades of patent literature in the database, but not so for the MOD field.  So the lack of a practical database of business methods prior art continues to haunt the MOD field.

• The Internet's vast wealth of information has become a second source of prior art for all technical fields, with one glitch.  The ephemeral nature of "words on the web" can raise some nasty issues as to the first date of publication.  If that date is after an application's filing date, it is not prior art.

Internet Website Date of Publication Issues, Ex parte Whitemiller, 2001
(Don't Believe Everything You Read!)

Disproving a webpage's ostensible date of publication, and apportioning the burden of proof, were first-impression issues considered by the USPTO's Board of Patent Appeals in Ex parte Whitemiller, Appeal No. 2001-1511, Application Serial No. 09/160,272; Attorney for applicant, Joan I. Norek.

The patent examiner had rejected all application claims based on the contents of a webpage that bore the statement "Updated 1/8/98".  If the 1/8/98 date was accurate, the webpage was published prior to Whitemiller's filing date, and its contents were fatal prior art against the application.

At the examiner level, evidence submitted on behalf of the applicant established that (a) the website owner registered to do business on 10/23/98, (b) the owner stated he was not yet doing business on the 10/23/98 registration forms, (c) the website's domain name was registered on 11/10/98, and (d) search engine records of the website began on 12/8/98.  Obvious odds are that the webpage was not "out there" until November of 1998, which was nine months after the "updated" claim, and months after the application filing date.

The examiner nonetheless continued in the claim rejections.  On appeal the Board reversed, holding that (a) the examiner established a presumption that the 1/8/98 "updated" date was the publication date, but (b) the applicant had rebutted the presumption.  Therefore, if a web page's displayed publishing date is shown to lack credibility, the burden of establishing the actual publication date returned to the examiner.

other topics - patent myths, patent it or not, patent ready, patent or trade secret it, FAQS, patent term

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