The Intellectual Property Strategist

This article outlines strategies for protecting clients against IP theft.

A company's domain name is often the most fundamental basis for trademark and branding efforts. Ideally, the choice of a domain name is made after conducting searches for potentially identical or confusing domains. But even if such due diligence is conducted, with the millions of domain names registered under the various extensions and country codes, it is not possible to guarantee that the domain name will not potentially conflict with someone else's trademark rights.

A metatag is a coding statement for a Web site in the Hypertext Markup Language that describes the site's content. The information provided in metatags can be used by search engines to determine Web page relevancy and to influence search results. In a surprising development, the U.S. District Court for the Eastern District of Wisconsin has determined that the use of metatags in Web site code does not create initial interest confusion, because current search engines no longer use metatags to determine the relative relevance of a Web site, preferring instead to use algorithms that rank the Web sites by the number of other sites that link or point to them.

At one time or another, every trademark holder must deal with infringement on the Internet. After years of chasing individual infringers, many brand owners seek relief from those who provide the means for infringement. Yet these efforts have had limited success, at least in the United States. In some jurisdictions, search engines have avoided liability for sales of trademarks as keywords, under the doctrine of non-trademark use.

Recent developments you need to know.

Features

After almost seven years since inception, the lawsuit by adidas against Payless ShoeSource, Inc. ended at the trial level with a jury verdict against Payless in the amount of $305 million. Payless was found guilty of willful federal trademark and trade dress infringement, trademark and trade dress dilution, and state-law unfair and deceptive trade practices as a result of its sale of footwear bearing confusingly similar imitations of adidas's famous Three-Stripe Mark and Superstar Trade Dress.

The Court of Appeals for the Federal Circuit has determined that a trial court does not lose subject matter jurisdiction over a patent or copyright infringement case where all sales of accused products to U.S. customers were made f.o.b. in Canada by a Canadian corporation.

Features

In <i>Quanta Computer</i>, many observers believed that the Court would address whether, and to what extent, a party can contractually restrict application of the patent exhaustion doctrine, under which patent rights covering a product are extinguished when the product is sold without restriction. Instead, the Court's decision in <i>Quanta</i> appears to be relatively narrow, confirming that the sale of unpatented components can exhaust a system patent that is substantially, but not completely, embodied by those components, but leaving open the broader question of whether parties can contractually limit application of the patent exhaustion doctrine to the detriment of downstream good faith purchasers.