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Web Design, Hyperlinks, Framing and Metatags
Internet Licensing and Your Web Site

by Dominic E. Rainone


The proliferation of Web sites seems to be growing exponentially. Furthermore, the number of web site developers, hosting companies and related software businesses are also increasing at an astounding pace. This has caused keen competition among web site developers. Some of them provide very inexpensive web site design or free designs with certain advertisement allowances. However, the web site development itself, is just the beginning of your merry-go-round ride on the internet. The on-going maintenance, revisions and hosting play a much more important role.


Clearly establishing the rules for site development, and the on-going responsibility of each party, should be defined and negotiated in a written Web Site development agreement. Issues revolving hyperlinks, framing and metatags have made their way to the courts, and should be addressed up front.


Hyperlinks
Hyperlinks are short cuts developers adopt so users may get to other pages within your web site (own propriety) or to other pages in other company's web sites, quickly. As you may expect, linking to your own pages is not at issue, while linking to other sites can be a problem. The theory of linking is to make it convenient and easy for a user to view related material when viewing your own page. It would follow, one might surmise, that the "linked" company would be more than glad to gain "free" referrals/access its site, so to speak. Visibility, after all, is the main reason you are making your Web pages available.


However, the controversy is when some web site developers bypass the company's "pointed to" home page and "cherry pick" or "inadvertently" lose all the company's identifying and advertising information in "deep linking" to internal pages of a company's web site. This intrusive linking process has giving rise to rethinking the free access concept. Absent clearly established rules, web licensing agreements are being used to control the manner in which linking to sites is permitted.


Framing
Framing is an other issue which has caused much concern. This is when you are lead to believe that you are viewing Company A's web page but you are actually viewing the content from Company B, which has been placed or framed on the screen so as to appear that it is from Company A. These issues have arisen mostly in the republication of news. In one particular case brought to trial, the parties settled upon the following: the "framing" company was allowed to continue to link to the other company provided it used hyperlinks "consisting of the names of linked sites in plain text". Again, web site linking agreements in these contexts are being used to grant a non-exclusive license to hyperlink to licensor's site and use licensor's logo subject to certain terms.


Metatags
Lastly the issue of metatags, i.e., the invisible "description" of what the particular web site has in store, has gained notoriety in the courts. While search engines fetch closely related web sites based on your search criteria and the metatags; they will, of course, fetch web sites that have no visible relation to the query because strategic metatags involving famous trademarks (i.e., National Football League) were used to gain more visibility. Among, and sometimes ahead of, correct content matching web sites, you also get irrelevant intruding sites. These web sites bear no relation to your request but it is hoped the viewer would visit anyway. Litigation in this context has resulted in the courts ordering complete removal of all marks (trademark) from the web site and to cease all use of the marks as metatags.

Take Control
it is often projected that the internet industry has and will become a way of life at a quicker and faster pace than any other previous invention. Whether the issue is hyperlinks, framing, metatags or other web related concerns, they are all growing pains of an unregulated industry. As in any other unregulated industry, it would be beneficial to take control of the issues and develop a clear understanding of the parties' roles, with clear policies in place to control your identity, your destiny and the use of your web site materials.

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Domain Name Disputes

by Vincent P. Bailey


The Internet has changed the way that companies advertise, market and sell products. It has also modified how companies protect and defend their intellectual property.


Whether you have established trademarks or hope to build your intellectual property base, the Internet presents unique challenges to protecting your rights and to avoid infringing the rights of others.


Trademark Deflned
A trademark is a word, words, name, symbol or device used to identify the source of origin for a good or service. As such, a mark indicates the quality associated with it. Marks that are confusingly similar might lead a consumer to use an inferior product or service erroneously.


A company's goodwill, its tradename and associated trademarks, are protected by common law, state and federal trademark laws. Once a name or mark is used by a company to identify its product or service in commerce, that identifier or mark becomes a trademark. Use of the mark itself establishes rights against subsequent users of the same or similar marks in the same geographic area and are protectable under commonlaw. Registration of the mark at the state level provides statewide rights to protect the mark. Trademarks registered with the United States Patent and Trademark Office afford the owner trademark rights nationwide over subsequent users of the same or confusingly similar marks. Remedies advantageous to the registered trademark owner to stop others from infringing such rights are included.


Prior to the Internet age, disputes arising over product names (trademarks) or service names (service marks) and company names (tradenames) were resolved within the U.S. by resort to state or federal law regulating trademarks and business practices. International disputes involved the laws of the countries involved or international agreements on such matters.


NSI's Solution
With the advent of the Internet age and its borderless, global communication and commerce, trademark protection and dispute resolution have become more complex and controversial. For various reasons, the second level domain name or URL (i.e., the "toysrus" in toysrus.com) has caused the most controversy. Over time, an administrative domain name dispute resolution policy was developed at Network Solutions, Inc (NSI), which was previously the sole entity responsible for registration of domain names within the United States. As an administrative policy, it acted as an alternative dispute resolution process which could be overruled by the decision of a court of law.


The New ICANN System
Recently, NSI's monopoly on registering domain names has been replaced by a total of six (soon to be more) domain name registration entities including NSI. Rather than only NSI's domain name policy dispute resolution policy, the Internet community has commissioned a not-for-profit entity, Internet corporation for assigned names and numbers (ICANN), to decide on United States and international based policies for resolving domain name disputes. ICANN's system is still in development but will likely be an administrative or alternative dispute resolution policy by which aggrieved parties may resort to their country of origin court system to resolve domain name issues.


What to Do?
A general recommendation to established, recent or emerging Internet entities includes:

  1. consult with legal counsel knowledgeable in intellectual property and the Internet.


  2. search local (state) and federal registered trademarks and common law usage, including Internet use as compared to your (intended) mark. Consult an attorney to avoid marks that are confusingly similar.


  3. If the search results in no conflicts, register the exact name as your second level domain name at multiple first levels, (ie. .com, .net, .org, etc.)


  4. consider international registration or appropriate country designations of a domain name at the first and second levels if there are no conflicts after an international search of the trademark.


  5. register your mark with the United States Patent and Trademark office (PTO) to establish trademark priority. Consider registering your mark with a foreign country offering a shorter registration process than the U.S. PTO.


  6. If your mark is similar to a mark found in your common law, Internet, or sate/federal trademark search, consider registering your mark with a foreign country, thereby establishing your rights at the international level.


  7. If your domain name is challenged by a subsequent registrant, seek legal counsel immediately.

If you have any questions concerning your domiiain or other intellectual property issues, please contact us.

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Impact of Key Legislation and Litigation
Internet Business Method Patent

by Vincent P. Bailey


"Business method" patents, which are computer software inventions involving business model related methods or process claims, have multiplied since the US Federal Court issued its decision in "State Street Bank." This decision involved the patent validity of financial planning software, and it strengthened the basis for the validity of "business method" patents.


Subsequently, computer software, business method and internet related technology patents have proliferated. Innovative E-commerce companies are aggressively seeking patent protection for methods of doing business over the Internet to achieve a competitive advantage Now, the proliferation has led to both legislative relief and ecommerce litigation in the affected industries.


Legislative Relief
The provisions of the American Inventors Protection Act signed into law November 29, 1999 may temper business method patent-related litigation. This legislation provides a defense against charges of patent infringement for a party who had, in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of the subject patent, and continually used the subject matter before the effective filing date. The defense is limited to methods of "doing or conducting business." It should be noted that establishment of the defense does not invalidate the subject patent.


This defense is not a "general license", but rather would allow continuation of only those activities that gave rise to the defense. The defense does not apply to licensees or assignees except as part of a good faith transfer of the entire business to which the defense applies.


E-Commerce Litigation

The American Inventors Protection Act is very relevant to current e-commerce battles. A recent federal court preliminary injunction blocked Barnsandnoble.com from using the on-line shopping "1-click" technology patented by Amazon.com. Also, Priceline.com recently enforced its "reverse action" patent on the concept of letting shoppers offer to buy from merchants who met the buyers proposed price.


More recently, Accompany, Inc received notice that it will get a patent on its technology for group buying on the web and will enforce its patent. Internet group buying lets consumers join groups to purchase items such as consumer electronics, computers, and sports equipment. The price for a particular item declines at stated intervals as more people join a group, increasing the value discount they can receive from suppliers.


Thus, companies that seek such patent protection for their business methods and on-line technologies apparently may gain a competitive advantage. In such an era of software and business method patent protection, a proactive approach may be better that reactive. Business method, computer software and internet related technology patents are becoming key assets in the formation of internet start-ups, almost as important to investors as good management teams.


As the recent litigation has added some volatility, industry comments to both Congress and the US Patent and Trademark Office compound issues. For example, recent comments by Amazon.com's CEO, Jeff Bezos, suggest that patents on business methods last 3 to 5 years rather than the customary 20 years from date of patent application filing.


Pointers
This evolving issue merits constant monitoring by the Law Offices 0f Dominic E. Rainone. If you suspect that your business may be impacted by business method patent(s) or should consider applying for such a patent, contact us immediately. In the constantly and rapidly changing world of e-cornmerce, waiting to act could possibly cause your company not just lost profits but maybe even its going-concern status as well.

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Licensing Software
Enforceability of Shrink-Wrap or Splash Licenses

by Dominic E. Rainone


In an example of the impact of technology on the law, the courts are now struggling to determine the validity of shrink-wrap or slash licenses. These are license agreements that occur when you purchase a product over the phone, mail order or over the internet, under a "pay-now, terms-later" approach. At issue is the enforceability of the license agreement, specifically, in determining where the agreement begins and ends.


Cases are starting to make their way to the appeal process and the results seem unpredictable. The courts have analogized that many transactions prior to shrink-wrap or slash license have allowed the "fine print" after the fact to stand: such transactions like paying airline tickets, concert tickets, insurance policies and others are common occurrences. Similarly then, at least some courts conclude that shrink-wrap/splash licenses with some provisos are enforceable. The distinction, some say, is whether at the time of contract formation (when you buy the product) you had "notice" that additional terms would be in the box or on the label. Other courts have gone as far as saying that the manufactures advertisements constituted "notice" that certain terms would apply.


However, on the other side, at least one court states: "Although shrink-wrap licenses may, in some cases, be enforceable,


The investment you
have made, and will
make in the future, in
developing and
marketing your
product should not be
put at risk because of
faulty agreements.


they do not trump explicit prior agreements where those agreements contain integration clauses and "no-modification-unless-in-writing" clauses." Here, because a prior agreement between the parties (such as a signed license) existed and it clearly excluded any other agreements, the court held that terms in the shrink-wrap could not even fill the gap of missing terms in the parties explicit agreement.


If you are a software developer, it would likely be quite worthwhile for you to consult with counsel and to develop an appropriate agreement to clearly protect your interests. The investment you have made, and will make in the future, in developing and marketing your product should not be put at risk because of faulty agreements.


If you are an end user, be certain that you clearly understand your legal obligations. Businesses that regularly buy over the phone or internet may want to consider developing a policy for their purchasing department to guide personnel in protecting the company's asset purchases.


Whether you are a developer of software or a user of such, if you have concerns or are unsure about shrink-wrap or splash licenses you're not alone. We will no doubt see more on this in the months and years to come!

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