For the last two decades, there have been a relatively small number of generic top-level domains (gTLDs) on the Internet. A gTLD is essentially the part of the domain name after the dot. But the number of gTLDs is about to increase dramatically.  On June 20, 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that beginning on January 12, 2012, companies and organizations will be able to register virtually any gTLD they choose – for a price. The initial registration will be $185,000, with an annual renewal fee of $25,000.

For details about the implications of this change, read the article “New Top-Level Domain Names Available”.

Intellectual property (IP) is a valuable asset, not only for the producers and creator of this intangible property, but also for the overall economy that benefits from the innovation and creativity this property represents.  However, the value of intellectual property is greatly reduced when unauthorized users are allowed to exploit this property through counterfeiting, piracy and other illegal activities. Enforcing IP rights in a global economy requires a coordinated effort among a variety of governmental agencies.  The federal government recently announced a plan to improve those efforts.

The 2010 Joint Strategic Plan on Intellectual Property Enforcement (JSPIPE), a 65-page document, was issued in June 2010 by Office of the Intellectual Property Enforcement Coordinator (IPEC).  The JSPIPE coordinates the efforts of eight government agencies: the Departments of Agriculture, Commerce, Homeland Security, Justice and State; as well as the Food and Drug Administration, United States Trade Representative and the Copyright Office.  A total of 33 Enforcement Strategy Action items are organized into six categories: (1) Leading By Example; (2) Increasing Transparency; (3) Ensuring Efficiency and Coordination; (4) Enforcing Our Rights internationally; (5) Security Our Supply Chain; and (6) Building a Data-Driven Government.

Click here to read the entire document.

The Third Circuit Court of Appeals recently heard arguments regarding a district court decision in a trade secrets case between Bimbo Bakeries USA, Inc. (maker of Thomas’ English Muffins) and its former executive, Chris Botticella.  Many in the popular media dubbed this the “nooks and crannies” case, a reference to the unique texture of the muffin, to which Botticella had access.  In reality, the case involves a much broader spectrum of trade secrets, as well as the enforcement of a confidentiality agreement and the use of computer forensics to detect possible violations of that agreement.

Until January of 2010, Chris Botticella was Bimbo’s Vice President of Operations for California.  In this capacity, he was one of less than 12 people at Bimbo with access to a variety of confidential and proprietary information, such as product formulas and process parameters, which were stored on a secure website.  Among these trade secrets were the three components (formula, manufacturing, engineering design, and process parameters) that give Thomas’ English Muffins their celebrated texture.  With annual sales of about $500 million, the muffins have been a vitally important item in Bimbo’s product line.  In order to keep these trade secrets from its competitors, Bimbo compartmentalized this information so that only seven people (among them Botticella) had access to all three components.

But Botticella was also knowledgeable about other sensitive aspects of Bimbo’s business operations.  As a company vice president, he was one of only five people with access to Bimbo’s highly confidential cost-reduction strategy for the Western region.  This strategy included information about lines and plants to be closed, new processes to be implemented, new products to be launched, and formulas to be optimized.

In March of 2009, Botticella entered into a confidential agreement with Bimbo as a condition of employment.  Less than seven months later, in September of that year, he received a job offer from Interstate Brands Corporation, the predecessor to Hostess Brands, Inc., one of Bimbo’s three major competitors.  In October 2009, Botticella accepted the position with Hostess, and in December he signed an “Acknowledgement and Representation Form,” stating that Hostess was not interested in Bimbo’s trade secrets, nor would Botticella disclose such secrets to his new employer.

Botticella was to resign from Bimbo on January 15, 2010, but it was not until January 4, 2010 that he informed Bimbo of this intention, and not until about 10:00 a.m. on January 13 that he let Bimbo know that he was going to work at Hostess.  He was then told to stop all work and leave that same day.  But according to the testimony of a computer forensics expert, at 10:12 a.m. on January 15, Botticella accessed 12 company documents on his laptop computer (including highly confidential Bimbo documents), all in the course of 13 seconds.  Computer forensics also revealed that three external storage devices had been attached to the laptop, only two of which have been accounted for.  When questioned about this in deposition, Botticella testified that he attached the USB flash drives to the computer as “practice” in order to improve his computer skills for his job at Hostess.

On February 9, 2010, the court entered a preliminary injunction barring Botticella from starting his employment at Hostess and from divulging any of Bimbo’s trade secrets to anyone.  He was also ordered to return all of Bimbo’s confidential information in his possession back to his former employer.  This injunction was to remain in effect until after the trial, which was scheduled for April 12.  But by filing an appeal, Botticcella actually prolonged his unemployment until at least after the court of appeals enters its decision.

It remains to be seen how this case will be decided, but one thing is certain: it’s not just about English muffins.

Your privacy settings on Facebook or My Space may determine when a third-party can subpoena electronic communications from your Facebook or My Space page.  In the copyright infringement case, Crispin v. Christian Audigier, Inc. et. al., the defendants served subpoenas on a number of third-party entitites, to include the social networking providers Facebook and MySpace, Inc., seeking basic subscriber information and communicaitons relating to the case.

Read the opinion here.

We often wonder how private, “private” really is.  Here “private” apparently does matter.  The privacy settings in the case will determine the extent to which Facebook and My Space comments are accessible to the other party in litigation and can be obtained by subpoena.

Domain names are valuable assets to any business, but can they serve the function of trademarks or service marks?  Sometimes yes, sometimes no, according to a recent decision of the Trademark Trial and Appeal Board (TTAB).  In the decision  In Re Vicki Roberts , the TTAB upheld the decision of the examining attorney to deny registration of the service mark application for irestmycase.  The applicant, Los Angeles attorney Vicki Roberts, represents several Hollywood stars and has been a guest on nationally syndicated and cable television shows. 

Ms. Roberts is also the registrant of at least two domain names:  www.restmycase.com and www.irestmycase.com.  When Ms. Roberts applied for federal registration of the service mark irestmycase, she used a press release as a specimen of the mark.  (A specimen is an example of how a mark is used in commerce.) 

The press release contained the following information: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone:  (310) 475-8549 Fax:  (310) 478-6365 www.restmycase.com The examining attorney initially refused registration because (among other reasons) the specimen didn’t agree with the mark for which registration was being sought. 

In response to this refusal, Ms. Roberts (through her trademark attorney) submitted two substitute specimens:  a printout from an Internet message board showing her profile page with the user name “restmycase,” and a copy of her letterhead, the latter of which reads: VICKI ROBERTS, ESQ. P.O. Box 642326 Los Angeles, CA 90064——————–Phone:  (310) 475-8549 Fax:  (310) 478-6365 www.irestmycase.com After a final refusal was issued, additional specimens were submitted, leading to a “second” final refusal.  Undaunted, the attorney of record filed an appeal with the TTAB.

Aside from the fact that “restmycase” and “irestmycase” are two separate and distinct terms, the TTAB upheld the examiner’s decision that Ms. Roberts failed to show that irestmycase was being used as a service mark.  Citing a decision from nearly a decade prior ( In re Eilberg , 49 USPQ2d 1955 (TTAB 1999)), the Board concluded that the use of irestmycase, embedded in the domain name www.irestmycase.com in the letterhead, merely serves as a means by which Ms. Roberts can be reached, not unlike her P.O. box or her telephone and fax numbers. Does this mean a domain name can never serve as a service mark?  Not at all. 

Also citing the  In re Eilberg  decision, the Board noted that if the name of the law firm was irestmycase, or if the term irestmycase was presented prominently on letterhead or business cards, it could be registered as a service mark.  But the specimens submitted did neither. The lesson to be learned from this decision is that no matter how well known a domain name is, if it doesn’t function as a mark, i.e., if it doesn’t identify the applicant’s services and indicate their source,  it can’t receive federal registration as such. 

Carl Mueller, CLAS is a Certified Paralegal with Advanced Paralegal Certification in Intellectual Property with the Law Office of Chris Stewart, P.C.  He can be reached at carl@chrisstewartlaw.com

Sometimes studies confirm what we already know.  Electronic junk email, or spam, is annoying. According to a recent study by Barracuda Networks, Inc., a provider of firewall products, the majority of business professionals (57%) consider spam email to be the worst form of junk advertising. 

Spam email topped postal junk mail (31%) and telemarketing (21%) for this dubious distinction. The sheer volume of spam is mind-boggling.  The estimates are 60 billion to 150 billion messages a day. 

The Barracuda Networks study reports that spam email accounted for 90 to 95 percent of all email in 2007.  In 2006, the numbers were only slightly lower: 85 to 90 percent. We must candidly admit that anti-spam laws have been largely ignored. 

Most people probably don”t know that Texas has an anti-spam statute.  The federal government has one too.  Some spammers have been caught, but the sheer volume of spam has increased despite these laws.  Have you noticed any decrease in the amount of junk email in your in-box since the federal government enacted its anti-spam law in 2004?  Me neither. Aren”t we developing more sophisticated spam detection software?  Yes, but spammers are a moving target.  Spammers employed multiple techniques to hide their identity in 2007. 

The Federal Trade Commission has noted the increased use of malicious bots, a type of malware designed to infest a host computer and connect back to a central server.  These bots allow the spammer to send large volumes of spam anonymously and remotely from the host computer.  In most instances, the victims are not aware that their computer has been hijacked.  The Federal Trade Commission estimates that bots are responsible for 95% of all spam. 

We are learning to live with spam-now accepting it as an online fact-of-life.  According to a study by the Pew Internet and American Life Project in May 2007, “American internet users seem somewhat less bothered by spam than before.”  Only 18% of internet users described spam as a “big problem.”  The majority, 51%, said spam is “annoying, but not a big problem.” Spam filters, while not perfect, seem to help. 

The Pew Internet study reported that 71% of email users use filters, up from 65% two years ago.   Users have become more reluctant to reveal their email address.  44% of email users have taken steps to make it more difficult for others to find their email address. 

More people are omitting their email address from their business cards. Plenty of websites list tips for reducing the amount of your junk e-mail. Notably, few people are boycotting the internet, or their email account, because of spam email.  Instead, users tend to see spam as part of the price they pay for being on the Internet. 

Spam is like a dull cyber-headache that, although unpleasant, isn”t painful enough to keep us in bed.

Contributed by Chris Stewart.  http://www.chrisstewartlaw.com/chrisBio.php?page=chrisBio

On February 28, 2008, I posted a blog entitled “Web Domain Names:  The 21st Century Land Grab.”  The blog catalogued some recent high dollar domain name purchases.  A new record has been set.  Apparently the domain name fund.com has been sold for the highest cash price ever reported: $9,999,950.  Stake your claim while you can! 

Submitted by Bruce Moseley. http://www.chrisstewartlaw.com/bruceBio.php?page=bruceBio

More employers are blocking access to certain websites.  Facebook is a popular target.  According to research by Sophos, a security company, 43% of workers polled said their employer already blocks Facebook access completely. Software has been developed by several companies to block access to social networking sites such as Facebook and MySpace. 

Guidelines are often used to help employees understand the company policy on personal internet use.  Interestingly, most employees do not question employer-restricted internet access. So why do employers want to restrict online access?  The main reason given is employees” reduced productivity – they are spending an inordinate amount of time on non-work related web sites. 

Other reasons include virus or spyware prevention, security, bandwidth concerns and potential liability issues. On the other hand, companies that allow access to Facebook may view it as a valuable networking tool.  They may worry about the possibility of an employee backlash to a ban.  Many accept that a certain amount of surfing can help productivity by allowing quicker access to information.

From a legal standpoint, a private employer who provides internet access on company equipment can generally set limitations on its use.  Employers can generally allow or restrict access to websites as they see fit.  The prudent employer makes sure that such limitations are communicated to employees in a writing that is acknowledged by the employee. 

Contributed by Amy Dobberstein. http://www.chrisstewartlaw.com/amyBio.php?page=amyBio

Domain sales are booming.  It has been estimated that up to 45,000 domain names are registered each day.  Domain name speculation is big business.  According to VeriSign, the operator of the Domain Name System servers that support dot-com and dot-net domains, there are currently over 150 million domain names in use. In the last decade, business.com was sold for $150,000. 

It was then sold for $7.5 million in 1999 and $345 million last July to R.H. Donnelley, a directory services firm.  $345 million for a domain name! While many sales remain private, domain auctions are taking place all over the country and we know of at least 33 domain sales for over a million dollars.  Some of the other top money-makers include:      sex.com – $12.5 million;     porn.com – $9.5 million;     diamond.com – $7.5 million;   casino.com – $5.5 million;     korea.com – $5 million;     vodka.com ? $3 million;   computer.com – $2.1 million.

The potential advertising dollars are an important driver of this domain name economy.  Banner ads are everywhere on the Internet.  Google, Microsoft and Yahoo have developed sophisticated ad networks through their search engines that place ads relevant to the domain name.  Popular websites with intuitive domain names are valuable. Like real estate, most of the prime spots have been claimed and will now cost you a pretty penny, but the market is definitely on the rise and there are millions more to be made buying and selling space on the Internet. 

Contributed by Bruce Moseley. http://www.chrisstewartlaw.com/bruceBio.php?page=bruceBio