Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Number crunchers might enjoy two recently decided copyright cases. In Bensbargains.net, LLC v. XPBargains.com, a website (Bensbargains.net) compiled some of the best shopping deals on the web. A competitor (XPBargains.com) copied the Bensbargains deals. A California federal court held that the Bensbargains compilations were copyrightable and set a numerical (and novel) threshold of 70% for infringement--that is, infringement occurred if 70% of all Bensbargains deals appeared at the XPBargains site.

In a second case, New York Mercantile Exchange v. Intercontinental Exchange, the New York Mercantile Exchange ("NYMEX") sought to enforce a copyright in its settlement prices -- numbers that are used when trading energy futures. NYMEX claimed copyright in these numbers (not in their compilation or collection). "Claimed" would be the key term, here since it's a basic premise of copyright law that protection won't be granted for individual numbers. (The Copyright Office refused the NYMEX registration.) Nevertheless, NYMEX pursued this lawsuit and lost. The court relied on the merger doctrine--a principle that copyright won't protect ideas when they're inseparable from the manner in which they're expressed.

For more about copyrightability and intellectual property law, pick up a copy of my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference (Nolo), now in its 9th edition.

The patent reform meter jumped dramatically to the "passage" side when the House of Representatives approved (220-175) most of the key provisions in the proposed U.S. patent overhaul. (The Senate Judiciary Committee has approved a similar bill.) The most earth-shaking change proposed in the new patent act: U.S. inventors will get patents based on who is "first to file," not who is "first to invent." One stumbling block--at least for White House signature--appears to be a provision apportioning damages in patent cases based on the "proportional components of a patent invention." High tech companies, consumer groups, and the finance industries support the reform; big pharma, biotech, and independent inventors oppose it.

To stay abreast of the changes to U.S. Patent law as they develop, be sure to visit the legal updates section of Nolo's website.

The practice of selling a competitors' trademark as a keyword--triggering rival sponsored ads on the search results page--is a contested area of Internet law and one that's never been fully litigated. Trademark practitioners awaiting a definitive court decision were disappointed when American Blinds threw in the towel in its dispute with Google (Google v. American Blinds & Wallpaper Factory). (No money changed hands in the settlement.)

American Blinds argued that it was illegal for Google to sell 37 phrases, including "american blind," "american blind discount," and "american blind factory." The company's case was crippled by discovery sanctions, a ruling against two trademarks, and rumors that American Blinds may have been engaging in the very conduct it was complaining about--buying rival trademarks as keywords. (Note, the American Blinds case was filed by Google seeking a declaratory judgment in 2003 after American Blinds had been threatening to sue for over a year.)

The next match-up in the keyword litigation arena is American Airlines Inc. v. Google. American Airlines filed its case August 16, 2007.

To learn more about trademarks and the law, check out Trademark: Legal Care for Your Business & Product Name, by Stephen R. Elias (Nolo).

Nolo editor Rich Stim writes about patents, copyright, trademarks, and everything in between.

Rich is the author of Patent, Copyright & Trademark: An Intellectual Property Desk Reference, Profit From Your Idea: How to Make Smart Licensing Deals, Getting Permission: How to License & Clear Copyrighted Materials Online & Off and co-author of several other Nolo titles. He also provides trade secret information at the NDAs for Free website and copyright information at the Stanford Copyright & Fair Use website.

The opinions expressed in this blog do not necessarily reflect the views of Nolo, its clients, or its partners. This blog provides legal information, not advice. Consult a lawyer if you want professional assurance regarding how the law applies to your situation.