1.2 AMAZON WINS INJUNCTION
A federal court in Washington state has granted Amazon a preliminary injunction against Barnes & Noble on the grounds that the barnesandnoble.com "Express Lane" shopping system "will likely be found to infringe" the patent protecting Amazon.com's rival "1-Click" technology. (Amazon.com Inc -v- Barnesandnoble.com Inc, WD Wash, No. C99-1695P).

US district judge Marsha Pechman said shutting down Express Lane was in the public interest, because the public "is served by innovation on the Internet and in electronic commerce, particularly now while it is still developing rapidly." But "innovation will be discouraged if competitors are permitted a free ride on each other's patented inventions.

1.3 APRIL FOOL PRANK BACKFIRES
In out-of-court settlement (the settlement terms are in the public domain) three regular users of the "Silicon Investor" stocks chat-room site (www.techstocks.com) have agreed to pay the Business Wire press release distribution agency US$ 27,500 and remove contested parts of a web site.

Business Wire sued the trio earlier this year after they paid the service to distribute a spoof press release as part of an April Fool's Day joke involving a fake company called Webnode that purported to be auctioning off pieces of the Internet. Scores of bulletin-board users expressed interest in investing in the company before the group revealed the prank. The three say they created the hoax to educate investors about fraud on the Internet. The payment to Business Wire was covered by one of the trio's homeowner's insurance policy.

Business Wire originally filed the lawsuit in the US district court in San Francisco alleging the prank constituted fraud, infringement of Business Wire's trademark, breach of contract, defamation and conspiracy to "publicize a phony investment opportunity."

1.4 COMMENT - DOMAIN NAMES STILL A GAME OF TWO HALVES
On 3 December 1999, Mr Justice Rattee refused French Connection's application for an injunction against Tony Sutton, the proprietor of the fcuk.com domain name.

"Fcuk" has been registered by French Connection as a trademark in the UK, although Mr Sutton registered the domain name before the registration of the trademark. The current application has been made on the basis of copyright infringement.

The judge felt that the logo was "offensive and tasteless" and unworthy of protection. He went further, suggesting that the High Court should review the registration of the trademark.

Section 3(3)(a) of the Trade Marks Act 1994 sets out certain grounds for the refusal of a registration which is "contrary to public policy or to accepted principles of morality." This would seem to be a higher test than the suggestion that the mark is "offensive and tasteless". It is instructive, when considering how far the mark is an affront to the public morality, to note that since the campaign's launch the Advertising Standards Authority has received only 27 complaints.

It had been thought that the Court of Appeal's decision in Marks and Spencer -v- One in a Million had effectively settled the issue of cyber squatting in the UK. The Court in that case also gave considerable guidance on the subject of passing off, and suggested that the mere registration of a mark could amount to passing off, on the basis that the proprietor would be shown as associated with the domain name by users conducting a search of the "Who Is" registry at Network Solutions or Nominet. (Editor's note: Earlier this week it was reported that a UK resident had registered the domain name "billgates.co.uk" and was now offering to sell it to Microsoft for £2million.)

The French Connection case throws open wider issues in relation to the registration of "offensive" domain names. Some countries, such as Australia prohibit the registration of "offensive or obscene domains". The same restriction does not apply to the registration of generic top level domains (TLDs).

The approach of the courts to this case is a concern, and contrasts sharply with jurisdictions such as the United States, which is extremely careful not to regulate on matters of taste. In the future, proprietors of trademarks which are registered internationally may cherry-pick the jurisdiction in which an action is commenced.

Mr Justice Rattee has ordered a full trial of this matter, and it is hoped that the final determination will provide clarity on this point.
(Commentary by Stuart Nuttall, Internet & Technology Law Group, Jeffrey Green Russell)

1.5 US CASE CLARIFIES CYBER LIBEL
While Internet service providers in the UK await the final outcome of the Godfrey -v- Demon Internet case, in the United States the Court of Appeals has just held that an ISP is merely a conduit for information - as opposed to a publisher - and no more responsible than a telephone company for defamatory materials transmitted over its lines.

In Lunney -v- Prodigy Services (No. 164) the court unanimously upheld an Appellate Division, Second Department, decision that dismissed a defamation suit brought against Prodigy by the father of a boy scout whose identity was assumed by an unknown imposter, who posted vulgar messages in the boy's name on an electronic bulletin board and e-mailed "obscene, abusive, threatening and sexually explicit" messages, also in the boy's name, to a local scoutmaster.

"We are unwilling to deny Prodigy the common-law qualified privilege accorded to telephone and telegraph companies," Judge Albert Rosenblatt wrote for the court. "The public would not be well-served by compelling an ISP to examine and screen millions of e-mail communications, on pain of liability for defamation... Prodigy's role in transmitting e-mail is akin to that of a telephone company, where one neither wants nor expects to superintend the content of its subscribers' conversation. In this respect, an ISP, like a telephone company, is merely a conduit."

Although the court found the question of liability for bulletin board postings "more complicated" due to the "generally greater level of cognizance that their operators have over them," the court still held that Prodigy was not a publisher of the electronic bulletin board messages, and found "no occasion to hypothesize whether there may be other instances in which the role of an electronic bulletin board operator would qualify it as a publisher."

Judge Rosenblatt went on to say that "given the extraordinarily rapid growth of this technology and its developments, it is plainly unwise to lurch prematurely into emerging issues, given a record that does not at all lend itself to their determination. The Court also declined to enter into a debate on whether the Communications Decency Act renders an ISP unconditionally immune from notice-based liability.

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