X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.
While helping to usher in the Internet’s explosive growth, Dulles-based America Online Inc. has also witnessed the growth of its own intellectual property litigation. Randall Boe, AOL’s deputy general counsel, has been on the front lines for much of that time. A 1987 graduate of the University of Pennsylvania Law School, Boe worked as a general litigator at D.C.’s Arent Fox Kintner Plotkin & Kahn, dealing with intellectual property, antitrust, and product liability cases. When AOL needed someone to help head up the litigation section of what is now a 50-lawyer legal department in 1996, Boe decided to make the transition to in-house work. “I am a litigator by training, and so I run the litigation group here,” says Boe. “I have my finger in most of the pot” — including IP matters. “We have a very active IP litigation docket. IP is a valuable asset, and defending that IP is fairly critical,” explains Boe. AOL’s legal staff routinely sees the use of the company’s marks in others’ Web addresses, and Boe says that it has been necessary for AOL to police its marks on the Internet. “Often, we’re involved in trying to protect our marks from people trying to use different features of the service, and from people trying to use AOL as a suffix,” says Boe. AOL has also issued “Trademark Guidelines” on its Web site, which outline how to obtain permission to use its marks and what to do when that permission is granted. When the Internet giant finds that one of its marks is being used improperly, it often turns to the National Arbitration Forum. In accordance with the dispute resolution policy of the Internet Corporation for Assigned Names and Numbers (ICANN), AOL has filed complaints with the NAF in the past two years against entities registering domain names like aolmoviefone.com, ao-l.org, and ao-lus.com. AOL won those cases, and the infringing domain names were transferred to the company. But the NAF is not the only jurisdiction in which AOL is active. “We bring a lot of cases in the Eastern District of Virginia,” says Boe. “It deserves the good reputation it has earned from handling IP and high-tech cases.” Because AOL’s headquarters are in the Eastern District, it’s an easy decision to bring cases there. But Boe cautions that his troops, and AOL’s outside counsel, are always ready to travel. “Depending on where the defendant is,” explains Boe, “we have cases all over the country.” Although the company is often in court, Boe says that AOL is not exactly litigation-hungry. The legal department’s approach to bringing an IP suit is generally case-specific. According to Boe, the company first asks itself: “Is it something we need to do, and do we have a chance of winning it?” If the answers are yes, then, Boe says, AOL — like nearly every other large company — must ponder whether “bringing the case [is] something that is consistent with the company’s public perception.” It’s an important question, even if it has nothing to do with the merits of a case. Jack White, the vice president and associate general counsel for wholesale markets at Verizon, can empathize with AOL’s concerns. “Bell Atlantic [now Verizon] is a big boy on the block, so we have to consider litigation very carefully,” says White. “There’s an innate bias against big companies. The jury doesn’t like to see big companies beating up on small companies. When we go out and try to enforce our rights against small companies, we have to think about it very carefully.” As AOL’s star has risen and the likelihood of infringement on AOL’s intellectual property has increased, Boe and his colleagues have been kept quite busy. “For people who’ve been here for four or five years, it’s been a fairly intense ride,” says Boe. And when asked about his favorite activities outside AOL, Boe quickly — and facetiously — replies, “Sleeping.”

Want to continue reading?
Become a Free ALM Digital Reader.

Benefits of a Digital Membership:

  • Free access to 3 articles* every 30 days
  • Access to the entire ALM network of websites
  • Unlimited access to the ALM suite of newsletters
  • Build custom alerts on any search topic of your choosing
  • Search by a wide range of topics

*May exclude premium content
Already have an account?

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.