Internet & E-Commerce

With a breadth of knowledge and depth of experience in the Internet and e-commerce arena, ArentFox Schiff’s Internet and E-Commerce team counsels and litigates on all facets of intellectual property relating to the Internet.

Our full range of legal counseling services helps our Internet and e-commerce clients keep their businesses focused, protected, and effective.

We counsel our clients on the enforcement of their intellectual property rights and litigate with a comprehensive understanding of their business needs. We devise and implement strategies that are tailored to achieve client goals.

We manage cases in a way that is most effective and economical for the big picture, whether it includes hard-nosed litigation or resolving disputes short of trial. While litigation is sometimes inevitable, we also strategize with our clients to discover ways to avoid disputes and costly issues before they occur.

We also advise clients on the full range of transactional needs for setting up, operating, and maintaining e-commerce businesses. Our unparalleled transactional experience includes licensing agreements, patent and trademark prosecution and licensing, data licensing, media agreements, and copyright protection and licensing. We routinely negotiate a variety of commercial agreements relating to the purchase and supply of products and services, including distributor, supply, value-added reseller, and OEM agreements.

Setting the Standard for Internet / E-Commerce Patent Litigation

Our seven offices across the United States give us the capability to protect our clients’ most valuable IP business assets regardless of where the case is or who is on the other side.

Scholastic Inc., one of the top 50 Internet/e-commerce retailers in North America, turns to us for our patent litigation capabilities as well as global Internet/e-commerce patent strategy.

We consistently earn victories in highly contested, extremely important patent cases, and have set new precedents along the way. We have set a standard of Internet/e-commerce patent litigation excellence that we are proud to bring to our clients.

A Complete Suite of Services

Clients benefit from our exceptional level of experience with and understanding of Internet and e-commerce business. We offer clients advice on:

Enforcement and Counseling
Our full range of counseling services is designed to help clients meet the myriad challenges relating to the operation and protection of their websites and enforcement of their intellectual property rights. These include:

  • Policing the use of trademarks and copyrights online
  • Resolving disputes relating to meta tag and keyword usage
  • Advising and litigating for clients on issues relating to online defamation and subpoenas to ISPs
  • Domain name dispute resolution, including arbitration through the WIPO Uniform Dispute Resolution Process
  • Data privacy and draft privacy policies including notice to consumers required under state data security breach notification laws
  • Data warehousing and data mining
  • Encryption and hyperlinking
  • Trademark and meta tag infringement
  • Spam and direct mailing
  • Trademark clearance

Information Technology and Software Agreements and Licensing
Our team has substantial experience, from the perspective of the client as well as the developer, in negotiating and drafting consulting services agreements for the development and implementation of software and technology systems. We have extensive experience negotiating ad serving agreements and affiliate program agreements, including agreements with online payment providers such as CheckFree and PayPal.

Additionally, QuikOrder, which provides Pizza Hut’s online ordering systems, counts on us for its Web-related transactional needs. On behalf of QuikOrder, we have negotiated complex agreements that involve Web services, custom application development, hosting, and translation for taking and routing orders to domestic and Canadian Pizza Hut stores. We also manage QuikOrder’s IP portfolio, which includes issued and pending patent applications, as well as provide e-commerce patent advice regarding all aspects of their proprietary system.

Consulting Agreements
Our work for software developers and consultants has included the preparation of numerous agreements commonly used for the provision of various consulting services, including development, implementation, training and testing services. We work with developers to craft customized solutions in the complex areas of intellectual property ownership, exclusivity, limitations of liability, and indemnification. And we have helped numerous companies standardize their forms for consulting and development services. We regularly prepare:

  • Development agreements for the creation of custom software systems
  • Turnkey system agreements
  • Implementation services agreements for the implementation and installation of software systems
  • Consulting services agreements
  • Support and maintenance agreements, including service level agreements
  • Joint venture and strategic alliance agreements
  • Confidentiality agreements
  • Source code escrow agreements
  • Software licensing agreements, including click-wrap and shrink-wrap licenses
  • Agreements for the use of databases and online services

We have many years of experience negotiating a wide range of software licensing agreements, including enterprise-wide license agreements and application service provider (ASP) agreements, with such vendors as Computer Associates, Oracle (including PeopleSoft and J.D. Edwards), SAP, IBM, Microsoft, Cyborg, Compuware, and BMC.

We also regularly negotiate service agreements with vendors such as IBM, EDS, SAP, Accenture, and Crowe Chisek. We have negotiated development agreements for websites and customer software systems, implementation service agreements for software systems, and support and maintenance agreements, including service level agreements.

Website Development and Operations
We routinely negotiate website development agreements involving content development and related software. In addition, we help clients develop and draft agreements such as hosting and Internet access agreements that license content for website use.

Website Terms and Policies
Our Internet and e-commerce team has extensive experience negotiating terms for website operations, including terms of sale, terms of use, and privacy policies. We have addressed a wide range of issues relating to online and electronic contracting, including click-wrap and shrink-wrap licenses, online purchase orders, and rental agreements.

Website Hosting and Telecommunications
We are well-versed in negotiating website hosting and Internet access agreements with a variety of carriers including Sprint/Nextel, MCI Worldcom/Verizon, and AT&T/SBC/Cingular. We have negotiated networking agreements for frame relay, microwave, and wireless services, and the implementation of LAN/WANs, as well as telecommunications agreements for voice and data services, including leased lines and cellular services.

B2B Websites
Our team is often called on to help clients set up business-to-business (B2B) marketplaces and portals. We have drafted and reviewed participation agreements for online B2B services. We have also negotiated agreements relating to eBay and specialized online auction services. We negotiate and review agreements relating to Electronic Data Interchange (EDI).

Internet Advertising
We have a broad range of capabilities with respect to advertising law-related matters and issues. These include:

  • Negotiating and preparing contracts to license trademarks, logos, animated characters, literary works, and other entertainment properties
  • Policing domain names and trademarks to guard against cybersquatters, infringement, dilution, and genericness
  • Prosecuting and defending claims relating to unfair or deceptive advertising
  • Reviewing and providing clearance for advertisements and promotions (including copy used in connection with sweepstakes and contests)
  • Drafting official rules for games of chance and skill and advising on state rules and registration requirements
  • Providing advice on the use of advertising and promotional materials on the Internet and the running of online sweepstakes and promotions
  • Securing permission to use copyrighted works from clearing agencies, publishers, and authors


Some recent representative Internet/e-commerce patent litigation cases include:

  • Innovative Automation LLC v. Scholastic Storia Inc. and Scholastic Book Stores Inc., Civil Action No. 2:14-cv-00775 (E.D. Tex. 2014). We defended Scholastic Inc. in a patent infringement action involving a method for duplicating and transferring electronic files for e-books over the Internet.
  • eDekka LLC v. Scholastic Inc., Case No. 2:14-cv-481 (E.D. Tex. 2014). Our team defended Scholastic in an e-commerce patent infringement action involving online “shopping cart” technology.
  • IPDEV Co. v. Ameranth, Inc., Case No. 14-CV-01303 (S.D. Cal. 2014). We are currently representing IPDEV in an interference action involving Internet online order systems.
  • Bed Bath & Beyond v. Sears, Case No. 08-cv-5839 (D. N.J. 2008-2013). We defended Sears in a patent infringement action involving online gift registries.
  • buySAFE, Inc. v. Google Inc., Civil Action No. 3:13-cv-781-HEH (E.D. Va. 2013). Our team represented buySAFE in a patent infringement action involving methods for monitoring and analyzing consumer behavior data to predict consumer demand in relation to offering a third-party transactional guarantee.
  • RPost Holdings, Inc., RPost Communications Ltd. and RMail Ltd. v. Infogroup, Inc., et al., Case No. 2:12-cv-00517-JRG (E.D. Tex. 2013). We defended Scholastic Inc. in a patent infringement action involving electronic mail marketing services and technologies that allow users to track, report, and analyze data regarding electronic messages.
  • Princeton Digital Image Corporation v. Scholastic Corporation, et al., Case No. 1:13-cv-00410-UNA (D. Del. 2013). Our team defended Scholastic Corporation in an e-commerce patent infringement action involving JPEG image coding to produce various-sized JPEG images of products sold through Scholastic’s online e-commerce website, including enlarged views of those products.
  • Brandywine Communications Technologies, LLC v. Consolidated Communications Holdings, Inc., Case No. 1:12-cv-01784 (D. Del. 2012). We defended Consolidated Communications in a patent infringement action involving data communication devices and methods related to the Internet.
  • GlobeTecTrust LLC v. Consolidated Communications Holdings, Inc., Case No. 1:12-cv-01239-UNA (D. Del. 2012). We defended Consolidated Communications in a patent infringement action involving fiber optic network systems and technology.
  • Ameranth, Inc. v. Pizza Hut, et al., Case No. 11–CV-1810 (S.D. Cal. 2011). Members of our patent litigation team are currently defending QuikOrder, Inc. in a patent infringement action involving information management and synchronous communications systems.