![Page 1: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/1.jpg)
TRADEMARK AND COPYRIGHT ISSUES ON
THE INTERNET
![Page 2: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/2.jpg)
Vanessa Cooper, Associate General Counsel, IP & Privacy, Kaplan, Inc.Sarah Crispi, Director of Legal Affairs, Discovery Communications, LLCKeith Hunt, Legal Counsel, Labatt Breweries of CanadaStanley Pierre-Louis, Vice President and Associate General Counsel, Viacom Inc.Katherine Tabor, Senior Counsel, IP Litigation PracticeRobert Weisbein, Partner, IP Litigation Practice
![Page 3: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/3.jpg)
Wiki Infringement: Copyright Issues Relating To User-
Generated Content
![Page 4: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/4.jpg)
What is User-Generated Content?
“User-generated content (UGC) refers to various kinds of media content that is produced or primarily influenced by end-users; as opposed to traditional media producers, licensed broadcasters, and production companies.” Wikipedia.com
![Page 5: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/5.jpg)
Types of User-Generated Content Sites
Blogging SitesPodcasting SitesVideo Posting SitesSocial Networks/Virtual CommunitiesWiki Sites
![Page 6: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/6.jpg)
Common Characteristics of User-Generated Content Sites
Open Access: Any “user” can post materialsMinimal Verification of Posters and of Posted Materials: – Self-regulation (e.g., Terms of Service) v. no
regulation (e.g., FCC)Material posted in open formats (no DRM)– Creates open access and avoids lack of inter-
operability in formats– Allows for posting of unauthorized materials and
unverified data
![Page 7: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/7.jpg)
Licensing SchemesPre-Roll and Overlay AdvertisementsTargeted AdvertisingAdvertisements Attached to Premium ContentRevenue Sharing with UsersCustom CommunitiesBrand Profile PagesDedicated Channels
Monetizing UGC
![Page 8: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/8.jpg)
Digital Millennium Copyright Act17 U.S.C. § 512(a)-(d)
Provides “safe harbor” from liability for online service providersRequirements:– No actual or constructive knowledge of infringement– Upon obtaining knowledge, service provider must
expeditiously remove content (“notice and take down”)– Service provider must not receive financial benefit
directly attributable to infringing activity and have the right and ability to control such activity
– Must designate and register an agent to receive notice of infringement
– Must implement means of terminating repeat offenders
![Page 9: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/9.jpg)
Digital Millennium Copyright Act17 U.S.C. § 512(a)-(d)
Strict Notice Requirements– Identification of copyrighted works (or, if multiple
works, a representative list)– Identification of infringing material with sufficient
detail to allow service provider to locate material– Statement that use is not authorized– Sworn statement that notification is accurate– Physical or electronic signature of copyright owner or
agent– Contact information for copyright owner or agent
![Page 10: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/10.jpg)
Digital Millennium Copyright Act17 U.S.C. § 512(a)-(d)
Must terminate repeat offenders, but no statutory duty to monitor for infringement
– Perfect 10 v. CCBill, 488 F.3d 1102 (9th Cir. 2007)
– Io Group v. Veoh Networks, Inc., 06 Civ. 3926 (N.D. Cal. Aug. 27, 2008)
![Page 11: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/11.jpg)
Digital Millennium Copyright Act17 U.S.C. § 512(a)-(d)
Notice and Takedown Provisions– Online Policy Group v. Diebold, 337 F. Supp. 2d 1195 (N.D.Ca. 2004)
“Diebold knowingly materially misrepresented that Plaintiffs infringed Diebold’s copyright interest . . . . there is no genuine issue of fact that Diebold . . . specifically intended . . . that its letters . . . would result in prevention of publication of that content.”
– Rossi v. MPAA, 391 F.3d 1000 (9th Cir. 2004)Subjective good faith requirement that alleged use is infringing“A copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake . . . . Rather, there must be a demonstration of some actual knowledge of misrepresentation.”
– Lenz v. Universal Music Corp., 2008 WL 3884333 (N.D.Ca. Aug. 20, 2008)“An allegation that a copyright owner acted in bad faith by issuing a takedown notice without proper consideration of the fair use doctrine thus is sufficient to state a misrepresentation claim pursuant to [the DMCA].”
![Page 12: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/12.jpg)
IP Cases Involving User-Generated Content Sites
Recent Decisions– IO v. Veoh– Lenz v. Universal
Pending Cases– Viacom v. YouTube, Inc. (07-cv-2103 S.D.N.Y)– Premiere League v. YouTube, Inc. (07-cv-3582 S.D.N.Y)– Tur v. YouTube, Inc. (06-cv-4436 C.D. Cal.)– UMG Recordings, Inc. v. Veoh Networks, Inc. (07-cv-
1568 S.D. Cal.)
![Page 13: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/13.jpg)
Technological Solutions
Digital Watermarking– “[P]rocess of embedding information into digital
signal. The signal may be audio, pictures or video, for example. If the signal is copied, then the information is also carried in the copy.”Wikipedia.com
– Principal Current Use – Forensic detection– Emerging Use – Control playback of content on
consumer electronic devices
![Page 14: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/14.jpg)
Technological SolutionsDigital Fingerprinting– A technique in which sophisticated software
identifies, extracts and then compresses characteristic components of an audio or video file, enabling that audio and/or video to be immediately and uniquely identified by its resultant “fingerprint.” Wikipedia.com
– Primary tech solution for infringing content on UGC Sites
Audible Magic, Vobile, Philips, Gracenote and othersYouTube Video ID
![Page 15: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/15.jpg)
Industry Self-RegulationDriven By:– Effort to curtail widespread infringement of digital
content– Desire to minimize litigation risk– Address issues relating to filtering of content
Two Examples:– UGC Principles– Electronic Frontier Foundation Fair Use Principles
![Page 16: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/16.jpg)
Industry Self-RegulationUGC Principles– Non-binding principles developed by content companies and
UGC site operators to balance their interests
Signatories: CBS Corp., Crackle, DailyMotion, Fox Entertainment Group, Microsoft Corp., MySpace, NBC Universal, Sony Pictures Entertainment, Veoh Networks, Inc., Viacom Inc., and The Walt Disney Company
– Stated goals of UGC principles:
Eliminate infringing contentAccommodate fair useProtect user privacy
![Page 17: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/17.jpg)
Industry Self-Regulation
Service providers agree to employ automatic filtering technologies (and, where appropriate, human review)Service providers agree to regularly update and enhance their filtering technologyDatabase of protected content to be provided by content ownerContent owner decides terms of useDefault action is to block identifying copyrighted material
![Page 18: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/18.jpg)
Industry Self-Regulation
UGC Principles – Other Key Provisions– Service providers to block links to third-parties
dedicated to disseminating infringing content– Provide enhanced mechanisms to copyright owners
to search for potentially infringing content– Compliance with DMCA takedown and notice
provisions– Commitment to retain user data for at least 60 days– Terminate accounts of repeat infringers
![Page 19: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/19.jpg)
Industry Self-RegulationEFF Fair Use Principles– Principles endorsed by EFF, Public Knowledge, ACLU of
Northern California, Harvard’s Berkman Center– Goals:
“Wide berth” for transformative and creative usesScope limited to fair use
– Key provisions include:Protection of fair use incorporated into automated filtering technologiesRequire DMCA notice prior to content removalMechanism for dispute prior to removal of matched contentCreation of “dolphin hotline”
![Page 20: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/20.jpg)
May Thou Purchase Thy Neighbor’s Mark?Keyword Advertising and the
Initial Interest Confusion Doctrine
![Page 21: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/21.jpg)
What is Keyword Advertising?
Allows advertiser to buy words/phrases (“keywords”) – including trademarks – to trigger “sponsored” search resultsKeyword advertising may direct consumers to a competitor’s goods/servicesThe keyword is not necessarily visible in the “sponsored” result – Ads can be labeled or unlabeled– Cf. use of mark as metatag
![Page 22: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/22.jpg)
Trademark Visible
Trademark Not Visible
Example: Google® AdWords®
![Page 23: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/23.jpg)
Search Engine Keyword Advertising Policies
Advertisers responsible for ad text and keyword. Provides advertising space; it does not “sell keywords”
Upon complaint, will conduct limited investigation, and US/Canada: disable use of TM in text of adOutside US/Canada: disable keyword and/or ad text
Allow third-party TM keyword bid only if relevant, i.e. (a) resale, (b) non-competitive information, or (c) generic or merely descriptive; TM also allowed in ad text if compliant.
Upon complaint: US: review for compliance with relevancy guidelinesoutside US: comply with applicable fair use principles
Allow third-party TM keyword bid only if “truthful and lawful,” i.e. (a) resale, (b) non-competitive information, or (c) dictionary term; TM allowed in ad text
Upon complaint, limited investigation, remove if not in compliance; approach may differ from country to country
Yahoo!
Microsoft
![Page 24: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/24.jpg)
Is keyword advertisingtrademark infringement?
There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.
Sponsored results show Buyer’s marks, and link to Buyer’s website, which sells products that compete with Owner’s, but does not sell Owner’s products.
Trademark Infringement Not Trademark Infringement
Sponsored results show Owner’s marks, and link to website selling Buyer’s competitive products, and not Owner’s products
Trademark Infringement Not Trademark Infringement
Sponsored results show Owner’s marks, and link to website selling Buyer’s and Owner’s products
Trademark Infringement Not Trademark Infringement
Sponsored results show Owner’s marks, and link to website selling Buyer’s unrelated products
Trademark Infringement Not Trademark Infringement
![Page 25: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/25.jpg)
Question 1:
Should buying/selling a trademark to trigger keyword advertising be considered actionable trademark “use”?
Use in commerceNot use in commerce
There is no wrong answer. Circuits are split.
![Page 26: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/26.jpg)
Is Purchase of Keyword “Use” in Commerce?Court Split
Tenth CircuitEleventh Circuit
DC CircuitFederal Circuit
Second CircuitFourth CircuitSixth Circuit
First Circuit Third Circuit
Fourth CircuitFifth CircuitSixth Circuit
Seventh CircuitEighth CircuitNinth Circuit
Not Yet AddressedNot Use in CommerceUse in Commerce(“Majority View”)
The Fourth and Sixth circuits have conflicting district court-level decisions.
Practice Tip:If you are considering bringing a claim for keyword trademark infringement, forum shopping is critical.
![Page 27: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/27.jpg)
– First Circuit:Boston Duck Tours, LP v. Super Duck Tours, LLC, (D. Mass. 2007)
– Third Circuit:800-JR Cigar, Inc. v. GoTo.com, Inc., 2006 U.S. Dist. LEXIS 48279 (D.N.J. July 17, 2006)Buying for the Home LLC v. Humble Abode LLC, 2006 U.S. Dist LEXIS 76371 (D.N.J. 2006) J.G. Wentworth v. Settlement Funding LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. 2007)
– Fourth Circuit:Government Employees Insurance Co. v. Google, Inc., 2006 WL 1903128 (E.D. Va. 2005)
– Fifth Circuit:American Airlines Inc. v. Google Inc., N.D. Tex., No. 4:07-cv-00487(motion to dismiss denied Oct. 24, 2007)
Keyword Advertising = “Use in Commerce”– Sixth Circuit:
T.D.I. Int’l, Inc. v. Golf Preservations, Inc., 2008 U.S. Dist. LEXIS 7427 (E.D. Ky. Jan. 31, 2008)
– Seventh Circuit:International Profit Associates Inc. v. Paisola,2006 U.S. Dist. LEXIS 82971 (N.D. Ill., Nov. 14, 2006)
– Eight Circuit:Edina Realty, Inc. v. TheMLSOnline.com,2006 WL 737064 (D. Minn. March 20, 2006) Hysitron Inc. v. MTS Systems Corp., 2008 U.S. Dist. LEXIS 58378 (D. Minn. Aug. 1, 2008)
– Ninth Circuit:Playboy Enters., Inc. v. Netscape Communications Corp.,354 F.3d 1020 (9th Cir. 2004) Google Inc. v. Am. Blind & Wallpaper Factory, Inc., 2007 U.S. Dist. LEXIS 32450 (N.D. Cal. Apr. 18, 2007)Storus Corp. v. Aroa Mktg.,2008 U.S. Dist. LEXIS 11698 (N.D. Cal. Feb. 15, 2008)
![Page 28: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/28.jpg)
Keyword Advertising is Not “Use in Commerce”– Second Circuit:
Rescuecom Corp. v. Google Inc.,456 F. Supp. 2d 393 (N.D.N.Y. 2006)Merck & Co. v. Mediplan Health Consulting Inc., 431 F. Supp. 2d 425 (S.D.N.Y. 2006) Fragrancenet.com Inc. v. Fragrancex.com Inc.,493 F. Supp. 2d 545 (E.D.N.Y. 2007)
– Fourth Circuit:U-Haul Int’l, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723 (E.D. Va. 2003)
– Sixth Circuit:Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003)
![Page 29: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/29.jpg)
Question 2:
If keyword advertising amounts to “use” in commerce, is it likely to cause confusion?
![Page 30: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/30.jpg)
Introduction: Metatagging Hypo: Citement Tape v. O’Lungs
O’Lungs Glass Warehouse is an internet-based retailer of stained glass supplies. Citement Tape Corp. manufactures CITEMENT TAPE and CITEMENT FOIL for use in stained glass window repairs. O’Lungs sells tapes and foils that compete directly with Citement’s.
Beginning in 2000, O’Lungs included both of the Citement marks in the website’s metatags, and in white lettering on the white background of its webpage. None of these is apparent to visitors to the website. O’Lungs does not sell Citement products. O’Lungs did this so search engines would include the O’Lungs website in searches for these terms. In 2003, Citement brought suit for trademark infringement.
![Page 31: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/31.jpg)
Metatagging Hypo: Citement Tape v. O’Lungs
Part I: Likelihood of ConfusionIs this likelihood of confusion under the Lanham Act?
Likelihood of confusionNo likelihood of confusion
![Page 32: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/32.jpg)
Metatagging HypoPart I: Likelihood of ConfusionIs this likelihood of confusion under the Lanham Act?
Likelihood of confusionNo likelihood of confusion
Answer:Likelihood of confusion: Purpose of Luring Customers
“. . . particularly [O’Lungs’] admission that his purpose in using the [Citement] marks was to lure customers to his site, permit us to conclude that no genuine dispute exists regarding the likelihood of confusion. As a result, [Citement] was entitled to summary judgment on the liability issue.”
![Page 33: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/33.jpg)
Metatagging HypoPart II: Profits
Given the facts above, the district court found that such behavior was “willful,” and subsequently awarded profits. On appeal, the defendant argued that its “use” of the marks was intentional, but “not ‘willful’ because [defendant] was unaware that such use of the marks was illegal.” Was this use fairly found “willful”?
WillfulNot willful
![Page 34: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/34.jpg)
Metatagging HypoPart II: Profits
WillfulNot willful
Answer:Willful: Intentional ConcealmentO’Lungs “had programmed its website so that [Citement’s] marks were displayed in the same color as the webpage background, concealing them from view. We can find no clear error in the district court’s conclusion that such intentional concealmentprovides strong circumstantial evidence of ‘willfulness.’”Venture Tape Corp. v. McGills Glass Warehouse, 2008 WL 3959997 (1st Cir. Aug. 28, 2008).
![Page 35: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/35.jpg)
Keyword Advertising Hypo: Dirtlabors v. Farwest
Both Dirtlabors LLC and Farwest Industrial Supply are companies that distribute soil erosion and dust control products in the United States. Farwest’s product line includes DIRT-GLOO. Dirtlabors, without Farwest’s permission, uses the phrase “dirt gloo” in keyword advertising on an Internet search engine and uses variations of the phrase in metatags for its websites. Search engine users would see the Dirtlabors website in results for a search of “dirt gloo” along with other results. Farwest claims that this use of the DIRT-GLOO mark creates a likelihood of confusion.
Likelihood of Confusion?Likelihood of ConfusionNo Likelihood of Confusion
![Page 36: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/36.jpg)
Keyword Advertising Hypo: Dirtlabors v. Farwest
Likelihood of Confusion?Likelihood of ConfusionNo Likelihood of Confusion
AnswerConfusion: Initial Interest Confusion“A person typing [“dirt gloo”] into a search engine presumably would be
somewhat familiar with [Farwest’s] product and would be looking for the product or its maker, and yet would be directed by the keywords and metatags to [Dirtlabors’] websites. The confusion—thinking one would be connected to [Farwest] when in fact [Dirtlabors’] websites also appear in the search results—would entirely be caused by [Dirtlabors’] use of [Farwest’s] mark.”
Soilworks LLC v. Midwest Industrial Supply, Inc., 2008 WL 3286975 (D. Ariz Aug. 7, 2008)
![Page 37: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/37.jpg)
Initial Interest Confusion Defined“Initial interest confusion occurs when the defendant uses the plaintiff's trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.”
Interstellar Starship Services, Ltd. v. Epix Inc., 304 F.3d 936, 941 (9th Cir.2002) (quoting Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (quoting Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d. 1394, 1405 (9th Cir. 1997)).
In the context of keyword advertising, initial interest confusion occurs when the search results are shown to the user.
![Page 38: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/38.jpg)
Brookfield Commc’ns, Inc. v. W. Coast Entm't Corp.,174 F.3d 1036, 1064 (9th Cir. 1999).
Initial Interest Confusion is much like posting a sign with another's trademark in front of one's store. Suppose [Blockbuster Video] puts up a billboard on a highway reading -- "West Coast Video: 2 miles ahead at Exit 7" -- where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast's store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by thehighway entrance, they may simply rent there. Even consumers whoprefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have noreason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast's acquired goodwill.
![Page 39: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/39.jpg)
Have Courts Adopted Initial Interest Confusion?Court Split
DC CircuitFederal Circuit
Fourth CircuitEighth Circuit**
Eleventh Circuit
First Circuit (maybe)* Second CircuitThird CircuitFifth CircuitSixth Circuit
Seventh CircuitEighth Circuit**
Ninth CircuitTenth Circuit
Not Yet AddressedHave Not Adopted IICAdopted IIC
*Although the 1st Circuit has not expressly adopted Initial Interest Confusion, it has explicitly denied rejecting the doctrine.
**There are conflicting district court opinions in the 8th Circuit.
![Page 40: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/40.jpg)
The Revote: Is keyword advertisingtrademark infringement?
There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.
Sponsored results show Buyer’s marks, and link to Buyer’s website, which sells products that compete with Owner’s, but does not sell Owner’s products.
Trademark Infringement Not Trademark Infringement
Will be addressed in the Harry and David cases recently filed in the U.S. District Court for the District of Oregon (Ninth Circuit): Harry and David v. 1-800-Flowers.com Inc., case number 08-cv-3084; Harry and David v. Delightful Deliveries Inc., case number 08-cv-3086; Harry and David v. FTD Group Inc. et al, case number 08-cv-3089; Harry and David v. Fruit Co. Inc., case number 08-cv-3087; Harry and David v. Provide Commerce Inc., case number 08-cv-3085; and Harry and David v. Houdini Inc., case number 08-cv-3088.
![Page 41: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/41.jpg)
The Revote: Is keyword advertisingtrademark infringement?
There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.
Sponsored results show Owner’s marks, and link to website selling Buyer’s competitive products, and not Owner’s products
Trademark InfringementNot Trademark Infringement
Will be addressed in the recently filed Rosetta Stone Ltd. v. Rocket Languages Ltd, et al., 08-cv-04402 (C.D. Cal)
![Page 42: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/42.jpg)
The Revote: Is keyword advertisingtrademark infringement?
There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.
Sponsored results show Owner’s marks, and link to website selling Buyer’s and Owner’s products
Trademark Infringement Not Trademark Infringement
This question has been addressed under the initial interest confusion doctrine with conflicting results:
May be initial interest confusion: see Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006).
Not initial interest confusion: see Designer Skin, LLC v. S & L Vitamins, Inc., 2008 WL 2116646 (D. Ariz. May 20, 2008) (noting that it shares “virtually identical facts” with Australian Gold.)
![Page 43: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/43.jpg)
The Revote: Is keyword advertisingtrademark infringement?
There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.
Sponsored results show Owner’s marks, and link to website selling Buyer’s unrelated products
Trademark Infringement Not Trademark Infringement
The result depends on the circumstances:Possibly found under the initial interest confusion doctrine. See, e.g., Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1062 (9th Cir.1999) (recognizing initial interest confusion in the Internet context). But remember, not all Circuits consider purchase of a keyword “use in commerce.” See, e.g., Fragrancenet.com Inc. v. Fragrancex.com Inc., 439 F. Supp. 2d 545 (E.D.N.Y. 2007) (purchase of a keyword is not “use in commerce”).Traditional “brick and mortar” world principles still apply.
![Page 44: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/44.jpg)
Decision Tree SlideSomeone has purchased your keyword, and you want to bring a trademark claim
What circuit are you in?
1st, 3rd, 5th, 7th, 8th, 9th Circuits
4th, 6th, 10th, 11th, DC, Federal
Circuits2nd Circuit
![Page 45: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/45.jpg)
Recovering Your Domain Names:Do You Negotiate or Litigate?
![Page 46: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/46.jpg)
Preliminary ConsiderationsWhat domain names are most important to the corporation?– How is this determined and is this reviewed periodically
Factors to consider when determining what domain names to recover– Similarity of domain names to the corporation’s
trademarks– Internet traffic (number of “hits” the cybersquatter’s
website receives)– Number of relevant domain names registered by a given
cybersquatter– Location of registrant– Location of registrar
![Page 47: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/47.jpg)
Preliminary Considerations – Continued
Who will do the necessary research?How much is the corporation willing to spend to recover domain names?Once it is determined what domain names will be recovered, who will complete the process?– The corporation– A domain name broker– Outside counsel
![Page 48: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/48.jpg)
Options For Recovering A Domain NameDirect NegotiationUniform Dispute Resolution Policy Proceeding (UDRP)– National Arbitration Forum (NAF)– World Intellectual Property Organization (WIPO)– Asian Domain Name Dispute Resolution Centre
(ADNDRC)Litigation– Anti-cybersquatting Consumer Protection Act (ACPA)
action (15 U.S.C. 1125(d)(1)(A))– ACPA In Rem action (15 U.S.C. 1125(d)(2)(A))
![Page 49: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/49.jpg)
Negotiation – Initial IssuesWho is the registrant of the domain name?– An individual– A domain name broker– Cannot be determined
Who will contact the registrant?– The corporation (in-house counsel or IT department)– Outside counsel– A domain name broker
How will the registrant be contacted?– Corporation identified or anonymously
![Page 50: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/50.jpg)
Negotiation – Initial Issues
What is the corporation willing to pay for the domain name?How long is the corporation willing to negotiate with the registrant before pursuing other options?If negotiation does not work, then what?
![Page 51: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/51.jpg)
Negotiation – Advantages
Cost effective – no need to prepare a complaintPotential for a quick resolution if registrant is cooperativeAvoid a UDRP loss when there is a question of winningAbility to maintain control over the process
![Page 52: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/52.jpg)
Negotiation – Disadvantages
Registrant still controls the domain name and may transfer the domain name to another entityMay be more expensive than a UDRP proceeding and take longer if the registrant is unwilling to negotiateRegistrar is not required to transfer the domain name until registrant provides instructions to do soDifficult to enforce the transfer of the domain name if the registrant reneges on the agreement
![Page 53: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/53.jpg)
URDP Proceeding
To prevail, a domain name complainant must establish the following:– The domain name in question is identical or
confusingly similar to a valid mark;– The registrant has no rights or legitimate
interest in the domain name; and– The domain name was registered and used in
bad faith (Uniform Dispute Resolution Policy (“The Policy”), ¶ 4(a))
![Page 54: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/54.jpg)
URDP Proceeding – ProcedureComplaint is filed in proper forum and reviewed for compliance with The PolicyThe registrant has twenty (20) days to file a responseIf registrant files a timely response, both parties may file one additional submissionA panel is assigned and issues a decision within fourteen (14) days of being assignedThe respondent has ten (10) days to appeal the panel’s decision in the proper jurisdiction or the domain name will be transferred
![Page 55: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/55.jpg)
URDP Proceeding – AdvantagesApproved forum notifies registrar and the domain name is locked to prevent transferFixed timeline for the parties’ submissions and panel decisionProceeding is usually completed in two (2) monthsReasonable filing fees based on number of domain names at issueEach party limited to two submissions Online filing and communication with the forums Approximately 84% of the complaints filed with WIPO from 1999 to present have resulted in the transfer of the domain name (www.wipo.int/amc/en/domains/statistics/)
![Page 56: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/56.jpg)
URDP Proceeding – Disadvantages
Complainant’s only remedy is transfer of the domain name – no damages can be awardedSeparate complaints must be filed for each domain name registrarIf the domain name is registered in a foreign country, the complaint must be translated into the language of that countryNo appeal with the forumForeign respondents can file appeals in their country
![Page 57: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/57.jpg)
ACPA Actions Based On Personal Jurisdiction
To prevail, the plaintiff must establish the following:– that registrant had a bad faith intent to profit from the
mark; and– registers, traffics in, or uses a domain name that is (1)
identical or confusingly similar to a distinctive mark or (2) identical, confusing similar to, or dilutive of a famous mark that is famous at the time of the registration of the domain name 15 U.S.C. §§ 1125(d)(1)(A)(i) and (ii)
Bad faith is determined by considering nine factors listed in 15 U.S.C. § 1125(d)(1)(B)(i)
![Page 58: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/58.jpg)
ACPA Actions Based On Personal Jurisdiction – Remedies
Forfeiture or cancellation of the domain name or the transfer of the domain name to the trademark ownerStatutory damages ($1,000-$100,000) or actual damages and lost profitsAttorneys’ FeesCosts
![Page 59: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/59.jpg)
ACPA Actions Based On Personal Jurisdiction – Advantages
May bring additional causes of action for trademark infringement, trademark dilution, and unfair competitionMore remedies are availableInitially may be less expensive than a UDRP proceeding if there are many domain namesIn federal court
![Page 60: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/60.jpg)
ACPA Actions Based On Personal Jurisdiction – Disadvantages
Time to resolution will be much longer than for a UDRP proceedingGreater burden to corporate resources given the longer resolution timeMore expensive than a UDRP proceeding
![Page 61: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/61.jpg)
ACPA Actions Based On In Rem Jurisdiction
Under 15 U.S.C. § 1125(d)(2)(A), an in rem proceeding may be filed against a domain name(s) where the registrar is located if:– In personam jurisdiction does not exist over the
potential defendant in a civil action; or– The potential defendant cannot be located after
sending a notice of the violation and publishing a notice of action
![Page 62: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/62.jpg)
ACPA In Rem Action – RemediesThe remedies in an in rem action are limited to forfeiture or cancellation of the domain name or the transfer of the domain name to the trademark owner (15 U.S.C. §1125(d)(2)(d))– Two courts have awarded TROs, preliminary injunctions,
costs, and/or attorneys’ fees (BroadBridge Media LLC v. Hypercd.com, 106 F.Supp.2d 505 (S.D.N.Y. 2000); Agri-Supply Co. v. Agrisupply.com, 457 F.Supp. 660 (E.D. Va. 2006))
– Commentators, including Rudolf Callman, J. Thomas McCarthy, and Jerome Gilson, disagree with these court decisions
![Page 63: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/63.jpg)
ACPA In Rem Action –Advantages/Disadvantages
Advantages– In rem proceeding initially may be less expensive than a
UDRP proceeding if there are many domain names– Allows for court control of the domain name(s) that is the
subject of the action so that it cannot be transferred– In federal court
Disadvantages– Remedies are limited– Action must be filed in the judicial district of the registrar
of the domain name(s) at issue
![Page 64: TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET · What is User-Generated Content? “User-generated content (UGC) refers to various kinds of media content that is produced or primarily](https://reader034.vdocument.in/reader034/viewer/2022052004/601784364c5af4321c0cfe30/html5/thumbnails/64.jpg)
Questions?
Vanessa Cooper – [email protected] Crispi – [email protected]
Keith Hunt – [email protected] Pierre-Louis – [email protected]
Robert S. Weisbein – [email protected] L. Tabor – [email protected]
Herbert P. Williams – [email protected]