TRADEMARK AND COPYRIGHT ISSUES ON

THE INTERNET

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

Wiki Infringement: Copyright Issues Relating To User-

Generated Content

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

Types of User-Generated Content Sites

Blogging SitesPodcasting SitesVideo Posting SitesSocial Networks/Virtual CommunitiesWiki Sites

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

Licensing SchemesPre-Roll and Overlay AdvertisementsTargeted AdvertisingAdvertisements Attached to Premium ContentRevenue Sharing with UsersCustom CommunitiesBrand Profile PagesDedicated Channels

Monetizing UGC

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

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

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)

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].”

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.)

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

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

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

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

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

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

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”

May Thou Purchase Thy Neighbor’s Mark?Keyword Advertising and the

Initial Interest Confusion Doctrine

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

Trademark Visible

Trademark Not Visible

Example: Google® AdWords®

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

Google

Yahoo!

Microsoft

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

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.

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.

– 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)

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)

Question 2:

If keyword advertising amounts to “use” in commerce, is it likely to cause confusion?

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.

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

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.”

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

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).

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

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)

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.

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.

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.

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.

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)

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.)

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.

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

Recovering Your Domain Names:Do You Negotiate or Litigate?

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

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

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))

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

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?

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

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

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))

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

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/)

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

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)

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

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

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

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

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

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

Questions?

Vanessa Cooper – vanessa.cooper@kaplan.comSarah Crispi – sarah_crispi@discovery.com

Keith Hunt – keith.hunt@labatt.comStanley Pierre-Louis – stanley.pierre-louis@viacom.com

Robert S. Weisbein – rweisbein@foley.comKatherine L. Tabor – ktabor@foley.com

Herbert P. Williams – hwilliams@foley.com