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More Details on Cyber Piracy

More Details on Cyber Piracy. Equal Justice Conference, 2007 Hugh Calkins & Gabrielle Hammond. Want to Know More?. The slides that follow have a lot of relevant statutory and case law. ®. .org .com .net. Why Should Legal Aid Care About Trademarks and Domain Names?.

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More Details on Cyber Piracy

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  1. More Details on Cyber Piracy Equal Justice Conference, 2007 Hugh Calkins & Gabrielle Hammond

  2. Want to Know More? • The slides that follow have a lot of relevant statutory and case law.

  3. ® .org .com .net Why Should Legal Aid Care About Trademarks and Domain Names? • Legal aid trademarks are often your most valuable intellectual-property assets • Marks help clients obtain your services • Some entities may wish to capitalize on the desperation of the vulnerable by exploiting your marks • Trademarks and “brands” distinguish your services • Domain names are increasingly important in a connected world • Search engines are often first-used referral sources

  4. Domain Names: UDRP Process • UDRP Process: • Complaint filed with UDRP provider • UDRP provider sends copy of complaint to domain-name registrar and to respondent • Respondent files response within 20 days of commencement of proceeding • Provider appoints a panel, which renders a decision within 14 days

  5. Domain Names: UDRP Process • UDRP Fees: • WIPO • $1,500 for one panelist (1-5 domains) • http://www.wipo.int/amc/en/domains/fees/index.html • National Arbitration Forum • $1,300 for one panelist (1-2 domains) • http://domains.adrforum.com/main.aspx?itemID=631&hideBar=False&navID=237&news=26 • Asian Domain Name Dispute Resolution Centre • $1,000 for one panelist (1-2 domains) • http://www.adndrc.org/adndrc/hk_schedule_fees.html

  6. Domain Names: ACPA • Remedies under the ACPA • Cancellation or transfer of domain name to mark’s owner • Defendant’s profits, actual damages, costs, and attorney fees • Possible treble damages • In lieu of actual damages, plaintiffs may elect for statutory damages of between $1,000 and $100,000 per domain name • 15 U.S.C. § 1117(d). 

  7. Domain Names: ACPA “In Rem” • Plaintiffs may bring ACPA suit even if the defendant cannot be found, by bringing an “in rem” suit against the domain name: • If the domain name violates the rights of a registered mark’s owner • If the court finds that • the owner cannot obtain in personam jurisdiction over defendant, or • through due diligence, owner was unable to find prospective defendant

  8. Domain Names: ACPA “In Rem” • Remedies for “In Rem” suits are limited to court orders for • domain’s forfeiture or cancellation or • domain’s transfer • Money damages are not available. • Accordingly, • if you cannot find a prospective defendant, or • if you cannot obtain jurisdiction over them, • then it may be best to simply file a UDRP action • remedies are the same.

  9. Search Engine Results • Search engines often combine several keywords (possibly including marks), sometimes called “broad matching” • https://adwords.google.com/select/expanded_matching.html • Other search engines require advertisers to purchase bundles of several keywords • Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1023 (9th Cir. 2004).

  10. Deceptive Keyword Advertising • Can Coke buy ads for “Pepsi” searches? • Similarly, may a for-profit site legally purchase keyword ads for “legal aid”? • Or “Pine Tree Legal”? • A French court has criticized Google for suggesting third-party marks as keywords • Société des Hotels Meridien v. S.A.R.L. Google France, NRG 04/3772 (T.G.I. Nanterre, Dec. 16, 2004), available at http://www.juriscom.net/documents/tginanterre20041216.pdf

  11. Search Engine Results: IIC • Courts have held that diverting consumers through keyword searches may result in liability under the doctrine of Initial Interest Confusion (IIC) • Professor McCarthy states that “[i]nitial interest confusion can be viewed as a variation on the practice of ‘bait and switch.’” • 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:26 (4th ed. 2003).

  12. Search Engine Results: IIC • The Ninth Circuit in Brookfield defined IIC as • “the use of another’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.” • Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999).

  13. Search Engine Results: IIC • A recent district court criticized Brookfield’s analysis, holding • Keyword advertising is a “use in commerce,” but • Criticizing Brookfield,holding instead that use of keyword-triggered ads and metatags cannot confuse consumers if the ultimate search results do not display plaintiff’s trademarks. • J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007).

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