Law 227: Trademarks & Unfair Competition Internet Domain Names July 16, 2009 Jefferson Scher TM & Unfair Comp — Day 13 Agenda • Internet Domain Names What are they, trademark registration Special remedies for “cybersquatting” Federal Anti-cybersquatting Consumer Protection Act (ACPA, Lanham Act §43(d)) Arbitration under the UDRP Considerations in domain name deals Trademarks in Cyberspace Conceptualizing Virtual Reality • What analogies should we use for applying TM law to web sites? Brochures / promotional materials Magazines or other protected speech Broadcast media (radio, television) Retail stores Theme parks Trademarks in Cyberspace Domain Names • The Domain Name System (DNS) A system for converting unique host names into unique numeric addresses Root servers contain entries for the Top Level Domains (TLDs) such as .com, indicating the server to ask for the address of the Second Level Domain (SLD), and so on, and so on Yahoo example Trademarks in Cyberspace Domain Names — Registration as Marks • What part(s) of a web address could be protectable in these examples? http://www.nytimes.com/ http://www.pets.com/ http://www.pets.com/ http://geoclock.home.att.net/ www.geocities.com/scrumpyshangout • Does it depend on other usage? Trademarks in Cyberspace Domain Names — ACPA • Elements under §43(d) Defendant registers, traffics in, or uses a domain name identical or confusingly similar to (or dilutive of) a mark distinctive (famous) at the time the domain was registered — regardless of goods; and Defendant has a bad faith intent to profit from the mark Trademarks in Cyberspace Domain Names — ACPA • Sample Bad Faith Cases Sporty’s Farm v. Sportsman’s Market Lucas Nursery v. Grosse Coca-Cola v. Purdy • Sample Safe Harbor Cases Utah Lighthouse Ministry v. FAIR Virtual Works v. Volkswagen Trademarks in Cyberspace Domain Names — ACPA • Trafficking by non-owners Ford v. GreatDomains.com Vulcan Golf v. Google • In rem jurisdiction Harrods v. Sixty Internet Domain Names Cable News Network v. CNNews Heathmont v. Technodome Trademarks in Cyberspace Domain Names — Lanham Act/ACPA • First Amendment Cases Planned Parenthood v. Bucci Jews for Jesus v. Brodsky Lamparello v. Falwell PETA v. Doughney Trademarks in Cyberspace Domain Names — UDRP • UDRP test for cybersquatting Domain name is identical or confusingly similar to complainant’s mark; Domain holder has no rights or legitimate interests in the domain name; The domain name has been registered and is being used in bad faith. Mark owner has burden of proof on all 3 Trademarks in Cyberspace Domain Names — UDRP • Sample UDRP decisions Dial-A-Mattress v. Moakley Compare: Phone number cases Estate of Frank Gorshin v. Martin Fields for Senate v. Toddles Orange Bowl Committee v. Front & Center Tickets Trademarks in Cyberspace Domain Names — UDRP • “Sucks” domains Direct Line Group v. Purge I.T. So. Cal. Regional Rail Auth. v. Arkow • Reverse domain name hijacking Deutsche Welle v. DiamondWare Plan.net v. Yikilmaz Trademarks in Cyberspace Domain Names — UDRP • Appeal: UDRP meets ACPA Sallen v. Corinthians Dluhos v. Strasberg Barcelona.com v. City of Barcelona Trademarks in Cyberspace Domain Name Acquisitions • Parallels with trademarks Unique text string identifying a point in cyberspace, or family of related hosts Arguably inherently “source” identifying, even if the USPTO doesn’t see it that way Can function as a mark if used as a mark Like “trade dress” and nontraditional marks (such as sound and scent) Trademarks in Cyberspace Domain Name Acquisitions • Differences from trademarks Ownership not tied to use or registration “Name service” is: What makes a domain name function Revocable in the event of a TM challenge or breach of contract by the registrant Vulnerable to power outages, cracking, poor service, and registrar’s financial collapse Trademarks in Cyberspace Domain Name Acquisitions • Key issues Acquiring TM rights in the domain Whether / how to reference goodwill in the domain name (as though it were a mark) Documentary evidence of “use” as a TM Assurances of assistance in enforcing the rights acquired Willingness / ability to testify; credibility Trademarks in Cyberspace Domain Name Acquisitions • Key issues, cont’d Representations and warranties of ownership and noninfringement Ability to indemnify buyer Seller’s non-use / non-registration of similar domain names, trademarks, and business names in the future Of course, price Trademarks in Cyberspace Domain Name Acquisitions • Pricing Buyer’s side — setting priorities Getting the right price vs. getting it right now (or at at all) Acquiring “trademark” rights vs. just a domain name Airtight agreement vs. quick ’n dirty Trademarks in Cyberspace Domain Name Acquisitions • Pricing, cont’d Market factors Buyer’s need/availability of alternatives Seller’s investment/sophistication (Likely) Interest of others – General interest: value at auction to the public at large (inherent attractiveness of the name) – Special interest: similarity to names and mark used by others (brand extension value) Trademarks in Cyberspace • Pricing, cont’d Role of legal leverage Likelihood of success Cost Domain Name Acquisitions Leverage – Using UDRP, potential speedy transfer – In court, potential monetary remedies Ability to impose process costs – Need to hire attorney, respond to discovery Willingness to follow through Trademarks in Cyberspace Domain Name Acquisitions • Non-cash (in kind) consideration Products of buyer Computer hardware, software licenses, etc. Other Joint promotion on buyer’s site Free advertising on buyer’s site Internet access/web hosting/e-mail under the transferred domain or a subdomain Trademarks in Cyberspace Domain Name Acquisitions • Negotiation postures for buyer Legal (demand letter, UDRP, lawsuit) Requires leverage for credibility Factor in legal fees and costs “Business” approaches: casual/friendly vs. strong “Confidential” inquiry/purchase (through counsel or investigation firm) Trademarks in Cyberspace Domain Name Acquisitions • What if you want to sell? Hmmm… Auction/resale sites Easy to use, but – Public might not place a high value on the name – Potential buyers might be nervous re TM rights Targeting those with special interest Pinging IP owners who didn’t seek you out may set you up for cybersquatting liability Trademarks in Cyberspace Domain Name Acquisitions • Agreement structures “Bill of Sale”-style short form Just goods and consideration — and the goodwill if you want to acquire TM rights Settlement Agreement style Deal with the potential for future litigation Tightly tie the seller’s hands “Friendly” agreement takes longer to draft Trademarks in Cyberspace Domain Name Acquisitions • Payment terms — favorable to buyer Best: after transfer; no payment if the transfer fails due to no fault of buyer Fallback: funds held in trusted “escrow” pending the transfer; no payment if the transfer fails due to no fault of buyer Worst: payment in advance, refunded if the transfer fails for any reason Trademarks in Cyberspace Domain Name Acquisitions • Terms the seller might prefer Payment in advance, no refunds if the transfer should fail for any reason No promises/warranties about ownership or past use of the domain No obligations to assist buyer in the future with domain or TM issues Trademarks in Cyberspace Domain Name Acquisitions • More terms the seller might prefer No restrictions on future business or domain names, or future marks Long term e-mail forwarding (under NDA), and a link on buyer’s web site to seller’s new location Full release of trademark claims, and indemnification for buyer’s future use Trademarks in Cyberspace Domain Name Acquisitions • Post-agreement logistics Idiosyncratic registrar procedures At one extreme: notarized signatures and photocopies of picture IDs At the other: online transfer with a password (and/or telephone confirmation) Trademark assignment recordation Policing future names and domains TM & Unfair Comp — Up Next Topics and Reading for Day 14 • Advertising Issues Ch. 8, pp. 556-568 Ch. 6, pp. 417-433; Supp. pp. 46-49 Ch. 6, pp. 370-394, Supp. pp. 42-46 • Review (student-driven) Your questions on specific topics Your questions on past exams