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Disclosure note: I provided an expert report in this now-dismissed case, so you might consider my comments to be advocacy. I’ll explain my expert role in a bit.

The Court Opinion

Susan Larsen practices business law in the Denver, Colorado metro area under the name Larsen Law Offices. She claims she’s been using the name since 2003, though she did not register the name as a trademark (and would need to address the obvious secondary meaning issues to do so). David Larson practices estate planning law (and more) in the Denver metro area as well. In 2013, Larson set up a website at the domain name davidlarsonlawoffice.com, and he used the domain name larsonlawoffice.com starting in 2016. In 2016, Larsen sued Larson for trademark infringement, ACPA and more. After the complaint, Larson’s website removed references to Larson Law Offices, adopting the name David M. Larson, PLLC. Larson partially moved to dismiss.

Cybersquatting. The court says “Plaintiff does not allege that Mr. Larson had actual knowledge of Larsen Law Offices’ existence in 2013, or that he has ever conducted a Google search that returned plaintiff’s name.” Further (cites omitted):

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Case citation: Larsen Law Offices v. David Larson, 2017 WL 1131885 (D. Colo. Mar. 14, 2017). The complaint.

The content in this post was found at http://blog.ericgoldman.org/archives/2017/03/trademark-lawsuit-claiming-organic-search-results-create-initial-interest-confusion-falls-apart-larsen-v-larson.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

Plaintiff operates a project management training company called “Project Management Academy.” Plaintiff has used the trademark since 2009 and owns several related federal trademark registrations.

The Defendants are accused of operating a similar company (some call it a scam) using the “Project Management Academy” or “PMA” trademarks.

Educate 360, LLC v. Patchree Patchrint et al.

Court Case Number: 4:17-cv-00078
File Date: Friday, October 6, 2017
Plaintiff: Educate 360, LLC
Plaintiff Counsel: William P. Kelley, David M. Stupich of Stuart & Branigin LLP
Defendant:  Patchree Patchrint a/k/a Patty Jones and Anthony Christopher Jones
Cause: Declaratory Relief, Trademark Infringement, False Designation of Origin, Cybersquatting, Common Law Trademark Infringement, Common Law Passing Off/Unfair Competition
Court: Northern District of Indiana
Judge: TBD
Referred To: TBD

Complaint:

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The content in this post was found at https://indianaintellectualproperty.com/2017/10/09/project-management-company-files-trademark-lawsuit-against-potential-scam-artists/and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

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The content in this post was found at http://arstechnica.com/tech-policy/2015/05/walmart-horse-is-put-out-to-pasture-after-retailer-starts-domain-dispute/ and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

A Swiss Del Monte entity that had a license to use the “DEL MONTE” mark applies to operate the .delmonte generic top level domain (gTLD). Another Del Monte entity, based in Delaware, filed a “legal rights objection” (under WIPO-established procedures) to the Swiss Del Monte’s application. A three member panel sustained the Delaware company’s LRO. (Here’s a .pdf link to the panel decision.) The Swiss entity sued in federal court seeking a declaration that it had sufficient rights in the “DEL MONTE” mark to operate the TLD and that it was not violating the Anti-cybersquatting Consumer Protection Act (ACPA, the cybersquatting statute) in doing so. The Swiss entity further sought an injunction requiring the Delaware entity to withdraw its LRO.

The court says an initial question is whether it has jurisdiction. . . .

Is a gTLD a “Domain Name”?

On the key question of whether plaintiff’s application to operate the .delmonte TLD implicates the ACPA, the court says it’s a matter of first impression. Generally, courts ignore the TLD in the context of the trademark analysis (i.e., acme.com is treated the same as “acme” for trademark purposes). Nevertheless, the case law is largely inconclusive.

The court looks to the text of the ACPA and says it’s equivocal:

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The content in this post was found at http://blog.ericgoldman.org/archives/2014/02/court-declines-to-review-lro-to-saying-gtlds-arent-domain-names-for-cybersquatting-purposes.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

A domain name registrant transferred the petronastower.net and petronastowers.net domain names into GoDaddy and used GoDaddy’s name forwarding service to direct them to (NSFW) canfunchat.com. Petronas asked GoDaddy to turn over the domain names to Petronas. GoDaddy declined. Petronas sued, and after conducting limited discovery, the district court dismissed the case.

On appeal, the Ninth Circuit considered whether the Anti-Cybersquatting Consumer Protection Act (ACPA) provides for a cause of action for contributory cybersquatting. A few district court cases had said such a cause of action is available, albeit in “exceptional circumstances” (see the Shah and Namecheap rulings). The Ninth Circuit flatly says the ACPA does not provide for contributory liability. The court gives two reasons for its conclusion.

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The content in this post was found at http://blog.ericgoldman.org/archives/2013/12/ninth-circuit-kills-contributory-acpa-cybersquatting-doctrine-petronas-v-godaddy.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

[Post by Jake McGowan]

Branca v. Mann, CV 11-00584 (C.D. Cal. Aug. 10, 2012)

When a celebrity goes bankrupt or forgets to pay a bill for his/her physical-space storage locker, opportunists may swoop in and purchase the goods so they can try and turn a profit reselling them. But sometimes, these buyers get a little overzealous–they convince themselves that their interest in the tangible property gives them an interest in some of the celebrity’s underlying intellectual property rights. This leads to poorly designed pay-for-access websites with risqué names like “parisexposed.com.”

A district court in California heard one of these storage locker disputes in Branca v. Mann, where the defendants set up a pay-for-access website relating to the late Michael Jackson. The court lowered the boom on August 10th, granting summary judgment in favor of the plaintiffs for a long list of claims including copyright infringement, false designation of origin, misappropriation of likeness, cybersquatting, and so on.

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The content in this post was found at http://blog.ericgoldman.org/archives/2012/09/buyers_of_micha.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

[Post by Venkat Balasubramani]

Koch Industries, Inc. v. Does, 10CV1275DAK (D. Utah; May 9, 2011) [.pdf]

EFF, Public Citizen and other similar organizations have excellent resources for creators of parody and satire on the internet. A recent case (litigated by Public Citizen) illustrated a few pitfalls a plaintiff–who is seeking to shut down such non-commercial content–may face. A commercial motivation does not automatically doom a parody or satire defense, but the total absence of a commercial motive will neutralize a plaintiff’s claims.

Other coverage:

“Utah Court Strikes Blow for Free Speech, Dismisses Trademark and CFAA Claims Against Political Activists” (EFF)
“Court Protects Hoax Press Release” (Bill McGeveran)
“In Which We Lose Our Funding And Are Reduced To Eating Gravel” (Popehat)
“In Koch spoof case, judge favors First Amendment” (CitizenVox)

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The content in this post was found at http://blog.ericgoldman.org/archives/2011/07/court_smacks_do_1.html and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

[Post by Venkat]

DSPT International v. Nahum, Case No. 08-5506 (9th Cir.; Oct. 27, 2010)

This case involves the familiar story of a company leaving the domain name registration in the hands of someone who performed web design services (in this case, the registration was left in the name of the web designer’s brother) and the registrant later refusing to turn over the domain name due to a dispute over unfulfilled obligations to the registrant.

UPDATE from Eric: A few analogous cases:

* Web Developer Didn’t “Convert” Website–Conwell v. Gray Loon
* Outdated Whois Information Might Lead to False Light Tort–Meyerkord v. Zipatoni
* Taking Intangible Electronic Files is Criminal Fraud–NM v. Kirby
* Cautionary Tale of Website Co-Ownership–Mikhlyn v. Bove
* Another Cautionary Tale of Joint Website Ownership–TEG v. Phelps

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The content in this post was found at http://blog.ericgoldman.org/archives/2010/11/post_2.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.

[Post by Venkat Balasubramani]

Levi Strauss & Co v. Papikian Enterprises, C 10-05051 JSW (N.D. Cal.; Aug. 24, 2011) [pdf]

Facts: Levi Strauss owns trademarks for “Levi’s,” “501” and other terms. It sells its products directly and to authorized retailers but does not sell through “distributors, wholesalers or jobbers.” Retailers are contractually restricted from reselling “first quality merchandise.” Papikian registered several domain names (501USA.com, 550jeans.com, 517jeans.com) through which he offered Levi Strauss products for sale. Levi Strauss grumbled about his use of various Levi Strauss trademarks and how Papikian sold goods to EU residents. The parties engaged in settlement discussions which were not fruitful, and ultimately Levi Strauss brought suit, alleging trademark and cybersquatting claims. Levi Strauss alleged that in response to some of Levi Strauss’s complaints, Papikian made some changes to his website, but at some point along the way, these changes reverted, and Papikian’s website “looked more professional, offered [Levi Strauss] products exclusively, and make more extensive use of [Levi Strauss] trademarks.”

Papikian brought a motion for summary judgment, which the court denies.

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The content in this post was found at http://blog.ericgoldman.org/archives/2011/08/levi_strausss_t_1.htm and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.