Court Declines to Review LRO to [.delmonte], Saying gTLDs Aren’t ‘Domain Names’ for Cybersquatting Purposes

11 02 2014

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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Ninth Circuit Kills Contributory ACPA Cybersquatting Doctrine–Petronas v. GoDaddy

11 12 2013

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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Google Defeats Trademark Challenge to Its AdWords Service–Jurin v. Google (Forbes Cross-Post)

18 02 2013

By Eric Goldman

Jurin v. Google, Inc., 2012 WL 5011007 (E.D. Cal. October 17, 2012).

Google ($GOOG) makes billions of dollars a year selling AdWords ads triggered by third party trademarks.  Over the past decade, trademark owners have brought about 20 lawsuits against Google challenging these ad sales.  These lawsuits have ranged from high-stakes class action lawsuits (the FPX lawsuit) to well-funded challenges by big  trademark owners (e.g., the Rosetta Stone ($RST) and American Airlines lawsuits) to poorly funded lawsuits by no-name trademark owners like the case I discuss in this post.  In a remarkable litigation tour-de-force, Google has never definitively lost any of these cases in court (though it has occasionally lost intermediate rulings).  At the same time, Google hasn’t definitively won any of its cases in court either.  This makes Google’s recent wi in an AdWords trademark case noteworthy.

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Company wins $368M from Apple, immediately files brand-new lawsuit

10 02 2013

Three days ago, Apple was ordered to pay $368.2 million for infringing domain name security and virtual private network patents for its FaceTime service. Now, it turns out the same company that beat Apple in that case—VirnetX—filed a new lawsuit against the iPhone maker on the very same day.

The suit, filed Tuesday in US District Court in Eastern Texas (PDF), repeats the same allegations but updates them to target Apple’s latest products. Those include the iPhone 5, fifth generation iPod Touch, fourth generation iPad, iPad mini, and all Macs using OS X Mountain Lion. FaceTime, iMessage, and Apple’s use of VPN On Demand technology are the culprits, VirnetX says. The plaintiff is demanding monetary damages and a permanent injunction preventing Apple from continuing to infringe its patents.

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Buyers of Michael Jackson’s Assets from a Storage Locker Auction Can’t Set Up Paywalled Tribute Website–Branca v. Mann

17 09 2012

[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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Wisconsin Appeals Court Punts on the Legality of Buying People’s Names for Keyword Advertising–Habush v. Cannon

25 06 2012

By Eric Goldman

Habush v. Cannon, 2012 WL 2345137 (Wis. App. Ct. June 21, 2012). The case record. My prior blog post on this case.

You may recall this case. Habush Habush & Rottier and Cannon & Dunphy are both leading personal injury law firms in Wisconsin. The Cannon firm bought the names “Habush” and “Rottier” as keywords for its competitive keyword ads. Habush and Rottier then sued the Cannon firm and its principals for violations of Wisconsin’s publicity rights statute. To my knowledge, this is the only pending lawsuit over keyword advertising triggered by a person’s name, and there’s no direct precedent on point. Furthermore, the publicity rights doctrine is so under-theorized that no one really knows how to define its boundaries. Because of the doctrinal morass and the technological underpinnings, this case is giving judges fits. The lower court judge ruled for the defense but wrote an odd opinion, and basically expressed resignation knowing that he was going to be appealed no matter what he ruled.

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More Evidence That the Initial Interest Confusion Doctrine is Dying–Dwyer v. Sensocon

16 06 2012

By Eric Goldman

Dwyer Instruments, Inc. v. Sensocon, Inc., 2012 WL 2049921 (N.D. Ind. June 5, 2012)

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“Hot Topics in Internet Law” Talk Slides

5 06 2012

By Eric Goldman

This weekend I presented on “Hot Topics in Internet Law” at the San Francisco IP Law Association’s Spring Seminar in Healdsburg. My talk slides. A few photos from the trip. As I’ve mentioned before, I find “hot topics” talks unusually challenging to prepare–they take much more time than normal talks, they are hard to organize, and they have a high risk of preemption by prior speakers. In addition to quick coverage of a number of topics, I focused on 5 broader topics (I only addressed 3 in the time I had):

* intermediary deputization
* consumer reviews
* social media account disputes
* trolling
* new gTLDs

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Keyword Advertising and Domain Name Law Slides

5 06 2012

By Eric Goldman

Today, I spoke to an audience of Chinese IP judges about keyword advertising and domain names in the United States. I put together some slides and written materials. These materials aren’t especially profound, especially for regular readers, but you might find them a useful recap nonetheless. I learned a number of things from the talk:

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Court Smacks Down Koch Industries’ Attempt to Shut Down Satirical Website — Koch Industries v. Does

2 06 2012

[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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