Ninth Circuit Reconsiders SEO-Destroying Injunction Against DMV.Org–TrafficSchool v. EDriver (Joint Blog Post)

2 06 2012

By Rebecca Tushnet and Eric Goldman

TrafficSchool.com, Inc. v. Edriver Inc., 2011 WL 3198226 (9th Cir. July 28, 2011)

Rebecca highlights how this opinion has some important things to say about false advertising standing, consumer confusion in false advertising and attorneys’ fees in Lanham Act cases. I’m going to focus on more of the technical issues:

First, DMV.org bought keyword ads that displayed the URL “ca.dmv.org” and “california.dmv.org.” The opinion says “Defendants’ use of the “ca.” and “california.” prefixes obviously was designed to suggest an affiliation with the State of California.” As far as I can recall, this is the first time a court has explicitly treated the URL displayed in keyword ad copy as contributing to consumer confusion. I know some SEMs like to play games with the domain line in keyword ad copy. Even if Google won’t police the URL line, courts will.

Second, the opinion shreds DMV.org’s argument that consumers didn’t think it was affiliated with a government agency; it concludes that DMV.org “willfully” and “egregiously” deceived consumers because

Defendants associated their website with URLs and search terms that falsely implied DMV.org was a government site. They had in their possession hundreds of emails sent by consumers who contacted DMV.org thinking it was a state agency. And DMV.org’s director of customer service testified that he voiced concerns about these emails to senior management.

This deceptive conduct wasn’t curable with a website disclaimer: “defendants knew that the disclaimers were ineffective, because adding them didn’t end the stream of emails sent by consumers who thought they’d contacted their state DMV.” Marketing people love to “fix” any legal problems with disclaimers, but they often simultaneously resist making the disclaimers prominent enough to actually fix the problem, leaving the website no better off.

As usual, Judge Kozinski adopts a realpolitik perspective that we all know what’s going on here, and he isn’t going to countenance it. This discussion doesn’t directly link to or cite the scienter battles in online copyright and trademark cases, but it could be a little uncomfortable for defendants like Fung who rely on form-over-substance arguments.

Third, the district court ordered DMV.org to display a splash screen to incoming visitors containing a disclaimer of government affiliation. I believe the remedy of a mandatory splash screen was also unprecedented. Among other problems with the splash screen, it can hurt or destroy search engine indexing, effectively rendering the domain name worthless. Therefore, even though the district court didn’t award any damages (a ruling affirmed on appeal), the mandatory splash screen was potentially far more detrimental.

On appeal, the court partially reverses the mandatory splash screen, noting that it applied equally to deceptive and non-deceptive content that DMV.org is publishing. The court also notes the disadvantages of interfering with search engine indexing:

[The injunction] also precludes defendants from tailoring DMV.org’s landing page to make it welcoming to visitors, and interferes with the operation of search engines, making it more difficult for consumers to find the website and its protected content.

In a footnote, the court explains:

Defendants introduced unrebutted evidence that splash screens commonly interfere with the automated “spiders” that search engines deploy to “crawl” the Internet and compile the indexes of web pages they use to determine every page’s search ranking. And splash screens themselves don’t have high search rankings: Search engines commonly base these rankings on the web page’s content and the number of other pages linking to it, and splash screens lack both content and links.

This is a pretty savvy explanation of why a splash screen destroys SEO, and it’s heartening to see the court recognize the First Amendment value of SEO (at least, nondeceptive SEO).

The court gives DMV.org some very good news by giving it a chance to work its way out of the splash screen:

On remand, the district court shall reconsider the duration of the splash screen in light of any intervening changes in the website’s content and marketing practices, as well as the dissipation of the deception resulting from past practices. If the district court continues to require the splash screen, it shall explain the continuing justification for burdening the website’s protected content and what conditions defendants must satisfy in order to remove the splash screen in the future. In the alternative, or in addition, the court may permanently enjoin defendants from engaging in deceptive marketing or placing misleading statements on DMV.org.

On the other hand, as Rebecca points out, the DMV.org domain name is, itself, designed to prey on consumer interest in official DMV services. Perhaps there will be no way for DMV.org to fix this, no matter what disclaimers it uses.

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Holding on to a Domain Name to Gain Leverage in a Business Dispute Can Constitute Cybersquatting — DSPT Int’l v. Nahum

1 06 2012

[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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Levi Strauss’s Trademark and Domain Name Claims May Block Unauthorized Resales — Levi Strauss v. Papikian

1 06 2012

[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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Re-registration of Domain Name is not a “Registration” Under the ACPA — GoPets Ltd. v. Hise

31 05 2012

[Post by Venkat Balasubramani]

GoPets Ltd. v. Hise, 08-56110; 08-56112 (9th Cir. Sept. 22, 2011)

Although Eric is not a big fan of them, the Ninth Circuit has produced a slew of domain name opinions this year. GoPets Ltd. v. Hise is one to add to the list.

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Court Awards Damages for Wrongful Disruption of Web Presence — Ordonez v. Icon Sky Holdings

30 05 2012

[Post by Venkat Balasubramani]

Ordonez v. Icon Sky Holdings LLC, 10-cv-60156-PAS (S.D. Fla. Aug. 30, 2011)

This was another dispute involving two parties who jockeyed for control of an online presence. I guess you could say that one “jacked” the other’s presence.

Elizabeth Ordonez is a dancer, model, actress, choreographer (etc.) and is known by her fans as “Elizabeth Sky.” She sued Nisha Elizabeth George and her entity Icon Sky Holdings alleging that Icon Sky wrongly obtained a trademark registration for “ELIZABETH SKY” and went on a campaign to disrupt Ordonez’s web presence. George allegedly sent letters to ModelMayhem, Twitter, MySpace, and Facebook, all of whom took down Ordonez’s content, account, or forced Ordonez to change her name.

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Lamebook Sues Facebook

29 05 2012

You may have heard already that Facebook has been pretty aggressive of late in attempting to enforce its trademark rights– particularly against those using trademarks that incorporate either “–book” or “face-”.

If you’ve visited the website Lamebook, and, like me, were wondering when the other shoe would drops, here’s your update: it has.

But this time, Facebook is on the other side of the “v.”

After receiving a cease-and-desist letter from Facebook, Lamebook has filed a declaratory judgment action seeking a declaration of non-infringement and non-dilution.  One reason for this might be, as Robin Wauters of TechCruch points out, that Lamebook, an Austin-based company, wants to keep the lawsuit in Texas.

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The two settled in August, 2011, with Lamebook keeping the name but putting a disclaimer on their site

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The content in this post was found at http://pittsburghtrademarklawyer.wordpress.com/2010/11/09/lamebook-sues-facebook/ and http://legalblogwatch.typepad.com/legal_blog_watch/2011/08/lamebook-update-.html was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.



Facebook’s Trademark Enforcement Effort Against “Faceporn” Hits Jurisdictional Snag — Facebook v. Pedersen

29 05 2012

[Post by Venkat Balasubramani]

Facebook, Inc. v. Pedersen, et al., 10-cv-04673 (N.D. Cal.; Nov. 29, 2011)

Facebook sued Pedersen and Retro Invent, who are based in Norway and run the “Faceporn” site. “Faceporn” is a website which features pornographic content and “allows its users to create profiles, join groups, upload photos and video, and conduct live chats.” Facebook served Retro Invent using the Hague Convention, and moved for default judgment.

The court, on its own motion, raises the issue of personal jurisdiction, and orders Facebook to show cause why the lawsuit should not be dismissed for lack of personal jurisdiction.

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Talk Notes: Death of the Initial Interest Confusion Doctrine?

25 05 2012

By Eric Goldman

As you may know, the IP professor community is blessed to have a number of “work-in-progress” events where we share our research-in-process with, and get early feedback from, our peers. Last weekend, I attended one of those events, WIPIP, at the University of Houston.

I presented a talk entitled “Death of the Initial Interest Confusion Doctrine?” My presentation slides. The talk traces its roots to my ad hoc observations, starting in 2010, that:

1) courts were citing the initial interest confusion doctrine with noticeably less frequency,
2) when they did reference the doctrine, many opinions just made a cursory non-substantive reference, and
3) plaintiffs were rarely getting any traction with their IIC arguments.

2011 undermined these observations some, especially the Teachbook and Pillow Pet cases. So now I’m trying to figure out where to take this research project.

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Trademark Owner Can’t Hold GoDaddy Liable for Domain Name Forwarding — Berhad v. GoDaddy

9 01 2012

[Post by Venkat Balasubramani]

Berhad v. GoDaddy, C 09-5939 PJH (N.D. Cal.; Jan. 3, 2012)

Plaintiff, Petroliam Nasional Berhad (Petronas), a government owned entity, owns the Petronas Towers in Malaysia. It’s trying to enforce its trademark rights against two domain names (petronastowers.net and petronastower.net). In mid-2010, it quickly obtained relief against both domain names, via in rem actions. These aren’t the disputes before the court. Prior to obtaining in rem relief against the domain names, Petronas urged GoDaddy to disable the website and domain names (the domain names were registered to GoDaddy and GoDaddy provided forwarding services, which pointed the domain names to porn sites). GoDaddy demurred, stating that as the registrar, it could not adjudicate Petronas’s cybersquatting claim and since it did not host the underlying sites, it couldn’t process Petronas’s trademark infringement claim. Petronas is trying to hold GoDaddy liable for not ‘disabling’ the domain name and website at Petronas’s urging. It asserted claims for cybersquatting and contributory cybersquatting against GoDaddy. Its hook for trying to hold GoDaddy liable? GoDaddy “used” the domain names by providing forwarding services for its customers.

Cybersquatting claim:

Contributory Cybersquatting:

Cancellation of Petronas’s Mark:

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On Microsoft and ‘Contributory Cybersquatting’

3 03 2011

A federal judge in Seattle on Wednesday issued an interesting decision concerning cybersquatting, the act of setting up sites with the intent of selling the domain names, or, more pertinently, setting up sites with URLs that are a typo or two away from those of popular sites.

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The content in this post was found at http://blogs.wsj.com/law/2011/01/14/on-microsoft-and-contributory-cybersquatting/?utm_source=feedburner&utm_medium=feed&utm_campaign=Feed%3A+wsj%2Flaw%2Ffeed+%28WSJ.com%3A+Law+Blog%29 and was not authored by the moderators of freeforafee.com. Clicking the title link will take you to the source of the post.