Notes

Outline

Present: TRADEMARKS- New Kinds of Infringement, Source Confusion and Dispute Resolution © 2000 Philip R. Green, Partner, Law Offices of Green & Green www.greenandgreen.com Originally Produced for The State Bar Annual Meeting 2000 Business Law Section/ Cyberspace Law Committee

The Headlines: Ford Sues to stop “Model-E.com” MediaCentral.com 8/7/2000 [modele.com] Microsoft Wins Cybersquatting Case Yahoo.com 7/27/00 [microsof.com] 244 Domain Names Ordered Transferred to Telia (Sweden) WIPO Arb. & Med Crt. Case D2000-0599 [itelia.net…]

Where we have been – Varying degree of success Porsche Cars North America, Inc., vs. Porsch.Com…(dozens of defendant URLs) USDC, E. Dist. Of VA, Alexandria Div.  Civil Action No.  99-0006-A, filed 1/6/99 Started In rem Action over the Domain Name as property (the Res) Trying to prevent locating worldwide infringers in many nations. Cuts cost of litigation. Dismissed Hasbro, Inc.  vs. Clue Computing, Inc.  (1999)  52 U.S.P.Q.2d 1402 DILUTION Case: Not famous enough failure to demonstrate likelihood of confusion in the other’s market. Cybersell Inc. vs. Cybersell, Inc. (9th Cir.1997) 130 F.3d 414 JURISDICTION: AZ corp.  that “merely” advertises commercial services over Internet, could not stop same name FL corporation that offers web page construction services over the Internet. See Zippo Manufacturing Company vs. Zippo Dot Com, Inc. (W.D. Pennsylvania, 1997) , 65 USLW 2551, 42 U.S.P.Q.2d 1062. Avery Dennison vs. Sumpton 51 U.S.P.Q.2d 1801 (9th Cir. 1999). A-D not famous enough to prove dilution by Avery.net and Dennison .net plus factor, names of real people.

Breakthrough Cases: Panavision vs. Toeppen (9th Circuit, 1997)  46 U.S.P.Q.2d 1511 Piracy with Chutzpah Trying to sell back to famous Hollywood Icon Panavision Only $18,000 demanded as price. Congress based factors of ACPA from this case. Brookfield Communications, Inc., vs.  West Coast Entertainment Corporation, U.S.C.A.  (9th Cir. 1999)  174 F.3d 1036,  50 U.S.P.Q.2d 1545 The mere registration of a domain name “Moviebuff.com” does not provide any trademark priority as against a prior trademark user. Metatags may serve as the basis for an infringement action.

Unfair Competition under State & U.S. Law Trademarks on the run… INFRINGEMENT These Actions also usually involve: Copyright Infringement Rights pf Publicity Trade Secrets violations Patent Infringement Privacy and other e–commerce actions. Defamation Employment issues Jurisdictional disputes Valuation & Investors rights 1st Amendment Rights, Foreign Laws Violations of Anti-Trust Laws

Infringement: Confusion of source Essence: That the mark that identifies a certain source. Query: Is public confused as to source ? Proof that a mark is “confusingly similar to” an existing mark: Proof that the markets are same/similar Proof of confusion as to Source, Endorsement, “Passing Off”. Showing that consumers are sophisticated vs. not careful in their selection. Initial Interest Confusion Internet First Consumer confused by URL, Search result then turns away when they know. Post Purchase Confusion Hermes “Kelly Bag” – When Consumer buys “knockoff” thinking they got bargain & passes off as “status” symbol confusing others. Engel Ind v. Lockformer 946 F2d 1528

Infringement Proof of ownership  Unregistered marks protectible Registered marks: application process (prosecution history) becomes an issue Strong and Weak marks. Proof of Use and Dates of Use Defendants: Breaching Licensees, Manufacturers, Distributors, Sellers, Importers of counterfeits. Laches Applies – Write letter and follow through.

Infringement & Inter Partes Proceedings Interferences & Oppositions During Other’s Application Process Timing is important. Cancellations of registrations Patent & TM Office / TTAB Appeal to TTAB from Examiner of trademarks. Appeal to U.S. Court  of Appeals for the Federal Circuit from TTAB.

Infringement:  Commerce to e-commerce 15 U.S.C.1051: The word  “commerce” means all commerce which may lawfully be  regulated by Congress. 15 U.S.C. 1051:(a) (1) USE: “The owner  of a trademark used in commerce may request  registration of its trademark on the principal register … filing in the Patent  and Trademark Office an application and a verified statement, … and such  number of specimens or facsimiles of the mark as used as may be  required by the Commissioner. “ 15 U.S.C. 1051(b) (1) Intent to Use (ITU or “1 b”) “A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark  in commerce may request registration …[by]  filing in the Patent and Trademark Office an application…” In the ecommerce world USE may be easier, cheaper and instantly worldwide.

Infringement Defenses: Is it a trademark To act as the source indicator the mark should be fanciful and not describe the goods/services. Fanciful Suggestive Descriptive  It can be a "sound alike," a face, a character, words, drawing (logo), and many "trade dress" styles can be distinctive of a restaurant, or "package dress" as a way of packaging software, by way of examples. A mark must not be misdescriptive, geographically misleading, or fraudulent. Must NOT be CONFUSINGLY SIMILAR to another mark, registered or not.

Infringement  TRADEMARK law is Territorial It does NOT operate outside of the U.S. ICANN rules for ADR are meeting the U.S. policy by allowing the First Use date to serve as the "test" date to calculate priority for US marks.  The U.S. could change its rules also.

International cooperation predicted; the EU trademark, GATT TRIPS  Trade Related Intellectual Property Portions of Uruguay Agreement The  period of non-use of a mark which triggers a presumption of abandonment was raised from two to three years.  Registration of new  geographic names for wines and spirits was barred unless the product comes from the place named. Customs seizure of infringing goods/services does not exist on Internet, e-seizure? REGISTER MARKS WORLD WIDE

Infringement Typical Defenses: No Use of a trademark in the U.S. in commerce: Section (a) Commerce Congress has the power to regulate Commerce . . .  among the  several  States. And internationally  U.S. Const. art.  I, §8, cl. 3 No Bona fide  INTENT TO USE the mark in commerce soon. (A “Sec. (b)” mark) Prosecution history shows a flaw in application Applicant knew of another similar mark Mark is WEAK Innocent Infringement Fair Use is becoming a more often used defense. Note that there is also “Registration Priority”

Dilution: A “Famous” Mark 15 U.S.C. 1125 (c ) (1)Famous marks – Dilution or “How to Stop a trademark infringer without proof of public confusion” Differing views on what is “famous” Factors: inherent or acquired distinctiveness, duration and extent of use, extent of advertising and publicity, geographical extent of the trading area, channels of trade, degree of recognition of the mark, nature and extent of use of the same or similar  marks  by third parties; and whether the mark was registered.

Dilution : No need to prove “Public Confusion”. Greatest Show On Earth” Ringling  Bros.-Barnum & Bailey v. Utah Div. of Travel  Dev., 42 U.S.P.Q.2d  1161 (E.D. Va. 1997), (famous, but not diluted by  “THE GREATEST SNOW ON EARTH”). “Sporty’s farm” for airline catalogs is famous. Sporty's Farm L.L.C., V.Sportsman's Market, Inc, Omega Engineering, Inc., Nos. 98-7452(L), 98-7538(XAP) U.S.C.A. 2nd Cir., Feb. 02, 2000, 2000 WL 124389 (famous enough to stop “sportys.com”

Dilution : How Blending -  The selling, under a mark not the seller’s, a variety of goods or services not intended by the original owner to be associated with its goods or services. This causes the distinctiveness of the mark to be diluted. Tarnishment By placing the mark in disdain by selling bad goods under the mark. By having goods “passed off” as those of a a known Brand when the goods do not originate with the trademark owner.

METATAGS   Factors: Hidden text not generally visible in browsers like a watermark. Searchable by most web search services such as: Yahoo! AOL Google and others. E commerce on the WWW depends on “TRAFFIC” OR “HITS” AND exploration of a web site by buyers and users. Search Engines find web sites by text contained in them. Repeated use of a word attracts searches.

METATAGS Cases:  Playboy Enterprises, Inc. v. Calvin Designer Label, (N.D. Cal. 1997) 985 F. Supp.  1220,  44 U.S.P.Q.2d  1156, Playboy Enterprises,  Inc. v. AsiaFocus Int'l, Inc. 1998 WL 724000  (E.D. Va. 1998) Use of “playboy” invisible yet searchable can be unfair competition. Playboy Ent., Inc. v.  Terri Welles   F.Supp.2d 1098.  U.S.D.Ct, S.D. Cal., May 21, 1998. Former "Playmate of the Year" (pmoy) defendant was entitled to "fair use" defense in connection with her use of title "Playmate of the Year" in her web page heading and link page, her use of the "Playmate Of the Year (PMOY) '81" Brookfield Communications, Inc. v. West Coast  Entertainment Corp., (9th  Cir. 1999) 174 F.3d 1036, n.23,   50 U.S.P.Q.2d 1545, n.23 Broadest definition of Metatags as including all machine readable code.

METATAGS  Fair Uses… Rare case where a fair use can be found. Truthful statements major factor in PMOY case. Legitimate use: The Welles site was also meant to be her own fan club site and not an imitation of Playboy. Use of terms "Playmate of the Year" on her web page and "Playboy" and "Playmate" marks as meta tags, did not create likelihood that web surfers would be confused that her website was endorsed or sanctioned by Playboy.

METATAGS Can be Offensive: The offences are:  Trademark infringement Copyright infringement Patent infringement Right of Publicity (Name & Likeness) violation Passing Off and fraud Trademark dilution Others….

The Internet Factor The Internet and the ability to display logos and other forms of trademarks on the Web has transformed a somewhat difficult issue into a legal GRAY area: Now one can instantly "use" a mark internationally, and in commerce that Congress regulates, via the Web.

The Internet Factor  What has Happened to trademark law because of the Internet WHAT A TRADEMARK  IS:  SECTION 45 of Trademark Law Revision Act (TLRA) defines trademarks as “any word, name, symbol or device or any combination thereof (1) used by a person, or (2) which a person has bona fide intention to use in commerce and applies to register on the principal register to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source or goods, even if that source is unknown.”

The Internet Factor THE LAW CHANGES: TLRA 1988: TTIA 1999 TLRA Revised trademark law to allow for ITU. Public Law 100–667, 102 Stat. 3935 Trademark Law Treaty Implementation Act 1999 In order to simplify and harmonize U.S. Law with the WIPO treaty of 1994. Send 1 specimen Renewal now not conditioned on Use (Sec 9) (But beware of Sec 8 continuity) Privatization of the Patent & TM Office Changes to: Fees, Applications, Rules. eTEAS Online Registration System.

The Internet Factor: Classes of Goods/Services It’s a Small Universe: Fewer classes on the Global Network: 8 Internet vs 42 classes in brick & mortar (real) world Classes 9, 35, 36, 37, 38, 39, 41 & 42 means more clashes COMBINED with the unique nature of URLs 9=e-goods, 35=business services, advertising, 36=banking & financial, insurance services, 37=repair; installation services 38=Telecommunications, 39=travel arrangement services  41=entertainment services, educational, 42=misc. services.

The Internet Factor: Clashes Increase The Internet introduces more potential for clashes because markets and audiences are all in a small niche of advertising, marketing and selling e-goods and financial and travel services.  it is a smaller cyber world out there. Upside: I-Infringers are easier to find. The Internet Factor:”Branding” Initial Interest Confusion

The Internet Factor  Does Mark + ".com" serve as a trademark? Considered as an Address by PTO.  A mark using a Domain Name is registrable as a trademark only IF it serves as a source identifier.  In RE Eilberg (TTAB 1998) 49 USPQ2nd 1955 (no trademark use shown by atty letterhead, cards) Advertising One’s Own Services on the Internet is not a Service Use. Because it is that activity the name is used for. It IS the source, not its identifier. Solution:  Need to use mark in Other Media – buses, posters, TV Ok to show only the 2nd level domain name on drawing. A gTLD (The “.com” part) Has NO trademark significance. (Section 1 (c), (d)) USE is NOT established by registration of a Domain Name alone.

The Domain Name: The numeric address of a server in alphabetical terms. Greenandgreen.com = 123.456.78.12 (example) Top level (.com, ,org. .edu, .gov etc.)  Soon: “.firm”, “.info”, “.store” and several others. Secondary level (Someone’s TM .com) = trademark There are many 10,000’s being registered each month. Used to Identify and Attract Traffic Conflict with trademarks.

CYBERSQUATTING: Anti Cybersquatting Consumer Protection Act (ACPA) Under 15 USC 1125(d)(1)(A): The registration of a domain name with bad faith intent to profit from the mark of another. Taking another’s trademark as your secondary level domain name constitutes the act of Cybersquatting. This is as much an act of piracy as copyright or patent infringement.

Cybersquatting Elements: Registers, traffics in, or uses a domain name of a mark that is distinctive at the time of registration of the domain name that is identical or confusingly similar to that mark or of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark. With the bad faith intent to profit from that mark

Cybersquatting  Bad Faith Intent to Profit - Factors: The trademark & intellectual property rights of the parties The extent the Domain Name consists of another’s mark or name Prior uses if any of the Domain Name in offering goods/services Any “fair use” factors like non-profit An intent to divert traffic (users) to another site than the trademark owner’s. Intent to Dilute Offering to sell the Domain Name.

Cybersquatting  Bad Faith Intent- Offers to sell the Domain Name: Offers to sell: to the trademark owner or others (hold the Domain Name for ransom) The quantity of the Domain Name user’s content  vs. “valid” content 1st Amendment “content” concerns – The “Sucks” cases Verizon (really sucks) The story of why a Domain Name was chosen and Did the Domain Name registrant know of the offended trademark? SPORTY'S FARM L.L.C., v.SPORTSMAN'S MARKET, INC, Docket Nos. 98-7452(L), 98-7538(XAP) U.S.C.A., 2nd Cir. Feb. 02, 2000, 2000 WL 124389. “Cybersquatting involves the registration as domain names of well-known trademarks by non-trademark holders who then try to sell the names back to the trademark owners.”

Cybersquatting   In Rem Action: 15 U.S.C. 1125 (d) (2) (A) provides for an In Rem action In Rem -  against the property rights in a Domain Name See Porsche case (USDC, E. Dist. Of Virginia Alexandria Division  Civil (Action No.  99-0006-A  (filed 1/6/99 ) It can be difficult and expensive to litigate every Domain Name squatter – they are all over the world.

Cybersquatting  In Rem: Rules If you cannot locate the Domain Name  owner by notice to the registered owner Then you may, by publication of notice as ordered by a court, obtain in rem jurisdiction into the district of the Court where the register has its offices.

Cybersquatting   In Rem: Issues to what extent is a URL property? Recent case: Network Solutions Inc vs. Umbro International Va. S. Court 4/21/00 No 991168, suggests that if the URL is a or permits a service, it is not garnishable under Virginia’s garnishment laws. Sec. 1125 (d) allows courts to order the Domain Name register to turn over a URL to a trademark owner. No Money Damages in an In rem Action.

Cybersquatting   Retroactivity of the ACPA. The act applies to domain names that were registered before and after the law's enactment, however: Injunctive relief and transfer of the domain name are the only available remedies if the domain name was registered before the law's enactment. Damages (whether actual or statutory) are available only if the domain name was registered after the law's enactment (which was Nov. 18, 1999).

Cybersquatting   Personal Names:  15 U.S.C.  1129 CIVIL ACTION: Any person who registers a domain name that consists of the name of another living person substantially and confusingly similar thereto, without that person's consent with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party. Note that California civil code 3344 creates a Right of Publicity and that this extends to deceased personalities. Characters names are trademarks, not treated as personal names.

Cybersquatting   Personal Names:  BIG Exception: © If such name is used in, affiliated with, or related to a work of authorship protected under Title 17, including a work made for hire as defined in section 101 of Title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work… There may be no liability

Cybersquatting   Personal Names:   DAMAGES a court may award injunctive relief, including: the forfeiture or cancellation of the domain name or the transfer of the domain name to the plaintiff. The court may also, in its discretion, award costs and attorneys fees to the prevailing party. Effective date not retroactive: This section shall apply to domain names registered on or after November 29, 1999. Julia Roberts: Won with WIPO but got sued for reversal.

Cybersquatting   Cases Since ACPA: Many Successes Joseph C. Shields, Individually And T/A The Joe Cartoon Co.,  John Zuccarini 54 U.S.P.Q.2d 1166 No. CIV. A. 00-494.  U.S.D.C. E.D. Pa,  March 22, 2000 The Joe’s Cartoons Case also has the distinction that it awards Statutory Damages. Sporty's Farm V.Sportsman's Market, Inc, Omega Engineering, Inc., Docket Nos. 98-7452(L), 98-7538(XAP) U.S.C.A. 2nd Cir. The First ACPA case originally a Dilution case. Sportsman’s showed bad faith intent by his poor story of originality.

ADR: International Arbitration Alternative WIPO – ICANN Uniform Rules Apply See www.icann.org Start Case by “submitting a  complaint in accordance with the Policy”* Detailed rules and instructions. Form complaint and published fees *Uniform Domain Name Dispute Resolution PolicyAs Approved by ICANN on October 24, 1999

ADR: How To Use The Rules CASES SUBJECT TO WIPO ADR: (i) Conflicting domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) Conflicting URL owner has no rights or legitimate interests in respect of the domain name; and (iii) conflicting domain name has been registered and is being used in bad faith. Notice to the Respondent with Evidence of Registration and Use in Bad Faith. This is a VERY difficult policy to fulfill 15 U.S.C. may have more chance of success.

ADR: WIPO – ICANN Uniform Rules UDRP ICANN can transfer Domain Names: The ADR provider’s receipt of written or appropriate electronic instructions from you or your authorized agent to take such action;  receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN.

ADR: - Procedure Choose Arbitration administrator 1-3 ARBITRATORS File Complaint, send copy to Respondent Decisions are Published Limited time to appeal Have appeal ready before arbitration.

ADR: Selection of Provider. The complainant selects the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation…” Consolidation. In the event of multiple disputes between a respondent and a complainant, either party may petition to consolidate the disputes before a single Administrative Panel Fees. All fees charged by a Provider … shall be paid by the complainant These are by Internet published schedule.

ADR: Remedies. The remedies available to a complainant are limited to:  requiring the cancellation of the infringing domain name or the transfer of the infringing domain name registration to the complainant.

Cases Since ACPA: Successes for trademark owners: Joseph C. Shields, Individually And T/A The Joe Cartoon Co.,  John Zuccarini 54 U.S.P.Q.2d 1166 No. CIV. A. 00-494.  United States District Court,  E.D. Pa,  March 22, 2000 The Joe’s Cartoons Case also has the distinction that it awards Statutory Damages. Sporty's Farm L.L.C., V.Sportsman's Market, Inc, Omega Engineering, Inc., Docket Nos. 98-7452(L), 98-7538(XAP) United States Court of Appeals, Second Circuit. Argued: March 17, 1999 Decided: Feb. 02, 2000 The First ACPA case. Sportsman’s showed bad faith intent by his poor story of originality.

Cases Since WIPO-ADR: Still Complex World for trademark owners Worldcup.com 13 of 15 transferred but ‘wc’ is not distinctive. Formula One vs F1.com F1 not distinctive enough Julia Roberts Case – Win ADR then get sued.  Julia Fiona Roberts v. Russell Boyd  Case No. D2000-0210 Hendrix Family, Warner/EMI Win Domain Name Rights Billboard.com 8/9/00 Caution –Estates: Register Celebrity names. Niketown.com Bad Faith found in holding URL hostage in contract dispute.

Complexities remain for the Future: New Laws Enacted New Cases Decided U.S. Continues to Prosper on IT Growth Bots to buy Anything You Want…Stay Tuned! See the State Bar Web Site and watch it grow. http://www.calbar.org/buslaw

Thank You! © 2000Philip R. Green, Attorney at Law www.greenandgreen.com