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Presentation on theme: "LAW OF COMPUTER TECHNOLOGY FALL 2018"— Presentation transcript:
A trademark is “any word, name, symbol, or device, or any combination thereof, used by a person to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”Examples: Apple
In connection with any goods or services, or any container for goods, use of any trademark, or any false designation of origin, which(A) is likely to cause confusion, mistake, or deception as to affiliation, origin, sponsorship, or approval of goods, services, or commercial activities, or (B) in commercial advertising, misrepresents the nature, characteristics, qualities, or geographic origin of goods, services, or commercial activities. See 15 U.S.C. §§1114, 1125Jurisdiction over trademark infringement is concurrent between the states and the federal government
“The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark …” 15 U.S.C. §1125(c)
“The following shall not be actionable under this section:(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.(B) Noncommercial use of a mark.(C) All forms of news reporting and news commentary.” 15 U.S.C. §1125(c)
A domain name can be a trademark if it designates the origin of goods or servicesExamples: amazon.com, google.com, usairways.comNot all domain names are trademarks(1) If they are not used in conjunction with goods or services, e.g. personal home pages(2) If they are not distinctive: books.com
In 1997, Pres. Clinton directed the Department of Commerce to privatize domain name managementMemorandum of Understanding with ICANN: Internet Corporation for Assigned Names and NumbersFormed in 1998 as an international coalition of Internet interests“global, consensus-driven, non-profit organization”No statutory authority!“Shared Registration System” (SRS)Authorizes “registrars” to issue domain namesAbout 1000 accredited registrars
)Approved by ICANNComplex procedure equivalent to arbitration“Provider” (not ISP) = approved arbitratorParties: “Complainant,” (wants the domain) “Respondent” (has the domain), “Registrar” (organization that registered the domain)Complaint, then ResponseThree-member panel is appointedLanguage used = language of registration agreement
Fast (~60 days)Inexpensive ($1-2K in arbitration fees), more in attorney’s feesSubmissions are electronic onlyNo hearingNo administrative appealOnly remedy is transfer of domain name, which happens in 60% of casesDoes not remove jurisdiction of courts to determine damagesSee complete list of arbitrated disputes
Zyliss AG is a Swiss company that makes kitchen productsGourmet Kitchen is a U.S. company that sells kitchen products, including Zyliss productsGourmet Kitchen registered the domain zylissonline.com. The site offered genuine Swiss Zyliss productsZyliss AG filed a complaint with the National Arbitration Forum to force the registrar, BulkRegister.com, to transfer the domain zylissonline.com to Zyliss AG.
It has owned a U.S. federal trademark registration for “Zyliss” since 1975Gourmet Kitchen registered zylissonline.com in 2001zylissonline.com is confusingly similar to zyliss.com(a member of the public would assume zylissoline.com was associated with Zyliss)Gourmet Kitchen is not normally known as zylissonlineGourtmet Kitchen is in bad faith because it is attempting to divert Zyliss customers to its own website
Started in business in 1994 selling kitchen products, including ZylissOnly Zyliss products are offered on zylissonline.comGourmet Kitchen carries the full Zyliss product lineHanding over the domain to Zyliss would give Zyliss the benefit of Gourmet Kitchen’s clientele and would be unfairZyliss does not sell to end users; Gourmet Kitchen does
Complainant Zyliss AG must show:zylissoline.com is identical or confusingly similar to a trademark or service mark of ComplainantGourmet Kitchen has no rights or legitimate interests in zylissonline.com; ANDzylissonline.com has been registered and is being used in bad faith
Respondent used the domain name in connection with a bona fide offering of genuine Zyliss goods since 2001 and has not used the domain name in relation to any goods which were not genuine Zyliss goods. Hence it has a legitimate interest in the domainComplainant has failed to show (2)The panel need not reach (3)Complaint DENIED
Lower-cost, faster alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP)Used for obvious cases of infringementElectronic filing. Low fee: $300-500.Automatic “locking” of domain in 24 hoursOwner must respond in 14 days. limited to 2500 wordsOne “examiner”Same standards as UDRP for Remedy is SUSPENSION, not TRANSFERBUT: burden of proof is “clear and convincing evidence”
WIPO = WORLDINTELLECTUALPROPERTYORGANIZATIONTHERE HAVE BEEN60,000 DOMAINNAME DISPUTESSINCE 1999
Full Sail is a film school in Florida, established 1979. It owns the domain fullsail.comSpevack, in Arizona, owns Shitty Schools, Inc. which registered the domain name fullsailsucks.com“This website was started as an informational resource for students interested in attending Full Sail in Winter Park, Florida. This website hopes to present students with objective and unbiased reviews of the school in a concise manner so future students can make an educated decision before deciding to attend the school.”It posts largely unflattering comments about Full Sail on the site.
Full Sail sued Spevack in U.S. District Court in Florida for trademark dilution by disparagementThe court found that it had no jurisdiction over Spevack because of lack of minimum contactsThe Florida long-arm statute confers jurisdiction on a person who commits a tortious act in FloridaInjury from trademark infringement occurs where the trademark owner resides (Florida)Spevack’s site offered $100 for a photo of Full Sail’s premises with someone holding a sign reading “fullsailsucks.com”But: Spevack’s site was passive under Zippo.
Full Sail brought an arbitration under the UDRP to force Spevack to transfer the domain to Full SailThe arbitrator found that the site used “fullsail” for fair comment“The evidence indicates that the Domain Name is used for a non-commercial commentary about Complainant’s business, and the allegations of bad faith are not supported by sufficient evidence to support a finding in Complainant’s favor on bad faith.”Complaint DENIED
Cybersquatting = registering, trafficking in, or using a domain name confusingly similar to a registered mark“A person shall be liable in a civil action by the owner of a mark … if … that person(i) has a bad faith intent to profit from that mark … ; and (ii) registers, traffics in, or uses a domain name that(1) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (2) in the case 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.” 15 U.S.C. §1125(d)
Is the domain name a name that is otherwise commonly used to identify the plaintiff?Defendants’ bona fide prior use of the domain name in offering of any goods or services; Defendant’s bona fide noncommercial use of the mark in a site accessible under the domain name; Defendant’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site 15 U.S.C. §1125(d)
Defendant’s offer to sell the domain name to the mark owner or any third party for financial gain without having used … the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; Material and misleading false contact information when applying for the registration of the domain name.Defendant’s registration of multiple domain names which the person knows are identical or confusingly similar to marks of others 15 U.S.C. §1125(d)
AntiCybersquatting Consumer Protection ActThe owner of a mark may file an in rem civil action against a domain name in the … district in which the domain name registrar, domain name registry … is located, if(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office … and (ii) the court finds that the owner(1) is not able to obtain in personam jurisdiction over a person who would have been a defendant … under paragraph (1); or (2) through due diligence was not able to find a person who would have been a defendant … under paragraph (1) 15 U.S.C. §1125(d) In rem remedies limited to a court order for the forfeiture or cancellation of the domain name or transfer of the domain name to the owner of the mark.
Linking to the web page of another beneath the home pageuser does not necessarily know that the link is to a different websiteIs it copyright infringement?Is it trademark infringement? Dilution?Ebay, Inc. v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058 (N.D. Cal. 2000)Bidder’s Edge site accumulates information about online auctionRequires numerous “hits” to eBay to assemble information and links to eBaySuccessful theory: trespass to chattelsPreliminary injunction issued
Showing the web page of another framed with one’s own border (usually with logo and banner advertising)Washington Post Co. v. Total News, Inc., No. 97 Civ. 1190 (PKL) (S.D.N.Y., filed Feb. 20, 1997). Settled.Issues:deceptive?likelihood of association? dilution?unfair? (using content of another to draw advertising viewers)First Amendment freedom to link?Trespass theory?
Placing hidden text in a web page (usually another party’s trademark) so that one’s own page will be retrieved when a search is done for the other party’s mark (cyberstuffing)Issues:deceptive?likelihood of association? dilution?unfair? (using content of another to draw advertising viewers)First Amendment freedom to link?Trespass theory?Only one defendant has ever won a metatagging case (on special facts): Playboy Enterprises, Inc. v. Terri Welles, Case, 279 F.3d 796 (9th Cir. 2002)
Registering misspellings of domain names in the hope of tricking users who make typing errors www.chrysler.com www.chrsyler.com www.chrylser.comwww.amazon.com www.amazin.com www.ford.com www.frod.com Is it trademark infringement? False advertising? Deceptive trade practice?
User searches for “Sony television” Search engine displays a banner ads for LG ElectronicsIs it trademark infringement? False advertising? Deceptive trade practice?Geico v. GoogleUsers searched for “Geico” but got ads for competitors: Try it.Geico sued; Google moved to dismissCourt allowed the case to continue, but did not decide whether this was a trademark infringement
A trademark (service mark) is any word, name, symbol, or device, or combination, used to identify and distinguish a source of goods (or services)The touchstone of trademark infringement is likelihood of confusion as to source or association with the goods or servicesDomain names can be trademarksDomain name disputes can be settled in court or in ICANN arbitration under the Uniform Dispute Resolution Policy (UDRP)Cybersquatting is prohibited federallyTrespass is an important theory to protect against forms of web page piracy
Visa is a worldwide association of credit-card issuing banksJSL is owned by Joseph Orr. It has no employees and operates out of his apartment in New York CityWhen Orr lived in Japan in the late 1990s, he formed a school named “Eikaiwa Visa” to teach English. “Eikaiwa” means “English conversation” in Japanese.Orr testified that he used “Visa” because visa suggests international travelVisa started using “Visa” in 1976 and has 43 Federal trademark registrations containing “Visa”Visa operates in all 50 states and over 200 countries
Visa has issued 750 million cards, which are acepted by more than 21 million merchantsVisa has operated a website visa.com since 1994. It furnishes millions of page views per monthJSL registered the domain name “evisa.com” in 1997evisa.com is not a school. It claimed to offer “e-commerce, Web site development, and payment services”In 1999, Visa offered to buy the domain evisa.com for $10K. Orr demanded $250KIn 2001, Visa brought suit against JSL for trademark dilution to enjoin (stop) the use of evisa.com by JSL
Visa v. JSL CorporationThe case was procedurally complicated.The trial court considered testimony of expert and fact witnesses that “Visa” was a famous markBecause there was no genuine issue of material fact, the Court issued the injunction without sending the case to a jury (called “summary judgment”)The Ninth Circuit reversed because the trial court had not used the correct standard for finding dilution. The U.S. Supreme Court, in Moseley v. V-Secret Catalogue, said that “actual dilution, rather than a likelihood of dilution” must be provenOn remand, JSL mounted unsuccessful Daubert challenges to Visa’s witnessesThe court applied Moseley and issued the injunction