TRADEMARK AND COPYRIGHT ISSUES ON THE INTERNET Q Vanessa Cooper, Associate General Counsel, IP & Privacy, Kaplan, Inc. Q Sarah Crispi, Director of Legal Affairs, Discovery Communications, LLC Q Keith Hunt, Legal Counsel, Labatt Breweries of Canada Q Stanley Pierre-Louis, Vice President and Associate General Counsel, Viacom Inc. Q Katherine Tabor, Senior Counsel, IP Litigation Practice Q Robert Weisbein, Partner, IP Litigation Practice Wiki Infringement: Copyright Issues Relating To User- Generated Content What is User-Generated Content?

“User-generated content (UGC) refers to various kinds of media content that is produced or primarily influenced by end-users; as opposed to traditional media producers, licensed broadcasters, and production companies.” Wikipedia.com Types of User-Generated Content Sites

Q Blogging Sites Q Podcasting Sites Q Video Posting Sites Q Social Networks/Virtual Communities Q Wiki Sites Common Characteristics of User-Generated Content Sites Q Open Access: Any “user” can post materials Q Minimal Verification of Posters and of Posted Materials: – Self-regulation (e.g., Terms of Service) v. no regulation (e.g., FCC) Q Material posted in open formats (no DRM) – Creates open access and avoids lack of inter- operability in formats – Allows for posting of unauthorized materials and unverified data Monetizing UGC Q Licensing Schemes Q Pre-Roll and Overlay Advertisements Q Targeted Advertising Q Advertisements Attached to Premium Content Q Revenue Sharing with Users Q Custom Communities Q Brand Profile Pages Q Dedicated Channels Digital Millennium Copyright Act 17 U.S.C. § 512(a)-(d)

Q Provides “safe harbor” from liability for online service providers Q Requirements: – No actual or constructive knowledge of infringement – Upon obtaining knowledge, service provider must expeditiously remove content (“notice and take down”) – Service provider must not receive financial benefit directly attributable to infringing activity and have the right and ability to control such activity – Must designate and register an agent to receive notice of infringement – Must implement means of terminating repeat offenders Digital Millennium Copyright Act 17 U.S.C. § 512(a)-(d)

Q Strict Notice Requirements – Identification of copyrighted works (or, if multiple works, a representative list) – Identification of infringing material with sufficient detail to allow service provider to locate material – Statement that use is not authorized – Sworn statement that notification is accurate – Physical or electronic signature of copyright owner or agent – Contact information for copyright owner or agent Digital Millennium Copyright Act 17 U.S.C. § 512(a)-(d)

Q Must terminate repeat offenders, but no statutory duty to monitor for infringement – Perfect 10 v. CCBill, 488 F.3d 1102 (9th Cir. 2007) – Io Group v. Veoh Networks, Inc., 06 Civ. 3926 (N.D. Cal. Aug. 27, 2008) Digital Millennium Copyright Act 17 U.S.C. § 512(a)-(d) Q Notice and Takedown Provisions – Online Policy Group v. Diebold, 337 F. Supp. 2d 1195 (N.D.Ca. 2004) Q “Diebold knowingly materially misrepresented that Plaintiffs infringed Diebold’s copyright interest . . . . there is no genuine issue of fact that Diebold . . . specifically intended . . . that its letters . . . would result in prevention of publication of that content.” – Rossi v. MPAA, 391 F.3d 1000 (9th Cir. 2004) Q Subjective good faith requirement that alleged use is infringing Q “A copyright owner cannot be liable simply because an unknowing mistake is made, even if the copyright owner acted unreasonably in making the mistake . . . . Rather, there must be a demonstration of some actual knowledge of misrepresentation.” – Lenz v. Universal Music Corp., 2008 WL 3884333 (N.D.Ca. Aug. 20, 2008) Q “An allegation that a copyright owner acted in bad faith by issuing a takedown notice without proper consideration of the fair use doctrine thus is sufficient to state a misrepresentation claim pursuant to [the DMCA].” IP Cases Involving User-Generated Content Sites

Q Recent Decisions – IO v. Veoh – Lenz v. Universal Q Pending Cases – Viacom v. YouTube, Inc. (07-cv-2103 S.D.N.Y) – Premiere League v. YouTube, Inc. (07-cv-3582 S.D.N.Y) – Tur v. YouTube, Inc. (06-cv-4436 C.D. Cal.) – UMG Recordings, Inc. v. Veoh Networks, Inc. (07-cv- 1568 S.D. Cal.) Technological Solutions

Q Digital Watermarking – “[P]rocess of embedding information into digital signal. The signal may be audio, pictures or video, for example. If the signal is copied, then the information is also carried in the copy.” Wikipedia.com – Principal Current Use – Forensic detection – Emerging Use – Control playback of content on consumer electronic devices Technological Solutions

Q Digital Fingerprinting – A technique in which sophisticated software identifies, extracts and then compresses characteristic components of an audio or video file, enabling that audio and/or video to be immediately and uniquely identified by its resultant “fingerprint.” Wikipedia.com – Primary tech solution for infringing content on UGC Sites Q Audible Magic, Vobile, Philips, Gracenote and others Q YouTube Video ID Industry Self-Regulation

Q Driven By: – Effort to curtail widespread infringement of digital content – Desire to minimize litigation risk – Address issues relating to filtering of content Q Two Examples: – UGC Principles – Electronic Frontier Foundation Fair Use Principles Industry Self-Regulation Q UGC Principles – Non-binding principles developed by content companies and UGC site operators to balance their interests Q Signatories: CBS Corp., Crackle, DailyMotion, Fox Entertainment Group, Microsoft Corp., MySpace, NBC Universal, Sony Pictures Entertainment, Veoh Networks, Inc., Viacom Inc., and The Walt Disney Company – Stated goals of UGC principles: Q Eliminate infringing content Q Accommodate fair use Q Protect user privacy Industry Self-Regulation

Q Service providers agree to employ automatic filtering technologies (and, where appropriate, human review) Q Service providers agree to regularly update and enhance their filtering technology Q Database of protected content to be provided by content owner Q Content owner decides terms of use Q Default action is to block identifying copyrighted material Industry Self-Regulation

Q UGC Principles – Other Key Provisions – Service providers to block links to third-parties dedicated to disseminating infringing content – Provide enhanced mechanisms to copyright owners to search for potentially infringing content – Compliance with DMCA takedown and notice provisions – Commitment to retain user data for at least 60 days – Terminate accounts of repeat infringers Industry Self-Regulation Q EFF Fair Use Principles – Principles endorsed by EFF, Public Knowledge, ACLU of Northern California, Harvard’s Berkman Center – Goals: Q “Wide berth” for transformative and creative uses Q Scope limited to fair use – Key provisions include: Q Protection of fair use incorporated into automated filtering technologies Q Require DMCA notice prior to content removal Q Mechanism for dispute prior to removal of matched content Q Creation of “dolphin hotline” May Thou Purchase Thy Neighbor’s Mark? Keyword Advertising and the Initial Interest Confusion Doctrine What is Keyword Advertising?

Q Allows advertiser to buy words/phrases (“keywords”) – including trademarks – to trigger “sponsored” search results Q Keyword advertising may direct consumers to a competitor’s goods/services Q The keyword is not necessarily visible in the “sponsored” result – Ads can be labeled or unlabeled – Cf. use of mark as metatag Example: Google® AdWords®

Trademark Visible

Trademark Not Visible Search Engine Keyword Advertising Policies Advertisers responsible for ad text and keyword. Provides advertising space; Google it does not “sell keywords” Upon complaint, will conduct limited investigation, and Q US/Canada: disable use of TM in text of ad Q Outside US/Canada: disable keyword and/or ad text

Allow third-party TM keyword bid only if relevant, i.e. (a) resale, (b) non- competitive information, or (c) generic or merely descriptive; Yahoo! TM also allowed in ad text if compliant. Upon complaint: Q US: review for compliance with relevancy guidelines Q outside US: comply with applicable fair use principles

Allow third-party TM keyword bid only if “truthful and lawful,” i.e. (a) resale, Microsoft (b) non-competitive information, or (c) dictionary term; TM allowed in ad text Upon complaint, limited investigation, remove if not in compliance; approach may differ from country to country Is keyword advertising trademark infringement? There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.

ƒ Sponsored results show Buyer’s marks, and link to Buyer’s website, which sells products that compete with Owner’s, but does not sell Owner’s products. ‰ Trademark Infringement ‰ Not Trademark Infringement

ƒ Sponsored results show Owner’s marks, and link to website selling Buyer’s competitive products, and not Owner’s products ‰ Trademark Infringement ‰ Not Trademark Infringement

ƒ Sponsored results show Owner’s marks, and link to website selling Buyer’s and Owner’s products ‰ Trademark Infringement ‰ Not Trademark Infringement

ƒ Sponsored results show Owner’s marks, and link to website selling Buyer’s unrelated products ‰ Trademark Infringement ‰ Not Trademark Infringement Question 1:

Should buying/selling a trademark to trigger keyword advertising be considered actionable trademark “use”?

‰ Use in commerce ‰ Not use in commerce There is no wrong answer. Circuits are split. Is Purchase of Keyword “Use” in Commerce? Court Split

Use in Commerce Not Use in Commerce Not Yet Addressed (“Majority View”) First Circuit Second Circuit Tenth Circuit Third Circuit Fourth Circuit Eleventh Circuit Fourth Circuit Sixth Circuit DC Circuit Fifth Circuit Federal Circuit Sixth Circuit The Fourth and Sixth circuits have conflicting district Seventh Circuit court-level decisions. Eighth Circuit Ninth Circuit Practice Tip: If you are considering bringing a claim for keyword trademark infringement, forum shopping is critical. Keyword Advertising = “Use in Commerce” – First Circuit: – Sixth Circuit: Q Boston Duck Tours, LP v. Super Duck Q T.D.I. Int’l, Inc. v. Golf Preservations, Inc., 2008 Tours, LLC, (D. Mass. 2007) U.S. Dist. LEXIS 7427 (E.D. Ky. Jan. 31, 2008) – Third Circuit: – Seventh Circuit: Q 800-JR Cigar, Inc. v. GoTo.com, Inc., Q International Profit Associates Inc. v. Paisola, 2006 U.S. Dist. LEXIS 48279 (D.N.J. 2006 U.S. Dist. LEXIS 82971 (N.D. Ill., Nov. July 17, 2006) 14, 2006) Q Buying for the Home LLC v. Humble – Eight Circuit: Abode LLC, 2006 U.S. Dist LEXIS Q Edina Realty, Inc. v. TheMLSOnline.com, 76371 (D.N.J. 2006) 2006 WL 737064 (D. Minn. March 20, 2006) Q J.G. Wentworth v. Settlement Funding Q Hysitron Inc. v. MTS Systems Corp., 2008 U.S. LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Dist. LEXIS 58378 (D. Minn. Aug. 1, 2008) Pa. 2007) – Ninth Circuit: – Fourth Circuit: Q Playboy Enters., Inc. v. Netscape Q Government Employees Insurance Co. v. Communications Corp., Google, Inc., 2006 WL 1903128 (E.D. 354 F.3d 1020 (9th Cir. 2004) Va. 2005) Q Google Inc. v. Am. Blind & Wallpaper Factory, – Fifth Circuit: Inc., Q American Airlines Inc. v. Google Inc., 2007 U.S. Dist. LEXIS 32450 (N.D. Cal. Apr. N.D. Tex., No. 4:07-cv-00487 18, 2007) (motion to dismiss denied Oct. 24, Q Storus Corp. v. Aroa Mktg.,2008 U.S. Dist. LEXIS 2007) 11698 (N.D. Cal. Feb. 15, 2008) Keyword Advertising is Not “Use in Commerce” – Second Circuit: Q Rescuecom Corp. v. Google Inc., 456 F. Supp. 2d 393 (N.D.N.Y. 2006) Q Merck & Co. v. Mediplan Health Consulting Inc., 431 F. Supp. 2d 425 (S.D.N.Y. 2006) Q Fragrancenet.com Inc. v. Fragrancex.com Inc., 493 F. Supp. 2d 545 (E.D.N.Y. 2007) – Fourth Circuit: Q U-Haul Int’l, Inc. v. WhenU.com, Inc., 279 F. Supp. 2d 723 (E.D. Va. 2003) – Sixth Circuit: Q Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) Question 2:

If keyword advertising amounts to “use” in commerce, is it likely to cause confusion? Introduction: Metatagging Hypo: Citement Tape v. O’Lungs O’Lungs Glass Warehouse is an internet-based retailer of stained glass supplies. Citement Tape Corp. manufactures CITEMENT TAPE and CITEMENT FOIL for use in stained glass window repairs. O’Lungs sells tapes and foils that compete directly with Citement’s. Beginning in 2000, O’Lungs included both of the Citement marks in the website’s metatags, and in white lettering on the white background of its webpage. None of these is apparent to visitors to the website. O’Lungs does not sell Citement products. O’Lungs did this so search engines would include the O’Lungs website in searches for these terms. In 2003, Citement brought suit for trademark infringement. Metatagging Hypo: Citement Tape v. O’Lungs Part I: Likelihood of Confusion Is this likelihood of confusion under the Lanham Act? ‰ Likelihood of confusion ‰ No likelihood of confusion Metatagging Hypo Part I: Likelihood of Confusion Is this likelihood of confusion under the Lanham Act? , Likelihood of confusion ‰ No likelihood of confusion Answer: Likelihood of confusion: Purpose of Luring Customers “. . . particularly [O’Lungs’] admission that his purpose in using the [Citement] marks was to lure customers to his site, permit us to conclude that no genuine dispute exists regarding the likelihood of confusion. As a result, [Citement] was entitled to summary judgment on the liability issue.” Metatagging Hypo Part II: Profits Given the facts above, the district court found that such behavior was “willful,” and subsequently awarded profits. On appeal, the defendant argued that its “use” of the marks was intentional, but “not ‘willful’ because [defendant] was unaware that such use of the marks was illegal.” Was this use fairly found “willful”? ‰ Willful ‰ Not willful Metatagging Hypo Part II: Profits , Willful ‰ Not willful Answer: Willful: Intentional Concealment O’Lungs “had programmed its website so that [Citement’s] marks were displayed in the same color as the webpage background, concealing them from view. We can find no clear error in the district court’s conclusion that such intentional concealment provides strong circumstantial evidence of ‘willfulness.’” Venture Tape Corp. v. McGills Glass Warehouse, 2008 WL 3959997 (1st Cir. Aug. 28, 2008). Keyword Advertising Hypo: Dirtlabors v. Farwest Both Dirtlabors LLC and Farwest Industrial Supply are companies that distribute soil erosion and dust control products in the United States. Farwest’s product line includes DIRT-GLOO. Dirtlabors, without Farwest’s permission, uses the phrase “dirt gloo” in keyword advertising on an Internet search engine and uses variations of the phrase in metatags for its websites. Search engine users would see the Dirtlabors website in results for a search of “dirt gloo” along with other results. Farwest claims that this use of the DIRT-GLOO mark creates a likelihood of confusion.

Likelihood of Confusion? ‰ Likelihood of Confusion ‰ No Likelihood of Confusion Keyword Advertising Hypo: Dirtlabors v. Farwest Likelihood of Confusion? , Likelihood of Confusion ‰ No Likelihood of Confusion Answer Confusion: Initial Interest Confusion “A person typing [“dirt gloo”] into a search engine presumably would be somewhat familiar with [Farwest’s] product and would be looking for the product or its maker, and yet would be directed by the keywords and metatags to [Dirtlabors’] websites. The confusion—thinking one would be connected to [Farwest] when in fact [Dirtlabors’] websites also appear in the search results—would entirely be caused by [Dirtlabors’] use of [Farwest’s] mark.” Soilworks LLC v. Midwest Industrial Supply, Inc., 2008 WL 3286975 (D. Ariz Aug. 7, 2008) Initial Interest Confusion Defined Q “Initial interest confusion occurs when the defendant uses the plaintiff's trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.” Interstellar Starship Services, Ltd. v. Epix Inc., 304 F.3d 936, 941 (9th Cir.2002) (quoting Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (quoting Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d. 1394, 1405 (9th Cir. 1997)). In the context of keyword advertising, initial interest confusion occurs when the search results are shown to the user. e is a Blockbuster right there. is a Blockbuster right e t alter the fact that Blockbuster Blockbuster that fact alter the t 174 F.3d 1036, 1064 (9th Cir. 1999). 174 F.3d

Brookfield Commc’ns, Inc. v. W. Coast Entm't Corp., Entm't W. Coast v. Commc’ns, Inc. Brookfield Initial Interest Confusion is much like posting a sign with another's another's with sign a posting like much is Confusion Interest Initial puts Video] [Blockbuster one's store. Suppose of in front trademark -- reading on a highway billboard up a miles Video: 2 "West Coast ahead at Exit 7" -- is reallybut located at Exit 8 West Coast where Coast's West for looking Customers 7. Exit at located is Blockbuster to Unable it. for looking around drive and at Exit 7 off willpull store by the right store the Blockbuster but seeing Coast, West locate who consumers Even there. rent simply they may entrance, highway to continue trouble worth the it not may find Coast West prefer since West Coast ther for searching Customers are not confused in the narrow sense: they are fully are fully sense: they narrow in the confused not are Customers aware that they are purchasing and they have from Blockbuster no isany way or in related to, Blockbuster believe that reason to isonly there by, West Coast. Nevertheless, that sponsored the fact initial confusion consumer does no goodwill. acquired West Coast's misappropriating be would Q Have Courts Adopted Initial Interest Confusion? Court Split Adopted IIC Have Not Adopted IIC Not Yet Addressed

First Circuit (maybe)* Fourth Circuit DC Circuit Second Circuit Eighth Circuit** Federal Circuit Third Circuit Eleventh Circuit Fifth Circuit Sixth Circuit Seventh Circuit *Although the 1st Circuit has not expressly Eighth Circuit** adopted Initial Interest Confusion, it has Ninth Circuit Tenth Circuit explicitly denied rejecting the doctrine.

**There are conflicting district court opinions in the 8th Circuit. The Revote: Is keyword advertising trademark infringement? There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.

ƒ Sponsored results show Buyer’s marks, and link to Buyer’s website, which sells products that compete with Owner’s, but does not sell Owner’s products. ‰ Trademark Infringement ‰ Not Trademark Infringement

Will be addressed in the Harry and David cases recently filed in the U.S. District Court for the District of Oregon (Ninth Circuit): Harry and David v. 1-800-Flowers.com Inc., case number 08-cv-3084; Harry and David v. Delightful Deliveries Inc., case number 08-cv-3086; Harry and David v. FTD Group Inc. et al, case number 08-cv-3089; Harry and David v. Fruit Co. Inc., case number 08-cv-3087; Harry and David v. Provide Commerce Inc., case number 08-cv-3085; and Harry and David v. Houdini Inc., case number 08-cv-3088. The Revote: Is keyword advertising trademark infringement? There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.

ƒ Sponsored results show Owner’s marks, and link to website selling Buyer’s competitive products, and not Owner’s products ‰ Trademark Infringement ‰ Not Trademark Infringement

Will be addressed in the recently filed Rosetta Stone Ltd. v. Rocket Languages Ltd, et al., 08-cv-04402 (C.D. Cal) The Revote: Is keyword advertising trademark infringement? There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.

Sponsored results show Owner’s marks, and link to website selling Buyer’s and Owner’s products ‰ Trademark Infringement ‰ Not Trademark Infringement

This question has been addressed under the initial interest confusion doctrine with conflicting results: May be initial interest confusion: see Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006). Not initial interest confusion: see Designer Skin, LLC v. S & L Vitamins, Inc., 2008 WL 2116646 (D. Ariz. May 20, 2008) (noting that it shares “virtually identical facts” with Australian Gold.) The Revote: Is keyword advertising trademark infringement? There are different ways trademarks can be used in keyword advertising. Assume Buyer uses Owner’s trademark OWNER as a keyword.

Sponsored results show Owner’s marks, and link to website selling Buyer’s unrelated products ‰ Trademark Infringement ‰ Not Trademark Infringement

The result depends on the circumstances: Q Possibly found under the initial interest confusion doctrine. See, e.g., Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1062 (9th Cir.1999) (recognizing initial interest confusion in the Internet context). Q But remember, not all Circuits consider purchase of a keyword “use in commerce.” See, e.g., Fragrancenet.com Inc. v. Fragrancex.com Inc., 439 F. Supp. 2d 545 (E.D.N.Y. 2007) (purchase of a keyword is not “use in commerce”). Q Traditional “brick and mortar” world principles still apply. Someone has purchased Decision Tree Slide your keyword, and you want to bring a What circuit are trademark you in? claim

1st, 3rd, 5th, 7th, 4th, 6th, 10th, 8th, 9th Circuits 11th, DC, Federal 2nd Circuit Circuits Recovering Your Domain Names: Do You Negotiate or Litigate? Preliminary Considerations Q What domain names are most important to the corporation? – How is this determined and is this reviewed periodically Q Factors to consider when determining what domain names to recover – Similarity of domain names to the corporation’s trademarks – Internet traffic (number of “hits” the cybersquatter’s website receives) – Number of relevant domain names registered by a given cybersquatter – Location of registrant – Location of registrar Preliminary Considerations – Continued

Q Who will do the necessary research? Q How much is the corporation willing to spend to recover domain names? Q Once it is determined what domain names will be recovered, who will complete the process? – The corporation – A domain name broker – Outside counsel Options For Recovering A Domain Name

Q Direct Negotiation Q Uniform Dispute Resolution Policy Proceeding (UDRP) – National Arbitration Forum (NAF) – World Intellectual Property Organization (WIPO) – Asian Domain Name Dispute Resolution Centre (ADNDRC) Q Litigation – Anti-cybersquatting Consumer Protection Act (ACPA) action (15 U.S.C. 1125(d)(1)(A)) – ACPA In Rem action (15 U.S.C. 1125(d)(2)(A)) Negotiation – Initial Issues

Q Who is the registrant of the domain name? – An individual – A domain name broker – Cannot be determined Q Who will contact the registrant? – The corporation (in-house counsel or IT department) – Outside counsel – A domain name broker Q How will the registrant be contacted? – Corporation identified or anonymously Negotiation – Initial Issues

Q What is the corporation willing to pay for the domain name? Q How long is the corporation willing to negotiate with the registrant before pursuing other options? Q If negotiation does not work, then what? Negotiation – Advantages

Q Cost effective – no need to prepare a complaint Q Potential for a quick resolution if registrant is cooperative Q Avoid a UDRP loss when there is a question of winning Q Ability to maintain control over the process Negotiation – Disadvantages

Q Registrant still controls the domain name and may transfer the domain name to another entity Q May be more expensive than a UDRP proceeding and take longer if the registrant is unwilling to negotiate Q Registrar is not required to transfer the domain name until registrant provides instructions to do so Q Difficult to enforce the transfer of the domain name if the registrant reneges on the agreement URDP Proceeding

Q To prevail, a domain name complainant must establish the following: – The domain name in question is identical or confusingly similar to a valid mark; – The registrant has no rights or legitimate interest in the domain name; and – The domain name was registered and used in bad faith (Uniform Dispute Resolution Policy (“The Policy”), ¶ 4(a)) URDP Proceeding – Procedure Q Complaint is filed in proper forum and reviewed for compliance with The Policy Q The registrant has twenty (20) days to file a response Q If registrant files a timely response, both parties may file one additional submission Q A panel is assigned and issues a decision within fourteen (14) days of being assigned Q The respondent has ten (10) days to appeal the panel’s decision in the proper jurisdiction or the domain name will be transferred URDP Proceeding – Advantages

Q Approved forum notifies registrar and the domain name is locked to prevent transfer Q Fixed timeline for the parties’ submissions and panel decision Q Proceeding is usually completed in two (2) months Q Reasonable filing fees based on number of domain names at issue Q Each party limited to two submissions Q Online filing and communication with the forums Q Approximately 84% of the complaints filed with WIPO from 1999 to present have resulted in the transfer of the domain name (www.wipo.int/amc/en/domains/statistics/) URDP Proceeding – Disadvantages

Q Complainant’s only remedy is transfer of the domain name – no damages can be awarded Q Separate complaints must be filed for each domain name registrar Q If the domain name is registered in a foreign country, the complaint must be translated into the language of that country Q No appeal with the forum Q Foreign respondents can file appeals in their country ACPA Actions Based On Personal Jurisdiction

Q To prevail, the plaintiff must establish the following: – that registrant had a bad faith intent to profit from the mark; and – registers, traffics in, or uses a domain name that is (1) identical or confusingly similar to a distinctive mark or (2) identical, confusing similar to, or dilutive of a famous mark that is famous at the time of the registration of the domain name 15 U.S.C. §§ 1125(d)(1)(A)(i) and (ii) Q Bad faith is determined by considering nine factors listed in 15 U.S.C. § 1125(d)(1)(B)(i) ACPA Actions Based On Personal Jurisdiction – Remedies

Q Forfeiture or cancellation of the domain name or the transfer of the domain name to the trademark owner Q Statutory damages ($1,000-$100,000) or actual damages and lost profits Q Attorneys’ Fees Q Costs ACPA Actions Based On Personal Jurisdiction – Advantages Q May bring additional causes of action for trademark infringement, trademark dilution, and unfair competition Q More remedies are available Q Initially may be less expensive than a UDRP proceeding if there are many domain names Q In federal court ACPA Actions Based On Personal Jurisdiction – Disadvantages Q Time to resolution will be much longer than for a UDRP proceeding Q Greater burden to corporate resources given the longer resolution time Q More expensive than a UDRP proceeding ACPA Actions Based On In Rem Jurisdiction Q Under 15 U.S.C. § 1125(d)(2)(A), an in rem proceeding may be filed against a domain name(s) where the registrar is located if: – In personam jurisdiction does not exist over the potential defendant in a civil action; or – The potential defendant cannot be located after sending a notice of the violation and publishing a notice of action ACPA In Rem Action – Remedies Q The remedies in an in rem action are limited to forfeiture or cancellation of the domain name or the transfer of the domain name to the trademark owner (15 U.S.C. § 1125(d)(2)(d)) – Two courts have awarded TROs, preliminary injunctions, costs, and/or attorneys’ fees (BroadBridge Media LLC v. Hypercd.com, 106 F.Supp.2d 505 (S.D.N.Y. 2000); Agri- Supply Co. v. Agrisupply.com, 457 F.Supp. 660 (E.D. Va. 2006)) – Commentators, including Rudolf Callman, J. Thomas McCarthy, and Jerome Gilson, disagree with these court decisions ACPA In Rem Action – Advantages/Disadvantages

Q Advantages – In rem proceeding initially may be less expensive than a UDRP proceeding if there are many domain names – Allows for court control of the domain name(s) that is the subject of the action so that it cannot be transferred – In federal court Q Disadvantages – Remedies are limited – Action must be filed in the judicial district of the registrar of the domain name(s) at issue Questions?

Vanessa Cooper – [email protected] Sarah Crispi – [email protected] Keith Hunt – [email protected] Stanley Pierre-Louis – [email protected]

Robert S. Weisbein – [email protected] Katherine L. Tabor – [email protected] Herbert P. Williams – [email protected]