Intellectual Property Boston College Law School April 1, 2009 Trademark – Domain Names

Trademark Infringement Causes of action –Likelihood of confusion –Dilution –Cyber-squatting –False Advertising

Domain Name System ICANN Registrars ICANN Countries.com,.org,.net.us,.uk,.jp Sites nike.comcoke.comkodak.comnike.ukkodak.jp

Types of Domain Name Disputes Likelihood of Confusion –E.g. nike.com to sell competing shoes –E.g. plannedparenthood.org for confusing anti-abortion web site Dilution of Famous Mark –E.g. nike.com to sell ball bearings (blurring) –E.g. candyland.com or adultsrus.com (tarnishment)

Types of Domain Name Disputes Cybersquatting –E.g. register nike.com to sell to Nike –E.g. register panavision.com to sell to Panasonic Competitive warehousing –E.g. Princeton Review registering kaplan.com Concurrent uses –E.g. Apple Computer and Apple Records –E.g. Budweiser U.S. and Budweiser Czech Republic

Types of Domain Name Disputes Noncommercial uses –E.g. pokey.org, veronica.org for personal sites –E.g. nike.net, for site criticizing Nike labor practices Parody and critique –E.g. peta.org for People Eating Tasty Animals –E.g. walmartsucks.com, guiness-really-sucks.com

Sources of Law Trademark Law –Likelihood of confusion –Dilution –Anti-Cybersquatting Administrative Solution –Uniform Dispute Resolution Policy (UDRP)

Anti-Cybersquatting Lanham Act § 43(d): –(1)(A) A person shall be liable in a civil action by the owner of a mark … if, without regard to the goods or services of the parties, that person -- (i) has a bad faith intent to profit from that mark …; and (ii) registers, traffics in, or uses a domain name that - –(I) in the case of a mark that is distinctive … is identical or confusingly similar … –(II) in the case of a famous mark … is identical or confusingly similar to or dilutive of that mark.

Anti-Cybersquatting Lanham Act § 43(d): –(1)(B) In determining whether a person has a bad faith intent … a court may consider factors such as … - (I) the trademark … rights of the person … (II) … consists of a legal name of the person … (III) … prior use … with the bona fide offering of goods (IV) … bona fide noncommercial or fair use (V) … intent to divert consumers … for commercial gain (VI) … offer to transfer, sell, or otherwise assign … (VII) … provision of material and misleading false contact info (VII) … registration or acquisition of multiple domain names

Shields v. Zuccarini

PETA v. Doughney

Uniform Dispute Resolution Elements –“identical or confusingly similar” to a trademark –“no rights or legitimate interests” in domain name –domain name “has been registered and is being used in bad faith.” Evidence of Bad Faith –Registered primarily for purpose of sale to tm owner –Registered in order to prevent tm owner from using –Registered to disrupt competitor’s business –Intentionally attempting to attract users to site for commercial gain through likelihood of confusion

Uniform Dispute Resolution Evidence of Legitimate Interest –Prior use of domain name with bona fide offering of goods –Commonly known by domain name –Making legitimate noncommercial or fair use of domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark

Third Party Liability –Contributory Liability (i) assist in infringing activity (ii) knew or had reason to know of infr. activity –Vicarious Liability (i) authority or ability to control other’s behavior (ii) direct financial benefit from infringement

Polo v. Chinatown

e-Bay Example

Third-Party Liability Reasons to extend –Facilitate enforcement, lower costs –Third-parties morally culpable –Deter third-parties Reasons to limit –Imposes costs on third-parties to monitor –Not always fair to impose burden –Not always most efficient to impose burden

False Advertising Lanham Act, § 43 –(a) Any person who, on or in connection with any goods or services … uses in commerce any … false or misleading description of fact, or false or misleading representation of fact, which -- … (2) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, –shall be liable in a civil action...

J&J v. Smithkline

Defenses Genericness Functionality Abandonment Nominative Use Parody

Murphy Door Bed v. Interior

Generic? Generic –Thermos –Escalator –Trampoline –Cellophane –Nylon –Yo-Yo

Avoiding Genericide

Administrative Next Assignment –Finish Trademark

Exam Details Test Details –24-hour take-home exam –Freely schedulable during regular exam period –Open book –Strict word limits –Past exams on course web page