More Details on Cyber Piracy Equal Justice Conference, 2007 Hugh Calkins & Gabrielle Hammond

Want to Know More? The slides that follow have a lot of relevant statutory and case law.

Why Should Legal Aid Care About Trademarks and Domain Names? Legal aid trademarks are often your most valuable intellectual-property assets Marks help clients obtain your services Some entities may wish to capitalize on the desperation of the vulnerable by exploiting your marks Trademarks and brands distinguish your services Domain names are increasingly important in a connected world Search engines are often first-used referral sources

Domain Names: UDRP Process UDRP Process: Complaint filed with UDRP provider UDRP provider sends copy of complaint to domain-name registrar and to respondent Respondent files response within 20 days of commencement of proceeding Provider appoints a panel, which renders a decision within 14 days

Domain Names: UDRP Process UDRP Fees: WIPO $1,500 for one panelist (1-5 domains) National Arbitration Forum $1,300 for one panelist (1-2 domains) Asian Domain Name Dispute Resolution Centre $1,000 for one panelist (1-2 domains)

Domain Names: ACPA Remedies under the ACPA Cancellation or transfer of domain name to marks owner Defendants profits, actual damages, costs, and attorney fees Possible treble damages In lieu of actual damages, plaintiffs may elect for statutory damages of between $1,000 and $100,000 per domain name 15 U.S.C. § 1117(d).

Domain Names: ACPA In Rem Plaintiffs may bring ACPA suit even if the defendant cannot be found, by bringing an in rem suit against the domain name: If the domain name violates the rights of a registered marks owner If the court finds that the owner cannot obtain in personam jurisdiction over defendant, or through due diligence, owner was unable to find prospective defendant

Domain Names: ACPA In Rem Remedies for In Rem suits are limited to court orders for domains forfeiture or cancellation or domains transfer Money damages are not available. Accordingly, if you cannot find a prospective defendant, or if you cannot obtain jurisdiction over them, then it may be best to simply file a UDRP action remedies are the same.

Search Engine Results Search engines often combine several keywords (possibly including marks), sometimes called broad matching Other search engines require advertisers to purchase bundles of several keywords Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1023 (9th Cir. 2004).

Deceptive Keyword Advertising Can Coke buy ads for Pepsi searches? Similarly, may a for-profit site legally purchase keyword ads for legal aid? Or Pine Tree Legal? A French court has criticized Google for suggesting third-party marks as keywords Société des Hotels Meridien v. S.A.R.L. Google France, NRG 04/3772 (T.G.I. Nanterre, Dec. 16, 2004), available at

Search Engine Results: IIC Courts have held that diverting consumers through keyword searches may result in liability under the doctrine of Initial Interest Confusion (IIC) Professor McCarthy states that [i]nitial interest confusion can be viewed as a variation on the practice of bait and switch. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:26 (4th ed. 2003).

Search Engine Results: IIC The Ninth Circuit in Brookfield defined IIC as the use of anothers trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion. Brookfield Commcns, Inc. v. West Coast Entmt Corp., 174 F.3d 1036 (9th Cir. 1999).

Search Engine Results: IIC A recent district court criticized Brookfields analysis, holding Keyword advertising is a use in commerce, but Criticizing Brookfield, holding instead that use of keyword-triggered ads and metatags cannot confuse consumers if the ultimate search results do not display plaintiffs trademarks. J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No (E.D. Pa. Jan. 4, 2007).