DMCA Safe Harbor Registration Deadline Is Fast Approaching

picture of letters DMCA on deck to accompany post about DMCA digital safe harbor registration
57854715 – the acronym “dmca” is lined with gold letters on wooden planks. 3d illustration image

Do you want to be held responsible for other people’s intellectual property missteps? No? Then register for the DMCA Safe Harbor program at dmca.copyright.gov by December 31, 2016. People who previously registered by mail must re-register using the online system. Need help? Contact Kelly / Warner.

Mandatory Online Registration For DMCA Safe Harbor Program

The U.S. Copyright Office changed the DMCA agent registration process. Previously, online service providers could mail in their registration requirements. Not anymore.

By December 31, 2016, all parties wishing to maintain their safe harbor status must register using the online system at dmca.copyright.gov (link doesn’t go live until Dec. 1, 2016).

The DMCA Safe Harbor Provision

The Digital Millennium Copyright Act (DMCA) governs online intellectual property in the United States. Section 512(c), commonly known as the “Safe Harbor” program, outlines how ISPs can protect themselves from third-party intellectual property liability.

To put it another way, the DMCA Safe Harbor program is why authorities don’t punish Google when *John Doe* posts a pirated film on YouTube.

DMCA Designated Agents

The DMCA Safe Harbor program isn’t an automatic protection bestowed on all websites. To qualify, every three years, ISPs must formally designate and register an agent — typically an attorney — who acts as the receiver for all site-specific intellectual property notifications and takedown requests.

What happens if you don’t register a DMCA agent? Authorities could hold you responsible for users’ intellectual property foibles. So, if you’re an OSP, and you don’t want to pay the price for users’ actions, register for the DMCA Safe Harbor program.

Dietary Supplement Law: Court Says Re-seller Is Counterfeiter

dietary supplement law
A recent dietary supplement law conflict will likely affect similar cases in the future.

Dietary supplement counterfeit claim news: A judge awarded 5-Hour Energy — an over-the-counter drink sold at Walgreens or CVS — over $20 million dollars after third-party distributors took liberties with the brand’s labeling.

Anyone involved in the sale or marketing of supplements should take 3 minutes to read about this case. It’s serves as a reminder that hyper-aggressive sales tactics can decimate profits.

Dietary Supplement Law: Counterfeit Dispute

5-Hour Energy usually reaches store shelves through re-sellers and third-party marketers. The lawsuit we’re about to discuss involved one such deal that went awry.

In 2009, Living Essentials granted a small California business the exclusive distribution rights for Mexico. New packaging and labels tailored to Spanish-speaking consumers — plus discounted stock options — were all part of the deal.

What went wrong?

Well, according to Living Essentials, the pair initiated a scam that involved:

  • Selling the Spanish-labeled products at higher prices than the English-labeled products, in the United States instead of Mexico;
  • Selling its supply to U.S. distributors who replaced the 5-Hour Energy label with their own brands’ labels.

Did The Distributor Break A Contract By Reselling Products?

Living Essentials (LE) felt their Mexico distribution partners were violating parts of the Lanham Act. As far as LE saw it, the defendants knowingly produced fake goods at Living Essentials’ expense.  The defendants, conversely, insisted that they operated within the contract’s bounds.

And it’s with those viewpoints that the two parties embarked down Lawsuit Lane.

Now, as far as dietary supplements go, 5-Hour Energy is a huge player, so the legal battle fell into the “high-profile” category. And we all know what high profile lawsuits look like: protracted, nuanced and teeming with motions. This particular case lasted four years and involved fastidious vendor investigations, counterfeit-related court orders, and jurisdictional changes; plus, the defendants clawed deep during appeals, involving over 70 different entities.

Court Makes Dietary Supplement Law Ruling: Distributor Didn’t Have Resell Rights

Ultimately, the plaintiffs, Living Essentials, won this dietary supplement counterfeit case. In a 94-page opinion, the court explained how the defendants violated the Lanham Act by running a private label side business that contravened the original distribution contract. Interestingly, the Court also laid blame at the feet of a convenience store that sold the re-branded products and ordered it to pay part of the damages.

Dealing With Dietary Supplement Law Issues?

Our firm helps private label sellers and marketers with dietary supplement law issues. We answer questions, write contracts, help clients defend themselves against FTC investigations, represent counterfeit victims, and sort out listing hijackings.

To put it simply: We resolve issues that plague online marketers and sellers.

To learn more about our firm, head here. Ready to consult? Head here.

Time To Rethink Your Trade Secret Strategy? Legislation is Looming.

trade secret law change

Are you trade secret reliant? If yes, take two minutes to read this post. Why? Well, federal Representatives OK’d a bill that, if fully passed, may impact your intellectual property protection strategy.

Summary of Proposed Trade Secret Law: Addition Of Federal Jurisdiction Privileges

Dubbed the Defend Trade Secrets Act (DTSA), it’s been described as the “most significant expansion of federal law in intellectual property since the Lanham Act in 1946.”

Currently, trade secret governance is a state issue. If, however, DTSA becomes law, certain people could file trade secret claims in federal court. To qualify, potential plaintiffs would have to supply “evidence of actual or threatened misappropriation before a court [could] issue an injunction to prevent it.”

Join or Die! The Supporters Are Saying…

Why alter trade secret standards? The argument goes like this:

  • Back in the day, trade secret disputes were “largely a local matter.” Typical cases involved a departing employee smuggling confidential customer lists to their new job…down the street.
  • Enter the Internet. Many a tech fortune was built on the back of a trade secret (i.e., Google’s infamous algorithm). Or, to put it in cash-money terms: Trade secrets represent trillions of publicly traded dollars!

On account of their exalted economic position, people feel that federal courts are best equipped to handle complex, high-dollar trade secret claims.

Objection! The Opposition’s Standpoint…

Not everyone is cheering for this new trade secret law. Opponents say the measure is superfluous. States, they argue, are well-equipped to handle all manners of trade secret claims. Also, DTSA detractors think the bill’s wording — specifically the phrase “extraordinary circumstances” — is too vague.

Pundits portend a trade secret litigation spike if  politicians pass the law.

Speak With A Trade Secret Lawyer

Trade secrets play a giant role in today’s tech industry. Formulas, algorithms and calculations are at the heart of many startups and established firms.

Our team has successfully handled all manners of trade secret-related situations. A lawsuit isn’t always necessary to remedy a misappropriation. Get in touch today to start reviewing potential solutions.

Article Sources

Gershman, J. (2016, April 27). Congress May Be About to Shake Up Trade Secret Law: Is That a Good Thing? Retrieved June 17, 2016, from http://blogs.wsj.com/law/2016/04/27/congress-may-be-about-to-shake-up-trade-secret-law-is-that-a-good-thing/

New Alibaba Counterfeit Crew Hopes To Curtail Phony Products Problem

Alibaba counterfeit crackdown
Alibaba Counterfeit Crackdown

Is counterfeit activity on Alibaba.com about to diminish? Alibaba hopes so.

Headquartered in China, Alibaba.com is an online souq of product sourcing, selling, and negotiating – and it’s an essential cog in many e-commerce operations.

Recently, Alibaba announced plans to fatten its fraud department. Perhaps to keep U.S. officials at bay? Probably.
Alibaba announced plans to fatten its fraud department.

Alibaba’s Piracy Past

In 1999, Jack Ma had an idea: connect Chinese manufacturers with overseas buyers – online. And abracadabra, Alibaba.com was born. By 2012, financial analysts were valuing the company at about $150 billion.

But everything wasn’t red dragons and lucky koi. Though profitable, Alibaba was also morphing into a piracy bazaar.

The counterfeit crisis reached critical mass in the late noughties when U.S. trade officials granted Alibaba and its eBay-esque component, Taobao Marketplace, a spot on the “Notorious Markets” list.

Legitimizing Alibaba

About ten years ago, Alibaba kicked some pirates off the ship, so officials scrubbed the company from a blacklist.

Now a seasoned, publicly traded Wall Street player, today’s Alibaba is a far cry from its earliest iterations.

Sure, Alibaba’s stock fluctuated in 2015, but pundits aren’t surprised, predicting that Alibaba – like Google, Facebook, Amazon, and eBay – is still a formidable online business force.

Why Are U.S. Officials Once Again On Alibaba’s Case? And, What Is Alibaba Doing About It?

Perhaps at the behest of the MPAA and RIAA, some U.S. lawmakers are apoplectic about piracy. For years, they’ve tried to lard federal law books with draconian, outdated intellectual property statutes. It’s yet to work; but not for lack of effort – nor lobbying dollars.

The Government’s Online Piracy Blacklist

To buoy anti-piracy efforts, in 2006, the Office of the United States Trade Representative (USTR) created an official “naughty pirate” list. Called the Notorious Markets Blacklist, the report adumbrates communities – both online and off – where *pirates* congregate and flourish — and being listed can lead to financial hardship.

The USTR is throwing a skeptical side-eye towards Alibaba and threatening to pin a scarlet “P” on the company.

In fact, Alibaba once held a sport on the Notorious Markets Blacklist, but redeemed itself in time for a 2014 IPO. However, the USTR is once again throwing a skeptical side-eye towards Alibaba and threatening to pin a scarlet “P” on the company. Presumably in response, Alibaba executives hired 200 new employees – including a department head honcho – to slash and burn Alibaba counterfeit problem accounts.

Got Alibaba Counterfeit Problems? Speak To An e-Commerce Lawyer

Do you need to speak with an e-commerce attorney? The top-rated lawyers at Kelly / Warner have helped hundreds of entrepreneurs overcome legal challenges. We craft fresh solutions to common problems and help keep our clients on top.

Our private label lawyers can answer Alibaba counterfeit questions and help solve issues related to:

  • Trademark, patent or copyright;
  • Piggybacking or hijacking;
  • Account suspensions and reinstatements;
  • Forming and e-Commerce or Internet business;
  • FTC marketing compliance;
  • Telemarketing and SPAM restrictions;
  • Importing and exporting legalities; or
  • Anything that has to do with marketing, selling or promoting products or services.

We’re a phone call or message away. Hope to talk soon.

Article Sources

Davis, K. (2015, December 29). Alibaba Hires Hundreds To Combat Counterfeit Products In The Face Of Blacklist Threat. Retrieved February 08, 2016, from http://www.fastcompany.com/3055011/fast-feed/in-face-of-blacklist-threat-alibaba-hires-hundreds-to-combat-counterfeit-products

R. (2015, December 21). Alibaba names new head of anti-counterfeiting, IP unit. Retrieved February 08, 2016, from http://www.businessinsider.com/r-alibaba-names-new-head-of-anti-counterfeiting-ip-unit-2015-12

Cybersquatting Law: Must Prove Bad Faith Intent To Profit

cybersquatting laws and lawyer
Judge declares cybersquatting laws case as “one of the bad ones.”

Judge Lewis Kaplan hammered his gavel on the cybersquatting scrum between programmer Jason Kneen and OfficeLinks.com executive Harsh Mehta. In tennis speak: “Advantage, Kneen.”

A Quick Background Summary of the Mehta v. Kneen Cybersquatting Laws Case

  • Kneen, a U.K.-based programmer, bought workbetter.com in 1999.
  • In the not too distant past, Harsh Mehta, an office sharing startup co-founder, bought workbetter.us to market his service.
  • In April 2014, Mehta approached Kneen about buying workbetter.com; he offered $500; Kneen ultimately refused and declined to sell his domain.
  • Sometime around the failed domain sale, Mehta initiated the USPTO trademark application process for “Work Better.”
  • Shortly after Mehta started the official process, according to Mehta, one of his “over-zealous” employees allegedly tried to get workbetter.com at the registration level. Twitter apologies were offered and accepted over the incident. At that point, most people assumed the workbetter.com domain battle was over.
  • But then Mehta filed a cybersquatting lawsuit against Kneen over the desired domain.

Tech industry pundits buzzed about this cybersquatting laws case (including yours truly) — probably because it was possible for people to appreciate both parties’ arguments.

Judge on Mehta v. Kneen Cybersquatting Lawsuit: “This is a really bad one.”

Unlike us in the peanut gallery, Judge Lewis Kaplan saw no ambiguity. “However you slice it, there are good cybersquatting cases and there are bad ones. And this is really one of the bad ones,” Kaplan stated in his ruling. He went on to explain his position:

The balance of hardships in my view, if it cuts in any direction cuts in favor of Mr. Kneen because an injunction could threaten to interfere with a perfectly lawful and appropriate course of business in which he’s been engaged since 1999, all at the behest of somebody who appears to have a — who quite obviously just went out and registered a mark that he undoubtedly knew was nearly identical to the domain name registered and used by the plaintiff for many years for perfectly legitimate reasons.

Plaintiff Didn’t Prove “Bad Faith Intent To Profit”

Mehta alegedly knew that Kneen owned workbetter.com but tried to register the mark anyway. For his part, Kneen had not – and at the time of this writing has not – violated any regulations in relation to the domain. As such, according to current U.S. intellectual property standards, in theory and praxis, Kneen isn’t doing anything wrong.

To put another way: if a URL is not being used to parasitically profit off another brand’s mark, owning a dormant URL is not necessarily a violation of trademark law.

If a URL is not being used to parasitically profit off another brand’s mark, owning a dormant URL is not necessarily a violation of trademark law.

To Win A Cybersquatting Lawsuit, Plaintiffs Must…

To win an online copyright or trademark lawsuit, plaintiffs typically must prove, at the very least, that the defendants:

  • Were using their marks – or ones confusingly similar;
  • Profited from the use of the contested marks; and
  • Acted in bad faith.

Owning A Domain For A Long Time Worked In Favor of The Defendant (This Time)

Since Kneen owned the URL long before Mehta had an interest in it, under sui generis circumstances, the judge ruled that Kneen did not act in bad faith by refusing to sell the domain. Moreover, in this case, the court reasoned that any future sale of the domain would fail to contravene Mehta’s trademark since Kneen bought it almost a decade before Office Space Solutions came into existence.

Speak With Someone Who Understands Cybersquatting Laws

Cybersquatting laws are nuanced. A top AV-rated Internet law firm, Kelly Warner attorneys are exceptionally well versed in domain disputes and other online intellectual property legalities. Our cybersquatting law attorneys:

  • Help clients secure, register and defend trademarks and copyrights – both online and off;
  • Settle domain disputes;
  • Work with clients on UDRP petitions;
  • Act as both plaintiff and defense counsel for intellectual property litigation; and
  • Conduct research for startups and established businesses.

Get in touch. We’ll do our best to change your mind about lawyers and help protect your intellectual property – online and off.

Cybersquatting Case Law: Warehousing Domains

cybersquatting cases
Cybersquatting Cases: OfficeLinks v. Kneen

Enterprising Programmer Buys Domain In The 1990s; Startup Wants It In 2014.

Sixteen years ago, a London-based programmer, Jason Kneen, purchased the domain workbetter.com.

Fast forward to 2014. According to reports, Kneen is contacted by Harsh Mehta, the entrepreneur behind OfficeLinks, who wants to buy workbetter.com. To promote his company, Mehta had already bought workbetter.us and was looking to obtain the higher-profile workbetter.com. The OfficeLinks co-founder offered Kneen $500, but for various reasons, the programmer ultimately turned down the deal.

After negotiations had fallen through, in April 2014, Mehta filed an intent-to-use trademark application for the phrase “Work Better.” Then, in June, Kneen caught wind that someone was trying to do a domain transfer on the URL. Turns out the would-be domain interloper was, as Mehta would later explain, one of his “over-zealous” employees. Whatever the case, at the time, Mehta and Kneen appeared to have “made up” on social media.

Startup Files Cybersquatting Lawsuit Over “Warehoused” Domains

But later in the same month, DomainNameWire contacted Kneen, which is allegedly how he found out about that OfficeLinks was suing him for cybersquatting in a New York Federal Court. According to reports, as a result of the lawsuit, Kneen’s domain name provider locked the URL during proceedings – presumably until the legal matter resolved.

In a public statement, Mehta explained his position thusly:

“This is a dispute between a company that is trying to protect its trademark, and make genuine use of it, and an ideology that entitles individuals (and businesses, including Jason Kneen’s) to hijack existing and prospective trademark registrations for $18/year.”

Interesting Case; Tough Call

This domain dispute is worth following for a couple of reasons.

  • Both parties are fairly well-known in the tech and startup communities.
  • It’s easy to see both parties’ points.

As John Biggs on Tech Crunch eloquently explains:

At this point, on July 3, the domain is still in limbo with Kneen refusing to sell and Mehta’s lawsuit hanging over Kneen. The unfortunate thing about the case is that both parties are Internet natives and, Mehta especially, part of the startup ecosystem. While cybersquatting situations are frustrating, this is not the case of someone trying to grab Sony.com in the early days of the Internet. Kneen decided he didn’t want to sell and Mehta, in short, is using the legal system to ensure an outcome beneficial to himself.

Got Questions About Cybersquatting Cases? Consult A Domain Dispute Lawyer.

Kelly Warner is an Internet law firm that has successfully handled dozens of domain disputes and cybersquatting lawsuits. A top AV-rated firm, our attorneys enjoy a high success rate. To read more about cybersquatting case studies, head here. To learn more about Kelly / Warner’s Internet law practice, click here. If you’re ready to schedule a consultation, please head here.

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Kelly Warner’s domain dispute lawyers have successfully handled all manners of cybersquatting cases. Our experience with these types of cases means we’re aware of all the proverbial trap doors and potential sink holes. We also understand how to best leverage the law on behalf of our clients’ interests.
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Legal Lessons 101: Can I Get An Injunction?

get an injunction lawyer
Just how difficult is it to get an injunction?

Business competition can get ugly. And occasionally, aggressive opponents may cross legal lines when elbowing their way to #1. Our law firm works  with startups, entrepreneurs and businesses who face egregious acts of disruptive marketing, and they all ask: “Can I get an injunction against [insert name of competitor]?”

So, due to popular demand, let’s review a few “injunction law” basics. If you still have questions when we’re done, get in touch.

Real Talk: Injunctions Are Tough To Get

Before you start the injunction process, it’s important to understand one major thing: injunctions are tough to get. Why? Simply Stated: Because free speech and fair competition are two philosophical cornerstones of the U.S. marketplace. Courts are exceptionally cautious about dolling out injunctions that could impede another party’s First Amendment rights or free market ambitions.

What You Must Prove To Get An Injunction

injunction lawyer
Injunctions are as difficult to get as VIP tickets to a high-profile premier.

You may be thinking: “What must I prove to successfully motion for an injunction?”

Like most legal questions, the answer isn’t simple – because litigation strategies are largely dependent on the details. That said, we’ve outlined some “ballpark” parameters regarding the acquisition of either a temporary or permanent injunction related to unfair competition, defamation or disruptive marketing that crosses the legal line.

#1: Ongoing Damage

To get an injunction to remove content from the Internet, the requesting party must convince a judge that letting the content stay will cause ongoing damage, at the hands of another party, who is acting contrary to laws or regulations.

injunction law attorney
To win an injunction, the petitioning party must demonstrate a likelihood of lawsuit success.

#2: Probability of Success

As stated above, judges don’t hand out orders willy-nilly. Instead, to get an injunction, judges must be convinced that, based on statutes and case law, you will most likely win the lawsuit associated with the request.

#3: Keeping the Information Published Will Cause Great Harm “In the Absence of Preliminary Relief”

If a published statement is likely to cause long term harm if not quickly removed, the statement may be a candidate for an injunction action (if the other tests are also met). To win this point, plaintiffs must demonstrate how the statement will cause actionable harm and why temporal concerns are likely to exacerbate said harm.

#4: The Public’s Interest Is Best Served by Granting an Injunction

Philosophically speaking, laws are meant to protect citizens’ interests. So, for a court or judge to grant an injunction, the potentially impending harm must be detrimental to the public’s best interest in some capacity.

Questions? Speak With An Unfair Competition Lawyer About Your Chances Of Securing An Injunction

Do you have more questions about how to get an injunction? If yes, contact the online reputation and removal lawyers at Kelly Warner. We’ll review the details of your situation and provide potential solutions.

Contact us today to begin the conversation.

Internet Law Case: Android App Developer Lawsuit Example

Below is a summary of an app developer v. app developer lawsuit. Anyone interested in tech lawsuits will find it informative. If you’ve landed here in search of an app developer lawyer, head here.

App developer lawsuit and lawyer

APUS Group is an app development startup. Cheetah Mobile Inc. is an established app development firm. The two companies are going head-to-head in a legal battle. Why? Because they’re pushing similar products, and aggressive marketing may have morphed into illegal, unfair competition.

Why is one App Company Suing Another App Company?

Cheetah Mobile Inc. (“Cheetah”) and APUS Group (“APUS”) have competing apps, Clean Master and Launcher respectively. Both are “optimizer” apps that improve device functionality.

Cheetah launched this app developer lawsuit against APUS because the latter believes the former committed intellectual property infringement and an egregious act of defamation by telling users that Clean Master is “stealing your data.”

Press Release Informs Defendants of App Developer Lawsuit

Cheetah announced the suit with a splashy press release. Apparently, APUS may have learned of the lawsuit along with the rest of us, via the press release.

International App Developer Using U.S. Courts For Unfair Competition Grievances; Is It A Smart Move?

Somewhat curiously, Cheetah filed this app developer lawsuit in a California court. Why California? Speculation is that:

  • Higher U.S. litigation costs may encourage APUS to settle out of court;
  • If Cheetah wins in a U.S. court, the possible award damages, for the cited claims, are higher in the U.S. than China;

Justifying a Jurisdiction

How did Cheetah justify filing in a U.S. court? Since the Google Play store distributes APUS’ Launcher in California, California residents are affected by the alleged violations.

Sure, it’s a valid argument, technically, but tenuous. It wouldn’t be surprising if the plaintiff first moves for a change in venue.

App Developer Claims Unfair Competition Kitchen Sink

Cheetah’s list of claims was longer than a theme park line. The tech firm sued its competitor for:

  • Defamation,
  • Trade libel,
  • Copyright infringement,
  • Federal and State trademark dilution,
  • False advertising,
  • Unfair competition,
  • Intentional interference with prospective economic advantage, and
  • Intentional interference with contracts.

Time will tell if this app developer v. app developer lawsuit proves to be a brilliant stroke of strategy or an misstep.

Kelly / Warner is a tech law firm that works with developers. Contact us with any questions related to app development law.

Source

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Cybersquatting Cases and Lawyer Contact

cybersquatting cases
Cybersquatting Cases Round Up

You can’t hold famous domains hostage for cash. That get-rich-quick scheme left the station in 1999 when Congress “yea’d” the Anticybersquatting Consumer Protection Act into law.

Below are two summaries of recent cybersquatting cases. If you’re ready to speak with a domain dispute lawyer, go here.

Wiz Khalifa Won A Cybersquatting Lawsuit

Domain marketer Anthony Lynch recently found himself in a legal tangle with Cameron Thomaz – a.k.a., Wiz Khalifa. Lynch scooped up eight domain names featuring the rapper’s trademarks.

Since Khalifa’s claim was straightforward, only one UDRP panelist sat for the case, who ruled in favor of the musician. Why? Because Khalifa used and registered the trademarks before Lynch purchased the domain names. The panelist also pontificated that Lynch probably bought the URLS with the “express intention to target” Wiz Khalifa.

The final verdict: all eight domains need to be transferred back to Wiz Khalifa’s company, at no cost to him.

Case: Thomaz et al v. Lynch, No. D2015-0166

Amazon.com and Kellogg: High Profile Cybersquatting Cases

Amazon.com and Kellogg Inc. can both add cybersquatting lawsuit victor to their virtual trophy cases.

After a protracted dispute, the Internet’s largest online retailer won back amazonprom.com, amazonpromdresses.com and amazondresses.org. The panelists ultimately ruled in favor of Amazon because the defendant lacked a legitimate interest in domains that included Amazon’s trademark.

All you cereal enthusiasts out there, you’ll be happy to learn that Kellogg’s won back kelloggs.buzz – for the same reasons Amazon won.

“Bad Faith Intent to Profit”

Both parties won their cybersquatting claims because the defendant demonstrated a “bad faith intent to profit”. Plus, the names under review were “confusingly similar” to trademarked brands.

Cybersquatting is still a big legal issue. Though federal officials passed the Anticybersquatting Consumer Protection Act, people still run typosquatting and cybersquatting schemes. But there are ways for trademark holders to regain control of their domains, without shelling out much money.

Speak To A Lawyer Who Has Dealt With Cybersquatting Cases

Kelly / Warner helps trademark holders regain control of domains. An Internet law firm with a cybersquatting law division, we know all the ins-and-outs to reclaim your domain promptly.

Contact us to take back your URL.

Source Article 1

Source Article 2

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Got Cybersquatting Questions?
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Cybersquatting Case Study: Academy of Motion Picture Arts and Sciences v. GoDaddy.com Inc.

cybersquatting case example
Did a court just make it easier to sue cybersquatters?

A U.S. court ruling paved the way for lawsuits against domain name registrars that offer “cash for parking” programs. The high-profile case, Academy of Motion Picture Arts and Sciences v. GoDaddy.com Inc., may have a profound effect on cybersquatting lawsuits from this point forward.

Background On The Oscar Cybersquatting Lawsuit

In 2013, the Academy of Motion Picture Arts and Sciences – or AMPAS (a.k.a., the people who give out Oscars) – filed a lawsuit against GoDaddy.com. The issue? AMPAS felt that GoDaddy – via its Paid Parking Program – was unfairly profiting off the Academy’s name.

Domain Marketer Bought Oscar-Related URLs

An enterprising domain marketer purchased several URLs that incorporated the “Oscar” trademark, including oscarliveblogging.com and Oscarlist.com. Instead of putting a website on the URLs, the marketer opted to take advantage of GoDaddy’s Cash Parking Program – a program that financially benefited both GoDaddy and the would-be cybersquatter.

As you may have already guessed, during Oscar season, the domain name entrepreneur made a cash killing via the ads that appeared on the sites.

AMPAS brass wasn’t impressed with someone profiting off its brand. So, the Academy decided to move forward with a cybersquatting lawsuit.

Violations of the Anticybersquatting Consumer protection Act

In 1995, U.S. Federal officials passed the Godfather of domain dispute laws. Entitled the Anticybersquatting Consumer Protection Act, the statute protects the domain names of trademark owners. Essentially, it illegalized the practice of buying another party’s trademarked domain with bad faith intent to profit. It’s the law that disallows you or me from, say, buying Nike.com and then holding it ransom for $1 billion (spoken in Dr. Evil’s voice, thank you very much!).

Why The Court Sided With AMPAS In The GoDaddy Cybersquatting Case

AMPAS’ lawsuit alleged that GoDaddy monetized 115 domains infringing on the Oscar trademark. After reviewing the facts of the case, the court rejected the registrar’s safe harbor defense because the law only shelters parties that don’t profit – in any way – from the infringing URL of a customer. Since GoDaddy made money off the cybersquatter via advertising, the safe harbor argument didn’t work.

Other Legal Remedies for Trademark Domain Disputes

Lawsuits aren’t the only remedy for domain disputes. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an international ICANN program where trademark holders, with URL grievances, can petition to regain control of disputed domains. What is the drawback of UDRP rulings? They’re nonbinding.

In the event that a UDRP ruling does not land in petitioners’ favors, they can pursue lawsuits claiming violations of section 43(d) the Lanham Act (15 U.S.C. $ 1125(d)).

Speak with An Internet Trademark Attorney

Kelly / Warner Law helps hundreds of businesses and trademark holders with various types of domain disputes – from resolving cybersquatting issues to simple registration needs. A top-rated legal practice, Kelly / Warner maintains a 10-out-of-10 rating with venerated lawyer review group, Martindale-Hubbell. To learn more about our online intellectual property practice, click here. To speak with a domain dispute lawyer, get in touch. We can remedy your issue quickly, and at a competitive price.

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Cybersquatting Cases: Criminal Domain Seizure On The Rise

cybersquatting cases
Cybersquatting is on the rise across the country and around the world.

Cybersquatting cases are making a comeback! And this time around, the stakes are higher. Instead of holding domains ransom for a big pay day, today’s cybersquatters are using stolen domains for more nefarious means.

Is Cybersquatting Legal?

To set the record straight: cybersquatting is not legal. Back during the dawn of the Web, a class of enterprising early adopters and out-of-the-box thinkers made a killing by buying up, then selling back, trademarked and common phrase domains.

But corporations quickly called their representatives – and K Street connections – which resulted in the homologation of the Anti-cybersquatting Consumer Protection Act. An extension of the Lanham Act, and passed in 1999, the ACPA essentially extended trademark rights to domain names. To wit, it’s the bill that made nike.com the automatic property of Nike, Inc.

Why is there an uptick in the amount of cybersquatting cases in recent months?

Both the Internet Corporation for Assigned Names and Numbers (ICANN) and the FBI have noted an increase in criminal cybersquatting cases over the past two years.

Why?

For starters, over the last decade, the price of domain names has increased. As such, it’s not cost effective, for criminals, to purchase URLs. Couple that with the insatiable desire to deploy malware and other viruses – and you’ve got a perfect storm for malicious cybersquatting.

What are the new generation of cybersquatters doing with the stolen domains?

In the past, most cybersquatters were merely looking to make money. These days, many of them are looking to wreak havoc. Victims have reported acts of:

  • Ransom;
  • Domain reselling;
  • Portal manipulation;
  • Malware Distribution; and
  • PPC Schemes.

Advanced cybersquatters are also hijacking domains and re-routing URLS to china, Russia, and Eastern Europe, where they are then used for nefarious financial transactions and other types of cyber criminality. There have even been reports that overseas “organized crime” organizations are hiring cybersquatters.

Authority Squabbles: Who Has Authority?

This new wave of cybersquatting may last quite some time. Why? Because nobody can agree on who is responsible for combating the problem. Law enforcement officials say that the Internet Company of Assigned Names and Numbers (ICANN) has the international authority to combat this type of cybersquatting, but ICANN disagrees. Basically, officials are playing a game of hot potato when it comes to enforcement.

Speak with a cybersquatting Attorney

Cybersquatting can take a huge toll on a business and cause considerable financial strain for attacked companies.

Kelly / Warner has successfully handled all manners of cybersquatting cases. As an Internet law firm, our attorneys are well versed in domain dispute law. To learn more about the firm, please go here. To set up a consultation, click here. To send a message, head here.

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Online Review Patient Contracts Are Unenforceable

dentist patient contract law
A popular dentist contract, which addressed online reviews, is now unenforceable.

ATTN DENTISTS: If you’re using a patient contract that asserts copyright ownership of online reviews, it’s time to get it updated. Why? Because judges have decided that those types of agreements are no longer enforceable.

Doctor and Dentist Patient Contract That Confer Copyrights of Online Reviews

In the not too distant past, and in an effort to curtail negative online reviews, many dentists used a patient contract with an online copyright clause. Essentially, patients signed away their copyrights to online reviews regarding the dentist’s performance – good or bad.

Why?

Because if someone posted a negative review, the dentist could simply submit a DMCA take down request to get the bad evaluation removed from the Web. Some contracts even included a clause asserting a fee for every day the negative review remained online.

Used To Work, But Judges Caught On, And Are Now Putting An End To It

Once patients clued in to the parameters of these “patient copyright contracts,” they rang the caveat emptor alarms. Quickly, and due to lawsuits, judges were able to weigh in on the validity of these contracts.

The Judges’ overwhelming verdicts? These types of patient contracts are not enforceable because, in the United States, you can’t preemptively extinguish someone’s free speech rights.

Patient: 1, Dentist: 0

Recently, a new York court heard a patient v. dentist online review case. Ultimately, the judge ruled that the contract – which claimed copyrights and forbade future negative reviews – was unconstitutional and unenforceable.

In the judge’s exact words:

“[Online copyright control contracts] constitute breaches of fiduciary duty and violations of dental ethics and are subject to the equitable defenses of unclean hands, and, as to such assignment and assertion, constitute copyright misuse.”

In this case, however, no money will likely exchange hands because three years ago the dentist involved vanished; never to be heard from again.

Speak With A Dentist Defamation Lawyer

Kelly / Warner Law works with both doctors and patients. We’ve helped medical professionals get negative reviews removed from the Internet, and we’ve also assisted patients who’ve been unfairly sued for online defamation over a less-than-glowing missives.

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To learn more about our online defamation practice, click here. If you’re ready to speak with one of our experienced lawyers with patient contract drafting experience, set up a consultation. Contact us.