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

Intellectual Property
Boston College Law School
April 1, 2009
Trademark – Domain Names
Trademark Infringement
• Causes of action
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Likelihood of confusion
Dilution
Cyber-squatting
False Advertising
Domain Name System
ICANN
Sites
ICANN
ICANN
Registrars
ICANN
ICANN
Countries
.com, .org, .net
.us, .uk, .jp
Sites
Sites
nike.com coke.com kodak.com
Sites
Sites
nike.uk
kodak.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 … •
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(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
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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
• 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
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Genericness
Functionality
Abandonment
Nominative Use
Parody
Murphy Door Bed v. Interior
Generic?
• Generic
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Thermos
Escalator
Trampoline
Cellophane
Nylon
Yo-Yo
Avoiding Genericide
Administrative
• Next Assignment
– Finish Trademark
Exam Details
• Test Details
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24-hour take-home exam
Freely schedulable during regular exam period
Open book
Strict word limits
Past exams on course web page