Pattishall IP Blog

November 8, 2011

Trademark Protection in ICANN’s New Generic Top-Level Domain (“gTLD”) Space Will Require Diligence by Trademark Owners

Filed under: Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:21 pm

Categories: Internet
Tags: ICANN, Internet, Phillip Barengolts, David Beeman

By Phillip Barengolts and David Beeman, Trademark Attorneys[1]

ICANN is launching its new top-level domain (“TLD”) program this winter.  It will begin to accept applications from potential registries on January 12, 2012.  The new TLD program will allow qualified applicants – those able to pay $185,000 (not including infrastructure and other investments to actually run a registry)[2] and meet technical requirements – to establish top-level domain names under any letter and number combination.[3]  While it remains to be seen how many <.company> TLDs will appear given the cost, trademark owners potentially will now face a myriad examples of <infringing_domain_name.whatever> and even some examples of <whatever.infringing_TLD>.  Acknowledging this problem, ICANN announced mechanisms that trademark owners will be able to use to  protect their trademark rights in these new TLDs.  The mechanisms have not been finalized as of this writing, but this post provides a summary of these mechanisms as currently contemplated by ICANN, including a procedure for objecting to the proposed TLDs and protecting owners’ rights in second-level domain names.

Procedure for Objecting to Proposed Top-Level Domain Names

Trademark owners, and others, will be able to object to new TLD applications after ICANN publishes them for public review shortly after the application period closes on April 12, 2012.  ICANN will not be responsible for reviewing the TLD applications for objectionable letter and number combinations.

Four types of objections to new TLDs will be permitted:[4]  1) “existing legal rights,” e.g., ownership of a registered or unregistered trademark; 2)  string confusion (i.e., confusion between two applied-for TLDs); 3) limited public interest objection; and 4) community objection.  We are only discussing the existing legal rights objection.  For information on the other types of objections, see ICANN’s Guidebook.

An existing legal rights objection will have to be filed with the Arbitration and Mediation Center of the World Intellectual Property Organization (“WIPO”).  The rules for this type of objection recently approved by ICANN are available at http://www.icann.org/en/topics/new-gtlds/wipo-rules-clean-19sep11-en.pdf.[5]  The filing fee for a single objection to a single TLD application will be $2,000, and the additional fee for having one panelist hear the objection is $8,000.  For a panel of three, the filing fee will be $3,000, and the panel fee will be $20,000. (more…)

October 26, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Deadline for Sunrise Period for Blocking Registrations is October 28, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:56 am

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

[***Update - . XXX Domain Registry Has Received Over 42,000 Registrations – Deadline
for Sunrise Period for Blocking Registrations is October 28, 2011

ICM Registry, the registry handling .XXX top-level domain (“TLD”) registrations reported this week that it has received over 42,000 applications for .XXX domain names since the September 7, 2011 launch of the Sunrise Period “with thousands more pouring in each day.”  “We are very pleased, but not surprised, by this overwhelming response to the availability of .XXX domains,” said Stuart Lawley, CEO of ICM Registry.  The .XXX domain is intended solely for use by the “adult entertainment” industry.

ICM reported that the number of applications already received is over five times what ICM had anticipated.  ICM also reported that the applications have been “well balanced” between brand owners inside the adult industry and those non-adult brands that want to protect their trademarks.

Trademark owners outside the adult entertainment industry with registered trademarks have only until October 28, 2011 to take advantage of the sunrise period to file for a blocking registration that will prevent use of their trademarks in connection with pornographic uses.  If a trademark owner does not have a registered mark, or misses the deadline, it must wait until December 6, 2011 to file registrations to block others from using their marks in the .XXX domain.  See our August 18, 2011 blog post, below for details on the process.***] (more…)

October 4, 2011

The Ninth Circuit Finds that Re-registering a Domain Name Originally Registered Before a Trademark Owner Acquires Rights Does Not Constitute a Violation of the Anticybersquatting Protection Act

Filed under: Cybersquatting, Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:55 am

Categories:  Internet, Cybersquatting
Tags: Internet, ACPA, Cybersquatting,Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

In GoPets Ltd. v. Hise, __ F.3d __, Nos. 08-56110, 08-56114 (9th Cir. Sep. 22, 2011),[1] the Ninth Circuit had an opportunity to review the applicability of the Anticybersquatting Protection Act (ACPA) to re-registration of a domain name in connection with the business activities of domainers.[2]  The case serves as a lesson to start-ups, brand owners, domainers, and their attorneys about how to handle disputes over domain names that acquire value because of a use arising after the original registration of the domain name.

Edward Hise registered the domain name <gopets.com> in 1999 with the alleged intent of providing a web portal regarding pets in connection with his cousin’s veterinary business.  Since then he and his brother Joseph decided to become domainers through their corporation Digital Overtures, which registered over 1300 domains during the aughts.

In 2004, GoPets Ltd., a Korean company, created a game called “GoPets” featuring virtual pets and obtained a trademark registration for GOPETS in the U.S. in 2006.  From 2004 – 2005 GoPets attempted to acquire the <gopets.com> domain name from Edward Hise, but he wouldn’t sell for the amounts proposed by GoPets – no more than $1,000.  Digital Overtures re-registered <gopets.com> in 2006.

GoPets then filed a complaint with the World Intellectual Property Organization (WIPO) under the Uniform Dispute Resolution Policy (UDRP).  It lost because the WIPO arbitrator found that the UDRP required the transfer of a domain name only “if the name was initially registered in bad faith.”  This decision resulted in GoPets ultimately offering $40,000 for the domain name.  Not only did the Hises reject this offer, they sent a letter to GoPets threatening., among other things, to use search engine optimization to drive traffic to <gopets.com> and away from GoPets’ official website located at <gopetslive.com>. (more…)

September 20, 2011

Florida Appellate Court Issues New Ruling on Jurisdiction Through Internet Contacts; Questions Zippo

Filed under: Internet, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:02 pm

Categories: Litigation, Internet
Tags: Internet, Jurisdiction, Phillip Barengolts

By Phillip Barengolts, Attorney

Frank Caiazzo reviewed a Revolver[1] album cover allegedly signed by all four Beatles and decided that the signatures were a forgery.  This cost the American Royal Arts Corp. (“ARA”) a nearly $15k sale.  ARA sued under Florida’s Deceptive and Unfair Trade Practices Act, unfair competition statute, and also claimed defamation.  Caiazzo moved to dismiss all claims for lack of personal jurisdiction, among other reasons.  He lost in the lower court, which found both specific and general jurisdiction over Caiazzo, in part, because of his website.  He appealed.  The Fourth District Court of Appeal of the State of Florida affirmed, but only as to specific jurisdiction.[2]  Most significantly for practitioners and businesses assessing the potential to be hailed into court in far away places because of their websites, the Florida court rejected the oft-used Zippo test for determining jurisdiction in connection with a website. [3]

This court, however, found the test flawed and rejected its adoption in Florida.  First, it described the Internet as “essentially a medium for communication and interaction, much like the telephone and the mail.”[4]  It then identified the Zippo test as a “talismanic jurisdictional formula,”[5] which the Supreme Court has forbidden in jurisdictional analysis.  Finally, it quoted favorably a 2004 federal court decision noting that a rigid adherence to Zippo could lead to erroneous results because “even a passive website may support a finding of jurisdiction if the defendant used the website to intentionally harm the plaintiff” and “an interactive… website may not be sufficient to support jurisdiction if it is not aimed at residents in the forum state.”[6]  Furthermore, there must still be a nexus between even the most interactive website and the cause of action alleged.  The court did, however, note that a Zippo analysis could form a part of the overall minimum contacts analysis. (more…)

August 26, 2011

Trademark Protection in the New Generic Top-Level Domain (“gTLD”) Space ICANN Will Unveil on January 12, 2012, Will Require Diligence by Trademark Owners

Filed under: Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:49 pm

Categories: Internet
Tags: ICANN, Internet, Phillip Barengolts, David Beeman

By Phillip Barengolts and David Beeman, Trademark Attorneys

ICANN is launching its new top-level domain (“TLD”) program this winter.  The new TLD program will allow qualified applicants – those able to pay $185,000 (not including infrastructure and other investments to actually run a registry) and meet technical requirements – to establish top-level domain names under any letter and number combination.  While it remains to be seen how many <.company> TLDs will appear given the cost, trademark owners potentially will now face a myriad examples of <infringing_domain_name.whatever> and even some examples of <whatever.infringing_TLD>.  Acknowledging this problem, ICANN announced mechanisms that trademark owners will be able to use to  protect their trademark rights in these new TLDs.  The mechanisms have not been finalized as of this writing, but this post provides a summary of these mechanisms as currently contemplated by ICANN, including a procedure for objecting to the proposed TLDs and protecting owners’ rights in second-level domain names.

Procedure for Objecting to Proposed Top-Level Domain Names

Trademark owners, and others, will be able to object to new TLD applications after ICANN publishes them for public review shortly after the application period closes on April 12, 2012.  ICANN will not be responsible for reviewing the TLD applications for objectionable letter and number combinations. (more…)

August 18, 2011

Protecting Your Company Brands Against Sexually Explicit and Pornographic .XXX Domain Names – Sunrise Registration Period for Trademark Owners Begins September 7, 2011

Filed under: Internet, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:15 pm

Categories: Trademark (General), Internet
Tags: Domain Names, Internet, ICANN, Belinda J. Scrimenti, Jasmine R. Davis

By Belinda J. Scrimenti and Jasmine Davis, Trademark Attorneys

Protecting your brand and trademarks from infringement and tarnishment by uses on pornographic and other unsavory websites just got more difficult.  As we reported in April, the Internet Corporation for Assigned Names and Numbers (ICANN) board approved the .XXX sponsored top-level domain (“sTLD”) name in March.  http://bit.ly/q0Cikk  The .XXX domain is intended solely for use by the “adult entertainment” industry, and officially launches on December 6, 2011.  The goal of the domain was to identify the websites as containing sexually explicit content – thus readily allowing adults to discover or avoid such sites, and to control access by children.

The new .XXX domain, however, only leads to greater enforcement problems.  As the existence of the new domain is likely to increase the volume of sites associated with adult content, brand owners must now be concerned that others could use their trademarks to attract audiences to unrelated pornographic sites.  Therefore, to protect the vast majority of brand owners which are not in the adult entertainment industry, but which face the risk of use of their marks in new .XXX domains, ICANN has developed rules allowing such trademark holders to “block” registered marks from the .XXX domain. (more…)

July 12, 2011

A Website Providing File-Hosting or “Cyberlocker” Services to Internet Users Wins Dismissal of Disney’s Direct Copyright Infringement Claim, but Disney’s Claim for Secondary Copyright Infringement Through Hotfile Users’ Copying and Distribution of Copyrighted Material Survives

Filed under: Copyright, Internet — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 6:29 pm

Categories: Copyright, Internet
Tags: Copyright Infringement, Internet, Secondary Liability, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Hotfile hosts files uploaded by its users.[1]  A user receives a unique link to each of his files hosted by Hotfile, so the user can access a file from anywhere with an Internet connection.  The user also can share the link to his file with others.  And that is all you probably need to know about Hotfile to understand the basis for the Motion Picture Association of America’s suit for copyright infringement, styled Disney Enterprises, Inc. v. Hotfile Corp., 1:11-cv-20427 (M.D. Fla. July 8, 2011).[2]  You can learn much more about Disney’s allegations regarding Hotfile’s business model, including its creative money generating scheme of subscribers and third-party affiliates, in the opinion by the United States District Court for the Southern District of Florida on Hotfile’s motion to dismiss both direct and secondary copyright infringement claims.

Disney alleged direct copyright infringement, as well as secondary liability under theories of inducing infringement, contributory infringement and vicarious infringement.  Hotfile moved to dismiss on the ground that it could not be liable for direct copyright infringement because it has no control over the files that a user chooses to upload to Hotfile’s servers. (more…)

July 8, 2011

Copying a Photograph Openly Available Over the Internet Constitutes Copyright Infringement, Despite Attempted Fair Use Defense by Appropriation Artist

Filed under: Copyright, Internet — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 5:08 pm

Categories: Copyright, Internet
Tags: Copyright Infringement, Internet, Photograph, Fair Use, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

In 1985, Glen E. Friedman took a photograph of Run DMC, a then famous and now iconic rap group, standing shoulder-to-shoulder and wearing black Stetson hats (the “Friedman Photograph”).  The photograph itself became relatively famous.  Friedman published the photograph in a not-so-family-friendly titled book F**k You Heroes, and in 2003 obtained a copyright registration for the photograph.  Thierry Guetta, an appropriation artist[1] known as Mr. Brainwash,[2] found the Photograph on the Internet and, by his own admission, used a digital image of the Friedman Photograph in the creation of his own works.  Friedman sued Guetta.[3]

On cross-motions for summary judgment, the Court for the Central District of California found that Guetta’s works infringed the Friedman Photograph.  Friedman v. Guetta, 2:10-cv-00014 (C.D. Cal. May 27, 2011).[4]  The Court denied Guetta’s motion, which was based upon an argument that the works were not substantially similar in their original aspects and the fair use defense.  (more…)

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