Protecting Your Brand in CyberspacePresentation Transcript
Protecting Your Brand in Cyberspace
What’s At Stake
Search Accounts for Approx. 40% of Online Ad Dollars
US Search Revenue - $6.8BB
Global Search Revenue - $14BB (Source: IAB/PWC)
Search spending projected to grow 39% in 2007 (Source: Outsell)
Global search revenue projected to reach $37 billion by 2010 (Source: JP Morganl)
Search ROI (2005)
Advertisers increased search spending by 40%
Increased sales by 70%
Search Engine Keywords Use of Trademarks in Title
Competitors Using TM
Competitors Using TM
“ Use in Commerce”
For purposes of this Act, a mark shall be deemed to be
in use in commerce—
(1) on goods when . . . placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale…
(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce…
Is Bidding on Competitor’s Name a TM a use in commerce?
Likelihood of confusion among judges
Use in Commerce or Not? 2003 2005 2007 2006
Red States v. Green States
The key question is whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin. Here . . . the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff’s . . . trademark on any of its goods, or any advertisements or displays associated with the sale of its goods. Site Pro-Inc. v. Better Metal, LLC, No. 06-CV-6508 (ILG) (RER) (E.D. N.Y. 2007)
By establishing an opportunity to reach consumers via alleged purchase and/or use of a protected trademark, defendant has crossed the line from internal use to use in commerce under the Lanham Act. J.G. Wentworth, S.S.C. Ltd. P’ship v. Settlement Funding, LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. 2007)
Not Use in Commerce
1-800 Contacts Inc. v. WhenU.com Inc., (2nd Cir. 2005)
Merck & Co. v. Mediplan Health Consulting, No. SC10 3650 (S.D.N.Y. Mar. 30, 2006)
Rescuecom v. Google, 46 F. Supp.2d 393 (N.D.N.Y. 2006)
Site Pro-Inc. v. Better Metal, LLC, No. 06-CV-6508 (ILG) (RER) (E.D. N.Y. 2007)
U-Haul Int’l, Inc. v. WhenU.com, 279 F. Supp. 2d 273 (E.D. Va. 2003)
Wells Fargo * Co. v. WhenU.com, 293 F. Supp. 734 (E.D. Mich. 2003).
Use in Commerce
800-JR Cigar, Inc. v. GoTo.com, Inc., 2006 U.S. Dist. LEXIS 48279 (D.N.J. 2006)
Buying for the Home LLC v. Humble Abode LLC, 2006 U.S. Dist. LEXIS 76371 (D.N.J. 2006)
J.G. Wentworth, S.S.C. Ltd. P’ship v. Settlement Funding, LLC, 2007 U.S. Dist. LEXIS 288 (E.D. Pa. 2007)
GEICO v. Google, Inc., 330 F.Supp.2d 700 ((E.D. Va. 2004)
International Profit Associates Inc. v. Paisola, No. 06 C. 6154, (N.D. Ill., November 14, 2006)
Edina Realty, Inc. v. TheMLSonline.com (D. Minn. 2006)
Go ogle Inc. v. American Blind and Wallpaper Factory Inc., 74 U.S.P.Q.2d 1385 (N.D. Cal. 2005)
1125(a) Trademark Infringement
Any person who, on or in connection with any goods or services, . . . uses in commerce any word, term, name, symbol, or device, . . . or any false designation of origin, . . . which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person shall be liable in a civil action . . . .
Initial Interest Confusion
Trading on Goodwill “ Although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using ‘moviebuff.com’ or “MovieBuff’ to divert people looking for ‘MovieBuff’ to its web site, West Coast improperly benefits from the goodwill that Brookfield developed in its mark.”
Brookfield Communications, Inc. v. West Coast Entertainment Corp.174 F.3d 1036, 1062 (9th Cir. 1999)
Legally Significant Confusion? “ The [District] court’s refusal to enter the ‘initial interest confusion’ thicket is well taken given the unlikelihood of ‘legally significant’ confusion.”
Hasbro Inc. v. Clue Computing, Inc ., 232 F.3d 1, 2 (1st Cir. 2000)
Initial Interest Confusion (con’t)
Permanent Detour “ Suppose West Coast’s competitor (let’s call it “Blockbuster”) puts up a billboard on a highway reading—“West Coast Video: 2 miles ahead at Exit 7”— where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast’s store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there.” Brookfield Communications, Inc. v. West Coast Entertainment Corp.174 F.3d 1036, 1062 (9th Cir. 1999)
Merely a Lane Change Web surfers are accustomed to false starts and are unlikely to be dissuaded when they end up at the wrong site. Chatam Int'l v. Bodum, Inc. , 157 F.Supp.2d 549, 559 ED PA 2001)
American Blind & Wallpaper v. Google
The Court Refused to Dismiss
Follows prior initial confusion case law
“ Court concludes that resolution of the novel legal questions presented by this case should await the development of a full factual record.”
Hyperlink Law To hyperlink or not to hyperlink?
What’s At Stake
Protecting access to proprietary content
Ensuring monetization of traffic by requiring users to follow certain path
Hyperlink -- an element in an electronic document that links to another place in the same document or to an entirely different document. Typically, you click on the hyperlink to follow the link. Hyperlinks are the most essential ingredient of all hypertext systems, including the World Wide Web.
Deep Link -- A hyperlink either on a Web page or in the results of a search engine query to a page on a Web site other than the site’s home page. Typically, a Web site’s home page is the top page in the site’s hierarchy, and any page other than that is considered “deep.”
Thumbnail -- A miniature display of a page to be printed. Thumbnails enable you to see the layout of many pages on the screen at once. Generally, thumbnails are too small to show the actual text.
Sources: Webopedia, Wikipedia
Ticketmaster Corp. v. Tickets.com , 2000 U.S. Dist. Lexis 4553 (C.D. Ca., March 27, 2000) 2003 U.S. Dist. Lexis 6483 (C.D. CA., March 7, 2003)
Rejects per se rule
"hyperlinking [without framing] does not itself involve a violation of the Copyright Act ... since no copying is involved."
“ deep linking by itself (i.e. without confusion of source) does not necessarily involve unfair competition.“
Live Nation Motor Sports Inc. v. Robert Davis Civ. Act. No. 3:06-CV-276-L (N.D.Texas, December 12, 2006) Deep linking to permit users to access live webcasts “would likely qualify as a copied display or performance of SFX’s copyrightable material”.
Contributory Infringement & Disparaging Links
Intellectual Reserve, Inc. v. Utah Lighthouse Ministry, Inc ., 75 F. Supp. 2d 1290 (D. Utah, Dec. 6, 1999). Ordered defendants to remove listing of websites which posted materials infringing plaintiff’s copyright.
Ford Motor Company v. 2600 Enterprises , et al., 177 F. Supp. 2d 661 (E.D. Mich. 2001). Denies Ford Motor Company's motion for a preliminary injunction blocking www.f*ckgeneralmotors.com from redirecting users to Ford website.
Batesville Services, Inc., et al. v. Funeral Depot (S. D. Ind., November 10, 2004) – fact issue of whether use of thumbnails of plaintiff’s caskets constituted copyright infringement
Perfect 10, Inc. v. Amazon.com, Inc . (9th Cir. May 16, 2007)
Use of thumbnail images in search engine for purpose of enabling public to locate the full size image constitutes fair use as it is transformative in nature and serves a different purpose.
“ Google could be held contributorily liable if it had knowledge that infringing Perfect 10 images were available using its search engine, could take simple measures to prevent further damage to Perfect 10’s copyrighted works, and failed to take such step.”
Domain Name Scams
What’s At Stake
March 2005 – Nearly 43 million .com and net domain names registered.
Only 2.5 million names were deleted that same month.
In April of 2006, 35 million names registered.
Of those names 32.7 million were used again and again but never registered permanently!
Domain Name “Tasting”
Register and “taste” name for 5 days
Return domain names for full refund
Measure Traffic Through Pay Per Click Ads
Keep domain names that earn more than $6
New Domain Name Abuses
Domain Name Kiting
Registrars Taste, monetize domain names in Bulk and delete them
then, using an automated process, they automatically re-register them... again and again .
Domain Name Spying
Cybersquatters obtain information that a domain name is of interest to a consumer then register the domain name before the consumer can register them using an automated process
offer to sell the domain name
Coalition Against Domain Name Abuse (CADNA)
Several Large TM owners
ICANN working group(s)
Public Interest Registry
Restocking fee on .org domains
Counterfeiting on the Internet
What’s At Stake
Accounts for 10% on online commerce – approx $35BB
Beneficiaries include organized crime, terrorist groups (Source: Intl Chamber of Commerce)
US companies lose an average of 23 percent of potential sales due to trademark infringement and counterfeiting (Source: Intl Trademark Association)
Tiffany’s found that 95% of its products sold on eBay were counterfeit or grey market goods
Tiffany & Co.
wins $960,000 verdict and injunction against online seller of counterfeit goods
German court rules eBay must take measures to prevent recurrence of counterfeit Rolex postings
Civil Remedies Lanham Act/ Copyright Act
Criminal Remedies Trademark Counterfeiting Act
Intl Trade Commission Section 337 - Exclusion Order for infringing items
U.S. Customs – border seizure
What’s At Stake
Phishing cost consumers $7 billion over last two years (Source: Consumer Reports)
Each incident estimated to cost banks $100,000 to $150,000 (not including damage to good will)
(Source: Anti-Phishing Work Group)
Bulk E-mails to large groups of users
no specific target pre-identified
e.g., directing users to a falsified identification
Targeted contact with pre-identified victim
e.g., lure to visit website
Set trap and wait for victim
e.g., confusingly similar domain name
California Anti-Phishing Law--Cal. B&P Code Sec. 22948
"It shall be unlawful for any person, by means of a Web page, electronic mail message, or otherwise through use of the Internet, to solicit, request, or take any action to induce another person to provide identifying information by representing itself to be a business without the authority or approval of the business."
The Internet Law Center is a boutique firm with offices in Santa Monica, California and Washington, D.C. offering innovative legal and policy solutions for its clients. While, the Internet Law Center's focus is on helping businesses navigate the challenges of the new economy, it provides comprehensive solutions for entrepreneurial businesses both online and offline.
Bennet Kelley is a one of the nation’s leading Internet attorneys, having counseled clients, litigated, testified, lobbied, offered seminars and written commentaries on many of the hottest Internet issues over the past decade. Prior to founding the Internet Law Center, Bennet was Assistant General Counsel, Director of Governmental Affairs & Privacy for ValueClick and Vice President of Legal & Strategic Affairs for Hi-Speed Media. Bennet also is Co-Chair of the Legislative Subcommittee of the California Bar's Cyberspace Committee and a regular contributor to the Journal of Internet Law.
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