The document discusses various legal issues around protecting brands in cyberspace, including through search engine keywords, deep linking, and domain names. It notes the large revenue from search advertising and split court decisions on whether using competitors' trademarks as keywords constitutes trademark use. The text also examines legal cases around deep linking, thumbnails, and abusive practices like domain name kiting.

1. Protecting Your Brand in Cyberspace

2. Topics Covered Search Thumbnails Counterfeiting Domain Names Phishing The Brand Danger Zones

3. Keyword Searches

4. 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% $25.5BB (US) $60.0BB (Global)

5. Search Engine Keywords Use of Trademarks in Title

6. Competitors Using TM

7. Competitors Using TM

8. “ 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…

9. Is Bidding on Competitor’s Name a TM a use in commerce? Likelihood of confusion among judges

10. Use in Commerce or Not? 2003 2005 2007 2006

11. 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)

12. Split Decisions Not Use in Commerce Second Circuit 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) Fourth Circuit U-Haul Int’l, Inc. v. WhenU.com, 279 F. Supp. 2d 273 (E.D. Va. 2003) Seventh Circuit Wells Fargo * Co. v. WhenU.com, 293 F. Supp. 734 (E.D. Mich. 2003).

13. Split Decisions Use in Commerce Third Circuit 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) Fourth Circuit GEICO v. Google, Inc., 330 F.Supp.2d 700 ((E.D. Va. 2004) Seventh Circuit International Profit Associates Inc. v. Paisola, No. 06 C. 6154, (N.D. Ill., November 14, 2006) Eight Circuit Edina Realty, Inc. v. TheMLSonline.com (D. Minn. 2006) Ninth Circuit Go ogle Inc. v. American Blind and Wallpaper Factory Inc., 74 U.S.P.Q.2d 1385 (N.D. Cal. 2005)

14. 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 . . . .

15. 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)

16. 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)

17. American Blind & Wallpaper v. Google

18. 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.”

19. Hyperlink Law To hyperlink or not to hyperlink?

20. What’s At Stake Protecting access to proprietary content Ensuring monetization of traffic by requiring users to follow certain path

21. Linking Nomenclature 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

22. Deep Linking 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.“ Refused to grant summary judgment for defendant on contract claim for violating website terms of use since binding agreement can be formed by mere use of a web site if the user has actual knowledge of such terms 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”.

23. Contributory Infringement & Disparaging Links Contributory Infringement 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. Disparaging Links 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.

24. Thumbnails 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.”

25. Domain Name Scams

26. 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!

27. 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

28. 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

29. Political Response Coalition Against Domain Name Abuse (CADNA) Several Large TM owners ICANN working group(s) Public Interest Registry Restocking fee on .org domains

30. Counterfeiting on the Internet

31. 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

32. Attacking Counterfeiting Tiffany & Co. wins $960,000 verdict and injunction against online seller of counterfeit goods eBay Litigation Rolex German court rules eBay must take measures to prevent recurrence of counterfeit Rolex postings Pending Civil Remedies Lanham Act/ Copyright Act Injunctive relief Damages Forfeiture Criminal Remedies Trademark Counterfeiting Act Criminal penalties Forfeiture Administrative Remedies Intl Trade Commission Section 337 - Exclusion Order for infringing items U.S. Customs – border seizure

33. Phishing Scams

34. 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)

35. Phishing 101 Dragnet Bulk E-mails to large groups of users no specific target pre-identified e.g., directing users to a falsified identification Rod-and-Reel Targeted contact with pre-identified victim e.g., lure to visit website Lobsterpot Set trap and wait for victim e.g., confusingly similar domain name

36. Phishing Remedies 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."

37. Questions?

38. 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. About Us

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