Use of Trademarks and Service Marks on the Internet · Binder v. Disability Group (CD Cal. 2011) --...

Copyright © 2011 Brooks Kushman P.C.

Use of Trademarks and Service Marks on the Internet

Mark S. SparschuBrooks Kushman P.C.


Topics

• Domain Name Disputes• “Classic” Infringement• Keyword Advertising

• Online Marketplaces

• “Linking” and “Framing”• Trademarks in Social Media


Domain Names

• What is a domain name?– In www.apple.com, “apple.com” is the

domain name

• Many top-level domains in which domain names can be registered– Generic top-level domains: “.com”, “.net”– Country-code top-level domains: “.us”,

“.co.uk”, “.com.au”


Domain Names

• Unlike trademarks, where the same mark can coexist in the names of different owners for different goods, there is only one “apple.com”– therefore, a possibility of dispute

• Cybersquatters are another area of domain name dispute


Domain Names

• “Cybersquatting” – incorporating someone else’s trademark into your domain name without authorization and without a legitimate interest– e.g., someone except MetLife registering

“metropolitanlifeinsurance.com”

• Typosquatting – incorporating common misspellings/mistypings– e.g., “wwwford.com”


Domain Names

• Registration is available on a first-come, first-served basis– Numerous accredited registrars– No effective prior rights review before

registration

• Leaves much room for registration of domain names by cybersquatters


Domain Names

• Dealing with Cybersquatting– Trademark Infringement Law– Anticybersquatting Consumer Protection

Act – Non-Judicial Domain Name Dispute

Resolution


Domain Names

• Trademark infringement / unfair competition law– Likelihood of confusion analysis under

Lanham Act Section 32 (15 U.S.C. §1114) or Section 43(a) (15 U.S.C. §1125(a))


Domain Names

• Anticybersquatting Consumer Protection Act• codified in Lanham Act Section 43(d) (15 U.S.C.

1125(d))

– Elements:• Registering, trafficking in, or using a domain

name that is identical or confusingly similar to a third-party mark (or dilutive, in the case of a famous mark); and

• Doing the above with a bad faith intent to profit from the mark


Domain Names

• Anticybersquatting Consumer Protection Act (cont.)– Remedies:

• Defendant’s profits, plaintiff’s damages

• Statutory damages:– $1,000 - $100,000 per domain name

• Transfer of the domain name(s) to the plaintiff


Domain Names

• Anticybersquatting Consumer Protection Act (cont.)– In rem jurisdiction

• If defendant can’t be found or if personal jurisdiction can’t be obtained

• Can file suit where the domain name registrar or domain name registry resides


Domain Names

• Uniform Dispute Resolution Policy (UDRP)– Non-judicial domain name dispute

resolution– Many top-level domain registries (“.com”

included) require domain name owners to submit to the UDRP as a condition of domain name registration


Domain Names

• Uniform Dispute Resolution Policy (UDRP)– Streamlined process (no discovery,

decision within weeks); inexpensive– Disputes heard by arbitrator (e.g., WIPO or

National Arbitration Forum)– Arbitrator orders transfer of the domain

name to a winning complainant– No money damages


Domain Names

• Uniform Dispute Resolution Policy (UDRP)– Elements

• Complainant has a trademark right that is being used without authorization

• Registrant has no legitimate interest to use the trademark

• Registrant’s actions in registering the domain name were in bad faith


Domain Names

.xxx


Domain Names

• Top-Level Domains proliferating• .xxx in “sunrise period”• gTLD’s being introduced

– Most anything can become a TLD, not just the limited universe of .com, .net, .org, ccTLD’s

• Infringement and misuse threats multiply due to TLD proliferation


“Classic” Infringement

• All of the opportunities to infringe as in the non-cyber world, only multiplied by many thousand websites and global reach– Advertising– Sale of infringing/counterfeit goods


Keyword Advertising

• Search engine companies (e.g., Google, Yahoo!, Bing) sell advertisers the ability for their sponsored ads to appear when a computer user searches for a particular term


Keywords Example


Keyword Advertising

• That’s fine for “generic” terms, but what if the keywords are trademarks?

• What liability lies for:– The purchasers of the keywords (i.e., the

advertisers)?– The sellers of the keywords (e.g., Google)


Keyword Advertising

• Keyword purchasers may be:– Infringers/counterfeiters– Authorized distributors of branded goods– Independent resellers of branded goods– “Lead Aggregators”– Commentators


Keyword Advertising

• Liability of Keyword Purchasers– When should liability lie? – When is there confusion? – When is there “use in commerce”?

• What about nominative fair use, “classic” fair use (e.g., comparative advertising)?


Binder v. Disability Group (CD Cal. 2011) -- Facts

• Registered trademark: BINDER AND BINDER

• Defendant Disability Group purchased Binder’s mark as a Google AdWord

• Sponsored Ads linked to Disability Group’s website

• No use of BINDER AND BINDER mark in ad text


Binder v. Disability Group: Infringement Holding

• Use in Commerce? Yes. • Reproduction, counterfeit, etc., of

registered mark? Yes.

• In connection with sale, etc., of goods or services? Yes.

All of the above found with little or no discussion.


Binder v. Disability Group: Infringement Holding

• Likelihood of confusion? Yes.– “Internet Trilogy” of factors met: similarity of

marks, relatedness of goods or services, simultaneous use of Web as a marketing channel(GoTo.com v. Walt Disney (9th Cir., 2000))

– Survey evidence, actual confusion evidence submitted. While evidence of likelihood of confusion, not essential to holding.

• Damages: lost profits damages doubled for willfulness to $292,000


Binder v. Disability Group: Significance

• Keywords as “use in commerce”: a given• Use of the plaintiff’s trademark in ad text

not necessary to support infringement• Defendant’s name is not highly distinctive,

so defendant’s ad as comparative advertising not clear– Compare: GM advertises using “Ford Focus”

to point to a clearly-marked GM competitive/comparative ad


Liability of Keyword Seller

• Google makes billions per year from its AdWords program

• Issues:– Contributory infringement– Misappropriation / unjust enrichment from

Google profiting by selling trademarks


Liability of Keyword Seller

• Little definitive case law (most cases have been dismissed or settled early)

• Rosetta Stone v. Google on appeal to 4th Circuit after dismissal below– Issues:

• Likelihood of confusion• Contributory infringement• Dilution

• Functionality of keywords


Online Marketplaces


Online Marketplaces

• Active channels for selling many, many goods (authentic and infringing/counterfeit)

• What is the liability of an operator of an online marketplace for infringing goods in the marketplace?


Online Marketplaces

• Tiffany v. eBay, 600 F.3d 93 (2d Cir. 2010)– Tiffany sued eBay for trademark infringement due

to counterfeit Tiffany goods on eBay– eBay not liable for the counterfeit sales– Turned largely on eBay’s mechanisms for

responding to complaints by brand owners

– Imposing liability on eBay would unduly inhibit the resale of genuine Tiffany merchandise

• But, some online marketplaces aren’t as cooperative as eBay in removing counterfeits


Linking• Enables users to move from one webpage to another

by clicking on buttons or text on a site.

• Issues:

– A link from one website to another may create a false impression that the owner of one site sponsors or endorses the other.

– Linking to a website that carries defamatory material.

– Generally, mere linking is not per se wrongful under current law.


Framing

• Displaying multiple web pages within a single Internet browser window.

• Unlike linking, with framing the contents of both sites are visible simultaneously.

• Issue – When one web site “frames” another, the dominant site may inaccurately create an association between the two sites.


Framing Example


Trademarks in Social Media


Trademarks in Social Media

• In some ways, the same as in traditional media, but more (just like the Internet)

• Issues:– Disputes over usernames that contain

trademarks– Infringement on commercial sites– Dealing with “fans” appropriately on

noncommercial sites

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