INTERNET LAW OUTLINE

Introduction and General:

I. Basic Internet Architecture
a. Definitions of the Internet
i. Technological: A worldwide, publicly accessible network of interconnected computer networks
that communicate via TCP/IP
1. Every machine (or the network of machines)
2. that communicates using TCP/IP
3. that has an IP address
ii. Business Relationships: Universe of IAPs (Internet Access Providers) who trade packets with
each other
1. Upstream and downstream providers
2. [and their customers]
3. Web of contracts/quasi-contracts
4. A network of networks (Reno 1)
iii. Functions:
1. Interactive Communications: Email (1:1 or lists), IM/Chat, Phone calls (VOIP),
Boards/USENET, Games
2. Move Money: E-commerce, Banking, Gambling
3. Browse or Publish Content: Text, Pictures, Music, Video, Software
b. ARPANET: Advanced Research Projects Agency Network created in 1969 by U.S. govt
i. Goal: if Russia took down our telecommunications infrastructure, there would still be a way for
generals and such to communicate
c. Packet Switching:
i. Every piece of info that goes out over the Internet goes out in this packet
ii. Every packet has heading info; identifying info that identifies where the info is coming from and
where it is going
1. The network reads the header and sends the info to where it is going.
2. Routers and switches move the packets along.
iii. If one part of the network cant deliver the info, it tries another connection to get the info to
where it needs to go.
iv. Transmission control protocol/Internet Protocol (TCP/IP) network is what makes packet
switching work
v. 3 advantages of packet switching network:
1. Stable
a. not reliant on any particular node
b. cf. circuit switched network
2. Operationally efficient
a. automatic load balancing
b. all traffic keeps moving
3. Extensible
a. easy to join
b. easy to leave
c. no centralized control
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vi. IP Address
1. Every packet switch is looking to go to IP addresses
2. Organizer: IANA (Internet Assigned Numbers Authority)
3. Mnemonics for IP addresses are domain names
a. Domain Name System (DNS)
d. What is Internet Law?
i. Law of the Horse: we dont have a separate class for everything that you can do with a horse,
so why do we have a class for everything you can do with the Internet; why not just study it as it
comes up in other classes just as we study things related to horses as they come up in classes?
ii. Preexisting law encountering new technology
iii. Cyberspace Exceptionalism: Must ask whether we need to develop whole new laws or do we
have existing tools/laws to deal with the problem? Who is the best person to deal with this
problem?
iv. Unique Features of Cyberlaw
1. No real authentication (Reno 90)
2. No centralized control (Reno 11, 46)
3. Simple to communicate (Reno 79)
4. Powerful information resource
v. Lessigs modalities of control
1. Law
2. Social norms
3. Markets
4. Architecture/design
a. Codes in cyberspace can be made to constitute our values and traditions, or it
can be made to constitute values against our tradition. Codes control what we
do, so we are not free
Trespass and CFAA:
I. 3 principal laws that govern the use of personal property online:
a. Common law trespass to chattels (TTC)
b. State anti computer trespass statutes (e.g. IN Code 35-43-2-3)
c. Federal Computer Fraud & Abuse Act (CFAA)
II. Trespass to Chattels basic elements
a. Intent
b. Dispossession/use/intermeddling
c. A chattel in the others possession
d. Damage b/c
i. Dispossession
ii. Impairment of chattels condition, quality or value
iii. Deprivation of use of chattel for substantial period
iv. Harm to body, person, or thing which P has legally protected against
e. Simple: Chattel interference + damage
i. Damage must be more than nominal
III. Bidders Edge and Hamidi (basic holdings, reasoning, and distinctions)
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a. Ebay v. Bidders Edge
i. Facts: new company that was using web robots to get info off of ebays website
ii. Holding: any sort of intermeddling suffices, especially when there is actual or constructive notice
that a certain use is unpermitted (For Ebay)
iii. Reasoning:
1. interference w/o authorization
a. Court basically says that you are granted access to visit servers, just b/c its on
the web doesnt mean it is open and can be used anyhow
b. Give the interferer or possible interferer notice of what they are authorized to
do and what theyre not authorized to do.
c. Holding: Bidder did interfere even if they werent using that much of Googles
server.
2. Damages
a. eBay didnt lose customers or revenues; it only matters that some bandwidth
was used
b. its as if the damage element doesnt even exist
c. court is just concerned about unwanted use as the harm
b. Intel Corp. v. Hamidi
i. Facts: guy who was mad he got laid off and was sending hundreds of emails to employees
ii. Holding: must be measurable loss to computer system resources (For Hamidi)
iii. Reasoning:
1. Hamidi is using the chattel/servers, but theres no damage to the chattel/servers
a. There was no broken computers, no server downtime. Lost productivity doesnt
count b/c the employees are not chattel. The server is chattel.
2. No damage, no tort
c. Distinction b/w Bidders Edge and Hamidi
i. eBay involved actual or threatened interference with the computers *efficient+ functioning
1. With Hamidi there was no appreciable effect on the operation of computer system
ii. No likelihood that Hamidis actions will be replicated by others if found not to constitute a
trespass
1. With ebay, other ppl would start using web robots constantly
iii. Hamidis volume was miniscule compared to commercial spammers volume
iv. eBay gave notice against web robots
d. Lesson: be able to prove the interference w/the computer system and things u had to do to deal w/the
interference will prove the damage.
e. Remember, websites are considered private, not public
IV. Computer Fraud and Abuse Act (CFAA) (basic provisions and application)
a. Relevant Offenses
i. knowingly accessing a computer without authorization (or exceeding authorized access), and
obtaining information from any protected computer [(a)(2)(C)];
ii. knowingly accessing a protected computer with the intent to defraud and there by obtaining
anything of value (5K/yr min.) [(a)(4)];
iii. knowingly causing the transmission of a program, information, code, or command that causes
damage to a protected computer [(a)(5)(A)];
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iv. intentionally accesses a protected computer without authorization, and as a result of such
conduct, recklessly causes damage [(a)(5)(B)];
v. intentionally accesses a protected computer without authorization, and as a result of such
conduct, causes damage and loss [(a)(5)(C)];
b. Definitions
i. Damage = impairment to integrity/availability of data, program, system or information
ii. Loss = reasonable cost to victim, including cost of responding, conducting a damage
assessment, and restoring the data/program/system/information to prior condition, and any
revenue lost/cost incurred/consequential damages incurred because of interruption of service.
iii. Protected computer = which is used in or affecting interstate or foreign commerce or
communication --any computer connected to the Internet.
c. Remedies
i. (g): Anyone suffering damage or loss can maintain a civil action
ii. but only if (c)(4)(A)(i) subsections (I)-(V) are satisfied:
1. loss of at least $5k/yr
2. [medical harm]
3. physical injury
4. threat to public health/safety
5. damage to government computer
d. Application
i. Accessing a schools email system to view and delete email messages is unauthorized access
(Whitby School)
ii. If action exceeds the authority granted by the websites Terms of Use, it exceeded authorized
access. (EF Cultural Travel)
1. Using a scraper to grab prices off competitors website in order to undercut the prices
iii. Us of a search robot to obtain info or use derived info for mass solicitation is unauthorized use
(Register.com)
iv. Breaching an online K, can be considered accessing a pc server in excess of authorization
depending on the terms of the K. Causing the death of someone is considered damage. (Lori
Drew)
1. Cannot elevate CFAA to the point of making breach of terms of use a federal criminal
offense
Defamation and Communications Decency Act (CDA) (47 U.S.C. 230):
I. Defamation: a statement that injures someones reputation or exposes them to public hatred, contempt,
ridicule, shame, disgrace, or affects business adversely.
a. The Internet deals with libelwritten defamation (slander=verbal)
II. Truth is always a defense to defamation
III. Elements:
a. False and defamatory statement about P
b. Published to one or more 3
rd
parties w/o privilege
c. Which results in damage, actual or presumed, and
d. D was at fault
IV. The defamed
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a. Public official/figure: P must prove actual malice=publication w/ knowledge that the statements was
false or w/reckless disregard if whether the statement was false
b. Private figure: P need only demonstrate that D was at fault in publishing false statement (showing
negligence usually suffices)
V. Who to sue: individual speaker/uploader, ISP (website), IAP, other Internet intermediaries
VI. The Defendant
a. Publishers: legally responsible for any libelous material they publish
b. Distributors: not liable unless they know or have reason to know of the defamatory statement
c. Common carriers: not liable unless they have participated in preparing defamatory material
VII. CDA 230 main provisions, definitions, exceptions, scope, comparison to 512
a. Main Provisions
i. No provider or user
ii. of an interactive computer service
iii. shall be treated as the publisher or speaker
iv. of any information provided by another information content provider.
b. Definitions
i. Interactive Computer Service (ICS): provides or enables computer access
1. Definitely IAPs; Usually websites, bulletin boards, interactive blogs, web hosts, email list
operators, chat room operators, and many others
ii. Internet Content Provider (ICP): any person/entity responsible, in whole or in part, for the
creation or development of information provided through the Internet or any other [ICS].
1. in whole or in part
a. Reading 1: As long as the ICS is responsible in any part for the development of
the content, then the ICS is an ICP and 230 is not available.
b. Reading 2: As long as any third party ICP was responsible for any part for the
content's development, the ICS is not liable for it.
c. Exceptions/Limitations
i. CDA 230 cant be construed to impair enforcement of Federal criminal statute
ii. CDA 230 cant effect federal intellectual property law
iii. CDA cant effect communications privacy law
d. Scope
i. Websites are not liable for 3
rd
party content
ii. Applies to defamatory info., private info., false info., pornographic info.
VIII. CDA 230 case law:
a. Zeran v. AOL
i. Facts: Zeran falsely represented as OK City bombing slogan t-shirt maker. Sued AOL for the
defamatory content.
ii. Holding: CDA 230 creates federal immunityISPs immune from liability for exercising a
publishers traditional functionssuch as deciding whether to publish, withdraw, postpone or
alter content. (For AOL)
b. Majority & Minority views
i. Majority:
1. Online providers can respond to non-IP complaints however they want to
2. 230 applies to all claims/legal theories
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3. ICS is not responsible for any info a 3
rd
party provided in part
a. Even if the ICS owns it, edits it, and receives and ignores a complaint about it
b. ICS can exercise traditional editorial function (construed broadly)
ii. Minority
1. Notice-Based Liability: 230 is not available when the ICS knows or should know of a
problem
2. 230 only applies to defamation claims
3. With sufficient involvement by the ICS, third party content can be converted into an ICS
own content; immunity lost.
c. Recent trends (Roommates.com, Craigslist)
i. Roomates: 3
rd
party content can become 1
st
party content if the website directs the user-inputs
too much, especially with a nexus to illegal activity
ii. Craigslist: cannot sue the messenger just b/c the message reveals a 3
rd
partys plan to engage in
unlawful activity
iii. Reconciling Roomates w/Craigslist:
1. Roommates.com provided structured categories for user content
2. Roommates.com had mandatory inputs
iv. Claim promissory estoppel (quasi-contract), when site promises to remove third party content
then doesnt (Barnes v. Yahoo)
v. Sue over websites own marketing representations, using standard contracts and false
advertising doctrines (Mazur v. eBay)
IX. 230 Strategies
a. Plaintiffs
i. Plead an I.P. claim
1. (Avoid 230 entirely; make D navigate the tricky waters of 512)
ii. Other 230 plead-arounds (e.g. marketing reps)
iii. Argue that D is not an ICS provider or user
iv. Argue that the ICS is actually an ICP
v. Argue promissory estoppel
b. Defendants
i. Reject plead-arounds
ii. Move to dismiss (will 230 support a 12b6?)
iii. Rule 11
Contracts:
I. Types (shrinkwrap/clickwrap/browsewrap)
a. Best type to have on your website=Mandatory Non-leaky Clickthrough Agreement
i. Mandatory= all users go through the same process
ii. Non-leaky= process cant be bypassed
iii. Clickthrough= consumer affirmatively clicks I agree to the terms
b. Shrinkwrap: can only be read and accepted by the consumer after opening the product
c. Clickwrap: user must click I agree to use/access the content/product
d. Browsewrap: an agreement that by browsing the website the user assumes. User doesnt have to ever
look at the contract to access the material.
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II. General rules of enforceability
a. Browsewraps
i. The user is provided with adequate notice of the existence of the proposed terms.
ii. The user has a meaningful opportunity to review the terms.
iii. The user is provided with adequate notice that taking a specified action manifests assent to the
terms.
iv. The user takes the action specified in the latter notice.
b. For more, see the cases below
III. UETA, E-SIGN (basic)
a. Electronic signature vs. digital signature (see definitions section above)
b. UETA =Uniform Electronic Transactions Act
i. A record or signature may not be denied legal effect or enforceability solely because it is in
electronic form.
ii. A contract may not be denied legal effect or enforceability solely because an electronic record
was used in its formation.
iii. If a law requires a record to be in writing, an electronic record satisfies the law.
iv. If a law requires a signature, an electronic signature satisfies the law.
c. E-Sign= Electronic Signatures in Global National Commerce Act
i. with respect to any transaction in or affecting interstate or foreign commerce
1. a signature, contract, or other record relating to such transaction may not be denied
legal effect, validity, or enforceability solely because it is in electronic form; and
2. a contract relating to such transaction may not be denied legal effect, validity, or
enforceability solely because an electronic signature or electronic record was used in its
IV. Online Ks governed by UCC Article 2 (sale of goods), common law (Intangible items), and UCITA (Va. and Md.)
V. Common Law of K elements:
a. Formation,
i. Intention (offer/acceptance/consideration)
ii. Manifestation of intent through actions or words (expressed or implied)
iii. Unambiguous evidence of assent
b. Interpretation,
c. Defenses,
d. Remedies
VI. Unique features of online Ks: increased risk of being deemed unconscionable, statute of frauds, mailbox rule,
and mountain of parol evidence
VII. Specht, Register.com, Blockbuster
a. Specht v. Netscape
i. Standard: Assent requires a reasonably prudent offereewould necessarily have known or
learned of the existence of the SmartDownload license agreement prior to acting.
ii. Facts: Ps claim that the SmartDownload reported to Netscape what they were browsing on the
Internet w/o notifying the customer
iii. Holding: For Specht; Netscapes K wasnt validly formed
iv. Reasoning: The agreement was located at bottom of page, but button to start download was at
top of the page; no action indicating consent b4 downloading or using; b/c Netscape has
disconnected knowledge from action, they lost
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1. please review and agree is an invitation rather than saying you must agree in order to
use the software; this is insufficient notice
b. Register.com v. Verio
i. Facts: Verio is a domain name registrar and it was using daily search robots on its competitors
(Register.com) website to look for new customers for solicitation purposes; Register.com says
Verios action is against Register.coms site usual agreement. Type of agreement: browsewrap
ii. Holding: For Register.com; when benefit offered subject to stated conditions w/knowledge, the
taking constitutes an acceptance of the terms
iii. Reasoning: Verio repeatedly used the database w/knowledge of the terms. Verio conceded
knowledge; Verio programmed its robots; Verio received a cease and desist letter, and still
continued the action
c. Reconciling Register.com and Specht
i. With Specht, the users only downloaded the software once, which means they only had on
chance to view the K.
1. With Register.com, there was repeated visits of the site allowing enough chances to see
the K
ii. Register.com involved commercial user of the site; Specht involved non-commerical user
iii. The D in Register.com admitted to knowledge; Specht Ds didnt
d. Harris v. Blockbuster
i. The Unilateral Right to Amend
i. Facts: Blockbuster, through FB, posting their customers rentals and purchases; all of
blockbusters users clicked I agree to this; in addition, blockbuster had a right to amend clause
ii. Holding: the ability to change contract w/o consent (aka unilateral right to amend) makes a
contract invalid; This invalidation means that all the terms, including arbitration clause, are void
Copyright:
I. How copyright arises
II. Who owns a copyright (basic)
III. Elements of copyright infringement (direct, contributory, vicarious)
IV. Netcom case
V. The 512 safe harbors
VI. How fair use works
VII. How search engines work, Robot Exclusion Protocol/Robots.txt
VIII. Search engine liability and defenses (Field, P10 v Amazon)
IX. P2P (Sony, Napster, Grokster, Fung) (reasoning and results)
TRADEMARK:
I. Basic trademark law: subject matter, how trademarks arise, hierarchy of trademark distinctiveness, etc.
a. TM Defined: A device (word, name, phrase, symbol, product shape, logo, etc.) used by a maker or seller
to identify its goods, to distinguish those goods from those made or sold by another, and to indicate the
maker/seller as the source of those goods.
b. 3 principal elements:
i. Identifies
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ii. Distinguishes
iii. Indicates source
c. Purposes of TM Law: 1.) protect public from consumer confusion and 2.)protect TM owner from
misappropriation of valuable property
d. The Brand Rule: TMs are proper adjs. and should be followed by generic terms
i. Form: Mark [brand], generic identifier of good/serives
1. Exs.: KLEENEX brand facial tissue, EBAY brand online auction service, etc.
e. Governing Tool: Lanham Act
f. A mark cannot be registered in the U.S. until it has been engaged in interstate commerce
i. Any good that is marked for sale online is engaged in interstate commerce
ii. Even if TM owner primarily sells things in one state, if he makes a bonafide sell out of state, that
counts as being engaged in interstate commerce qualifying the registration of TM.
g. Requirements for TM Acquisition
i. Use - TM must be used (or an intent-to-use application filed);
ii. In commerce - use must be commercial in trade evidenced by specimens of labels, displays,
etc.;
iii. Distinctive - TM must be capable of identifying the source of a particular good.
h. How TM Rights Arise
i. Common Law: use in commerce
1. Mark is inherently distinctive, or mark has acquired secondary meaning through use
2. Common law rights limited to geographic area
3. Can mark with
TM
or
SM

ii. Register with USPTO
1. 2 bases:
a. mark actually in use, or
b. mark intended to be used soon (ITU intent to use)
2. Provides several benefits, including super-common law rights (entire U.S.)
3. Mark with or Reg. U.S. Pat. & Tm. Off.
i. Rights of the TM Owner
i. Exclusive use of the mark to identify the source of a good or service
ii. Can prevent others from using the same or confusingly similar mark in connection with specific
goods or services
iii. Geographic Scope:
1. Unregistered: TM right in geographic trading area only
2. Registered: TM right in entire U.S.
a. Registration is not required, but very beneficial for super-common-law rights
j. Hierarchy of TM Distinctiveness
i. Most Distinctive from greatest to least:
1. Fanciful: inherently distinctive (Exxon, Kodak)
2. Arbitrary: real words used out of context that are specifically assigned; inherently
distinctive (Apple for computers)
3. Suggestive: dictionary words that suggest what the product is; inherently distinctive
(Coppertone)
ii. Least Distinctive from greatest to least:
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1. Descriptive: mark itself describes the product/service; not inherently distinctive; must
have acquired secondary meaning through use (Holliday Inn, Vision Center)
2. Generic: unprotectable (Apple for apples)
iii. Relation to TM protection
1. The more distinctive the TM, the more protection is awarded
2. Fanciful, Arbitrary, and Suggestive trademarks get protection; Descriptive and Generic
require use of time to market the product/service to create a secondary meaning in
order to obtain a TM.
3. Some marks suffer genericide, meaning the TM has moved from adj. to verb and is
now being used as a generic term.
4. Refer to TM Protection graphic
k. Priorities
i. First to use or register: TM rights vest with the first entity or person to use a mark in commerce
or federally register a mark. Registration can be based on actual use, or intent to use.
ii. Carve-out for first actual user: If a senior user uses a mark prior to a junior user federally
registering the mark, the senior user retains rights in the mark for the geographic region in
which she used the mark in commerce prior to registration. This region is carved out from the
registrant/junior users ownership rights.
l. Losing TM Rights
i. Abandonment (assumed after 5 years of non-use);
ii. Improper licensing or assignment (insufficient supervision);
iii. Genericide
II. TM Infringement
a. Types of Infringement
i. If registered, 32 of LA; 1114(1)
ii. If unregistered (or registered), can use 43a of LA; 1125(a)
1. 1125(a): the source of federal unfair competition law
2. 1125(c): TM dilution
3. 1125(d): cybersquatting (cyberpiracy)
b. Prima Facie Case for TM Infringement
i. P has a valid mark entitled to protection under the Lanham Act;
ii. P has priority rights in the mark;
iii. D has used the mark in commerce;
iv. Such use is likely to cause confusion / mistake / deception (Likelihood of consumer confusion)
1. as to the affiliation, connection, or association of such person with another person,
2. or as to the origin, sponsorship, or approval of his or her goods, services, or commercial
activities by another person.
c. Tests: 32/1114 and 43(a)/1125(a)
i. Consumer Confusion Test
1. likelihood of consumer confusion standard
a. Whether the reasonably prudent consumer is likely to be confused as to the
origin of the good or service bearing one of the TMs
2. Notes:
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a. Multiple parties may use the same mark only where the goods of the parties are
not similar as to cause confusion among consumers
b. Where a mark is protected only under common law TM rights, the same marks
can be used where there is no geographic overlap in the use of the marks
ii. LA 32/1114
1. without the consent of the registrant
2. use in commerce
3. of a registered mark
4. such use is likely to cause confusion, or to cause mistake, or to deceive (LOCC)
a. Can be bypassed by applying the Initial Interest Confusion (IIC) Standard; see
Lamparello case below)
iii. LA 43/1125
1. any goods or services
2. uses in commerce
3. any word, term, name, symbol, or deviceor any fals*ity+, which
a. likely to cause confusion or
b. misrepresent
iv. Note: 32 requires the mark to be registered while 32 does not require registration
v. Contributory TM Infringement/Inwood Standard
1. 'intentionally induces another to infringe a TM,' or
2. 'continues to supply its product to one whom it knows or has reason to know is
engaging in TM infringement.'
a. Reason to know: Narrower in TM than CR
i. Generalized knowledge is insufficient
ii. Willful Blindness Rule: When *a service provider+ has reason to
suspect that users of its service are infringing a protected mark, it may
not shield itself from learning of the particular infringing transactions by
looking the other way.
b. to one= identified individuals
3. Website liability for user-caused TM infringements may be (implicitly) governed by a
notice-and-takedown regime
4. Best practice for websites is to act in good faith and employ voluntary infringement
suppression practices
d. Remedies provided in 1117
i. Ds profits
ii. Ps damages
iii. Costs (filing fees)
iv. Attorneys fees in exceptional cases
III. Defenses to TM infringement (including descriptive & nominative fair use, comparative ad., noncommercial use)
a. Geographic limitations (common law)
b. Noncommercial Use: no goods offered; term being used in a literary sense.
c. Noncompeting or non-confusing use
d. Truthful Product Comparison
e. News Reporting
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f. Parody
g. Descriptive Fair Use: Use of primary descriptive meaning of mark,
i. e.gs., this cereal is all bran; juice described as sweet and tart or sweet-tart, vs. SWEETARTS
h. Nominative Fair Use: Use of Ps mark in a way that doesnt imply sponsorship, affiliation, or promotion.
(see Playboy v. Welles below for the Test)
i. 1114(2): limited defense to innocent printers and publishers
i. Limit to injunction (no damages) if:
1. engaged solely in the business of printing/violating for others
2. innocent infringer/violator
ii. Underused in online context
IV. Trademark Dilution (generally, 43(c)/1125(c))
a. Basic Idea: Certain marks are so big, we are going to draw a huge protection around them to protect
against infringement.
i. Use of a similar word or image, dilutes the value of the original brand/willows away the
distinctive power of the brand
b. A famous mark owner (e.g., Disney) may sue for dilution of its marks distinctive quality
i. blurring;
ii. tarnishment
c. no requirement of likelihood of confusion or economic damage.
d. Exclusions (1125(c)(3))
e. Ex.: candy land game vs. candyland.com porn site
f. All you have to show is:
i. Im famous
ii. You started after me
iii. Your product is diluting my product
g. Defenses: same as any other TM infringement defense
h. There is no such thing as contributory liability in TM dilution
V. Tiffany v. eBay
a. No direct liability for TM infringement based on advertising activities (nominative use doctrine) (u can
call item by name)
b. No secondary liability for counterfeit sales because generalized knowledge is not enough and eBay
followed a notice-and-takedown procedure
c. No direct liability for TM dilution based on the (unadopted) nominative use doctrine
VI. Domain Name System and Registration
a. Domain Names v. TMs
i. Domains are not trademarks b/c a domain is not an indication of online goods or services
ii. Domains are Quasi-TMs; they perform similar functions
iii. Differences in how obtained: Use(TM) vs. Registration (Domain)
iv. Differences in scarcity
b. Types of Domain Conflicts
i. Trademark owners with legitimate competing claims to a domain name
1. e.g. <gateway.com>
ii. Using domain name for harmful purposes
1. Domain identical to anothers trademark <candyland.com>
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2. Domain name similar, but not identical, to anothers trademark <adultsRus.com>
3. Cybersquatting (demanding ransom from TM owner)
4. Typosquatting (capitalizing on typos)
VII. Domain Cybersquatting and ACPA/UDRP (elements, remedies, procedure, and differences)
a. Anticybersquating Consumer Protection Act (ACPA)
i. Imposes liability on a person who:
1. registers, traffics in, or uses a domain name that is identical or confusingly similar to a
distinctive mark (or dilutes a famous mark), AND
2. has a bad-faith intent to profit from the domain name
ii. Notes:
1. ACPA applies only to domain names, which means ACPA cant be used to remedy
registrations of things like facebook/unitedairlines b/c those arent domain names,
theyre usernames
2. there is no commercial use requirement
a. there is no regard to goods or services of the parties
3. identical or confusingly similar is NOT same thing as likelihood of causing confusion
iii. Factors court may consider in determining bad faith
1. the IP rights that D has in the domain name;
2. the extent to which the domain name is the same as Ds name or nickname;
3. Ds prior lawful use of the domain name in making an offer of goods or services;
4. Ds noncommercial or fair use of the mark in the website;
5. Ds intent to divert customers to a website that could harm the goodwill of the mark;
6. whether D has offered to assign the domain name for monetary gain without use or
whether D intended to use the name;
7. whether D provided false contact information when applying for the domain name;
8. whether D registered multiple domain names that are confusingly similar to distinctive
marks or dilute famous marks; and
9. whether the mark is famous or distinctive
iv. Good Faith Defense
1. Bad faith intent will not be found in any case in which the court determines that the
person
a. believed and
b. had reasonable grounds to believe
c. that the use of the domain name was a fair use or otherwise lawful
2. Also creates a safe harbor for registration bodies so long as they act in good faith
through the process
v. Remedies
1. Forfeiture, cancellation or transfer of the domain name [1125(d)(1)(C)]
2. Actual or statutory damages (from $1,000 to $100,000 per domain name), 1117(d)
3. Attorneys fees and costs, 1117
b. Uniform Domain Name Dispute Resolution Policy (UDRP)
i. governs disputes concerning most TLDs
1. all .com, .net, .org, .aero, .biz, .coop, .info, .jobs, .museum,
.name, .pro and .travel domain names,
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2. > 50 country-code TLDs
ii. Mandatory, by contract
iii. Required Showings:
1. the domain name is identical or confusingly similar to a trademark or service mark in
which the complainant has rights;
2. the domain name registrant has no rights or legitimate interests with respect to the
domain name; and
3. the domain name was registered and is being used in bad faith.
iv. Bad Faith Factors:
1. whether the domain name was registered primarily for the purpose of selling it for
profit to a trademark owner or its competitors;
2. whether the name was registered to prevent the trademark owner from using the mark
in its domain name, provided the registrant has engaged in a pattern of this behavior;
3. whether registration was intended primarily to disrupt the business of a competitor; or
4. whether the registrant used the domain name in an intentional attempt to attract users
to a site, for commercial gain, by creating a likelihood of confusion as to the source of
the site or a product on the site.
v. No legitimate right or interest
1. 3 defenses to the legitimate interest element:
a. D has made preparations for the bona fide use of the domain name prior to
notice of complaint
b. D is commonly known by the domain name; i.e., the domain name is a
nickname for the domain name holder
c. D has a legitimate, noncommercial, or fair use of the domain name, without a
corresponding intent of commercial gain, market confusion or tarnishment
d. Exs. Of won: <corvette.com>; <talk-city.com>
e. Exs. Of lost:
i. <spiritairlines.com>: by Australian airline, incorporated under the name
Spirit Airlines before registering the domain name or being aware of
complainant;
ii. <windor.com>: respondent had been doing business using the domain
name for many years
iii. Amazoh.com; qmazon.com; smszon.com
vi. Authorized Dispute Resolution Service Providers
1. World Intellectual Property Organization (WIPO)
2. National Arbitration Forum (NAF)
3. CPR Institute for Dispute Resolution
4. Asian Domain Name Dispute Resolution Centre
vii. Note: the UDRP is a plaintiff-friendly procedure
viii. See printout for a comparison b/w UDRP and ACPA
ix. The TM owner can choose to do a ACPA claim or use the UDRP; if u use the UDRP, the registrant
has agreed to be bound by it/use it through some form of K.
x. Remedy: cancel or transfer a domain registration. No damages.
xi. UDRP is very quick and easy, so ppl like to choose it over a lawsuit
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VIII. Lamparello v. Falwell
a. Facts: Lamparello doesnt like Jerry Falwell; He creates Fallwell.com (falwell spelt incorrectly
purposefully) to talk about how much he dislikes Jerry Falwell. Falwell sues under TM.
b. TM Infringement Holding: For Lamparello
i. Valid TM: There is a valid TM here b/c you get a common law TM in your name if you use it in
commerce to generate money for yourself
ii. Priority
iii. Use in Commerce: court says it need not resolve based on the PETA precedent
iv. LOCC:
1. Court bypasses LOCC by applying initial interest confusion(IIC) doctrine.
a. Hard to apply LOCC in noncommercial setting.
2. IIC Theory: initially attracted ur attention and got u diverted. U never shouldve been
aware of vendor #2; they only got ur interest b/c they dangled a misleading product in
front of u; vendor got in ur line of sight, and they shouldnt have
a. The IIC tries to manage the consumer process early on in the process
b. The confusion shouldve never happened in the 1
st
place
3. IIC application to this case: websites look different; services are different. Undisputed
record = no LOCC. D did not use another's mark to capture the markholder's customers
and profits
c. ACPA Holding: For Lamparello
i. The domain name <www.fallwell.com> is identical or confusingly similar to, or dilutive of the
distinctive and famous [Falwell] mark? Yes
ii. D had a bad faith intent to profit from using the <www.fallwell.com> domain name? No
1. Gripe site doesnt=bad faith
iii. Both elements must be met
IX. Metatags and Initial Interest Confusion
a. Metatags are codes in the html of a website that tell the title, description, robots, and/or keywords for
the site (see printout for a description of the types of metatags)
b. PlayBoy v. Welles
i. Facts: Terri Welles was named playmate of the year, so she created a website. Playboy owns TM
in Playboy and Playmate, which wells had in her metatags, masthead, banner ads, and
watermark. To make sure ppl knew that the site was not from Playboy, she had a statement
denouncing affiliation.
ii. Welles Defense=Nominative Fair Use, Test:
1. The product or service cannot be readily identified without using the trademark (e.g.
trademark is descriptive of a person, place, or product attribute)
2. The user only uses so much of the mark as is necessary for the identification (e.g. the
words but not the font or symbol)
3. The user does nothing to suggest sponsorship or endorsement by the trademark holder.
iii. Nominative Fair Use Holding: For Welles in the metatags; there is no other way Welles can
identify/describe herself
1. *T+here *can+ be no trademark infringement where a defendant has used the plaintiff's
trademarks in good faith to index the content of her web site."
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2. Against Welles for Wallpaper; it was not necessary for her to put PMOY repeadtly as her
wallpaper, so therefore not nominative fair use
iv. TM Dilution Holding: nominative uses, by definition, do not dilute TMs. A nominative use, by
definition, refers to the trademark holder's product. It does not create an improper association
in consumers' minds between a new product and the trademark holder's mark.
c. Promatek v. Equitrac
i. Facts: Promatek owns TM Copitrak; D, Equitrac puts Copitrack (misspelling Copitrak) its
keyword metatag; Promatek sued Equitrac and won in the D.C. Circuit, which required Equitrac
to put a notice on its page that said if you were directed to their website from the word
copitrak, it was a mistake. This case is Equitracs appeal to that decision.
ii. Holding: For Promatek; metatag created initial interest confusion; it divert*ed+ consumers
1. Duration doesnt matter; momentary confusion is not allowed; the moment user lands
on page, TM infringement occurred b/c the user shouldnt be on the page to begin w/.
2. Court does not discuss use in commerce element
d. North American Medical Corp. Axiom Worldwide, Inc.
i. Facts: P, NAMC manufactures and distributes spinal/ traction device; D, Axiom is a competitor
of NAMC; P owns the TMs IDD Therapy and Accu-Spina, and D uses the TMs in metatags
ii. Holding: For NAMC; infringement through metatags
1. UIC=Yes; LOCC=Yes
2. Reasoning: Axiom included the terms within its meta tags to influence Internet
search engines. Axiom showed up on Google as 2
nd
most relevant search result for Ps
TMs and Axioms Google search description included the TMs
3. Apparently you can get LOCC from something that a consumer cant seea metatag
4. Court says that if this was a search result in merely a listing and/or an explicit
comparative advertisement, the D may have a legitimate reason to use the TMs
e. Lessons about Metatags:
i. Rid your keyword metatags of competitive trademarks
ii. Scrub the text of description metatags
iii. Needs to be a comparative use/nominative fair use
iv. Educate (yourself and) courts about current technology and the clients objective
X. Keyword Advertising (technology, lines of reasoning, trends)
a. Sponsored Link: Text-based ads that often appear as a result of a keyword search either on a search
engine or associated site.
b. Invisible Triggers: Keywords that trigger ads to appear; the keyword trigger may be a TM but the ad does
not include the TM
c. Visible Text: The ads themselves contain TM terms; visible ad text.
d. Hearts on Fire v. Blue Nile
i. Facts: P, Hearts on Fire owns TM Hearts on fire, and D, Blue Nile uses TM in triggering ads for
itself and in ad text
ii. UIC Holding: For Hearts on Fire Selling a TM term is use in commerce
1. UIC: Ds purchase of the mark was use in commerce
2. Rescuecom: Commerce means something different when you are enforcing the rights
than it does when you are obtaining the right.
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a. The use in commerce definition is for obtaining rights, not for proving
infringement.
b. UIC post- Rescuecom:
i. Displaying 3
rd
party TM in ad copy=UIC
ii. Selling TMed Keywords to trigger ads
1. Not UIC when adware vendors sell categories, not specific TMs
(1-800 Contacts)
2. Yes UIC when a search engine sells specific TMs
iii. Keyword-triggered ad buys:
1. Outside 2
nd
Cir.= UIC
2. In 2
nd
Cir.= unknown
iv. Rescuecom effectively ends the UIC defense to online infringement.
3. LOCC Holding: For Blue Nile; there is no suggestion that diverted consumers
inadvertently believed they were purchasing Hearts on Fire diamonds at Blue Nile's
website.
e. Rhino Sports v. Sport Court, Inc.
i. Facts: Rhino had K w/Sport Court, Inc. not to use TM Sport Court on the Internet. Rhinos ad
pops up in response to Google search for Sport Court even though Rhino never bought the
keyword b/c of Googles Broad Matching.
ii. Holding: Rhino has no control over Googles algorithm; broad matching using permissible terms
is OK.
f. State Legislative Efforts
i. Utah SB 236 (the Trademark Protection Act, March 19, 2007)
1. Electronic Registration Mark" = "word, term, or name that represents a business,
goods, or a service
2. Infringement to use an ERM to cause the delivery or display of an advertisement for a
business, goods, or a service: (i) of the same classother than the *ERM registrants
business]; or (ii) if that advertisement is likely to cause confusion between the [two
businesses+ if ad displayed in Utah or advertiser/keyword vendor located in Utah.
3. Legal challenges
a. Dormant Commerce Clause
i. If congress has the power to regulate interstate commerce, then
conversely, states dont have the power to do so
b. First Amendment
4. Repealed 2008
5. 2009 reattempt
XI. More on LOCC
a. Remember the tests to measure LOCC
i. Multi-factor LOCC test
ii. Initial Interest Confusion
b. Results so far
i. TMs appearing in ad copy=LOCC
ii. Keyword triggering only LOCC
XII. Selected Defenses
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a. Descriptive fair use (15 U.S.C. 1115(b)(4))
b. Nominative fair use
c. For keyword sellers:
i. Argue no contributory liability (Test: advertiser infringement + keyword seller directly
controls/monitors instrumentality used to infringe)
ii. Try the limited printer/publisher remedies (15 U.S.C. 1114(2))
Cybercrime:
I. Any questions should be obvious from having attended Mr. DeBrotas presentation.