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July Legal Column

INTELLECTUAL PROPERTY PROTECTION - QUESTIONS AND ANSWERS

By Joel I. Rosenblatt, Attorney at Law Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@mindspring.com

NO PLACE TO HIDE (ANYMORE)

Last month happened to be popular with people who had or who planned to register domain names like names of popular celebrities and famous trademarks but with minor differences, (like CocoaCola.com and GeneralElectra.com). While not knowing the exact motivation, a reasonable guess would be to trade on the popular registered name, hoping to ride the coat tails of all those accessing the real name, or to hold the lookalike name ransom for a hefty payment. But to give some benefit of the doubt, let us just say the motive was to have a domain name which would be easily remembered even if the CocoaCola web site was the official web site of the American Butterfly Society and the GeneralElectra web site was offering free pictures of the Sahara. Even so, the selection of any domain name having even a slight connection with an established trademark or celebrity or existing domain name, is view with a suspicion that could lead to legal action, as I will explain. YOUR DOMAIN NAME AGREEMENT WITH ICANN For those who don’t know it, when a domain name is registered, the Uniform Domain Name Dispute Resolution Policy (the "Policy"), as adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), is incorporated by reference into the registration agreement. The purpose is prevent the grouping of other party domain names around an established trademark or domain name and to permit domain names to function as the source of origin for an individual name and for all other names that are lookalikes, such as Coca-Cola and sets forth the terms and conditions in connection with a dispute over a lookalike. In operation, the Policy sets the rules for resolving a dispute between the domain name holder and any party other than the registrar, over the registration and use of a domain name. Those having gone through the registration process, should be familiar with the representations made in the application that all statements made are complete and accurate (that means no half truths), and that with knowledge, the domain name will not infringe on the rights of any third party, that there is no unlawful purpose intended for the domain name, and its use will not be in violation of any law. Well, it appears a small group of people make this representation with the good faith belief that since they are not lawyers, they can’t be held responsible for knowing if any infringement exists or is even possible. Others believe that the 5th amendment protects them until caught and if they are caught, they will “deal with it then.” “Dealing with it then” means submitting to a mandatory administrative proceeding where the complainant must prove each of the following elements are present that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; there are no other rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith. In case you are wondering what organizations are authorized to conduct these proceedings, the list for now includes CPR Institute for Dispute Resolution, The National Arbitration Forum, and the World Intellectual Property Organization. My favorite element is “bad faith” because it is never admitted and is only proven by circumstantial evidence. Some of the circumstances permitted to be presented in evidence are circumstances indicating the name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who happens to be the owner of a similar or trademark or service mark or to a competitor, for money or other valuable consideration in excess of the cost of acquiring the domain name. As we are dealing with circumstantial evidence, any term capable of being judged like “excess” or “primarily” will be given the spin favored by the judges. A definition for Reverse Domain Name Hijacking within the Policy is using the domain name in bad faith to attempt to deprive a registered domain-name holder of a domain name. Acts of bad faith may be registration of a domain name in order to prevent the owner of the trademark or service mark from using it as a domain name, or primarily for the purpose of disrupting the business of a competitor; or to intentionally attempt to attract internet users for commercial gain by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location, which all in all sounds just like a classic trademark infringement argument. Of courses as in any administrative proceeding where there are legal consequences, the respondent to the complaint may demonstrate good faith and a legitimate interest in the domain name by showing preparations to use the name or a trademark or service mark, in connection with a bona fide offering of goods or services; prior to notice of a dispute, or showing a common recognition of the domain name, even if there have been no trademark or service mark rights; acquired, or a legitimate noncommercial or fair use of the domain name, is made, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. However, as may be seen by the Policy, it is going to be up to the judgment of the panel hearing the facts in the dispute. The decision making power of the panel extends to cancellations, transfers, and changes as a result of any administrative proceeding conducted under the Policy and provided the basic concepts of fair play have been met. However, while this standard may not be what is to be expected in a federal court house, any party dissatisfied with the decision has the right to take the same case to judicial review.. The dispute may be submitted to a court for independent resolution before or after the panel is convened or after it makes its decision. So how does all of this play out? In a recent decision involving the actor Kevin Spacey as complainant and John Zuccarini as respondent, the disputed domain name was kevinspacy.com, differing from the actors name by the omission of an “e.” The Complaint was received on March 26th 2001, the proceeding was commenced on April 4th. and a final decision made on May 8th. Spacey, the actor, said the kevinspacy.com domain name is identical or confusingly similar to his name, Kevin Spacey, and trademark and the respondent has no rights to, or legitimate interests in, the domain name and that domain name kevinspacy.com was registered and is being used in bad faith. The panel found Kevin Spacey was a famous actor and has shown long standing common law trademark rights and a secondary meaning of origination with the actor Spacey. It also helped that the actor Spacey filed trademark and service mark applications featuring the mark KEVIN SPACEY for use in connection with a wide range of goods and services, including entertainment services, and the respondent was known as a cybersquatter who admitted registration of thousands of other domain names because of their confusingly similarity to other famous marks and personal names, to divert Internet traffic to his sites. The panel’s decision was to transfer the domain name kevinspacy.com from respondent to Spacey the actor. Next month we will answer questions about the recent case filed against AIMSTER, that alleges contributory and vicarious copyright infringement by use of a program which, the Complaint says, encourages and facilitates millions if not billions of anonymous users to copy copyrighted works.

Biography

Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims. Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround. Education and Professional Affiliations: Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School. Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@mindspring.com .

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