Protecting YourProtecting YourBrand in CyberspaceBrand in Cyberspace

Topics CoveredTopics Covered Search

Thumbnails

Counterfeiting

Domain Names

Phishing

The Brand Danger Zones

Keyword SearchesKeyword Searches

What’s At StakeWhat’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)

Search Engine KeywordsSearch Engine Keywords

Use of Trademarks in Title

Competitors Using TMCompetitors Using TM

Competitors Using TMCompetitors Using TM

““Use in Commerce” 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 Is Bidding on Competitor’s Competitor’s Name a TM a Name a TM a use in use in commerce?commerce?

Likelihood of confusion among judges

Use in CommerceUse in Commerce oror Not?Not? 2003 2005

20072006

Red States v. Green StatesRed 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)

Split DecisionsNot 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).

Split DecisionsSplit DecisionsUse 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

Google Inc. v. American Blind and Wallpaper Factory Inc., 74 U.S.P.Q.2d 1385 (N.D. Cal. 2005)

1125(a) Trademark 1125(a) Trademark InfringementInfringement

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 ConfusionInitial 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 Initial Interest Confusion (con’t)(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. American Blind & Wallpaper v. GoogleGoogle

The Court Refused to The Court Refused to DismissDismiss

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 LawHyperlink Law

To hyperlink or not to

hyperlink?

What’s At StakeWhat’s At Stake

Protecting access to proprietary content

Ensuring monetization of traffic by requiring users to follow certain path

Linking NomenclatureLinking 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

Deep LinkingDeep 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 DavisCiv. 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

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.

ThumbnailsThumbnails

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 ScamsDomain Name Scams

What’s At StakeWhat’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”Domain Name “Tasting”

Register and “taste” name for 5 days– Return domain names for full

refundMeasure Traffic Through Pay

Per Click AdsKeep domain names that earn

more than $6

New Domain Name New Domain Name AbusesAbuses

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

Political ResponsePolitical Response

Coalition Against Domain Name Abuse (CADNA)

Several Large TM ownersICANN working group(s)Public Interest Registry

– Restocking fee on .org domains

Counterfeiting Counterfeiting on the Interneton the Internet

What’s At What’s At StakeStake

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

Attacking Attacking CounterfeitingCounterfeiting

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 RemediesLanham Act/ Copyright Act– Injunctive relief– Damages– Forfeiture

Criminal RemediesTrademark Counterfeiting Act– Criminal penalties– Forfeiture

Administrative Remedies– Intl Trade Commission

Section 337 - Exclusion Order for infringing items

– U.S. Customs – border seizure

Phishing Scams

What’s At What’s At StakeStake

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)

Phishing 101Phishing 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

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."

Questions?Questions?

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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