Intellectual Property

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Intellectual Property

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Registered in order to prevent tm owner from using. Registered to disrupt competitor's business ... e-Bay Example. Third-Party Liability. Reasons to extend ... – PowerPoint PPT presentation

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Title: Intellectual Property

1
Intellectual Property

Boston College Law School
April 1, 2009
Trademark Domain Names

2
Trademark Infringement

Causes of action
Likelihood of confusion
Dilution
Cyber-squatting
False Advertising

3
Domain Name System
ICANN
ICANN
ICANN
ICANN
ICANN
Registrars
Countries
.com, .org, .net
.us, .uk, .jp
Sites
Sites
Sites
Sites
Sites
nike.com
coke.com
kodak.com
nike.uk
kodak.jp
4
Types of Domain Name Disputes

Likelihood of Confusion
E.g. nike.com to sell competing shoes
E.g. plannedparenthood.org for confusing
anti-abortion web site
Dilution of Famous Mark
E.g. nike.com to sell ball bearings (blurring)
E.g. candyland.com or adultsrus.com (tarnishment)

5
Types of Domain Name Disputes

Cybersquatting
E.g. register nike.com to sell to Nike
E.g. register panavision.com to sell to Panasonic
Competitive warehousing
E.g. Princeton Review registering kaplan.com
Concurrent uses
E.g. Apple Computer and Apple Records
E.g. Budweiser U.S. and Budweiser Czech Republic

6
Types of Domain Name Disputes

Noncommercial uses
E.g. pokey.org, veronica.org for personal sites
E.g. nike.net, for site criticizing Nike labor
practices
Parody and critique
E.g. peta.org for People Eating Tasty Animals
E.g. walmartsucks.com, guiness-really-sucks.com

7
Sources of Law

Trademark Law
Likelihood of confusion
Dilution
Anti-Cybersquatting
Administrative Solution
Uniform Dispute Resolution Policy (UDRP)

8
Anti-Cybersquatting

Lanham Act 43(d)
(1)(A) A person shall be liable in a civil action
by the owner of a mark if, without regard to
the goods or services of the parties, that person
--
(i) has a bad faith intent to profit from that
mark and
(ii) registers, traffics in, or uses a domain
name that -
(I) in the case of a mark that is distinctive
is identical or confusingly similar
(II) in the case of a famous mark is identical
or confusingly similar to or dilutive of that
mark.

9
Anti-Cybersquatting

Lanham Act 43(d)
(1)(B) In determining whether a person has a bad
faith intent a court may consider factors such
as -
(I) the trademark rights of the person
(II) consists of a legal name of the person
(III) prior use with the bona fide offering
of goods
(IV) bona fide noncommercial or fair use
(V) intent to divert consumers for
commercial gain
(VI) offer to transfer, sell, or otherwise
assign
(VII) provision of material and misleading
false contact info
(VII) registration or acquisition of multiple
domain names

10
Shields v. Zuccarini
11
PETA v. Doughney
12
Uniform Dispute Resolution

Elements
identical or confusingly similar to a trademark
no rights or legitimate interests in domain
name
domain name has been registered and is being
used in bad faith.
Evidence of Bad Faith
Registered primarily for purpose of sale to tm
owner
Registered in order to prevent tm owner from
using
Registered to disrupt competitors business
Intentionally attempting to attract users to site
for commercial gain through likelihood of
confusion

13
Uniform Dispute Resolution

Evidence of Legitimate Interest
Prior use of domain name with bona fide offering
of goods
Commonly known by domain name
Making legitimate noncommercial or fair use of
domain name, without intent for commercial gain
to misleadingly divert consumers or to tarnish
the trademark

14
Third Party Liability

Third Party Liability
Contributory Liability
(i) assist in infringing activity
(ii) knew or had reason to know of infr. activity
Vicarious Liability
(i) authority or ability to control others
behavior
(ii) direct financial benefit from infringement

15
Polo v. Chinatown
16
e-Bay Example
17
Third-Party Liability

Reasons to extend
Facilitate enforcement, lower costs
Third-parties morally culpable
Deter third-parties
Reasons to limit
Imposes costs on third-parties to monitor
Not always fair to impose burden
Not always most efficient to impose burden

18
False Advertising

Lanham Act, 43
(a) Any person who, on or in connection with any
goods or services uses in commerce any false
or misleading description of fact, or false or
misleading representation of fact, which --
(2) in commercial advertising or promotion,
misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or
another persons goods, services, or commercial
activities,
shall be liable in a civil action ...

19
JJ v. Smithkline
20
Defenses