Transcript Trademarks in Cyberspace

Trademarks in Cyberspace
Victor H. Bouganim
WCL, American University
CyberMarks
Victor H. Bouganim, WCL, American University, Spring 2001
Web Design as Trade Dress
 Requirement
for Protection
– Two Pesos, S. Ct. 1992
 The
trade dress is inherently distinctive, or
 The trade dress has acquired secondary meaning
– Wal-Mart, S. Ct. 2000
 Limits
the Two Pesos holdings. In essence, requiring
secondary meaning in any case.
 Distinction: Product design / Product packaging
 Are
the design elements merely functional?
 Overlap with copyrights and design rights
Victor H. Bouganim, WCL, American University, Spring 2001
TrafFix Devices v. Marketing Displays
U.S. Supreme Court, 2001




Marketing Displays holds expired utility patents for a dualspring design used to keep temporary road signs upright in
windy conditions.
After the patents expired, TrafFix sold similar stands.
The Court reversed the Sixth Circuit, and held that respondent’s
dual-spring road sign design, the subject of an expired utility
patent, was not eligible for trade dress protection under the
Lanham Act due to its functional feature.
The Court thus resolved the issue of how much weight an
expired utility patent should be given in determining the
functionality of a claimed trade dress in a product’s
design.
Victor H. Bouganim, WCL, American University, Spring 2001
Domain Names
 The
hierarchical method used to identify
different computers so communications in
the form of data packets may be properly
routed between computers on the Internet.
 Maps user-friendly name like
“www.victorium.com” to numeric address
like “198.105.232.6”.
 Provides “stable” address.
Victor H. Bouganim, WCL, American University, Spring 2001
Domain Name Definition
 The
term 'domain name' means any
alphanumeric designation which is
registered with or assigned by any
domain name registrar, domain name
registry, or other domain name
registration authority as part of an
electronic address on the Internet.
Anticybersquatting Consumer Protection Act
2000, Sec. 3005
Victor H. Bouganim, WCL, American University, Spring 2001
Internet Top Level Domain
“Generic” TLDs







.com
.org
.net
.gov
.edu
.mil
.int
commercial
organization
network
government
education
military
international
ISO Country Code TLDs
 . jp
Japan






.ch
.dk
.fr
.uk
. il
.us
Switzerland
Denmark
France
United Kingdom
Israel
USA
New TLDs are about to be introduced
.biz .pro .info .name
Victor H. Bouganim, WCL, American University, Spring 2001
Internet Authorities
 NSF-
National
Science Foundation
 IETF - Internet
Engineering Task
Force
 IANA - Internet
Assigned Numbers
Authority
 ISOC
- Internet Society
 InterNIC - International
Network Information
Center
 NSI - Network
Solutions Incorporated
ICANN
Victor H. Bouganim, WCL, American University, Spring 2001
ICANN
Internet Corporation for Assigned
Names and Numbers
Non-profit corporation that was formed to assume
responsibility for the IP address space allocation.
 November 1998: Agreement between the Department of
Commerce and ICANN to handle functions previously
performed under U.S. Government contract by IANA and
other entities.
 ICANN is responsible for the Internet domain name
system management, including approval of domain name
registrars and resolving disputes over domain names.

Victor H. Bouganim, WCL, American University, Spring 2001
Domain Name Registration
 Based
on a principle of “first come,
first served”.
 Done
by private entities, not in authority to
decide upon priorities or any examination.
 When domain names conflicts with TM,
resolution of disputes may be performed by
ICANN, WIPO and other entities.
Victor H. Bouganim, WCL, American University, Spring 2001
Value of Domain Names
On the
Internet,
the name of
the game is
names!
AltaVista.com: Compaq paid
$3.3 million in 1999
 Business.com: eCompanies
paid $7.5 million in 1999
 Loans.com: Bank of America
paid $3 million in 2000
 America.com: asking price is
$30 million
 Hell.com: opening bid is
$8 million

Victor H. Bouganim, WCL, American University, Spring 2001
Cybersquatting
 Registering
domain names in bad faith for
purposes such as – to deprive the trademark owner of the domain
name
– to sell the registered domain name
– abusive formats of the trademark
“trademark-sucks”
Victor H. Bouganim, WCL, American University, Spring 2001
Dilution
 The
lessening of the capacity of a
famous mark to identify and distinguish
goods or services, regardless of the
presence or absence of – (1) competition between the owner of the
famous mark and other parties, or
– (2) likelihood of confusion, mistake, or
deception.
15 U.S.C. Sec. 1127
Victor H. Bouganim, WCL, American University, Spring 2001
Federal Trademark Dilution Act
1995, 15 USC 1125 § 1125(c)
The owner of a famous mark shall be
entitled…to an injunction against
another person’s commercial use in
commerce of a mark or trade name, if
such use begins after the mark has
become famous and causes dilution of
the distinctive quality of the mark…
Victor H. Bouganim, WCL, American University, Spring 2001
Dilution Analysis
Relevant Factors
 similarity
of the
trademarks
 similarity of the products
 sophistication of relevant
consumers
 predatory intent
 reputation of the
trademark
Victor H. Bouganim, WCL, American University, Spring 2001
Panavision Int’l, L.P. v. Toeppen
9th Circuit (1998)




Toeppen “business” is to register trademarks as domain names
and then sell them to the rightful trademark owners; he acts as
a “spoiler,” preventing Panavision and others from doing
business on the Internet under their trademarked names unless
they pay his fee.
Panavision sued Toeppen for dilution of its marks.
Toeppen argued that his use of Panavision’s trademarks
simply as domain names was not a commercial use.
The court found that Toeppen made commercial use of
Panavision’s trademarks and his conduct diluted those
marks.
Victor H. Bouganim, WCL, American University, Spring 2001
Times Mirror v. Las Vegas Sports News
3rd Cir. 2000



The Third Circuit held that famousness within a niche market is
sufficient to constitute fame under the FTDA, and upheld a
finding that Times Mirror’s “Sporting News” was famous within
the sports publications market.
The court affirmed an issuance of a preliminary injunction on
dilution grounds.
The dissent pointed out that the FTDA was meant only to apply
to truly famous marks like “Kodak,” and that this holding
threatens to extend the FTDA well beyond its intended scope,
perhaps to the point of eclipsing traditional trademark
infringement analysis.
Victor H. Bouganim, WCL, American University, Spring 2001
HTML Meta Tags
 Meta-tags
consist of text coding which is hidden
from normal view and located within a specially
designated portion of an HTML code, which
generates a Web page.
 In co-operation with a search engine, a meta-tag
may be used to associate keywords to a particular
page.
 Uses of trademarks in ways which cause search
engines to improperly associate Web pages with
trademarks have created allegations of TM
violations.
Victor H. Bouganim, WCL, American University, Spring 2001
HTML Meta Tags - Example
Microsoft Home Page
<HTML>
<HEAD>
<TITLE>Welcome to Microsoft's Homepage</TITLE>
<META NAME="KEYWORDS" CONTENT="products;
headlines; downloads; news; Web site; what's new; solutions;
services; software; contests; corporate news;" />
<META NAME="DESCRIPTION" CONTENT="The entry
page to Microsoft's Web site. Find software, solutions and
answers. Support, and Microsoft news." />
<META NAME="CATEGORY" CONTENT="home page" />
Victor H. Bouganim, WCL, American University, Spring 2001
Brookfield Comm. v. West Coast Entertainment
9th Circuit (1999)



Issue: whether federal trademark and unfair competition laws
prohibit a video rental store chain from using an entertainmentindustry information provider’s trademark in the domain name
of its web site and in its web site’s meta-tags.
The court found that Brookfield was the senior user because it
marketed “MovieBuff” products well before West Coast began
using “moviebuff.com” in commerce.
The court held that the district court erred in concluding that
Brookfield failed to establish a likelihood of success on its
claim of being the senior user and concluded that West Coast’s
mark had created a likelihood of confusion.
Victor H. Bouganim, WCL, American University, Spring 2001
Anticybersquatting Consumer
Protection Act 1999
Prohibiting registration or use of an
Internet domain name that is  confusingly
similar to a distinctive
trademark;
 confusingly similar to, or dilutive of, a
famous mark;
 a trademark already registered by another
entity.
Victor H. Bouganim, WCL, American University, Spring 2001