Jan. 2008 Quick Links (IP Edition)

By Eric Goldman

Trademarks and Domain Names

* Adidas America, Inc. v. Payless Shoesource, Inc., 2007 WL 4482201 (D. Oregon Dec. 21, 2007). This case (1) discusses whether advice of counsel is a defense against willfulness in the trademark context, and (2) concludes that Oregon’s state anti-dilution law is preempted by Bonito Boats.

* More evidence that price does affect brand perceptions: “A $90 wine tastes better than the same wine at $10.

* Visa Int’l Service Assoc. v. JSL Corp., No. 2:01-CV-00294, 2007 U.S. Dist. LEXIS 95334 (D. Nev. Dec. 27, 2007). The domain name “evisa.com” actually dilutes the Visa brand because it will disappoint people who enter the domain name looking for Visa. That’s SO 1997!

* Salle v. Meadows, 6:07-cv-1089-Orl-31DAB (M.D. Fla. Dec. 17, 2007). A rare case interpreting 15 USC 1129, the law restricting the registration of domain names incorporating a person’s name.

* The “Surf City” USA lawsuit between Huntington Beach and a Santa Cruz retailer has settled.

* I’ve seen this issue come up a few times now. Trademarks 1 and 2 are similar. A Google search for TM1 includes the question “Did you mean: TM2?” How might this prompt affect an infringement analysis?

* There has been a lot of domain name craziness in the past few weeks, and unfortunately I couldn’t keep up with all of it. So a few brief remarks on two of the more interesting developments:

- First, NSI has admitted that it grabs domain names that people are researching, preventing the potential customers from using any other domain name registrar for 5 days and potentially helping swipers grab the domain name thereafter. NSI’s practice is completely sleazy because of the unique retailing environment for domain names. Domain names are a single-item good that is being simultaneously and competitively sold by multiple retailers (the registrars)–but through this practice, NSI expands its inventory and simultaneously shrinks the inventory of competing retailers before NSI has actually made the sale. ICANN needs to shut down this type of inventory abuse NOW.

- Second, Google has announced that it will not provide AdSense ads (through its domain name parking program) to domain names that may be kited (i.e., repeatedly reregistered during the free 5 day trial period). That’s great, Google, but why don’t you simply say that you won’t display ads on any domain names in the first 5 days of their registration? That policy change would kill domain name tasting, but Google’s foot-dragging here makes me wonder just how much money Google is making from domain name tasting. C’mon Google, I think you can do better.

Copyright and File-Sharing

* Virgin Records v. Thompson (5th Cir. Jan. 4, 2008). Man improperly sued by the RIAA dragnet can’t recover his attorneys’ fees. This turns on the fact that he didn’t respond to the pre-litigation contacts to turn over his adult daughter who did the file-sharing.

* Atlantic Recording Corp. v. Serrano, 2007 WL 4612921 (S.D. Cal. Dec. 28, 2007). The court rejects the trespass to chattels and CFAA claims of a P2P file sharer against the parties investigating him by checking out his share directory.

* Lots of action over takedown notices:

- The 10th Circuit says that a bogus takedown notice (in this case, an eBay NOCI under its VeRO program) supports jurisdiction in the targeted vendor’s home court. Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 2008 WL 217724 (10th Cir. Jan. 28, 2008). See related litigation from the same eBay vendor.

- For a contrary ruling, see Doe v. Geller, 2008 WL 314498 (N.D. Cal. Feb. 4, 2008).

- Colon v. Innovate! is a lawsuit initiated by an eBay seller that claimed an IP owner was misusing eBay’s VeRO program to shut down his auctions (which were priced below the IP owner’s minimum pricing program although the seller wasn’t bound to the program). Innovate made an interesting tactical move (blunder?) to implead eBay into the lawsuit; eBay then countersued Innovate for sending bogus NOCIs.

* In a bizarre press release issued almost 2 months after the applicable ruling, John Dozier of the Dozier Internet Law Firm extolled the ruling in the 43sb.com case (a case the Dozier firm wasn’t involved with) where the court suggested that cease-and-desist letters were copyrightable. This sparked yet another blogswarm on this topic; see, e.g., Paul Levy, Marc Randazza, Eugene Volokh, Frank Pasquale, Joe Gratz, 43sb.com, Ron Coleman, Overlawyered. It’s clear this issue needs a more definitive resolution by the courts or the legislature. Fortunately, a number of people would welcome the opportunity to help Dozier test if his legal theory will fly in court. If you’ve been contacted by John Dozier threatening you for infringing the copyright in his firm’s cease-and-desist letters and would be interested in help arranging an appropriate defense, please contact me.