Fighting the CyberPirates Hugh Calkins, Pine Tree Legal Assistance Becky Levine, LSNTAP Damien Riehl, Robins, Kaplan, Miller & Ciresi, LLP Protection of Legal Aid Organizations through Trademarks, Domain Names, and Keywords

Why Should Legal Aid Care About Trademarks and Domain Names?

Legal aid trademarks are often your most valuable intellectual-property assets Marks help clients obtain your services Some entities may wish to capitalize on the desperation of the vulnerable by exploiting your marks Trademarks and “brands” distinguish your services Domain names are increasingly important in a connected world Search engines are often first-used referral sources

ARLegalServices.org

ARLegalServices.com

CyberPiracy TIG project

Pine Tree Legal Assistance (PTLA) in partnership with the Legal Services National Technology Assistance Project (NTAP), received $20,000 for 2007 from the Legal Services Corporation (LSC) Funds a project that ensures the poverty law community adequately protects its entire client community from predatory websites posing as legal aid services

CyberPiracy TIG project Primary goal Protect low-income website consumers from fraud and confusion by predatory websites Second goal Ensure legal aid organizations’ statewide websites are protected from cyber-piracy

Types of Cyberpiracy Domain-name Disputes (Cybersquatters) E.g., pinetreelegal.com (Domain Grabbing) E.g., South Bronx Legal Services Deceptive Keywords E.g., Search engine results for “legal aid” include ads for-profit firms or matching services

To Learn More Stay current on issues in CyberPiracy as well as updates on the TIG project Visit the Cyber Piracy section of the LSNTAP website:

Impact on Legal Aid Programs/Clients Points to Ponder: What is the impact of Cyberpiracy on legal aid clients or potential clients? Has your program experienced complaints from people misdirected to commercial sites? How do you think we as a community can measure the impact of these non-legal service websites?

Process and Importance of Trademark Registration

Federally Registered Trademarks

Trademarks: Federal Benefits Federal Registration: Best way to protect your organization’s marks Governed by the Lanham Act Provides nationwide protection Provides presumption of a mark’s ownership and validity. Provides prima facie evidence of registrant’s exclusive right to use the mark in commerce

Trademarks: Federal Benefits Gives constructive notice of the registrant’s claim. Provides protection for entire class of related products and services Permits for treble damages for “willful” infringement Permits attorney’s fees in some cases After five years, mark becomes “incontestable,” which is the highest status trademark law can provide

Trademarks: Federal Registration Process for registering marks with Patent & Trademark Office (PTO) May file online at If an application is approved, registrants will usually receive a filing receipt in approximately six months, though the process may take as long as several years Cost varies between $275 and $ Legal Services are categorized under Class 42 (computer, scientific & legal)

Trademarks: Federal Registration Registrations have a 10-year term To remain valid, registrants must file Affidavit of Use (§ 8) 1.between the 5 th and 6 th year following registration and 2.within the year before the end of every ten-year period after registration Renewal Application (§ 9) Within the year before the expiration date of registration

State Registration of Trademarks

Trademarks: State What if you haven’t registered yet and have an issue now? Some states also provide trademark protection State trademark protection is often more limited legally than under the Lanham Act Protection is also often limited geographically to that state’s borders

Trademarks: Common Law Even if you haven’t registered a trademark, you may be entitled to common-law trademark protection However, common-law protection is also often limited to the geographic area in which the mark is used Under the common law, a plaintiff bears the burden of proving it is entitled to exclusive use of the mark

Trademarks: Common Law Use similar analysis. Often, common-law trademark claims apply similar principles to Lanham Act Use similar caselaw. State and federal courts often rely upon each other’s cases, providing a “common reservoir” of trademark precedent Accordingly, common law actions often hinge upon Lanham Act analyses

Trademarks: Common Law Unregistered common-law marks are protected locally even if someone later federally registers the mark Generally, “the national senior user of a mark cannot oust a geographically remote good-faith user who has used the mark first in a remote trade area.” McCarthy on Trademarks § 26:4 at 26-9

Pro Bono Trademark Registration As part of the TIG funded project, NTAP is organizing a group of pro bono attorneys willing to assist legal aid programs with trademark registration For more information on how to receive pro bono assistance visit:

Domain-Name Disputes (Cybersquatting)

Cybersquatting: PineTreeLegal.com

Domain Names In today’s world, domain names are often the most important use of an organization’s trademarks Malicious entities often have incentive to infringe on trademarks To directly mislead customers to their competing or related sites or To obtain “click-through” payments for their advertisements.

Domain Names: Remedies If you find that someone has a domain name that infringes on your mark, you have several remedies: Request voluntary transfer through direct contact with owner Bring UDRP action to transfer URL Bring ACPA case in Federal Court

Domain Names: Direct Contact Requesting voluntary transfer of a domain name is often the most cost-effective resolution of domain-name disputes. If a cybersquatter obtains your mark through an automated process, this may likely lead to an easy resolution. They may wish to avoid the time/expense of litigation and simply transfer domain name. Even if the registration was deliberate, a bad-faith registrant may have a change of heart when receiving a pre-litigation request.

Domain Names: UDRP If a direct request is not successful, you may wish to bring a Uniform Dispute Resolution Proceeding (UDRP). Most common remedy sought Streamlined system honed by thousands of cases over several years Effective through the ICANN registration system, providing for immediate transfer of infringing domain names

Domain Names: UDRP Process UDRP Process: Complaint filed with UDRP provider UDRP provider sends copy of complaint to domain-name registrar and to respondent Respondent files response within 20 days of commencement of proceeding Provider appoints a panel, which renders a decision within 14 days

Domain Names: UDRP Process If, within 10 business days, the adversely affected party does not “appeal” by filing suit, the registrar will cancel or transfer the domain Entire process takes approximately 45 days Plaintiffs almost always win More Information on UDRP Process:

Domain Names: UDRP Process UDRP Fees: WIPO $1,500 for one panelist (1-5 domains) National Arbitration Forum $1,300 for one panelist (1-2 domains) Asian Domain Name Dispute Resolution Centre $1,000 for one panelist (1-2 domains)

Domain Names: ACPA Alternatively, may file suit in Federal Court under the Anticybersquatting Consumer Protection Act (ACPA), When to file under ACPA? When to file under ACPA? When you seek remedies over and above cancellation or transfer of a domain name If you anticipate the cybersquatter will challenge the UDRP result in court anyway Drawbacks to ACPA filing: Drawbacks to ACPA filing: Much more expensive than UDRP proceeding Often takes much longer to complete

Domain Names: ACPA Remedies under the ACPA Cancellation or transfer of domain name to mark’s owner Defendant’s profits, actual damages, costs, and attorney fees Possible treble damages In lieu of actual damages, plaintiffs may elect for statutory damages of between $1,000 and $100,000 per domain name 15 U.S.C. § 1117(d).

Domain Names: ACPA “In Rem” Plaintiffs may bring ACPA suit even if the defendant cannot be found, by bringing an “in rem” suit against the domain name: If the domain name violates the rights of a registered mark’s owner If the court finds that the owner cannot obtain in personam jurisdiction over defendant, or through due diligence, owner was unable to find prospective defendant

Domain Names: ACPA “In Rem” Remedies for “In Rem” suits are limited to court orders for domain’s forfeiture or cancellation or domain’s transfer Money damages are not available. Accordingly, if you cannot find a prospective defendant, or if you cannot obtain jurisdiction over them, then it may be best to simply file a UDRP action remedies are the same.

Search Engine Results

Trademarks also important in context of search engine “sponsored links” Companies purchase ads to accompany search-engine queries e.g., search for “flower” gets FTD ad These ads are referred to as “keyword” advertising or, in marketing circles, “pay-per-click” (PPC) For example, a for-profit entity may buy advertising space when someone enters the query “legal aid” or “legal assistance”

Search Engine Results Search engines often combine several keywords (possibly including marks), sometimes called “broad matching” Other search engines require advertisers to purchase bundles of several keywords Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1023 (9th Cir. 2004).

Deceptive Keyword Advertising Can Coke buy ads for “Pepsi” searches? Similarly, may a for-profit site legally purchase keyword ads for “legal aid”? Or “Pine Tree Legal”? A French court has criticized Google for suggesting third-party marks as keywords Société des Hotels Meridien v. S.A.R.L. Google France, NRG 04/3772 (T.G.I. Nanterre, Dec. 16, 2004), available at

Search Engine Results: IIC Courts have held that diverting consumers through keyword searches may result in liability under the doctrine of Initial Interest Confusion (IIC) Professor McCarthy states that “[i]nitial interest confusion can be viewed as a variation on the practice of ‘bait and switch.’” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:26 (4th ed. 2003).

Search Engine Results: IIC The Ninth Circuit in Brookfield defined IIC as “the use of another’s trademark in a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.” Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999).

Search Engine Results: IIC A recent district court criticized Brookfield’s analysis, holding Keyword advertising is a “use in commerce,” but Criticizing Brookfield, holding instead that use of keyword-triggered ads and metatags cannot confuse consumers if the ultimate search results do not display plaintiff’s trademarks. J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No (E.D. Pa. Jan. 4, 2007).

Search Engine Liability In 2004, just before its IPO, Google agreed to investigate trademark complaints “as a courtesy” and would “require the advertiser to remove the trademarked term from the content of the ad.”

Search Engine and Competitor Liability So are search engines and competitors liable for competitive keywords? The state of the law is a mess Cases are all over the map

Prevalence of deceptive Keywords in Legal Aid: Research searching 75 legal aid program names in the major search engines (Google, Yahoo, MSN and AOL) revealed over 1,000 instances of deceptive keyword use 5-10 “common offenders” Companies who repeatedly use legal aid program names as ad-words

Legal Match Lawsuit and Settlement

LegalMatch Shall Not Use the Disputed Marks. LegalMatch agrees that it shall not use any of the Pine Tree Marks. LegalMatch Shall Remove Legal Aid Organizations’ Marks. Any legal aid organization can request that their name be removed. LegalMatch Shall Not Use the Term “legal aid” in Advertising. * * * because “legal aid” is a term of art meaning “aid provided by an organization established especially to serve the legal needs of the poor.”

Search Engine Results

Keywords and Search Engines Points to Ponder: What is the best approach to the “keyword issue”: Go after individual violators? Work with search engines on a possible solution? Pros and cons of both approaches.

Dangers of Clients’ Online Activities

Other Impacts of Online Activities

Relevance to Legal Aid

How is this relevant to legal aid orgs? It’s the money. Legal services is big business; many attorneys and organizations will gladly pay for click-through client referrals. Vulnerable clients. Legal aid serves those who may not be as Internet savvy, making them an easier target for such deception. Fight back? Advertisers who infringe on a Legal Aid mark may know that those organizations may have few resources to allot to vindicate their rights.

Relevance to Legal Aid How can Legal Aid orgs protect themselves? Think about registering your organization’s name as a federal (and possibly state) trademark/servicemark Auto-renew domain names so others do not swoop in when they expire (registrars often provide for free) Ensure domain-name registrar lists your name as both (1) Registrant and (2) Admin (3) Tech can stay third-party Purchase domain-name variations clients may likely use Domain names are as economical as $8/year

Relevance to Legal Aid How can Legal Aid orgs protect themselves? Query search engines to see if any entity is trading upon your organization’s goodwill Enter different top-level domains for your URL E.g., lsc.gov vs. lsc.com vs. lsc.org vs. lsc.net Do quick “typosquatting” searches to see if anyone has a domain name that intentionally misspells your name E.g., LegalServiceCommunity.org (no “s” in “services”) E.g., LegalServiceComunity.org (misspells “community”)

Relevance to Legal Aid How can Legal Aid orgs protect themselves? If those preventative measures prove unsuccessful: Contact responsible party for possible amicable resolution If domain names are involved, bring UDRP action If UDRP unsuccessful, may choose to bring suit under ACPA

Practical Steps: Trademarks Federally register your trademark Possibly obtain volunteer IP attorney to do this for you Visit for more information about availability of pro bono attorneys

Practical Steps: Deceptive Keywords 1. Search for your own name 2. Follow up with Advertiser 3. If that fails, follow up with Search Engines themselves 4. Might be more sympathetic for Legal Aid organizations (PR sensitivity to misleading low-income persons)

Practical Steps: Deceptive Keywords Add this to your intake questionnaire Did you have trouble finding us? Did you look on the Internet? Were you misdirected? Ask community resources, which may have seen such misdirection Libraries Community Centers (e.g., women’s shelters, homeless shelters, courts)

Questions?

Appendix of Legal Citations

Search Engine Results Good law review analysis of keyword advertising liability: Eric Goldman, Deregulating Relevancy in Internet Trademark Law, 54 Emery L.J. 507 (2005), available at

Search Engine Results Relevant cases: Savin Corp. v. The Savin Group, 2004 WL , at *17 n.13 (2d Cir. Dec. 10, 2004) (“Internet initial interest confusion requires a showing of intentional deception.”) Google v. American Blind, 2005 WL (N.D. Cal. Mar. 30, 2005) (trademark-triggered sponsored links satisfy required trademark-infringement element of commercial use). Bayer HealthCare, LLC v. Nagrom, Inc., 2004 WL (D. Kan. Sept. 7, 2004) (holding metatag use of mark to heighten search-engine rank created initial interest confusion). Netbula v. Distinct, 2003 U.S. Dist. LEXIS 1019 (N.D. Cal. Jan. 15, 2003) (in suit against competitor for initial interest confusion based on metatags and Google keyword purchases, allowing counterclaim for initial interest confusion because plaintiff’s posted stories about the lawsuit were picked up by search engines). Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002) (enjoining metatag use of mark and requiring defendant’s home page to include disclaimer).

Search Engine Results Relevant cases (cont.): Reed Elsevier v. Innovator, 105 F. Supp. 2d 816 (S.D. Ohio 2000) (in suit alleging defendant’s purchase of trademarked keywords in banner-ad placement, denying motion to transfer venue). Horphag Research, Ltd. v. Pellegrini, 337 F.3d 1036, (9th Cir. 2003) (holding that competitor’s use of mark in metatags and on website was neither “classic” nor “nominative” fair use). Bayer Corp. v. Customs School Frames, LLC, 259 F. Supp. 2d 503 (E.D. La. 2003) (gray-market reseller’s use of mark in keywords impermissibly resulted in initial interest confusion). J.K. Harris & Co. v. Kassel, 253 F. Supp.2d 1120 (N.D. Cal. 2003) (keywords permitted as nominative fair use where defendant used marks to make statements about plaintiff’s business practices, though court prohibited “excessive” use of mark). Nissan Motor Co., Ltd. v. Nissan Computer Corp., 204 F.R.D. 460 (C.D. Cal. 2001) (stating in dicta that trademark infringement could result from purchasing trademarked search engine keywords to manipulate results).

Search Engine Liability: Netscape Four years after it decided Brookfield, the Ninth Circuit held in Playboy that unlabeled banner ads tied to keyword trademarks may constitute infringement, since consumers may believe, if only initially, that the ads are sponsored by (or related to) the trademark owner. But the panel limited its holding to unlabeled ads, suggesting that it may have held differently if the ad’s source had been clearly identified. Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020 (9 th Cir. 2004).

Search Engine Liability: Wallpaper In a pair of cases, American Blind & Wallpaper Co. sued Google, arguing that the search engine unlawfully sold the company’s trademarks as keywords Google responded that it was not required to block third parties from purchasing keywords of generic or descriptive phrases Google v. Am. Blind & Wallpaper Factory, Inc., No. C (N.D. Cal. filed Nov. 26, 2003) (decl. jgmt. action) Am. Blind & Wallpaper Factory, Inc. v. Google, No. 04-cv (S.D.N.Y. filed Jan. 27, 2004).

Search Engine Liability: Geico Insurer GEICO sued Google, claiming that the search engine improperly sold “sponsored links” for its trademarks Court: No infringement if ad does not contain mark; If ad contains mark, then likelihood of confusion Gov’t Employees Ins. Co. v. Google, Inc., No. 1:04cv507, 2005 WL (E.D. Va. Aug. 5, 2005).

Competitor Liability: Office Depot Competitors’ liability for keyword advertising is currently being tested Office Depot, Inc. v. Staples, Inc., No (S.D. Fla. filed Oct. 4, 2005). Staples allegedly contracted with Google to display Staples’ ads when users searched for “Viking,” which is the name of a subsidiary of Office Depot.

Competitor Liability: Office Depot Staples counterclaimed that Office Depot purchased keywords “staples” and “staples tv ad”