Trademarks in Cyberspace Victor H. Bouganim WCL, American University

Victor H. Bouganim, WCL, American University, Spring 2001 CyberMarks

Web Design as Trade Dress F Requirement for Protection –Two Pesos, S. Ct u The trade dress is inherently distinctive, or u The trade dress has acquired secondary meaning –Wal-Mart, S. Ct u Limits the Two Pesos holdings. In essence, requiring secondary meaning in any case. u Distinction: Product design / Product packaging F Are the design elements merely functional? F Overlap with copyrights and design rights

Victor H. Bouganim, WCL, American University, Spring 2001 TrafFix Devices v. Marketing Displays U.S. Supreme Court, 2001 F Marketing Displays holds expired utility patents for a dual- spring design used to keep temporary road signs upright in windy conditions. F After the patents expired, TrafFix sold similar stands. F 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. F 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 F 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. F Maps user-friendly name like “ to numeric address like “ ”. F Provides “stable” address.

Victor H. Bouganim, WCL, American University, Spring 2001 Domain Name Definition F 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 l.comcommercial l.orgorganization l.netnetwork l.govgovernment l.edueducation l.milmilitary l.intinternational ISO Country Code TLDs l. jpJapan l.chSwitzerland l.dkDenmark l.frFrance l.ukUnited Kingdom l. ilIsrael l.usUSA New TLDs are about to be introduced .biz .pro .info .name

Victor H. Bouganim, WCL, American University, Spring 2001 Internet Authorities F NSF- National Science Foundation F IETF - Internet Engineering Task Force F IANA - Internet Assigned Numbers Authority F ISOC - Internet Society F InterNIC - International Network Information Center F NSI - Network Solutions Incorporated F ICANN

Victor H. Bouganim, WCL, American University, Spring 2001 ICANN Internet Corporation for Assigned Names and Numbers F Non-profit corporation that was formed to assume responsibility for the IP address space allocation. F 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. F 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 F Based on a principle of “first come, first served”. F Done by private entities, not in authority to decide upon priorities or any examination. F 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 F AltaVista.com: Compaq paid $3.3 million in 1999 F Business.com: eCompanies paid $7.5 million in 1999 F Loans.com: Bank of America paid $3 million in 2000 F America.com: asking price is $30 million F Hell.com: opening bid is $8 million On the Internet, the name of the game is names!

Victor H. Bouganim, WCL, American University, Spring 2001 Cybersquatting F 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 u “trademark-sucks”

Victor H. Bouganim, WCL, American University, Spring 2001 Dilution F 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 F similarity of the trademarks F similarity of the products F sophistication of relevant consumers F predatory intent F reputation of the trademark

Victor H. Bouganim, WCL, American University, Spring 2001 Panavision Int’l, L.P. v. Toeppen 9th Circuit (1998) F 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. F Panavision sued Toeppen for dilution of its marks. F Toeppen argued that his use of Panavision’s trademarks simply as domain names was not a commercial use. F 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 F 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. F The court affirmed an issuance of a preliminary injunction on dilution grounds. F 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 HTML Meta Tags F 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. F In co-operation with a search engine, a meta-tag may be used to associate keywords to a particular page. F 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 Welcome to Microsoft's Homepage

Victor H. Bouganim, WCL, American University, Spring 2001 Brookfield Comm. v. West Coast Entertainment 9th Circuit (1999) F Issue: whether federal trademark and unfair competition laws prohibit a video rental store chain from using an entertainment- industry information provider’s trademark in the domain name of its web site and in its web site’s meta-tags. F The court found that Brookfield was the senior user because it marketed “MovieBuff” products well before West Coast began using “moviebuff.com” in commerce. F 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 - F confusingly similar to a distinctive trademark; F confusingly similar to, or dilutive of, a famous mark; F a trademark already registered by another entity.