Trademarks in CyberspaceTrademarks in Cyberspace

Victor H. Bouganim

WCL, American University

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

CyberMarksCyberMarks

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

Web Design as Trade DressWeb 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 DisplaysTrafFix Devices v. Marketing DisplaysU.S. Supreme Court, 2001U.S. Supreme Court, 2001

Marketing Displays holds expired utility patents for a dual-spring 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 NamesDomain 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 DefinitionDomain Name DefinitionThe 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 Act2000, Sec. 3005

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

Internet Top Level Domain Internet Top Level Domain “Generic” TLDs .com commercial .org organization .net network .gov government .edu education .mil military .int

international

ISO Country Code TLDs . jp Japan .ch Switzerland .dk Denmark .fr France .uk United

Kingdom . il Israel .us USA

New TLDs are about to be introduced.biz .pro .info .name

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

Internet AuthoritiesInternet 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

ICANNICANN

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

ICANNICANNInternet Corporation for Assigned Internet Corporation for Assigned

Names and NumbersNames 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 RegistrationDomain 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 NamesValue of Domain 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

On the On the Internet, Internet,

the name of the name of the game is the game is

names!names!

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

CybersquattingCybersquattingRegistering 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

DilutionDilutionThe 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 ActFederal Trademark Dilution Act1995, 15 USC 1125 § 1125(c)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 AnalysisDilution AnalysisRelevant 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. ToeppenPanavision Int’l, L.P. v. Toeppen9th Circuit (1998)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 NewsTimes Mirror v. Las Vegas Sports News3rd Cir. 20003rd 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 TagsHTML 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 - ExampleHTML Meta Tags - ExampleMicrosoft Home PageMicrosoft 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 EntertainmentBrookfield Comm. v. West Coast Entertainment9th Circuit (1999)9th Circuit (1999)

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.

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 Anticybersquatting Consumer Protection Act 1999Protection 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.