by Lee Gesmer | Sep 14, 2005 | Trademark
Trademarks/Domain Names. Why did Jerry Falwell lose and Bill Cosby win?
Bill Cosby prevailed this week in a domain name dispute involving FATALBERT.ORG (William H. Cosby, Jr. v. Sterling Davenport). This dispute was resolved in an ICANN arbitration, which requires that the complainant prove both that the domain name was registered and used in bad faith in order to succeed. The arbitrator found that Mr. Davenport had no legitimate interest in the domain name, that he had registered it solely with the intention of trading on the fame of Cosby’s Fat Albert character, and that he sold sexually explicit products and drugs on the site, which the arbitrator found particularly offensive since the Fat Albert mark is so closely associated with children. Mr. Davenport’s for-profit conduct clearly constituted bad faith use and registration of the domain name, and he was ordered to transfer the domain name to Cosby.
Compare this with The Reverend Jerry Falwell’s attempt to gain control over FALLWELL.COM, a “gripe” site highly critical of Falwell’s conservative beliefs (Lamparello v. Falwell). In this case the US Court of Appeals for the 4th Circuit rejected Reverend Falwell’s trademark infringement claims, finding that there was no likelihood of consumer confusion, the standard for finding infringement, between Falwell’s web site and Mr. Lamparello’s gripe site. The court held that the registration and use of a domain name must be viewed in the context of the content on the entire web site, and in this case, it was clear that no one would believe that Falwell had sponsored the site, which was highly critical of him.
In rejecting Falwell’s anticybersquatting claims under the federal Anticybersquatting Consumer Protection Act, which, like an ICANN arbitration, requires a showing of bad faith registration and use of a domain name, the court found that Lamparello’s intent in registering FALLWELL.COM was for the purpose of social commentary and criticism, not to divert visitors from Falwell’s own site. Moreover, Mr. Lamparello did not profit financially from the site. As Mr. Lamparello had a legitimate basis for registering FALWELL.COM and as his use of the domain name was non-commercial, the court found no evidence of bad faith conduct on his part. The site remains active.
- Read the FATALBERT.ORG opinion here.
- Read the FALLWELL.COM opinion here
Thanks to Susan Mulholland for assisting with this post.
by Lee Gesmer | Aug 19, 2005 | Trademark
Trademarks. Google sells other companies’ trademarks as “keywords” on its Internet search engine. Whenever someone types in one of these keywords, such as GEICO, not only will Google’s search results show links to GEICO’s web site, but Google also will show advertising for other insurance companies under a banner called “Sponsored Links.” For example, when writing this blog, we searched “GEICO” on Google’s site and were shown paid links to two of GEICO’s competitors, USInsuranceonline.com and InsureMe.com.
Understandably, GEICO protested this practice of using its trademarks to direct consumers to its competitors. Given that 80% of Google’s revenues derive from this “AdWord” program (in turn causing Google to become a Wall Street darling, up three-fold in a year), Google refused to cease and desist, at which point GEICO sued for trademark infringement and unfair competition.
After a bench trial (translation: no jury) in federal court in the Eastern District of Virginia in December 2004, the Judge ruled “from the bench” (translation: she delivered her decision orally in court) that GEICO had failed to establish that the use of its trademarks only to direct Google searchers to competitors created consumer confusion (the talisman of a trademark violation). However, she ruled that Google had violated the law when a competitor used GEICO’s name in the heading or the text of the ads. Judges can be very slow, and the Judge’s written opinion was released only last week, over eight months after the trial. For all practical purposes, however, the written decision adds little to what the Judge said in December. In time-honored fashion, both GEICO and Google declared her ruling a victory.
Unfortunately, while the trademark community (yes, there is such a thing) was hoping for clarification as to the reasoning behind the judge’s oral ruling, it may still be mostly in the dark after reading the opinion.
While the opinion excoriates the design and methodology underlying the survey evidence GEICO presented at trial to show confusion (survey evidence is standard stuff in trademark cases – its how a party shows that the public has been “confused,” or not) the Judge relies on the same flawed survey in finding a likelihood of confusion between GEICO’s marks and the Google Sponsored Links in which GEICO’s marks appear in the headings or text. What’s disappointing is the decision’s failure to provide a thoughtful legal analysis of the issue that can be a guide to other online advertisers.
The parties have 30 days to settle this dispute before the trial resumes to determine whether Google or its advertisers are liable for the infringement and the damages, if any, to which GEICO may be entitled. Google faces a big gamble in continuing with the trial – if the Court finds Google liable and awards damages to GEICO, the litigation floodgates will open as other trademark owners sue Google for infringement of their marks. This volume of litigation would put Google’s entire business plan at risk. Common sense suggests that the parties will settle this dispute, with each (need I say it?) claiming victory.
- Read the opinion here.
- An extensive legal analysis of the decision appears on Professor Eric Goldman’s blog, here.
by Lee Gesmer | Jul 12, 2005 | Trademark
Trademark Law. Last year I wrote (together with Susan Mulholland, an attorney at my firm), an article on the WhenU line of cases. We reviewed the three legal decisions that had been published to date on the WhenU technology: two from the district courts in Virginia and Michigan holding that WhenU’s practice was permissible; and one, from the federal district court in New York holding that WhenU had violated the Lanham Act, the federal trademark statute.
What does WhenU do that resulted in three federal court cases? In brief, once downloaded by a user (concealed in a “Trojan Horse” application), WhenU’s software will continuously monitor (invisibly, to the user) the user’s Internet browser to determine whether content accessed by the user matches key words stored in WhenU’s client directory. When the software finds a match for an associated key word – often a trademark or service mark – it triggers the SaveNow program to transmit a WhenU-branded pop-up ad to the user’s computer. The pop-up ad is selected from a list supplied by WhenU’s advertising clients, and may be a competitor of the owner of the mark that triggered the pop-up. The pop-up ad provides a hyperlink to the web site of WhenU’s client that, if clicked on, results in the competitor’s web site opening on the user’s computer.
That was enough to send U-Haul, Wells Fargo and 1-800 CONTACTS running to court in protest. Unfortunately, they had only federal trademark law as the basis for their complaint, and the courts in Virginia and Michigan held that since WhenU didn’t “use” their trademarks in a way that was visible to potential customers — that is, it never actually displayed the trademarks — preliminary injunctions were inappropriate.
The New York federal district court disagreed, and issued a preliminary injunction.
The Second Circuit reversed that preliminary injunction on June 27, 2005, permitting WhenU to resume its use of the 1-800-CONTACTS trademark in this manner. In brief, the Second Circuit held that there was no trademark infringement because the WhenU ads do not display the 1-800-CONTACTS trademark.
This case is important decision in the developing law of the use of keywords on the Internet.
