Trademarks Domain Names CJ 341IA 241 Cyberlaw Cybercrime

Trademarks & Domain Names CJ 341/IA 241 – Cyberlaw & Cybercrime Lecture #15 M. E. Kabay, Ph. D, CISSP-ISSMP School of Cybersecurity, Data Science & Computing Norwich University 1 Copyright © 2019 M. E. Kabay. All rights reserved.

Topics 2 Trademark s Domain Names Cybersquatting Internation al protection Copyright © 2019 M.

Trademarks ØPurpose ØDefinition and Types ØClasses of Marks ØApplication and Exceptions to Grant ØNature

Examples of Marks 4 Copyright © 2019 M. E. Kabay. All rights reserved.

Purpose of Trademarks Ø Represent origin of goods or services Ø For the producer q. Use symbol or other designation q. Represent who makes goods or provides service q. Reap financial rewards resulting from past quality Ø For the consumer q. Allow quick recognition of goods or services as being from same manufacturer or provider q. Prevent confusion and counterfeits 5 Copyright © 2019 M. E. Kabay. All rights reserved.

Definition and Types of Marks Ø Trademark q. Word, name, symbol, device or combination q. Used to distinguish goods from other similar goods Ø Service mark q. Identifying and distinguishing services Ø Collective mark q. TM or SM q. Coöp, association, union, guild Ø Certification mark q. Assertion of compliance with standards or origin by certifying organization 6 Copyright © 2019 M. E. Kabay. All rights reserved.

Trademark Policies 7 Ø Co-exist at Federal and State levels Ø Grounded in unfair competition principles q “…unfair competition doctrines are aimed at preventing the unfair consequences that arise when competitors make it difficult for consumers to locate the goods they want” (Burgunder p. 521). üCharacteristics of unfair competition 1. Symbol or device (trademark) used by one company 2. Competitor uses symbol or device that is similar, potential causing confusion 3. Competitor knowingly, or should have known, about prior symbol or device use Ø Further economic objectives – i. e. efficiency Copyright © 2019 M. E. Kabay. All rights reserved.

US Legal Protection of Trademarks: The Lanham Act Ø State Level: q Similar to federal protection, but with geographical limitations Ø Federal Level: q Trademark Protection Act of 1946 – a. k. a. the Lanham Act q Protects words, names, symbols, or devices used to distinguish the sources of goods or services q In 15 USC § 1114 = § 32 of Lanham Act ü Use likely to § Cause confusion § Cause mistake q Civil law § Deceive http: //www. bitlaw. com/source/15 usc/ 8 Copyright © 2019 M. E. Kabay. All rights reserved.

Lanham Act – cont’d Ø 15 USC § 1125 = Lanham Act § 43 Ø Word, term, name, symbol, device, or combination q. Likely to cause confusion, mistake or deception q. Affiliation, connection, association with person q. Origin, sponsorship, approval q. Goods, services, commercial activities Ø Commercial promotion or advertising q. Nature, characteristics, qualities q. Geographical origin 9 Copyright © 2019 M. E. Kabay. All rights reserved.

Classes of Marks (1) Ø Fanciful q. Invented words; e. g. , Alera, Adario, Elantra q. Arbitrary; e. g. , Cougar, Pavillion q. Immediate protection Ø Suggestive – ordinary words or combinations q. Connotes quality, ingredient, characteristics but not substance; e. g. , Pest. Patrol, Safer. Site q. Immediate protection 10 Copyright © 2019 M. E. Kabay. All rights reserved.

Classes of Marks (2) Ø Descriptive – ordinary words w/ secondary meaning – primary meaning is source q. Yellow Pages, Blue Flame q. Protection of secondary meaning q. Fair use possible Ø Generic – class of product/service – no protection under Lanham Act q“You have mail, ” “Instant messaging” q“E-mail, ” “Web site, ” “E-commerce” 11 Copyright © 2019 M. E. Kabay. All rights reserved.

Microsoft Corp. v. Lindows. com 2002 Ø 1995: PTO registered the name Windows for Microsoft Ø 2001: Microsoft sued Lindows. com, a Linux-based operating system development and distribution company, claiming name infringed on the Windows registered trademark Ø Windows questioned as a Generic mark q Lindows. com claimed PTO erred in registering Windows because generic term describing windowing capability of graphical user interfaces prior to Microsoft’s first OS release q 2002: Trial judge indicated generic term possibly improperly registered Ø Parties settled dispute; Lindows adopted new name Ø Note: Marks that become generic over time can lose protected status (e. g. , “aspirin”) 12 Copyright © 2019 M. E. Kabay. All rights reserved.

Abercrombie & Fitch v. Hunting World 1976 Ø A&F sued Hunting World, claiming infringement of its registered trademarks for the word “safari” on clothing Ø Hunting World claimed that the word is common Ø District Court q Determined “safari” generic q Could not distinguish A&F’s goods q Dismissed A&F’s complaint q Cancelled A&F’s registered “safari” trademarks q A&F appealed Ø Court of Appeals q Explained that there are four categories of trade protection terms q Found term “safari” to be generic with respect to some types of clothing, but not with others (e. g. , boots) 13 Copyright © 2019 M. E. Kabay. All rights reserved.

Federal Registration Ø Registration provides notice to others of: q. Registrant’s exclusive rights to use mark Ø Registration = Prima facie evidence of validity q. Burden on challenger of mark q. Once registered for >5 years, not possible to contest mark Ø Availability of enhanced remedies for trademark counterfeiting TM 14 Copyright © 2019 M. E. Kabay. All rights reserved. v ®

Application for Registered Trademark Ø Register TM with US Patent & Trademark Office (PTO) Ø Application q 240, 000 applications per year Ø Payment of fees q 2010: fee = $850 15 http: //www. uspto. gov/web/offices/ac/qs/ope/fee 031 913. htm#tm Ø Drawing of mark Ø Examination process Ø Approval, amendment, or denial Copyright © 2019 M. E. Kabay. All rights reserved.

Exceptions to Grant of Trademark Ø Immoral, deceptive, scandalous Ø Falsely implies connection w/ person, institution, national symbol Ø Flag of US or other government entity Ø Name, portrait, signature of living person or deceased president of US (w/out permission) Ø Resembles existing mark Ø Mere description or surname q. Mc. Donald’s has sued many family firms established before fast-food chain started q. Lost cases 16 Copyright © 2019 M. E. Kabay. All rights reserved. Prof Kabay’s new trademark for his course materials – or not.

Nature of Protection for Trademarks Ø Prevent confusion by users Ø Factors considered by the courts q. Similarity of marks q. Similarity of goods q. Relationship between parties offering goods q. Classes of purchasers q. Evidence of confusion q. Defendant’s intent q. Strength of plaintiff’s mark 17 Copyright © 2019 M. E. Kabay. All rights reserved.

Relief for Violation of Trademarks Ø Injunction prohibiting continued violation Ø Seizure of goods and counterfeit marks Ø Recovery of plaintiff’s profits Ø Destruction of infringing goods and advertising Ø Recovery of actual damages incurred (loss of profits, goodwill) Ø Recovery of legal costs including attorney’s fees in some cases 18 Copyright © 2019 M. E. Kabay. All rights reserved.

Dilution Ø Occurs when distinctive or well-known mark is used by another company for unrelated product or service q. Confusion not main concern because of dissimilarity üE. g. , Kodak paper and Kodak speakers Ø Federal Trademark Dilution Act (FTDA) q 15 USC § 1051 q. Law since 1996 q. Primary tool for dilution protection in US q(see also later in notes) 19 Copyright © 2019 M. E. Kabay. All rights reserved.

Checkpoint Systems Inc. vs Check Point Software Technologies Ø The companies q. Checkpoint Systems provides antishoplifting equipment q. Check Point Software provides firewalls Ø The claim q. Checkpoint accused Check Point of infringing on its trademark Ø The ruling q. Court refused to grant injunction q. Argued there was no likelihood of confusion 20 Copyright © 2019 M. E. Kabay. All rights reserved.

Trademark Protection and Computers Ø Trademark principles apply in computer / technology context q. E. g. , protection available for shape and appearance of hardware (product design) Ø Apple Computer’s i. Mac q. Design big hit q 1999: Apple filed suit against Future Power, Inc. when it intended to sell a PC like i. Mac q. Court issued a preliminary injunction 21 Copyright © 2019 M. E. Kabay. All rights reserved.

Domain Names ØThe Domain Name System (DNS) ØLooking Up DNS Info ØDispute resolution ØHyperlinks

The Domain Name System Ø Converts words (e. g. , www. norwich. edu) into IP addresses (e. g. , 192. 149. 109. 153) Ø Early years – DARPA contract with USC Ø 1992: NSFNET opened to. com users q. Network Solutions Inc. became registrar for. com, . net, . org Ø 1998: ICANN (Internet Corporation for Assigned Names and Numbers) q. Established by US govt q. Highly controversial – much political turmoil over actions, governance qhttp: //www. icann. org/ 23 Copyright © 2019 M. E. Kabay. All rights reserved.

Looking Up DNS Information (1) 24 Copyright © 2019 M. E. Kabay. All rights

Looking Up DNS Information (2) Home page: http: //samspade. org/ 25 Download: http: //preview.

Dispute Resolution Ø Early years: arbitrary decisions criticized by courts Ø New rules: complainant must show q. Domain name same or confusingly similar to TM or SM q. Registrant has no legitimate rights or interest to domain name q. Registered and used in bad faith Ø Bad faith shown by primary purpose of registration q. Extortion of money for name; or q. Interference with complainant’s business; or q. Deliberate attempt to attract visitors for commercial gain by causing confusion 26 Copyright © 2019 M. E. Kabay. All rights reserved.

Hyperlinks and Trademarks 27 Cannot legally use Ø Others’ trademarks or logos on a Web site without permission Ø Framing to bring another’s content directly into a page that appears to be created by another site Ø Others’ trademarks in invisible metatags q. In underlying HTML q. Metatags visible to search engines q. Attempt to increase number of hits for page misappropriating trademark q. E. g. , one car company might include trademarks for cars of a competitor to draw traffic via GOOGLE searches q. THIS IS A HYPOTHETICAL EXAMPLE! Copyright © 2019 M. E. Kabay. All rights reserved.

Framing: Total. News 1997. 03 — RISKS, EDUPAGE “Channels” controlled by Total. News Materials

Framing: Total. News (cont’d) News organizations claimed Ø Misappropriation q. Entire commercial value of news q. Reselling to others for Total. News’ profit Ø Federal trademark infringement & dilution q. Diluting distinctiveness q. Causing confusion, deceiving customers Ø Copyright infringement q. Violating several exclusive rights 29 Copyright © 2019 M. E. Kabay. All rights reserved.

Framing: Total. News (cont’d) Ø Violation of advertising laws, deceptive practices & unfair competition q. Mistaken impression of affiliation Ø Tortious interference with business relationships q. Selling ads by making news available Conclusion: case settled out of court Ø Total. News would stop framing Ø Would link to news sites only with permission See http: //www. publaw. com/framing. html 30 Copyright © 2019 M. E. Kabay. All rights reserved.

Links: Ticketmaster vs Microsoft 1997. 04 — Ticketmaster Group sues Microsoft Ø MS included hot links from Ticketmaster Web pages to Microsoft Web pages Ø No formal agreement granting permission for such links Ø Ticketmaster saw MS as deriving benefit from the linkage but bypassing Ticketmaster's advertising Ø Ticketmaster programmed Web pages to lead all Sidewalk users trying to follow unauthorized links to a dead end 31 Copyright © 2019 M. E. Kabay. All rights reserved.

Links: Gary Bernstein Sues Entire Web? (1998 -09) Ø Hollywood photographer Gary Bernstein q. Sued several Web operators for having links to sites containing pirated copies of his works Ø Included indirect links qlinks to site with links to sites. . Ø Contamination spread along Web links qfrom bad site to all those linked to it qpresumably every Web site on planet Ø Los Angeles Federal District Court Judge Manuel A. Real dismissed indirect linkage q. Bernstein withdrew entire suit 32 Copyright © 2019 M. E. Kabay. All rights reserved.

Deep Linking Ø Many sites require registration for their materials q. Provide sales leads q. Statistics on users characteristics q. Market research Ø Once you’ve signed up, get URL for White Paper (etc). q. Is there a violation of IP laws or ethics in publishing the hidden URL? Ø Some Web sites have private (unpublished, unlinked) sections q. What if someone publishes the link? 33 Copyright © 2019 M. E. Kabay. All rights reserved.

Federal Trademark Dilution Act of 1995 – 15 USC § 1051 Ø Prior to 1995, courts had to rule against plaintiff if no confusion could be shown q. Thus radically different businesses could use existing trademarks without infringing the Lanham Act Ø But large companies with famous trademarks argued that frequent use diluted value of their marks Ø Congress passed TDA of 1995 to protect such plaintiffs even when no confusion likely 34 Copyright © 2019 M. E. Kabay. All rights reserved.

Cybersquatting Ø People register domain names related to trademarks or company names to q. Make money (sell back to legit user) q. For political purposes (embarrassment) Permission requested from Biplab Dey, Dolcera ITES, q. For fun / satire / mischief for use of image Ø Examples q{insert_name_here}sucks. com q. Variant top-level domains üwhitehouse. com used to be porn site q. Variant mis-spellings üi 1, o 0, etc. üSymbols near to each other on keyboard 35 Copyright © 2019 M. E. Kabay. All rights reserved.

Cybersquatting Cases Have Used Trademark Dilution Act Ø Many examples of parasites who register famous trademarks or people’s names as DNS entries q Hope to capitalize by extorting money to sell registration to legitimate users q Many victims have appealed under ICANN rules or gone to court for trademark dilution Ø Intermatic Inc. vs Toeppen an excellent example of case illuminating the issues q Defendant registered 240 domain names using famous company names and trademarks q Intermatic argued that Toeppen should not be able to block its use of its TM in domain name q Judge ruled in favor of plaintiff because of dilution 36 Copyright © 2019 M. E. Kabay. All rights reserved.

Panavision Int’l v. Toeppen 1996 Ø Dennis Toeppen registered panavision. com q Site displayed views of Pana, Illinois Ø Panavision thereafter sought to create a website under its own name, but learned panavision. com was registered q Notified Toeppen Ø Toeppen demanded $13 K for use of the domain name q Panavision refused to pay Ø Toeppen then registered panaflex. com Ø Panavision sued Toeppen for trademark infringement & dilution Ø Court found q Toeppen violated federal and state dilution laws q Enjoined Toeppen from continued violations Ø Key Point: Registering a famous mark as a domain name with the goal of cashing in on it violates dilution statutes. 37 Copyright © 2019 M. E. Kabay. All rights reserved.

Anticybersquatting Consumer Protection Act (ACPA) of 1999 Ø 15 USC § 1129 Ø Increasing complaints about cybersquatting Ø Bad faith use of TM, company name or person’s name defined clearly for domain names q Civil liability q Multiple criteria q Most significant: offer to sell or transfer domain name ü For financial gain ü Without prior use for real business q Registration of multiple similar infringing domain names Ø Statutory damages of $1, 000 -$100, 000 per domain name Ø Applies to distinctive trademarks & famous names Ø Effective tool used for protection from domain-name related abuse Ø See Burgunder p 394 – factors for assessing bad faith under ACPA (Exhibit 11. 1) 38 Copyright © 2019 M. E. Kabay. All rights reserved.

Uniform Dispute Resolution Policy (UDRP) Ø Adopted by ICANN in 1999 Ø Gives trademark owners efficient way to deal with cybersquatting & other domain name abuse q Trademark owner can force a registrant to resolve a name dispute if presence of 3 elements: ü DN is identical or confusingly similar to a TM or SM and complainant has rights to TM or SM ü DM registrant has no rights or interests to DM ü DM registered and used in bad faith Ø Dispute is submitted to dispute resolution provider 39 Copyright © 2019 M. E. Kabay. All rights reserved.

International Protection of Trademarks 40 Ø Paris Convention for the Protection of Industrial Property (1883) q National treatment – same rules for all q Rights of priority for filing of registration q Similar rights of refusal of registration q Seizure of contraband / counterfeits Ø Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS, 1994) q Includes TM protection q 7 -year terms of protection with unlimited renewals Ø Madrid Agreement & Protocol q 56 nations (2006), but not US q After trademark filed in home country, business can file centrally with WIPO q Automatic extension of registration Ø See Burgunder p 465 Copyright © 2019 M. E. Kabay. All rights reserved.