Scope of Electronic Communications Privacy Act may not be so narrow

Brahmana v. Lembo, No. 09-106, 2009 WL 1424438 (N.D. Cal. May 20, 2009)

Plaintiff former employee Brahmana sued his former employer Cyberdata, claiming that Cyberdata violated the Electronic Communications Privacy Act (at 18 U.S.C. 2511) (&#147ECPA&#148). Brahmana claimed that Cyberdata used a keylogger to intercept the username and password for Brahmana’s personal email account.

Cyberdata moved to dismiss the claim under Rule 12(b)(6) for failure to state a claim upon which relief can be granted. The court denied the motion, finding that the determination of whether there was a violation of the ECPA would best be made after discovery.

The ECPA makes it unlawful for any person to intentionally intercept, among other things, any “electronic communication.” An “electronic communication” is defined in the ECPA as “any transfer of signs, signals, writing, images, sounds, data, or intelligence of any nature transmitted in whole or in part by a wire, radio, electromagnetic, photoelectronic, or photooptical system that affects interstate or foreign commerce.”

An important question in this case was whether the keystrokes allegedly captured by the keylogging device met this definition of electronic communication.

An earlier case from another district (United States v. Ropp, 347 F.Supp.2d 831 (C.D. Cal. 2004)) held that keystrokes gathered by a hardware keylogger attached between a computer’s keyboard and central processing unit were not electronic communications because the system transmitting the information did not affect interstate commerce.

But another case questioned that opinion’s holding, finding that though the keystrokes themselves did not travel in interstate commerce, they did “affect interstate commerce” and therefore fell within the ECPA’s definition.

This court avoided ruling on the legal question of whether intercepting electronic data being transmitted from one piece of local hardware to another might be an electronic communication as defined by the ECPA. One must remember that a Rule 12(b)(6) motion merely tests the sufficiency of the pleadings. The court does not consider evidence at that stage, but merely tests whether the facts alleged by the plaintiff could plausibly support the legal claim.

In this case, the court found that Brahmana’s allegations did not specify whether the particular means of monitoring affected interstate commerce, but were sufficient to render plausible the claim that communications were monitored in some way. “The issue of how any alleged monitoring took place,” the court found, “and whether it allegedly affected interstate commerce is better resolved after some discovery.”

The case instructs us that this court is not willing to read the definition of “electronic communication” as narrowly as the court did in Ropp. No doubt there will be some interesting evidence produced in discovery that shows how the keystrokes were allegedly intercepted. But at least we know at this early stage in the litigation that the court will consider whether the transmission of electronic data within a system — and not crossing state lines — may still affect interstate commerce.

I-Spy photo courtesy Flickr user Leo Reynolds under this Creative Commons license.

Cybersquatter hit with maximum penalty

Citigroup, Inc. v. Shui, 2009 WL 483145 (E.D. Va. Feb. 24, 2009)

Court enjoins use of citybank.org, orders defendant to pay $100,000 in statutory damages and to pay Citibank’s attorneys’ fees.

Defendant Shui registered the domain name citybank.org and established a site there promoting financial services, sometimes using the mark CITIBANK. The real Citibank, armed with its trademark registrations in over 200 countries and over 50 years of use of its CITIBANK mark, filed suit against Shui under the Anticybersquatting and Consumer Protection Act, 15 USC 1125(d) (“ACPA”).

Citibank moved for summary judgment on its ACPA claim and also asked the court to enter an injunction against Shui. Citibank also sought $100,000 — the maximum amount of statutory damages available under the ACPA, plus payment of Citibank’s attorneys’ fees. The court granted all of Citibank’s requested relief.

To prevail on the ACPA claim, Citibank had to show that (1) Shui had a bad faith intent to profit from using the domain name, and (2) that the domain name at issue was identical or confusingly similar to, or dilutive of, Citibank’s distinctive or famous mark.

Finding of bad faith

The court found Shui registered the domain name in bad faith because:

  • Shui did not have any trademark or other intellectual property rights in the domain name, and the registration of the domain name was not sufficient to establish any rights.
  • The domain name consisted of the legal name of Citibank (with one letter difference) and not the legal name of, nor any name that was otherwise used to identify Shui.
  • Shui had not engaged in prior use of the disputed domain name in connection with the bona fide offering of any goods or services prior to registering the domain name.
  • Shui’s use of the domain name was commercial in nature. Notably, some of the advertisements on Shui’s site were exact replicas of the marks CITIBANK and CITI. Each clickthrough provided Shui with advertising revenue, even though clicking on a link with Citibank in the title did not redirect the user to any website affiliated with the real Citibank.
  • Shui clearly intended to confuse, mislead and divert internet traffic from Citibank’s official website to his own in order to garner more clickthrough revenue from the misleading “citibank” advertisements.
  • Subsequent to the filing of the complaint, Shui sold the domain name for financial gain to a third-party in an apparent effort to avoid liability.
  • Shui registered other internet domain names which were identical or similar to Citibank’s marks, and the CITIBANK mark was distinctive and famous at the time Defendant registered the disputed domain name.

Confusing similarity

On the issue of confusing similarity, the court observed the strength of Citibank’s mark and the fact that the parties both offered financial services. Taking those facts in combination with the bad faith demonstrated by Shui, the court found the disputed domain name to be confusingly similar to Citibank’s marks.

The remedy

Accordingly, the court found in favor of Citibank on the ACPA claim. The court was stern in its remedy. It found that Shui’s registration of the confusingly similar domain name was “sufficiently willful, deliberate, and performed in bad faith to merit the maximum statutory award of $100,000 and an award of attorney’s fees.”

$100K photo courtesy Flickr user Ricardo (Kadinho) Villela under this Creative Commons license.

Verizon obtains damages, injunction against regsitrar under ACPA

[This is a guest post by contributor Brian Beckham]

Plaintiff Verizon California, Inc. (Verizon) recently obtained a default judgment in the U.S. District Court for the Northern District of California, San Jose Division, in its favor against Defendant, the registrar OnlineNIC, Inc. (press release).

Despite repeated attempts, Verizon was not able to serve notice on OnlineNIC; the court ultimately approved Verizon’s application to serve process with the California Secretary of State. OnlineNIC was alleged to have engaged in the bad faith registration of 663 identical or confusingly similar domain names incorporating one of Verizon’s family of marks (e.g., <bestverizon.net>, <myprepaidverizon.com>, <verizonflios.com>, <vzwactivate.com>, etc.) inter alia, in violation of the ACPA. Verizon’s unchallenged, well-pleaded allegations were accepted by the court as true; OnlineNIC’s liability was thus established.

In addition to OnlineNIC’s default, significantly, the court noted that OnlineNIC had refused to alter its behavior (presumably after a cease & desist letter) and had purposefully attempted to avoid detection (e.g., by providing false contact information). However, given the default, the court was reluctant to impose the full statutory damages provided for under the ACPA ($100,000 per infringement), but imposed damages of $50,000 per violation (totaling $33.15 million). It remains to be seen whether Verizon will successfully collect, nonetheless, Verizon obtained a transfer order in its favor for all of the 663 infringing domain names. OnlineNIC (including any related entity) was further enjoined from directly or indirectly (i) registering, trafficking in or using any domain name that is identical or confusingly similar to the Verizon marks and (ii) assisting, aiding or abetting any other person or business entity in engaging in or performing and of the said activities.

This injunction seems to leaves open the question of whether the seemingly common registrar practice of actively suggesting alternate domain names available for registration (e.g., those that add alphanumerical strings, e.g., <new____4u.com>, <buy____.net>, <your____.org>, <my____pro.com>, <best____.com>, etc.) would be covered by the “assisting, aiding or abetting” language in the injunction.

Case is: 2008 U.S. Dist. LEXIS 104516

Statutory damages for copying competitor’s catalog on website

Silver Ring Splint Co. v. Digisplint, Inc., 2008 WL 2478390 (W.D.Va. June 18, 2008)

Silver Ring and Digisplint are competitors in a niche industry, each producing and selling fine jewelry quality finger splints made of gold and sterling silver. Silver ring sued Digisplint for copyright infringement alleging that Digisplint copied text from Silver Ring’s 1994 catalog, and posted that text on Digisplint’s website.

Before trial, the court awarded summary judgment to Silver Ring on the question of liability for copyright infringement. The question of damages proceeded to trial. Finding that “nearly identical and very similar text comprise[d] substantial portions of both [works],” and that the similarities were “obvious and persuasive,” the court awarded Silver Ring $30,000 in statutory damages pursuant to 17 U.S.C. §504(c)(1). It found that Digisplint’s copying was willful, and although Digisplint reaped no profits from the infringement, the award was to serve as a deterrent to future conduct of the sort.

Digisplint had filed a counterclaim pursuant to the Anticybersquatting Consumer Protection Act (ACPA) over Silver Ring’s registration of digisplint.com. The court found in favor of Digisplint on this claim, and entered an injunction against any further registration of a confusingly similar domain name. But because Silver Ring registered the domain name in 1998, prior to the enactment of the ACPA, Digisplint was entitled to no money damages, only an injunction.

Former band members’ use of service mark is not so Chic

Rogers v. Wright, No. 04-1149, 2008 WL 857761 (S.D.N.Y. March 31, 2008)

The U.S. District Court for the Southern District of New York has issued a permanent injunction restricting the use of the service mark CHIC in connection with musical performances by two former members of the musical group of the same name.

Plaintiff Rogers (founder of the music group Chic) claimed that Defendants Wright and Martin (former Chic singers) infringed his rights in the service mark CHIC for music and vocal entertainment services. Rogers formed the group in 1977 and obtained service mark registrations for the band name in 1982 and 2004.

Chic

Wright and Martin, who previously performed on Chic albums and in live televised performances, had been performing in the U.S. and abroad since 2003. At various times, and without permission, they operated a Web site at www.ladiesofchic.com, and billed themselves as “First Ladies of Chic”, “Chic”, “The Original Ladies of Chic”, “Chic: Live!”, and “Les Chic”. They were billed by one venue as “original artists singing all the original hits.”

The court first found that Rogers had valid rights in the CHIC mark — regardless of whether those rights arose from the 1982 or 2004 registrations or from common law rights. The court then found a likelihood of confusion between Rogers’s mark and Wright and Martin’s use of the same using the 8-factor Polaroid test.

Specifically, the court found: (1) the CHIC mark was “at least moderately strong” in that it had created a tendency in the minds of consumers to associate it with Rogers’s band; (2) the defendants’ uses of the Chic mark (as noted above) were “sufficiently similar” to cause confusion; (3) the parties competed directly in the same market; (4) an analysis under “bridging-the-gap” was not required because of the third factor; (5) there was some evidence of actual confusion; (6) the defendants intended to take advantage of the plaintiff’s reputation and good will in adopting their various uses of his mark; (7) there was little evidence of the quality of defendant’s product; and, (8) similarly, there was little evidence of the sophistication of the relevant consumer group, i.e., concert attendees or promoters. Taking all of these factors together, the court found “little difficulty” in finding Defendants’ use of Plaintiff’s mark was likely to cause confusion.

The court was not persuaded by the defendants’ attempted fair use defense. The defendants had certainly used CHIC as a mark (and not, for example, mere comparative advertising or other descriptive purposes – see, e.g., Playboy Enters., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002). Moreover, the defendants’ promotional materials used the CHIC mark in a prominent manner. The court was similarly unpersuaded by the defendant’s argument that the Lanham Act did not apply to acts outside of the U.S.

NASCAR beat to checkered flag in domain name dispute

[Brian Beckham is a contributor to Internet Cases and can be contacted at brian.beckham [at] gmail dot com.]

Complainant NASCAR filed a complaint under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) against The Racin’ Connection, Inc. over the domain name nascartours.com. In the stock car racing business since 1948, NASCAR is a household name in U.S. motor sports. Its DAYTONA 500 attracted 30 million television viewers in 2007. NASCAR licensed its various marks to over 200 licensees to the tune of USD 2 billion in 2006. An entire industry revolves around providing tickets and packages to NASCAR-sanctioned events. One such entity, The Racin’ Connection, Inc. has provided such tour packages for over 30,000 customers in part through its website at the nascartours.com domain name since 1996.

NASCAR alleged in its complaint that the unlicensed domain name was confusingly similar to its NASCAR mark, that The Racin’ Connection, Inc. had no rights or legitimate interests in the domain name, and that the domain name was registered and was being used in bad faith. NASCAR further asserted that use of its marks in a domain name (as opposed to on a website) was not a fair use, and that such use was intended to “entice…[and] misleadingly divert consumers for [] commercial gain.”

The Racin’ Connection, Inc. argued that the domain name was not confusingly similar to the NASCAR marks, but that its use of the marks was a fair use as part of a bona fide offering of services as a “race package reseller”. It further pointed out that it promoted only NASCAR events and displayed a disclaimer on its website.

Finding the The Racin’ Connection, Inc.’s argument of laches unavailing, the 3-member Panel found that the domain name was confusingly similar to the NASCAR mark. The Panel noted that there is a split in URPD cases regarding whether a bona fide offering of goods or services on a reseller’s (authorized or not) website using a mark in a domain name confers a legitimate interest on the reseller. In this case, the Panel found that The Racin’ Connection, Inc.’s use of the NASCAR mark in its domain name did confer such rights. (The Panel considered several factors from the previous Oki Data case paramount: The Racin’ Connection, Inc. was only offering NASCAR tours; the website disclosed the parties’ relationship; and the respondent did not try to “corner the market” in domain names incorporating the mark). Finally, the Panel found that The Racin’ Connection, Inc.’s sales of NASCAR tours since 1992 and disclaimer on its website coupled with a lack of evidence from NASCAR as to any actual consumer confusion negated a finding of bad faith in its registration or use of the domain name.

Ultimately, despite confusing similarity between the domain name and the NASCAR mark, given the good faith use of the mark in connection with a bona fide offering of services and the rights created thereby, NASCAR was not able to stop the use of its mark in a domain name.

The Full text of the Decision is available at: http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1524.html

Finding ATLAS COPCO and ATLAS CASPIAN confusingly similar, court awards in rem ACPA relief to unopposed plaintiff

Atlas Copco AB v. Atlascopcoiran.com, No. 07-1208, 2008 WL 149128 (E.D. Va. January 8, 2008)

Unable to hail the overseas registrants of domain names, including atlascaspian.com and atlascopcoiran.com into a U.S. court, plaintiff Atlas Copco AB sought in rem relief against the domain names under 15 U.S.C. §1125(d)(2)(a). After the defendants failed to answer the complaint, Atlas Copco moved for summary judgment, relying on the allegations of its verified complaint.

The court granted the motion and ordered the domain names transferred.

In finding that the defendants had engaged in cyberpiracy, the court looked at the “dominant or salient portions of the marks” at issue – the plaintiff’s mark and the marks comprising the offending domain names.

For you trademark experts out there, query whether you might characterize the following analysis as a bit of a stretch:

The dominant portion of each of the Defendant Domain Names is “ATLAS COPCO” or “ATLAS.” These “dominant” terms are paired with the generic terms “CASPIAN” and “IRAN,” which are generic geographic terms that do not distinguish the Defendant Domain Names from the ATLAS COPCO trademark. An internet user might reasonably assume that the geographic term “CASPIAN” and “IRAN” were added to the ATLAS COPCO trademark by the Plaintiffs to identify its geographic location.

It looks like another motivation for the court’s finding was some of the subterfuge on the sites at the offending domain names. Turns out some of them pointed to “copycat” websites bearing “Atlas Caspian” logos confusingly similar to the plaintiff’s trademark, and linked to phishing sites bearing the actual Atlas Copco mark.

Personal name must have trademark significance for protection under ACPA

Salle v. Meadows, No. 07-1089, 2007 WL 4463920 (M.D. Fla. December 17, 2007)

Defendant Meadows thought that Plaintiff Salle owed him about $9,500.  He was apparently having some trouble getting paid, so he registered the plaintiff’s personal name as a domain name – briansalle.com.  He then tried to sell it to Salle for the amount of the purported debt.  Being uninterested in the purchase, Salle filed a cybersquatting complaint against Meadows in federal court.

Salle asserted claims under both 15 U.S.C. §1125(d) and 15 U.S.C. §1129. Both parties moved for summary judgment. It was a mixed ruling, but largely a win for Salle.

The court addressed the §1129 claim first.  That portion of the Lanham Act provides:

Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

Meadows argued that in trying to sell the domain name and thus recover money owed to him, he was not trying to profit, and therefore not liable under §1129.  Despite some dispute over whether the debt was actually owed and to whom, the court ruled in Salle’s favor.  “[C]yber-extortion is not a permissible way to recover a debt,” the court warned.

As for the §1125(d) claim, the court ruled in Meadows’s favor.  Section 1125(d) provides, among other things, that a person shall be liable to the “owner of a mark, including a personal name which is protected as a mark under [§1125]” if that person has a bad faith intent to profit from that mark. 

Salle argued that §1125 provides that all personal names are subject to trademark protection. Meadows, on the other hand, argued that a personal name must have some sort of trademark significance, e.g., acquired distinctiveness, in order to fall with the protection of §1125. Agreeing with Meadows’s interpretation of the section, the court found that Salle failed to present enough evidence to survive summary judgment on the question of whether he had protectible trademark rights in his personal name.

TRO issued against domainer’s use of “mylennar.com”

Lennar Pacific Properties Management, Inc. v. Dauben, Inc., No. 07-1411, 2007 WL 2340487 (N.D.Tex. August 16, 2007)

Companies sometimes find that opportunistic purchasers of domain names (often referred to as “domainers”), will purchase a domain name quite similar to that of the company, and establish a site at the URL loaded with revenue-generating sponsored ads. To accomplish these purposes, domainers seem to prefer the services of companies like HitFarm and Domain Sponsor. A web user types in the confusingly similar URL and is bombarded with pop-up ads and sponsored links to goods and services, often competitive to the company whose name or trademark is being appropriated in the URL.

The Lennar Corporation, an established home builder, noticed that a company called Dauben, Inc., d/b/a “Texas International Property Associates,” set up a HitFarm site at mylennar.com. Dauben’s page purported to feature “resources and information on Floor plans and Building construction.” It also contained a link titled “Home building,” which when clicked on, took the user to another page of sponsored links to homebuilders competitive to Lennar.


Lennar filed suit for trademark infringement in Texas federal court, and sought injunctive relief. The court granted the motion for temporary restraining order, prohibiting the defendant from using, canceling or transferring the domain name to any person or entity other than Lennar, and from using any domain name that incorporated or was confusingly similar to the Lennar mark.

The court held (1) there was a substantial likelihood of Lennar’s success on the merits of the trademark claim; (2) there was a substantial threat that Lennar would suffer irreparable injury if the injunction was denied; (3) the threatened injury outweighed any damage that the injunction might cause Dauben; and (4) granting the injunction would not disserve the public interest.

It looks like this Texas International Property Associates has targeted other companies in the past, and has come up empty handed. See, e.g., this WIPO opinion, in which Fry’s Electronics wrestled to get the typo-squatted domain name “fyrselectronics.com”.

Decision appears below (click through if it’s not showing up in the RSS feed):

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