Fighting the CyberPirates Hugh Calkins, Pine Tree Legal Assistance Becky Levine, LSNTAP Damien Riehl, Robins, Kaplan, Miller & Ciresi, LLP Protection of

Fighting the CyberPirates

Hugh Calkins, Pine Tree Legal Assistance

Becky Levine, LSNTAP

Damien Riehl, Robins, Kaplan, Miller & Ciresi, LLP

Protection of Legal Aid Organizations through Trademarks, Domain Names, and Keywords

Why Should Legal Aid Care About Trademarks and Domain Names?

Why Should Legal Aid Care About Trademarks and Domain Names?

Legal aid trademarks are often your most valuable intellectual-property assets

Marks help clients obtain your services Some entities may wish to capitalize on

the desperation of the vulnerable by exploiting your marks Trademarks and “brands” distinguish your

services Domain names are increasingly important in

a connected world Search engines are often first-used referral

sources

ARLegalServices.org

ARLegalServices.com

CyberPiracy TIG project


Pine Tree Legal Assistance (PTLA) in partnership with the Legal Services National Technology Assistance Project (NTAP), received $20,000 for 2007 from the Legal Services Corporation (LSC)

Funds a project that ensures the poverty law community adequately protects its entire client community from predatory websites posing as legal aid services


Primary goal Protect low-income website

consumers from fraud and confusion by predatory websites

Second goal Ensure legal aid organizations’

statewide websites are protected from cyber-piracy

Types of Cyberpiracy

Domain-name Disputes (Cybersquatters) E.g., pinetreelegal.com(Domain Grabbing) E.g., South Bronx Legal Services

Deceptive Keywords E.g., Search engine results for “legal

aid” include ads for-profit firms or matching services

To Learn More

Stay current on issues in CyberPiracy as well as updates on the TIG project

Visit the Cyber Piracy section of the LSNTAP website: http://lsntap.org/techlibraryhttp://lsntap.org/techlibrary

Impact on Legal Aid Programs/Clients

Points to Ponder: What is the impact of Cyberpiracy on

legal aid clients or potential clients? Has your program experienced

complaints from people misdirected to commercial sites?

How do you think we as a community can measure the impact of these non-legal service websites?

Process and Importance of Trademark Registration

Federally Registered Trademarks

Trademarks: Federal Benefits

Federal Registration: Best way to protect your organization’s marks

Governed by the Lanham Act Provides nationwide protection Provides presumption of a

mark’s ownership and validity. Provides prima facie evidence

of registrant’s exclusive right to use the mark in commerce

Trademarks: Federal Benefits

Gives constructive notice of the registrant’s claim.

Provides protection for entire class of related products and services

Permits for treble damages for “willful” infringement

Permits attorney’s fees in some cases

After five years, mark becomes “incontestable,” which is the highest status trademark law can provide

Trademarks: Federal Registration

Process for registering marks with Patent & Trademark Office (PTO) May file online at

http://www.uspto.gov/teas/index.htmlhttp://www.uspto.gov/teas/index.html If an application is approved, registrants

will usually receive a filing receipt in approximately six months, though the process may take as long as several years

Cost varies between $275 and $375 http://www.uspto.gov/go/fees/http://www.uspto.gov/go/fees/

Legal Services are categorized under Class 42 (computer, scientific & legal)

Trademarks: Federal Registration

Registrations have a 10-year term To remain valid, registrants must

file Affidavit of Use (§ 8)

1. between the 5th and 6th year following registration and

2. within the year before the end of every ten-year period after registration

Renewal Application (§ 9) Within the year before the expiration date

of registration

State Registration of Trademarks

Trademarks: State

What if you haven’t registered yet and have an issue now?

Some states also provide trademark protection State trademark protection is often

more limited legally than under the Lanham Act

Protection is also often limited geographically to that state’s borders

Trademarks: Common Law

Even if you haven’t registered a trademark, you may be entitled to common-law trademark protection

However, common-law protection is also often limited to the geographic area in which the mark is used

Under the common law, a plaintiff bears the burden of proving it is entitled to exclusive use of the mark


Use similar analysis. Often, common-law trademark claims apply similar principles to Lanham Act

Use similar caselaw. State and federal courts often rely upon each other’s cases, providing a “common reservoir” of trademark precedent

Accordingly, common law actions often hinge upon Lanham Act analyses


Unregistered common-law marks are protected locally even if someone later federally registers the mark Generally, “the national senior user

of a mark cannot oust a geographically remote good-faith user who has used the mark first in a remote trade area.”

McCarthy on Trademarks § 26:4 at 26-9

Pro Bono Trademark Registration

As part of the TIG funded project, NTAP is organizing a group of pro bono attorneys willing to assist legal aid programs with trademark registration

For more information on how to receive pro bono assistance visit: www.lsntap.org/cyberpiracy_probonowww.lsntap.org/cyberpiracy_probono

Domain-Name Disputes (Cybersquatting)

Cybersquatting: PineTreeLegal.com

Domain Names

In today’s world, domain names are often the most important use of an organization’s trademarks

Malicious entities often have incentive to infringe on trademarks To directly mislead customers to

their competing or related sites or To obtain “click-through” payments

for their advertisements.

Domain Names: Remedies

If you find that someone has a domain name that infringes on your mark, you have several remedies: Request voluntary transfer

through direct contact with owner

Bring UDRP action to transfer URL

Bring ACPA case in Federal Court

Domain Names: Direct Contact

Requesting voluntary transfer of a domain name is often the most cost-effective resolution of domain-name disputes.

If a cybersquatter obtains your mark through an automated process, this may likely lead to an easy resolution. They may wish to avoid the time/expense of

litigation and simply transfer domain name. Even if the registration was deliberate, a

bad-faith registrant may have a change of heart when receiving a pre-litigation request.

Domain Names: UDRP

If a direct request is not successful, you may wish to bring a Uniform Dispute Resolution Proceeding (UDRP).

Most common remedy sought Streamlined system honed by

thousands of cases over several years Effective through the ICANN

registration system, providing for immediate transfer of infringing domain names

Domain Names: UDRP Process

UDRP Process: Complaint filed with UDRP

provider UDRP provider sends copy of

complaint to domain-name registrar and to respondent

Respondent files response within 20 days of commencement of proceeding

Provider appoints a panel, which renders a decision within 14 days


If, within 10 business days, the adversely affected party does not “appeal” by filing suit, the registrar will cancel or transfer the domain

Entire process takes approximately 45 days

Plaintiffs almost always win More Information on UDRP Process:

http://www.icann.org/udrp/http://www.icann.org/udrp/ http://cyber.law.harvard.edu/udrp/http://cyber.law.harvard.edu/udrp/

process.htmlprocess.html


UDRP Fees: WIPO

$1,500 for one panelist (1-5 domains) http://www.wipo.int/amc/en/domains/fees/index.htmlhttp://www.wipo.int/amc/en/domains/fees/index.html

National Arbitration Forum $1,300 for one panelist (1-2 domains) http://domains.adrforum.com/main.aspx?http://domains.adrforum.com/main.aspx?

itemID=631&hideBar=False&navID=237&news=26itemID=631&hideBar=False&navID=237&news=26

Asian Domain Name Dispute Resolution Centre

$1,000 for one panelist (1-2 domains) http://www.adndrc.org/adndrc/hk_schedule_fees.htmlhttp://www.adndrc.org/adndrc/hk_schedule_fees.html

Domain Names: ACPA

Alternatively, may file suit in Federal Court under the Anticybersquatting Consumer Protection Act (ACPA),

When to file under ACPA?When to file under ACPA? When you seek remedies over and above

cancellation or transfer of a domain name If you anticipate the cybersquatter will

challenge the UDRP result in court anyway Drawbacks to ACPA filing:Drawbacks to ACPA filing:

Much more expensive than UDRP proceeding Often takes much longer to complete

Domain Names: ACPA

Remedies under the ACPA Cancellation or transfer of domain

name to mark’s owner Defendant’s profits, actual

damages, costs, and attorney fees Possible treble damages In lieu of actual damages, plaintiffs

may elect for statutory damages of between $1,000 and $100,000 per domain name

15 U.S.C. § 1117(d).

Domain Names: ACPA “In Rem”

Plaintiffs may bring ACPA suit even if the defendant cannot be found, by bringing an “in rem” suit against the domain name: If the domain name violates the

rights of a registered mark’s owner If the court finds that

the owner cannot obtain in personam jurisdiction over defendant, or

through due diligence, owner was unable to find prospective defendant

Domain Names: ACPA “In Rem”

Remedies for “In Rem” suits are limited to court orders for domain’s forfeiture or cancellation or domain’s transfer

Money damages are not available. Accordingly,

if you cannot find a prospective defendant, or

if you cannot obtain jurisdiction over them, then it may be best to simply file a UDRP

action remedies are the same.

Search Engine Results


Trademarks also important in context of search engine “sponsored links”

Companies purchase ads to accompany search-engine queries e.g., search for “flower” gets FTD ad

These ads are referred to as “keyword” advertising or, in marketing circles, “pay-per-click” (PPC)

For example, a for-profit entity may buy advertising space when someone enters the query “legal aid” or “legal assistance”


Search engines often combine several keywords (possibly including marks), sometimes called “broad matching” https://adwords.google.com/select/expanded_matching.htmlhttps://adwords.google.com/select/expanded_matching.html

Other search engines require advertisers to purchase bundles of several keywords Playboy Enters., Inc. v. Netscape

Communications Corp., 354 F.3d 1020, 1023 (9th Cir. 2004).

Deceptive Keyword Advertising

Can Coke buy ads for “Pepsi” searches? Similarly, may a for-profit site legally

purchase keyword ads for “legal aid”? Or “Pine Tree Legal”?

A French court has criticized Google for suggesting third-party marks as keywords Société des Hotels Meridien v. S.A.R.L.

Google France, NRG 04/3772 (T.G.I. Nanterre, Dec. 16, 2004), available at http://www.juriscom.net/documents/tginanterre20041216.http://www.juriscom.net/documents/tginanterre20041216.pdfpdf

Search Engine Results: IIC

Courts have held that diverting consumers through keyword searches may result in liability under the doctrine of Initial Interest Confusion (IIC)

Professor McCarthy states that “[i]nitial interest confusion can be viewed as a variation on the practice of ‘bait and switch.’” 3 J. Thomas McCarthy, McCarthy on

Trademarks & Unfair Competition § 23:26 (4th ed. 2003).


The Ninth Circuit in Brookfield defined IIC as “the use of another’s trademark in

a manner calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.”

Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999).


A recent district court criticized Brookfield’s analysis, holding Keyword advertising is a “use in

commerce,” but Criticizing Brookfield, holding instead

that use of keyword-triggered ads and metatags cannot confuse consumers if the ultimate search results do not display plaintiff’s trademarks.

J.G. Wentworth SSC Ltd v. Settlement Funding LLC, No. 06-0597 (E.D. Pa. Jan. 4, 2007).

Search Engine Liability

In 2004, just before its IPO, Google agreed to investigate trademark complaints “as a courtesy” and would “require the advertiser to remove the trademarked term from the content of the ad.” http://www.google.com/tm_complaint_adwords.htmlhttp://www.google.com/tm_complaint_adwords.html

Search Engine and Competitor Liability

So are search engines and competitors liable for competitive keywords? The state of the

law is a mess

Cases are all over the map

Prevalence of deceptive Keywords in Legal Aid:

Research searching 75 legal aid program names in the major search engines (Google, Yahoo, MSN and AOL) revealed over 1,000 instances of deceptive keyword use

5-10 “common offenders” Companies who repeatedly use legal

aid program names as ad-words

Legal Match Lawsuit and Settlement

Legal Match Lawsuit and Settlement

LegalMatch Shall Not Use the Disputed Marks. LegalMatch agrees that it shall not use any

of the Pine Tree Marks. LegalMatch Shall Remove Legal

Aid Organizations’ Marks. Any legal aid organization can request that

their name be removed. LegalMatch Shall Not Use the Term

“legal aid” in Advertising. * * * because “legal aid” is a term of art

meaning “aid provided by an organization established especially to serve the legal needs of the poor.”


Keywords and Search Engines

Points to Ponder: What is the best approach to the

“keyword issue”: Go after individual violators? Work with search engines on a

possible solution? Pros and cons of both approaches.

Dangers of Clients’ Online Activities

Other Impacts of Online Activities

Other Impacts of Online Activities

Relevance to Legal Aid


How is this relevant to legal aid orgs? It’s the money. Legal services is big

business;many attorneys and organizations will gladly pay for click-through client referrals.

Vulnerable clients. Legal aid serves those who may not be as Internet savvy, making them an easier target for such deception.

Fight back? Advertisers who infringe on a Legal Aid mark may know that those organizations may have few resources to allot to vindicate their rights.


How can Legal Aid orgs protect themselves? Think about registering your

organization’s name as a federal (and possibly state) trademark/servicemark

Auto-renew domain names so others do not swoop in when they expire (registrars often provide for free)

Ensure domain-name registrar lists your name as both

(1) Registrant and (2) Admin (3) Tech can stay third-party

Purchase domain-name variations clients may likely use

Domain names are as economical as $8/year


How can Legal Aid orgs protect themselves? Query search engines to see if any entity

is trading upon your organization’s goodwill Enter different top-level domains for your URL

E.g., lsc.gov vs. lsc.com vs. lsc.org vs. lsc.net

Do quick “typosquatting” searches to see if anyone has a domain name that intentionally misspells your name

E.g., LegalServiceCommunity.org (no “s” in “services”)

E.g., LegalServiceComunity.org (misspells “community”)


How can Legal Aid orgs protect themselves? If those preventative measures prove

unsuccessful: Contact responsible party for

possible amicable resolution If domain names are involved, bring

UDRP action If UDRP unsuccessful, may choose to

bring suit under ACPA

Practical Steps: Trademarks

Federally register your trademark http://www.uspto.gov/teas/http://www.uspto.gov/teas/

index.htmlindex.html Possibly obtain volunteer IP

attorney to do this for you Visit

www.lsntap.org/cyberpiracy_probonowww.lsntap.org/cyberpiracy_probono for more information about availability of pro bono attorneys

Practical Steps: Deceptive Keywords

1. Search for your own name2. Follow up with Advertiser3. If that fails, follow up with

Search Engines themselves 4. Might be more sympathetic for

Legal Aid organizations (PR sensitivity to misleading low-

income persons)

Practical Steps: Deceptive Keywords

Add this to your intake questionnaire Did you have trouble finding us? Did you look on the Internet? Were you misdirected?

Ask community resources, which may have seen such misdirection Libraries Community Centers (e.g., women’s

shelters, homeless shelters, courts)

Questions?

Appendix of Legal Citations


Good law review analysis of keyword advertising liability: Eric Goldman, Deregulating Relevancy in

Internet Trademark Law, 54 Emery L.J. 507 (2005), available at http://papers.ssrn.com/sol3/papers.cfm?http://papers.ssrn.com/sol3/papers.cfm?abstract_id=635803abstract_id=635803

Search Engine Results Relevant cases:

Savin Corp. v. The Savin Group, 2004 WL 2829324, at *17 n.13 (2d Cir. Dec. 10, 2004) (“Internet initial interest confusion requires a showing of intentional deception.”)

Google v. American Blind, 2005 WL 832398 (N.D. Cal. Mar. 30, 2005) (trademark-triggered sponsored links satisfy required trademark-infringement element of commercial use).

Bayer HealthCare, LLC v. Nagrom, Inc., 2004 WL 2216491 (D. Kan. Sept. 7, 2004) (holding metatag use of mark to heighten search-engine rank created initial interest confusion).

Netbula v. Distinct, 2003 U.S. Dist. LEXIS 1019 (N.D. Cal. Jan. 15, 2003) (in suit against competitor for initial interest confusion based on metatags and Google keyword purchases, allowing counterclaim for initial interest confusion because plaintiff’s posted stories about the lawsuit were picked up by search engines).

Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002) (enjoining metatag use of mark and requiring defendant’s home page to include disclaimer).

Search Engine Results Relevant cases (cont.):

Reed Elsevier v. Innovator, 105 F. Supp. 2d 816 (S.D. Ohio 2000) (in suit alleging defendant’s purchase of trademarked keywords in banner-ad placement, denying motion to transfer venue).

Horphag Research, Ltd. v. Pellegrini, 337 F.3d 1036, (9th Cir. 2003) (holding that competitor’s use of mark in metatags and on website was neither “classic” nor “nominative” fair use).

Bayer Corp. v. Customs School Frames, LLC, 259 F. Supp. 2d 503 (E.D. La. 2003) (gray-market reseller’s use of mark in keywords impermissibly resulted in initial interest confusion).

J.K. Harris & Co. v. Kassel, 253 F. Supp.2d 1120 (N.D. Cal. 2003) (keywords permitted as nominative fair use where defendant used marks to make statements about plaintiff’s business practices, though court prohibited “excessive” use of mark).

Nissan Motor Co., Ltd. v. Nissan Computer Corp., 204 F.R.D. 460 (C.D. Cal. 2001) (stating in dicta that trademark infringement could result from purchasing trademarked search engine keywords to manipulate results).

Search Engine Liability: Netscape

Four years after it decided Brookfield, the Ninth Circuit held in Playboy that unlabeled banner ads tied to keyword trademarks may constitute infringement, since consumers may believe, if only initially, that the ads are sponsored by (or related to) the trademark owner.

But the panel limited its holding to unlabeled ads, suggesting that it may have held differently if the ad’s source had been clearly identified. Playboy Enters., Inc. v. Netscape

Commc’ns Corp., 354 F.3d 1020 (9th Cir. 2004).

Search Engine Liability: Wallpaper

In a pair of cases, American Blind & Wallpaper Co. sued Google, arguing that the search engine unlawfully sold the company’s trademarks as keywords

Google responded that it was not required to block third parties from purchasing keywords of generic or descriptive phrases Google v. Am. Blind & Wallpaper

Factory, Inc., No. C-03-5340 (N.D. Cal. filed Nov. 26, 2003) (decl. jgmt. action)

Am. Blind & Wallpaper Factory, Inc. v. Google, No. 04-cv-00642 (S.D.N.Y. filed Jan. 27, 2004).

Search Engine Liability: Geico

Insurer GEICO sued Google, claiming that the search engine improperly sold “sponsored links” for its trademarks

Court: No infringement if ad does not

contain mark; If ad contains mark, then

likelihood of confusion Gov’t Employees Ins. Co. v. Google, Inc.,

No. 1:04cv507, 2005 WL 1903128 (E.D. Va. Aug. 5, 2005).

Competitor Liability: Office Depot

Competitors’ liability for keyword advertising is currently being tested Office Depot, Inc. v. Staples, Inc., No.

05-80901 (S.D. Fla. filed Oct. 4, 2005).

Staples allegedly contracted with Google to display Staples’ ads when users searched for “Viking,” which is the name of a subsidiary of Office Depot.

Competitor Liability: Office Depot

Staples counterclaimed that Office Depot purchased keywords “staples” and “staples tv ad”

Documents

Fighting the CyberPirates Hugh Calkins, Pine Tree Legal Assistance Becky Levine, LSNTAP Damien Riehl, Robins, Kaplan, Miller & Ciresi, LLP Protection of