9th Cir.: Anti-cybersquatting law not cover "re-registration" (i.e., renewal) of domain name . . .

. . . as long as the initial registration was lawful. The case is GoPets Ltd. v. Hise, No. 08-56110 (9th Cir. Sept. 22, 2011).

Here’s the timeline. In 1999, defendant Hise registered the domain name gopets.com. Gopets.com is among over 1300 domain names that Hise registered in the last decade. In other words, he’s a “domain name ‘entrepreneur.’” In 2004, plaintiff GoPets started a PC game under the name GoPets, featuring virtual pets that move between the computers of registered users. Later, plaintiff began a series of unsuccessful negotiations with Hise to buy the domain name.

During the negotiations, lots transpired. Hise transferred the domain name to his company. Plaintiff registered its GoPets mark. A month later, Hise’s company “re-registered”—I am not sure why the court refused to use the word “renewed”—the domain name registration. Plaintiff filed and lost a UDRP arbitration because Hise registered before plaintiff began using GoPets. Hise then registered 17 different domain names incorporating “gopets.” Hise’s last demand to plaintiff was $5 million. Finally, plaintiff sued in court.

The 9th Circuit held that Hise’s original registration of gopets.com was lawful, because the ACPA (15 U.S.C. § 1125(d)) requires that a claimant own a “mark that is distinctive at the time of registration”—and plaintiff didn’t begin using its mark until years later. The court further held that “re-registration” (renewal) is not subject to the ACPA if the initial registration was lawful. But the court held that Hise’s subsequent registrations of the 17 “gopets” variant domain names after Hise began negotiations with plaintiff violated the ACPA.

Three Interesting Trademark Decisions

Thursday and Friday last week must have been the circuits’ annual “Get Out Your Trademark Opinions Already Festival™”. There were three decisions of note.

9th Circuit (Kozinski, J.) Nominative Fair Use Decision

The Ninth Circuit upheld the use of the domain names “buy-a-lexus.com” and “buyorleaselexus.com” by personalized auto shoppers (a/k/a auto brokers) who specialize in Lexi. In Toyota Motor Sales, U.S.A., Inc. v. Tabari, No. 0755344 (9th Cir. July 8, 2010), Judge Kozinski’s panel opinion is an interesting read, but the main take-away appears to be:

(1) nominative fair use is not an affirmative defense, but instead replaces the traditional multi-factor likelihood of confusion test in cases where the accused infringer asserts that he is indeed referring to the plaintiff’s mark; and

(2) the trademark owner bears the burden of proving that the asserted nominative use will cause confusion (i.e., is not “fair”) under the familiar three-part test that asks whether: (a) the product or service is readily identifiable without using the mark; (b) the defendant used more of the mark than was needed; and (c) the defendant falsely suggested affiliation or endorsement.

10th Circuit Reverses Award of Attorney’s Fees to Successful Counterfeiting Defendant

Plaintiff sues for counterfeiting, seeking TRO. Plaintiff gets TRO, but it’s vacated because a search by U.S. Marshalls finds no counterfeit goods. Plaintiff then unsuccessfully seeks preliminary injunction. Plaintiff appeals. No dice. Plaintiff petitions for cert. Denied. Plaintiff then voluntarily dismisses the case without prejudice, before the answer is filed. Is the defendant a “prevailing party”?

Nope. Not when the vacatur of the TRO and the denial of the preliminary injunction were based on failure to demonstrate irreparable harm and the dismissal was without prejudice. So holds Lorillard Tobacco Co. v. Engida, No. 08-1037 (10th Cir. July 9, 2010).

3d Circuit Reverses Bench Trial Finding of No Likelihood of Confusion

The Third Circuit came down hard on the district judge in Sabsina Corp. v. Creative Compounds, LLC, No. 08-3255 (3d Cir. July 9, 2010). The district judge’s oral findings and conclusions after a bench trial ignored several of likelihood of confusion factors and contained clearly errors on others, according to the appeals court. The panel noted that this is the second case in which they’ve reviewed trademark bench trial findings and conclusions from this particular judge and that he did the same thing (and was reversed) the first time. The analysis itself isn’t that noteworthy, except where the 3d Circuit points out that “intent is largely irrelevant” to the likelihood of confusion analysis because advertising history “suggests that consumer reactions usually are unrelated to manufacturer intentions.” (Those of you who have heard me rant on the relevance of intent know that this statement is music to my ears.)

Three recent decisions re: architectural copyrights; a stolen domain name; and copyright/trade secret ownership in the employment context

While interesting, the following three recent decision don’t seem to warrant extended analysis, so here are the TV Guide summaries:

2d Circuit Throws Out Architectural Copyright Claim on 12(b)(6) Motion Based on Designs Appended to Complaint

Don’t plead yourself out of court. That may be the lesson of Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., No. 09-2613-cv (Apr. 7, 2010). The plaintiff copyright owner alleged that a developer infringed his copyrighted plans, and attached depictions of the designs to its complaint. Assuming for purposes of argument that copying occurred, the Second Circuit compared the two designs for substantial similarity. Concluding that the depictions demonstrated that only general ideas and concepts—not protectable expression—was misappropriated, the court affirmed dismissal of the case. Of course, not attaching the depictions of the designs to the complaint would likely have only postponed the dismissal to the summary judgment stage, but it may have increased leverage for some kind of monetary settlement in the meantime.

9th Circuit Grapples with Conflict of Laws Issue in Domain Name Conversion Case

In an intensely-fact specific case involving a claim that the defendants converted the plaintiff’s domain name registration (replete with a bad guy in the PRC, an innocent purchaser for value defense, and a cameo appearance by Ralph Lauren), the 9th Circuit in CRS Recovery, Inc. v. Laxton, No. 08-17306 (Apr. 6, 2010), engaged in a lengthy discussion of the policies underlying the respective laws of Virginia and California to determine a tricky and potentially outcome-determinative choice-of-law issue.

9th Circuit Analyzes Employee/Independent Contractor Issue to Decide Who Owns Copyrights and Trade Secrets in Computer Software Source Code

In JustMed, Inc. v. Byce, No. 07-35861 (Apr. 5, 2010), the Ninth Circuit went through a lengthy, fact-intensive analysis of the often-litigated issue of whether the author of copyrightable material or creator of a trade secret was an employee or independent contractor of a company claiming that it owned the individual’s work. The case is interesting in that it seems to somewhat alter the traditional weighing of the factors relevant to that determination to fit the context of small, non-traditional, techie start up companies.