Internet Crimes, Torts and Scams: Investigation and Remedies

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Internet Crimes, Torts and Scams

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Internet Crimes, Torts and Scams Investigation and Remedies Melise R. Blakeslee

1

1 Oxford University Press, Inc., publishes works that further Oxford University’s objective of excellence in research, scholarship, and education. Oxford New York Auckland Cape Town Dar es Salaam Hong Kong Karachi Kuala Lumpur Mexico City Nairobi New Delhi Shanghai Taipei Toronto

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With offices in Argentina Austria Brazil Chile Czech Republic France Greece Guatemala Hungary Italy Japan Poland Portugal Singapore South Korea Switzerland Thailand Turkey Ukraine Vietnam

Copyright © 2010 by Oxford University Press, Inc. Published by Oxford University Press, Inc. 198 Madison Avenue, New York, New York 10016 Oxford is a registered trademark of Oxford University Press Oxford University Press is a registered trademark of Oxford University Press, Inc. All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without the prior permission of Oxford University Press, Inc. _____________________________________________ Library of Congress Cataloging-in-Publication Data Blakeslee, Melise R. Internet crimes, torts and scams: investigation and remedies / Melise R. Blakeslee. p. cm. Includes bibliographical references and index. ISBN 978-0-19-537351-6 ((pbk.) : alk. paper) 1. Internet—Law and legislation. 2. Computer crimes—Investigation. 3. Evidence, Expert. I. Title. K564.C6B57 2010 345’.0268—dc22 2009036784 _____________________________________________ 1 2 3 4 5 6 7 8 9 Printed in the United States of America on acid-free paper Note to Readers This publication is designed to provide accurate and authoritative information in regard to the subject matter covered. It is based upon sources believed to be accurate and reliable and is intended to be current as of the time it was written. It is sold with the understanding that the publisher is not engaged in rendering legal, accounting, or other professional services. If legal advice or other expert assistance is required, the services of a competent professional person should be sought. Also, to confirm that the information has not been affected or changed by recent developments, traditional legal research techniques should be used, including checking primary sources where appropriate. (Based on the Declaration of Principles jointly adopted by a Committee of the American Bar Association and a Committee of Publishers and Associations.)

You may order this or any other Oxford University Press publication by visiting the Oxford University Press website at www.oup.com

Contents

DETAILED CONTENTS

vii

ABOUT THE AUTHOR

xiii

ACKNOWLEDGMENTS

xv

CHAPTER 1: Introduction

1

CHAPTER 2: Basic Investigation

5

CHAPTER 3: Jurisdictional Quagmire

27

CHAPTER 4: Intellectual Property

67

CHAPTER 5: Freedom of Expression and the Problem of Anonymity

157

CHAPTER 6: Electronic Evidence—Special Considerations

215

CHAPTER 7: Forensics and Experts

229

APPENDICES

239

TABLE OF CASES

419

INDEX

437


Detailed Contents

ABOUT THE AUTHOR

xiii

ACKNOWLEDGMENTS

xv

CHAPTER 1: Introduction A. Approach B. Structure C. Tempest in a Teapot—What Is Not Covered CHAPTER 2: Basic Investigation A. Follow the Money B. The Most Essential Tool C. Cyberspace Is Smaller than You Think 1. The Internet and the World Wide Web Are Not the Same 2. A Mere Five Entities Maintain a Directory of the Entire Internet 3. Domain Names Are Assigned by a Retailer 4. Information Flows in an Orderly Manner D. How to Find a Cybersquatter or Site Owner 1. The WHOIS Query and Reverse WHOIS 2. Other Clues E. How to Interpret E-mail Headers F. Unmasking the Anonymous E-mailer G. An Example of a Simple Investigation Protocol CHAPTER 3: Jurisdictional Quagmire

1 2 2 3

5 6 7 8 8 12 15 15 17 17 19 20 21 25

27

A. What’s at Stake: Personal Jurisdiction and the Regulation of the Internet

29

B. Where Have We Been? C. Life Is Complicated D. First Principles 1. The Early Cases 2. International Shoe and the Rise of Long-Arm Statutes

31 32 33 33 34

viii

Detailed Contents

E. F. G. H. I.

J. K. L. M.

N.

3. Emerging Principles a. General Jurisdiction b. Specific Jurisdiction c. In Rem Jurisdiction Enter the Internet Consider Functionality Internet Activities Plus Business Contacts Equal General Jurisdiction Specific Jurisdiction—Defamation Recent Case Law: Specific Jurisdiction—Intellectual Property, Contracts, and Commercial Torts 1. Trademark Disputes 2. Copyright and Patent Disputes 3. Other Commercial Cases Recent Case Law: Cybersquatting Recent Case Law: The Role of Servers and ISPs Resolution of the Scenarios Long-Arm to Global Reach—International Considerations 1. The Complexity of International Jurisdictions 2. The European Perspective—First Principles 3. The E-Commerce Directive (2001/31) 4. The General Rule a. Place of Establishment b. The Coordinated Field 5. E-Commerce or Commerce? 6. Exceptions to the E-Commerce Directive a. Jurisdiction Regulation b. Rome I Regulation and the Rome Convention 7. National Courts versus Country of Origin Principle 8. Conclusion Regarding E-Commerce Directive 9. International Defamation Scams and Torts—Unique Jurisdiction Considerations

CHAPTER 4: Intellectual Property A. Trademarks and Domain Name Disputes 1. Scenarios 2. How to Investigate a. The WHOIS Query b. Dun & Bradstreet Reports

35 36 37 38 39 41 44 45 48 48 49 49 50 52 52 53 54 55 55 56 56 57 58 58 58 59 59 61 61 63

67 70 70 70 71 74

c. Review and Document How the Domain Is Used d. Collect Ancillary Evidence

74 75

(i) Prior Use of Domain Name (ii) Document a Registrant’s Previous Instances of Cybersquatting

75 76

Detailed Contents (iii) Document a Registrant’s Ownership of Other Domain Names Incorporating Trademarks e. Hire a Professional Investigator 3. The Law a. What Is Cybersquatting? (i) UDRP (ii) ACPA b. Other Types of Claims (i) Traditional Trademark Infringement Claims (ii) State Anticybersquatting Laws c. Effectively Using Cease-and-Desist Letters d. Drafting the UDRP Complaint (i) Quick Recap of ACPA and UDRP Factors (ii) Trademark Rights (iii) Identical or Confusingly Similar (iv) Rights or Legitimate Interests (v) Making Legitimate Noncommercial or Fair Use of Domain Name e. Drafting a Federal Claim (i) Trademark Rights (ii) Registers, Traffics or Uses (iii) Identical or Confusingly Similar (iv) Bad Faith Intent to Profit f. UDRP Complaints: To Settle or Not to Settle 4. Strategy for Resolving the Scenarios B. Trademark Use in Metatags and Keyword Advertising 1. More about the Technical Use of Metatags 2. How to Check a Web Page’s Metatags 3. What Are Keywords and Sponsored or Keyed Ads? 4. How to Check For Sponsored Ads 5. The Law a. Is this “Use in Commerce?” b. Is Buying or Selling a Keyword a “Use in Commerce?” c. Likelihood of Confusion and Initial Interest Confusion d. Fair Use 6. Factors that May Affect the Outcome of an Infringement Claim a. Metatags b. Keywords C. Theft of Content—Copyright and Confidential Information 1. Scenarios 2. How to Investigate 3. The Law a. Basic Copyright b. Fair Use of Copyrighted Material

76 77 77 77 79 80 83 83 83 83 86 86 87 89 91 95 101 102 102 102 104 107 108 112 114 115 116 117 117 118 123 125 129 131 132 134 135 136 137 140 140 143

ix

x

Detailed Contents c. Copyright, Facts and “Hot News” d. There Are No Trade Secrets on the Internet D. Counterfeiting 1. Scenario 2. How to Investigate a. A Model of a Counterfeiting Network—Pharmaceuticals b. Consider Registration and Hosting c. More Tools and Tips CHAPTER 5: Freedom of Expression and the Problem of Anonymity A. Internet Service Provider Liability 1. Scenarios 2. How to Investigate 3. The Law a. History of ISP Liability b. Communication Decency Act, Section 230 (i) Broad Immunity for ISPs (ii) Exceptions to Broad ISP Immunity 4. Internet Service Providers and Intellectual Property a. Pre-Digital Millennium Copyright Act Liability b. The Digital Millennium Copyright Act c. ISP Liability under the DMCA: Cases 5. Internet Service Providers and the Fourth Amendment 6. Conclusion B. Defamation 1. Scenario 2. How to Investigate 3. The Law a. Publication v. Distribution b. Expedited Discovery c. Obtaining a Subpoena 4. Strategy C. Spam 1. Scenario 2. How to Investigate 3. The Law a. Defining Spam b. Private Combat c. Legal Combat (i) State Legislative Efforts (ii) Federal Law (iii) Constitutional Objections to CAN-SPAM (iv) Applying CAN-SPAM in Federal Court

145 147 150 150 151 151 154 155

157 159 159 160 162 162 164 164 166 168 169 171 175 177 178 179 179 180 181 181 186 188 190 193 193 194 196 196 197 199 199 201 204 206

Detailed Contents 4. Prosecution Options Available in the European Union a. Obtaining Information, Help, and/or Directive b. Remedies Available in the European Union c. Implementation of the E-Privacy Directive d. What Can Be Gained by Suing a Spammer in the European Union? e. Conclusion 5. Strategies for Resolving the Scenario CHAPTER 6: Electronic Evidence—Special Considerations A. Unique Characteristics of Electronic Evidence B. Authentication of Electronic Evidence 1. Authentication of E-Mail Messages 2. Authentication of Web Site Content 3. Authentication of Text Messages and Chat Room Content 4. Authentication of Electronic Public Records or Reports 5. Authentication of Computer-Stored Data and Records Produced in Civil Discovery or Seized in a Criminal Case 6. Authentication of Business Records Stored in a Computer C. Hearsay Considerations 1. Business Records Exception 2. Other Exceptions D. Challenging Authentication E. Stipulated Authentication F. Best Evidence Considerations CHAPTER 7: Forensics and Experts A. Scenario B. Understanding the Expertise C. How to Choose an Expert 1. What Credentials Should You Look For? 2. How Do You Find Experts? 3. How Much Do Expert Services Cost? 4. How Many Companies Should You Compare? 5. What Should an Expert Concentrate on First? 6. Can the Expert Write a Clear Report? D. Computer Forensic Science E. Forensics and the Scenario F. Conclusion

208 208 209 210 212 213 213

215 216 217 218 220 221 221 222 222 223 224 225 226 226 227

229 230 231 231 231 232 232 232 232 233 233 234 238

APPENDICES APPENDIX A: Online Investigative Tools

239

APPENDIX B: Glossary

251

xi

xii Detailed Contents APPENDIX C: Federal Laws

279

APPENDIX D: State Laws

323

APPENDIX E: ICANN Polices and Rules

337

APPENDIX F: Form ICANN Complaints

365

APPENDIX G: Memorandum of Law in Support of Motion

for Expedited Discovery (seeking identity of anonymous posters in defamation case)

399

APPENDIX H: Best Practice for the Seizure of Electronic Evidence

417

TABLE OF CASES

419

INDEX

437

About the Author

Melise R. Blakeslee is the founder and president of Ecrimetools.com, the legal professional’s Internet partner in fighting cybercrime. Ms. Blakeslee’s legal practice is Internet- and litigation-oriented, with an active docket focusing on Internet crimes, complex software and copyright disputes. She has over 23 years of experience protecting and licensing IP in a wide variety of industry sectors, and has represented many famous brands and businesses. She is Managing Partner at Sequel Technology & IP Law, LLP. Previously, Ms. Blakeslee was a partner with McDermott Will & Emery where she served for nine years as the head of the e-Business & Cybercrime group.

xiii


Acknowledgments

To the extent I can trace my scholarly bent to any individuals, I owe a special debt to my grandfather, Arthur H. Blakeslee Sr., and to my parents, Ruth and Art Blakeslee, each of whom stewarded my small intellectual ability. Secondary school teachers do not get many thanks from their pupils so I want to take this opportunity to recognize some teachers. First, to Mr. Giles Slaughter (the then-headmaster of Solihull School, England), thank you for giving me a chance. Second, to Mr. Costard, thank you for opening the door to the fun of debate and critical thinking (also at Solihull School). Over the years my friends Toby Wyles, Britt Gilder, and Winifred Conkling, and my mentor, Ray Lupo, helped me achieve a degree of intellectual confidence I would not have otherwise possessed. Thank you to my assistant, Lisa Miller. She has superb skills and patience with me. Thank you to Norma McCarthy and James Keane for providing an Internet-connected writer’s cottage in the wilds of West Wales. Thank you to various associates and colleagues who have helped: my partner Clare Sellars, Osbourne Shaw, of the Internet Crimes Group; researcher Milton Shook; and creative brand “namer” and lyrics expert, Mark Gunnion; and to all the McDermott associates who supported me: Sarah Brown, Rita Siamas, Whitney Brown, Simone Blakeney, Daniel Powers, and Brendan Cowles. I would like to particularly acknowledge the substantial contributions of Rohan Massey, Elliot Silverman, and Jeff Bedser. Rohan Massey has been a partner of mine for many years. Rohan is a delight to work with because he is pragmatic, focused, and has a wicked sense of humour. Rohan contributed the European perspective to the Jurisdiction Quagmire chapter. He is a partner in the London office of McDermott Will & Emery. His practice focuses on media, e-commerce, outsourcing, IT and data protection. In addition to his contributions to this book, Rohan has authored, “Ambush Marketing,” International Chamber of Commerce UK Handbook; “Transfers of Clinical Research Data from the European Union to the United States,” BNA’s Medical Research Law and Policy Report; “The Growing Concerns of Identity Theft,” Electronic Business Law; “The Distance Marketing

xv

xvi Acknowledgments

of Financial Services—A UK Overview,” Journal of Financial Services Marketing; “The UK’s Proposed Framework Code of Practice for Sharing Information,” World Data Protection Report; and “Sales Promotion in the International Sales and Marketing Practice,” Practical Law Company. Rohan also contributes to “Law in Action” on BBC Radio. Elliot Silverman is a litigation specialist at Jackson DeMarco Tidus & Peckenpaugh located in Irvine, California. The Jurisdication Quagmire chapter reflects his deep and practical knowledge of this complicated topic. In addition to authoring the U.S. portion of the chapter, he has authored many other works, including: “In Search of Deep Pockets: Secondary Liability Under Federal and California Securities Laws,” The Recorder, May 2008; “Be Careful Out There: The IRS Has Lawyers in their Cross-Hairs,” Orange County Lawyer, January 2008. He has appeared in dozens of reported litigations. Jeff Bedser is the president of the Internet Crimes Group, Inc. He coauthored the chapter on Forensics and Experts. Jeff and his team have been deeply helpful to the author in many investigations. Jeff is also a member of the ICANN Security & Stability Advisory Council. Finally, thank you to Bill Carter, a philosopher, father to our three children, and friend for three decades. Washington, D.C., London, and Ffynnon-Oer, Wales 2009

CHAP T ER

1 Introduction Let’s start at the very beginning, A very fine place to start “Do-Re-Mi”1 —The Sound of Music

A. Approach

2

B. Structure

2

C. Tempest in a Teapot—What Is Not Covered

3

Thieves, counterfeiters, name-callers, predators, gamblers, scammers, infringers, pornographers, drug dealers, and spies exist on the Internet just as in any other arena of human activity. However, investigation and prosecution of Internet crimes2 fundamentally differs from crimes in the “real” world. If a thief bursts into a store, bops the owner over the head, and runs off with the till, most legal professionals know how to question a witness, gather potential evidence, and assess other relevant information. At the very least, you as the legal professional will know enough to call the local police! But who do you call if a client is a victim of Internet fraud? Do you have any idea what type of evidence might exist? Can you thoroughly explain the

1. Lyrics by Oscar Hammerstein. 2. This book uses the phrases Internet crime and Internet criminals to refer collectively to any type of scoundrel engaged in malicious Internet activity, including those who are, in fact, criminals. It must be recognized, however, that many of the activities described in this book are not criminal per se. The terms Internet crime or criminals are convenient labels for all those who perpetrate scams, torts, lies, infringements, or actual crimes via the Internet.

1

2

Chapter 1 Introduction

problem to someone else? Probably not. There is a startling gap between our ability to deal with scams in the real world and our ability to even understand an Internet scam. Accordingly, this book is intended to explain the legal implications of the Internet’s infrastructure and teach you how to look for and interpret the evidence.

A. Approach This book is primarily a practical one. The chapters are organized by type of problem instead of by legal topic as the author feels this is the most suitable arrangement. Many legal professionals can identify a problem in a general way (i.e., as defamation or counterfeiting), but may not be able to identify the wide range of interdisciplinary laws needed for resolutionto resolve a problem when it occurs on the Internet. For example, an offer to sell stolen DVD decryption technology is a copyright problem (and possibly more) a mere rehash of copyright law is not what is needed, however. The legal professional needs to understand Internet infrastructure, to recognize the online and other tools needed to identify the infringers, to obtain information about jurisdiction, to be aware of the list of elements necessary to obtain a subpoena, and to have an understanding of criminal and civil computer trespass laws. This book gathers this constellation of information into sections organized by the general type of problem, such as theft, defamation, and cybersquatting.

B. Structure This book begins with a technology chapter called “Basic Investigation.” This chapter is aimed at those who possess only a basic knowledge of Internet infrastructure. You will gain an understanding about the Internet’s history, how its layers work, and how information is distributed and traced. The practice tips are based on the author’s extensive experience, and provide practical guidance on how to apply the particular information to daily practice. Jurisdiction is an overarching issue implicated in a growing number of investigations—and certainly, almost always in the more complex ones. The Internet is global. This creates strategic opportunities to use jurisdiction to the best advantage. These subjects are given prime attention in the second chapter, “Jurisdictional Quagmire.”

Tempest in a Teapot—What Is Not Covered 3

Each subsequent chapter begins with a scenario, which is the jumping-off point for specific step-by-step instructions on how to investigate the particular problem. The scenarios are followed by a subsection discussing the applicable law. Finally, each chapter ends with an analysis of how the investigation and law come together to resolve the scenario. At the end of the book are important appendices. The two likely to be the most important are the glossary and the list of online investigative tools. The glossary goes beyond standard definitions and provides insight into interpretations in the case law of many of the defined words. The list of investigative tools is a list of Web sites providing access (sometimes via a subscription) to information fundamentally important to all investigations. The resources listed in this book will change frequently, so updated tools and information are located at www.ecrimetools.com.

C. Tempest in a Teapot—What Is Not Covered Cyberbullying, denial-of-service attacks, viruses, and theft of an individual’s personal information often make headlines, but amount to little more than a “tempest in a teapot” from a legal perspective. These problems simply do not result in case law. The author believes this is true because despite all the press coverage, many of these problems often do not lead to quantifiable damages. This book covers only those problems most likely to arise in civil practice. Updates to this book will report headline-making problems should any result in actual claims and case law. eCrimeTools.com, which offers a database of the cases discussed in this book, will be updated to add developing law.


CHAP T ER

2 Basic Investigation Every crime has a personality—a “something” —like the mind that planned it The Thomas Crown Affair (1968) —Vicki Anderson1

A. Follow the Money

6

B. The Most Essential Tool

7

C. Cyberspace Is Smaller than You Think

8

1. The Internet and the World Wide Web Are Not the Same

8

2. A Mere Five Entities Maintain a Directory of the Entire Internet

12

3. Domain Names Are Assigned by a Retailer

15

4. Information Flows in an Orderly Manner

15

D. How to Find a Cybersquatter or Site Owner

17

1. The WHOIS Query and Reverse WHOIS

17

2. Other Clues

19

E. How to Interpret E-mail Headers

20

F. Unmasking the Anonymous E-mailer

21

G. An Example of a Simple Investigation Protocol

25

1. Vicki Anderson as played by Faye Dunaway.

5

6

Chapter 2 Basic Investigation

Internet criminals2 leave tracks3 that you can find if you understand the mechanics of the Internet. This chapter will explain many of the common ways an Internet criminal leaves tracks and show you how to use online tools to find them and turn them into evidence.

A. Follow the Money “Follow the money” should be the organizing principle for every investigation. Internet criminals do not perpetrate crime for fun: Internet crime thrives because these criminals make real money. But real money must flow to a real account. The money will always cut a trail through the most complicated facts, dead ends, and false identities.

Practice Tip 1 Confusing facts will become clear if you ask: how is the scammer making money? Sometimes it is not obvious. For example, why would a cybersquatter link back to the brand name’s Web site? Or, how is someone making money with a domain name that does not appear to be used? (See footnote 7.) Once you understand how the scammer is making money, you need to discover how the victim’s money flows across the Internet.

Do not be put off for fear of complicated technology tools. Although high technology is sometimes needed, more often than not you can find the money trail using only mundane techniques. As an example, in response to nothing more complicated than a series of insistent e-mails from his supposed customer (a paralegal), a counterfeiter revealed his real name, his bank sort code, and bank account number. After finding the counterfeiter’s alias on a trade board, the paralegal negotiated to buy a load of counterfeit goods. Keeping in mind the principle that “real money will flow to a real account,” the paralegal insisted on wiring the

2. See supra, note 1. Just to reiterate, the term Internet criminal is merely a label used to designate all of those scoundrels (whether criminal or not) who engage in malicious Internet activity. 3. Locard’s exchange principle paraphrased states: Anyone or anything entering a crime scene takes something of the scene with them and leaves something of themselves when they depart . . . Physical evidence cannot be wrong, it cannot perjure itself, it cannot be wholly absent. Only human failure to find it, study it, and understand it, can diminish its value. Professor Edmond Locard (1877–1966).

The Most Essential Tool 7

purchase money to the seller’s bank account instead of providing the requested credit card number. Amazingly, after a bit of e-mail argument back and forth, the counterfeiter’s need for the money prevailed over caution. He provided the exact bank information needed to trace him.4

Practice Tip 2 Unless you persuade local police authorities that a counterfeiting case merits their attention, the client will need to bring a civil action. One aspect of these types of actions is unique: you need a search warrant. A federal marshal will execute the search warrant in federal trademark or copyright cases (for example, those involving counterfeit goods or pirated music). The marshal does not gather the evidence for you. It is up to the law firm team to survey and gather the evidence in strict compliance with the scope of the warrant. The marshal secures the premises and the evidence, attests that nothing was taken beyond the scope of the warrant, and ensures everyone’s safety. Do not underestimate the latter. The author has come across guns, knives, and exotic-looking weapons during many searches.

B. The Most Essential Tool I feel it . . . he’s our man The Thomas Crown Affair (1968) —Vicki Anderson

In the 1968 version of the movie The Thomas Crown Affair, investigator Vicki Anderson chases down those behind high-value thefts. She succeeds where others fail. Why? She thinks differently. She is tenaciously curious about the criminal himself and the way the nature, planning, and execution of the crime reveal clues about the planner’s identity. Unlike the other investigators, she questions appearances by following the mantra “think dirty.” However, legal professionals are not trained to “think dirty”—and thus, we rarely do. We miss the very evidence betraying the perpetrator.

4. Bank routing and sort codes are public information. Recall, this counterfeiter was traced without the need for any complicated technology or skills. This information placed the account in a small town with the account holder’s name matching the name of only one person residing nearby.

8


Success requires you to become like Vicki Anderson. You must develop an intuition for when the supposed “facts” do not make sense against the backdrop of the crime. Then, trust your gut, as a gut instinct is what makes the difference between a success and a loss. This approach sounds improbable, but it has held absolutely true through more than two decades of the author’s personal experience.

C. Cyberspace5 Is Smaller than You Think 1. The Internet and the World Wide Web Are Not the Same A successful surveillance program or investigation of Internet crime requires the legal professional to make use of all the information available on the entire Internet—not just the galaxy of Web sites commonly known as the World Wide Web. It may come as a surprise that the terms Internet and World Wide Web are not synonymous. In point of fact, Web sites are only part of the universe of information existing on the Internet. If you look for information only on the World Wide Web, your investigation is likely to fail, and your client will be disappointed.6

5. Cyberspace is defined as the “notional environment in which communication over computer networks occurs” Oxford American Dictionary (2nd ed., 1984). As the definition aptly captures, cyberspace is a “notion.” To many legal professionals, it is a confounding non-place. In point of fact, although cyberspace may not exist in one place, it is a shared environment and operates in accordance with a shared set of communication protocols. This means if you know how cyberspace works, there is always a way to find information. 6. Failure will lead your client to the incorrect conclusion that further investigation is hopeless—which can be costly. Here is an example of an expensive mistake that could have been avoided if the attorney had known there was more to the Internet than just Web sites. A client discovers a third-party registration of a domain name very similar to the client’s famous brand. Worried about infringement, the client asks his trademark attorney for advice. The attorney performs a WHOIS search (see §II(B)(2)) and discovers obviously false ownership information. When the attorney types the domain name into a browser, an error message appears that the “file is not available.” As a result, the trademark attorney concludes nothing further can be done. He further justifies inaction by advising there was no basis for a claim because a Web site did not exist at the address. However, the client seekst a second opinion. The second attorney knows Web sites are not the only things on the Internet, and wonders: why has a cybersquatter registered the domain? How else might a cybersquatter use the domain? Using a search engine (such as dogpile.com), the attorney looks for the infringing domain. A quick search of the Web for all known instances of the word reveals complaints that this domain was the source of certain pernicious spam. An e-mail point of presence exists in connection with the domain. So, the domain name was in use after all; it was

Cyberspace Is Smaller than You Think 9

The Internet is a system of thousands of computer networks, made up of millions of public and private networks representing businesses, governments, and academics on both local and global scales. The portion of the Internet commonly called the World Wide Web is only a part of the Internet universe. Here is a list of the major components of the Internet universe: • The World Wide Web (WWW or Web) consists of hypertext documents known as Web pages containing pictures, text, graphics, and animation, among other types of content. The content is stored on a type of computer, called a server, which is then made visible over the Internet infrastructure. User agents, called browsers, access the server and its content.7 Web sites are commonly located by directing the browser to a particular site by referencing a domain name, also known as the Uniform Resource Locator (URL).8 A treasure trove of information is available on “specialty” Web sites such as: a. Blogs, social networks (such as Facebook), and virtual worlds all make use of the WWW even though not referred to as Web sites per se. b. Marketplaces are sophisticated sites hosting trade boards such as aliaba.com.9 Scammers, fraudsters, and counterfeiters may inadvertently reveal themselves there (or at least provide small clues that can be used to trace their identities elsewhere). c. Databases provide online access to telephone numbers and addresses, real property records, mortgage and tax records, court dockets, news, consumer complaints, and resume repositories.

simply invisible to the first attorney who had no idea there was more to the Internet. By reporting the domain to one of the blacklists, the Internet-savvy attorney stops the flow of spam before it tarnishes the client’s reputation. The attorney then files a complaint to the Internet Corporation for Assigned Names and Numbers (ICANN) alleging bad faith registration and use of the domain—and obtains the domain for the client within a very short period of time. 7. Prior to the advent of the Mosaic browser in 1993, the vast majority of computer users had no way to navigate the Internet (which had been building, node by node, since as early as 1974). See Vinton Cerf et al., Specification of Internet Transmission Control Program, RFC 675 (Dec. 1974). 8. Many terms are defined with more specificity in the glossary contained in Appendix A. 9. Trade boards are Web sites that help suppliers and importers connect. These are legitimate business-to-business (B2B) sites that are used by grey-marketers, counterfeiters, generic drug manufacturers, and other scammers along with perfectly legitimate businesses. Some of the more visible trade boards are: aliaba.com, made-in-china.com, EC21.com, and ecplaza.net.

10 Chapter 2 Basic Investigation

Practice Tip 3 Trade boards are a source of authentic and traceable information. Let us say that a spammer is using your client’s pharmaceutical trademark in connection with a “discount pharmacy.” The client is receiving angry complaints about the odd-looking pills sold under its famous brand name. Where to start? The spam message has a link to a Web site, brandnamesaless.com. The registrant information for this domain name is obviously false. Follow the money. Investigate how the site processes orders. Place an order. (Use a PayPal account or credit card that is dedicated solely for investigative purposes.) Notice at every step whether the site has redirected the order. In this example, the order is processed at a different site: rxsaless.com. Unsurprisingly, the information for this registration is also false. Perhaps this URL is used elsewhere? A quick search on the Internet of the trade boards reveals that a distributor, rxsaless, wishes to buy generic and counterfeit pharmaceuticals. Search for every posting ever made by rxsaless. One posting provides a shipping address in West Palm Beach, FL, that looks real. A search for the address in Florida’s title records reveals that it appears to be a residential address. The owner has an unusual name, Hans Brinker— can there be many of these in Florida? Phone records confirm that H. Brinker lives at that address. Where else does Hans Brinker show up? On Monster. com, a Hans Brinker is looking for a job in the Palm Beach area as a Web site designer. His experience includes online retail sales and fulfillment of pharmaceuticals. Hans Brinker is beginning to feel like our man. The successful result here began by obtaining enough clues to be able to meaningfully search the trade boards: the logical place to look for someone needing procuring generic or counterfeit drugs.

• Usenet is that portion of the Internet comprised of newsgroups. These are discussion groups in which users exchange opinions on very specific subjects. Usenet is a popular channel for file sharing, and is used heavily by those who download music, movies, and pictures. Because of the relative obscurity of Usenet (as compared to the WWW), it is a popular venue to exchange copyrighted materials, pornography, and information about other illicit activities, including counterfeiting and hacking techniques. Practice Tip 4 Even seasoned Internet scammers slip up and link false information to something traceable to authentic information. A false e-mail address can be a good starting point despite being false. Use a search engine to search for the e-mail address as it may appear elsewhere on the Web. The results may


show the false e-mail being used in connection with other scams. Follow up on all of the other scams, as perhaps somewhere a fragment of useful information will appear on these other sites. Search the false e-mail address among Usenet groups. In this example, the false e-mail address is often given in connection with postings from an individual named littletwitter who has, for the past five years frequented groups devoted to the subject of computer hacking. Littletwitter happens to mention in one of the posts that he is in the software business. Search littletwitter as a word in a search engine. The result turns up an eBay shop selling suspiciously low-priced name brand software. Consider making a purchase from littletwitter in order to get a possible real-world address. (Do this only after checking out the eBay seller’s ratings, comments, and other sources of potential complaints to ensure that you are not going to get scammed at this point. If you are going to engage in a lot of this type of investigation, you should have an online account or credit card used exclusively for this type of investigation.) Back to the Web where you will search the return address provided on the package—in this case, an address in a small Arizona town. You may find that the address is the same as an address used in connection with one of the ancillary scams revealed earlier, such as the “tech” or “admin” contact on a domain name registration that has been registered for many years. Look back at your earlier WHOIS searches: this new domain record reveals that the site shares the same host server as the false e-mail address. Who owns this server? Look up the IP address for the server (see Section F). Search the IP address on the ARIN database. A small ISP in Arizona owns the server. These small fragments of information start to relate in a way that is more than coincidence. Search real property records and mortgages in Arizona, and, sure enough, the address exists and the mortgagee’s name is Twitter. You will be surprised how often this type of simple strategy actually turns up a real person whose real world activities can be investigated.

• Internet chat rooms and Instant Messaging, both of which use Internet Relay Chat (IRC) technology, allow users to post real-time messages and speak to individuals or small groups of people. • Virtual Private Networks (VPNs) are often established by corporate entities or conferencing services to provide remote access to employees allowing them to work together, as well as such things as audio and video conferencing in two or more locations anywhere in the world. • Voice Over IP (VoIP) channels provide the equivalent of a telephone service by using the Internet’s infrastructure to transmit voice signals. Onen example of a VoIP network on the Internet is Skype, which offers its services via a Web site on the WWW (i.e., skype.com), but communication

12


exists along channels on the Internet. Thus, in a sense the service or network of users exists apart from the WWW per se. • Mail servers are servers dedicated to sending and receiving e-mails. A mail server is a point of presence on the Internet, but mail servers are not necessarily visible if you merely search the WWW. • FTP servers offer information to those who know how to find them. These servers exist on the Internet to allow users to upload and download computer files using the File Transfer Protocol (FTP).

2. A Mere Five Entities Maintain a Directory of the Entire Internet You can locate the physical location of any Web site server as long as you have a domain name. This is the starting point for most Internet investigations. A little bit of history about the backbone of the Internet will help you understand why this is true and how to find the information. **** In 1981, two hundred computers were exchanging communications using a set of protocols developed in 1974 called TCP/IP.10 A mere two years later, there were so many computers on the network that it became necessary to assign each computer a unique number. It is still true today that every computer on the Internet has a unique identifier. These identifying numbers are referred to as an IP address.11 However, because numbers are difficult to remember, a system was developed for associating an actual name to every IP address, which is called a domain name.12 The label ecrimetools.com is a domain name with the IP address for ecrimetools.com being 209.62.20.242.13 A domain name can be registered before an IP address is assigned to it, such as with names being reserved. However, a domain name is useless until it is associated with a particular IP address (i.e., a unique place on the Internet). This is sometimes called mapping. Associating a domain name with the correct IP address requires explanation. The Domain Name System (DNS) is akin to a giant telephone directory of names and associated telephone numbers. Just as with a person’s name, if you know a Web site’s name, you can look up the corresponding IP address in a DNS directory. (This look-up process occurs instantaneously and invisibly every time a user enters a domain name into a browser’s address box.)

10. 11. 12. 13.

TCP/IP stands for Transfer Control Protocol over Internet Protocol. This is an abbreviation for Internet Protocol address. Also known as a Uniform Resource Locator or URL. All such information is current as of the time of publication, but it is likely to change. Updates can be found at ecrimetools.com at the section designated for updates.


You can access the DNS through certain databases to find specific information about a particular domain name. Each domain name has an official record about the registration, with each record containing the identity of the registrant, the technical contact, and the administrative contact, along with information about the IP addresses hosting the particular domain (often more than one). The look-up process is called a WHOIS inquiry. The mechanics of a WHOIS inquiry are discussed below. Thirteen authoritative DNS are maintained on what are called root servers, which are sometimes referred to as the “backbone” of the Internet. All of the root servers have a presence in the United States, and six root servers are located solely there.14 You cannot access the root servers directly, but it is important to understand that the flow of information across the Internet is actually a very regulated process maintained ultimately by only a limited number of entities. You can access DNS information from one of the five organizations referred to as a Regional Internet Registry (RIR).15 These are the organizations actually responsible for assigning IP numbers.16 Their authoritative databases are mirrors of the DNS. Five RIRs exist, with each being responsible for allocating IP numbers in its geographic location. The five regional RIRs are: American Registry for Internet Numbers (ARIN) for North America and parts of the Caribbean (ARIN.net); RIPE Network Coordination Centre (RIPE NCC) for Europe, the Middle East, and Central Asia; Asia-Pacific Network Information Centre (APNIC) for Asia and the Pacific region; Latin American and Caribbean Internet Address Registry (LACNIC) for Latin America and parts of the Caribbean region; and African Network Information Centre (AfriNIC) for Africa. Practice Tip 5 Have you ever wondered how certain countries can block the reception of certain Web sites? Or how some Web sites recognize the user’s approximate location? This information can be discerned from the IP address. Each RIR is

14. The 13 root servers are maintained by: VeriSign, the University of Southern California, the University of Maryland, NASA, ISC, the Defense Information Systems Agency, Cogent Communications, the U.S. Army Research Lab, Automica, RIPE NIC, ICANN, and the Wide Project. 15. The RIRs receive their authority from a global organization called the Internet Assigned Numbers Authority (IANA), which is operated by ICANN in California. IANA is primarily responsible for the global allocation of numbers and DNS management. It is heavily involved in policy issues. 16. IP numbers are not limitless; in fact, the pool of available number space is rapidly evaporating. As a result, the RIRs manage IP address space as if it were a very valuable resource. Strict rules apply for obtaining IP numbers from the RIRs.

14


responsible only for numbers in its geographical location, with those ranges of numbers being specific to the region. So, if a Web site is receiving traffic from an IP address that has been allocated through ARIN, the system assumes the traffic originates in North America.

You can access the databases of these organizations. The RIR databases provide authoritative information about a particular IP address. As an example, let us examine the IP address 207.155.248.18. First, visit www.arin.net. There is a search box called WHOIS, which is a protocol used to query RIR and registrar databases for information about a particular domain name or IP address. Currently, WHOIS queries are automated as simple Web-based tools, but each still uses the WHOIS protocol to query dedicated WHOIS servers. In the WHOIS box, type in the IP address, 207.155.248.18. The record shows that this number is within a range owned by XO Communications,17 which is the entity providing access to the Internet for this particular server known as 207.155.248.18. This type of service provider is commonly known as the Internet Service Provider (ISP).

Practice Tip 6 Why is this important? Most ISPs have rules that govern the use of its numbers. In most cases, these rules are part of the contract between the ISP and the Web site owner. You can sometimes enlist the help of the ISP to address problems originating with a particular Web site. Prohibited behavior often includes: spam, child pornography, interference with other Web sites (such as using the site to launch an attack), and copyright infringement. You can ask an ISP to enforce its contract against a particular Web site provided that you identify the problem with particularity. If a Web site is rampantly engaging in copyright infringement (for example, by reproducing pages from the latest (but not yet released) novel about a well-known wizard and his pals), a notice to the ISP will often be the most effective way to block access to the Web site as reputable ISPs do not want to be hosting blatant infringers or fraudsters. Fake tax-filing sites are another example of the type of customer that a legitimate ISP does not want on its network. In an instance of true fraud or serious copyright infringement, a telephone call and a letter to the general counsel of the ISP is likely to get fast relief. fraud or serious copyright infringement, a telephone call and a letter to the general counsel of the ISP is likely to get fast relief.

17. The range of numbers was assigned to XO Communications by ARIN.


3. Domain Names Are Assigned by a Retailer The registration of domain names is entirely different from the closed community of ICANN and the RIRs. Domain names are purchased at retail, so to speak, through a domain name registrar such as GoDaddy, eNom, Network Solutions, or TuCows, among thousands of others. The registrars maintain databases of the registered domain names and information about the registrant of each; if the domain name is in use, there will also be information about the IP address.18 A domain name does not automatically come with an IP address. An IP address becomes associated with a particular Web site at the point the domain name owner signs a contract with the ISP to provide hosting service. The ISP essentially rents the domain owner space on a server. The IP address for the server is then associated with the particular Web site. Sometimes there are thousands of Web sites hosted on a particular server (with all of them sharing the same IP address). In other cases, there is only one Web site on a particular server known only by one IP address.

Practice Tip 7 ICANN holds a complete list of authorized domain registrars. From time to time, clients receive information from “registrars” claiming that the client’s trademark is about to be registered by a cybersquatter (it seems as though these scams always originate in China). In any event, check the ICANN list before advising a client about the legitimacy of correspondence from any entity claiming to be a registrar.

As the WHOIS query will be your starting point for most investigations, it is important to find a WHOIS tool that you like and understand. Many registrars only provide information about a limited number of top-level domains, such as records for .com, .net, and .org. Some country codes (such as .de or .fr) must be queried specifically through the registrar with exclusive authority over the particular country code.

4. Information Flows in an Orderly Manner Any information flowing across the Internet is first fragmented into smaller chunks of data called packets. Everything you do on the Internet involves

18. As previously discussed, an IP address can be investigated through an RIR site.

16


packets, which at a minimum are comprised of: the source IP address, the destination IP address, and the “payload” (i.e., a chunk of the original content). You might envision something like the transporter on Star Trek, which could break a person into energy particles and “beam” the particles elsewhere for reassembly. That is sort of how packets work: the information object is broken into smaller data bundles and reassembled at your browser. Packets do not all follow the same route to the final destination. Instead, they find their way via the closest and fastest route available at that moment. The theory is that if part of the backbone is unavailable, packets simply route around the problem. At its most general level, when you send an e-mail from your home computer, packets travel along the following route: • first to your ISP’s servers, which perform a DNS lookup, then on to: • numerous routers and servers along the Internet (potentially in many different states or countries depending on the traffic), these could be other IPS servers, university servers, among many other types of entities that may be hosting servers, then on to: • the recipient’s ISP servers, then: • the recipient. Why is this important? Because packets travel through more than one jurisdiction. When determining if it has jurisdiction over a dispute, it is not uncommon for a court to look at where the ISP’s servers are located or where any data is stored. Also, understanding the route of a message can give you clues to the location of a potential target—and the ISPs involved may be of help in solving certain types of problems. Traceroute tools can tell you the route a particular piece of information traveled.19 For example, information from the author’s computer to ecrimetools.com traveled as follows: HOP

IP

1. 2. 3. 4. 5. 6. 7. 8.

nameintelligence.com 64-246-162-161.ipd.ccom.net 216.145.30.186 216-145-7-121.sea.fibercloud.net Ge-6-17.car4.seattle1.level3.net 51.ebr1.seattle1.level3.net 100.ebr2.seattle1.level3.net Ae-2.ebr2.denver1.level3.net

19. There is a list of online traceroute tools in Appendix A, Online Investigative Tools. Appendix B, the Glossary, provides a fuller explanation of the process.

How to Find a Cybersquatter or Site Owner 17 HOP

IP

9. 10. 11. 12. 13. 14. 15. 16.

100.ebr1.denver1.level3.net Ae-2.ebr2.dallas1.level3.net Ae-92-92.csq4.dallas1.level3.net Ae-14-69.car4.dallas1.level3.net planet.car4.dallas1.level3.net 1.irb02hstntx1.theplanet.com 3.ibr02.hstntx2.theplanet.com Po2.car11.hstntx2.theplanet.com

D. How to Find a Cybersquatter or Site Owner 1. The WHOIS Query and Reverse WHOIS As discussed above, the WHOIS query is a formalized protocol for querying RIR, registry, and registrar databases. To investigate a Web site owner, start with the site’s domain name. The most basic tool for domain name enforcement research is the WHOIS search. Each registrar has a WHOIS function. For every domain name registration, there must be a WHOIS entry providing the name and contact information for the registrant. Unfortunately, registrars are not required to verify WHOIS information provided by the registrant, so more often than not, in connection with these types of investigations the information is false. However, one piece of information is often accurate: the administrative contact’s e-mail address. This is so because the registrant needs to be able to receive communications from the registrar regarding the status of the domain name. Virtually every registrar has a link to its WHOIS database on its home page, although it may contain only the domain names for which it is registrar. WHOIS tools such as DomainTools.com and AllWhois.com cover all general top-level domains (gTLDs) and have the advantage of offering information for most country-code top-level domains (ccTLDs) such as .uk, .ca, .cn, etc. (A few ccTLD registries only permit a search of their WHOIS information on the registry’s Web site.) Sometimes it is helpful to use a general WHOIS tool to identify the registrar, then search that registrar’s WHOIS database as it may provide additional information. The appearance of the WHOIS information can often offer a hint as to the type of person or entity that has registered the domain name. Relatively complete information with an address and phone number that can be verified through a tool such as SearchBug.com may indicate that the registrant at least considers itself to be a reputable company.


Practice Tip 8 In some cases, this type of registrant may be more cooperative with enforcement efforts. At the other end of the scale are those with minimal and/or obviously false information (written in all lowercase or misspelled) who are often based outside of the United States. These registrants may consider themselves to be effectively hidden, and thus may be less amenable to enforcement efforts.

Many registrants now employ a private or proxy registration service (often offered by their registrar) that serves to conceal their identity. Some registrants use such a service as a legitimate attempt to avoid spammers and others who harvest contact information from WHOIS databases. In many cases, however, use of a private registration service indicates a registrant who does not want to be found. Practice Tip 9 Reputable private registration services are generally willing to work with attorneys whose clients’ rights are being violated by private registrants. Upon receiving a demand letter accompanied by sufficient evidence to demonstrate a client’s rights and the registrant’s infringement of those rights, a private registration agency may populate the WHOIS record with its customer’s name and contact information. If the agency is not willing to cooperate, the client is entitled to assume that the agency is the true registrant of the domain name and thus responsible for any infringing activities of its client.

A review of the WHOIS record can provide several useful pieces of information. Key among them are: (1) the determination whether the registrant is within the relevant jurisdiction; (2) the name of the registrar; (3) the date on which the domain name was registered, when it was last renewed, and when it is due to expire; (4) the domain name server (compressed as an IP address) to which the domain name maps and, thus, often, the name of the ISP (if any) hosting the registrant’s Web site; and (5) in some cases, the correct contact information! Some WHOIS tools will also unearth additional information, such as the location of the server and a history of WHOIS records, registrars, and domain name servers associated with the domain name over time. The registrant listed in the WHOIS record just prior to the record in which the private registration information appears may be the current owner, or may have transferred the domain name to the current owner, but it is one more piece in

How to Find a Cybersquatter or Site Owner 19

the puzzle. All this information can be useful in deciding how to approach the registrant and in providing insight into and evidence of the registrant’s intent in registering the domain name; it may also be important for jurisdictional purposes (see Chapter III on jurisdiction). A reverse WHOIS search can provide additional useful evidence— particularly in cybersquatting cases when you need to prove bad faith registration. A reverse WHOIS search allows you to look for other domain names owed by registrants with the same or a similar name. WHOIS searches are generally free, particularly for the gTLDs such as .com, .net, .org, .info, and .biz. If the WHOIS or reverse WHOIS searches do not provide the information needed, there are other avenues of investigation. If the domain name resolves to a Web site, the site may contain contact information. If the domain name points or relays to a site at another domain name, the same party may own both names—and the WHOIS for the second domain name may have more complete information. If the administrative e-mail has a domain name for a unique business (e.g., @uniqueco.com, not @gmail.com or @aol.com), bringing up the Web page at uniqueco.com may offer clues to the infringer’s identityor at least genuine contact information.

2. Other Clues Scammers want their Web sites to be as credible as possible. Therefore, even a scam Web site will have pages and information typically found on all other sites, such as terms and conditions, privacy notices, “Contact Us,” and FAQs. Much of this information will be entirely false, but often some fragment of information turns out to be real. Scammers also often engage in real business as well, which requires real information. The upshot is that you should trace any fragment of information on a Web site to see if it leads to the persons or entity you seek. In particular check the following: i. Telephone Numbers. Use a reverse look-up directory to obtain information about the owner of the number. Use a search engine to determine if the telephone number appears elsewhere in some other context on the Web. ii. Addresses. Search telephone listings. Search property records. Also use the exact phrase function of a search engine to search the address. iii. Web Site Terms and Conditions. Read these to determine if there are any clues, such as the designation of an agent or lawyer’s address. iv. Other Service Providers. If the site is a retail one that uses a payment intermediary such as Pay Pal, consider buying something. The receipt from the payment intermediary often displays useful information about the seller.

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v. Web Site Designer. Sometimes a site will identify the designer at the bottom. This can be a clue if other sites have been designed by the same person or company. (You can always call too.) vi. Library of Congress List. Check the Library of Congress list of DMCA agentsdesignated to receive copyright infringement notices. If the company has registered for safe harbor under the DMCA, then at least a real person will be listed as the agent, with real contact information. It is a starting place even if you do not have a copyright problem.

E. How to Interpret E-mail Headers An original e-mail (not one that has already been forwarded to you) can provide a wealth of information. The e-mail header is like the “envelope” of the e-mail (hidden to the reader). It lists the properties related to that message—in particular, the sender, intended recipients, subject, message priority, and certain message-tracking information. The method of obtaining e-mail header information differs based upon the type of e-mail software you use. In general, however, you will highlight the e-mail with a single left click. Then, right click to pull up a menu of options. One of the options should be to view the Internet headers. This is the information you want, so make a copy. It will look something like this: Received: from smtp15.icpbounce.com ([216.27.93.111]) by entmail05.lan.mwe.com with ESMTP; 01 Dec 2008 11:38:51 -0600 Received: from mybigisp.com ([127.34.56.98]) by smtp15.icpbounce.com (Postfix) with ESMTP id 2426E89819C for <[email protected]>; Mon, 1 Dec 2008 12:36:46 -0500 (EST) Date: Mon, 1 Dec 2008 12:36:46 -0500 To: [email protected] From: Txxx Pxxxxxx <[email protected]> Subject: Final program for Venture Summit Silicon Valley—the show begins tomorrow! Message-ID: X-Priority: 3 (Normal) X-Mailer: PHPMailer [version 1.72] Errors-To: [email protected] Return-Path: [email protected]

This is the e-mail header information from a piece of spam received on the author’s office computer. The header lines beginning with Received (bolded for these purposes) list the route of the message from its origin to the office server. The reference to entmail05.lan.mwe.com is the office server. The other information is the sender’s mail server information. You will need to dissect

Unmasking the Anonymous E-mailer

the information in the message and in the header to gather all possible clues as to the true origin of this message. First the From information is arbitrary (i.e., Txxx [email protected]). It is a simple process to falsify a sender’s address. Just as real money must flow to a real account, packets must travel a real route from one server to another. As a message hops from one server to the next, the receiving server adds a Received header set to the front of the message. The first set is the most recently added (i.e., your client’s server, or in the above instance, the author’s law firm’s server added the Received set appearing at the top of the thread). The firm’s e-mail server received the message from another e-mail server at smtp15.icpbounce.com with the IP address 216.27.93.111. The second Received set has even more clues. The original sending server is something called mybigisp.com, which is what the originator deemed the name to be. However, this may or may not be true. The most reliable information is probably the IP address 207.189.104.86. If it does not appear to be accurate, then search the domain name and see if there is some additional information about the IP address. In this instance, the IP address belongs to an Internet service provider in Denver, CO. Here is the arin.net record for IP address 207.189.104.86: OrgName: OrgID: Address: City: StateProv: PostalCode: Country: ReferralServer:

ViaWest Internet Services, Inc. VINS 1444 Wazee St Ste 215 Denver CO 80204 US rWhois://rWhois.viawest.net:4321/

F. Unmasking the Anonymous E-mailer Sometimes, the information in an e-mail header can lead to the physical location (or a close approximation) of the sender. This is not an exact science; however, even a close approximation can be helpful if you are trying to narrow a list of potential anonymous e-mailers—for example, when a client’s employees are being routinely spammed with harmful so-called insider “information” about the employer. Often such e-mails are generated by someone with ties to the client. A near approximation of a location (or, if you are lucky, a trail of travel that can be matched with the travel itinerary of an insider) can be extremely helpful. The key is in the IP addresses found in the e-mail header. The physical location of a particular IP address can be looked up.

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As explained previously, e-mail headers are read from the bottom up—so the pertinent information is at the bottom of this header. It is reproduced here simply to familiarize you with the general and complete layout of header information. Received: from (server location) (192.168.2.11) by (this is likely to be your client’s server) (192.168.2.122) with Microsoft SMTP Server id 8.1.340.0; Tue, 31 Mar 2009 14:15:01 -0500 X-AuditID: c0a8042a-b7b9dae000000e6d-66-49d26d644fc2 Received: from n1.bullet.mail.re3.yahoo.com (n1.bullet.mail.re3.yahoo.com [68.142.237.108]) by smtpgateway2.xxx.edu (Symantec Mail Security) with SMTP id 02.89.03693.46D62D94; Tue, 31 Mar 2009 14:22:12 -0500 (CDT) Received: from [68.142.230.28] by n1.bullet.mail.re3.yahoo.com with NNFMP; 31 Mar 2009 19:15:00 -0000 Received: from [67.195.9.83] by t1.bullet.re2.yahoo.com with NNFMP; 31 Mar 2009 19:15:00 -0000 Received: from [67.195.9.111] by t3.bullet.mail.gq1.yahoo.com with NNFMP; 31 Mar 2009 19:15:00 -0000 Received: from [127.0.0.1] by omp115.mail.gq1.yahoo.com with NNFMP; 31 Mar 2009 19:15:22 -0000 X-Yahoo-Newman-Property: ymail-3 X-Yahoo-Newman-Id: [email protected] Received: (qmail 59915 invoked by uid 60001); 31 Mar 2009 19:15:00 -0000 DKIM-Signature: v=1; a=rsa-sha256; c=relaxed/relaxed; d=ymail.com; s=s1024; t=1238526900; bh=+bivfKUGzb69YzB9xq9FIRpNEQcgsr4RZR94vd z7s54=; h=Message-ID:X-YMail-OSG:Received:X-Mailer:References:Date:From: Subject:To:In-Reply-To:MIME-Version:Content-Type; b=jlLukedbswHIWK wW2NdCsyLrrsAuSNSp81RPYGpkmYtqB8w4vGkwjfs4O7r4S5247MKKJTvw EE2O4FMwur+rS+XXZixTHFi0IVJOztEu4wLA/HzWXTKb+tkDf3mqpQdV 38mKFaB9YkgdNssYiMojCjMx/JK//x6efmzPVsaXDAE= DomainKey-Signature: a=rsa-sha1; q=dns; c=nofws; s=s1024; d=ymail.com; h=Message-ID:X-YMail-OSG:Received:X-Mailer:References:Date:From: Subject:To:In-Reply-To:MIME-Version:Content-Type; b=UQ9dm47dj+cllLLa2+Aw9Df7n9b46umMfe5zPZFwwaXSFcmbhGoofZ7L 6YrkfAmmXqNK7xZiRUx9sWAyHfEqYxkik/jB+hN99jK3/O5/cQs+lh+Mc4G MxU8hJKghN6kwxiiZSIa+Y2/xdORQwker1wUHgWgsVK1tKStH05rT6F0=; Message-ID: X-YMail-OSG: q9HBndQVM1lHNsjDkoid3GZfUxI1xkdbomubVPfU6HTsKmqxfLyggHRdCnJvIhytRkFOh3rYPxyuIJNbTYXANTTrDJqrBMhYy0NVaEX_Bijozi2sbXEZC1BREwmIiunS2mKXfc. uL4zK7QhQYjBDnb5I0osVxGB.BAx0dYMpterC5bUXVMg_Ux._ OxBURrXXTNU3stbgLpVaNaxQgspAGucsR8rc2bKv2Q.hrwXd366e1gqvU0. aXpHBotEnEJSui2VBqTgNkAgt5ghoVMk2Ea06X6PudBKwNCnv MRxnISDEuCiftl9j0VwXyoFWTqKB7khxsp2rvwy2zgoC8tWNCuf NG0bdrbwcWbnIKtnNoYD7g_U6t5ymVxcReceived: from [72.59.177.145] by web112219.mail.gq1.yahoo.com via HTTP; Tue, 31 Mar 2009 12:14:59 PDT

Unmasking the Anonymous E-mailer X-Mailer: YahooMailRC/1277.35 YahooMailWebService/0.7.289.1 References: Date: Tue, 31 Mar 2009 12:14:59 -0700 From: Xxx Staff Subject: Re: XXX E-mail Message To: “Smith, Jane” <[email protected]> In-Reply-To: MIME-Version: 1.0 Content-Type: multipart/alternative; boundary=“0-1856941957-1238526899=:42837” X-Brightmail-Tracker: AAAAAwzExQIOL/cJDjAFsQ== Return-Path: [deleted]@ymail.com

As you can see, there is a lot of information above. In part, this is because an e-mail travels a rather circuitous route. Each received from line denotes a server along the path of the e-mail. The pertinent information for finding the sender is the IP address at the beginning of the header (i.e., the IP address from which the e-mail started) at the lower portion of the thread: Received: from [72.59.177.145] by web112219.mail.gq1.yahoo.com via HTTP; Tue,31 Mar 2009 12:14:59 PDT

Between the brackets above, you will see an IP number. That is the one you want. If you wish to find out the approximate position of the sender (at the time of sending, obviously), you can look up the IP address at a number of sites, which provide IP information including a rather general geolocation of the IP. There are a number of IP lookup services, but one the author finds useful is located at http://whatismyipaddress.com. That engine provides the following information about the target IP address: General Information Hostname: ISP: Organization: Proxy: Type:

72-59-177-145.pools.spcsdns.net Sprint PCS Sprint PCS None detected Dial-up

Geolocation Information Country: United States State/Region: DC City: Washington Latitude: 38.9097 Longitude: -77.0231 Area Code: 202

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As you can see, the e-mail was sent via Sprint PCS, and the IP address is located in Washington, DC, in area code 202. From that, you can determine the e-mail was sent using either a cell phone or a wireless Internet card from a location in or around Washington, DC. The same day, two other e-mails from the same fake/anonymous e-mail address were received. The headers were examined, and the following IP addresses were extracted and entered into the same database. 173.101.253.54 General Information Hostname: ISP: Organization: Proxy: Type:


Geolocation Information Country: United States State/Region: MD City: Elkton Latitude: 39.6172 Longitude: -75.8678 Area Code: 410 72.61.143.163 General Information Hostname: ISP: Organization: Proxy: Type:


Geolocation Information Country: United States State/Region: NY City: New York Latitude: 40.7619 Longitude: -73.9763 Area Code: 212

All three e-mails were sent the same day, within several hours. Based on the available geolocation information, it was possible to determine the following: the author of the e-mails was suing a cell phone or Internet wireless card using the Sprint services, and the author traveled on that day from Washington, DC, to Elkton, MD, and on to New York. In this instance, the client could match the travel itinerary with that of an employee.

An Example of a Simple Investigation Protocol 25

If the e-mails were all sent from one location, the consistent IP address would also give a good general idea of the author’s location. This is a useful cross-reference when all public addresses seem to point to Web sites in places such as Belarus, but, in fact, the registrant’s e-mails all originate from a particular point in the United States. This type of information will help you piece together a scammer’s real location. Remember: these searches do not provide pinpoint accuracy, but they do give you a general idea as to a person’s location and allow you to detect patterns that can sometimes narrow your search for a scofflaw to a significant degree.

G. An Example of a Simple Investigation Protocol In every investigation, gather at least the following basic information. 1. Obtain from the client a written summary of the problem and the client’s suspicions. a. Obtain any relevant documents from the client. b. If the documents include third-party e-mails, then obtain the original e-mail with header information (i.e., get it on a disk or other format). Forwarding an e-mail eliminates the header thread that is most valuable (see below). c. Check if the problem is causing actual confusion or deception of others, and if so, gather that evidence now. 2. Prepare an investigation chart or grid to provide a snapshot of all the specific details, as patterns or overlapping information may be revealed; for example, the same business address may keep on appearing in connection with seemingly unrelated information. This is an important clue. 3. Obtain a WHOIS record for each domain that appears anywhere in the course of the investigation. This may be obvious in a cybersquatter case, but it is also essential in any other investigation—for example, when investigating a coupon fraud, it is likely that certain “active” domains will appear on the coupon face. Obtain a WHOIS for every single domain revealed during an investigation no matter how irrelevant it appears to be at the time. 4. Obtain a Dun & Bradstreet report for each potential target (note if none exists). 5. Check the Secretary of State records for corporate status and aliases. 6. Obtain a Yellow Pages address and phone (note if none exists).


7. Run WHOIS on each domain. a. Reverse IP. b. Note what else is running at address. 8. Check all individual and corporate names for relevant or odd information. 9. Prepare a list of suspicious IP addresses, domains, and people. 10. Check the blacklists for spam records. 11. Obtain franchise tax records from relevant states. 12. Request a list of officers and addresses.

CHAP T ER

3 Jurisdictional Quagmire I don’t need your extra dilemma. But I’d like to know how far you’d go For your kind of reason. I’m not part of your jurisdiction. You don’t have that power over me. “Jurisdiction” —The Screaming Jets1

A. What’s at Stake: Personal Jurisdiction and the Regulation of the Internet

29

B. Where Have We Been?

31

C. Life Is Complicated

32

D. First Principles

33

1. The Early Cases

33

2. International Shoe and the Rise of Long-Arm Statutes

34

3. Emerging Principles

35

a. General Jurisdiction

36

b. Specific Jurisdiction

37

c. In Rem Jurisdiction

38

E. Enter the Internet

39

F. Consider Functionality

41

G. Internet Activities Plus Business Contacts Equal General Jurisdiction

44

1. Lyrics by Dave Gleason.

27

28

Chapter 3 Jurisdictional Quagmire H. Specific Jurisdiction—Defamation I. Recent Case Law: Specific Jurisdiction—Intellectual Property, Contracts, and Commercial Torts

45 48

1. Trademark Disputes

48

2. Copyright and Patent Disputes

49

3. Other Commercial Cases

49

J. Recent Case Law: Cybersquatting

50

K. Recent Case Law: The Role of Servers and ISPs

52

L. Resolution of the Scenarios

52

M. Long-Arm to Global Reach—International Considerations

53

1. The Complexity of International Jurisdictions

54

2. The European Perspective—First Principles

55

3. The E-Commerce Directive (2001/31)

55

4. The General Rule

56

a. Place of Establishment

56

b. The Coordinated Field

57

5. E-Commerce or Commerce?

58

6. Exceptions to the E-Commerce Directive

58

a. Jurisdiction Regulation

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b. Rome I Regulation and the Rome Convention

59

7. National Courts versus Country of Origin Principle

59

8. Conclusion Regarding E-Commerce Directive

61

9. International Defamation

61

N. Scams and Torts—Unique Jurisdictional Considerations

63

What’s at Stake 29

A. What’s at Stake: Personal Jurisdiction and the Regulation of the Internet2 For more than 120 years, American courts have struggled with the constitutional limits on personal jurisdiction:when the courts in one state may hear a suit against a defendant located in another state or nation. The rise of the Internet has led to new and more complex issues regarding personal jurisdiction. But as we consider these issues, it is important to realize that often more is involved than simply whether a given defendant will be inconvenienced by being forced to litigate in a distant forum. Sometimes, the very regulation of the Internet is at stake. In the pre-Internet era, the U.S. Supreme Court held that in deciding issues of personal jurisdiction, a court should consider only whether exercising jurisdiction over a defendant would be an unfair infringement of the defendant’s “individual liberty,”3 and that questions of whether the forum state’s laws would clash with the “fundamental substantive social policies” of another state should not affect the personal jurisdiction analysis, but should rather “be accommodated through application of the forum’s choice-of-law rules.”4 However, even at the time, there was a measure of artificiality to this analysis.5 The question of whether a Web site is subject to personal jurisdiction is often a proxy for the issue of which jurisdiction’s laws should govern the Internet. This issue is perhaps most clearly presented by the cases in which the United States has attempted to criminalize online gambling even though it is legal in the countries where the Web sites are based, or those in which foreign countries prohibited Web sites from publishing information that would be protected in the United States by the First Amendment.6

2. 3. 4. 5.

Elliot Silverman contributed these sections. Ins. Corp. of Ireland v. Compagnie des Bauxites, 456 U.S. 694, 702 (1982). Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477 (1985) (footnote omitted). See, e.g., Keeton v. Hustler Magazine, 465 U.S. 770 (1984), discussed infra §§III(D)(3) and III(H), in which the holding that Hustler was subject to suit in New Hampshire meant that it could face a libel suit there that would have been time-barred in all 49 other states. 6. One such dispute led to the strange judicial decision in Yahoo! v. La Ligue Contra Le Racisme et L’Antisemitisme, 433 F.3d 1199 (9th Cir. 2006) (en banc), cert. denied, 547 U.S. 1163 (2007), in which a French court sought to bar Yahoo! from displaying Web pages for auctions of Nazi memorabilia. Yahoo! sued in California for a declaration that the French court’s judgment was unenforceable in the United States. The French plaintiffs/California defendants argued that they were not subject to personal jurisdiction in the United States and that the case was not ripe for adjudication. The case was eventually heard by an en banc panel of the 9th Circuit. A majority of the en banc court found personal jurisdiction existed in California, and a different majority found the case was ripe, but dissenting judges on each of those issues together formed a majority dismissing the case. 433 F.3d at 1201.

30

Chapter 3 Jurisdictional Quagmire

The global scope of the Internet means that businesses can sell goods and services (and thus breach contracts or commit torts) in jurisdictions they never physically enter. Similarly, a Web site based in one state may publish information tarnishing the reputation of an individual thousands of miles away. Yet the courts have recognized that to exercise personal jurisdiction over a Web site wherever it can be viewed would mean that a single Web site might be subject to conflicting regulations by courts all over the world.7 One commentator called this “the ‘slowest ship in the convoy’ problem,”8 meaning that “the potential application of every sovereign’s law to Internet activity might force such activity to conform to the most restrictive sets of law, or become entangled in hopelessly conflicting or even outright contradictory demands.”9 On the other hand, just because the Internet should not be subject to jurisdiction everywhere, it is equally unrealistic that it should be subject to jurisdiction nowhere. In the heady early days of the Internet, some proclaimed the Internet should be immune from all governmental regulation10—but the courts would have none of that. In one case in which a defendant asserted that it was not subject to personal jurisdiction because its business was conducted not in the territory of the forum state, but “in the borderless environment of cyberspace,”11 the court responded that cyberspace is not “a kingdom floating in the mysterious ether, immune from the jurisdiction of earthly courts,”12 and that the word cyberspace was “not some mystical incantation capable of warding off the jurisdiction of courts built of brick and mortar.”13 Some courts have suggested that Web sites that do not wish to be subject to jurisdiction in distant fora can protect themselves by disclaimers on the Web site or by requiring users to enter into a “click-wrap” contract containing a choice-of-forum provision.14 Such measures have met with a fair amount of success. Courts have been reluctant to exercise personal jurisdiction over Web sites where the text of the site made it clear that it was not soliciting business in the forum.15 Courts have also enforced click-wrap

7. See, e.g., ISI Brands v. KCC Int’l, Inc., 458 F. Supp.2d 81, 89–90 (E.D.N.Y. 2006); Digital Equip. Corp. v. Altavista Tech. . Inc., 960 F. Supp. 456, 463 (D. Mass. 1997). 8. Jonathan L. Zittrain, Internet Law Series: Jurisdiction  (2006). 9. Id. 10. See, e.g., John Perry Barlow, A Declaration of the Independence of Cyberspace (1996), http:// memex.org/barlow.htm (last visited July 2009). 11. Gorman v. Ameritrade Holding Corp., 293 F.3d 506, 510 (D.C. Cir. 2002). 12. Id. at 516. 13. Id. at 510. 14. E.g., Techheads, Inc. v. Desktop Serv. Ctr., Inc., 105 F. Supp. 2d 1142, 1152 (D. Or. 2000); Stomp, Inc. v. Neato, LLC, 61 F. Supp. 2d 1074, 1080–81 (C.D. Cal. 1999). 15. See, e.g., Toys ‘R’ Us, Inc. v. Step Two, S.A., 318 F.3d 446, 454 (3d Cir. 2003) (no jurisdiction over Web site that was in Spanish and listed prices only in Euros, not dollars); Benusan Restaurant

Where Have We Been? 31

agreements, at least where they were prominently displayed and required the user to click “I agree.”16 While such measures may be useful, especially in contract cases, it is far from clear that they will be a panacea, especially in tort cases (such as those alleging defamation or cybersquatting). Only time will tell whether courts will draw sensible boundaries that will permit redress for real harms inflicted by the operators of Web sites without stifling “the most participatory marketplace of mass speech that this country—and indeed the world—has yet seen.”17

B. Where Have We Been? If I had ever been here before on Another time around the wheel, I would probably know just how To deal with all of you. And I feel like I’ve been here before. “Déjà Vu” —Crosby Stills Nash & Young18

In 1958, long before anyone could foresee the Internet (or, for that matter, fax machines or cellular telephones), the Supreme Court noted the role of technological progress in “the trend of expanding personal jurisdiction over nonresidents.”19 The early twentieth century was a time of expanding corporate culture and the rise of the automobile. Thus, as the national economy developed, corporations increasingly began to do business in more than one state, with the automobile making it possible for a motorist to commit a tort in a state far from home and drive off before he could be served with process.

16.

17. 18. 19.

Corp. v. King, 126 F.3d 25, 27 (2d Cir. 1997) (no jurisdiction in New York over Web site that displayed a disclaimer that it was “created to provide information for Columbia, Missouri individuals only”); Am. Online Inc. v. Huang, 106 F. Supp. 2d 848, 849–50 (E.D. Va. 2000) (no jurisdiction over Web site that was in Chinese and solicited business only in Asia). E.g., Feldman v. Google, Inc., 513 F. Supp. 2d 229, 235–38 (E.D. Pa. 2007); Moore v. Microsoft Corp., 293 A.D.2d 587, 741 N.Y.S.2d 92 (2002); but see Specht v. Netscape Commc’n Corp., 306 F.3d 17, 28–35 (2d Cir. 2002) (agreement not enforced where it was not displayed prominently on the website); Thompson v. Handa-Lopez, Inc., 998 F. Supp. 738, 746 (W.D. Tex. 1998) (same). ACLU v. Reno, 929 F. Supp. 824, 881 (E.D. Pa. 1996) (three-judge court), aff ’d, 521 U.S. 844 (1997). Lyrics by David Crosby Hanson v. Deckla, 357 U.S. 235, 250 (1958).

32


As the Court observed “[a]s technological progress has increased the flow of commerce between States, the need for jurisdiction over nonresidents has undergone a similar increase. At the same time, progress in communications and transportation has made the defense of a suit in a foreign tribunal less burdensome. In response to these changes, the requirements for personal jurisdiction over non-residents have evolved . . .”20 Some things never change, with the law trailing far behind technology being one. Internet-related jurisprudence is still rapidly evolving with respect to jurisdiction. Notwithstanding some thoughtful decisions, the law of personal jurisdiction in Internet disputes in the 1990s was a “hodgepodge of . . . inconsistent, irrational and irreconcilable” cases.21 As a result, a legal professional can find a decision to support almost any argument.

C. Life Is Complicated22 Here are two scenarios suggested by actual disputes that demonstrate how ordinary Internet activities become jurisdictionally far-flung. Scenario One. www.ItsAFreeCountry.Org is a noncommercial Web site on which registered users post discussion of current events. The Web site is based in California and hosted on servers there. Jane White, a registered user of the site, lives in New Mexico, and accesses the Internet through an ISP that (unbeknownst to her) is based in Virginia. One day, White reads an article on the ItsAFreeCountry Web site about Joe Green, a lawyer in Washington, DC, who successfully defended a client accused of child molestation. Jane gets angry and posts a message on the site: “Joe Green is a child molester himself. I hear his home computer is loaded with kiddie porn.” The message can be viewed and commented upon by anyone who accesses the ItsAFreeCountry Web site from anywhere in the world. Joe Green lives in Virginia and practices law in the District of Columbia. Offended by Jane’s message, he decides to sue her for libel. Can Green sue White in Virginia (where he lives), or in Washington, DC (where he works), or must he go to New Mexico (where White lives)? Does it make a difference that White accessed the Internet through a Virginia ISP? Or can he sue in California, where the Web site is hosted?23

20. Id. at 250–51. 21. Millennium Enterprises, Inc. v. Millennium Music, Inc., 33 F. Supp. 2d 907, 916 (D. Or. 1999) (quoting Howard B. Stravitz, Personal Jurisdiction in Cyberspace: Something More Is Required on the Electronic Stream of Commerce, 49 S.C.L. Rev. 925, 939 (1998)). 22. Jimmy Buffett, Simply Complicated, on License to Chill (RCA, 2004). 23. The facts of this hypothetical were suggested by those of Bochan v. LaFontaine, 68 F. Supp. 2d 692 (E.D. Va. 1999).

First Principles

Scenario Two. Toastersrus.com is a commercial Web site offering a “virtual electronics store” that sells electronic appliances. Customers can access the site, view information about the goods sold, and submit orders and credit card information. The orders are shipped to the customer by common carrier. Toastersrus.com is based in Minnesota, but ships goods to all 50 states and some foreign countries. Steve Brown, who lives in Texas, buys a toaster from Toastersrus.com, which ships it to him there. Six months later, Brown moves to Colorado. Shortly thereafter, the toaster catches fire and Brown’s house is destroyed. Can he sue Toastersrus.com in Colorado, where the fire took place? In Texas, where the toaster was delivered to him? In Minnesota, where the seller is based? Does it matter that Toastersrus.com sells several thousand dollars worth of goods to Colorado residents every month?24

D. First Principles In the two scenarios above, we see the kinds of jurisdictional issues courts have been struggling with since the Internet’s advent. To understand them, we need to first take a step back and review some basic principles of personal jurisdiction. Personal jurisdiction has been defined as “the power [of a court] to require the parties to obey its decrees.”25 In the United States, issues of personal jurisdiction are based on the Due Process Clause26 of the Constitution, which “does not contemplate that a state may make binding a judgment in personam against an individual or corporate defendant with which the state has no contacts, ties or relations.”27

1. The Early Cases Historically, personal jurisdiction was based solely on the court’s physical power over the defendant. Originally, defendants were arrested and brought into court to answer claims made against them;28 later, arrest was replaced with the service of a summons, but it was still believed that a court acquired

24. The facts of this hypothetical were suggested by those of Mierczkowski v. Masco Corp., 997 F. Supp. 782 (E.D. Tex. 1998). 25. United States v. Swiss Am. Bank, 273 F.3d 610, 617 (1st Cir. 2001). 26. U.S. Const. amend. V; amend. XIV, § 1. 27. World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 294 (1980) (citing Int’l Shoe Co. v. Washington, 326 U.S. 310, 319 (1945)). 28. See Murphy Bros. v. Michetti Pipe Stringing, Inc., 566 U.S. 344, 350 (1990).

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jurisdiction over a defendant only “by service of process within the state or his voluntary appearance.”29 This rule was also applied to corporate defendants: for a court to have personal jurisdiction over a nonconsenting corporation, some authorized agent of the corporation had to be served with a summons within the state where the court sat.30

2. International Shoe and the Rise of Long-Arm Statutes This original idea—that a state had personal jurisdiction over a defendant only if the defendant was served with a summons within the state—became increasingly untenable as the twentieth century began. Two developments, one cultural and the other technological, changed the traditional idea of personal jurisdiction. The advent of corporate culture and the automobile made the insistence on service of process within the state untenable, as corporations did business across state lines and automobiles made it increasingly common for torts to be committed by fleeting visitors to the state. Legislatures responded with laws providing that foreign corporations which did business in the state had to appoint an in-state agent for service of process.31 In addition, out-of-state motorists who drove into or through the state were “deemed” to have appointed a state official as agent for service of process.32 This principle was later expanded to others who performed some regulated activity within the state without being present there.33 However, these statutes, and the decisions that upheld them, still relied on the legal fiction that the defendant was being served with process within the state. Well into the twentieth century, the Supreme Court was still holding that a state could not serve process on a defendant outside its borders.34 This all changed with the Supreme Court’s landmark decision in International Shoe v. Washington.35 In International Shoe, the Supreme Court finally did away with the legal fiction that service within the forum state was

29. Pennoyer v. Neff, 95 U.S. 714, 733 (1888). 30. St. Clair v. Cox, 106 U.S. 350, 353–54 (1882). 31. See, e.g., Int’l Harvestor Co. v. Kentucky, 234 U.S. 579 (1914) and St. Clair v. Cox, 106 U.S. 350 (1882), both upholding the constitutionality of such statutes; but see Philadelphia & Reading Ry. Co. v. McKibbin, 243 U.S. 264 (1917) (finding such service unconstitutional where the corporation was not doing enough business in the state to require it to accept service of process). 32. See, e.g., Hess v. Pawloski, 274 U.S. 352 (1927), upholding the constitutionality of such a statute. 33. See, e.g., Henry L. Doherty & Co. v. Goodman, 294 U.S. 623, 628 (1935), which upheld the constitutionality of a state “Blue Sky” law that permitted service on an in-state agent of an out-of-state defendant who sold securities within the forum state. 34. E.g., Hess, 274 U.S. at 355. 35. 266 U.S. 310 (1945).

First Principles

required36 and permitted states to enact “long-arm statutes” authorizing service on out-of-state defendants. What was required was that a defendant have “certain minimum contacts with [the forum state] such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice.”37 Such minimum contacts would be found when a corporation did a significant amount of business in a state, thus “enjoy[ing] the benefits and protections of the law of that state.”38 The Supreme Court asserted that these rules would give “a degree of predictability to the legal system”39 so that individuals and corporations would “have fair warning” of what activities would subject them to the jurisdiction of another state’s courts40 and could “structure their primary conduct with some minimum assurance as to where that conduct will and will not render them liable to suit.”41 These expectations were overly optimistic as generalities such as “fair play and substantial justice” or “invoking the benefits and protections of [a state’s] laws” provide neither bright lines nor easily applied standards.42 “[D]etermining personal jurisdiction has always been more of an art than a science,”43 and the issue “has long eluded a definitive legal test and proven fertile ground for debate by law students, lawyers and judges alike.”44

3. Emerging Principles Nonetheless, some principles emerge relatively clearly from the morass of conflicting court decisions. A quick review of these principles is necessary to understand where the law of personal jurisdiction stood before the Internet and how new technology has changed some established principles. For a state court to have personal jurisdiction over a defendant not served within the state, there must be a state long-arm statute that authorizes such

36. 37. 38. 39. 40. 41. 42.

43. 44.

Id. at 318. Id. at 316. Id. at 320. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 472 (1985) (quoting World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297 (1980)). Id at 472 (quoting Shaffer v. Heitner, 433 U.S. 186, 218 (1977) (Stevens, J., concurring)). Id. (quoting World-Wide Volkswagen, 444 U.S. at 297). Kulko v. Superior Court, 436 U.S. 84, 92 (1978) (the issue of personal jurisdiction is not “black and white. The grays are dominant and even among them the shades are innumerable.”). United States v. Swiss Am. Bank, 274 F.3d 610, 617 (1st Cir. 2001). Dudnikov v. Chalk & Vermilion Fine Arts, 514 F.3d 1063, 1070 (10th Cir. 2008).

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service, and the application of that statute to the particular defendant must be reasonable under the Due Process Clause.45 In some states, the long-arm statute authorizes extraterritorial service wherever the Constitution permits it,46 so these two inquiries collapse into one.47 On the other hand, some states have long-arm statutes that are narrower than what the Due Process Clause would permit,48 and a plaintiff in such a state seeking to obtain personal jurisdiction over an out-of-state defendant must satisfy the terms of the state statute before the court even needs to reach the constitutional issue.49 A point to keep in mind is that some (but by no means all) of the inconsistency in the case law discussed below in this chapter is due to differences in the long-arm statutes of the different states. Personal jurisdiction can be either general or specific. A court that has general jurisdiction over a defendant may hear any claims against that defendant, whether or not the claims arise out of the defendant’s in-state activities.50 By contrast, a court with specific jurisdiction over a defendant may hear only claims arising out of the particular activity of the defendant in the forum state that gave that court jurisdiction.51 a. General Jurisdiction A court has general jurisdiction over a defendant who is a resident of the forum state52 or is served with process within the state.53 A state may also exercise general jurisdiction over an out-of-state corporation that does business within the state, but only if there are “continuous and systematic general business contacts” between the corporation and the forum;54 “random, fortuitous or attenuated contacts” are not sufficient for this purpose,55 nor are acts

45. See, e.g., Keeton v. Hustler Magazine, 465 U.S. 770, 774 (1984); A Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 1069 at 8 (3d ed. 2002). Federal courts generally follow the long-arm statute of the state in which they sit. See Wright & Miller, § 1075. 46. See, e.g., Calif. Code of Civil Proc. §410.10 (“A court of this state may exercise jurisdiction on any basis not inconsistent with the Constitution of this state or the United States.”) 47. Wright & Miller, supra note 45, § 1069 at 22. 48. See, e.g., Best Van Lines v. Walker, 490 F.3d 239, 244–45 (2d Cir. 2007) (discussing limits of New York long-arm statute); Telebyte, Inc. v. Kendaco, Inc., 105 F. Supp. 131, 135–36 (E.D.N.Y. 2000) (same). 49. See, e.g., Best Van Lines, 490 F.3d at 255. 50. Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408, 414 n.9 (1984). 51. Id. at n.8. 52. Milliken v. Meyer, 311 U.S. 457, 462–63 (1941). 53. Burnham v. Superior Court, 495 U.S. 604 (1990). 54. Helicopteros Nacionales, 466 U.S. at 416; see also Int’l Shoe Co. v. Washington, 326 U.S. 310, 317 (1945). 55. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475 (1985).

First Principles

done by third parties (as distinguished from those done by the defendant itself).56 b. Specific Jurisdiction Specific jurisdiction is far easier to obtain, as even a single act within (or contact with) the forum will suffice, so long as the suit arises out of that act.57 For specific jurisdiction, there must be “a relationship among the defendant, the forum and the litigation.”58 Courts have generally applied a three-part test to claims of specific jurisdiction: (1) the defendant must have “purposefully directed” its activities at the forum state (a formulation usually used in tort cases) or “purposefully availed” itself of the privilege of doing business in the forum state (usually used in contract cases), (2) the cause of action must arise out of that purposeful availment or direction, and (3) the exercise of jurisdiction must be reasonable.59 In contract cases, the Supreme Court has held that by deliberately conducting business within the forum state, the defendant has been “shielded by the benefits and protections of the forum’s laws” and so is subject to jurisdiction there.60 In tort cases, a defendant is subject to jurisdiction in the forum state if its actions caused injury in the forum state, and the defendant “expressly aimed” its conduct at the forum state.61 The mere forseeability that the defendant’s acts will cause harm in the forum state will not suffice, unless the defendant also took some steps specifically aimed at the forum state.62 If these conditions are satisfied, personal jurisdiction will generally be held to be reasonable, but in unusual cases, the exercise of personal jurisdiction in such a case will be found not to satisfy “traditional standards of fair play and substantial justice.”63

56. Helicopteros Nacionales, 466 U.S. at 417; World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 298 (1980); Hanson v. Denckla, 357 U.S. 235, 253 (1958). 57. Burger King, 471 U.S. at 475 n.18. 58. Helicoperos Nacionales, 466 U.S. at 414 (1984) (citing Shafer v. Heitner, 433 U.S. 186, 204 (1977)). 59. See, e.g., Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 514 F.3d 1063, 1071 (10th Cir. 2008); Millennium Enter., Inc. v. Millennium Music, Inc., 33 F. Supp. 2d 907, 911 (D. Or.1999). 60. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 475–76 (1985). 61. Asahi Metal Indus. Co. v. Superior Court, 480 U.S. 102, 112 (1987) (plurality opinion); World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 295 (1980). 62. Calder v. Jones, 465 U.S. 783, 789 (1984); see also Burger King, 471 U.S. at 474. 63. See, e.g., Asahi Metal, 480 U.S. 102, 113–16 (1987) (only dispute was between two non-U.S. corporations arising out of a sale outside the United States and governed by foreign law).

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c. In Rem Jurisdiction In addition to the usual rules of personal jurisdiction, courts have also historically exercised what is known as in rem jurisdiction—jurisdiction over a piece of real or personal property located in the forum state. A court exercising in rem jurisdiction could make a determination as to the ownership of the property, and thus affect the rights of claimants who might be outside the state, but it could not impose any additional personal liabilities on those claimants.64 This doctrine made sense when used by courts to determine the ownership of real property, but as the doctrine began to be applied to intangible property such as debts or choses in action, it became a way to avoid the usual limits on personal jurisdiction.65 The Supreme Court later put an end to those abuses by holding that even in an in rem case, the exercise of jurisdiction had to satisfy the same test of “fair play and substantial justice” as in a case involving jurisdiction in personam.66 The doctrine of in rem jurisdiction then became less important; indeed, it would not even be worth mentioning in this brief overview but for the fact that, as we will see below, the doctrine has become a significant one in the governance of the Internet.

Practice Tip Do not let cybersquatters get away just because they are not within your jurisdiction. In the United States, a federal district court can order a domain registry to cancel an infringing registration so long as the registry is within the court’s jurisdiction. The court’s inherent in rem jurisdiction over a domain name is the basis for such a suit, even when the registrant is not in the United States. Atlas Capco AB v. AtlasCopcoiran.com, 07-1208, 2008 WL 149128 (E.D. Va. Jan. 8, 2008); NBC Universal, Inc. v. NBCUniversal.com, 378 F. Supp. 2d 715 (E.D. Va. 2005); America On-line Inc. v. AOL.org, 259 F. Supp. 2d 449 (E.D. Va. 2003); GlobalSantaFe Corp. v. Globalsantafe.com, 250 F. Supp. 2d 610 (E.D. Va. 2003). Numerous in rem suits are filed in Virginia as Network Solutions and the American Registry for Assigned Numbers are based there.

64. See Shaffer v. Heitner, 433 U.S. 186, 199 (1977). 65. See, e.g., Harris v. Balk, 198 U.S. 215 (1905), in which Epstein, a resident of Maryland, had a claim against Balk, a resident of North Carolina. Unable to sue Balk in Maryland, Epstein instead sued Harris, who owed Balk money, and attached Harris’s debt to Balk—thus depriving Balk of money without serving him with process or even notifying him of the suit. 66. Shaffer, 433 U.S. 186.

Enter the Internet

E. Enter the Internet Don’t worry Darlin’ Now baby don’t you fret We’re livin’ in the future and None of this has happened yet “Livin’ in the Future”—Bruce Springsteen67

As the Internet became accessible to the general public in the mid-1990s, courts faced the question of how this new technology would affect traditional notions of personal jurisdiction. The courts in the earliest cases seized on the concept that technological progress somehow justified relaxing the rules68 without heeding the Supreme Court’s warning that “it is a mistake to assume that this trend heralds the eventual demise of all restrictions on the personal jurisdiction of state courts.”69 In one of the first court decisions to address the impact of the Internet on personal jurisdiction, Inset Systems, Inc. v. Instruction Set, Inc.,70 a Connecticut company named Inset Systems (which had trademarked that name) sued a Massachusetts corporation named Instruction Set, which had a Web site at inset.com.71 The defendant had no contacts with Connecticut, but a U.S. district court in that state nonetheless held that it could be sued there, because by creating a Web site that was accessible in Connecticut, the defendant was “soliciting business in this state.”72 The court breathlessly noted, “there are at least 10,000 Internet connected computer users in the state of Connecticut”73 without pausing to ask how many of those computer users had actually accessed the defendant’s Web site (the answer would probably have been zero). The courts in a few other early cases similarly concluded that the mere fact that the defendant’s Web site was accessible on the Internet in the forum state was sufficient to assert personal jurisdiction over the defendant, at least if the plaintiff’s claim was based on something found on that Web site.74

67. 68. 69. 70. 71. 72. 73. 74.

Lyrics by Bruce Springsteen See supra §III(B). Hanson v. Deckla, 357 U.S. 235, 251 (1958). 937 F. Supp. 161 (D. Conn. 1996). Id. at 162–63. Id. at 164. Id. at 163. See, e.g., EDIA Software Int’l v. Basis Int’l, Ltd., 947 F. Supp. 4134, 420 (D. Ariz. 1996); see also Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1328 (E.D. Mo. 1996) (Web site subject to personal jurisdiction because it was accessible in the forum state and invited viewers to send in e-mail addresses); Heroes, Inc. v. Heroes Foundation, 958 F. Supp. 1, 4–5 (D.D.C. 1996)

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However, one of these courts did pause briefly to ponder the policy implications of this view, noting that it was “opening the Web user up to inconsistent regulations throughout fifty states, indeed, throughout the globe.”75 Nonetheless, it went on to uphold personal jurisdiction in the plaintiff’s chosen forum based on a number of factors, some stronger than others.76 Some measure of sanity was restored to this area of the law by District Judge Sidney Stein’s opinion for the Southern District of New York in Benusan Restaurant Corp. v. King.77Benusan was a trademark dispute between the owners of the famous Blue Note jazz clubs, located in New York and overseas, and a small jazz club in Columbia, Missouri, which also used the name Blue Note. The defendant’s club apparently came to the attention of the plaintiff only when the defendant established a Web site.78 The district court found that the New York long-arm statute would not support jurisdiction in New York over the Missouri club, because although that statute asserts jurisdiction over a defendant who commits a tortious act in New York, the tort of trademark infringement is committed only at the place where a customer buys the defendant’s goods or services thinking they are the plaintiff’s.79 Alternatively, the court concluded asserting jurisdiction would violate the Due Process Clause: the defendant’s Web site was accessible in New York—and the rest of the world—but was not purposefully aimed at New York.80 On appeal, the Second Circuit did not reach the constitutional issue because it agreed that the New York long-arm statute did not support the exercise of personal jurisdiction.81 That statute reaches tortious acts performed in New York by a defendant who is present in New York;82 it also reaches torts committed outside of New York that cause injury in New York, but only if the defendant also “derives substantial revenue from interstate . . . commerce,” where here the defendant ran a small jazz club with only a local clientele.83

75. 76.

77. 78. 79. 80. 81. 82. 83.

(Web site subject to personal jurisdiction because it was accessible in the forum state and solicited contributions). Digital Equip. Corp. v. Altavista Tech., Inc., 960 F. Supp. 456, 463 (D. Mass. 1977). The dispute arose not only from the defendant’s Web site, but also from a contract that had been negotiated between the defendant and the Massachusetts plaintiff. 960 F. Supp. at 464–66. The court also found it significant that defendant had, through its Web site, acquired three customers in Massachusetts. Id. 937 F. Supp. 295 (S.D.N.Y. 1996), aff ’d, 126 F.3d 25 (2d Cir. 1997). Id. at 297. Id. at 299. Id. at 301. 126 F.3d 25, 27 (2d Cir. 1997). Id. at 28 (citing N.Y. C.P.L.R. § 302(a)(2)). Id. at 29 (citing N.Y. C.P.L.R. § 302(a)(3)).

Consider Functionality 41

Another thoughtful early decision was that of the Court of Appeals for the Sixth Circuit in CompuServe, Inc. v. Patterson.84 CompuServe, an Ohio corporation, sold software over the Internet. Designers of software programs could sell their software through CompuServe’s Web site pursuant to an agreement whereby CompuServe would keep 15 percent of the sales price and remit the balance to the designer. Patterson, a Texas resident, created software and entered into such an agreement with CompuServe; the agreement recited that it was “entered into in Ohio.”85 Patterson later claimed that CompuServe was selling another software program that infringed his software, and he sent e-mails to CompuServe in Ohio threatening legal action. CompuServe responded by suing Patterson in Ohio for a declaratory judgment.86 The Sixth Circuit held that the federal court in Ohio had personal jurisdiction over Patterson. It questioned whether a single, small transaction consummated over the Internet would be enough to subject a consumer to jurisdiction in the home state of the Web site contracted with, but noted that Patterson was an entrepreneur engaged in a profit-making business87 who had purposefully availed himself of the privilege of doing business in Ohio by entering into a contract with an Ohio corporation, sending software to Ohio to be resold by that Ohio corporation, and sending a demand letter to Ohio.88

F. Consider Functionality The first attempt to systematize and reconcile the conflicting cases on the subject of personal jurisdiction based on Internet Web sites was written by U.S. District Judge Sean McLaughlin of the Western District of Pennsylvania in January 1997 in the case Zippo Manufacturing Company v. Zippo Dot Com, Inc.89 Several appellate courts later called Zippo “the seminal authority regarding personal jurisdiction based upon the operation of an Internet web site.”90

84. 89 F.3d 1257 (6th Cir. 1996). This decision is apparently the first appellate one dealing with the issue of personal jurisdiction in the Internet context. 85. Id., 89 F.3d at 1260–61. 86. Id. at 1261. 87. Id. at 1268. 88. Id. at 1264. 89. 952 F. Supp. 1119 (W.D. Pa. 1997). 90. E.g., Best Van Lines, Inc. v. Walker, 490 F.3d 239, 251 (2d Cir. 2007); Toys ‘R’ Us, Inc. v. Step Two, S.A., 318 F.3d 446, 452 (3d Cir. 2003).

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The district court in Zippo recognized that not all Internet sites are the same, and posited a sliding scale whereby “the likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet.”91 According to the Zippo court, situations in which “a defendant clearly does business over the Internet” are at “one end of the spectrum.” Furthermore, “If the defendant enters into contracts with residents of a foreign jurisdiction that involve the knowing and repeated transmission of computer files over the Internet, personal jurisdiction is proper.”92 At the opposite end of this sliding scale, the Zippo opinion placed the “passive Web site,” which merely makes information available to anyone who accesses it. Such a passive Web site “is not grounds for the exercise of personal jurisdiction.”93 In addition, “The middle ground is occupied by interactive web sites where a user can exchange information with the host computer,” in which case “the exercise of personal jurisdiction is determined by examining the level of interactivity and commercial nature of the exchange of information that occurs on the web site.”94 Zippo’s three-part sliding-scale model was quickly seized upon by other courts for resolving whether jurisdiction existed over the operator of a particular Web site. As of this writing, over 475 cases have cited Zippo, and more than 170 have explicitly stated that they were following it. Zippo, however, has not been without its critics. One influential treatise states that the Zippo court’s “approach should be understood at best as a jurisprudential heuristic, and at worst as potentially misleading.”95 And one court questioned Zippo, noting that “it is not clear why a Web site’s level of interactivity should be determinative on the question of personal jurisdiction” and that the Zippo “court did not explain under what authority it was adopting a specialized test for the Internet or even why such a test was necessary.”96 It is true that a defendant’s use of the Internet does not obviate the need for a court to “undertake the traditional personal jurisdiction analysis.”97 Indeed, the Zippo court itself acknowledged as much, recognizing that

91. Zippo, 952 F. Supp. at 1124. 92. Id. (citing CompuServe Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996)). 93. Id. (citing Benusan Restaurant Corp. v. King, 937 F. Supp. 295 (S.D.N.Y. 1996)); see the discussion of Benusan supra, note 77–83. 94. Id. (citing Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1320 (E.D. Mo. 1996)). see the discussion of Maritz supra, note 94. 95. Wright & Miller, supra note 45, § 1073.1 at 326. 96. Hy Cite Corp. v. Badbussinessbureau.com, LLC, 297 F. Supp. 2d 1154, 1160 (W.D. Wis. 2004). 97. Wright & Miller, supra note 45, at 327.

Consider Functionality 43

“[d]ifferent results should not be reached simply because business is conducted over the Internet.”98 Thus, “the Zippo case’s sliding scale approach should be of little value in a general jurisdiction analysis.”99 Even a Web site used to enter into contracts with viewers will rarely support a finding that the owner of the site is engaged in “continuous and systematic” business in the forum state.100 Where the Zippo approach is most useful is in analyzing the purposeful availment or purposeful direction prong of the test for specific jurisdiction.101 A Web site used to enter into contracts with a viewer will typically form a basis for personal jurisdiction if the plaintiff’s claim arises out of one of those contracts.102 A passive Web site, in contrast, will rarely if ever constitute purposeful availment103 because the owner of a passive Web site “can have some contact with people and entities within a given forum state without taking any purposive step toward the residents of that state or even knowing that a contact has been made.”104 Thus, while the Zippo sliding scale “is not a litmus test for determining that due process would not be offended by the court asserting jurisdiction,”105 it has proven to be an important and influential model for considering personal jurisdiction issues. Although the Zippo model addresses many questions about personal jurisdiction and the Internet, it hardly answers all of them. Let us take another look at the two scenarios discussed above.106 In Scenario One (involving allegedly libelous comments posted on an Internet discussion board), there was no commercial activity occurring at all, so Zippo would suggest that the defendant could be sued only in her home state. However, actual court decisions in Internet defamation cases have often upheld long-arm jurisdiction.107 Similarly, in Scenario Two (involving a defective toaster sold over the Internet), the Zippo model suggests that jurisdiction is proper in the state where the toaster was originally shipped,108 but has little to say about whether jurisdiction is proper in another state where the purchaser subsequently moved.109

98. 99. 100. 101. 102. 103. 104. 105. 106. 107. 108. 109.

Zippo, 952 F. Supp. at 1124. Wright & Miller, supra note 45, at 331. See supra §III(D)(3)(a). See supra §III(D)(3)(b). Wright & Miller, supra note 45, at 341. Id. at 342. Id. at 340. Id. at 342. See supra §III(C). See infra §III(H). See infra §III(I)(3). One possible answer to this question is discussed infra §III(G).

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G. Internet Activities Plus Business Contacts Equal General Jurisdiction Courts have generally found that a defendant is not subject to general jurisdiction in a state in which it did not reside merely because of activities conducted in the forum state through a Web site.110 A number of cases, however, have found a nonresident defendant subject to general jurisdiction based on a combination of Internet activity and other, more traditional business contacts.111 The growth of online retailers suggests the possibility that a retailer may sell so many goods to residents of the forum state that it could be considered to be “doing business” in that state on a “continuous and systematic” basis even without having any “bricks-and-mortar” retail outlets, warehouses or sales facilities in the state. In Gator.com Corp. v. L.L. Bean, Inc.,112 a threejudge panel of the Ninth Circuit held that L.L. Bean’s sales to California residents via Internet, catalog, and telephone orders (which amounted to millions of dollars annually and 6 percent of L.L. Bean’s total sales) were sufficient to subject it to general jurisdiction in California.113 That decision, however, was vacated when the Ninth Circuit voted to rehear the case en banc.114 By the time of that rehearing, the parties had largely settled their dispute, resulting in the en banc court’s dismissal of the case as moot.115 However, the dissenting opinion on the en banc court protested that this failure to decide

110. See, e.g., FC Investment Group v. IFX Markets, Ltd., 529 F.3d 1087, 1092-93 (D.C. Cir. 2008) (even interactive website does not create general jurisdiction, unless form residents transact business on it “in a continuous and systematic way”); Revell v. Lidov, 317 F.3d 467, 471 (5th Cir. 2002) (no general jurisdiction found; a passive Web site is “a continuous presence everywhere,” but such presence is not “substantial”); Bancroft & Masters, Inc. v. Augusta Nat’l, Inc., 223 F.3d 1082, 1086 (9th Cir. 2000) (passive Web site does not support claim of general jurisdiction); Shisler v. Sanfer Sports Cars, Inc., 146 Cal. App. 4th 1254, 1259–60, 53 Cal. Rptr. 3d 335 (2006); Techheads, Inc. v. Desktop Serv. Center, Inc., 105 F. Supp. 2d 1142, 1147 (D. Or. 2000); see generally supra §III(D)(3)(a) (discussing general jurisdiction). 111. See, e.g., Citigroup Inc. v. City Holding Co., 97 F. Supp. 2d 549, 569–70 (S.D.N.Y. 2000) (West Virginia bank subject to general jurisdiction in New York where it maintained an interactive Web site permitting viewers to apply for loans online actually made loans to New Yorkers and held mortgages on properties in New York); Publ’ns Int’l, Ltd. v. Burke/ Triolo, Inc., 121 F. Supp. 2d 1178, 1182–83 (N.D. Ill. 2000) (defendant subject to general jurisdiction in Illinois where it maintained an interactive Web site permitting viewers to request its catalog, and defendant also had a sales representative in Illinois). 112. 341 F.3d 1072 (9th Cir. 2003), vacated, 366 F.3d 789 (9th Cir. 2004), dismissed on reh’g, 398 F.3d 1125 (9th Cir. 2005) (en banc). 113. Id. 341 F.3d at 1077–80. 114. 366 F.3d 789 (9th Cir. 2004). 115. 398 F.3d 1125 (9th Cir. 2005).

Specific Jurisdiction—Defamation 45

the personal jurisdiction issue would leave the Circuit’s personal jurisdiction law in “disarray.”116 Similarly, the D.C. Circuit found in one case that Ameritrade might be subject to general jurisdiction in the District of Columbia because of the volume of online brokerage business it did with its residents,117 but that observation was dictum because the case was dismissed on unrelated grounds.118 In another case, a federal district court in Texas held that a furniture manufacturer was subject to general jurisdiction in Texas, even though it had no offices or employees in Texas, as it maintained an interactive Web site that permitted viewers to place orders and shipped $700,000 worth of goods each year to Texas residents.119 It remains to be seen whether other courts will uphold personal jurisdiction in cases such as this, although the explosive growth of online commerce suggests that the panel decision in L.L. Bean may be a harbinger of future decisions.

H. Specific Jurisdiction—Defamation You can . . . slander my name All over the place. “Blue Suede Shoes” —Carl Perkins120

Defamation cases have raised some of the most difficult issues of personal jurisdiction based on Internet usage. The Zippo formulation121 tells us that a purely passive Web site is not likely to support personal jurisdiction, and in a typical commercial case that will usually be true. The Zippo test also focuses on the amount of commercial activity done through a Web site. But what if a purely passive, noncommercial Web site disseminates defamatory statements about a citizen of the forum state? The U.S. Supreme Court considered the issue of personal jurisdiction in libel cases in two pre-Internet opinions, both released on March 20, 1984.

116. 117. 118. 119.

Id. at 1143. Gorman v. Ameritrade Holding Corp., 293 F.3d 506, 512 (D.C. Cir. 2002). Id. at 514–16. Mierczkowski v. Masco Corp., 977 F. Supp. 782 (E.D. Tex. 1998). Compare Scenario Two in supra §III(C). 120. Lyrics by Carl Perkins. 121. See supra §III(F).

46 Chapter 3 Jurisdictional Quagmire

In Keeton v. Hustler Magazine,122 in which the magazine was alleged to have libeled the plaintiff, the Court held that Hustler was subject to suit in New Hampshire123 because it sold 10,000–15,000 copies of the magazine there each month.124 This level of sales showed that Hustler had “continuously and deliberately exploited the New Hampshire market, [and] must reasonably anticipate being haled into court there in a libel action based on the contents of the magazine.”125 The Court did not deem it significant that the plaintiff had few contacts with New Hampshire126 and that she had sued there only because it was the only state in which her libel claim would not have been barred by the statute of limitations.127 The Court observed that, where the defendant had sufficient minimum contacts with the forum, the plaintiff’s contacts with the forum are irrelevant;128 but it added that the plaintiff’s residence may nonetheless be relevant to the personal jurisdiction issue in a case in which the plaintiff resides in the forum state and the plaintiff’s residence is “the focus of the activities of the defendant out of which the suit arises.”129 That observation was key to the Court’s holding in the companion case of Calder v. Jones.130 In Calder, Shirley Jones, an actress who lived and worked in California, sued in California, alleging that she had been libeled by an article in the National Enquirer.131 The Enquirer did not dispute that it was subject to jurisdiction in California132 (it sold 600,000 copies of each of its issues in California, more than its circulation in any other state).133 Jones, however, had also sued two individual defendants: the writer and editor who had worked, in Florida, on the allegedly defamatory article.134 The Court held that these two defendants were also subject to personal jurisdiction in California because “their intentional, and allegedly tortious, actions were expressly aimed at California,”135 in that the “allegedly libelous story concerned the California activities of a California resident,” and “impugned

122. 123. 124. 125. 126. 127. 128. 129. 130. 131. 132. 133. 134.

465 U.S. 770 (1984). Id. at 773–74. Id. at 772. Id. at 781. Id. at 775–80. Id. at 773. Id. at 779–80. Id. at 780. 465 U.S. 783 (1984). Id. at 785. Id. Id. Id. at 785–86. In a multi-defendant case, personal jurisdiction must be established separately as to each defendant. Id. at 790. 135. Id. at 789.

Specific Jurisdiction—Defamation 47

the professionalism of an entertainer whose television career was centered in California.”136 Thus, “the brunt of the harm” to the plaintiff’s professional reputation and to her emotions was “suffered in California.”137 The typical Internet defamation case differs from Keeton and Calder in a number of ways: many Web sites are noncommercial, and they do not sell subscriptions anywhere. Moreover, those who publish defamatory comments on Web sites (sometimes the owners of the sites, sometimes mere readers who post comments) often do not know where their subjects are located. However, some of the earliest cases to deal with claims that a plaintiff had been libeled by statements made on the Internet ignored these distinctions and simply held that a plaintiff alleging defamation could sue the Web site owner in the plaintiff’s home state.138 Later cases have tended to hold that merely posting a defamatory message on the Internet, without more, will not support personal jurisdiction in the home state of the person defamed, absent some evidence that the defendant was “expressly aiming” the statement at the plaintiff’s home state, in the sense that the Supreme Court found such “express aiming” in the Calder case.139 These cases are correct, as far as they go, but they ignore another aspect of the Calder and Keeton cases: both of those cases involved commercial, forprofit publications that sold thousands of copies of their publications each month in the forum states. It is one thing to say that they could “reasonably anticipate being haled into court” wherever their publications were sold.140 It is quite another thing, however, to say that a purely noncommercial

136. Id. at 788. 137. Id. at 789. 138. See, e.g., EDIAS Software Int’l v. Basis Int’l, Ltd., 947 F. Supp. 413, 420 (D. Ariz. 1996); see also Blumenthal v. Drudge, 992 F. Supp. 44, 53–57 (D.D.C. 1998); Telco Commc’n v. An Apple a Day, 977 F. Supp. 404, 406–07 (E.D. Va. 1997). In at least Blumenthal and Telco, it appears the defendants did know where the plaintiff lived. 139. E.g., Best Van Lines, Inc. v. Walker, 490 F.3d 239 (2d Cir. 2007) (New York long-arm statute did not reach libel published out-of-state; due process issue not reached); Revell v. Lidov, 317 F.3d 467, 473–75 (5th Cir. 2002) (defendant did not know plaintiff lived in Texas); Young v. New Haven Advocate, 315 F.3d 256, 263–64 (4th Cir. 2002) (Web site was aimed at a Connecticut audience, and criticized a Virginia public official only in the course of reporting a Connecticut news story); Medina Mining, Inc. v. Amunategui, 237 F. Supp. 2d 1132, 1135–37 (D. Nev. 2002) (criticizing EDIAS, at n. 138); Oasis Corp. v. Judd, 132 F. Supp. 2d 612, 621–24 (S.D. Ohio 2001) (defendant did not aim Web site at Ohio; no evidence that anyone in Ohio ever read it except for the plaintiff itself); see also Bochan v. LaFontaine, 68 F. Supp. 2d 692 (E.D. Va. 1999) (upholding jurisdiction based on a number of factors including the location of the defendant’s ISP and the defendant’s knowledge that the plaintiff was a resident of the forum state). 140. Keeton v. Hustler Magazine, 465 U.S. 770, 781 (1984).

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Web site,141 or any individuals who merely post comments on a thread on such a Web site,142 should reasonably anticipate being sued in a distant state just because they knew the person they are criticizing lives in that state.143 This is a distinction that should be addressed by future courts.

I. Recent Case Law: Specific Jurisdiction— Intellectual Property, Contracts, and Commercial Torts 1. Trademark Disputes The rise of the Internet has led to two nontraditional types of trademark disputes: cybersquatting cases (discussed below)144 and cases in which one business as a result of the Internet learns of another business in another state with the same or a similar name. If the two businesses are in separate geographic areas, and do not compete, the mere fact that one or both of them is on the Internet should not be enough to support personal jurisdiction in a state far from where the defendant does business. Most of the case opinions get this right.145 Even if the defendant offers its goods for sale over the Internet, it should not be subject to personal jurisdiction in a distant state where it does not, in practice, sell any goods. Attempts by plaintiffs to manufacture jurisdiction by ordering the defendant’s goods have rightly been rejected by the courts where the plaintiff has not been able to demonstrate that anyone else in the forum state has ever bought anything from the defendant.146

141. Best Van Lines and Oasis Corp. (both discussed supra note 139) involved noncommercial “gripe sites” posted by individual consumers to complain about unsatisfactory treatment they had received at the hands of corporations—the same corporations who later sued them for libel. 142. Bochan and Medinah Mining (both discussed supra note 139) involved individuals sued for libel based on comments they posted on Web sites hosted by others, which featured commentary on issues of public interest. 143. Compare Scenario One in supra §III(C). 144. See infra §III(J). 145. See, e.g., Pebble Beach Co. v. Caddy, 453 F.3d 1151 (9th Cir. 2006); Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414 (9th Cir. 1997); Benusan Restaurant Corp. v. King, 129 F.3d 25 (2d Cir. 1997) (discussed more fully supra,:note 77–83). 146. E.g., ISI Brands, Inc. v. KCC Int’l, Inc., 458 F. Supp. 2d 81, 88–90 (E.D.N.Y. 2006); Millennium Enter., Inc. v. Millennium Music, Inc., 33 F. Supp. 2d 907 (D. Or. 1999).

Recent Case Law: Specific Jurisdiction

2. Copyright and Patent Disputes Cases involving Web sites that sell or advertise goods alleged to violate copyrights or patents should be decided under the Zippo paradigm:147 having a passive Web site should not subject the defendant to jurisdiction in a forum where it has no other contacts,148 but selling goods over the Internet should subject the defendant to jurisdiction where it delivers those goods (or at least a significant amount of them).149 As one court held, “a State may, consistent with due process, exercise judicial power over a person outside of the State when that person (1) directs electronic activity into the State, (2) with the manifested intent of engaging in business or other interactions within the State, and (3) that activity creates, in a person within the State, a potential cause of action cognizable in the State’s courts.”150 An interesting line of cases involves Web sites that sell or permit the free downloading, of programs that allow a user to decrypt and copy digital video disks. Here again, the courts have tended to follow the Zippo analysis; Web sites that sell this software to customers in the forum state have been held subject to personal jurisdiction151 but essentially passive Web sites that allow the software to be downloaded for free were not.152

3. Other Commercial Cases Courts in cases involving other sorts of legal claims arising out of the advertising or sale of goods over the Internet similarly have found defendants subject to personal jurisdiction in a forum into which they deliver goods

147. See supra §III(F). 148. ALS Scan, Inc. v. Digital Serv. Consultants, 293 F.3d 707 (4th Cir. 2002), cert. denied, 537 U.S. 1105 (2003); see also On-Line Tech. v. Perkins Elmer Corp., 141 F. Supp. 2d 246 (D. Conn. 2001), aff ’d in part, rev’d in part on other grounds, 386 F.3d 1133 (Fed. Cir. 2004). 149. Arista Records, Inc. v. Sakfield Holding Co., 314 F. Supp. 2d 27, 31 (D.D.C. 2004) (Web site that permitted downloading of copyrighted music subject to personal jurisdiction where downloads occurred); Stomp, Inc. v. Neato, LLC, 61 F. Supp. 2d 1074 (C.D. Cal. 1999). Stomp was probably wrongly decided because the only sales in the forum state were made to the plaintiff after the suit had been commenced. 61 F. Supp. 2d at 1076 n. 2. 150. ALS Scan, 293 F.3d at 714. 151. Warner Bros. Entm’t Inc. v. Ideal World Direct, 516 F. Supp. 2d 261, 266–67 (S.D.N.Y. 2007). 152. Pavlovich v. Superior Court, 29 Cal.4th 262, 270–78, 127 Cal. Rptr.2d 329, 58 P.3d 2 (2002); Warner Bros., 516 F. Supp. 2d at 267. But see Pavlovich, 29 Cal. 4th at 279–99 (dissenting opinion, presenting the argument that the Web site should be subject to jurisdiction in California because it was intentionally targeted at the motion picture industry, which is centered in California).

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ordered over the Internet,153 but not in a forum where they have no contact beyond a passive Web site advertising those goods.154

J. Recent Case Law: Cybersquatting Cybersquatting cases155 raise a number of interesting jurisdictional issues because a cybersquatter can cause damage to a plaintiff merely by having a passive Web site whose domain name is confusingly similar to the name or trademark of a successful business. It has been suggested that “a special jurisprudence seems to have developed for cases involving so-called ‘cybersquatters.’”156 In fact, the holdings of most of the cases are not in conflict with the general rule that the mere maintenance of a passive Web site, without more, will not subject its owners to personal jurisdiction anywhere the site is accessible. When the courts have upheld personal jurisdiction over cybersquatters, there has usually been “something more.” Courts have upheld personal jurisdiction over a cybersquatter who registered a domain name similar to the plaintiff’s name or trademark, then attempted to extort money from the plaintiff in exchange for releasing that domain name.157 In these cases, it was the defendant’s demanding money

153. See, e.g., Dominos Pizza PMC v. Caribbean Rhino, 453 F. Supp. 2d 998, 1002 (E.D. Mich. 2006); but see Boschetto v. hansing, 539 F.3d 1011 (9th Cir. 2008) (sale of a single automobile to a California resident through an Internet Web site did not authorize personal jurisdiction over the seller in California); cf. Shisler v. Sanfer Sports Cars, Inc., 146 Cal. App.4th 1254, 53 Cal. Rptr. 3d 335 (2006) (holding that dealer was not subject to jurisdiction in California when a California plaintiff saw used car advertised on Web site of Florida car dealer, but purchased the car by mail, and the contract said that title passed in Florida). 154. See, e.g., GTE New Media Serv. v. BellSouth Corp., 199 F.3d 1343, 1350 (D.C. Cir. 2000) (Web site not “doing business” in District of Columbia where viewers did not pay for access to it); Weber v. Jolly Hotels, 977 F. Supp. 327 (D.N.J. 1977) (lawsuit arising out of slip-andfall accident at Italian hotel; passive Web site does not subject hotel to jurisdiction in the United States); Smith v. Hobby Lobby Stores, 968 F. Supp. 1356 (W.D. Ark. 1997) (products liability case holding that manufacturer is not subject to personal jurisdiction in state where it makes no direct sales, despite advertising on Internet). 155. See the discussion of cybersquatting infra in §IV(A). 156. Wright & Miller, supra note 45, § 1073.1 at 352. 157. E.g., Panavision Int’l v. Toeppen, 141 F.3d 1316, 1322 (9th Cir. 1998); Mashantucket Pequot Tribe v. Redican, 309 F. Supp. 2d 309, 319–20 (D. Conn. 2004); Inconnu Lodge v. Combine. Com LLC, 214 F. Supp. 2d 1204, 1208 (D. Utah 2002). See also Bancroft & Masters, Inc. v. Augusta Nat’l Inc., 223 F.3d 1082, 1087–88 (9th Cir. 2000) (defendant’s attempt to have plaintiff ’s domain name cancelled was act “expressly aimed” at plaintiff, justifying personal jurisdiction in plaintiff ’s home state).

Recent Case Law: Cybersquatting 51

from the plaintiff that demonstrated the defendant was “expressly aiming” its conduct at the plaintiff and thus supported the exercise of personal jurisdiction in the plaintiff’s home state.158 In contrast, where the defendant’s domain name is confusingly similar to the plaintiff’s domain name or trademark, but the defendant has not demanded money from the plaintiff and there are no other indicia of an intent to harm the plaintiff, the majority (and better) view is that the defendant is not subject to personal jurisdiction in the plaintiff’s home state.159 In an effort to simplify the law in this area, Congress in 1999 enacted the Anticybersquatting Consumer Protection Act,160 one section of which161 permitted an action in rem162 against a domain name in the district where it had been registered or where the domain name registry was located (in practice, this usually means the Eastern District of Virginia, where Network Solutions, Inc. is located). However, an action in rem can be brought only if the plaintiff is unable to obtain personal jurisdiction over the owner of the Web site in any district, or cannot locate the defendant despite due diligence.163 The Fourth Circuit (which encompasses the Eastern District of Virginia) has upheld the constitutionality of this statute.164 Prior case law had generally held that the mere act of registering a domain name with Network Solutions was not a sufficient basis for exercising personal jurisdiction over a defendant in Virginia.165 However, given that the Anticybersquatting Act provides only for an action in rem to cancel a domain name registration, and does not authorize any other action against a defendant (such as an award of money damages), and given that the statute applies only if the owner of the domain name cannot be located or is not subject to personal jurisdiction in any other district, the statute is a reasonable solution to this issue.

158. See the discussion of express aiming in supra §III(D)(3)(b). 159. See, e.g., Pebble Beach Co. v. Caddy, 453 F.3d 1151, 1156–58 (9th Cir. 2006); Am. Online, Inc. v. Huang, 106 F. Supp. 2d 848, 859 (E.D. Va. 2000); Millennium Enter., Inc. v. Millennium Music, Inc., 33 F. Supp. 2d 907, 922 (D. Or. 1993). Contra, Inset Systems, Inc. v. Instruction Set, Inc., 937 F. Supp. 161 (D. Conn. 1996). (See the discussion of Inset supra §III(E).) 160. See the discussion of that Act infra §IV(A). 161. 15 U.S.C. § 1125(d). 162. In rem jurisdiction is discussed supra §III(D)(3)(c). 163. See the discussion of this statute in Caesars World, Inc. v. Caesars-Palace.Com, 112 F. Supp. 2d 502, 503–04 (E.D. Va. 2000). 164. Porsche Cars North Am. Inc. v. Porsche.Net, 302 F.3d 248, 259–60 (4th Cir. 2002); Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 224–25 (4th Cir. 2002). 165. E.g., Am. Online, Inc. v. Huang, 106 F. Supp. 2d 848, 856–58 (E.D. Va. 2000); cf. Amberson Holdings LLC v. Westside Story Newspaper, 110 F. Supp. 2d 332, 335–37 (D.N.J. 2000) (contracting for hosting of a Web site on a server in New Jersey not a sufficient basis for exercise of personal jurisdiction there).

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K. Recent Case Law: The Role of Servers and ISPs Computer users sitting at their computer reading or posting a comment on a Web site may think only two locations are involved: where they happen to be sitting, and where the Web site is based. In fact, the flow of information is far more complicated, involving the user’s ISP, the Web site’s servers, and other stops along the electronic superhighway.166 Only a few courts, however, have considered the implications for personal jurisdiction of these added locations. The average individual computer user is not likely to even be aware of the location of his or her ISP. As personal jurisdiction normally requires the defendant to “purposefully avail” himself or herself of “the benefits and protections of the forum’s laws,”167 the location of the user’s ISP would seem to be a slim reed on which to base a claim of personal jurisdiction.168 In contrast, the owners and operators of a Web site are probably at least aware of where the site’s servers are located, but it is not clear if courts will find that this is a sufficient basis for upholding personal jurisdiction.169

L. Resolution of the Scenarios Let us return, finally, to Scenarios One and Two.170 In Scenario One, Jane White, sitting at a computer terminal in New Mexico, posted an allegedly libelous comment on an Internet message board concerning Joe Green, a lawyer who lives in Virginia and practices law in the District of Columbia.171 White knows that Green practices in DC, so arguably her comments are “targeted” at him there. According to some courts, this is

166. See supra Chapter II. 167. See supra §III(D)(3)(b). 168. But see Bochan v. LaFontaine, 68 F. Supp. 2d 692, 698–99 (E.D. Va. 1999) (Texas residents found subject to personal jurisdiction in Virginia for allegedly defamatory statements they posted on an Internet newsgroup because they accessed the Internet through America On Line, a company based in Virginia). Compare Scenario One supra §III(C). 169. See Amberson, 110 F. Supp. 2d at 336–37 (Web site based in California not subject to personal jurisdiction in New Jersey, notwithstanding being hosted on a server located in New Jersey; server merely redirects electronic communications to California and does not constitute “minimum contacts” with New Jersey); but see GTE New Media Serv. v. BellSouth Corp., 199 F.3d 1343, 1349–50 (D.C. Cir. 2000) (holding Web site not subject to jurisdiction in D.C., but suggesting in dicta that it might have been had its servers been located in DC); Telebyte, Inc. v. Kendaco, Inc., 105 F. Supp. 2d 131, 134 (E.D.N.Y. 2000) (dictum: Web site subject to jurisdiction where it is created or where its servers are located). 170. See supra §III(C). 171. Whether her message is, in fact, actionable defamation as opposed to mere hyperbole is irrelevant to the personal jurisdiction issue.

Long-Arm to Global Reach

enough for Green to sue White in DC.172 In the author’s view, that model— developed in the context of for-profit newspapers and magazines—should not apply to a noncommercial Web site, and Green should have to sue White in her home state. The case law, however, does not provide a definitive answer to this question. White accessed the Internet through a Virginia ISP and posted her comments on a California-based Web site. A few courts have found these connections to be significant,173 but again, in the author’s view, these connections are too attenuated to constitute “purposeful availment” of the benefits of the forum’s laws, especially as applied to an individual. After all, as previously noted, how many noncommercial Internet users even know where their ISPs are based? In Scenario Two, a “virtual electronics store” shipped a toaster to a purchaser in Texas. The purchaser later moved to Colorado, where the toaster started a fire. The Web site is clearly subject to suit in Texas where it shipped a defective product, especially as this shipment was not an isolated occurrence.174 However, the Web site did nothing in Colorado with regard to this transaction.175 To sue the Web site in Colorado, the plaintiff would have to show that it did so much business with Colorado residents that its Web presence was the equivalent of owning a bricks-and-mortar store in Colorado.176 How much business would be required to reach that threshold is a question few courts have answered so far. Indeed, the question itself illustrates how far we still are from a definitive understanding of the way personal jurisdiction applies to the world of cyberspace.

M. Long-Arm to Global Reach—International Considerations177 Oh here we are and here we are and here we go All aboard and we’re hittin’ the road Here we go Rockin’ all over the world. “Rockin’ All Over the World” —Status Quo178

172. 173. 174. 175.

See supra §III(H). See supra §III(K). See supra §III(I)(3). This fact implicates the distinction between general and specific jurisdiction. See supra §III(D)(3)(a–b). 176. See supra §III(G). 177. The author thanks her London-based colleagues Rohan Massey and Simone Blakeney for their contributing these sections. 178. Lyrics by John Fogerty.

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The Internet facilitates the sending of data messages from one location to another using the fastest available route. Many users are not aware that when they send a message to a neighbor, it is not uncommon for the message to pass through servers and routers spanning the globe on the way to its intended destination. How often do users consider the impact of the messages they post on a community forum actually reaching a global audience? There are numerous cases of private e-mails being forwarded to a global audience. Such immediate and widespread publication may be embarrassing for those involved, and it may also have legal implications for the individual who originally posted the message and those hosting and publishing it. Local actions may have global implications as U.S. Internet users and service providers must give consideration to laws outside the United States that may be applied to them. Internet users and providers of Internet services in the United States need to be aware of at least the principles (if not the detail) of the impact of non-U.S. laws governing Internet use and regulation. In some instances, laws other than those of the United States will provide alternative actions for claims or enable the submission of alternative defenses.

1. The Complexity of International Jurisdictions The international implications of using the Internet give rise to two questions: (1) In which jurisdiction is the Internet user regulated?, and (2) In which jurisdiction can the Internet user be sued? In the real world, people would not be liable for a misleading price indication in Germany if they put a “two for the price of one” sign in their shop window in Michigan. On this basis, Internet users or service providers may reasonably think they can only be held legally liable in the country in which they are using the Internet. Unfortunately, when it comes to the regulation of the Internet and liability of users and service providers, the global nature of the Internet creates complex legal liabilities. There is no international standard defining which laws will be applied or the extent to which liability can be limited or excluded in relation to Internet use. Service providers, for example, may be forgiven for thinking that as neither of the two key pieces of legislation for the regulation of the Internet, the U.S. Digital Millennium Copyright Act and the European E-Commerce Directive (2001/31),179 impose any general obligation on them to monitor content hosted by them, they may be able avoid all liability for activity on the Internet that they do not directly control. However, this is not the case. Service providers must maintain a global perspective and consider whether

179. Directive 2000/31 EC on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive on electronic commerce) (“E-Commerce Directive”).


the threat of prosecution in foreign jurisdictions places upon them a degree of editorial responsibility for the content on their sites. This section is not intended to provide detailed guidance about every potential issue arising internationally that may affect U.S. Internet users and service providers. Instead, it provides an overview of the issues arising in certain circumstances and jurisdictions that may impact on the business and claims or defenses that may be brought by U.S. Internet service providers and users.

2. The European Perspective—First Principles In Europe, rules regarding jurisdiction are fairly complex. These rules differ depending on where the defendant is domiciled or has a presence. The short answer to issues of jurisdiction for online contracting at first seems quite straightforward as it is based on the country of origin principle or home country control as espoused for these purposes by the E-Commerce Directive (which has been implemented by all the European Union Member States). The essence of the country of origin principle is that as long as a service provider in the European Union (EU) complies with the laws in the jurisdiction in which it is based, there is no additional obligation to also comply with the laws of each foreign jurisdiction in which services are received. Unfortunately, there are a number of limitations to the E-Commerce Directive and exceptions such that in practice, the country of origin principle is not as robust as it might first appear.

3. The E-Commerce Directive (2001/31) The E-Commerce Directive was introduced to ensure the free movement of electronic and Internet-based services described as information society services across the European Community. The E-Commerce Directive is wide in its scope. The information society services it deals with include the establishment of service providers, commercial communications, electronic contracts, liability of intermediaries, codes of conduct, out-of-court dispute settlements, court actions, and cooperation between Member States. The E-Commerce Directive applies to those providing commercial services provided over the Internet, both business-to-business and business-to-consumer, whether the services are paid for by the recipient or are provided free to the recipient but funded by advertising or sponsorship revenue. In fact, only linear television broadcasting (within the meaning of the Television Without Frontiers Directive)180 and radio broadcasting are outside the

180. Directive 89/552 on the coordination of certain provisions laid down by Law, Regulation or Administrative Action in member States concerning the pursuit of telelvision broadcasting activities.

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scope of the E-Commerce Directive as they are not provided at the request of the individual.

4. The General Rule Article 3.1 of the E-Commerce Directive sets out the general rule: “Each Member State shall ensure that the information society services provided by a service provider established on its territory comply with the national provisions applicable in the Member State in question which fall within the coordinated field.” Accordingly, if a service provider is established in a European Member State, it will be regulated by the E-Commerce Directive and required to comply with that Member State’s legal provisions in relation to electronic commerce and services. Therefore, the first question to be addressed is where a service provider is considered to be established. a. Place of Establishment The E-Commerce Directive applies only to providers of information society services that are established within the EU. It defines the place of establishment as that where a service provider actually pursues its economic activity using a fixed establishment for an indefinite period.181 This requirement is also fulfilled by where a company is constituted for a given period. The presence and use of the technical means and technologies required to provide the service do not in themselves constitute an establishment.182 In other words, it is irrelevant for a company providing services via the Internet. The jurisdictional entity does not exist at the place at which technology supporting its website is located or the place at which its website is accessible but the place where it pursues its economic activity.183 This is good news for service providers established outside the EU. But what if a service provider has fixed establishments in several jurisdictions? In this situation, it is necessary to determine from which of several places of establishment the service concerned is being provided.184 When it is difficult to determine which place of establishment is providing a service, it is deemed to be the place where the provider has the center of its activities relating to this particular service. The service being provided, however, must be one that is within the scope of the E-Commerce Directive. If, for example,

181. 182. 183. 184.

Art. 2(c)—E-commerce Directive (2000/31). Id. Recital 19—E-commerce Directive (2000/31). Id.


the places of establishment were distribution centers in the EU, it is arguable that they are providing an offline service not covered by the E-Commerce Directive and, as such, the company is not providing an information society service from those distribution centers for the purposes of the E-commerce Directive. b. The Coordinated Field If it is determined that a service provider is established in a European Member State, the service provider will be required to comply with that Member State’s national provisions in the coordinated field. What this means is that the service provider must comply with the requirements laid down in a Member State’s legal system that are applicable to information society service providers or information society services across the EU. These include requirements with which the service provider has to comply in order to provide information society services (e.g., for qualifications, authorizations, or notifications), requirements regarding its behavior, requirements regarding the quality or content of the service (including those applicable to the provision of information, advertising regulations, and contracts), and requirements affecting its liability. It also means that service providers need only follow one set of laws. Hence, once a service provider is compliant with the coordinated field requirements in its home jurisdiction, it will then be protected against claims of noncompliance in other jurisdictions. Although the coordinated field requirements appear to be straightforward, issues arise in respect of the activities that are not regulated under this head. For example, the coordinated field does not include requirements applying to goods as such, to the delivery of goods, or to services not provided by electronic means. This poses a problem: although it may be clear which laws the service provider has to comply with in respect to the coordinated field, in other areas (such as safety standards, labeling obligations, product liability, etc.), all national laws will also have to be complied with.185 In other words, just because products comply with the safety standards in the country of origin, it does not follow that they will comply with standards in the other Member States to which they are supplied. Therefore, if there is a fault with a product supplied to a customer in Germany from an online business established in the United Kingdom, although the transaction may be governed by the E-Commerce Directive and subject to UK law under the courts of origin principle, German product liability law will nevertheless also apply.

185. Recital 21—E-commerce Directive (2001/s31).

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5. E-Commerce or Commerce? As stated above, different laws may apply depending on whether the service is deemed to be provided in commerce or e-commerce. However, it is not always clear from the legislation or current case law at what point a service ceases to become an information society service. Although the delivery of goods as such falls outside the definition of information society service,186 the sale of goods online as an online service in itself would presumably include delivery of those goods. The whole transaction would therefore be regulated by the national provisions of the Member State of establishment except in relation to legal requirements outside the coordinated field (as described above). It follows that if a claim is made against a person for failure to deliver a product purchased online, it might not be clear whether the elements of the transaction that take place physically outside the Member State of establishment will be regulated by that Member State or by the target Member State if they are legal requirements falling outside the coordinated field. This will be an important consideration in any possible defense.

6. Exceptions to the E-Commerce Directive The E-Commerce Directive contains a number of exceptions to the obligation of each Member State to ensure that the information society services (falling within the coordinated field and provided by a service provider established in its territory) comply with the national provisions applicable in that Member State.187 These exceptions to the rule are termed derogations. A key derogation is the freedom of parties to choose the law applicable to the contract and contractual obligations regarding consumer contracts. a. Jurisdiction Regulation This derogation is set out in the European Jurisdiction Regulation.188 Under Article 23 of the Jurisdiction Regulation, where parties have agreed that the courts of a Member State are to have jurisdiction to settle disputes, those courts have exclusive jurisdiction. The effect of Article 23 is to confer jurisdiction on the court chosen. It has been judged to take precedence over contrary provisions of national law, even if the latter are mandatory in character. Similarly, it will take precedence over all the other jurisdictional rules in the

186. Recital 18—E-commerce Directive (2000/31). 187. Art. 3(1)—E-commerce Directive (2000/31). 188. Council Regulation 44/2001/EC on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.


Jurisdiction Convention except in certain circumstances. Therefore, the fact the choice of law is made by the contracting parties rather than being prescribed by legislation often makes life much easier for the online service provider, as the law with which the service provider is obliged to comply is clearly stated from the start of the transaction. b. Rome I Regulation and the Rome Convention However, though it may appear easy at this stage, the Jurisdiction Regulation cannot be considered in isolation. Other European legislation must also be considered in respect of contracts—namely, the Rome I Regulation. This regulation represents a revision of the 1980 Rome Convention on the law applicable to contractual obligations, which set out what country’s law would apply in contractual disputes. The Rome I Regulation will apply from 17 December 2009 to all contracts concluded after that date. In this regard, the Rome I Regulation mirrors the Jurisdiction Regulation providing the general rule that “a contract shall be governed by the law chosen by the parties.”189 However, the Rome I Regulation also provides that in respect to contracts with a consumer, the parties may not choose the law to be applied to the contract if as a result, the consumer is deprived of the protection afforded to him by the laws of the country in which he has his habitual residence. The purpose of this exception is to allow Member States to protect their own consumers. However, the consequence is that Member States may impose their domestic law on an online service provider established elsewhere in the EU in matters concerning consumer-related business, and thus service providers are forced to comply with consumer laws in the jurisdictions in which they trade. Interpreted broadly, this means that all service providers must comply with the laws of the Member State in question even if they are domiciled outside that Member State.

7. National Courts versus Country of Origin Principle In light of the exceptions to the rule outlined above, it is critical to be aware of where the country of origin principle has been upheld and where it has been undermined. The principle of home country control has been weakened by judgments in the courts of various Member States.

189. Art. 3(1), REGULATION (EC) No 593/2008 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 17 June 2008 on the law applicable to contractual obligations (Rome I).

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In December 2000, a Federal Court of Justice in Karlsruhe, Germany, accepted jurisdiction in the prosecution of Frederick Toeben, a resident of Australia, for disseminating Nazi propaganda and Holocaust denial materials over the Internet, despite the fact that the content originated outside Germany.190 Similarly, around the same time in France, a case was brought by Jewish and antiracist groups against Yahoo! and its French subsidiary for operating a U.S. Internet auction site selling Nazi memorabilia, which could be accessed in France.191 As such an activity is protected by the U.S. constitutional right to freedom of speech and the immunity conferred on service providers for third party content by the U.S. Communications Decency Act, it is legal in the United States where the site was located. However, in France (where users could access the site), the activity is illegal, as it is an offense to sell or exhibit anything that incites racism. Yahoo! argued that as the auctions were conducted on servers located in the United States and were primarily aimed at U.S. residents, the Web site should be subject to U.S. jurisdiction. Yahoo! also claimed that it was technically unfeasible and commercially unrealistic to prevent French residents from participating in these auctions. On this basis, Yahoo advocated that the French court did not have jurisdiction to hear the case. However, the French court ruled that France had full jurisdiction to hear the case for a number of reasons. The court found that Yahoo! was fully aware that French residents had access to and used its auction site as proven by its displaying advertisements in French on its pages when they were accessed from computers in France. Therefore, the court believed that there were sufficient links with France to give it full jurisdiction to hear the complaint. The French court then found against Yahoo! and ordered it to comply with an injunction to take all measures to dissuade and make impossible any access via “yahoo.com” to the auction service for Nazi merchandise as well as any other site or service that may be construed as an apology for Nazism or contesting the reality of Nazi crimes.192 A related case went before the U.S. courts in relation to the enforcement of the French judgment. The case reached the 9th Circuit Court of Appeals, where a majority of the judges ruled to dismiss Yahoo!’s appeal.

190. http://www.nettime.org/Lists-Archives/nettime-l-0012/msg00064.html. 191. UEJF & Licra v. Yahoo! Inc. & Yahoo France Tribunal De Grand Instance De Paris 22 mai 2000. 192. Translation of “de prendre toutes les mesures de nature à dissuader et à rendre impossible toute consultation sur Yahoo.com du service de ventes aux enchères d’objets nazis et de tout autre site ou service qui constituent une apologie du nazisme ou une contestation des crimes nazis,” Tribunal De Grande Instance De Paris, Ordonnance de référé, 22 mai 2000 UEJF et Licra c/ Yahoo! Inc. et Yahoo France see, http://www.juriscom.net/txt/jurisfr/cti/tgiparis 20000522.htm.


Yahoo! did not, however, appeal against the ruling in France, and has since removed the sale of all Nazi memorabilia from its Web sites. Although this in essence means that Yahoo! has conformed to the French ruling, the legal debate still remains open as to whether global accessibility can, in line with the Zippo nexus, create liability for a service provider in a foreign jurisdiction.193

8. Conclusion Regarding E-Commerce Directive Therefore, despite the E-Commerce Directive forbidding EU Member States from imposing any general obligation on service providers to monitor content hosted by them, and despite the U.S. Digital Millennium Copyright Act clearly stating that online service providers are under no obligation to monitor the services they provide, it appears that Web site operators must maintain a global perspective and consider whether the threat of prosecution in foreign jurisdictions places upon them a degree of editorial responsibility for the content on their sites.

9. International Defamation We have discussed the U.S. position on defamation at length; however, it is also worth considering decisions from non-U.S. courts that impact on the actions of U.S. Web site providers. In relation to defamation, the global nature of publication on the Internet has created a unique set of circumstances regarding jurisdiction and liability. The important question is: which court has the right to hear an action against a party defamed globally? Although some may prefer a single jurisdiction rule relying on application of the law of the jurisdiction of first publication, common law principles and European jurisprudence do not adhere to this. A good example is the case of Dow Jones and Company Inc. v Gutnick.194 The issue stemmed from Dow Jones’ publication of the October 2000 edition of Barron’s Online. It contained the article “Unholy Gains” in which several derogatory references were made about the respondent in the action, Joseph Gutnick, suggesting he had ties to criminal organizations. Gutnick sued, claiming that the relevant parts of the article defamed him. As Gutnick had accessed Barron’s Online from his residence in Australia, he argued that it was there the publication of the defamatory statements were made and that the Australian High Court had the jurisdiction to hear

193. See supra §III(E). 194. [2002] HCA 56.

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the case. Dow Jones appealed, stating that publication had only occurred once (when the material was placed on the servers in New Jersey), and that only a small number of people in Australia had accessed it. Therefore, Dow Jones argued the Australian High Court did not have the jurisdiction to hear the case. Dow Jones also noted that as Mr. Gutnick was not well-known in the United States, it was unlikely he would succeed in a defamation claim in the U.S. courts. The issue for the Australian High Court was thus whether the article was published from the place in the U.S. where it was uploaded or published into Australia where it was downloaded by subscribers. The court ultimately found there was no reason for publication on the Internet to differ from traditional publication, and, as such, defamation proceedings should be undertaken in the jurisdiction where the communication is received. The effect of the Australian High Court’s decision is that defamation claimants in Australia can potentially sue in Australia for defamation on the Internet against any defendant irrespective of the defendant’s location. It is likely that this principle will be followed in other common law jurisdictions such as the United Kingdom. As Justice Callinan for the Australia High Court said: “If people wish to do business in, or indeed travel to, or live in, or utilize the infrastructure of different countries, they can hardly expect to be absolved from compliance with the laws of those countries. The fact that publication might occur everywhere does not mean that it occurs nowhere.”195 European Position: Consider further the situation where a person living in England posts a defamatory comment about a person living in France on a bulletin board hosted in the United States and stored on servers in India. The fact that the defendant is domiciled in the United Kingdom will be sufficient nexus for the defamation claim to be heard in the English courts (the authority for this is the Jurisdiction Regulation, which is mentioned above). The general rule as set out in Article 2 of the Jurisdiction Regulation is that persons domiciled in a EU Member State shall, whatever their nationality, be sued in the courts of that Member State. This means that an individual can be sued where his principal residence is located. In relation to torts, the Jurisdiction Regulation also provides that a claimant may bring the claim “in the courts of the place where the harmful event occurred or may occur.”196 In this respect, it has been held “the place where the harmful event occurred or may occur” may refer to two jurisdictions.197 This is confirmed by Shevill v. Presse Alliance SA198 where, following a reference to the European Court of Justice by the House of Lords in the

195. 196. 197. 198.

Dow Jones & Co. Inc. v. Gutnick [2002] HCA 56 at para. 186. Art 5(3) Jurisdiction Regulation. Handelskwekerij G J bier v. Mines de Potasse d’Alsace SA [1978] QB78. [1995] all ER (EC) 289.

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United Kingdom, it was held that for defamation claims falling within the scope of the Jurisdiction Regulation, the claimant in a defamation action may bring his claim in the defendant’s domicile jurisdiction under Article 2, or may sue in the courts of the jurisdiction in which the libel was issued and circulated under Article 5.3. Thus, if a claimant can demonstrate that he suffered harm to his reputation in the jurisdiction in which the defamatory statement was distributed, he may bring a claim for defamation in that jurisdiction. In relation to the Internet this raises a much wider issue. If a defamatory post is published on a Web forum, then the defendant may be subject to a claim not only in the jurisdiction in which the statement is originally published, but also in each jurisdiction where the e-mail is accessed or viewed. As in Gutnick, the effect is that potentially an individual need only find a limited number of users accessing a globally available Web site from one jurisdiction to have the right to bring a claim within that jurisdiction. However, as a successful defamation claim hinges on the harm caused by the defamatory publication (such as damage to an individual’s reputation), and as the court will only be able to rule on the injury suffered by the claimant in that specific territory, it is likely the harm will be most severe close to home. Accordingly, the case is more likely to be brought in the claimant’s home jurisdiction. Of more concern is the scope of damage that could be caused by the introduction of a virus to a network, as the virus is likely to spread to and infect a number of users in multiple jurisdictions. In such a situation, the cause of action would arise in the domicile of the defendant as well as that of the claimant and the jurisdiction in which the virus was first released.

N. Scams and Torts—Unique Jurisdictional Considerations The electronic age has ushered in a new set of jurisdictional issues for courts and litigants to address. The basic questions such as who, what, where, and when have become fuzzy. With the anonymity of the Internet, it may be impossible for plaintiffs to know who the defendants are, let alone figure out where to sue them, with the courts offering little help.199 Cases involving disputed transactions made on Web sites such as eBay provide a good example of the jurisdictional problems litigants can face. Although online auctions are increasingly popular, they often fail to

199. Dara Chevlin, Schemes and Scams: Auction Fraud and the Culpability of Host Auction Web Sites, 18 Loy. Consumer L. Rev. 223, 239 (2005).


safeguard their consumers.200 Sellers can register on auction Web sites with “little or no screening” where they “are not even required to divulge their true identity.”201 The most common fraud schemes involve the auction of a “high-priced item, like an airplane, on a well-known website such as eBay.”202 The winning bidder sends his money to the seller, but his purchased item is never sent.203 These schemes and others like them were used to con consumers out of approximately $68 million in 2004.204 However, the Web sites have insulated themselves from liability.205 They have made it clear that they are set up to be venues only, and that they are not involved in the actual transaction between buyer and seller.206 Unable to sue the Web site, the consumer is left with the option of bringing an action against an anonymous seller.207 Locating the seller and figuring out where to sue him promises to be a costly and complicated venture.208 Moreover, because the law is still being developed, a plaintiff’s success in obtaining jurisdiction may vary greatly depending on the court where he files as different courts favor different methods of analysis. Some courts follow Zippo Manufacturing Co. v. Zippo Dot. Com, Inc., the seminal case deciding jurisdiction in the context of the Internet. However, Zippo dealt with a defendant’s conduct on his own Web site and involved the solicitation and securing of some three thousand Pennsylvania customers.209 Attempts to apply Zippo to cases analyzing single transactions made on auction Web sites administered by third parties have proven problematic.210 For example, it might seem that Internet fraud occurring on a widely used Web site would fall in Zippo’s highest category: active.211 However, although the Web site is active as it repeatedly conducts business over the Internet, the individual seller defendant is not.212 Therefore, courts have suggested that the sale of goods on a Web site such as eBay is more interactive, as in the “second Zippo

200. 201. 202. 203. 204. 205. 206. 207. 208.

209. 210. 211. 212.

Id. at 225. Id. at 227. Id. at 229. Id. Id. at 231. Id. at 233. Id. Id. at 239. Id.; see also Ben Quarmby, Protection From Online Libel: A Discussion and Comparison of the Legal and Extrajudicial Recourses Available to Individual and Corporate Plaintiffs, 42 New Eng. L. Rev. 292 (2008). Chevlin, supra note 198, at 243–44; Winfield Collection, Ltd. v. McCauley, 105 F. Supp. 2d 746, 750 (E.D. Mich. 2000). Chevlin, supra note 198, at 243–44; see also Malcolm v. Esposito, 63 Va. Cir. 440 (Va. Cir. 2003). Chevlin, supra note 198, at 246. Id.

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category, where a defendant maintains a website that allows users to exchange information with a host computer.”213 Unfortunately, this interactive category is also unsatisfactory and has no bearing on purposeful availment as “almost all commercial websites can be accessed from anywhere a computer can be connected to an Internet service.”214 The trend instead is to move away from the Zippo categories and return to more traditional jurisdictional analysis.215 In Malcolm v. Esposito, to decide whether the defendant, a nonresident of Virginia and seller of a 1995 BMW on eBay, fell under Virginia’s jurisdiction, the court used a two-prong test: (1) whether the plaintiff showed that Virginia’s long-arm statute reaches the nonresident defendant; and (2) whether the exercise of personal jurisdiction is consistent with the Due Process clause.216 Using this analysis instead of the Zippo approach, the court found the purchaser’s single act of placing his bid for the car fell within Virginia’s long-arm statute and provided it with personal jurisdiction over the defendant.217 However, other courts in similar cases and using similar analysis have found isolated Internet transactions to be insufficient to establish personal jurisdiction.218 A key factor is whether the seller has purposefully availed himself of doing business in the forum state.219 In an Internet auction, a seller has no control over who will ultimately be the highest bidder, and courts are reluctant to broadly hold that the mere act of using a Web site with interactive features establishes personal jurisdiction anywhere in the United States.220 That reluctance, however, can be overcome when defendants are acting in bad faith.221 For instance, in Panavision International, L.P. v. Toeppen, the court found personal jurisdiction over the defendant despite his having

213. McGuire v. Lavoie, No. 3:03-CV-0161-BH, 2003 U.S. Dist. LEXIS 24256 at *10 (N.D. Tex. 2003) (finding Zippo did not apply and analyzing Internet sale of 20 tractors using traditional jurisdictional analysis where the defendant chose to stop the auction and entered into a series of transactions with a known buyer). 214. Winfield, 105 F. Supp. 2d at 750. 215. Chevlin, supra note 198, at 243-44. 216. 63 Va. Cir. 440, 441–42 (Va. Cir. 2003). 217. Id. at 443. 218. See Metcalf v. Lawson, 802 A.2d 1221, 1226 (N.H. 2002) (finding sale of a John Deere 30 mini excavator by New Jersey resident on eBay to a highest bidder, a resident of New Hampshire, did not support the exercise of personal jurisdiction over the defendant in New Hampshire); Winfield, 105 F. Supp. 2d 746 (finding no jurisdiction over defendant as there was no continuing relationship established by two auction purchases of home-craft patterns). 219. See Metcalf, 802 A.2d at 1226; Winfield, 105 F. Supp. 2d at 746. 220. See Metcalf, 802 A.2d at 1226; Winfield, 105 F. Supp. 2d at 751. 221. Sonal N. Mehta, III. Cyberlaw: A. Internet Jurisdiction: 1. Domestic: Pavlovich v. Superior Court of Santa Clara County, 17 Berkeley Tech. L.J. 337, 337 (2002).

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only passive and noncommercial Web sites because he had deliberately registered Panavision’s trademarks as his own domain name to extort money.222 Although Zippo is widely followed, it is merely a starting point for evaluating Internet jurisdiction. Because courts must balance the needs of plaintiffs to enforce their rights with protecting the due process interests of defendants, litigants must also be prepared to argue along traditional jurisdiction bases (including minimum contacts and the long-arm statutes of the particular state).223 As the Internet continues to grow and technology continues to make advances, courts will confront new challenges and new analysis will be required, but traditional notions of fair play and justice will always be relevant.

222. Id. at 344 (citing Panavision Int’l, L.P. v. Toeppen, 141 F. 3d 1316 (9th Cir. 1998). 223. Mehta, supra note 220, at 337.

CHAP T ER

4 Intellectual Property They took the credit for your second symphony Rewritten by machine in new technology. And now I understand the problems you can see. “Video Killed the Radio Star” —The Buggles1

A. Trademarks and Domain Name Disputes

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1. Scenarios

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2. How to Investigate

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a. The WHOIS Query

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b. Dun & Bradstreet Reports

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c. Review and Document How the Domain is Used

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d. Collect Ancillary Evidence

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(i) Prior Use of Domain Name

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(ii) Document a Registrant’s Previous Instances of Cybersquatting

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(iii) Document a Registrant’s Ownership of Other Domain Names Incorporating Trademarks e. Hire a Professional Investigator 3. The Law

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a. What is Cybersquatting?

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(i) UDRP

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(ii) ACPA

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b. Other Types of Claims

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(i) Traditional Trademark Infringement Claims

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(ii) State Anticybersquatting Laws

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1. Lyrics by Trevor Horn, Bruce Wooley, and Geoff Downes.

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68 Chapter 4 Intellectual Property c. Effectively Using Cease-and-Desist Letters d. Drafting the UDRP Complaint (i) Quick Recap of ACPA and UDRP Factors

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(ii) Trademark Rights

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(iii) Identical or Confusingly Similar

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(iv) Rights or Legitimate Interests

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(v) Making Legitimate Noncommercial or Fair Use of Domain Name

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e. Drafting a Federal Claim

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(i) Trademark Rights

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(ii) Registers, Traffics, or Uses

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(iii) Identical or Confusingly Similar

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(iv) Bad Faith Intent to Profit f. UDRP Complaints: To Settle or Not to Settle 4. Strategies for Resolving the Scenarios B. Trademark Use in Metatags and Keyword Advertising 1. More about the Technical Use of metatags

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2. How to Check a Web Page’s Metatags

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3. What are Keywords and Sponsored or Keyed Ads?

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4. How to Check For Sponsored Ads

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5. The Law

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a. Is this “Use in Commerce?”

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b. Is Buying or Selling a Keyword a “Use in Commerce?”

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c. Likelihood of Confusion and Initial Interest Confusion

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d. Fair Use

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6. Factors that May Affect the Outcome of an Infringement Claim

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a. Metatags

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b. Keywords

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C. Theft of Content—Copyright and Confidential Information

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1. Scenarios

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3. The Law

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a. Basic Copyright

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b. Fair Use of Copyrighted Material

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c. Copyright, Facts, and “Hot News”

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d. There Are No Trade Secrets on the Internet

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a. A Model of a Counterfeiting Network—Pharmaceuticals

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b. Consider Registration and Hosting

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c. More Tools and Tips

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A. Trademarks and Domain Name Disputes 1. Scenarios (a) The client’s mark is RED HOTS for candies. An Internet surveillance program reveals that a third party has registered red-hots.com. The registrant is using the domain name for a commercial Web site where it sells various types of chili peppers. (b) Your client owns mega multipurpose stores nationwide operated under the mark WALLY’S WORLD. A third party has registered wallysworldsux.com. The domain name does not appear to contain any negative content about the client, but it does appear to offer links to various commercial Web sites, some offering products in the same categories as those offered by the client. (c) Your client operates fast food burger restaurants under the mark FRED’S. The client is planning to open a store in New York City and learns that someone has already registered the domain name freds-nyc.com.

2. How to Investigate As with any legal problem, it is important to have as many facts as possible before deciding on a course of action. Although Internet infringers can sometimes be shadowy figures hiding behind private registrations or false names, it is often possible to identify the registrant by using some key online tools. Five steps are necessary to evaluate a trademark infringement problem, with each step requiring the use of one or more of the key tools. How to use these tools is explained in this section. Here are the five steps:

Assessment Protocol 1) Determine the identity of the domain name registrant 2) Review registrant’s use of the domain name 3) Collect evidence of registration and use of the domain name—current and historic uses 4) Collect ancillary evidence 5) Assess appropriate strategy: offer to buy registration, cease and desist demand, or formal adversarial action—ICANN arbitration or court action

Trademarks and Domain Name Disputes

Investigate the identity of the registrant. Once a trademark owner learns that a third party has registered a domain name incorporating the company’s trademark, the company should first determine the identity of the domain name registrant. a. The WHOIS Query The most basic tool for domain name enforcement research is a query/ response protocol used to determine the owner of a domain name, an IP address, or an autonomous system number on the Internet. It is called a WHOIS query (WHOIS). A full discussion of the WHOIS query (and reverse WHOIS registrant searches, also known as “reverse WHOIS”) can be found in Chapter II in Sections II(B)(2) and II(D)(1). Upon registering a domain name, every registrant must provide its name and contact information to the registrar.2 This information is then listed in the registrar’s WHOIS database. Virtually every registrar has a link to its WHOIS database on its home page.3

Practice Tip Cybersquatting 1 Beware of incomplete databases: some registrars only provide access to those domains registered through its services. Others may include domains from other registrars, but these records may not be updated in real time. This can be very frustrating if you are not aware of the scope of the particular registrar’s database.

When beginning your investigation, it is helpful to choose a general WHOIS tool to identify the domain name’s particular registrar, then search that registrar’s WHOIS database to obtain the most up-to-date and complete information listed for the domain name registrant. Many general WHOIS search tools are freely available, such as at ecrimetools.com and AllWhois.com. These tools cover all general top-level domains (gTLDs) and have the advantage of offering information for most country-code top-level-domains

2. ICANN rules and registrar terms and conditions require true and accurate registration information. But not surprisingly, often Internet criminals do not follow the rules. This need not be the end of the investigation as discussed at §IV(A)(3)(a)(ii). 3. The Network Solutions WHOIS search tool can be found at: http://www.networksolutions. com/whois; Go Daddy’s WHOIS search tool can be found at: http://who.godaddy.com/ WhoIsCheck.aspx.

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(ccTLDs) such as .uk, .ca, .cn, etc. (A few ccTLD registries only permit a search of its particular WHOIS information on the registry’s Web site.) Once you locate the WHOIS information associated with the domain name at issue (ideally from the relevant registrar’s own Web site), print the WHOIS entry and/or take a screenshot of it on your Internet browser (using a date-stamp feature if possible or at least recording the date the WHOIS record was saved). WHOIS records can provide several pieces of useful information, such as: (1) the location of the registrant whether inside or outside the United States; (2) the name of the registrar; (3) the date on which the domain name was registered, when it was last renewed, and when it is due to expire; (4) the domain name server (DNS) to which the domain name is pointed and thus often the name of Internet Service provider (ISP), if any, hosting the registrant’s Web site; and (5) in some cases, the correct contact information. Some WHOIS tools will also provide additional information, such as the location of the server hosting the Web site to which the domain name is pointed and a history of WHOIS records, registrars, and domain name servers associated with the domain name. Practice Tip Cybersquatting 2 The date of registration may be misleading. The registration date reflects the date associated with this particular record—it does not necessarily mean the current registrant has owned the domain during the registration period. Why is this important? Some cybersquatters will try to disguise their bad faith by “tacking on” to an earlier record: they will buy a registration that has been in existence for some time and then begin to use the domain for an infringing purpose. For example, a variant of “ARIN” existed prior to the creation of the ARIN organization. It was the original registrant’s personal name. Later, a cybersquatter acting in bad faith purchased the registration prior to its expiration and began to offer services similar to ARIN’s WHOIS services. The cybersquatter cheekily claimed priority over the ARIN organization based upon the registration date associated with the record! Accordingly, always check the entire history of each registration record for any suspicious transfer.

The appearance of the WHOIS information can often offer a hint as to the type of person or entity that has registered the domain name. Relatively complete information with an address and phone number that can be verified through a tool such as SearchBug.com may indicate the registrant at least considers itself to be a reputable company. In some cases, this type of registrant may be more cooperative with enforcement efforts. At the other end of


the scale are those with minimal and/or obviously false information (written in all lowercase or misspelled), who are often based outside of the United States. As these registrants may consider themselves to be effectively hidden, they may be less amenable to enforcement efforts. Unfortunately, registrars are not required to verify WHOIS information provided by the registrant, so often the information provided by infringers is false. However, one piece of information is more likely to be accurate: the administrative contact e-mail address. This tends to be true because the registrant needs some channel to receive recurring communications from the registrar—such as renewal notices and the like. The registrar will normally send an e-mail regarding the status of the domain name to the administrative e-mail address. Many domain name registrars now offer a private or proxy registration service. Such registrations conceal the registrant’s identity and contract information. Instead of the registrant’s name and contact information being shown in the WHOIS database, the WHOIS record will indicate that the domain name is under a private registration with the registrar’s name and contact information being provided instead. Some registrars4 are wholesalers, meaning they typically sell domain names to a large number of retail registrars, who in turn sell them to consumers. When private registration is involved, only the identity of the wholesale registrar may be returned, so the identity of the individual as well as the retail registrar may be hidden. Some registrants use private registration in a legitimate attempt to avoid spammers who harvest contact information from WHOIS databases. In many cases, however, use of a private registration service indicates the registrant does not want to be found by those whose legal rights the registrant may be violating. Reputable private registration services are generally willing to work with attorneys whose clients’ rights are being violated by private registrants. Upon receiving a demand letter accompanied by sufficient evidence to demonstrate a client’s rights and the registrant’s infringement of those rights, a private registration agency may populate the WHOIS record with its customer’s name and contact information or otherwise provide it to the trademark owner. At a minimum, the agency generally will forward a demand letter to the registrant. Check the registrar’s terms and conditions to see what action the registrar will take. Examine the registration record as it existed just prior to private registration— you will need to use a service / tool that gives you access to the entire history

4. “Registrars” are authoritative organizations authorized by ICANN to sell domain names to the consumer. A “registry” or “registry operator” is the organization that has contracted with ICANN to run a particular top-level domain (such as .com, .org, etc.). The registry, such as the American Registry for Internet Numbers (ARIN) maintains the directory of all registrations within that domain.

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of registration records associated with the particular domain name.5 This earlier record often provides clues. For example, the earlier record may actually show the current registrant—who initially registered “in the open,” so to speak, and later decided to pay for a private registration. Or, the previous registrant may have sold rights in the domain to the current owner. In that case, the previous owner can be approached for information. All this information can be useful in deciding how to approach the registrant, can provide insight into and evidence of the registrant’s intent in registering the domain name, and can also be important for jurisdictional purposes. In some circumstances, renewal of a registration after becoming aware of another’s trademark rights may be evidence of bad faith (for example, if the registrant claims he was not aware of the client’s rights at the time he registered the marks, but renews the domain name after receiving a demand letter). b. Dun & Bradstreet Reports In the event the infringer appears to be a legitimate business, additional information can be obtained by obtaining a report on the company from such providers as Dun & Bradstreet and Hoovers.com. It is useful to know the company’s size and financial picture. If a company is large, it may have deep pockets to fight back, but those deep pockets may also be available for damages in an ACPA or other trademark suit. c. Review and Document How the Domain Is Used After ascertaining the identity of the domain name registrant, review how the registrant is using the domain. In clear cases of cybersquatting, domain names are used to sell competing or related goods and services. They may contain or direct the user to commercial content (such as pornographic Web sites) or parked Web pages containing links to third-party Web sites. A trademark owner should document the content located at the domain name by electronically saving the evidence on a disk in a manner that records the time and date, print all the relevant pages of the Web site, and capture screenshots of the Internet browser. A tool called the WayBack Machine (found at archive. com) provides records of the way a Web site looks over time. The Wayback Machine is offered by the Internet Archive, a public nonprofit company dedicated to building an Internet Library. Its website allows users to “[b]rowse through 85 billion web pages archived from 1996 to [2007].” These can be used to demonstrate the registrant’s bad faith and lack of legitimate rights to the domain name.

5. A list of such tools is included in the Appendix. The author uses ecrimetools.com or domaintools.com.


d. Collect Ancillary Evidence (i) Prior Use of Domain Name As previously mentioned, after documenting the WHOIS information for a particular domain name and evidence of how the domain name is being used. The Internet Archive is a public nonprofit company dedicated to building an Internet library. Its Web site allows users to “[b]rowse through 85 billion web pages archived from 1996 to [2007].” If the Web site at the domain name of interest has been archived by the Wayback Machine, a review can allow attorneys to understand the history of the domain name and its use and to find evidence of bad faith uses. Archived pages obtained from the Internet Archive have been accepted as reliable proof of Web images in Uniform Dispute Resolution Policy (“UDRP”) proceedings.6 Additionally, a federal magistrate ruled Internet Archives printouts admissible as “an admission of a party-opponent” that “are not barred by the hearsay rule.”7 However, some federal courts have refused to admit evidence from the Wayback Machine when not properly authenticated, such as by a declaration by an Internet Archive employee.8 It is also important to note that the material is generally not available until approximately six months after collection, so you will not be able to use this tool to obtain evidence of the Web site’s content as it appeared fewer than six months ago. These archives are an especially helpful tool when a registrant changes or removes content from a Web page associated with an infringing domain name after the registrant receives a cease-and-desist letter. For example, in Research in Motion Ltd. v. Louis Espinoza,9 the disputed domain name contained no content when the arbitration panel considered the UDRP complaint filed by Research in Motion, owner of the BLACKBERRY trademark. Complainant used the Wayback Machine to obtain an image of a Web site to

6. See E.W. Scripps Co. v. Sinologic Indus, D2003-0447 (WIPO July 1, 2003) (“On the balance of probabilities, the Panel holds that they are accurate records of the home page accessed by the domain Name on those dates.”). 7. Telewizja Polska USA, Inc. v. Echostar Satellite Corp., No. 02 C 3293, 2004 WL 2367740, at *5 (N.D. Ill. October 15, 2004) 65 Fed. R. Evid. Serv. (Callaghan) 673; see also Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 535 (2d Cir. 2005) (evidence of defendant’s Web site advertisements presented through archive.org capture of the site content at particular time); Kulachev v. Gelfman, 600 F. Supp. 2d 437, 454 (E.D.N.Y. 2009) (court citing to Internet Archive as evidence of past contents of Defendant’s website). 8. Compare Masters v. UHS of Delaware, Inc., Case No. 4:06CV1850, 2008 U.S. Dist. LEXIS 107383 (E.D. Mo. 2008) (Wayback Machine evidence admissible under F.R.E. 901 with supporting affidavit) with Novak v. Tucows, Inc., 73 Fed. R. Evid. Serv. 331 (E.D.N.Y. 2007) (Wayback Machine evidence not admissible when no sworn statements or testimony was given to support its authenticity); see also Chamilia, LLC v. Pandora Jewelry, LLC, 85 U.S.P.Q.2D 1169 (S.D.N.Y. 2007). 9. D2008-0759 (WIPO July 23, 2008).

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which the domain name used to resolve and annexed the image to the UDRP complaint. The panel found that the prior Web page contained “references to podcasts and other items that appear to relate to versions of computer software,” and that there was “no reference to the alternative meaning of ‘blackberry’ as a fruit.” Accordingly, although no response had been submitted, the panel inferred that the respondent had in mind the information technology aspect of the word blackberry when it registered the domain name and registered it to take advantage of complainant’s BLACKBERRY trademark. (ii) Document a Registrant’s Previous Instances of Cybersquatting Some UDRP resolution providers make panelist decisions available on their Web sites.10 Once you determine the identity of a registrant, you can search these decisions to ascertain whether the registrant has been the subject of a UDRP complaint in the past. If so, document the case name(s), number, and date to later assert as evidence of a pattern11 of bad faith registration of domain names. (iii) Document a Registrant’s Ownership of Other Domain Names Incorporating Trademarks A reverse WHOIS search can provide additional useful evidence of bad faith. A reverse WHOIS search looks for other domain names owed by registrants with the same or a similar name. WHOIS searches are generally free, particularly for the gTLDs such as .com, .net, .org, .info, and .biz. However, reverse WHOIS searches generally require a payment, typically $100 to $1,000 or more, depending on the provider and in some cases, the number of results. If the WHOIS or reverse WHOIS searches do not provide the information needed, there are other avenues of investigation. If the domain name resolves to a Web site, the site may contain contact information. If the domain name points or relays to a site at another domain name, the same party may own both names—and the WHOIS for the second domain name may have more complete information. If the administrative e-mail has a domain name for a unique business (e.g., @uniqueco.com, not @gmail.com or @aol.com), bringing up the Web page at

10. WIPO’s decisions may be searched at: http://www.wipo.int/amc/en/domains/search/; NAF’s decisions may be searched at: http://domains.adrforum.com/decision.aspx. Another helpful Web site that allows searches for both WIPO and NAF decisions is http://www.domainfight. net/index.php. 11. PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001) (finding that the registrant of pete.org engaged in cybersquatting because, among other things, the domain name was one of fifty to sixty domain names containing trademarks that the registrant had registered).


uniqueco.com may offer clues to the infringer’s identity, or at least genuine contact information. e. Hire a Professional Investigator In certain situations, such as when the registrant is a sophisticated Internet criminal using a domain name for spam or phishing, a professional Internet investigator may be of value.12 Specialty investigative firms (check Appendix A or eCrimeTools.com) have access to more sophisticated tools than are available to the average attorney. Some maintain databases of known Internet wrongdoers and their aliases and associates. Such research can be costly—$5,000 or more depending on complexity, with results not being guaranteed. As such, this tool should be reserved for instances when the domain name represents a serious threat to the client’s brand.

3. The Law a. What Is Cybersquatting? Domain names are a vital gateway to any company’s online presence. Depending on the business, domain names may also act as a trademark. Potential customers may make their best guess of a company’s domain name (e.g., companyname.com) before resorting to a search engine. If someone else owns the domain name, customers may be unwittingly diverted to competitors, or worse, exposed to unsavory content that may create a negative association. Domain name disputes arise largely from the practice of cybersquatting, which is “an expression that has come to mean the bad faith, abusive registration and use of the distinctive trademarks of others as Internet domain names, with the intent to profit from the goodwill associated with those trademarks.”13 Cybersquatters exploit the first-come, first-served nature of domain name registration by registering domain names containing trademarks, names of famous persons, or trade names with which they have no connection or rights. Basically, “[c]ybersquatting is the Internet version of a land grab. Cybersquatters register well-known brand names as Internet domain names in order to force the rightful owners of the marks to pay for the right to engage in electronic commerce under their own name.”14 Because registering domain names is simple and now largely inexpensive, domain name speculators often register such domain names in bulk.

12. Appendix A contains a list of some specialty investigative resources. 13. Shields v. Zuccarini, 254 F.3d 476, 481 (3d Cir. 2001). 14. Interstellar Starship Serv. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002).

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Cybersquatting occurs in several different subcategories, such as domain name parking (registering a domain name without using it in connection with a Web site and the inactive domain name with a registrar who usually uses it to display third-party links); typosquatting (registering a misspelling of a trademark as a domain name), and tasting (registering a trademark as a domain name and giving up the registration within the five-day grace period if it does not receive enough hits by Internet users to make it profitable).15 Although not as common as a few years ago, cybersquatters often hold the domain names for ransom and offer to sell them directly to the trademark holder for a large profit. Cybersquatters also commonly use the domain names to direct to commercial Web sites offering products in competition with the trademark owner or to parked Web pages offering Internet links, which the cybersquatter earns profits on if Internet users click through. Extensive registration and use of domain names containing a company’s trademark by third parties may eventually dilute or otherwise weaken the mark. Thus, just as it is important for a company to enforce its trademark in the “real world,” it is also important to enforce against use of the mark in domain names. This chapter explores the challenges attorneys face when enforcing their clients’ marks online and provide tips for successfully combating infringers. A trademark owner has two primary options when it discovers a third party has registered a domain name incorporating one of its trademarks. First, the company can attempt to recover the domain name through an arbitration process by seeking relief under the UDRP. Second, the company may file a lawsuit in federal court under the Anticybersquatting Consumer Protection Act (ACPA) which is codified in the Lanham Act at 15 U.S.C. § 1125(d).

15. The “Add Grace Period” or “AGP” was intended as a way to allow registrants who inadvertently made a typo during registration to cancel the incorrect registration and obtain a refund from the registrar. Registrars were in turn refunded the portion of the registration fee they paid to the relevant registry operator. In December 2008, the Internet Corporation for Assigned Names and Numbers (“ICANN”) announced a change in the AGP policy to address concerns about rampant overuse for speculation purposes. Under the new policy, registry operators may not refund registration fees to registrars for registration cancellations that exceed 10% of the registrar’s total new registrations in a month, or 50 registrations, whichever is greater, unless the registrar is granted an exemption. As a result, ICANN has reported a more than 99% drop in domain tasting. See ICANN, The End of Domain Tasting, www. icann.org/en/announcements/announcement-12aug09-en.htm (August 12, 2009). For a case addressing “tasting,” see Verizon Calif. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088 (C.D. Cal. 2008) (granting a preliminary injunction under the ACPA); see also Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752 (N.D. Ill. 2008).


(i) UDRP The right to use a domain name is delegated to various domain name registrars, which are accredited by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a global nonprofit corporation that was formed in 1998; it is charged with overseeing the name and number systems of the Internet. In August 1999, ICANN adopted the UDRP, which provides a private arbitration procedure by which a domain name dispute may be resolved without resort to the courts. (See ICANN Policy and Rules, Appendix F.) As of January 2000, all global top-level registrars had adopted the UDRP. Therefore, the UDRP applies to all accredited registrars in the .biz, .com, .info, .name, .net, and .org top-level domains, and all persons who register a domain name in one of those top-level domains are bound by the UDRP. To institute a UDRP proceeding, a trademark owner files a complaint with an approved dispute-resolution services provider, such as the National Arbitration Forum (“NAF”) or the World Intellectual Property Organization (“WIPO”). A mandatory arbitration procedure is instituted once a trademark owner (complainant) files a complaint alleging that: (1) the domain name is identical or confusingly similar to a trademark in which the trademark owner has rights; (2) the domain name holder has no rights or legitimate interest in the domain name; and (3) the domain was registered and is being used in bad faith. (See Appendix F, UDRP ¶ 4(a)(i)–(iii).) The UDRP sets forth a nonexclusive list of certain types of circumstances that can be used to demonstrate a domain name was registered and used in bad faith.16 Conversely, the UDRP also provides a list of circumstances a domain name registrant can

16. UDRP ¶ 4(b): “[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

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demonstrate to show that it has rights to and legitimate interests in the domain name.17 The domain name registrant (respondent) is given an opportunity to defend itself against the allegations by filing a response.18 The provider then appoints a panel who decides whether the domain name should be transferred or cancelled. Remedies under the UDRP are limited to the cancellation of the domain name or the transfer. Damages and attorney’s fees are not available. Once the panel orders a domain name cancelled or transferred, the appropriate registrar implements the decision after a 10-day waiting period, unless the decision is appealed during that time by moving it to court. The UDRP provides that either party retains the option to move the dispute to a court of competent jurisdiction for independent resolution, although this is not a common practice. The UDRP was designed to be a relatively inexpensive and quick way to resolve domain name disputes. UDRP charges by a dispute-resolution provider can range from $750 to $4,500. Because the UDRP provides for an expedited time line and there are no appeals, most cases brought under the UDRP are resolved in fewer[less] than three months. Because the UDRP is a private administrative proceeding, however, a party may choose to appeal an unfavorable decision by filing an action under the ACPA in federal court. (ii) ACPA A trademark owner can also file an action in federal court under the ACPA, which allows a trademark owner to bring a civil action against any person who has a bad faith intent to profit from that mark by registering, trafficking

17. ¶ (4)(c): “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name: (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” 18. However, if the respondent fails to respond, the panel may accept all reasonable allegations and inferences set forth in the complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., Case No. FA 95095 (NAF, July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO, Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).


in, or using a domain name that is identical or confusingly similar to a mark or dilutive of a famous mark. 15 U.S.C. § 1125(d)(1)(A). Traditional trademark law would require the domain name registrant to be using the site in connection with the sale of goods and services in order for the trademark owner to recover. However, the ACPA eliminates that requirementand focuses on the bad faith intent to profit from registration or use of a domain name that is the same or confusingly similar to a trademark, word, or name. Therefore, trademark owners may seek recovery under the ACPA even when a domain name registrant is not using the domain name in connection with goods or services. The ACPA sets forth nine non-exhaustive factors that a court may consider when determining the presence or absence of bad faith and whether a defendant possesses a bad faith intent. The first four factors suggest circumstances tending to indicate an absence of bad faith intent to profit.19 The next four factors suggest circumstances affirmatively indicating a domain name registrant’s bad faith.20 The ninth factor, “the extent to which the trademark incorporated in the defendant’s domain name is or is not distinctive,” evaluates the strength of the relevant mark and can weigh in either party’s favor depending on the mark’s distinctiveness. Courts often afford significant weight to the fourth factor—the defendant’s bona fide noncommercial or fair use of the trademark in a site accessible under the domain name—with noncommercial use rarely amounting to bad faith.21 The ACPA also contains a safe harbor provision, where bad faith “shall not be found in any case in which the court determines that the person believed and had reasonable

19. 15 U.S.C. § 1125(d)(1)(B): (I) the trademark or intellectual property rights of the defendant in the domain name; (II) the extent to which the domain name consists of the defendant’s name; (III) the defendant’s prior use of the domain name in connection with the bona fide offering of goods or services; and (IV) the defendant’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name. 20. 15 U.S.C. § 1125(d)(1)(B):. . . . (V) the defendant’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name, either for commercial gain or with an intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the defendant’s offer to transfer or sell the domain name to the trademark owner or any third party for financial gain; (VII) the defendant’s giving false contact information when applying for registration of the domain name; and (VIII) the defendant’s registration or acquisition of multiple domain names that are identical to or confusingly similar to the trademarks of others. 21. See, e.g., Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (Web site operator found to lack a bad faith intent to profit when he used the Web site at issue to criticize the social and religious views of the Reverend Jerry Falwell), TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004), and Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004) (defendants lacked bad faith intent to profit when using noncommercial Web sites to engage in consumer commentary and criticism; but see Coca-Cola Co. v. Purdy, 3821 F.3d 774 (8th Cir. 2004) (defendant antiabortion activist held to violate the ACPA despite the clearly religious and political character of his speech on the Web site at issue because his Web sites solicited monetary contributions and sold merchandise).

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grounds to believe that the use of the domain name was a fair use or otherwise lawful.”22 Filing a lawsuit alleging a violation of the ACPA is a more costly and lengthy alternative to instituting a UDRP proceeding. Remedies under the ACPA include the ability of the court to order the forfeiture, cancellation, or transfer of the domain name as well as allowing plaintiff to recover actual or statutory damages. A plaintiff need not prove actual damages if he chooses statutory damages, which the court may award in an amount between $1,000 and $100,000 per domain name. Attorney’s fees may also be recovered. Although pursing an ACPA action is a more lengthy and expensive option than filing a UDRP complaint, the ACPA provides a significant advantage in that a trademark owner may file an in rem action against the infringing domain name itself. 15 U.S.C. § 1125(d)(2)(A). This is extremely useful in situations where a domain name registrants have provided false contact information to registrars and/or are located in foreign countries.23 An in rem action under the ACPA may be filed: (1) if “the domain name violates any right of the owner of a mark” that is registered by the USPTO or protected under the Lanham Act § 43(a) (unregistered marks) or § 43(c) (dilution of famous marks), and (2) the trademark owner is unable to obtain in personam jurisdiction over the domain name registrant or is unable to locate the appropriate defendant. 15 U.S.C. § 1125(d)(2)(A)(ii). Lanham Act § 43(d)(2)(A) requires that an in rem action must be filed in the judicial district “in which the domain name registrar, domain name registry, or other domain name authority that is registered or assigned the [challenged] domain name is located.” Because an in rem lawsuit is only against the domain name itself, remedies are limited to obtaining a court order for forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark. A plaintiff asserting an in rem action may not assert claims for damages or attorneys’ fees. In addition to trademarks, the ACPA also protects personal names, but this protection is more limited. The ACPA protects personal names in which the domain name registrant has the specific intent to profit from the sale of the domain name.24 Additionally, for protection under the ACPA, a personal name must possess trademark significance.25

22. 15 U.S.C. § 1125(d)(1)(B)(ii) (2007). 23. A trademark owner may proceed with an in rem action against a domain name registered by a person located in a foreign country if the domain name is registered by a U.S.-based registrar. 24. See 15 U.S.C. § 1129: “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.” 25. See Salle v. Meadows, No. 07-1089, 2007 WL 4463920 (M.D. Fla. Dec. 17, 2007) (granting summary judgment on ACPA claim for defendant where plaintiff failed to present enough evidence as to whether he possessed protectable trademark rights in his personal name).


b. Other Types of Claims (i) Traditional Trademark Infringement Claims When bringing a federal lawsuit against a cybersquatter, a trademark owner should not limit himself to an ACPA claim but should also assert traditional trademark infringement claims. These claims can include violations of Lanham Act § 32(1) for infringement of a mark registered with the USPTO, Lanham Act § 43(a) for infringement of an unregistered mark, and Lanham Act § 43(c) for dilution of a famous mark (registered or unregistered). (ii) State Anticybersquatting Laws Several states have enacted laws that protect trademarks and/or personal names from cybersquatting. For example, California’s anticybersquatting law makes it unlawful for a person, with bad faith intent, to register, traffic in, or use an Internet domain name that is identical or confusingly similar to the personal name of another living person or deceased personality.26 California’s statute is very similar to the ACPA’s protection for personal names except that the California law includes the name of a deceased personality whereas the ACPA is limited to the name of a living person. In 2001, Hawaii enacted a law addressing the bad faith registration of domain names consisting of marks or personal names.27 Louisiana also acted an anticybersquatting law in 2001, aimed at outlawing the cybersquatting of personal names,28 followed in 2007 by New York’s law aimed to protect against cybersquatting the name of a living person.29 c. Effectively Using Cease-and-Desist Letters Prior to filing an ACPA lawsuit or instituting a UDRP proceeding to recover a domain name, consider contacting the registrant and attempting informally to negotiate the transfer of the domain name. This is typically done by sending a cease-and-desist letter to the registrant. A typical cease-and-desist letter

26. See California Business & Professions Code § 17525–28. To recover under the California statute, a plaintiff must prove that: (1) the defendant has registered in, trafficked in or used a domain name; (2) which consists of or is confusingly similar to the personal name of the plaintiff, or a deceased personality; and (3) the defendant has committed the acts with a bad faith intent (measured by nine factors similar to those under the ACPA). 27. Title 26 Trade Regulation and Practice, Chapter 481 B Unfair and Deceptive Practices, Part II Cybersquatting, Hawaii Rev. Statutes §§ 481 B-21 to B-25 (enacted 2001). 28. Title 51, Trade and Commerce, Chapter 1, Part 6, Subpart H Individual Domain Name Protection, Louisiana Rev. Statutes § 51:300.11 to § 51:300.13; § 51:300-21 to § 51:300.22 (enacted 2001). 29. New York State General Business Law, § 146–49 Cyber Piracy Protections; Domain Names).

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will outline, in strong terms, the client’s trademark rights; explain why the recipient’s use of the client’s trademark in a domain name infringes on those rights; and assert that recipient’s conduct constitutes trademark infringement, unfair competition, cybersquatting, or dilution under federal and state laws. The letter concludes with a demand for written assurances that the infringement will cease, under threat of further legal action. A cease-anddesist letter should also include a demand that the registrant transfer the disputed domain name to the trademark owner. Cease-and-desist letters are a cost-effective means for a trademark owner to enforce its rights against infringers. Where the registrant of a disputed domain name is an individual who is unfamiliar with trademark law and the UDRP process, many times the registrant will quickly cooperate with the trademark owner to avoid further legal action. However, prior to sending a cease-and-desist letter to a registrant, it is very important to conduct a thorough investigation of the registrant’s identity and assess how the registrant is using the domain name (and the date of registration, to insure the trademark owner has priority). For example, a registrant is unlikely to transfer a disputed domain name if the domain is being used for a legitimate purpose (such as using a trademark for its descriptive meaning) or engaging in some type of fair use (such as noncommercial criticism sites). Registrants who are in the business of registering domain names containing trademarks are also unlikely to transfer a disputed domain name for no or minimal payment. Often such registrants are aware that trademark owners must expend significant monies to take further action (such as UDRP filing costs and attorney’s fees), so they respond to cease-and-desist letters by offering to transfer the domain name in exchange for several thousands of dollars—enough to make a tidy profit, but still less than the amount the trademark owner would expend in costs and legal fees to bring a UDRP complaint or ACPA action. Depending on the importance of the disputed domain name to a client, and especially in cases involving registrants who are making a legitimate use of the domain name, negotiating a price for the acquisition of the domain name may be commercially prudent, as this may prove cheaper and quicker than litigation or arbitration under the UDRP.30

30. There are some exceptions to this rule. Many domain name businesses register multiple domain names through an automated process. Some, to avoid potential trouble, are willing to turn over domains containing a trademark to the trademark owner upon proof of the owner’s rights. A cease-and-desist letter with a copy of relevant trademark registrations may do the trick. Some of these businesses may even have a web form on their main webpage for trademark owners to use for this purpose.


Practice Tip Cybersquatting 3 Even if a cease-and-desist letter does not result in an immediate and lowcost or no-cost transfer of the domain name from the registrant, often such a letter prompts the registrant to respond with offers to sell the domain name to the trademark holder. As discussed below, offers to sell the domain name can be presented as evidence of the registrant’s bad faith. Accordingly, it is very important to retain all communications received from the registrant, whether in the form of a formal response or informal e-mails, as they may turn out to be vital evidence that will help the trademark owner prevail in a later UDRP or ACPA proceeding.

Significantly, a trademark owner contemplating sending a cease-anddesist letter must be cognizant that such a letter may trigger the accused infringer to file a declaratory judgment action—and thus begin a federal court case. In a declaratory judgment lawsuit, the accused infringer asks the court for a declaration that it is not infringing the rights of the trademark owner. The accused might also seek a declaration that the trademark owner’s mark is invalid or otherwise unenforceable. Prior to 2007, Federal Circuit precedent provided that patentees could communicate widely with potential infringers/ potential licensees without running the risk the licensee would sue the patentee for a declaratory judgment that a patent was invalid or not infringed. However, in MedImmune, Inc. v. Genentech, Inc.,31 the U.S. Supreme Court overruled that precedent, and subsequent decisions have stated that certain practices previously used by patentees to approach potential licensees (such as cease-and-desist letters and similar communications) will now give rise to jurisdiction for declaratory judgment actions. As MedImmune has been applied to trademark infringement cases, trademark owners need to keep in mind that strongly worded as well as multiple cease-and-desist communications may allow an infringer to file suit first, which often results in a forum inconvenient to the trademark owner. The trademark owner’s goal of using the cease-and-desist letter as a cost-effective enforcement tool is thwarted at the outset if the recipient files a declaratory judgment action because the trademark owner now faces an expensive federal lawsuit. Additionally, a trademark owner must be vigilant in following up with the registrant of an infringing domain name after sending a cease-and-desist letter. A decision from the U.S. District Court for the Southern District of Florida held that a trademark owner’s failure to timely enforce its trademark

31. 127 S. Ct. 764 (2007).

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rights against a cybersquatter resulted in a waiver of those rights altogether.32 Accordingly, the court found that the plaintiff trademark owner was barred from pursuing its Lanham Act infringement and cybersquatting claims under the doctrine of laches because plaintiff’s delay in asserting its trademark rights was inexcusable. Specifically, the court found that despite its full knowledge of the alleged trademark infringement and domain name dispute with defendant, the trademark owner merely sent e-mails and letters over a five-year period. The court concluded that the delay would prejudice the defendant because eight years’ worth of evidence would have to be accumulated. d. Drafting the UDRP Complaint (i) Quick Recap of ACPA and UDRP Factors ACPA (1) registration, traffic or use of a domain name; (2) that is identical or confusingly similar to a mark or dilutive of a famous mark; (3) with a bad-faith intent to profit; (4) where the mark is distinctive or famous.

UDRP (1) the domain name is identical or confusingly similar to a trademark in which the trademark owner has rights; (2) the domain name holder has no rights or “legitimate interest” in the domain name; and (3) the domain was registered and is being used in “bad faith.”

This section will walk you through drafting a UDRP complaint. Examples of UDRP complaints can be found in Appendix G. To institute a mandatory arbitration proceeding under the UDRP, the trademark owner (complainant) must draft a complaint asserting that: (1) the domain name at issue is identical or confusingly similar to a trademark in which complainant has rights, (2) the domain name holder has no rights or legitimate interest in the domain name, and (3) the domain name was registered and is being used in bad faith. However, before drafting the substantive argument section addressing these factors, the complainant should provide certain basic information such as its contact information, the identity and

32. S. Grouts & Mortars, Inc. v. 3M Co., No. 07-61388-CIV, 2008 WL 4346798 (S.D. Fla. Sept. 17, 2008).


contact information of its attorney (if outside counsel is drafting the complaint), the identity and contact information of the respondent (collected from WHOIS), and the disputed domain name. (See Sample UDRP Complaint, Appendix G.)33 (ii) Trademark Rights When beginning the substantive argument section, the complainant should first identify the trademark or service mark on which the complaint is based, state how many years complainant has used it (or identify the year complainant first began using it), and briefly describe for what goods or services complainant uses the mark. Next, the complainant should provide additional details to demonstrate complainant’s rights in the mark.34 The complainant satisfies the threshold requirement of possessing trademarks rights if it owns a registered trademark with the USPTO or other applicable foreign regulatory body.35 Accordingly, if the complainant owns U.S. or federal trademark registrations, it should describe the registered marks and registration details. Practice Tip Cybersquatting 4 To provide the panel with clear evidence of a complainant’s trademark rights, it is helpful to attach copies of complainant’s trademark registration certificates as an exhibit to the complaint. If the complainant’s registrations are extensive, attach a chart (in addition to or in the place of copies of registration certificates) listing all of complainant’s marks.

33. UDRP Rules § 3. NAF also provides a model UDRP complaint on its Web site located at: http://domain.adrforum.com/users/icann/resources/UDRPModelComplaint200711.rtf. 34. See the information included in the example ICANN complaints in the Appendix G section, “The Trademarks and Service Marks upon which the Complaint is Based.” 35. Vivendi Universal Games v. XBNetVentures Inc., Case No. FA 198803 (NAF, Nov. 11, 2003) (“Complainant’s federal trademark registrations establish Complainant’s rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO, Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”); U.S. Office of Pers. Mgmt. v. MS Tech. Inc., Case No. FA 198898 (NAF, Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., Case No. FA 571918 (NAF, Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

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If the complainant does not own a trademark registration, it may demonstrate its common law trademark rights by showing that the mark has become a distinctive identifier associated with the complainant or its goods and services (i.e., that the mark has acquired secondary meaning). To show secondary meaning, complainant should provide details such as length of time it has used the mark, amount of sales under the mark, nature and extent of advertising using the mark, and consumer surveys and other media recognition.36 Asserting ownership of a registration of the Supplemental Register is not sufficient, on its own, to establish trademark rights, because owning a supplemental registration is an indication that the mark has not acquired distinctiveness, at least at the time of the registration. Although registration on the Supplemental Register is not a deemed admission of a lack of acquired distinctiveness, to possess sufficient rights for enforcement in a UDRP proceeding, the Complainant must establish through record evidence that the mark has acquired distinctiveness.37 In addition, if the complainant owns one or more domain names that incorporate the trademark at issue, complaintant should identify these domain names and indicate what it uses them for (sales of its products, as an informational portal, for the benefit of affiliated companies or licensees who also use the mark, etc.). In many situations, a complainant who does not own the trademark at issue but who is a licensee or sublicensee of the mark will be found to possess the requisite rights in the mark to institute a UDRP proceeding.38

36. Australian Trade Comm’n v. Matthew Reader, D2002-0786 (WIPO Nov. 12, 2002) (Complainant made prima facie showing of common law rights in AUSTRADE mark when it had used mark since 1986, spent over AUS $10 million in advertising the mark in recent years, and earned at least the same amount in annual sales under the mark in recent years, and complainant provided evidence of its use of its mark in brochures and written materials publicly distributed); Enfinger Dev., Inc. v. Montgomery, FA 370918 (NAF Feb. 16, 2005) (complainant demonstrated common law rights in mark by showing use, including development plans filed with government body, correspondence with government officials, and newspaper articles featuring the mark); Great Plains Metromall, LLC v. Creach, FA 97044 (NAF May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.” In this instance, complainant offered proof of use, advertising and sales): see also The Atlantic Paranormal Society v. Domain Admin, FA 1242901 (NAF March 5, 2009) (denying claim because complainants did not allege common-law trademark rights and did not provide sufficient evidence of such rights). 37. Kip Cashmore v. URLPro, D2004-1023 (WIPO, Dec. 18, 2007). 38. ACLU of New Mexico v. Vilma Morales/e:bOOm, S.A., D2004-0473 (WIPO, Aug. 23, 2004) (to establish sufficient rights in a mark to which the disputed domain name is alleged to be identical or confusingly similar, “These rights need not be rights of ownership and need not be exclusive. A licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark”); HCS MISCO v. Christophe CATUREGLI, D2000-1438 (WIPO Jan. 29, 2001) (complainant entitled to file UDRP complaint requesting transfer of domain name when it was licensee with right to use the trademark and a wholly


(iii) Identical or Confusingly Similar As the legal professional representing the complainant, begin this section of your argument by identifying the domain name and asserting that it is either identical or confusingly similar to the complainant’s mark. If complainant owns one or more domain names that incorporate its mark, also assert that respondent’s domain name is identical or confusingly similar to complainant’s domain name, and describe how complainant uses the Web site associated with the mark for legitimate purposes (online retail sales of complainant’s products, portal of information about the complainant, etc.). Then describe how the domain name differs from the mark. For example, if the domain name is googlediscounts.com, state: “Respondent’s domain name googlediscounts. com incorporates Complainant’s GOOGLE mark in its entirety and merely adds the generic word discounts.” Then assert that the alteration/addition to the mark does not dispel the confusion, citing to UDRP precedent. For example, “By merely adding a generic word to Complainant’s famous mark, Respondent does nothing to prevent the likelihood of confusion with Complainant’s GOOGLE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or of goods or services advertised on that site. See AARP v. Electronic Marketing Services c/o Tammy Gloe, No. 366129 (NAF, Jan. 3, 2005) (the mere addition of generic terms is irrelevant and fails to distinguish the disputed domain names; aarpdefensivedriving.com is confusingly similar to aarp.org).” Confusingly, similar domains often possess these attributes: • Addition of a top-level domain does not distinguish a domain name from a trademark.39 • Use of complainant’s entire trademark with nondistinctive and descriptive matter creates confusion.40

owned subsidiary of the trademark owner, and was officially authorized to represent the trademark owner in the proceeding). 39. Gardline Surveys Ltd. v. Domain Fin. Ltd., Case No. FA 153545 (NAF, May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO, Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants. . . .”); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO, Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). 40. See ISL Mktg. AG v. J.Y. Chung, D2000-0034 (WIPO, Feb. 18, 2000) (finding worldcup2002 [.com, .org., and .net] to be confusingly similar to the WORLDCUP mark.); see also The Price Company v. Price Club, D2000-0664 (WIPO, June 6, 2000) (finding priceclub2000.com to be confusingly similar to the PRICE CLUB mark).

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• Addition of generic word to trademark meets confusing-similarity test.41 • Misspelling a trademark in a domain name (i.e., typosquatting) meets confusing-similarity test.42 • Domain name consisting of a registered trademark followed by a geographical indicator can show confusing similarity, particularly where the complainant does business under the name of the mark in the geographical place indicated.43 • Domain name that is the translation of a foreign mark is confusingly similar.44 • Domain name that is the transliteration of a foreign mark is confusingly similar.45 • Domain name consisting of a trademark and a negative term may be found confusingly similar to complainant’s mark.46

41. See AARP v. jg aka Josh Green, ICANN 244742 (NAF, May 4, 2004) (aarppharmacy.com is confusingly similar to aarp.org); AARP v. Elec. Mktg. Servs., Case No. 366129 (NAF, Jan. 3, 2005) (the mere addition of generic terms is irrelevant and fails to distinguish the disputed domain names; aarpdefensivedriving.com is confusingly similar to aarp.org); see also Yahoo! Inc. v. Cupcakes, No. D2000-0777 (WIPO, Oct. 2, 2000) (adding generic words to distinctive and famous YAHOO! and GEOCITIES marks meets confusingly similar test). 42. Myspace, Inc. v. Kang, FA 672160 (NAF, June 19, 2006) (finding the myspce.com domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity). 43. See Gannet Co. v. Chan, D2004-0117 (WIPO, Apr. 8, 2004) (“It is well established that a domain name consisting of a well known mark combined with a geographically descriptive term or phrase is confusingly similar to the mark.”); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO, Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the verisignindia.com and verisignindia.net domain names where the respondent added the word India to the complainant’s mark); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO, May 2, 2000) (finding that the domain name walmartcanada.com is confusingly similar to the complainant’s famous mark). 44. Compagnie Generale Des Etablissements Michelin—Michelin & Cie. v. Graeme Foster, Case No. D2004-0279 (WIPO, May 25, 2004) (redbook-recipes.com confusingly similar because it is an obvious English translation of complainant’s registered trademark LE GUIDE ROUGE). 45. Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, Case No. D2003-0408 (WIPO, July 11, 2003); Yahoo! Inc. v. Sergey Korshunov, FA0804001176666 (NAF May 21, 2008) (domain name containing transliteration of “yahoo” in Cyrillic alphabet is confusingly similar to the Complainant’s YAHOO mark). 46. A & F Trademark, Inc v. Jorgensen, Case No. D2001-0900 (WIPO, Sept. 19, 2001) (abercrombieandfilth.com found confusingly similar to complainant’s ABERCROMBIE & FITCH mark); ADT Servs. AG v. ADTSucks.com, Case No. D2001-0213 (WIPO, Apr. 23, 2001) (adtsucks.com is confusingly similar to ADT); but see, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, Case No. D2000-1104 (WIPO, Nov. 23, 2000) (wallmartcanadasucks.com not confusingly similar to WAL-MART); Lockheed Martin Corp. v. Parisi, Case No. D20001015 (WIPO, Jan. 26, 2001) (lockheedmartinsucks.com is not confusingly similar to LOCKHEED MARTIN).


• Omission of symbols from a mark does not preclude finding that domain name is identical or confusingly similar to complainant’s mark.47 • Addition or insertion of symbols into a mark does not preclude finding of confusing similarity.48 • Confusion is particularly likely where registrant has added a word to complainant’s trademark that is related to services offered by complainant.49 (iv) Rights or Legitimate Interests The complainant must first plead a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name, then the burden shifts to respondent to show that it does possess rights or legitimate interests.50 The Complainant must offer evidence of how Respondent is using the domain name (such as printouts of the relevant Web site) to support its claims.51 Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that a respondent can assert to demonstrate its rights or legitimate interests.52 Therefore, pleading that a respondent lacks rights and legitimate interests in

47. Chi-Chi’s, Inc. v. Restaurant Commentary (Restaurant Commentary), Case No. D2000-0321 (WIPO, June 29, 2000) (chichis.com found identical to complainant’s CHI-CHI’S mark despite the absence of a hyphen and an apostrophe). 48. Guinness UDV North Am., Inc. v. UKJENT, Case No. D2001-0684 (WIPO, Aug. 9, 2001) (s-m-i-r-n-o-f-f.com found confusingly similar to SMIRNOFF mark despite insertion of dashes between each letter of the mark because dashes do not alter the visual or phonetic identity of the mark). 49. See AARP v. jg aka Josh Green, ICANN Case No. 244742 (NAF, May 4, 2004); see also Space Imaging LLC v. Brownwell, No. AF-0298 (eResolution, Sept. 22, 2000) (finding confusing similarity where respondent’s domain name combined complainant’s mark with a generic term that had an obvious relationship to complainant’s business). 50. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, Case No. FA 741828 (NAF, Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, Case No. FA 780200 (NAF, Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). 51. See, e.g., Skyy Spirits LLC v. Krzenszczynski, FA 1220829 (NAF November 26, 2008) (denying claim when Complainant offered no evidence regarding how the domain name was being used (or not used)). 52. These include: (1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute, (2) an indication that the registrant has been commonly known by the domain name even if it has acquired no

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the domain name should involve one or more of the following assertions: (1) the respondent is not commonly known by the domain name (as an individual, business, or other organization); (2) the respondent has not used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (3) respondent is not engaged in a legitimate noncommercial or fair use of the domain name. If the respondent does not respond to the UDRP complaint, the arbitration panel may presume that respondent lacks all rights and legitimate interests in the domain name.53 If a respondent can show that before it received notice of the dispute, it was using or made demonstratable preparations to use the domain name in connection with a bona fide offering of goods or services, it can establish rights or legitimate interests in the domain name.54 General guidelines concerning bona fide offerings of good and services follow. • There is no bona fide use of domain name when used for a Web site offering third-party Internet links, some linking to the complainant’s competitors.55 • Typosquatting does not qualify as a bona fide offering of goods and services so as to constitute rights and legitimate interests in domain name.56 • Use of a domain name for a Web page displaying pornographic videos and content sufficient to show use is not in connection with a bona fide

53.

54. 55.

56.

trademark rights, or (3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark. See Policy Section 4(c)(i)–(iii). Am. Express Co. v. Fang Suhendro, Case No. FA 129120 (NAF, Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO, Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). See Policy Section 4(c)(i). See TM Acquisition Corp. v. Sign Guards, Case No. FA 132439 (NAF, Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a Web site that displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). Nat’l Ass’n of Prof ’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO, Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site”); see also IndyMac Bank FSB. v. Ebeyer, FA, 175292 (WIPO, Sept. 19, 2003) (finding that respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant’s website but mistakenly misspell Complainant’s mark by typing the letter ‘x’ instead of the letter ‘c.’”).


offering of goods or services under the Policy or a legitimate noncommercial or fair use under the Policy.57 • Passive holding of a domain name is not a bona fide offering of goods or services under the Policy and is not a legitimate noncommercial or fair use under the Policy.58 • A respondent cannot be said to have acquired rights to or legitimate interests in a disputed domain name where the respondent applies for registration of a trademark identical to the domain name if such application postdates his receipt of notice of the dispute. 59

Practice Tip Cybersquatting 5 To demonstrate registrant’s lack of legitimate interests in the domain name, attach printouts of the Web site or screenshots clearly showing the objectionable content available on the site. For example, it is difficult to conceive of any scenario in which a registrant could demonstrate legitimate interests in a disputed domain name when presented with pictorial evidence of pornographic content.

Even if a respondent lacks trademark or service mark rights, it may establish sufficient legitimate rights in the domain name if it can show that it is commonly known by the domain name.60 To establish legitimate rights under this element, a respondent must have been commonly known by the domain

57. Warner Bros. Entm’t Inc. v. Markov Sergei Nikolaevich, Case No. FA 1225813 (NAF, Nov. 5, 2008) (finding use of tmz-video.com for pornographic content and videos not a bona fide offering of goods or services and not legitimate or fair use because the use tarnishes complainant’s TMZ.COM mark for respondent’s own commercial gain); see also Yahoo! Inc. v. Zuccarini, Case No. FA 183997 (NAF, Oct. 20, 2003) (“Respondent’s use of the disputed domain names to redirect Internet users to pornographic websites, where the names were selected specifically for the purpose of trading on the goodwill of Complainant’s marks, cannot qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the names under the Policy.”). 58. Am. Broad. Cos., Inc. v. Sech, Case No. FA 893427 (NAF, Feb. 28, 2007) (finding the respondent’s failure to use the abc7chicago.mobi domain name as its registration provided evidence that the respondent lacked rights and legitimate interests in the disputed domain name); see also U.S. News & World Report, Inc. v. Zhongqi, Case No. FA 917070 (NAF, Apr. 9, 2007) (finding that a respondent had no rights or legitimate interests in a confusingly similar domain name where it had failed to use it). 59. Dell Computer Corp. v. Got Domain Names For Sale, Case No. D2000-0659 (WIPO, Aug. 15, 2000) (“Because Respondent’s application postdates his receipt of notice of the dispute, Respondent cannot be said to have acquired rights to or legitimate interests in the domain names at issue”). 60. See Policy Section 44(c)(ii).

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name as of the registration date.61 Complainants may easily rebut this possibility by simply pointing to the information respondent provided in the WHOIS directory. Panels generally conclude that a respondent is not commonly known by the domain name when nothing in WHOIS information suggests this to be true.62 However, some respondents have been successful in establishing legitimate interests under this element, but only after providing evidence beyond bare allegations.63 Other general circumstances indicating that a respondent lacks legitimate rights in a domain name include: • Rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the complainant.64 • Respondent lacks rights and legitimate interests in the domain name when it is not a licensee of the complainant, when it is not authorized to use complainant’s trademark, and and when it registered the disputed domain name without the complainant’s authorization, knowledge, or consent.65 • A legitimate interest cannot be established where the evidence suggests that registration was for the purpose of benefiting from the complainant’s trademark, even where that trademark can also be used as a common term.66

61. Muggles Magical Toys, Inc. v. muggles.org., Case No. 94798 (NAF, July 24, 2000) (no evidence presented beyond mere allegation that respondent was commonly known by the nickname muggles since childhood; domain name transferred to complainant). 62. See Coppertown Drive-Thru Sys., LLC v. Snowden, Case No. FA 715089 (NAF, July 17, 2006) (concluding that the respondent was not commonly known by the coppertown.com domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); Tercent Inc. v. Lee Yi, Case No. FA 139720 (NAF, Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply). 63. See, e.g. AST Sportswear, Inc. v. Hyken, Case No. D2001-1324 (WIPO, Mar. 26, 2002) (respondent satisfied burden to demonstrate he was “commonly known” as Johnny Blaze when he submitted “conclusive documentary evidence that he used the stage name Johnny Blaze as professional stage name during his career”); Red Bull GmbH v. Gutch, Case No. D2000-0766 (WIPO, Sept. 21 2000) (rejecting respondent’s claim that it was known by the nickname Red Bull since childhood where respondent provided no evidence to support the contention). 64. Drexel Univ. v. Brouda, Case No. D2001-0067 (WIPO, Mar. 20, 2001). 65. PwC Business Trust v. CulitoSa, Case No. D2001-1109 (WIPO, Dec. 14, 2001) (respondent lacked rights or legitimate interests in PRICEWATERHOUSECOOPERS mark when it was neither a licensee of complainant nor authorized to use the mark, and when it registered the domain name without complainant’s authorization, knowledge, or consent). 66. Advance Magazine Publishers Inc. v. Vanilla Limited, Case No. D2004-1068 (WIPO, Apr. 18, 2005) (no legitimate interest found where disputed domain names consisted of common


• An offer to sell the domain name provides evidence that respondent lacks rights and legitimate interests under the Policy.67 (v) Making Legitimate Noncommercial or Fair Use of Domain Name Special considerations arise when the respondent does not appear to be a standard cybersquatter, but rather may possess a legitimate connection to the complainant and its mark, such as a reseller or service agent of trademarked goods. The panel in Oki Data Americas, Inc. v. ASD, Inc.68 harmonized earlier decisions to provide a four-part framework for determining whether unauthorized businesses have a legitimate interest in a domain name. Under this framework, to possess legitimate interests in the domain name, a respondent must, at the minimum: (1) actually be offering the goods or services at issue; (2) use the site to sell only the trademarked goods (otherwise it could use the trademark to bait customers and switch them to other goods); (3) accurately disclose the registrant’s relationship with the trademark owner; and (4) refrain from trying to corner the market in all domain names, thus depriving the trademark holder from reflecting its mark in its own domain name.69 Subsequent decisions have held that the right to resell or market a product does not create the right to use a mark more extensively than is required to advertise and sell the product at issue.70 Also, the extent to which a reseller of legitimate goods can use a complainant’s mark depends on the extent to which such use accurately reflects the user’s connection with the mark owner.71 • Complaint Web sites and “gripe” sites Two major views have developed in UDRP precedent concerning domain names containing trademarks that are used for genuine, noncommercial free

67.

68. 69. 70.

71.

English word vogue in addition to descriptive modifiers where the evidence suggested that the registrations were made with the complainant’s VOGUE trademark in mind). See also Hewlett-Packard Co. v. High Performance Networks, Inc., Case No. FA 95083 (NAF, July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights). D2001-0903 (WIPO, Nov. 6, 2001). Id. Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik, Case No. 2003-0474 (WIPO, Aug. 15, 2003); R.T. Quaife Eng’g. Ltd. v. Luton, Case No. D20001201 (WIPO, Nov. 14, 2000); Motorola, Inc. v. NewGate Internet, Inc., Case No. D2000-0079 (WIPO, April 20, 2000). Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik, Case No. 2003-0474 (WIPO, Aug. 15, 2003).

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speech purposes.72 Under the first (and more severe) view, panels have held that the right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark. This view rejects the use of a domain name that is identical or confusingly similar to a trademark regardless of whether the Web site is dedicated to criticism or some other noncommercial use.73 Bear in mind, however, that many of the cases in which domain names have been transferred despite claims of use for legitimate criticism have involved foreign parties or panelists who do not subscribe to the wide free speech protections afforded in the United States.74

72. See Overview of WIPO Panel Views on Selected UDRP Issues, http://www.wipo.int/amc/en/ domains/search/overview/#24. 73. See Curt Mfg. v. Sabin, Case No. FA 0808001220025 (NAF, Sept. 23, 2008) (rejecting allegation that respondent lacked bad faith based on its intent to criticize complainant’s products, holding that freedom of speech applies to the content of the Web site but not to the domain name itself; “This would be a different case if Respondent’s domain name were <curtmfgsucks.com> or something similar. But it is not”); see also Diners Club Int’l Ltd. v. Infotechnics Ltd., Case No. FA169085 (NAF, Aug. 20, 2003) (“Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website”); Kirkland & Ellis LLP v. DefaultData.com, Am. Distribution Sys., Inc., D2004-0136 (WIPO, April 2, 2004) (“Respondent has the right to express its views in any forum of its choice, subject of course to libel and similar causes of action. Nevertheless, the right to express one’s views is not the same as the right to identify itself by another’s name when expressing those views. Thus, while Respondent may express its views about the quality, or lack thereof, of the U.S. legal profession, in general, or any firm offering legal services, in particular, Respondent does not have the right to identify itself as that particular firm”). 74. See e.g., Mission Kwa Sizabantu v. Rost, Case No. D2000-0279 (WIPO, June 7, 2000) (rejecting free speech as a valid defense in case involving German and South African parties); Grupo Picking Pack, S.A. v. Prospero Moran, Case No. D2000-1220 (WIPO, Dec. 18, 2000) (relying on Spanish case law to reject free speech argument for putative criticism site and support transfer of domain name); Skattedirectoratet v. Eivind Nag, Case No. D2000-1314 (WIPO, Dec. 18, 2000) (in case involving Norwegian parties, although “it is, in principle, legitimate to operate a domain name for the purposes of lawful criticism of a trademark owner. . . . this right [does not] extend[] to occupying a domain name identical to a sign identifying a trademark owner”); Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi, Case No. D2000-1171 (WIPO, Nov. 6, 2000) (holding in case involving Swiss parties: “Even if the Panel admitted that the aim of the website was to serve as a discussion forum, it is of the opinion that the exercise of the right of free speech does not require the use of a Domain Name identical to the trademark of the Complainant.”); Teollisuuden Voima OY v Vastamäki, Case No. D2001-0321 (WIPO, May 4, 2001) (in case involving Finnish parties, indicating agreement with the principal articulated in Skattedirectoratet); British Nuclear Fuels Plc v. Greenpeace Int’l, Case No. D2001-1318 (WIPO, Jan. 10, 2002) (right to free speech in order to criticize is different from right to use trademark as domain name—English and Dutch parties); Yüksel Inşaat A.Ş. v. Erdogan Koparal, Case No. D2002-0285 (WIPO, May 28, 2002) (holding in Turkish case that “while the Respondent is entitled to freely express his views . . . such right does not extend to having


Under the second (and more liberal view), panels reject infringement of a respondent’s free speech rights and hold that irrespective of whether the domain name as such connotes criticism (trademarksucks.com), a respondent possesses a legitimate interest in using the trademark as part of the domain name directing to a criticism site if the use is fair and noncommercial.75 Many panels deciding U.S. disputes have ruled that the First Amendment does protect domain names that are identical or confusingly similar to trademarks when they are used for legitimate criticism sites.76 Generally, UDRP decisions rejecting free speech defenses in U.S.-related cases involve a free speech assertion that is clouded by indicia of bad faith.77 Many of these cases involve critical Web site content coupled with offers to sell the domain names in excess of the registration costs.78

75.

76.

77.

78.

a right to use the Complainant’s trademark as a domain name for the purposes of establishing a website to express such views”); Tridos Bank NV v. Dobbs, Case No. D2002-0776 (WIPO, Oct. 3, 2002) (even if English respondent has a genuine grievance, it may not use English complainant’s name without adornment as its domain name). See 322 West 57th Owner LLC v. Administrator, Domain, D2008-0736 (WIPO, Aug. 6, 2008) (denying transfer of sheffield57resident.com operated by resident of SHEFFIELD57 building that solely contained speech critical of the complainant and its efforts in converting that building from apartments into condominiums when no evidence existed that respondent engaged in any commercial activity through her Web site or sought to financially benefit in any way from her use of the domain name). See, e.g., Bridgestone Firestone, Inc. v. Myers, Case No. D2000-0190 (WIPO, July 6, 2000) (refusing to transfer bridgestone-firestone.net, which was registered by a former Bridgestone employee who used the site to publicize his ongoing dispute with Bridgestone over his pension payments; use was legitimate, noncommercial, and fair because respondent did not usurp .com domain but utilized only .net domain, posted disclaimers on the Web site homepage, and included criticism and commentary on the site so that a reasonably prudent Internet user could tell that the site was not complainant’s official site); TMP Worldwide Inc. v. Potter, Case No. D2000-0536 (WIPO, Aug. 5, 2000) (refusing to transfer tmpworldwide.net and tmpworldwide.org domain names where domains hosted true criticism sites); Bosley Med. Group v. Kremer, Case No. D2000-1647 (WIPO, Feb. 28, 2001) (refusing to transfer domain name bosleymedical.com where respondent had prepared a true criticism site, but did not post site pending outcome of UDRP proceedings); Pensacola Christian Coll. v. Gage, Case No. FA101314 (NAF Dec. 12, 2001) (refusing to transfer pensacolachristiancollege.com domain name where domain hosted a true criticism site); Satchidananada Ashram—Integral Yoga Inst. v. Domain Admin’r, Case No. FA0209000125228 (NAF, Dec. 13, 2002) (refusing to transfer domain names where domains hosted true criticism sites); Action Instruments, Inc. v. Tech. Associates, Case No. D2003-0024 (WIPO, Mar. 6, 2003) (refusing to transfer buswaredirect.com domain name where domain hosted a criticism site). Dell Inc. v. Innervision Web Solutions, Case No. 445601 (NAF, May 23, 2005) (ordering transfer of dellcomputerssuck.com despite respondent’s claim that he had a legitimate interest in the domain name in using it to express commentary and criticism about complainant by using domain name to redirect Internet users to respondent’s Web site at innervisionpc. com where he competed with complainant). See, e.g., Citgo Petroleum Corp. v. Antinore, Case No. D2006-1576 (WIPO, Mar. 14, 2007) (ordering transfer of nomocitgo.com and nomocitgo.org when used for Web sites containing criticism of the government of Venezuela when respondent offered to sell the domain names

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Practice Tip Cybersquatting 6 Trademark owners should monitor the Internet on a regular basis to determine whether any gripe sites have been established concerning their company. This may be done within the company, by outside counsel, or with the assistance of a third-party search company. Trademark owners consider purchasing domain names containing their trademark combined with common terms used in domain names for gripe sites, such as [company] sucks.com, ihate[company].com, and [company]sux.com if they are not already registered. This discourages others from creating gripe sites and allows the trademark owner to use such domain names to redirect to their official Web site.

The final element to plead in a UDRP complaint is that the “domain name has been registered and is being used in bad faith.”79 The UDRP lists four factors that indicate bad faith registration and use of a domain name: (1) circumstances indicating the registration of the domain name primarily for sale to the trademark owner or to its competitor for valuable consideration in excess of the out-of-pocket costs of the registration; (2) registration of the domain name for purposes of preventing the trademark owner from using the mark in a domain name; (3) registration of the domain name primarily to disrupt a competitor’s business; and (4) use of the domain name to intentionally attract Internet users to a Web site by creating a likelihood of confusion with the complainant’s mark.80 The following circumstances indicate bad faith registration and use of a domain name under the UDRP: • Using then domain name to direct to a parked Web site with third-party links shows bad faith.81

and two others for a total of $10,500; totality of circumstances indicated that the respondent’s primary purpose was not to disseminate critical speech but rather to coerce the complainant into purchasing respondent’s gripe site); Nat’l Collegiate Athletic Ass’n v. Brown, Case No. D2004-0491 (WIPO, Aug. 30, 2004) (rejecting free speech defense when respondent used ncaafootball2005.com and ncaafootball2006.com for gripe site criticizing complainant NCAA where respondent also demanded payment in excess of $10,000 for transferring the names; as respondent’s overriding purpose was to extort money from complainant rather than solely disseminate critical content, respondent possessed no rights or legitimate interests in the domain names). 79. See Policy Section 4(a)(iii). 80. See Policy Section 4(b)(i)–(iv). 81. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., Case No. FA 877982 (NAF, Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a


• Making a general offer to sell the domain name is evidence of bad faith.82 • Suggesting to the trademark owner that it may want to buy a domain name is evidence of bad faith.83 • Including a general offer to sell domain name in WHOIS information is evidence of bad faith.84 • Providing false contact information to registrar constitutes bad faith.85 • Engaging in a pattern of registering domain names containing other parties’ trademarks shows bad faith.86

82.

83.

84.

85.

86.

directory Web site containing commercial links to the Web sites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); Associated Newspapers Ltd. v. Domain Manager, Case No. FA 201976 (NAF, Nov. 19, 2003) (bad faith found where domain name provided links to complainant’s competitors and respondent presumably commercially benefited from the misleading domain name by receiving “clickthrough-fees”). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., Case No. FA 192316 (NAF, Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). See S. Co. v. Doms, Case No. D2000-0184 (WIPO, May 8, 2000) (finding that the respondent violated Policy ¶ 4(b)(i), by indicating to the complainant that he “would consider a cash offer” for the sale of the disputed domain name registration while inviting the complainant to “submit an opening cash or stock offer”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, Case No. FA 180704 (NAF, Sept. 30, 2003) (“Respondent’s general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”) See Parfums Christian Dior v. QTR Corp., Case No. D2000-0023 (WIPO, Mar. 9, 2000) (finding bad faith where the respondent’s WHOIS registration information contained the words, “This is [sic] domain name is for sale”). Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-003 (WIPO Feb. 18, 2000) (active steps by respondent to conceal its identity constituted bad faith use even where respondent had not used the domain name); A.H. Belo Corp. v. King TV, Case No. D20001336 (WIPO, Dec. 8, 2000); Ticketmaster Corp. v. Prem, Case No. D2000-1550 (WIPO, Jan 16, 2001); Oakley, Inc. v. Watson, Case No. D200-1658 (WIPO, Jan. 5, 2001); France Manche v. Cimagotipo S.L., Case No. D2001-0771 (WIPO, (Aug. 6, 2001); Weetabix Ltd. v. Clarke, Case No. D2001-0775 (WIPO, Oct. 13, 2000); Wachovia Corp. v. Carrington, Case No. D2002-0775 (WIPO, Feb. 10, 2002)Action Instruments, Inc. v. Tech. Associates, Inc., Case No. D2003-0024 (WIPO, Mar. 6, 2003); Forte Commc’ns, Inc. v. Serv. for Life, Case No. D2004-0613 (WIPO, Sept. 22, 2004). Wal-Mart Stores, Inc. v. Hostmaster, Domain Park Ltd., Case No. D2008-1158 (WIPO, Oct. 10, 2008) (panel had “little difficulty” finding that the domain names were registered and being used in bad faith when respondent has been found in two previous UDRP cases to have registered and used in bad faith over 70 other domain names referable to the same mark); EPA European Pressphoto Agency B.V. v. Wilson, Case No. D2004-1012 (WIPO, Feb. 9, 2005) (finding that the respondent’s registration of the epa-photo.com, epaphoto.com, and epaphotos.com domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)); Harcourt, Inc. v. Fadness, Case No. FA 95247 (NAF, Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain

99

100


• Using the domain name for a Web site that offers products similar to the trademark owner’s constitutes bad faith registration and use.87 • Using privacy shields can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration.”88 • Failing to use the domain name constitutes bad faith registration and use.89 • Engaging in typosquatting is evidence of bad faith.90 • Using domain name to display adult-oriented content constitutes bad faith registration and use.91 • Passive holding of a domain name can be evidence of registration and use in bad faith.92 • Finding of bad faith can be made where respondent is a former employee of the complainant and had knowledge of complainant’s marks.93 An easy way for a complainant to demonstrate a respondent’s bad faith registration and use is by providing evidence of an offer to sell the domain

87.

88. 89.

90. 91.

92.

93.

names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”) Nokia Corp. v. Private, Case No. D2000-1271 (WIPO, Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a Web site that offered similar products as those sold under the complainant’s famous mark). Sermo, Inc. v. CatalystMD, LLC, Case No. D2008-0647 (WIPO July 2, 2008). See Disney Enters. Inc. v. Meyers, Case No. FA 697818 (NAF, June 26, 2006) (holding that the nonuse of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also Caravan Club v. Mrgsale, Case No. FA 95314 (NAF, Aug. 30, 2000) (finding that the respondent made no use of the domain name or Web site that connects with the domain name, and that inactive use of a domain name permits an inference of registration and use in bad faith). See Nat’l Ass’n of Prof ’l Baseball League, Inc. v. Zuccarini, Case No. D2002-1011 (WIPO, Jan. 21, 2003) (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”). See Warner Bros. Entm’t Inc. v. Nikolaevich, Case No. FA1225813 (NAF, Nov. 5, 2008); Wells Fargo & Co. v. Party Night Inc., Case No. FA 144647 (NAF, Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adultoriented Web sites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, Case No. D2003-0022 (WIPO, Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”). See DCI S.A. v. Link Commercial Corp., Case No. D2000-1232 (WIPO, Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club (finding that the respondent made no use of the domain name or Web site that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith). See Arab Bank for Inv. & Foreign Trade v. Akkou, Case No. D2000-1399 (WIPO, Dec. 19, 2000).


name as offering to sell a domain name for profit is the most common factor cited in UDRP decisions as evidence of bad faith. As common practice, a trademark owner will often send a cease-and-desist letter to the registrant of an infringing domain name prior to filing a UDRP complaint. Often times, the domain name registrant will reply and offer to sell the domain name to the trademark holder. Practice Tip Cybersquatting 7 When filing a UDRP complaint, complainant should provide a detailed description of registrant’s offers to sell the domain name Attach copies of all such communications. Registrants often make offers to the public to sell particular domains. In some cases, you may discover in a sample search that the domain name is being offered for sale in an eBay auction or through the Web site of a wholesale cybersquatter who has registered infringing domain names in bulk.

However, an offer to sell the domain name does not automatically result in a finding of bad faith. According to UDRP precedent, an offer to sell a domain name will not violate the UDRP in these types of circumstances: • The domain name is registered many years before the respondent made an offer of sale and it was unlikely that the respondent knew of the complainant at the time of registration;94 • The complainant first solicited an offer of purchase;95 • The respondent had legitimate interests in the domain name and offered to sell the domain name at a reasonable market price (above out-ofpocket expenses);96 e. Drafting a Federal Claim This section will walk you through drafting an ACPA claim. To succeed on an ACPA claim, a plaintiff must show: (1) plaintiff’s mark is distinctive or famous; (2) defendant’s domain name is “identical or confusingly similar” to plaintiff’s mark; and (3) defendant used, registered, or trafficked in the domain name with a bad faith intent to profit from its sale. 15 U.S.C. § 1125(d)(1)(A).97

94. 95. 96. 97.

See SOUTHBank v. Media Street, Case No. D2001-0294 (WIPO, April 11, 2001). See id. See Avnet, Inc. v. Aviation Network, Inc, Case No. D2000-0046 (WIPO, Mar. 24, 2000). Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752, 763 (N.D. Ill. 2008).

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(i) Trademark Rights As for a UDRP complaint, begin drafting an ACPA claim by identifying the client’s ownership of the specific trademark at issue. This is accomplished by stating that the client owns a specific trademark registration for a distinctive and/or famous mark or that the client possesses common law rights in a distinctive and/or famous mark. For registered trademarks, identify the USPTO Registration Number.98 For common law marks, be sure to detail the date of first use and provide facts demonstrating widespread, continuous use of the mark in commerce, such as significant monies spent on advertising and consumer recognition of the mark and related products. (ii) Registers, Traffics, or Uses Unlike the UDRP, which requires a registrant to have registered and used a domain name containing another’s trademark, liability under the ACPA requires only registration, or trafficking, or use of a domain name. Therefore, to satisfy the first ACPA element, allege that the domain name registrant has participated in one of these three activities. The registration element is met by someone registering a domain name with a registrar such as GoDaddy.com. Use occurs when someone operates a Web site located at the infringing domain name at issue. Finally, someone traffics in an infringing domain name when he transfers the domain name (or receives the domain name) in exchange for consideration, such as through sale, purchase, loan, or license.99 (iii) Identical or Confusingly Similar Under the ACPA, confusing similarity simply means that the plaintiff’s mark and the defendant’s domain name are so similar in sight, sound, and meaning that they could be confused.100 In addition, courts generally hold that a domain name that incorporates a trademark is “confusingly similar” to that mark if they bear such a visual resemblance that Internet users would reasonably assume the names were modified, used, approved, and/or permitted

98. Note that at least one court has held that a registration that issues after the events at issue does not give rise to a presumption that the trademark is valid (e.g., distinctive); see Hamptons Locations, Inc. v. Rubens, No. 01-C V-5477, 2009 U.S. Dist. LEXIS 46856 (E.D.N.Y. 2009). 99. § 1125(D)(1)(e). 100. Venetian Casino Resort, LLC v. VenetianGold.com, 380 F. Supp. 2d 737, 743 (E.D. Va. 2005) (citing J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 25:78 (4th ed. 2004)).


by the plaintiff.101 Importantly, some courts have held that the confusingly similar standard under the ACPA is more limited than the likelihood of confusion standard used to determine traditional trademark infringement.102 Other general guidelines have developed for this element, such as: • Slight differences between domain names and registered trademarks, such as the addition or minor or generic words to a trademark, are irrelevant in assessing confusing similarity.103 • Misspellings of trademarks are sufficiently confusingly similar to invoke ACPA liability.104 • Domain names mimicking the name of a trademark owner’s legitimate Web site are confusingly similar.105

101. Omega S.A. v. Omega Eng’g, Inc., 228 F. Supp. 2d 112, 127 (D.Conn. 2002); see also Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 677 (E.D. Va. 2001). 102. See, e.g., Coca-Cola Co. v. Purdy, 382 F.3d 774, 783 (8th Cir. Minn. 2004) (“The question under the ACPA is not whether the domain names which Purdy registered are likely to be confused with a plaintiff ’s domain name, but whether they are identical or confusingly similar to a plaintiff ’s mark . . . It is the challenged domain name and the plaintiff ’s mark which are to be compared . . . The inquiry under the ACPA is thus narrower than the traditional multifactor likelihood of confusion test for trademark infringement”); see also N. Light Tech., Inc. v. N. Lights Club, 236 F.3d 57, 66 (1st Cir. 2001); Mattel, Inc. v. Internet Dimensions, Inc., 2000 U.S. Dist. LEXIS 9747 (S.D.N.Y. July 13, 2000) (“As the Second Circuit has noted, ‘confusingly similar’ is a different standard from the ‘likelihood of confusion’ standard for trademark infringement adopted by this [Circuit] in Polaroid Corp. v. Polarad Electronics Corp. .—Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498, n.11 (2d Cir. 2000)”); Southern Co. v. Dauben Inc., 90 U.S. P. Q.2d 1651 (5th Cir. 2009) (overturning district court’s finding of irreparable injury based on likelihood of confusion, because lower court had only found that the defendant’s domain name was confusingly similar to plaintiff ’s trademark and had not undertaken a likelihood of confusion analysis); but see Citigroup, Inc. v. Chen Bao Shui, 611 F. Supp. 2d 507 (E.D. Va. 2009) (applying the likelihood of confusion test to determine confusing similarity in an ACPA case). 103. DaimlerChrysler v. Net Inc., 388 F.3d 201, 206 (6th Cir. 2004) (holding that foradodge.com is confusingly similar to plaintiff ’s DODGE mark); Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635, 641 (E.D. Mich. 2001) (holding that marks incorporated into the domain names 4fordparts.com, jaguarcenter.com, and volvoguy.com were confusingly similar to the marks FORD, JAGUAR, and VOLVO); see also Spear, Leeds, & Kellogg v. Rosado, 122 F. Supp. 2d 403, 406 (S.D.N.Y. 2000) (finding that domain names that combined the REDI mark with generic or descriptive terms were confusingly similar to the plaintiff ’s trademark); Mastercard Int’l Inc. v. Trehan, No. 1:08-cv-05793, 2009 U.S. Dist. LEXIS 57717 (N.D. Ill. 2009) (domain name that is Hindi spelling of plaintiff ’s mark is confusingly similar to plaintiff ’s mark). 104. See, e.g., Shields v. Zuccarini, 254 F3d 476 (3d Cir. 2001) (“[T]he intentional registration of domain names that are misspellings of distinctive or famous names, causing an Internet user who makes a slight spelling or typing error to reach an unintended site . . . is a classic example of a specific practice the ACPA was designed to prohibit.”). 105. Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946, 962 (C.D. Cal. 2004) (holding domain names were confusingly similar when they contained slight variations of plaintiff ’s Web site).

103


• The fact that confusion about a Web site’s source or sponsorship could be resolved by visiting the Web site is not relevant to whether the domain name itself is identical or confusingly similar to a plaintiff ’s trademark.106 (iv) Bad Faith Intent to Profit In determining whether a particular domain name was registered or used in bad faith, the use made of it prior to commencement of the dispute is especially important. This is where your collection of evidence of how the domain name is being used (or was used in the past) becomes important. Bad faith can arise either at the time of registration or at any time thereafter. The ACPA lists nine factors to guide judges in determining whether bad faith exists: (1) “the trademark or other intellectual property rights” of the domain name registrant; (2) the extent to which the domain name corresponds to the registrant’s personal name; (3) the registrant’s prior use of the domain name in connection with a bona fide offering of goods or services; (4) the registrant’s bona fide noncommercial or fair use of the relevant trademark in a site accessible under the domain name; (5) the registrant’s intent to divert customers from a corresponding trademark holder’s online location to its own location in a way that could harm the goodwill associated with the trademark; (6) the offer (if any) of the registrant to transfer the name to another for financial gain without having used or having intended to use the name for a bona fide purpose; (7) the provision of false contact information by the registrant on the domain name registry; (8) the registrant’s acquisition of multiple domain names that the registrant knows are identical or confusingly similar to other people’s trademarks; and (9) the extent to which the trademark incorporated in the defendant’s domain name is or is not distinctive.107

106. Coca-Cola Co. v. Purdy, 382 F.3d 774, 783 (8th Cir. 2004); see also PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001) (peta.org found confusingly similar to PETA trademark even though the Web site was a clear parody of the organization, for “an internet user would not realize that they were not on an official PETA web site until after they had used PETA’s Mark to access the web page ‘www.peta.org’”); see also Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 266 (4th Cir. 2001) (vw.net found similar to Volkswagen’s VW mark even though attached Web site advertised ISP); Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497–98 (2d Cir. 2000) (sportys.com held confusingly similar to aviation catalog company’s SPORTY’S mark even though attached Web site advertised a Christmas tree farm). 107. See 15 U.S.C. § 1125(d)(1)(B)(i)(I)–(IX).


Additionally, the following circumstances generally indicate bad faith under the ACPA: • The registrant has offered to sell the domain name to the trademark owner.108 • The domain name is identical or confusingly similar to plaintiff ’s trademark and/or domain name.109 • There has been registration of multiple domain names containing trademarks or misspellings of trademarks.110 • The domain name registrant began to operate a Web site at the disputed domain name only after litigation began.111 • The domain name registrant has suggested the trademark holder “settle” or “make an offer.” 112 • The domain name registrant has changed its contact information with its registrar to a false address after an ACPA claim is filed.113 • The registrant has used the domain name to divert consumers from the trademark owner’s online location to a pornographic site, which could tarnish the image of the trademark holder’s products in the minds of consumers.114 • The registrant has used the domain name with the intent to tarnish or disparage the trademark owner’s mark.115 • Retaining control of employer’s domain names after leaving employment may constitute bad faith.116

108. 15 U.S.C. § 1125(d)(1)(B)(VI); Ford Motor Co. v. Catalanotte, 342 F.3d 543 (6th Cir. 2003) (“registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA”). 109. 15 U.S.C. § 1125(d)(1)(B)(i)(VIII). 110. Id.; see also Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110, 111 (D. Mass. 2002) (finding registration of 16 domain names composed of variant misspellings of the name tdwaterhouse.com constituted bad faith); but see Healix Infusion Therapy, Inc. v. Murphy, Civ. Action No. H-08-0337, 2008 U.S. Dist. LEXIS 67723 (S.D. Tex. 2008) (merely registering domain names containing another’s trademarks without more is not enough to demonstrate a pattern indicating bad faith). 111. E & J Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (5th Cir. 2002) (noting that when a registrant first uses a Web site after litigation begins, it suggests the registrant is acting in bad faith). 112. PETA v. Doughney, 263 F.3d 359, 368 (4th Cir. 2001) (defendant’s suggestion that mark owner “make him a [settlement] offer” satisfied bad faith/intent to profit element). 113. Mattel, Inc. v. Internet Dimensions, Inc., 2000 U.S. Dist. LEXIS 9747, 16–17 (S.D.N.Y. July 13, 2000). 114. Id. 115. Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110, 113–14 (D. Mass. 2002). 116. See, e.g., Flexible Bens. Council v. Feltman, No. 1:08cv371, 2009 U.S. Dist. LEXIS 40686 (E.D. Va. 2009) and St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson, No. 08-11848, 2009 U.S. App. LEXIS 15268 (11th Cir. 2009).

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• Using domain anme for a “pay per click” site may constitute bad faith.117 Alternatively, an ACPA claim may be defeated upon a showing that the registrant is engaging in legitimate noncommercial or fair use of the domain name, such as situations involving gripe sites or parodies.118 Such a showing negates a finding of bad faith.

Practice Tip Cybersquatting 8 “UDRP Complaints: Dot Your I’s and Cross Your T’s” Cybersquatters frequently change the information listed in their WHOIS records or sell their domain names to others. Just before submitting an ICANN UDRP complaint to the dispute resolution agency and serving it on the registrant and registrar, check the WHOIS record one last time to confirm that the complaint correctly identifies the domain name’s current registrant. In addition, be certain to use the name of the registrant exactly as it appears in the record, including obvious typos or abbreviations (e.g., John Wm. Smith). A complaint may be returned as deficient if it does not list the registrant correctly—that is, exactly as identified in the WHOIS record. If the complaint is returned, it must be amended and refiled within five calendar days, and it must be re-served on the registrant and registrar. Unless the

117. Texas Int’l Property Assoc. v. Hoerbiger Holding AG, Civ. Action No. 3:07-CV-2099, 2009 U.S. Dist. LEXIS 40409 (N.D. Tex. 2009). 118. See, e.g., Lucas Nursery & Landscaping, Inc. v. Grosse, 359 F.3d 806, 2004 WL 403213 (6th Cir. 2004) (rejecting plaintiff ’s ACPA claim against defendant who registered plaintiff company’s name and created a Web site to complain about the allegedly poor landscaping services plaintiff provided to her, stating that the “paradigmatic harm that the ACPA was enacted to eradicate—the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark—is simply not present . . . ,” and further stating that to hold such a cybergriper liable “would stretch the ACPA beyond the letter of the law and Congress’s intention to declare anything to the contrary”); Rohr-Gurnee Motors, Inc. v. Patterson, 2004 U.S. Dist. LEXIS 2068, 2004 WL 422525 (N.D.Ill. Feb. 9, 2004) (finding defendant who registered two domain names containing plaintiff car dealer’s trademarks to establish Web sites to express his dissatisfaction with a car he bought from plaintiff lacked a bad faith intent to profit); Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108 (D.Minn. 2000) (finding defendant lacked bad faith when domain name hosted Web site to house complaints and criticisms about plaintiff, finding that defendant “does not fit within ‘classic’ cybersquatter profile, i.e. a person who registers multiple domain names and attempts to sell them for the highest price obtainable”); see also Lucent Tech., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535–36 (E.D. Va. 2000). (“A successful showing that lucentsucks.com is effective parody and/or a site for critical commentary would seriously undermine the requisite elements for [the ACPA].”)


exhibits have changed, it is generally not necessary to resend them. Also, it is generally only necessary to send an electronic copy of the amended complaint (assuming the e-mail address for the registrant has proved valid). Even if the complaint correctly names the registrant listed in the WHOIS record at the time of filing, it is still possible that the complaint will be returned for listing the incorrect registrant. This is because the domain name is not locked against transfer or changes to the WHOIS record until the complaint is officially initiated by the dispute resolution provider. Initiation may not occur until several days after submission and service, which allows the registrant time to transfer the domain name or make changes to the WHOIS record. Although you may wish to serve the complaint on the registrant by mail rather than e-mail or fax, to slow the process of notification (see UDRP Rules, ¶ 2(b)), the provider will generally forward the complaint to the registrant and registrar by e-mail prior to initiation of the proceeding. Unfortunately, there is little that can be done to avoid this quirk in the system other than amending and refiling the complaint. Also, take a moment to ensure that you are filing the complaint in the correct language. The complaint and all proceedings must be in the language of the registration agreement between the registrant and the registrar, unless the agreement specifies another language. (See UDRP Rules, ¶ 11.) Thus for example, if the registrant has used a Chinese registrar, the complaint will likely need to be filed in Chinese, your client may be asked to provide a translation of attached exhibits, and any decision by the panel will be issued in Chinese.

f. UDRP Complaints: To Settle or Not to Settle After an ICANN UDRP complaint has been filed, the registrant may offer to turn over the domain name if the complaint is withdrawn. Several factors should be considered when deciding whether to accept such an offer, including: • Whether you think you have a strong case. If the likelihood of prevailing is high, it may be easier to simply allow the UDRP process to run its course. If there is some doubt regarding the outcome, the certainty of a settlement may be preferable. • Whether you believe the registrant is likely to file a response to the complaint. If so, your client may incur additional costs if you choose to file an additional statement in reply. In addition, you may be less likely to be successful if the registrant raises valid defenses.

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• Whether time is of the essence for your client. If your client is anxious to obtain control of the domain name for its own use, or if the content on the site located at the domain name is particularly problematic, settlement will likely allow your client to obtain the domain name more quickly than letting the UDRP process to proceed. • Whether you sent the registrant a demand letter before the complaint was filed. If so, the registrant arguably had a chance to transfer the domain name and chose not to do so, causing your client to incur the expense of drafting and filing the complaint. This may make your client less inclined to settle. • Whether the registrant is willing to reimburse your client for costs incurred in filing the complaint (including attorney’s fees and the filing fee). • Whether you believe the registrant is trustworthy and can be depended upon to transfer the domain name as promised. Filing a UDRP claim locks the domain name to prevent transfer. In order to remove the lock on the domain name to permit transfer, the complaint must be withdrawn. If the registrant does not transfer the domain name, it will be necessary to refile the complaint (with accompanying filing fee), with your client incurring additional costs. Also, removing the lock allows the registrant an opportunity to transfer the domain name to a third party. • Whether the registrant is subject to the jurisdiction of a forum that is convenient to your client in the event the registrant fails to transfer the domain name as promised. Thus, a registrant located in your client’s home country may be a better candidate for a settlement than one based elsewhere, such as in China. • Whether the stage of the proceeding favors settlement. Before agreeing to a settlement, it is important to determine whether the complaint may be withdrawn without prejudice at the current stage (i.e., before or after a response has been filed, or before or after a panel has been appointed), and whether any refund of filing fees is available. Rules may vary depending on the dispute resolution provider used. If a panel has not yet been appointed, it may be possible to obtain a consented one-time stay of the proceeding to allow for settlement discussions.

4. Strategies for Resolving the Scenarios The client’s mark is RED HOTS for cinnamon candies. Routine Internet surveillance or a domain name watch service reveals that a third party has registered red-hots.com. The registrant is using the domain name for a commercial Web site where it sells various types of chili peppers.


This scenario demonstrates the importance of a thorough investigation of the registrant of a disputed domain name’s identity and manner of use of the domain name. The disputed domain name, red-hots.com, incorporates the client’s RED HOTS trademark in its entirety. The addition of a dash between the words does not change this fact.119 Your investigation reveals that the registrant is named Organic Candies, Inc. The registrant’s identity indicates that registrant may compete with your client, possibly even selling cinnamon candies at the disputed domain name in direct competition with your client. However, upon investigating the Web site content, you learn that the registrant is using the term red hots to describe the chili peppers it offers for sale on its Web site. Thus, the registrant’s use of RED HOTS in the domain name may constitute fair use. Fair use of a trademark occurs when a descriptive mark is used in good faith for its primary rather than secondary (trademark) meaning. The Lanham Act explicitly recognizes this “descriptive” fair use defense as it prevents trademark registrants from appropriating descriptive terms for their exclusive use.120 The classic case arises when a defendant uses a plaintiff’s mark in a descriptive or non-trademark way to describe the defendant’s products or services, which does not invoke the secondary meaning of the mark. For example, one defendant’s use of “fish fry” to describe a batter coating for fish was fair use and did not infringe upon the plaintiff’s mark FISH-FRI.”121 CD Solutions, Inc. v. Tooker122 illustrates descriptive fair use in the domain name context. The plaintiff was a manufacturer of compact discs (CDs). Plaintiff brought a declaratory judgment that its domain name cds.com did not violate defendant trademark owner’s rights in its federally registered trademark CDS (for Commercial Documentation Services) used for desktop publishing and printing services. Ultimately, the court granted plaintiff’s summary judgment motion, holding that defendant could not preclude plaintiff’s use of cds.com to refer to its compact disc products and services. The court explained that the term CDs was a generic word to describe compact discs, and as such, defendant would not be allowed to expand its rights in its CDS mark to include plaintiff’s generic and descriptive use of that term in cds.com.

119. See, e.g., Guinness UDV North America, Inc. v. UKJENT, Case No. D2001-0684 (WIPO, Aug. 9, 2001) (s-m-i-r-n-o-f-f.com found confusingly similar to SMIRNOFF mark despite insertion of dashes between each letter of the mark because dashes do not alter the visual or phonetic identity of the mark). 120. See 15 U.S.C.A. § 1115(b)(4) (providing that “the use . . . of a term . . . which is descriptive of and used fairly and in good faith only to describe the goods or services of such party” is a defense to trademark infringement). 121. Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983). 122. 15 F. Supp. 2d 986 (D. Or. 1998).

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Here, the term red hots describes the registrant’s products (chili peppers) because they are both red in color and spicy in flavor. The registrant is not using RED HOTS in a trademark sense to indicate the source of its chili peppers. Rather, registrant is using RED HOTS in the domain name only to fairly describe its products. Because registrant is engaged in classic fair use of the RED HOTS trademark, its use is protected, and it would not be prudent to bring an ACPA action or UDRP complaint against the registrant. If the client is intent on acquiring the domain name, this is the type of case that is best approached by negotiating with the registrant to purchase the name. Your client owns mega multipurpose stores nationwide operated under the mark WALLY’S WORLD. A third party has registered wallysworld-sux.com. The Web site associated with the domain name does not appear to contain any negative content about the client, but it does appear to offer links to various commercial Web sites—including some for companies that compete with the client, such as Target. Upon first glance, this scenario appears to involve a gripe Web site where registrant’s use of the WALLY’S WORLD trademark in the domain name may be protected as free speech. However, you must examine the entire context of registrant’s use before making that determination. When gripe sites use a company’s trademark solely to criticize that company, and not to divert traffic or extort the trademark owner into buying the domain name at a premium, the domain name registrant will usually defeat infringement claims because such use is considered protected free speech. For example, in one of the most recognized cases addressing gripe sites, Bosley Medical Institute v. Kremer, the trademark owner’s trademark infringement and dilution claims (under 15 U.S.C. §§ 114, 1125(a0 and 1125(c)) failed against the registrant of BosleyMedical.com because registrant’s Web site only contained criticisms of plaintiff’s hair replacement services, and registrant did not derive any revenue from the Web site. The court stated that “the noncommercial use of a trademark as the domain name of a Web site—the subject of which is consumer commentary about the product and services represented by the mark—does not constitute infringement.”123 However, the Bosley court rejected the defendant’s “non-commercial use” defense as it applied to plaintiff’s ACPA claim (§ 1125(d)). The court reversed the district court’s grant of summary judgment to the defendant, holding that the ACPA does not have a commercial use requirement. The court remanded to allow discovery on whether the defendant had a “bad faith intent to profit” from using the domain name (e.g., by extorting money from plaintiff).124 Thus, even if the site at issue appears to be a standard gripe site, you still might be able to prevail if the defendant has offered to ransom the domain name to you for an exorbitant price.

123. Id. at 674. 124. Id. at 680–81; see also Hamptons Location, 2009 U.S. Dist. LEXIS 46856.


Conversely, a trademark owner typically will prevail against registrants who operate purported gripe sites when the registrant is engaged in commercial use of a company’s trademark in the Web site content. Commercial use of a mark is typically found when the mark is used in connection with the sale or advertising of goods and services.125 For example, in Sunlight Saunas, Inc. v. Sundance Sauna, Inc.,126 both parties sold saunas via the Internet. Defendants were Plaintiff’s ex-employees who competed directly with Plaintiff. Defendants registered the domain name sunlightsaunas-exposed.com to host a gripe Web site listing five alleged “Sunlight Saunas Lies” that defendants claimed the plaintiff had made to consumers. Defendants also included disparaging comments about plaintiff’s products on the site and invited consumers to direct “comments or questions” about the site to the e-mail address [email protected]. Further, at one point the site included a link to a third party’s Web site that advertised saunas in competition with the plaintiff. Defendants argued that their use of plaintiff’s trademark in the domain name was protected by the First Amendment as their Web site contained noncommercial criticism of plaintiff. The court disagreed, finding both that defendants’ Web site content and the domain name were commercial speech. Although the “speakers” on the site were anonymous, they competed directly with the plaintiff. As such, defendants disparaged plaintiff’s products with the intent to promote their own products and to divert potential customers from plaintiff. Further, the site temporarily included links to plaintiff’s competitors. Accordingly, the court found that, “[D]efendants were not motivated solely (or at all) by disinterested, altruistic concern for sauna purchasers.”127 Here, the registrant is not using the disputed domain name to express complaints about your client. Rather, registrant is engaged in commercial use of the client’s WALLY’S WORLD mark by using it to operate a Web site running click-through links and to redirect Internet users to sponsored Web sites. This commercial use negates any free speech defense.128 Additionally, such use does not qualify as a bona fide offering of goods and services under the UDRP, with it being presumed that the registrant received

125. 126. 127. 128.

See Bosely Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676–77 (9th Cir. 2005). Sunlight Saunas, Inc. v. Sundance Sauna, Inc., F. Supp. 2d 1032 (D. Kan. April 17, 2006). Id. at *19. See, e.g., Sunlight Saunas, 2006 WL 1005172; 427 F. Supp. 2d 1032; Dell Inc. v. Innervision Web Solutions, Case No. 445601 (NAF, May 23, 2005) (ordering transfer of dellcomputerssuck.com despite respondent’s claim that he had a legitimate interest in the domain name in using it to express commentary and criticism about complainant where respondent used domain name to redirect Internet users to respondent’s Web site at innervisionpc.com where he competed with complainant); HER, Inc. v. Re/Max First Choice, LLC, No. 2: 06-CV-492, 2008 U.S. Dist. LEXIS 40164 (S.D. Oh. 2008).

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compensation for each misdirected user.129 Accordingly, in this scenario you should recommend that the client file a UDRP complaint or an ACPA action. Your client operates fast food burger restaurants under the mark FRED’S. The client is planning to open a store in New York City and learns that someone has already registered the domain name freds-nyc.com. How would you proceed in efforts to obtain the domain name for your client? This scenario provides an example of when it makes sense to negotiate directly with the domain name registrant for purchase of the domain name instead of proceeding with a UDRP complaint or ACPA action. Here, the client’s mark consists of the possessive form of a common personal name, Fred. There is no indication that this common term has acquired such significant distinctiveness that consumers would automatically associate “Fred’s” with the client’s fast food restaurants. Moreover, there is no evidence that the mark has become famous, such as the common name McDonalds became for MCDONALD’S burger restaurants. Therefore, the mark’s weakness would not likely allow the client to acquire the domain name using the UDRP or ACPA. Additionally, the domain name contains the client’s weak mark plus the initials for the name of New York City, to which the client has no exclusive rights. Therefore, you should contact the registrant directly to attempt to purchase the name. It is often beneficial for outside counsel to begin these negotiations without identifying the client. Although the client may end up paying thousands of dollars for a highly desired domain name, it will likely be less than what the registrant might have demanded if it knew the purchaser’s identity.

B. Trademark Use in Metatags and Keyword Advertising In former times a merchant would simply “hang a shingle” outside his shop to attract customers. The sign advertised the merchant’s name and usually the nature of his business. The author recently saw one of these old-fashioned

129. See e.g., Calcar, Inc. v. Future Media Architects, Inc., Case No. FA 70709001080147 (NAF, Nov. 6, 2007); NRA v. Future Media Architects, Inc., Case No. FA 0608000781430 (NAF, Oct. 13, 2006); The Wedding Channel.com, Inc. v. Vasiliev, Case No. FA 156716 (NAF, June 12, 2003); TM Acquisition Corp. v. Sign Guards, Case No. FA 132439 (NAF, Dec. 31, 2002) (finding the respondent’s diversionary use of the complainant’s marks to send Internet users to a Web site that displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

Trademark Use in Metatags and Keyword Advertising

signs outside a very small London shop: “Geo. F. Trumper. Gentlemen’s Perfumer. Barber” Without this large sign outside, no one would know the business was there. A sign is still, in essence, the main way an Internet business attracts traffic. However, on the Internet the signs are different. Instead of foot traffic, the signs need to attract the attention of search engines. Web site “signs’ are known as keywords (also known as metatags). These words that are carefully chosen to describe the business’s goods and services are attached to the site in the source code. When a search engine spiders across the Internet, it spots the metatags. The gentlemen’s perfumer, Geo F. Trumper, has a Web site. It uses very traditional “signs” as its metatags. Here is the source code for the Trumper. com site: <META name=“keywords” content=“Trumper, Trumpers, Geo F Trumper, GFT, barber, barbers, shaving, grooming, fragrance, London, Curzon Street, Jermyn Street, haircut, manicure, pedicure, shaving school, shaving advice, chiropody, shaving cream, soap, aftershave, skin food, moisturiser, bath soap, shower gel, razor, shaving brushes, mirror, hair brush, wet shaving, historic, skin”>

Notice that Trumpers only uses its own trademarks as metatags. The competition, however, has not been so discreet. A search for Trumpers will return a number of other sites offering Trumper products alongside of competitor products. Two such sites are: classic-grooming.com and the englishshavingcompany.com. Here is the source code for one of the sites. Notice the site’s use of the trademarks of several other companies: <META NAME=“Keywords” CONTENT=“edwinjagger, razors, shaving brush, shaving brushes, shaving stands, shaving sets, shaving cream, shaving soap, pure badger hair, cone stands, shaving accessories, shaving products, shaving supplies, edwinjagger diffusion, best badger hair, super badger hair, silver tip badger hair, ladies razors, traditional safety razors, cutthroat razors, straight razors, bulbous range, chatsworth range, imitation ebony, faux ebony, imitation ivory, faux ivory, georgian range, loxley range, diffusion shaving range, d r harris, geo f trumper, molton brown, soap bowls, fragrances, skin care, skin food, stops, sharpening pastes, sheffield, england, uk”>

Is this unfair? Is it trademark infringement? Courts are divided on whether and under what circumstances such activities constitute trademark infringement or unfair competition. Therefore, it is important to know the background and the case law in this area before deciding whether it is worthwhile to proceed against someone using your client’s marks in these ways.

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1. More about the Technical Use of Metatags A metatag is “[a]n HTML130 tag that contains information about a web page”131 that can be read by search engines, such as a description of the site (a “description” metatag) or a list of keywords related to the site (a “keyword” metatag). The text is not visible to visitors viewing the page. Search engines may evaluate a Web page’s metatags (along with other aspects of the site) to decide whether the Web page contains information relevant to a particular term (such as your client’s trademark). Some webmasters attempt to raise their Web page’s prominence or have their page listed in additional search results by including terms that may or may not be relevant to the actual content of the site.132 For example, as seen above, a competitor may include the names of competing products in its metatags. In this way, the competitor may succeed in diverting customers. In extreme cases, webmasters may list the product names repeatedly, or even copy another Web site’s metatags.

Practice Tips Metatags 1 Working with Search Engines to Address Keyword Issues As noted above, search engines with keyword advertising programs have varying policies regarding use of third-party trademarks by their advertisers. For instance, Yahoo! and Microsoft Bing will cancel keyword purchases of trademarks at the trademark owner’s request if Yahoo! believes such use is not permitted under current law (see note 9). Google will not cancel keyword purchases, but will remove the trademark from the text of the advertisement. Before taking more drastic steps, it may be worthwhile to attempt to address

130. Hypertext Markup Language: code used to create a Web page. 131. NetLingo, http://www.netlingo.com/word/meta-tag.php; see also Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1045 (9th Cir. 1999); Google Webmasters/ Site Owners Help—Meta Tags, http://www.google.com/support/webmasters/bin/answer. py?hl=en&answer=79812. 132. As a result of widespread efforts by webmasters to manipulate search engine results through metatag stuffing or keyword stuffing, (Google Webmasters/Site Owners Help—Keyword Stuffing, http://www.google.com/support/webmasters/bin/ answer.py?answer=66358.) some search engines now give metatags less emphasis than previously when evaluating the relevance of a Web page to a particular search and rely on additional factors, such as how many credible Web sites link to the site. See, e.g., Google Corporate Information— Technology Overview, http://www.google.com/corporate/tech.html; see also Std. Process, Inc. v. Banks, 554 F. Supp. 2d 866, 871 (E.D. Wis. 2008) (“[M]odern search engines make little if any use of metatags.”). Some may ignore the keyword metatag altogether. This shift may have reduced the importance of metatags, but has not altogether eliminated the issue—or lawsuits about the issue.

Trademark Use in Metatags and Keyword Advertising the issue with the relevant search engine. Below are links to the appropriate Web page at Google, Yahoo!, and Live Search for filing a complaint about trademark use: Google–http://www.google.com/tm_complaint_adwords/complaint. html Yahoo!—http://searchmarketing.yahoo.com/legal/trademarks.php Bing—https://support.msn.com/eform.aspx?productKey=trademark&ct= eformts&scrx=1133

2. How to Check a Web Page’s Metatags A Web page’s metatags may be checked by viewing the page’s source code. This can generally be done by right-clicking on the Web page and then selecting View Source or View Page Source; alternatively, on the browser menu select View or Page, then View Source or View Page Source. The metatags appear near the top of the page and begin with the code <meta name=. For example, the Description and Keywords metatags for the Victoria’s Secret Web site are: <meta name=“Description” content=“The world’s most glamorous lingerie is only the beginning. Victoria’s Secret is THE destination for chic women’s clothing, sultry swimwear, must-have shoes and accessories, and beauty products, in addition to women’s lingerie, intimate apparel and sleepwear. “ /> <meta name=“Keywords” content=“lingerie, women’s clothing, lingerie apparel, women’s apparel, women’s lingerie, intimate apparel, women’s accessories” />

When evaluating a Web site for possible infringement, always check and print the page’s source code (including the date and time printed) for future reference and possible use as evidence. Reviewing the page’s source code is also a good way to check for hidden text that may contain your client’s trademarks (such as text that is the same color as the page’s background or is in font size 0).134

133. Microsoft and Yahoo! have recently entered into an agreement to form a search engine alliance. If the deal is finalized, it could affect the way they treat trademarks. However, currently, their policies are similar. Compare Yahoo! policy (above, n. 132) with Microsoft Bing’s policy at http://advertising.microsoft.com/Home/Article.aspx?pageid=708&Adv_Articleid=3216. 134. See Google Webmasters/Site Owners Help—Hidden Text and Links, http://www.google. com/support/webmasters/bin/answer.py?answer=66353&ctx=sibling.

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3. What Are Keywords and Sponsored or Keyed Ads? Some search engines offer advertising programs under which a business can create an ad or sponsored result that will appear on a search results page when someone searches for a term or keyword the business has purchased. For example, a gardening supplies business might purchase garden or seeds as a keyword. This is known as a keyed or sponsored ad. Some search engines (most notably Google) will allow businesses to purchase their competitors’ trademarks as keywords; for example, PepsiCo might purchase Coke or Coca-Cola.135 These ads

135. Compare Google’s policy: Please note [in the U.S.] we will investigate ad text only. We will not disable keywords in response to a trademark complaint. As a provider of space for advertisements, please note that Google is not in a position to arbitrate trademark disputes between the advertisers and trademark owners. As stated in our Terms and Conditions, the advertisers themselves are responsible for the keywords and ad content that they choose to use. Accordingly, we encourage trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar advertisements on other sites. As a courtesy to trademark owners, however, we are willing to perform a limited investigation of reasonable complaints about use of trademarks in ads. In the US, our policy permits use of the trademark in the ad text in the following circumstances: • Ads which use the term in a descriptive or generic way, and not in reference to the trademark owner or the goods or services corresponding to the trademark term. • Ads which use the trademark in a nominative manner to refer to the trademark or its owner, specifically: ■ Resale of the trademarked goods or services: The advertiser’s site must sell (or clearly facilitate the sale of) the goods or services corresponding to a trademark term. The landing page of the ad must clearly demonstrate that a user is able to purchase the goods or services corresponding to a trademark from the advertiser. ■ Sale of components, replacement parts or compatible products corresponding to a trademark: The advertiser’s site must sell (or clearly facilitate the sale of) the components, replacement parts or compatible products relating to the goods or services of the trademark. The advertiser’s landing page must clearly demonstrate that a user is able to purchase the components, parts or compatible products corresponding to the trademark term from the advertiser. Informational sites: The primary purpose of the advertiser’s site must be to provide non-competitive and informative details about the goods or services corresponding to the trademark term. Additionally, the advertiser may not sell or facilitate the sale of the goods or services of a competitor of the trademark owner. http://adwords.google.com/support/aw/bin/static.py?page=guidelines.cs&topic=16 862&subtopic=9277&answer=47165; http://adwords.google.com/support/aw/bin/ answer.py?answer=145626


or results may appear above or beside the results generated as a result of the engine’s neutral review of relevant sites.136

4. How to Check For Sponsored Ads Checking for sponsored ads is a simple (but tedious) matter of visiting various search engines and performing a search on your client’s trademarks. If a competitor’s ad appears as a Sponsored Result (or similar designation) or as a banner ad, the competitor may have purchased your client’s mark from the search engine as a keyword. Note, however, that the way you search may affect the validity of the results. For example, if your client’s mark is SPLENDIFEROUS RING and you search for splendiferous ring, you may see sponsored results that are simply keyed to ring. Depending on the search engine, you may be able to limit results to those containing (or keyed to) the full search term only. Also, some search engines highlight the term searched for in the results. Thus, if the organic search results are showing only ring highlighted, not splendiferous ring, the results may not be relevant. You may wish to drop any generic components of the mark from your search, but depending on the uniqueness of your client’s mark, you may get many unrelated results (i.e., use of your client’s mark in unrelated fields).

5. The Law Courts have differed greatly on whether use of metatags and purchase or sale of keywords can be actionable under trademark law. In particular, there is a split among the circuit courts regarding the threshold matter of whether these activities even constitute trademark “use” subject to the Lanham Act. Courts that have found use have often analyzed the question of likelihood of confusion under an initial interest confusion theory. Fair use, and particularly nominative fair use, is a commonly employed defense.

with Yahoo!’s : Yahoo! Search Marketing . . . requires advertisers to agree that their search terms, their listing titles and descriptions, and the content of their Web sites do not violate the trademark rights of others. In cases in which an advertiser has bid on a term that may be the trademark of another, Yahoo! Search Marketing allows the bids only if the advertiser presents content on its Web site that (a) refers to the trademark or its owner or related product in a permissible nominative manner without creating a likelihood of consumer confusion (for example, sale of a product bearing the trademark, or commentary, criticism or other permissible information about the trademark owner or its product) or (b) uses the term in a generic or merely descriptive manner. In addition, the advertiser’s listing should disclose the nature of the relevant content. http://searchmarketing.yahoo.com/legal/trademarks.php. 136. See, e.g., Gov’t. Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700, 701–02 (E.D. Va. 2004) (explaining search engine advertising).

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a. Is this “Use in Commerce?” Until recently, the Second Circuit has been the primary proponent of the no use school of thought. The court waded into the fray with its decision in 1-800 Contacts, Inc. v. WhenU.com, Inc.137 WhenU.com offers contextually based pop-up advertising; it maintains a proprietary database of domain names, keywords, and other information that is divided into categories based on consumer interests (such as gardening, financial services, etc.). Consumers download WhenU.com’s program and install it voluntarily, often packaged with free software such as screensavers. The program monitors a consumer’s Web browser activity, and when the consumer visits a site or searches for a term contained in WhenU.com’s directory, an ad keyed to the category containing that term or domain name appears in a separate window (on top of, beneath, or behind the Web browser). The ad is labeled as a WhenU.com advertisement and contains a disclaimer indicating the ad’s offer is not affiliated with the Web page the user may be viewing. WhenU. com does not disclose the contents of its directory to its advertisers or allow them to tie their advertisements to particular Web sites or keywords. The Second Circuit first said that WhenU.com had not put the 1-800 Contacts mark into its directory; instead, the defendant had included the plaintiff’s domain name (which was identical to the plaintiff’s mark except for the addition of www. and .com.). The court said the addition of the www. and .com transformed the mark into a public key used to reach the plaintiff’s Web site, much like a street address.138 Next, the court stated that under the Lanham Act, to constitute infringement or unfair competition, the defendant must “use in commerce” a mark “in connection with . . . goods or services.”139 The court noted that § 1127 of the Lanham Act defines a mark as being in “use in commerce”: (1) on goods when (a) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and (b) the goods are sold or transported in commerce, and (2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.140

137. 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005). 138. The court said, “This observation, however, is not intended to suggest that inclusion of a trademark in the directory would necessarily be an infringing ‘use.’ We express no view on this distinct issue.” Id. at 409. 139. See 15 U.S.C. §§ 1114 and 1125(a)(1). 140. 15. U.S.C. § 1127.


The Second Circuit held: A company’s internal utilization of a trademark in a way that does not communicate it to the public is analogous to an individual’s private thoughts about a trademark. Such conduct simply does not violate the Lanham Act, which is concerned with the use of trademarks in connection with the sale of goods or services in a manner likely to lead to consumer confusion as to the source of such goods or services.141

The preliminary injunction against WhenU.com was reversed. Several district courts in the Second Circuit interpreted this holding to mean that use of trademarks in metatags or as search engine keywords, where the mark is not shown to the consumer (i.e., not included in the text of the search engine sponsored ad or search result) does not constitute use under the Lanham Act.142 One such case was Rescuecom Corp. v. Google, Inc.,143 in which the plaintiff sued Google for trademark infringement based on Google’s sale of Rescuecom’s trademark as a keyword to trigger advertising. Based on

141. 1-800 Contacts, 414 F.3d at 409. 142. See, e.g., Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402 (S.D.N.Y. 2006); motion for reconsideration denied, 431 F. Supp. 2d 425 (S.D.N.Y. 2006) (motion to dismiss granted; holding that “use of a trademark in connection with the search engines is not an independent basis for a trademark infringement claim”); FragranceNet.com, Inc. v. FragranceX.com, Inc., 493 F. Supp. 2d 545 (E.D.N.Y. 2007) (denying plaintiff leave to amend complaint to add Lanham Act claim; use of plaintiff ’s mark in metatags and as a keyword is not use under the Lanham Act because it is not communicated to the public); Site Pro-1, Inc. v. Better Metal, LLC, 506 F. Supp. 2d 123 (E.D.N.Y. 2007) (granting defendant’s motion to dismiss because its purchase of plaintiff ’s marks as keywords and inclusion of the marks in metatags was not use; defendant did not place plaintiff ’s marks on any goods or advertisements or otherwise use them to indicate source); S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188 (E.D.N.Y. 2007) (reseller did not use plaintiff ’s marks in the trademark sense when including them in metatags and buying them as keywords to promote a Web site selling genuine plaintiff goods, even when marks appeared in text of sponsored ads; granting reseller summary judgment)—compare to Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006) (affirming verdict of trademark infringement under similar facts); but see Hamzik v. Zale Corp./Delaware, Case No. 3:06-cv-1300, 2007 U.S. Dist. LEXIS 28981 (N.D.N.Y. 2007) (motion to dismiss denied when defendant purchased plaintiff ’s mark as a keyword because the trademark appeared in the text of defendant’s ad as such use might be sufficient to support a Lanham Act claim); Brannock Device Co., Inc. v. ABC Industries, Inc., Case No. 5:04-CV-1300, 2006 U.S. Dist. LEXIS 64661 (N.D.N.Y. 2006) (granting default judgment; use of plaintiff ’s mark as a metatag constitutes trademark infringement). See also Bihari v. Gross, 119 F. Supp. 2d 309 (S.D.N.Y. 2000) (holding that use of a trademark as a metatag constituted use in commerce, but denying preliminary injunction where the defendant’s gripe site was unlikely to cause confusion regarding sponsorship, and the metatags truthfully described the content of the site); the Second Circuit in 1-800 Contacts distinguished Bihari, but did not adopt (or reject) its findings; see also Romeo & Juliette Laser Hair Removal Inc. v. Assara I LLC, No. 08 Civ. 0442 (S.D.N.Y. 2009) (distinguishing 1-800 Contacts). 143. Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393 (N.D.N.Y. 2006).

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its reading of 1-800 Contacts, the district court granted Google’s motion to dismiss, holding that “in the absence of any allegations that defendant placed plaintiff’s trademark on any goods, displays, containers or advertisements, or used plaintiff’s trademarks in any way that indicates source or origin, plaintiff can prove no facts in support of its claim that would demonstrate trademark use.” On appeal, however, the Second Circuit said the district court had carried the 1-800 Contacts holding too far and found that Google’s sale of plaintiff’s trademark as a keyword and suggestion of the mark as a keyword to potential purchasers144 was a use in commerce.145 The court rejected Google’s argument that inclusion of a trademark in an “internal computer directory” can never be trademark use sufficient to support a trademark claim. Nor, the Second Circuit said, does it automatically insulate Google from liability. The court distinguished its holding in 1-800 Contacts by noting that WhenU.com did not use plaintiff’s trademark, but rather its domain name. Further, advertisers were never shown the domain name or allowed to bid on it; instead, it was included in a database that advertisers never saw.146 By contrast, Google sold and actively marketed plaintiff’s trademarks in connection with Google’s sale of advertising, which the court held was a use in commerce. The Second Circuit’s decision in 1-800 Contacts followed the reasoning of district court holdings in the Fourth and Sixth Circuits that WhenU.com’s activities are not use in commerce, based on those courts’ reading of § 1127.147 But in a lengthy appendix to its Rescuecom decision—entirely dicta—the Second Circuit backed away from this reliance on § 1127 (without overturning 1-800 Contacts).148 After an extended review of the legislative history of

144. Google offers a “Keyword Tool” that suggests keywords based on the advertiser’s website and Google’s statistics on search patterns; see http://www.google.com/support/sktool/bin/ answer.py?hl=en&answer=108044. Allegedly Google’s Keyword Tool recommended plaintiff ’s mark to defendant as a good potential keyword. 145. Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009). The court expressed no opinion on whether Rescuecom would be able to prove a likelihood of confusion. The court specifically cited S&L Vitamins and Merck (supra, n. 139) as cases that misapplied 1-800 Contacts. 146. The court also rejected Google’s argument that keyed advertisements amount to permissible “product placement,” saying, “From the fact that proper, non-deceptive product placement does not result in liability under the Lanham Act, it does not follow that the label ‘product placement’ is a magic shield against liability, so that even a deceptive plan of product placement designed to confuse consumers would similarly escape liability. It is not by reason of absence of a use of a mark in commerce that benign product placement escapes liability; it escapes liability because it is a benign practice which does not cause a likelihood of consumer confusion.” Rescuecom, 562 F. 3d at 130. 147. See U-Haul Int’l, Inc. v. WhenU.Com, Inc., 279 F. Supp. 2d 723 (E.D. Va. 2003) (granting summary judgment to defendant); Wells Fargo & Co., v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (denying preliminary injunction). 148. Rescuecom, 562 F.3d at 131-142. The court suggested that Congress clarify this issue. It was also noted that the 1-800 Contacts panel expressed their agreement with the appendix.


the provision, the appendix concluded that Congress never intended for the “use in commerce” definition in § 1127 to apply to the Lanham Act’s infringement provisions (§§ 1114 and 1125); instead, the term was meant to define use sufficient to register a mark under the Act.149 Nonetheless, circumscribed by its 1-800 Contacts opinion, the court said that “Congress does not enact intentions. It enacts statutes.” The first sentence of the definition, which was added to the Act later, reads, “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade. . . .” The court said that clearly that could not apply to infringement, because no infringing use is “bona fide.” Therefore, the court resolved that only the second sentence (quoted above) applies in the infringement context. Thus, the Second Circuit still requires “use in commerce in connection with goods or services” in the manner set out in § 1127 to find infringement, but has ruled that the sale of trademarks as advertising keywords (at least as Google does it) qualifies as such use.150 Unlike the Second Circuit, the Ninth Circuit has suffered no angst when finding that sale of trademarks as keywords constituted use. In Netscape, the court noted there was “no dispute” by the parties that the defendant search engine’s inclusion of Playboy’s trademarks in a directory of search terms to trigger adult-oriented banner advertisements on search results pages constituted use in commerce.151 The court said federal jurisdiction in trademark cases rests in the Commerce Clause and that the definition of “use in commerce” in § 1127 applies only to the type of use needed to obtain a trademark registration.152 More recently, a court in the Northern District of California held “the sale of trademarked terms in [Google’s search engine advertising

149. A leading trademark commentator agrees with this position. See 4 McCarthy on Trademarks and Unfair Competition § 23:11.50 (4th ed. 2008). 150. In May 2009, two similar class action complaints were filed against Google (and others, such as AOL and YouTube, who offer search engine advertising provided by Google) in the U.S. District Court for the Eastern District of Texas. Both cases, filed by the same group of attorneys, bring claims for trademark infringement and false designation of origin under the Lanham Act, contributory and vicarious trademark infringement, and related claims. The first case, FPX, LLC v. Google, Inc. (Case No. 2:09-cv-00142) is on behalf of all parties domiciled in Texas that own a federally registered mark that Google has sold as a keyword from May 2005 through the present. The second case, John Beck Amazing Profits, LLC (Case No. 2:09-cv-00151), expands the putative class to the all parties domiciled in the United States. In addition to the various trademark issues, the cases raise the issue of the appropriateness of a class action suit to trademark cases, which are traditionally quite fact-intensive; see, e.g., Vulcan Golf, LLC v. Google Inc., 254 F.R. D. 521 (N.D. Ill. 2008) (refusing class certification for Lanham Act claims due to individual question of fact regarding trademark ownership, validity and affirmative defenses). In addition, even if the classes are certified in these cases, some trademark holders may hesitate to give up control of litigation involving their trademarks. 151. Netscape, 354 F.3d at 1024, n. 7. 152. Id.

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program] is a use in commerce for the purposes of the Lanham Act.”153 Similarly, the Ninth Circuit has found that use of another’s trademark in metatags may be an infringement, with no preliminary discussion of use.154 The Eleventh Circuit is in accord with the Ninth, holding that the inclusion of another’s mark in a metatag is a “use in commerce” under the Lanham Act.155 In dicta, the court noted the split regarding the applicability of § 1127 to infringement actions and expressed approval for those courts rejecting its relevance.156 The court questioned the Second Circuit’s reliance in 1-800 Contacts on the fact that the defendant did not display the plaintiff’s trademark to find no use: Although we believe that the absence of such a display is relevant in deciding whether there is a likelihood of confusion, we believe that, when the analysis separates the element of likelihood of confusion from the other elements, this fact is not relevant in deciding whether there is a use in commerce in connection with the sale or advertising of any goods. . . . [T]he plain meaning of the statutory language clearly indicates that [defendant]’s use of [plaintiff ]’s trademarks as meta tags constitutes a ‘use in commerce . . . in connection with the sale . . . or advertising of any goods’ under the facts of this case.157

In addition, many other courts outside the Second Circuit, including courts in the Fourth and Sixth Circuits (notwithstanding their WheyU.com decisions), have found that metatags and keyword purchases or sales may constitute “use in commerce.”158

153. Google Inc. v. Am. Blind & Wallpaper Factory, Inc., 2007 U.S. Dist. LEXIS 32450 (N.D. Cal. 2007) (denying Google summary judgment on trademark infringement claim); see also Fin. Express LLC v. Nowcom Corp., 564 F. Supp 2d 1160, 1173 (C.D. Cal. 2008) (finding use; stating that defendant “used [plaintiff ’s] trademarks to engage in two levels of commercial transactions; first, [defendant] used the marks to purchase advertising from third parties that was directed at [plaintiff ]’s potential users, and second, [defendant] profited from [plaintiff ’s] marks when it transacted with internet users who were initially searching for [plaintiff ’s] products but ultimately purchased [defendant]’s products.”). 154. See, e.g., Brookfield Commun’s. Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) and Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th 2002) (discussed below). 155. North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008). 156. Id. at 1220, n. 7. 157. Id. at 1219–20. 158. See, e.g., 800-JR Cigar, 437 F. Supp. 2d 273 (D.N.J. 2006); J.G. Wentworth, S.S.C. L.P. v. Settlement Funding LLC, 85 U.S.P.Q.2d 1780, 1782 (E.D. Pa. 2007); Buying for the Home, LLC v. Humble Abode, LLC, 459 F.Supp.2d 310 (D.N.J. 2006); Boston Duck Tours, LP v. Super Duck Tours, LLC, 527 F. Supp. 2d 205 (D. Mass. 2007), rev’d. on other grounds, 531 F.3d 1 (1st Cir. 2008) (clarifying for purposes of a previously granted injunction that defendant’s purchase of plaintiff ’s marks as search engine keywords constituted “use,” but under the facts of the case did not create a likelihood of confusion and thus did not violate the injunction; the underlying injunction was later overturned on different grounds); see also


b. Is Buying or Selling a Keyword a “Use in Commerce?” The practice of selling keywords was discussed in Government Employees Insurance Co. [GEICO] v. Google, Inc.159 An Eastern District of Virginia court refused to grant Google’s motion to dismiss a claim of trademark infringement, finding that Google’s use of GEICO’s trademarks to sell advertising and then link that advertising to search results constituted use. The court also noted that Google’s sale of trademarks as keywords may give the false impression that Google had permission to do so from the trademark owners. Later, after GEICO had presented its evidence at trial, Google moved for judgment as a matter of law.160 The court granted Google’s motion for the most part, finding: GEICO did not produce sufficient evidence to establish that the mere use by Google of the GEICO trademark as a search term or keyword, even in the context of Google’s advertising program, violates . . . the Lanham Act. . . . The Court also found that GEICO failed to produce sufficient evidence to establish that advertisements that do not reference GEICO’s trademarks in their text or headings violate the Lanham Act, even though Google’s advertising program enables those ads to appear when a user searches on GEICO’s trademarks. However, the Court did find that GEICO presented sufficient evidence to survive defendant’s Motion on the narrow issue of whether advertisements that appear when a user searches on GEICO’s trademarks and do reference those marks in their headings or text violate the Lanham Act.161

District courts in the Third Circuit have generally found that the purchase and sale of trademarks as keywords and use of trademarks in metatags constitute use under the Lanham Act. However, they have differed on the issue of ultimate liability, in part because of differing facts. For example, the courts in 800-JR Cigar, Inc. v. GoTo.Com, Inc. (sale of keywords),162J.G Wentworth, S.S.C. L.P. v. Settlement Funding LLC (use of metatags and purchase of keywords),163 and Buying for the Home, LLC v. Humble Abode, LLC (purchase of keywords)164 all found that defendants’ activities were trademark use.

159. 160. 161. 162. 163. 164.

T.D.I. Int’l v. Golf Preservations, Inc., Civ. Action No. 6:07-313-DCR, 2008 U.S. Dist. LEXIS 7427 (E.D. Ky. 2008) (refusing to grant motion to dismiss in light of the unsettled nature of law in this area); Rescuecom Corp. v. Computer Troubleshooters USA, Inc., 464 F. Supp. 2d 1263, 1266 (N.D. Ga. 2005) (same); Deltek, Inc. v. Iuvo Sys, Inc., No. 1:09cv330, 2009 U.S. Dist. LEXIS 33555, pp. 23-24 (E.D. Va. 2009). Gov’t. Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004). Gov’t. Employees Ins. Co. v. Google, Inc., 77 U.S.P.Q.2d 1841 (E.D. Va. 2005). Id. at 1842. 437 F. Supp. 2d 273 (D.N.J. 2006). J.G. Wentworth, S.S.C. LP v. Settlement Funding LLC, 85 U.S.P.Q.2d 1782 (motion to dismiss granted). Buying for the Home, LLC v. Humble Abode, LLC, 459 F.Supp.2d 310 (D.N.J. 2006).

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In 800-JR Cigar, a court in the District of New Jersey said: Here, GoTo makes trademark use of the JR marks in three ways. First, by accepting bids from those competitors of JR desiring to pay for prominence in search results, GoTo trades on the value of the marks. Second, by ranking its paid advertisers before any “natural” listings in a search results list, GoTo has injected itself into the marketplace, acting as a conduit to steer potential customers away from JR to JR’s competitors. Finally, through the Search Term Suggestion Tool, GoTo identifies those of JR’s marks which are effective search terms and markets them to JR’s competitors. Presumably, the more money advertisers bid and the more frequently advertisers include JR’s trademarks among their selected search terms, the more advertising income GoTo is likely to gain.165

Nonetheless, the court refused to grant summary judgment to defendant, leaving the issue of likelihood of confusion to the fact finder. Similarly, in Buying for the Home, another District of New Jersey case, the court found that purchasing a keyword constituted use, saying: First, the alleged purchase of the keyword was a commercial transaction that occurred “in commerce,” trading on the value of Plaintiff ’s mark. Second, Defendants’ alleged use was both “in commerce” and “in connection with any goods or services” in that Plaintiff ’s mark was allegedly used to trigger commercial advertising which included a link to Defendants’ furniture retailing website. Therefore, not only was the alleged use of Plaintiff ’s mark tied to the promotion of Defendants’ goods and retail services, but the mark was used to provide a computer user with direct access (i.e., a link) to Defendants’ website through which the user could make furniture purchases.166

A court in the Eastern District of Pennsylvania found use in the purchase of a trademark as a keyword, saying, “By establishing an opportunity to reach consumers via alleged purchase and/or use of a protected trademark [as a keyword], defendant has crossed the line from internal use to use in commerce under the Lanham Act.”167 However, the court then found no likelihood of confusion (see infra discussion of initial interest confusion) and therefore granted defendant’s motion to dismiss. In other Third Circuit cases, the district courts did not explicitly discuss use, but apparently assumed that element was met.168

165. 166. 167. 168.

800-JR Cigar, 437 F. Supp. 2d at 285. Buying for the Home, 459 F.Supp.2d at 323. J.G. Wentworth, 85 U.S.P.Q.2d at 1785. See, e.g., Syncsort Inc. v. Innovative Routines Int’l., Inc., Civ. Action No. 04-3623, 2008 U.S. Dist. LEXIS 35364 (D.N.J. 2008); Bijur Lubricating Corp. v. Devco Corp., 332 F. Supp. 2d 722 (D.N.J. 2004); SNA, Inc. v. Array, 51 F. Supp. 2d 554 (E.D. Pa. 1999) (enjoining defendant from using plaintiff ’s marks in defendant’s metatags after finding that defendant used the marks repeatedly in metatags to lure visitors to its site).


In short, it appears the majority view is that use of another’s trademarks in metatags or purchase or sale of them as a keyword constitutes use under the Lanham Act.169 Of course, simply finding use is not enough—the use must also be likely to cause confusion. c. Likelihood of Confusion and Initial Interest Confusion Many plaintiffs in metatag and keyword cases argue a theory of initial interest confusion. Under this theory, originally developed for the offline world,170 use of another’s mark to attract consumers’ attention or gain credibility with potential customers may be actionable even if any confusion is cleared up before the transaction is consummated. The user effectively trades off the goodwill associated with the mark to pull consumers in or “get a foot in the door,” with the hope that even after the consumers realize their mistake, they will still want to do business with the user. The Ninth Circuit was among the first courts to apply the concept of initial interest confusion to the Internet context via a case dealing with use of a competitor’s mark in metatags. In Brookfield Communications. Inc. v. West Coast Entertainment Corp.,171 the court said: Using another’s trademark in one’s metatags is much like posting a sign with another’s trademark in front of one’s store. Suppose West Coast’s competitor (let’s call it “Blockbuster”) puts up a billboard on a highway reading—“West Coast Video: 2 miles ahead at Exit 7”—where West Coast is really located at Exit 8 but Blockbuster is located at Exit 7. Customers looking for West Coast’s store will pull off at Exit 7 and drive around looking for it. Unable to locate West Coast, but seeing the Blockbuster store right by the highway entrance, they may simply rent there. Even consumers who prefer West Coast may find it not worth the trouble to continue searching for West Coast since there is a Blockbuster right there. Customers are not confused in the narrow sense: they are fully aware that they are purchasing from Blockbuster and they have no reason to believe that Blockbuster is related to, or in any way sponsored by, West Coast. Nevertheless, the fact that there is only initial consumer confusion does not alter the fact that Blockbuster would be misappropriating West Coast’s acquired goodwill.

169. See also Int’l Profit Ass’n. v. Paisola, 461 F. Supp. 2d 672 (N.D. Ill. 2006) (granting TRO); Hysitron Inc. v. MTS Systems Corp., Civ. No. 07-01533, 2008 U.S. Dist. LEXIS 58378 (D. Minn. 2008) (denying summary judgment to defendant); BSN Med., Inc. v. Witkowski, Case No. 3:08-CV-00347, 2008 U.S. Dist. LEXIS 95338 (W.D.N.C. 2008) (granting default judgment and permanent injunction against using plaintiff ’s trademarks in metatags or purchasing them as keywords; Ticketmaster Corp. v. Devane, Case No. 7:07-CV-196-F, 2008 U.S. Dist. LEXIS 39369 (E.D.N.C. 2008) (same); Hearts on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009) (keyword purchase is use); Fair Isaac Corp. v. Experian Info. Solution, Inc., Civ. No. 06-4112, 2009 U.S. Dist. LEXIS 64022, pp. 75–77 (D. Minn. 2009) (same). 170. See, e.g., Grotrian v. Steinway & Sons, 365 F. Supp. 707, 716-17 (S.D.N.Y. 1973) and Mobil Oil Corp. v. Pegasus Petrol. Corp., 818 F. 2d 254, 255 (2d Cir. 1987). 171. Brookfield Commc’ns Inc. v. West Coast Entm’t Corp., 174 F.3d 1036

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Brookfield has been criticized in some quarters, most notably by Ninth Circuit Judge Berzon in a concurrence to Netscape.172 Judge Berzon argued that Brookfield expanded the reach of initial interest confusion too broadly to cover situations where the consumer is never confused, but simply distracted by other choices. She opined the decision might have to be reviewed en banc. Others have commented that the highway analogy is not convincing on the Internet where a mere click is needed to retrace one’s steps. However, the case continues to be good law and is frequently cited in metatag cases.173 In Netscape, the Ninth Circuit addressed the issue of sales of keyed banner ads. These ads were generated by searches for Playboy’s trademarks and contained nothing but adult content and a link Click Here. The court said that because the ads were unlabeled and did not contain any indication of their source, searchers might see the ads, assume they were related to Playboy, and click through to the competing Web site. Although searchers might immediately realize they were not at the Playboy Web site, they might decide to remain at the competitor’s site and purchase its services instead. As such, the banner ads created initial interest confusion. The court reversed the summary judgment granted to Netscape. The Seventh Circuit has also applied the initial interest confusion doctrine to trademark use in metatags. In Promatek Indus., Ltd. v. Equitrac Corp., the court held: By [defendant]’s placing [plaintiff ’s mark] in its metatag, consumers are diverted to its website and [defendant] reaps the goodwill [plaintiff ] developed in [plaintiff ’s] mark. That consumers who are misled to [defendant]’s website are only briefly confused is of little or no consequence. In fact, that confusion as to the source of a product or service is eventually dispelled does not eliminate the trademark infringement which has already occurred. What is important is not the duration of the confusion, it is the misappropriation of [plaintiff ’s] goodwill.174

In addition, the Tenth Circuit found initial interest confusion in Australian Gold, Inc. v. Hatfield.175In that case, the defendants operated a Web site on which they made unauthorized sales of plaintiff’s products and also sold competing third party products. Defendants used plaintiff’s marks on the site and in the site’s metatags, and they purchased the marks as keywords. The court said

172. Netscape, 354 F.3d 1020, 1024 (9th Cir. 2004); see also J.G Wentworth, 85 U.S.P.Q.2d at 1786. 173. For a defense of Brookfield, see  J. Thomas McCarthy, McCarthy’s on Trademarks and Unfair Competition § 25:69 (2005). 174. Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812–13 (7th Cir. 2002) (affirming preliminary injunction) [citations and quotations omitted]. 175. Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006).


that by these actions, “Defendants used the goodwill associated with Plaintiffs’ trademarks in such a way that consumers might be lured to the products from Plaintiffs’ competitors. This is a violation of the Lanham Act.”176 Courts applying the initial interest confusion doctrine have handled the analysis of confusion in several different ways. Courts in the Ninth Circuit often focus on the “Internet trinity”: (1) the similarity of the marks; (2) the relatedness of the goods or services; and (3) the simultaneous use of the Web as a marketing channel.177 In Tdata Inc. v. Aircraft Technical Publishers,178 the District Court of Ohio court replaced the “actual confusion” prong of a traditional likelihood of confusion analysis with a discussion of initial interest confusion. Other courts have ignored certain traditional likelihood of confusion factors (such as similarity of the marks and strength of plaintiff’s mark) when analyzing initial interest confusion. For example, in 800-JR Cigar,179 a District of New Jersey court found that in the Third Circuit, the relevant factors for analyzing initial interest confusion include: (1) product relatedness (i.e., whether the goods or services are similar; whether the products at issue directly compete), (2) the level of care exercised by consumers in making purchasing decisions, (3) the sophistication of the purchaser/ consumer; and (4) the intent of the alleged infringer in adopting the mark. . . . Thus, in this factual context, evidence of the diversion of traffic away from [plaintiff ’s] website to those of its competitors is also a significant factor.180

In some cases, courts may evaluate defendants’ actions as part of a discussion of intent. For example, in Venture Tape Corp. v. McGills Glass Warehouse,181 defendant used plaintiff’s marks in the metatags and invisible text of defendant’s Web site. The First Circuit accepted the parties’ agreement that defendant had used the marks and turned to the issue of likelihood of confusion. Noting that defendant had essentially admitted all the factors for evaluating likelihood of confusion except actual confusion, the court affirmed summary judgment for the plaintiff. In particular, the court said, “[Defendant’s] admission that his purpose in using [Plaintiff’s] marks was to

176. Id. at 1239. See also Bayer Healthcare LLC v. Nagrom, Inc., 72 U.S.P.Q.2d 1751 (D. Kan. 2004) (granting permanent injunction; gray market goods seller created initial interest confusion by purchasing plaintiff ’s mark as a keyword and using the mark in metatags). 177. See, e.g., Fin. Express LLC v. Nowcom Corp., 564 F. Supp. 2d 1160, 1174 (C.D. Cal. 2008) (granting a preliminary injunction); Storus Corp. v. Aroa Mktg., Case No. C-06-2454, 2008 U.S. Dist. LEXIS 11698 (N.D. Cal. 2008) (defendant’s purchase of plaintiff ’s mark as a keyword was infringing entitling plaintiff to summary judgment). 178. Tdata Inc. v. Aircraft Technical Publishers, 411 F. Supp. 2d 901, 910–11 (S.D. Oh. 2006) (granting summary judgment to trademark owner). 179. 800-JR Cigar, Inc. v. GoTo.com, Inc., 437 F. Supp. 2d 273 (D.N.J. 2006). 180. Id. at 290 [citations omitted]. 181. Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56 (1st Cir. 2008).

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lure customers to his site, permit us to conclude that no genuine dispute exists regarding the likelihood of confusion.”182 Several other cases also have discussed initial interest confusion in the context of metatags and keyword purchases.183 For example, in Bayer Corp. v. Custom School Frames, LLC,184 defendant was selling gray market goods (with material differences) on its Web site and using plaintiff’s marks on the site, in the metatags, and as a purchased keyword. The domain name of defendant’s site was nearly identical to the domain name plaintiff used to promote its products. An Eastern District of Louisiana court said: [T]he use of the [plaintiff ’s] mark in the metatags for the [defendant’s] web site also constitutes an appropriation of goodwill and creates initial interest confusion. The registration of the mark as a search term and code with Internet search engines also leads to confusion.185

An Eastern District of Pennsylvania court was not as sympathetic to the claim of initial interest confusion in the case of a keyword purchase. In J.G. Wentworth, the court indicated: Due to the separate and distinct nature of the links created on any of the search results pages in question, potential consumers have no opportunity to confuse defendant’s services, goods, advertisements, links or websites for those of plaintiff. Therefore, I find that initial interest protection does not apply here.186

182. Id. at 62; see also Niton Corp. v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d 102 (D. Mass. 1998) (defendant enjoined after copying plaintiff ’s metatags in their entirety); Eli Lilly & Company v. Natural Answers, Inc., 233 F.3d 456, 465 (7th Cir. 2000) (finding wrongful intent in part because “the clear intent of [including plaintiff ’s mark in defendant’s metatags] . . . was to divert Internet users searching for information on [plaintiff ’s product] to [defendant’s Web site].”); Tdata, 411 F. Supp. 2d at 910–11. 183. See, e.g., Soilworks, LLC v. Midwest Indus. Supply, Inc., 575 F. Supp. 2d 1118, 1132 (D. Ariz. 2008) (granting summary judgment to trademark owner; stating that consumer deception is not a requirement of initial interest confusion: “[T]he wrong in a metatag initial interest confusion case is not that the consumer is deceived into believing that he is purchasing the plaintiff ’s products when in fact he is purchasing defendant’s, but instead is the diversion of the consumer’s initial attention to the defendant’s website using the plaintiff ’s trademark and goodwill.”); and Flow Control Indus. v. AMHI, Inc., 278 F. Supp. 2d 1193, 1200 (W.D. Wash. 2003) (granting summary judgment to plaintiff; stating “[D]efendants used plaintiff ’s mark in such a way as to divert people looking for [plaintiff ’s] products to the [defendant’s] website, thereby improperly benefitting from the goodwill that plaintiff developed in its mark.”); compare with Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811, 818–19 (D. Ariz. 2008) (granting summary judgment to defendant; stating, “[T]he mere fact that [defendant] uses [plaintiff ]’s marks in the metatags of its sites and as search-engine keywords does not result in initial interest confusion. [Plaintiff ] must show that these uses are deceptive.”); 184. Bayer Corp. v. Custom Sch. Frames, LLC, 259 F. Supp. 2d 503 (E.D. La. 2003). 185. Id. at 509. 186. J.G. Wentworth, S.S.C. LP v. Settlement Funding LLC, 85 U.S.P.Q.2d 1780 (E.D. Pa. 2007); see also Syncsort Inc. v. Innovative Routines Int’l., Inc., Civ. Action No. 04-3623, 2008 U.S. Dist. LEXIS 35364 (D.N.J. 2008) (granting summary judgment to defendant).


As with other aspects of the metatag and keyword issues, the courts’ handling of the question of initial interest confusion is all over the map. Accordingly, the legal practitioner should carefully study the facts and precedent in the relevant circuit before proceeding with a suit. d. Fair Use The nominative fair use defense is popular for claims of infringement via metatags and keywords. In classic fair use, the defendant uses the plaintiff’s mark in its ordinary, descriptive sense to describe defendant’s product. In a nominative fair use scenario, the defendant uses plaintiff’s mark to identify plaintiff or its goods with the ultimate intention of describing defendant’s products (e.g., in comparative advertising). Similarly, a defendant with a gripe site may claim that that it is necessary to use the plaintiff’s trademark to exercise his First Amendment right to complain about the plaintiff. If the defendant is engaged in permissible comparative advertising on its Web site, is offering genuine goods of plaintiff’s for sale, or is otherwise legitimately describing itself using plaintiff’s trademarks, some courts have found that it is not an infringement to notify consumers of this via metatags and keyword advertising. For example, in Playboy Enterprises, Inc. v. Welles,187 the Ninth Circuit held that the defendant did not infringe Playboy’s rights in the marks PLAYBOY and PLAYMATE OF THE YEAR by including them in her Website, which identified her (truthfully) as a former Playboy Playmate of the Year and offered pictures of her and her services as a speaker. Applying the Ninth Circuit’s three-part nominative fair use test established in New Kids on the Block v. New American Publishing, Inc.,188 the court said there was no way for the defendant to describe herself without using the marks, she used the marks only to the extent needed to identify herself, and she did nothing to suggest that Playboy sponsored or endorsed her site (in fact, she included a disclaimer). Thus the use was fair.189, 190

187. Playboy Enterprises Inc. v. Welles [Welles], 279 F.3d 796 (9th 2002). 188. New Kids on the Block v. New Am. Publ’g, Inc., 971 F.2d 302, 306–09 (9th Cir. 1992). 189. See also Brookfield Commc’ns Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1065 (9th Cir. 1999) (some uses of plaintiff ’s marks by defendant might be nominative fair use); Gregerson v. Vilana Financial, Inc., Civ. Action No. 06-1164, 2006 U.S. Dist. LEXIS 81731 (D. Minn. 2006) (use of plaintiff ’s trademark in metatags of defendant’s gripe site constituted nominal fair use once defendant modified them to accurately describe the content of the site and added a disclaimer; court to monitor the metatag use to ensure compliance); compare Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036 (9th Cir. 2003) (finding no nominative fair use when defendant’s use caused confusion regarding sponsorship and attempted to appropriate the cachet of plaintiff ’s mark). 190. Note that the New Kids test was crafted before the Supreme Court’s ruling on the coexistence of fair use with confusion in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (U.S. 2004). It remains to be seen how this ruling will affect the Ninth Circuit’s treatment of the third prong of the New Kids test.

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Courts in the District of New Jersey have addressed in at least two cases when a business may use a competitor’s trademarks. In Syncsort Inc. v. Innovative Routines International, Inc.,191 defendant used plaintiff’s mark in metatags and on its Web site to advertise that defendant’s product could convert programs written for plaintiff’s software to run on defendant’s software. The court found the defendant was entitled to summary judgment on the basis of the fair use defense. In Bijur Lubricating Corp. v. Devco Corp.,192 the court did not address the fair use defense per se. However, the court found that use of plaintiff’s trademarks in metatags did not demonstrate bad intent by defendant because defendant sold replacement parts for plaintiff’s products on its Web site. The court said such use was not likely to confuse consumers and therefore granted defendant’s motion for summary judgment.193 A Southern District of New York court discussed the issue in Tiffany (NJ) Inc. v. eBay, Inc.194 eBay purchased Tiffany’s mark as a keyword and included it in the text of the resulting advertisements to promote Tiffany products being available on eBay. The court held that even if this constituted trademark use, it was a permitted nominative fair use. However, the defense does not always succeed. If the defendant has used plaintiff’s trademark to an extent beyond what is necessary to identify the plaintiff, or the use causes excessive confusion regarding source or sponsorship, the court may find that nominative fair use does not apply. For example, in Welles the defendant had also used the trademark PMOY repeatedly as background to her site. The Ninth Circuit found this use was not necessary to identify defendant and explain her relationship to the plaintiff.195 In addition, the court may determine that it is not necessary to use plaintiff’s mark at all in order to get defendant’s message across.196

191. Syncsort, 2008 U.S. Dist. LEXIS 35364. 192. Bijur Lubricating Corp. v. Devco Corp., 332 F. Supp. 2d 722 (D.N.J. 2004). 193. See also Mary Kay, inc. v. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009) (holding that an unauthorized reseller’s purchase of plaintiff ’s trademark as a keyword did not negate a fair use defense); compare to Std. Process, Inc. v. Total Health Discount, Inc., 559 F. Supp. 2d 932 (E.D. Wis. 2008) (stating that unauthorized reseller’s use of plaintiff ’s trademark in metatags, together with certain statements on the website suggesting affiliation, could lead to consumer confusion). 194. Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008); see also Bihari v. Gross, 119 F. Supp. 2d 309 (S.D.N.Y. 2000). 195. Playboy Enter., Inc. v. Welles, 279 F.3d 796, 804 (9th 2002). 196. See, e.g., Edina Realty, Inc. v. TheMLSOnline.com, 80 U.S.P.Q.2d 1039 (D. Minn. 2006) (in denying defendant summary judgment, the court rejected the nominative fair use defense because it was not necessary to use plaintiff ’s mark to explain defendant’s services); see also Faegre & Benson, LLP v. Purdy, 447 F. Supp. 2d 1008 (D. Minn. 2006) (granting permanent injunction restricting defendant from using plaintiff ’s marks in his commentary Web site metatags in any manner other than to fairly describe the site’s contents, and prohibiting him from copying plaintiff ’s Web site metatags or using plaintiff ’s name to draw traffic to his site by deceiving Internet users about the contents of his site).


In Australian Gold, the Tenth Circuit held that the first sale doctrine also did not offer a defense: The first sale doctrine does not protect resellers who use other entities’ trademarks to give the impression that they are favored or authorized dealers for a product when in fact they are not. In this case, Defendants’ use of Plaintiffs’ trademarks on the internet was such an act. Defendants’ intentional use of Plaintiffs’ trademarks on Defendants’ Web sites, in the metatags for the Web sites, and with [a search engine] constitutes more than merely displaying and stocking trademarked items. Thus, Defendants’ actions were indicative of an intent to cause consumer confusion, and are not shielded by the first sale doctrine.197

In summary, courts seem most likely to accept a fair use defense if defendant’s Web site is a gripe site; contains legitimate comparative advertising; or offers plaintiff’s goods or complementary goods without suggesting an affiliation with plaintiff. If the metatags or keyed ads do not accurately describe the content of the site or go beyond what is needed for defendant’s legitimate purposes, the fair use defense may be defeated.

6. Factors that May Affect the Outcome of an Infringement Claim As we have seen, the case law on the issues of using trademarks in metatags and as keywords varies widely. Below is a list of factors some courts have considered relevant to an infringement analysis. Unfortunately, how these factors are treated depends in part on which court you ask.

Practice Tip Metags 2 Deciding Whether to Pursue a Metatag or Keword Case Given the uncertain state of the law in this area, you should weigh the facts carefully before advising your client to pursue a trademark infringement claim based solely on a use of the client’s mark in a metatag or purchase of the mark as a search engine keyword.

197. Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1241 (10th Cir. 2006); see also Bernina of Am. Inc. v. Fashion Fabrics Int’l, 57 U.S.P.Q.2d 1881 (N.D. Ill. 2001) (enjoining reseller from using manufacturer’s marks in metatags because reseller’s site is misleading and implies that reseller is an authorized dealer). 197. Std. Process, Inc. v. Banks, 554 F. Supp. 2d 866 (E.D. Wis. 2008).

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The first step is to evaluate how serious the problem really is for your client. Is the use affecting the client’s bottom line? Or does it really just annoy a mid-level marketing manager? If the answer falls closer to the former end of the spectrum, it may be worthwhile to proceed. If the latter, it may be better to help the client gain perspective on the matter. The next step is to determine where an action could reasonably be brought. As seen above, the Seventh, Ninth, and Tenth Circuits and district courts in the Third Circuit are fairly receptive to these cases, but the Second Circuit is decidedly not. If your only option is the Second Circuit, unless the facts are fairly egregious it may be best to pick another battle. Finally, a review of the factors listed above can help you evaluate the merits of your case. If your client’s direct competitor is copying your client’s metatags or using your client’s marks in a keyword advertisement and does not offer comparative advertising on its site, your chances of success may be higher than if the competitor is making what could be argued to be a nominative fair use.

a. Metatags • Do the metatags legitimately describe the site’s content or owner (i.e., is it a nominative fair use?) • Does the Web site offer legitimate plaintiff products? If so, a court may find nominative fair use (see discussion supra). • Does the use cause confusion about whether the seller is an authorized dealer? Under the first sale doctrine, an independent dealer may make use of a manufacturer’s trademark to resell that brand of goods; however, the reseller must not do so in a manner likely to cause confusion or imply that the reseller is an authorized dealer. See, e.g., Bernina of America Inc. v. Fashion Fabrics International, Inc. (enjoining reseller from using manufacturer’s marks in metatags only because reseller’s site is misleading and implies that reseller is an authorized dealer).198 (See also Standard Process, Inc. v. Banks.)199 • Does the Web site offer compatible goods/replacement parts for the client’s products? If so, a court may find that use of the client’s trademarks to inform customers of this may constitute nominative fair use,

198. Bernina, 57 U.S.P.Q.2d 1881. 199. Std. Process 554 F. Supp. 2d 866.


• •

• • •

•

•

provided the site does not imply that its owner is connected with the client (see above).200 Does the Web site contain comparative advertising with the client’s product?201 If so, courts may find this is a fair use. Is the Web site a gripe site? If so, a court may find that use of plaintiff ’s trademark to inform potential visitors about the content of the Web site is a fair use, provided the metatags fairly describe the site and do not attempt to fool consumers into believing that it is plaintiff ’s site.202 For example, it may be acceptable if the metatags say “Complaints about Plaintiff Co.” but not if they say “Plaintiff Co. Home Page.” Does the Web site need to use the marks to describe the business or site owner?203 Do the Web site’s metatags use the client’s mark only as necessary for a legitimate purpose? (See, e.g., Welles.)204 Is the Web site deceptive with respect to its source or affiliation? If so, a court may be more inclined to find the use of the client’s trademarks in metatags or as a keyword to be likely to cause confusion. (See, e.g., Fitgers On-the-Lake, LLC v. The Fitger Company, LLC.)205 Is the domain name for the relevant Web site confusingly similar to the client’s mark? If so, this may increase the likelihood that consumers may be confused by a search engine result.206 Consumers reviewing a long list of results may look at the domain name displayed with the link to determine which result is the real one. Are there indications of bad faith?

200. See Syncsort Inc. v. Innovative Routines Int’l., Inc., Civ. Action No. 04-3623, 2008 U.S. Dist. LEXIS 35364 (D.N.J. 2008) (use of plaintiff ’s trademark in metatags to inform consumers that defendant’s product can convert plaintiff ’s product is nominative fair use); Bijur Lubricating Corp. v. Devco Corp., 332 F. Supp. 2d 722 (D.N.J. 2004) (acceptable to use plaintiff ’s trademarks in metatags in site that sells replacement parts for plaintiff ’s products). 201. See, e.g., Syncsort, 2008 U.S. Dist. LEXIS 35364. 202. See, e.g., Bihari v. Gross, 119 F. Supp. 2d 309 (S.D.N.Y. 2000); Gregerson v. Vilana Fin., Inc., Civ. Action No. 06-1164, 2006 U.S. Dist. LEXIS 81731 (D. Minn. 2006) (use of plaintiff ’s trademark in metatags of defendant’s gripe site constituted nominal fair use after defendant modified them to accurately describe the content of the site and added a disclaimer to the site). 203. See, e.g., Playboy Enter., Inc. v. Welles, 279 F.3d 796, 804 (9th 2002); Edina Realty, Inc. v. TheMLSOnline.com, 80 U.S.P.Q.2d 1039 (D. Minn. 2006). 204. Welles, 279 F.3d 796. 205. Fitgers On-the-Lake, LLC v. Fitger Co., LLC, Case No. 07-CV-54687, 2007 U.S. Dist. LEXIS 93378 (D. Minn. 2007) (preliminarily enjoining defendant from using plaintiff ’s marks in metatags or purchasing them as keywords when Web site misled consumers regarding the source of defendant’s product). 206. See, e.g., Bayer Corp. v. Custom Sch. Frames, LLC, 259 F. Supp. 2d 503, 509 (E.D. La. 2003).

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• Are the client’s trademarks used repeatedly in the metatags? A court may find that this goes beyond any fair use and is simply an attempt to divert consumers.207 • Are the metatags a copy of the client’s metatags?208 This indicates an attempt to divert consumers, not a fair use description of the Web site contents. • Are the metatags deceptive (e.g., by claiming to be your client’s “official page”)?209 b. Keywords • Does your client’s trademark appear in the text of the sponsored ad? If so, is it a nominative fair use (genuine goods, comparative advertising, gripe site, etc. (see discussion supra))?210 Compare GEICO211 (ads in which plaintiff ’s mark appear may cause confusion) and Hamzik212 (motion to dismiss denied when defendant purchased plaintiff ’s mark as a keyword because the trademark appeared in the text of defendant’s ad, as such use might be sufficient to support a Lanham Act claim) to Tiffany213 (holding that including plaintiff ’s mark in a keyed ad when defendant sold plaintiff ’s goods was a permitted nominative fair use) and Nautilus Group, Inc. v. Icon Health and Fitness, Inc.214 (granting defendant’s motion for summary judgment; holding that purchase of

207. SNA, Inc. v. Array, 51 F. Supp. 2d 554 (E.D. Pa. 1999) (enjoining defendant from using plaintiff ’s marks in defendant’s metatags; finding that defendant used the marks repeatedly in metatags to lure visitors to its site). 208. See Niton Corp. v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d 102 (D. Mass. 1998) (defendant enjoined after copying plaintiff ’s metatags in their entirety); see also also Faegre & Benson, LLP v. Purdy, 447 F. Supp. 2d 1008 (D. Minn. 2006) (defendant could use plaintiff ’s marks in defendant’s metatags to describe contents of site but could not copy plaintiff ’s metatags wholesale to divert traffic). 209. See, e.g., Niton, 27 F. Supp. 102 (granting a preliminary injunction against a defendant that wholesale copied the text of plaintiff ’s metatags into defendant’s metatags (including the phrase, “The Home Page of [Plaintiff ] . . .”)). 210. See also U-Haul Int’l, Inc. v. WhenU.Com, Inc., 279 F. Supp. 2d 723, 728 (E.D. Va. 2003) (using competitors’ marks in conjunction with comparative advertising is not a violation of the Lanham Act); Wells Fargo & Co., v. WhenU.com, Inc., 293 F. Supp. 2d 734, 762 (E.D. Mich. 2003) (same). 211. Gov’t. Employees Ins. Co. v. Google, Inc., 77 U.S.P.Q.2d 1841 (E.D. Va. 2005). 212. Hamzik v. Zale Corp./Delaware, Case No. 3:06-cv-1300, 2007 U.S. Dist. LEXIS 28981 (N.D.N.Y. 2007). 213. Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 501 (S.D.N.Y. 2008). 214. Nautilus Group, Inc. v. Icon Health and Fitness, Inc., Case No. C02-2420RSM, 2006 U.S. Dist. LEXIS 92550 (W.D. Wash. 2006).

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competitor’s keywords for purposes of comparative advertising is not actionable under the Lanham Act). • Are the sponsored results or keyed ads clearly labeled as such? Compare Netscape (finding that unlabeled ads created a likelihood of initial interest confusion)215 with 1-800 Contacts (pop-up ads clearly labeled as coming from defendant)216 and Storus Corp.217 • Is the domain name for the relevant Web site confusingly similar to the client’s mark? If so, this may increase the likelihood that consumers may be confused by a search engine result.218 • Is the Web site deceptive regarding with respect to its source or affiliation? (See supra.)

C. Theft of Content—Copyright and Confidential Information Copyright infringement on the Internet is common and widespread, with movies, music, software, and games being infringed on a massive scale. This is not news. Yet despite the prevalence of this type of massive infringement, this chapter is not going to address the piracy of movies, music, or software. Why not? Because the RIAA, the MPAA, and the BSA219 control much of the legal action in these arenas220—but the average practitioner does not represent any of these entities. Therefore, this chapter addresses scenarios more likely to occur in day-to-day practice, such as the theft of Web site content, data, photographs, and confidential information. The variation on these themes seems to be endless in actual practice, but the basic investigation techniques and legal principles remain the same.

215. Playboy Enter., Inc. v. Netscape Commun’s. Corp., 354 F.3d 1020 (9th Cir. 2004). 216. 1-800 Contacts, Inc. v WhenU.com, Inc., 414 F.3d 400, 405 (2d Cir. 2005); see also J.G. Wentworth, S.S.C. LP v. Settlement Funding LLC, 85 U.S.P.Q.2d 1780, 1782 (E.D. Pa. 2007) (granting preliminary injunction after finding that keyed banner ads were not clearly labeled). 217. Storus Corp. v. Aroa Mktg., Case No. C-06-2454, 2008 U.S. Dist. LEXIS 11698 (N.D. Cal. 2008). 218. See, e.g., Bayer Corp. v. Custom Sch. Frames, LLC, 259 F. Supp. 2d 503, 509 (E.D. La. 2003). 219. These are the abbreviations, respectively, for the Recording Industry Association of America, the Motion Picture Association of America, and the Business Software Alliance. 220. For a lively discussion of the copyright wars involving these types of works, read William Patry, Moral Panics and the Copyright Wars (2009).


1. Scenarios First Scenario—The Bogus, Infringing Web site Bogus “coupon” and “discount” Web sites have popped up that use a famous brand’s trademark and famous photographs of its models to lure unsuspecting consumers to the site. The scammers have used a slightly misspelled URL (close to the client’s trademarks) and the trademarks themselves on the pages to create the look and feel of a legitimate site, including photographs, and text from the client’s Web site. The scammer’s purpose in this elaborate deceit is two-fold: to collect consumer e-mail addresses and other personally identifiable information (to sell to others) and to make quick money selling inexpensive items. The scam works like this: The site offers amazing coupon and discount deals of up to 75 percent off “all” merchandise in the brand-name store in exchange for the consumer’s participation in a “short survey.” Consumers find this site after reading a spam e-mail advertising a great deal; alternatively, the site appears in the results of a search for any “discounts” on your client’s products. Once at the site, the consumer responds to questions (for example, about fragrance preferences). Next, the consumer is offered an opportunity to buy an inexpensive fragrance. If the consumer does not buy the fragrance, the consumer cannot proceed to the next step towards obtaining the coupon. The consumer still feels comfortable interacting with the site because the client’s trademarks and text appear on these pages as well. The consumer buys the inexpensive fragrance. The next step is a second survey (for example, about vitamins). The consumer is offered some discount vitamins. Again, the site looks legitimate, and unless the consumer signs up for the vitamins, the person cannot proceed to the next step. Of course, it is impossible for consumers to reach the end of this endless series of offers. In the meantime, the consumers have handed over credit card information and bought several products they really did not want. Angry consumers are now calling the client because they still do not understand they have been scammed. Second Scenario—Theft and Auction of Proprietary Information Chip released a new version of its leading Hexium processor into the marketplace. Competition in the processor arena is fierce, and competitors have been known to spend large sums of money disassembling Chip’s products to determine their layouts and related computer coding. To maintain the secrecy of Chip’s layouts and code, Chip limited access to computerized design files showing the layouts. Further, master layout files are kept on a passwordprotected server to which only a small subset of Chip’s employees are given access, and employees are told to keep working copies to a minimum and delete any unnecessary copies of the files. A few days after the release of the new Hexium processor, Barry (Chip’s vice president of research and development) downloaded to his computer one of the


master layout files, “Confidential Chip Hexium Layout File 1.png,” and a file named “confidential Hexium code.” Barry is an avid user of sharing music on peer-to-peer file sharing programs, and he accidentally downloaded the files to one of his shared music folders. Although Barry discovered this error two days later and deleted the files at that time, he found in his log files that they had been downloaded from his computer at least twice. Days later, Chip was informed of an auction on the popular Internet site xRay purporting to sell a layout and code files for Chip’s new Hexium at which bidding had already reached $8,000. Third Scenario—Content “Borrowing” among Web sites A large financial institution provides readers with widely respected market analysis. Some of the content is available for free on the home page, including certain indices the institution considers to be proprietary. More detailed analysis is only available to subscribers who enter into a subscription contract and pay a large annual fee for access to this real-time analysis and archives. The financial institution licenses its subscription content to other media outlets (such as Yahoo! Finance), which also charges a fee to readers for access to the content. A subscriber calls to complain that some of the subscription content is appearing, almost in real time, on a competitor’s Web site—for free! He wants to cancel his subscription. Investigation shows that several paragraphs of original text are appearing verbatim on the competitor’s site. The entire article is not copied, but, certain key paragraphs, such as the author’s market predictions, are reproduced every day. The competitor’s Web site also uses some of the index numbers, but on a delayed basis.

2. How to Investigate First Scenario—the Bogus, Infringing Web site There are really two main causes of action in this scenario: trademark infringement and copyright infringement. The investigative path depends on your client’s objectives. If the client wants the site taken down as fast as possible, you should first concentrate on the copyright claim. Why? A copyright claim gives you the ability to use the DMCA’s notice and take down procedures, as discussed at §V(A)(4)(b). This often results in the immediate take down of the material.221 The DMCA’s requirements for

221. The material really is not “taken down.” Instead, the visitor to the offending page will usually receive an error message of some sort. Mechanically what happens is the ISP blocks access to the IP address by making the IP address invisible to the mapping system. The content continues to exist on the server, however—it does not actually disappear. If the content is likely to be needed as evidence, the ISP should be warned of its obligation to maintain evidence.


safe harbor, namely the notice and take down procedure, is the practitioner’s biggest weapon in a copyright dispute.222 Making the content inaccessible to potential customers is an effective remedy, even when the copyright owner isn’t necessarily concerned about the copyright infringement per se, but rather, the fraud being perpetrated by the scammer and tarnishment of the brand. A trademark claim is not likely to result in any action for at least a month or more from the filing of an ICANN complaint223 to obtain the domain name (which has the effect of giving the client control of the path for the domain name). A federal cause of trademark infringement is likely to take even longer, even if preliminary injunctive relief is sought. Another problem associated with trademark claims is the necessity of serving the papers on someone associated with the site. As the information associated with this bogus site is likely to be false, valuable time can be wasted trying to trace the origin of a site that is elaborately concealed.224 On the other hand, the site owner is largely irrelevant under the notice and take down procedure. It is the ISP’s burden to sort out to whom to serve the notice. The copyright owner merely needs to demonstrate ownership of the copyright and likelihood the material on the site is an infringement. Before you serve a DMCA cease-and-desist letter on an ISP, you should take the following steps. These steps are provided with only a short explanation as many of these investigative techniques are discussed in greater detail elsewhere in this book. These steps are: 1. Electronically capture all the relevant pages. Make sure the full URL can be seen in connection with the complained-of page. A screen capture is usually sufficient for these purposes. 2. Get the WHOIS record (even if filled with false information, as the server information will be correct). You need the server information to find the hosting ISP. See §II(E) on how to do this. 3. At the same time, consider filing an expedited copyright registration on your client’s materials.225 A cease-and-desist letter is much stronger if it includes this information. Some ISPs do not require proof of a registration as the copyright subsists apart from the registration. Owners of sophisticated ISPs know this, but others may not. Certainly, go ahead

222. The Digital Millennium Copyright Act (and the procedures required for notice) are discussed at length in Chapter V, Freedom of Expression and the Problems of Anonymity, ISP Liability, §IV.A.3(d) 223. For a discussion of the elements of a complaint under the ICANN rules, see § V9A)(4)(b). 224. These more sophisticated types of scams can be cracked with a lot of persistence, patience, and attention to the details of all the evidence. A WHOIS search is likely to only yield a false registrant or a proxy agent. 225. Unfortunately, even an expedited registration can take a week.


and file for a registration if the scam is spread across many sites and many ISPs. It may be wise simply to file for registration, as chances are that one of the bunch will require a registration. 4. Review the ISP’s policies with respect to copyright infringement. These should be found as part of the terms and conditions, or sometimes the ISP provides detailed information about its agent for service of a copyright claim. 5. Check the Copyright Office’s records at copyright.gov to find the ISP’s registered agent for receiving DMCA notices. The steps for addressing the trademark infringement are largely the same except you may need to dig deeper for correct information. Here are the steps: 1. In the instance of a domain infringement, you may simply wish to file an ICANN complaint to get the domain back. This will also have the side effect of taking the content down as your client has control over the domain, but this process simply takes longer. If this is your client’s objective, then all you really need is the WHOIS information for the registration. Even if the registration information is false, the arbitration forums consider it adequate so long as notice is served, even if on a clearly false registrant with a false address. 2. Gather all the electronic evidence with the URLs associated with the offending content. 3. To the extent that your client wants to actually track down the perpetrators of the fraud (for example, if this is becoming an overwhelming problem for the brand), you may need to leave the site up for a bit to gather potential leads. You are trying to find a fragment of real information somewhere amongst all the false. Applying the principle of “follow the money” will often get you somewhere. Among potential leads are: a. Follow up on spam. Inform the customer service desk that if they get calls about the scam, they should ask the caller to forward the actual e-mail. This will give you the opportunity to trace the header information, as discussed at §II(E). b. If you cannot get examples of “live” e-mails advertising this site, you may need to turn to a professional investigator who can find such e-mails through its own archives. A list of such services is found in the Appendix. c. Search forums, blogs, and news lists for discussion of the scam. The general public can be very persistent in tracking down leads and sharing them. d. Check the spam blacklist sites (as discussed at §V(C)(2)) for any leads.

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e. Trace every single piece of information you can from the e-mail header. Get a variety of these e-mails, as often they are sent from different e-mail accounts, and check those out. Check the history of the offending site’s content—sometimes you will find real information accidentally revealed in previous versions of the Web site pages. f. Get examples of the packaging used to mail products to the scammed individuals. In fact, have a staff member actually order some products as this may give you a return address. It might be false, or just a PO box, but,often it will yield at least a general location that might match other information in the investigation. Second Scenario—Theft and Auction of Proprietary Information. This is the type of problem that warrants an expert; however, the legal professional needs to take certain steps such as securing the laptop as evidence and serving a DMCA notice on the auction site. However, this scenario is very different than the others in that a court may need to be involved immediately to issue a temporary restraining order. Searching log files and tracing an anonymous taker is beyond the capabilities of most legal professionals, and in any event, an expert is needed to testify as to the accuracy and authenticity of the evidence. Chapter VII discusses how to use an expert. Appendix I provides a flowchart depicting best practices in securing certain electronic evidence.

3. The Law a. Basic Copyright The overwhelming majority of content available on the Internet is protected by copyright.226 Copyright registration is not required in the United States or in the majority of other countries.227 Rather, copyright “subsists” in “original”

226. Copyright does not protect works that have fallen into the public domain. In addition, the following are not protected under U.S. Copyright law: any idea, procedure, process, system, method of operation, concept, principle, or discovery “regardless of the form in which it is described, explained, illustrated, or embodied in a work.” 17 U.S.C. § 102(b). 227. 17 U.S.C. § 408(a). The United States dropped its registration requirements in 1989. However, despite registration not having been required for 20 years, it seems that most clients still think it is necessary. Registration is still required before an infringement claim can be made, but this is not to preserve the copyright per se, but to put on file a record of the copyright’s existence. 17 U.S.C. § 411. Registration also preserves the owner’s rights to statutory damages. 17 U.S.C. § 412.


works of authorship, when “fixed in any tangible medium of expression.” 17 U.S.C. § 102. An original work of authorship is different from one unique or novel as these two concepts are used within the realm of patent protection. Specifically, original in the copyright sense merely means that it has not been copied from another, nor can it be based on another’s underlying work. An unauthorized work that is based on another underlying work is referred to as a derivative work. 17 U.S.C. § 101. A derivative work is an infringement of the underlying work unless authorized. 17 U.S.C. § 106(2). This means that so long as it is original, even the most feeble blog or home video on YouTube is protected by copyright. Every author, including the blogger or the home video enthusiast, has the exclusive right to do the following with his or her work: (i) reproduce the work (i.e., make a copy) (ii) prepare derivative works (this includes “translations, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed or adapted”) (iii) distribute copies to the public (iv) perform the work publicly (v) display the work publicly (vi) in the case of sound recordings, perform the copyrighted work publicly by means of a digital audio transmission. 17 U.S.C. §106 There are some limitations on the exclusive rights,228 namely fair use and certain rights of “safe harbor” for Internet service providers, as discussed at §V(A)(4)(b). Close consideration of these exclusive rights leads to the realization that even the simplest of activities (such as copying a page from a Web site to use on your own blog) can be a violation of a number of exclusive rights. This activity could be a violation of the right to reproduce. It is arguably a distribution, and it is also it an unauthorized display. Depending on what you do with the original page, you might have created an unauthorized derivative work! The scammers in Scenario One are clearly rampant copyright infringers. They have, at the very least, violated the exclusive right to reproduce and display photographs and text original to the owner of the famous brand.

228. Other limitations include: (1) certain rights for libraries and archives; (2) right an owner of a particular copy of a phonerecord can transfer without being an infringer; (3) performance or display of a work for teaching religious, or chartable purposes; (4) secondary transmissions; and even (5) ephemeral recordings, and communication of a work in an “establishment” so long as the space is fewer than 2,000 gross square feet! 17 U.S.C. §§ 109, 110, 111, 112. This list, of course, is a gross simplification of the law pertaining to these exemptions as the law in the area of exemptions is almost metaphysical; it will not be covered here.

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The fact that it occurs on the Internet does not change the basic analysis. This is an example of “plain vanilla” copyright infringement. There is no exception for this type of copying. Interestingly however, the “look and feel” of the famous site is not protected by copyright. To the extent it is protected at all, it is likely to be a creature of trade dress.229 The famous brand owner may be able to obtain statutory damages in the event the text or photographs (usually the photographs) were registered prior to the infringement. 17 U.S.C. § 504(c). Statutory damages can range from an award of $750 to $150,000 per work willfully infringed. Id. As the famous brand owner is not in the business of selling photographs, it is unlikely to prove actual damages; thus, the statutory award becomes very important. This is why many copyright owners in the United States still register their works with the Copyright Office. Works such as movies, music, and software are routinely registered for this reason. A registration number and a claim of statutory damages can be very effective in a cease-and-desist letter, another reason to register prior to infringement. The copying in the second scenario of the computer code is also copyright infringement230 because computer applications are protected as text under the copyright statute. In this instance, there are two instances of copyright violation; copying and distribution by the anonymous takers. However, the auction site itself is likely to be shielded from liability under the safe harbor exception created by the DMCA.231 The third scenario regarding the financial analysis also constitutes copying; however, there may be a fair use defense as the amount of the taking is

229. Darden v. Peters, 402 F. Supp. 2d 638 (E.D.N.C. 2005) (aff ’d by Darden v. 3Peters, 488 F.3d 277 (4th Cir. N.C. 2007)). A copyright examiner denied registration to the Web site appraiser.com on the grounds that “protection for the overall format of a web page is inconsistent with copyrightability.” The court agreed that the Copyright Office had ample factual and legal support for its conclusion that the Web site arrangement lacked any degree of creativity, and correctly applied controlling precedent on the copyrightability of compilations. In the case of Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1244 (W.D. Wash. 2007) the plaintiff claimed that ice.com infringed Blue Nile’s trade dress with respect to its “diamond search” page on the Web site bluenile.com. The page provides a means for searching for diamonds among Blue Nile’s inventory. The layout has four sliding buttons to search by price, weight, carat, cut, color, and clarity, among other elements. The defendant moved to dismiss Blue Nile’s trade dress infringement claim, arguing that copyright law preempted it. The court denied defendant’s motion to dismiss plaintiff ’s trade dress infringement claim on the grounds that it was a novel legal claim that required further factual development before the court could make a conclusive disposition of the claim. 230. The layout of the chip is likely to find protection under a section of the Copyright Act that is rarely used, 17 U.S.C. Chapter 9, Protection of Semiconductor Chip Products. 231. Digital Millennium Copyright Act, discussed at §V(A)(4)(b).


limited and certain information (such as the indices) might not be protected at all. Fair use and the use of facts are discussed below. b. Fair Use of Copyrighted Material The use of a copyrighted work in connection with criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research is not an infringement of copyright. 17 U.S.C. § 107. These uses seem fairly clear, but on the Internet the line between a fair use and an infringement can be very blurry. Indeed, just because a use falls into one of the enumerated categories does not mean that it is not an infringement. In every instance the following four statutory factors must be considered: (1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes. Going back to a personal blog, if a large segment of someone else’s text is copied and posted with minimal comment, what is the character of the use in view of the fact that access to the blog and its content is not being sold? (2) The nature of the copyrighted work. This generally requires an analysis of where the infringed work falls along the spectrum of creativity. This spectrum is sometimes referred to as sliding between thin and thick copyright. As a general proposition, a factual scientific text may fall on the thin end of originality largely because it is full of those types of work that are not protected by copyright (namely, ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries).232 At the other end of the spectrum lies the thick copyright protection that covers works of fiction or original music. Looking at the third scenario (the financial institution’s analysis of the markets), reasonable people could differ on whether this is on the thin or thick end of the spectrum, depending on the character of the author’s creativity and style. (3) The amount and substantiality of the portion of the original taken in relation to the copyrighted work as a whole. In essence this means: how much of the work was used? Obviously, the greater the taking, the more likely it is to be found an infringement. In using the word substantiality, the statute recognizes that the quality as well as the quantity of the taking must be considered. It poses the question: how important was the portion taken in relation to the overall work?

232. As the statute says, these works are not protected irrespective of how they are described, explained, illustrated, or otherwise embodied. 17 U.S.C. § 102(b).

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The statute recognizes that a small amount of a work can be very important— indeed, it may be the only piece of the work of interest!233 However, a short piece taken from a long work might be a fair use in view of the balance of the other factors. Sometimes, the taking of the entire work is fair, as in the reproduction of photos in “thumbnails” for the purpose of locating information on the Internet.234 On the other hand, copying of entire news articles has been found to infringe—even when the purpose was for members to post relevant criticism about the article. The courts have ruled the verbatim copying of the entire article was more than what was necessary to forward the Web site’s critical purpose. 235 This raises a difficult question: when does copying cross the line of “more than necessary?”236 (4) the effect of the use upon the potential market for or value of the work. On its face this is largely self-explanatory; however, there are many ways to slice this factor.237 Many fair use decisions recite that this factor should not be given any more weight than the others. It is the author’s impression, however, that this factor almost always predicts the outcome of the case. 238

233. Harper & Row, Publishers Inc. v. Nation Enter., 471 U.S. 539, 565–66 (1985). In this dispute the Nation used a portion of President Ford’s unpublished memoir—namely, the portion about his pardoning of President Nixon. The taking amounted to only 0.15 percent of the total, yet the Supreme Court recognized that it amounted to “essentially the heart of the book.” 234. In Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2003), the court assessed whether “thumbnail images” (of the type commonly found on Google images) qualified as a fair use even though the entire photo was reproduced. The decision provides an excellent analysis of each fair use factor and the difficulties in assessing fair use when the rights of creators intersect with the functioning of the Internet. Initially the Ninth Circuit held in favor of Arriba Soft, finding that the image search engine’s use of thumbnail images was a fair use—but, the opening of a new window to display the image (a technique known as in-line linking or framing) was an infringement of the display right. This ruling seriously threatened the ability to link on the Internet. The court withdrew its first opinion and lodged a second opinion that left the fair use ruling intact—but withdrew the portion of the opinion dealing with in-line linking and the public display right. See also, Perfect 10, Inc. v. Amazon, Inc., 487 F.3d 701 (9th Cir. 2003). This latter case was criticized by Judge Walker in his dissenting opinion in In re Literary Works in Elec. Databases Copyright Litig., 509 F. 3d 116 (2d Cir 2007). The Perfect 10 ruling was followed by the influential Eastern District of Virginia in A.V. v. iParadigms, 2008 U.S. Dist. LEXIS 19715 (E.D.Va. Mar. 11, 2008). 235. Los Angeles Times v. Free Republic, 54 U.S.P.Q.2d 1453(C.D.Cal. 2000). 236. Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981)(“the fact that the defendants used more than was necessary to accomplish the desired effect does not foreclose a finding of fair use).” 237. Nimmer on Copyright devotes 36 pages of detailed analysis to this one factor! 238. Indeed, the Supreme Court in Harper & Row noted this factor “is undoubtedly the single most important element of fair use.” 471 U.S. at 566.


Turning to our third scenario—the taking of the financial analysis—fair use is bound to be raised as defense. So, let us look at each factor in connection with the facts of the scenario. Factor one, the purpose and character of the use, clearly weighs against the competitor: although not the whole piece, the text is being used for the same purpose as the original—namely to provide analysis to investors in the market. The competitor is not commenting on or transforming the verbatim text. The author feels that the second factor, the nature of the copyrighted work, also weighs in favor of the copyright owner. Although the analysis deals with facts, figures, and stock quotes, it is not devoid of creativity, and as one court put it: “originality merely requires independent creation by the author and just a scintilla of creativity.”239 Even market analysis is likely to cross this threshold. The third factor, the amount and substantiality of the taking, at first glance might weigh in favor of the competitor as the taking is limited to a paragraph or so. However, the competitor routinely takes the key paragraphs. This is likely to undermine the copyright owner’s market—particularly if licensees become aware of the leak. This leads to the final factor, economic impact, which clearly weighs in favor of the financial institution as damage in the marketplace is already occurring through subscribers asking to cancel subscriptions. The taking of the index number presents a slightly different problem as these numbers might not be protected by copyright at all (as discussed below). c. Copyright, Facts, and “Hot News” The taking of facts and similar types of content seems to be rampant on the Internet. This becomes a problem when the client’s main revenue comes from the sale of such facts, as in Scenario Three. Fundamentally, facts are not protected by copyright under U.S. law.240 Compilations of facts are copyrightable, but the protection only extends to

239. Luck’s Music Library, Inc. v. Ashcroft, 321 F.Supp. 2d. 107, 118 (D.D.C. 2004). For a case in which the court found inadequate creativity in a short software program, see Lexmark Int’l, Inc. v. Static Control Components, Inc. 387 F.3d. 522, 550 (6th Cir. 2005)(In noting that the cited cases did not provide authority for the plaintiff ’s proposition that its Toner Loading Program possessed sufficient creativity, the Sixth Circuit said: “Neither do the cited cases support the district court’s initial frame of reference. [Those cases] involved copies of Apple’s operating system program—a program whose size and complexity is to the Toner Loading Program what the Sears Tower is to a lamppost.” at 534.) 240. Other countries, particularly in the European Union, have database protection laws that specifically protect facts as they are gathered and compiled in databases. The United States does not have similar protections; rather, databases are protected generally by a combination approach of contract and copyright law (for compilations) and by the common-law tort of misappropriation.

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the creative aspects of the compilation, meaning the selection and arrangement of the facts. For instance, phone books are not copyrightable because there is no originality exercised in the arrangement of phone numbers in alphabetical order.241 Two cases have the most bearing on the situation described in the scenario: CCC Information. Services, Inc. v. MacLean Hunter Market Reports242 and Financial Information, Inc. v. Moody’s Investors Services., Inc.243 In CCC, the CCC sought a declaratory judgment regarding its use of the used car valuations published in MacLean’s Red Book. The court found that the selection and arrangement of the data in MacLean’s Red Book displayed sufficient originality to establish copyright protection. Specifically, the MacLean editors showed originality through their dividing the car market into geographical regions, choosing which factors to include in a car’s valuation, selecting the number of years’ models included in the compilation, and adjusting for mileage in 5,000-mile increments (rather than some other increment).244 By contrast, in Financial Information, the court found that Financial Information, Inc. (FII) did not hold a copyright in its compilation of bond facts. FII produced Daily Bond Cards that reported information on all municipal bonds the issuer had elected to redeem or call. The cards contained five basic facts about the bonds: name of the issuer, description of the bond, redemption date, redemption agent, and redemption price. FII alleged that Moody’s Investor Services, Inc. (Moody’s) infringed its copyrights in the cards by copying FII’s bond data and reproducing the data in its Municipal and Government News Reports service. The court found the cards were not copyrightable because the FII staff simply filled the five facts on each card based on information published in public records. Therefore, there was no originality in the compilation of the data.245 Even though the data itself might not be protected by copyright, it still might be protected under the “hot news” doctrine. This is a type of tort, namely misappropriation, that is governed by state laws. The Second Circuit’s analysis is instructive because the court outlined factors to consider when assessing whether a particular use of another’s data amounts to misappropriation (at least under New York law): (1) the plaintiff generates or collects information at some cost or expense; (2) the value of the information is highly time sensitive; (3) the defendant’s use of the information constitutes free riding on the plaintiff’s costly efforts to generate or collect it; (4) the defendant’s use of the information is in direct competition with

241. 242. 243. 244. 245.

Feist Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340 (1991). 44 F.3d 61 (2d Cir. 1994). 808 F.2d 204 (2d Cir. 1986). CCC Information Services, 44 F.3d at 67. Fin. Info., 808 F.2d at 205–08.


a product or service offered by the plaintiff; and (5) the ability of other parties to free ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.246 The Supreme Court of Illinois has also ruled on a misappropriation in a case that is instructive with respect to the scenario. In Dow Jones & Company, Inc. (Dow Jones) sued the Chicago Board of Trade (CBT) for misappropriation for using the Dow Jones averages to create its proposed commodities futures index.247 The CBT had actually cut and pasted the Dow Jones averages from the Wall Street Journal into its proposal for the Commodities Future Trading Commission.248 The court held that CBT’s actions constituted misappropriation even though the two companies were not in direct competition. It based its decision on the harm to Dow (loss of licensing revenue) and the desire to spur the creation of new indexes “specifically designed for the purpose of hedging against the ‘systematic’ risk present in the stock market.”249 d. There Are No Trade Secrets on the Internet250 Finally, we turn back to the second scenario, the theft of the chip layout and computer code. The chip manufacturer is not likely to be that concerned with the copyright aspects of this potential disaster. After all, the creative aspect of the code is not likely to be as valuable as the secret information that can be derived from the code and expressed differently in a competitive product. Trade secret law in the United States is mainly a creature of commercial ethics. The broadly stated policy is to protect secret, commercially valuable information outside of patent and copyright law because this supports the maintenance of commercial ethics.251 The current body of law has been cobbled together from principles of contract, employer-employee relationships, fiduciary obligations, and trusts. As a result of this uneven body of law, the National Conference of Commissioners on Uniform State Laws adopted the Uniform Trade Secrets Act (UTSA) in 1979. Why is this important? Because trade secrets are not a type of intellectual property right. The authority for patents and copyright comes directly from the U.S. constitution, whereas, trade secrets are merely commercial information that gains value from “being secret.”

246. 247. 248. 249. 250.

NBA v. Motorola, Inc., 101 F.3d 841, 852 (2d Cir. 1997). Board of Trade v. Dow Jones & Co., 98 Ill. 2d 109 (S.Ct. Ill. 1983). Id. at 113–15. Id. at 122. See David Quinto & Stuart Singer, Trade Secrets (2009) for a full discussion of the laws pertaining to trade secrets. 251. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974).

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Because it is not a right, the courts treat protection of trade secrets accordingly. In 1974, the U.S. Supreme Court was clear that trade secret law “does not offer protection against discovery by fair and honest means, such as by independent invention, accidental disclosure or by so-called reverseengineering, that is by starting with the known product and working backward to divine the process which aided in its development or manufacture.”252 The majority of states have derived laws from the USTA model253 that defines a trade secret as: [I] Information, including a formula, pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.

In the second scenario, an employee accidentally exposed confidential files in a shared music file. Anonymous persons who happened upon this information took the files and presumably posted the confidential information for sale on an auction site. The trade secret owner filed for a temporary restraining order and preliminary injunction. The key question the court must decide is whether the layout and source code files are a trade secret despite their accessibility online. In our scenario— and in the courts as a whole, the entire issue boils down to two phrases: “not generally known” and not “readily ascertainable by proper means.”254 Should the confidential information be presumed to be generally known by one or more appropriate persons due to the multiple anonymous downloads? Does sharing the file on a peer-to-peer network where music is normally kept mean that the file is readily ascertainable by proper means? Who has the burden to show whether the information is generally known or readily ascertainable or not? In a well-known case involving the publication of Scientology secrets, the court stated, “Once a trade secret is posted on the Internet, it is effectively

252. Kewanee Oil, 416 U.S. at 476. 253. Massachusetts’s protection is provided by statutes that are not based on the USTA at all. North Carolina’s protections are loosely based on the USTA. Three states (New York, New Jersey, and Texas) do not have statutes at all, instead relying on common law principles as stated in Restatement (First) of Torts (1939) and Restatement (Third) of Torts (1995). In addition to the UTSA, there is a federal law criminalizing theft of trade secrets called the Economic Espionage Act of 1996, 18 U.S.C. § 1832. 254. The analysis in the article Saving Trade Secret Disclosures on the Internet through Sequential Preservation, B.C. Intell. Prop. & Tech. F. 091101 is particularly useful as a guide.


part of the public domain, impossible to retrieve.” Religious Technology Center. v. Lerma, 908 F. Supp. 1362, 1368 (E.D. Va. 1995). Other courts have also considered the circumstances surrounding such postings.255 As a general proposition, information posted on the Internet is widely available. The vast majority of persons may not know about it, but nonetheless, it is there. This is the gating issue at which Internet-based trade secret disputes are likely to fall. This is another reason the copyright claim is the more attractive—it is faster and more likely to succeed. Nonetheless, the scenario raises a further question, namely whether the efforts to maintain secrecy were reasonable considering the inadvertent availability online. The UTSA defines misappropriation as: (i) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or (ii) disclosure or use of a trade secret of another without express or implied consent by a person who (a) used improper means to acquire knowledge of the trade secret; or (b) at the time of disclosure or use knew or had reason to know that his knowledge of the trade secret was (I) derived from or through a person who has utilized improper means to acquire it; (II) acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or (III) derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or (c) before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake.

In this scenario, does the auction seller know or have reason to know that the trade secret was acquired by improper means—that is, are the confidentiality labels and unusual circumstances of the disclosure sufficient? Does the use of a peer-to-peer network mainly used for sharing copyrighted music create a presumption that other files on the network are available improperly? The case of Cross Media Marketing Corp. v. Nixon, 06 Civ. 4228 (MBM) (S.D.N.Y., Aug. 11, 2006), provides a real example with some discussion of the investigation into the identity of an anonymous person who attempts to auction a trade secret online.

255. See Religious Techn. Ctr. v. F.A.C.T.Net, 901 F. Supp. 1519 (D. Colo. 1995); Religious Tech. Ctr. v. Netcom On-Line Communication Servs., Inc., 923 F. Supp. 1231 (N.D. Cal. 1995); DVD Copy Control Ass’n v. Bunner, 10 Cal. Rptr. 3d 185 (Cal. Ct. App. 2004) (holding that there was substantial evidence that the trade secret had been so widely disseminated online by the time an injunction was sought that it had lost its trade secret status).

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D. Counterfeiting 1. Scenario A client, a Fortune 1000 pharmaceutical company, discovers a network of online “pharmacies” purporting to sell the client’s famous brand name pharmaceutical. The product is counterfeit. The client wants the network of related pharmacies to stop selling the counterfeit product. Further, the client wants information about other potential threats to the brand name. Globalization and the Internet have radically transformed the threats of product counterfeiting. As major brand owners have entered more diverse markets, opportunities for counterfeiting have multiplied. Meanwhile, the Internet has afforded manufacturers, distributors, and retailers of these counterfeited products a new paradigm for international trade: virtual, global marketplaces where they can distribute both wholesale and retail quantities of such product to the U.S. and other developed markets with seeming anonymity. When it comes to addressing the counterfeiting problem, the legal professional faces many challenges, including finding companies that are actually infringing on the brand and identifying current or emerging trends in order to implement adequate reactive and proactive solutions. It is critical to monitor online sources for counterfeit and questionable products. This chapter will first provide some practical guidance about how to investigate and, hopefully, preempt counterfeiting.256

Practice Tip 1 As with all areas of Internet Crime, the principle of “follow the money” is particularly important when tracing counterfeiters and those who provide the materials to manufacture counterfeits. Once a company is identified as a potential threat, it is of further value to understand the extent of that company’s operation (including: Who are the real operators? How much product are they selling? Where are they located? What else are they selling? What other entities are they related to?) to really determine whether they should be further pursued.

256. For an excellent discussion of problems and the law associated with gray markets, read David R. Sugden, Gray Markets (2009).

Counterfeiting

2. How to Investigate Important online sources to monitor are Trade Bulletin Boards (TBBs).

Practice Tip 2 Here is a list of marketplaces commonly used by the counterfeit community. An updated list can be found at eCrimetools.com: www.alibaba.com www.aaaoe.com www.ec21.com www.ecrobot.com www.ecplaza.net www.made-in-china.com www.ectrade.com www.importers.com www.fuzing.com www.worldbid.com

TBBs are online business-to-business portals that provide a window into the Internet wholesale market. Hundreds of online TBBs carry uncountable dollars in trade offers annually. These boards are heavily used by developing market suppliers (a combination of manufacturers and pure exporters often in the East) to locate smaller, secondary market wholesalers or retailers in developed markets for anything from Viagra to Gucci. Consequently, the TBBs become a focal point for marginal or outright illegal commerce, such as trade in counterfeit or unapproved products that eventually reach the consumer. In fact, many of the questionable Internet pharmacies that have caught the attention of the pharmaceutical industry in recent years have sourced their products via TBBs. a. A Model of a Counterfeiting Network—Pharmaceuticals Online pharmacies (and other types of counterfeiters) often operate affiliate networks of varying degrees of complexity—some even offering Web site

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design and hosting, only requiring affiliate members to drive traffic to their respective affiliate sites. A typical scenario looks like this: Intermediary Affiliate Manufacturer

Pharmacy

Affiliate Affiliate

Consumer

The pharmacy processes the consumer’s request by submitting the order to a manufacturer or intermediary, who then ships the product back to the pharmacy or to an intermediary before it reaches the consumer. Sometimes, the “pharmacy” never handles the product, which instead is sent to the consumer directly from the manufacturer or intermediary using a drop-shipping service. Depending on the investigation target—affiliate, intermediary, pharmacy, or manufacturer—the investigative approach may differ. Investigating affiliates and the root pharmacy will likely require more traditional Web site investigations. Intermediaries and manufacturers may require undercover purchases or investigations via sources such as TBBs.

Practice Tip 3 Here is some actual language used in communications with drop shippers. This gives you a flavor of the type of communications that should cause suspicion: Dear [NAME REMOVED], Thanks for your response. We are already working with about 5 American online pharmacies. We are getting all our supplies of generic medicines from India itself. If you need any more clarification please feel free to get in touch with the undersigned. Regards [NAME REMOVED] For [NAME REMOVED] Enterprises ==================================

Counterfeiting

Dear [NAME REMOVED], Thanks for your response. We receive all our orders through e-mail. We also process orders online. We accept online payments through credit card and debit card. We also accept wire transfer. We process all the orders within 2–3 days. We don’t have a minimum or maximum order limit. How many orders do you generate every week? If you need any more clarification please feel free to get in touch with us. Best Regards [NAME REMOVED] ================================== Dear mr. [NAME REMOVED], thanks for your querry we always welcomes for these services. As per your querry we are helping to a lot of pharmacies of US & CANADA & GERMANY, one of our most important buyer from US is [WEBSITE DOMAIN REMOVED].net for them we are a service provider since a long as our services we have surpass a record of supply. apart from this we are ensuring for guarrenteed delivery, hassel free custom, discreat packaging, no prescription required and all that with taking care of affordability too. so be with us for a better and long term business dealings. As our philosphy is “TO SERVE THE MANKIND IN A BETTER WAY “ and we believe in long term relationship rather than one time dealing. Now if you are interested then plz mail us directely. we will provide all the medicines one good thing is this that we are mainly dealing with cardiac &diabetic products as which you have asked for PLAVIX, LIPITOR, ZOCOR, ACTOS, AMARYL, GLUCOPHASE,ALTRACE,ETC. for your refferences harewith we are subbmitting a price list along with this mail, we genarally shipped by Registered airmail which takes almost 7 to 10 working days at the cost of $10.00 per packet, where as other one is by speed post takes 5 to 7 working days at the cost of $20.00 per packet, but here you can check the location of the packets your own at any time. so now if you are interested than plz mail us at the earliest thanks [NAME REMOVED]

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The Web site itself offers some opportunities to identify the real operators or understand the scope of the operation. By using various techniques to develop different types of information, you may be able to create a useful profile of the Web site’s operation. These are the essential things to look for on the Web site. • Redirects—The Web site may redirect to another Web site, which may be indicative of an affiliate network. This is often employed by pharmaceutical spammers. • Payment processing—The Web site may employ distinct payment processing options, which may provide further identifying details on who receives payment. • Copyrights/Company names—Copyright information and Terms of Use pages may provide additional company names and enable you to connect potentially related Web sites that reference a common company name. Company names can be checked against corporate records. • Phone numbers—Particularly common with pharmacy sites, telephone numbers may enable you to connect potentially related Web sites that share a common number. • E-mail addresses—In addition to enabling you to connect potentially related Web sites sharing common e-mail addresses, an e-mail address itself may provide you with another domain to investigate. Of course the e-mail address is also a means of contacting the Web site operator or subscribing to newsletters associated with the Web site. • Addresses—Though easily fabricated, addresses may provide a potential brick-and- mortar connection. • Frames—The use of frames in a Web site is sometimes an indicator of affiliate programs; as a section of the site may draw its content from another Web site, this may provide you another domain to investigate. • Source code—The source code of a Web site may contain hidden gems such as additional domains for investigation. Source code can also be used to compare different Web sites to evaluate potential similarities in design, potentially a sign of having common authors. b. Consider Registration and Hosting Registration and hosting information are key indicators of a Web site operator’s possible location and identity. However, as with many things on the Internet, registration and hosting information can be incomplete, unavailable, or simply false. The key therefore is to develop or make sense of the available information. Here are important considerations for identifying and evaluating information. • WHOIS—A WHOIS is a protocol used to query specific databases and registrars to determine the owner of a domain or IP address. The results

Counterfeiting

provide the registration summary and hosting information for a domain. This is a “must do” for any Web site you are investigating. The registration record, or WHOIS record, provides the registrant, administrative, technical, and billing contact for a domain or IP address. Even when some elements of a registration record are incorrect or unavailable, other elements may provide related parties to investigate. • IP address—Any computer or other device participating in the Internet is assigned an Internet Protocol address; for example, 65.99.223.154 is the IP address on which the Web site www.icginc.com is currently hosted. The canonical name, or host name of the machine that actually hosts the Web site, may also provide additional clues. Though not necessarily related to the owner of the Web site, the hosting provider may offer opportunities to identify and approach a legitimate entity with a business relationship to the Web site operator. In some instances, the IP address may also provide clues as to related Web sites. c. More Tools and Tips Cached or archived versions of the Web site or domain registration records often provide additional insight into the true operator or scope of operations for a particular site. For example, it is not uncommon to be able to identify the owner of an anonymously registered Web site who used real contact information prior to transferring registration to an anonymous registration service. As no search engine actually covers the entire Internet, it is critical to use multiple engines when conducting searches for unique terms such as names of businesses or business owners. In addition, many search engines provide advanced features beyond a simple keyword search. For example, it may be possible to identify old versions of a particular Web site, other Web sites that link to your target Web site, other pages on your target Web site no longer linkable through the main page, etc. Because it is so easy to spoof (fabricate) information on the Internet, it is valuable to identify independent entities providing services to the target. Such entities (including Internet service providers, e-mail providers, registrars, and hosting companies) may be able to turn over valuable information through the power of a subpoena. Valuable information could include: • • • •

IP addresses used to set up/modify and access a particular account. Contact details for the account holder Payment information for the account holder Subaccounts or alternate accounts for the account holder

Each step of an investigation requires the use of online tools and databases. In some instances, the investigation is so broad and complicated that it

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is useful to use an automated service to conduct part of the investigation and process all of the data for you. Practice Tip 4 There are very few services that offer a fully automated investigation service. In fact, at this time, the author knows of only one: the service available at ithreat.com. If you are going to conduct an investigation yourself, the following sites offer tools that you can use yourself: www.ecrimetools.com www.archive.org www.alexa.org www.whois.sc www.centralops.net www.ip2location.com www.dnsstuff.com www.dnb.com www.zoominfo.com www.technorati.com www.freeality.com www.namedroppers.com www.hoovers.com www.spoke.com www.zabasearch.com www.linkedin.com siteexplorer.search.yahoo.com openaccess.dialog.com

CHAP T ER

5 Freedom of Expression and the Problem of Anonymity People say believe half of what you see, Son, and none of what you hear. I can’t help being confused If it’s true, please tell me dear? “I Heard It Through the Grapevine” —Marvin Gaye1

A. Internet Service Provider Liability

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1. Scenarios

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3. The Law

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a. History of ISP Liability

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b. Communication Decency Act, Section 230

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(i) Broad Immunity for ISPs

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(ii) Exceptions to Broad ISP Immunity

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4. Internet Service Providers and Intellectual Property

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a. Pre-Digital Millennium Copyright Act Liability

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b. The Digital Millennium Copyright Act

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c. ISP Liability under the DMCA: Cases

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5. Internet Service Providers and the Fourth Amendment

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6. Conclusion

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B. Defamation

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1. Scenario

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1. Lyrics by Norman Whitfield.

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Chapter 5 Freedom of Expression and the Problem of Anonymity 3. The Law

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a. Publication v. Distribution

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b. Expedited Discovery

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c. Obtaining a Subpoena

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4. Strategy C. Spam

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1. Scenario

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3. The Law

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a. Defining Spam

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b. Private Combat

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c. Legal Combat

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(i)

State Legislative Efforts

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(ii) Federal Law

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(iii) Constitutional Objections to CAN-SPAM

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(iv) Applying CAN-SPAM in Federal Court

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4. Prosecution Options Available in the European Union

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a. Obtaining Information, Help, and/or Directive

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b. Remedies Available in the European Union

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c. Implementation of the E-Privacy Directive

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d. What Can Be Gained by Suing a Spammer in the European Union?

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e. Conclusion

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5. Strategies for Resolving the Scenario

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Internet Service Provider Liability 159

A. Internet Service Provider Liability At the most basic level, an Internet Service Provider (ISP) provides end users (such as you) with a means to access the Internet. Although it may feel like you are simply accessing the Internet directly, you are not. The end user’s first point of contact with the online world is with an ISP’s network of servers. The ISP identifies all of a person’s instructions and interaction with the Internet with an IP address. Then, the data flows through the ISP’s network for distribution elsewhere. The flip side of an ISP’s role is that it hosts Web sites on dedicated servers within the ISP’s network. As an example, ecrimetools.com is hosted by XO Communications, Inc. This ISP is a full service communications provider, offering data and Internet services among others. Why is this important? ISPs possess a huge amount of data about end users, including account information, where account holders visit on the Internet, amount of data distributed, amount of traffic a hosted Web site receives (along with where that traffic comes from), and IP address linked with certain postings or accounts on a Web site. Everything goes through an ISP. Accordingly, ISPs are true middlemen. When disputes arise, the ISP tends to be in the middle whether the receiving end involves an informal complaint, a formal legal complaint, or a subpoena for information. Understanding the ISP’s role in any investigation is crucial. An ISP can be friend or foe—and the legal professional needs to be able to distinguish between them. Sometimes an ISP might be liable for a direct claim. In many other instances, however, the ISP will be immune from any claims, but still prove to be very helpful because of the duties imposed by law on it to maintain its immunity. In rare instances, an ISP might have immunity from a claim, but because of failure to comply with the statutory provisions of the safe harbor, the ISP might slip into direct liability. This chapter will present various scenarios involving ISPs. After the scenarios, there are instructions on how to get the information you need to determine if the ISP is a friend or foe. The case law and statutes impacting ISP liability have evolved drastically over time. It is necessary to understand the high-level issues because to some extent, we may be going backwards with the advent of ISPs that are more of a hybrid than previously. Section two begins with a history of ISP liability. This chapter then discusses the current nature of direct and indirect ISP liability. Finally, you will learn how to obtain help or information from an ISP.

1. Scenarios Scenario 1 During the 2008 presidential election, a message was posted on an AOL bulletin board advertising the sale of offensive, racist T-shirts criticizing the

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candidacy of Barack Obama. The advertisement contained contact information for those interested in purchasing the T-shirts that gave the e-mail address of Jacob Zahn, a registered Democrat who had no connection to the advertisement and no role in its placement on the bulletin board. Zahn began receiving abusive and threatening e-mails from those offended by the message. Zahn thought of changing his e-mail address, but he needed the listed address to receive orders for his small catering business in Boston, MA. After contacting AOL to complain that the posting should be removed, Zahn grew more and more concerned as weeks passed and the e-mails kept coming. Then, to make matters worse, a local talk show host mentioned the posting on his radio show and urged listeners to e-mail Zahn. Following the radio show, Zahn began receiving death threats. Zahn decided to file a negligence suit against AOL, alleging that it had unreasonably delayed removing the defamatory messages and had failed to post a retraction. Scenario 2 (b) In 2002, Girls Girls Girls (a producer of adult photographs) became aware that its copyrighted images were being posted online in chat rooms and on a variety of Web pages housed by Go! Online, an Internet service provider. I.M. Shaydee, the director of Girls Girls Girls contacted Go! to notify it of the copyright violations taking place and urged them to remove the content. Shaydee neglected to mention in the letter what specific images should be removed and cited only the Web pages and newsgroups posting the photographs. Go! Online replied that it would be happy to remove the photos in question, but needed more information before it could proceed. Angry at the delay and at what it perceived as Go! Online’s foot-dragging, Shaydee decided to file a lawsuit.

2. How to Investigate In the first scenario it is obvious the ISP is AOL, so no investigation is needed to determine that fact. However, other aspects of AOL need to be investigated. First, search for the ISP’s terms and conditions of service. There is a very good chance that the terms of service prohibit the type of defamation occurring in the first scenario. In the case of AOL, the terms of service are very clear, in that any user can be terminated and any content removed if there is any conduct that: “ . . . is unlawful, threatening, abusive, harassing, defamatory, libelous, deceptive, fraudulent, invasive of another’s privacy, tortuous . . . encourages conduct that would constitute a criminal offense, or that gives rise to civil liability . . .”

Most ISPs have similar language in their terms of use. They usually also contain a clause prohibiting any type of intellectual property infringement.


Many claims can be solved by asking the ISP to terminate the user and remove the offending material pursuant to the ISP’s own terms of service. It is not always obvious who to contact. For example, a letter to the general counsel may go unread. A better approach is to look up the registered agent the ISP has designated as the person to receive copyright notices. A list is maintained by the Copyright Office at www.copyright.gov under the heading Service Providers. Although a defamation claim is obviously not the same as a copyright claim, the designated agent is usually tasked with receiving all types of notices. Copy the general counsel on the request. At the same time, put the ISP on notice that it must keep a copy of all digital records related to the matter. Keep in mind that if an ISP does not enforce its own terms of service, it may start slipping into direct liability for failure to meet its own standards. A claim of direct liability and negligence may be needed to escalate the ISP’s problem resolution mechanism. However, many client problems do not originate on an ISP site. For example, a client’s much-anticipated novel about a boy wizard is appearing prerelease in forums dedicated to discussing these books. The Web site, boywizard. com, which offers the forums should be contacted. In the event the owner of boywizard.com does not respond, you should consider contacting the company providing server space (i.e. the ISP) to get help. As before, it is likely the ISP’s terms of service prohibit the posting of copyrighted material. The difference in this scenario is that the copyright owner will ask for access to the Web site to be “turned off” instead of identifying content to be removed. Most Web site owners do not want an error message to appear when a visitor wishes to access the Web site. This is a powerful incentive that often gets the attention of a recalcitrant Web site owner—and this strategy is certainly quicker and less expensive than seeking an injunction. To identify the ISP information, start with the domain name of the Web site. Input the domain name into a WHOIS search tool (discussed in detail at §II(D)(1)). The ISP will be identified in the registration record. You may need to go even further up the chain, particularly if the ISP itself is involved in the scam. This is often the case with spam domains and other types of scams. All most all ISPs rent IP address space from other ISPs up the chain. As an example, eCrimetools is hosted by Slicenet.com; it in turn obtains IP address space from XO Communications. The chain is determined by searching the IP address associated with the hosted site. In North America, the definitive database of all IP space is maintained by ARIN, which provides a WHOIS tool that searches IP addresses. Your particular IP address is likely to be included in a range of IP addresses owned by someone else. So, as another example, Oxford University Press’s Web site, OUP.com, is hosted on a server known as 213.225.144.157. These numbers can be input into any WHOIS tool that searches ARIN’s records. ARIN.net is the most obvious place to search these records, but there are

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other tool providers that also provide access to ARIN records. Use the WHOIS tool at ARIN.net to input the server’s IP address. The record shows that the number is within a range owned by RIPE. This is another regional Internet registry such as ARIN. RIPE is responsible for allocations within Europe, parts of the Middle East, and central Asia. RIPE.net offers a WHOIS tool to query its database. RIPE’s records show the IP address is within a netblock owned by a hosting facility in London, as follows: 213.225.144.0- 213.225.151.255 Netname: DIGEX-UK Descr: Digex UK London Web Hosting Facility LND30

Interestingly, the administrative contact for this record is identified as an employee of Verizon in Beltsville, MD! This is a good example of how much of the Internet can be traced to and through other jurisdictions.

Practice Tip 1 It is generally good practice to gather ISP information for each ISP at least two levels up the chain. This information may be immediately useful for the purposes of getting someone’s attention. It may also be useful for later in the investigation. Sometimes, especially when investigating frauds conducted through affiliate sites, a pattern of common ISPs will begin to emerge. Use of the principle of “follow the money” as to common ISPs often leads to the entity behind the particular scam.

3. The Law a. History of ISP Liability The earliest cases against ISPs contained evaluations whether one party can be liable for the statements of another. As this was new ground, the courts looked at the precedents established in publishing law that drew a distinction between a publisher and a mere distributor. The latter was usually not liable for statements made within a publication that it merely distributed. However, publishers often were held liable for statements made within a publication to the extent the publisher knew or had reason to know about the false information or infringing content. The earliest applications of these doctrines came to differing conclusions about whether an ISP was more like a publisher or a distributor. The key


element was whether the ISP had actual knowledge of the content of the statements. Cubby, Inc. v. CompuServe Inc., concerned CompuServe, an online computer service offering its subscribers access to over 150 “special interest forums . . . comprised of electronic bulletin boards, interactive online conferences and topical databases.”2 One of these forums (the Journalism Forum) focuses on the journalism industry; it contains Rumorville USA, a daily newsletter that “provides reports about broadcast journalism and journalists.”3 Plaintiffs Cubby Inc. and Robert Blanchard, the developers of Scuttlebutt (a computer database designed to electronically distribute news and gossip in the television news industry) claimed that Rumorville published false and defamatory statements, including that Scuttlebutt was “a new start-up scam.”4 CompuServe had no opportunity to review Rumorville’s contents before its publisher uploaded it to CompuServe’s computer banks. After being loaded onto these banks, the information on Rumorville became immediately available to CompuServe subscribers.5 The distinction between a publisher and a distributor played a key role in the outcome of the case. In a defamation action, a publisher may be held liable because “one who repeats or otherwise republishes a libel is subject to liability as if he had originally published it.”6 CompuServe argued that it had acted as a distributor, not a publisher of content, and to be liable as a distributor, it must know or have reason to know about the statements.7 The district court agreed, finding the online service was a distributor, not a publisher, and that the plaintiffs had failed to provide any evidence that CompuServe knew or had reason to know about the statements. The court likened CompuServe to other distributors, noting that it has “no more editorial control over such a publication than does a public library, book store, or newsstand” and it “would be no more feasible for CompuServe to examine every publication it carries for potentially defamatory statements than it would be for any other distributor to do so.”8 The holding in Cubby demonstrates not only the importance of the publisher/distributor distinction for ISPs, but also the court’s efforts to find an offline analogy for an ISP. In another early case, Stratton Oakmont v. Prodigy Services Co., plaintiffs sued Prodigy, a computer network with around two million subscribers who

2. 3. 4. 5. 6. 7. 8.

Cubby, Inc. v. Compuserve, Inc., 776 F. Supp. 135, 137 (S.D.N.Y. 1991) Id. Id. at 138. Id. at 137. Id. at 139 (quoting Cianci v. New York Times Pub. Co., 639 F.2d 54, 61 (2d Cir. 1980)). Id. at 139. Id. at 140.

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use electronic bulletin boards to communicate with one another.9 One of these bulletin boards (Money Talk) featured statements about Stratton Oakmont, including that its president committed criminal acts in relation to an initial public offering and that Stratton was a “cult of brokers who either lie for a living or get fired.”10 In contrast to CompuServe, Prodigy stated that it “exercised editorial control over the content of messages posted on its bulletin boards, thereby expressly differentiating itself from its competition and . . . likening itself to a newspaper.”11 The plaintiffs moved for summary judgment concerning (1) whether Prodigy could be considered a publisher, and (2) whether the board leader of Money Talk could be considered an agent of Prodigy.12 The court ruled for the plaintiffs on both issues, citing the distinction made above between Prodigy and CompuServe and noting that Prodigy provided its board leaders with guidelines that the leaders were required to enforce.13 As a result, the court concluded that Prodigy had taken on the role of a publisher, as it was more akin to a newspaper and “more than a passive receptacle or conduit for news, comment and advertising.”14 b. Communication Decency Act, Section 230 (i) Broad Immunity for ISPs The court’s ruling in Prodigy prompted Congressional action. In the Communication Decency Act of 1996 (CDA), Congress set forth a regulatory scheme for pornographic material on the Internet. In the landmark case Reno v. ACLU, most of the Act was declared unconstitutional soon after its passage. However, § 230 remains intact; it was not part of the original legislation, but was added by the Senate following the court’s decision in Prodigy.15 Section 230 states: “No provider or user of an interactive computer service shall be treated as a publisher or speaker of any information provided by another information content provider.”16 This section further provides a “good Samaritan provision,” indicating an ISP may not be held liable for: (a) any action taken in good faith to restrict access to or availability of material that the provider or user considers to be obscene, lewd, lascivious, filthy, excessively violent, harassing or otherwise objectionable, whether or not such

9. Stratton Oakmont v. Prodigy Serv. Co., Not Reported in N.Y.S.2d, 1995 N.Y. Misc LEXIS 229, 1995 WL 323710, 23 Media L. Rep. 1974 (N.Y. Sup. Ct. May 24, 1995). 10. Id. at 1. 11. Id. at 2. 12. Id. 13. Id. at 5. 14. Id. at 3, citing Miami Herald Publ’g Co. v. Tornillo, 418 U.S. 241, 258 (1974). 15. See Reno v. ACLU, 521 U.S. 844 (1997). 16. 47 U.S.C. § 230(c)(1).

Internet Service Provider Liability 165 material is constitutionally protected, or (b) any action taken to enable or make available to information content providers or others the technical means to restrict access to [such] material.17

The cases described below illustrate the scope of the protections provided for ISPs by the CDA. The facts from the first scenario given at the beginning of the chapter (Jacob Zahn and the racist Barack Obama T-shirt) were adapted from Zeran v. America Online, decided in 1997. After the Oklahoma City bombing, a message was posted on an AOL bulletin board advertising the sale of offensive T-shirts displaying tasteless slogans related to the tragedy.18 Persons interested in purchasing the shirts were instructed in the advertisement to call “Ken” at Zeran’s home number in Seattle.19 Zeran began receiving a high volume of threatening calls and death threats, but could not change his number because he ran a business out of his home.20 Zeran informed AOL of his predicament and was assured by a company representative that the posting would be removed. In the meantime, the posting appeared again and the calls intensified—by April 30, Zeran was receiving an offensive phone call every two minutes.21 A local radio station then received a copy of the posting and an announcer urged his listening audience to call the number featured. After the radio broadcast, Zeran received numerous death threats.22 Zeran then filed suit against AOL, seeking to hold the ISP liable for defamatory speech initiated by a third party. The district court found for AOL, noting that Congress had made a policy choice in § 230 “not to deter harmful online speech through the separate route of imposing tort liability on companies that serve as intermediaries for other parties’ potentially injurious messages.”23 Zeran argued that § 230 eliminated only publisher liability for ISPs and left distributor liability intact, but the court disagreed. Noting that “only one who publishes can be subject to this form of tort liability” and that AOL “falls squarely within the . . . definition of a publisher,” the court nevertheless found that as an ISP AOL should receive the full protection of § 230.24 The court minimized the importance of the difference between a publisher and distributor, noting that Zeran had attached “too much importance”

17. 18. 19. 20. 21. 22. 23. 24.

47 U.S.C. § 230(c)(2)(A)–(B). Zeran v. Am. Online, 129 F.3d 327, 329 (4th Cir. 1997). Id. Id. Id. Id. Id. at 330–31. Id. at 332.

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to the distinction.25 Many courts have followed the Zeran court’s broad conception of ISP immunity from liability.26 (ii) Exceptions to Broad ISP Immunity Other recent cases have denied ISPs the broad immunity found in § 230 based upon (1) the ISP’s role as a content creator; (2) the violation of state intellectual property laws, and (3) the failure of an ISP action to fall within the “Good Samaritan” provisions of § 230. However, ISP immunity under § 230 does not apply if the ISP creates the content in question. Section 230 defines an “information content provider” as “any person or entity that is responsible, in whole or in part, for the creation or development of information provided through the Internet or any other interactive computer service.”27 In Fair Housing Council of San Fernando Valley v. Roommates.com, defendant operated a Web site designed to match people renting out spare rooms with those looking for a place to live.28 To use the site, potential tenants had to create profiles, a process that required them to answer to a series of questions, including revealing their gender, sexual orientation, and their intent to bring children into the household.29 The Fair Housing Councils of the San Fernando Valley and San Diego sued in federal court, alleging that Roomate.com’s business practices violated the Fair Housing Act (FHA) by serving as a “housing broker doing online what it may not lawfully do off-line.”30 The Ninth Circuit considered application of § 230, but noted that an ISP can serve as both a service provider and a content provider. Although a Web site “may be immune from liability for some of the content it displays to the public,” it can be “subject to liability for other content.” 31 The court found that Roommate’s connection to the discriminatory filtering process was direct: Roommate designed the search and e-mail systems used to register subscribers based on sex and sexual orientation.32 Noting that Roommate’s

25. Id. 26. Ezra v. Am. Online, Inc., 206 F.3d 980 (10th Cir. 2000); Green v. Am Online, 318 F.3d 465 (3d Cir. 2003); Batzel v. Smith, 333 F.3d 1018 (9th Cir. 2003); Universal Commc’ns Sys., Inc. v. Lycos, 478 F.3d 413 (1st Cir. 2007). The Seventh Circuit has been more critical of the idea that § 230 creates full immunity for ISPs. See Doe v. GTE Corp., 347 F.3d 655 (7th Cir. 2003); Chicago Lawyers’ Comm. for Civil Rights Under Law v. Craigslist, Inc., 519 F.3d 666 (7th Cir. 2008). 27. 47 U.S.C. § 230(f)(3). 28. Fair Housing Council of San Fernando v. Roommates.com, 521 F.3d 1157, 1161 (9th Cir. 2008). 29. Id. 30. Id. at 1162. 31. Id. at 1162–63. 32. Id. at 1169.


action contrasted sharply with those in Prodigy, the court held that the CDA did not provide immunity for the content of Roomate’s Web site and e-mail newsletters.33 Practitioners should take note that while ISPs appear impenetrable when it comes to liability, content creation may serve as a key loophole. Another exception to ISP immunity under § 230 involves state intellectual property rights. In a New Hampshire state court action, Friendfinder Network, the operator of a Web site that hosted adult personal ads, featured an ad that identified the plaintiff under the screen name petra03755. The profile stated that she was a “40 year-old woman in the Upper Valley region of New Hampshire” who was seeking “Men or Women for Erotic Chat/E-mail/Phone Fantasies and Discreet Relationship.”34 Other information included in the profile included her biographical data, birth date, height, build, and hair color. Plaintiff, who had nothing to do with the creation of the profile, claimed the description “reasonably identified” her to people in her community as being petra03755.35 For months after plaintiff first complained to Friendfinder, the profile continued to appear. Plaintiff also claimed that a slightly modified profile continued to appear on other Web sites managed by the defendant as a “teaser,” and was visible on third-party Web sites and via a search engine.36 The plaintiff brought numerous claims against Friendfinder Network in state court, including a state law claim of a violation of the right of publicity. The defendant maintained that all the state law claims were barred by § 230 of the CDA and moved to dismiss. The court agreed as to all claims except the right of publicity one given the exclusion of intellectual property laws from § 230: “Nothing in this section shall be construed to limit or expand any law pertaining to intellectual property.”37 The court noted the provision included state intellectual property laws and could not be read to exempt only federal intellectual property laws.38 However, the Ninth Circuit had previously arrived at a different conclusion in Perfect 10 v. CCBill, LLC, finding the provision above exempts only federal intellectual property laws from the operation of § 230.39 The “Good Samaritan” provisions of § 230 states that an ISP may not be held liable for: (a) any action taken in good faith to restrict access to or availability of material that the provider or user considers to be obscene, lewd, lascivious, filthy, excessively violent, harassing or otherwise objectionable, whether or not such material is

33. 34. 35. 36. 37. 38. 39.

Id. at 1175. Doe v. Friendfinder Network, Inc., 540 F.Supp.2d 288, 292 (D.N.H. 2008). Id. Id. 47 U.S.C. § 230 (e)(2) 540 F.Supp.2d at 302. Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007).[Footnote added]

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Chapter 5 Freedom of Expression and the Problem of Anonymity constitutionally protected, or (b) any action taken to enable or make available to information content providers or others the technical means to restrict access to [such] material.40

When an ISP’s actions fall outside of these provisions, a plaintiff may be able to breach the protections of § 230. In National Numismatic Certification, LLC v. eBay, Inc., eBay initiated an effort to clean up its coins category by adopting a policy whereby sellers could label their coins “certified” only if they used one of four approved ratings services.41 Plaintiffs, a non-approved coin rating service, complained the e-mail sent to dealers and buyers created the inference that their coins were counterfeit.42 The court dismissed the case on other grounds; interestingly, the court refused to dismiss on the basis of eBay’s claim to “complete immunity” under the CDA for the “good faith” removal of “objectionable” content such as the sale of counterfeit items. Finding eBay’s construction of the word objectionable in § 230(c)(2) unpersuasive, the court paid close attention to the words preceding it: “obscene, lewd, lascivious, filthy, excessively violent and harassing.”43 The court noted that when a general term follows specific terms, courts “presume that the general term is limited by the preceding terms.”44 Roomate.com, Friendfinder, and eBay illustrate three exceptions to the near-impenetrable immunity provided to ISPs by § 230 of the CDA. Practitioners prosecuting or defending an ISP should take special note of (1) whether the ISP had any role creating the content in question, (2) whether state intellectual property claims could be made, and (3) whether the ISP falls outside of the language of the “Good Samaritan” provisions.

4. Internet Service Providers and Intellectual Property The Internet has eroded the power of content providers to effectively control the distribution of their copyrighted content. As thousands of copies of an individual song or movie move through cyberspace, content creators argue, “each of these copies represents an infringement for which the content provider should be paid.”45 In attempting to curb the spread of illegal copying online, content creators have decided to deter infringement by pursuing

40. 47 U.S.C. § 230 (c)(2)(A)–(B). 41. Nat. Numismatic Certification, LLC v. eBay, Inc., 2008 WL 2704404 (M.D. Fla. July 8, 2008). 42. Id. at 3. 43. Id. at 26, citing 47 U.S.C. § 230(c)(2). 44. Id., quoting Begay v. United States, 128 S. Ct. 1581, 1584–85 (2008). 45. Alfred C. Yen, Internet Service Provider Liability for Subscriber Copyright Infringement, Enterprise Liability, and the First Amendment, 88 Geo. L.J. 1833 (1999–2000).


individual infringers in court. Holding ISPs liable for the copyright-infringing activities of their subscribers serves as another means of protecting content online devised by copyright holders. Rights holders argue that holding these providers liable will force them to discourage infringement among their subscribers.46 However, Congress addressed the copyright infringement liability of ISPs in the Digital Millennium Copyright Act (DMCA), providing ISPs with safe harbors so long as policies that remove infringing material and that terminate subscribers who repeatedly infringe are adopted.47 a. Pre-Digital Millennium Copyright Act Liability Before the passage of the DMCA, ISP liability for copyright infringement hinged upon the ISP’s knowledge of the infringing activity as well as standards of direct, contributory, and vicarious liability. The three cases below are typical of pre-DMCA analysis of ISP liability. In Playboy v. Frena, Playboy brought suit against the operator of an online bulletin board, Techs Warehouse BBS, for copyright infringement, trademark infringement, and unfair competition after unauthorized copies of Playboy’s photographs were distributed through the board.48 Subscribers to BBS directories could look at the pictures featured and download “high quality computerized copies” of the photographs and store the images on their computer.49 Frena, the operator of BBS, did not upload the pictures himself (instead subscribers to his service uploaded and downloaded the photos) and claimed he was not aware uploads were taking place.50 In spite of his immediate take down of the copyrighted images and claim that he lacked any knowledge uploading had taken place, the court found that Frena could be held liable and that the detrimental market effects of such unauthorized uses negated a fair use defense.51 The court in Religious Technology Center v. Netcom Online Communications Services, Inc. discussed direct, contributory, and vicarious liability for ISPs. In this case, plaintiff held a copyright in the published and unpublished works of L. Ron Hubbard, the founder of the Church of Scientology.52 Defendant Dennis Erlich, a former minister of Scientology who had turned into a vocal critic of the Church, operated a Usenet newsgroup providing an “online forum for discussion and criticism of Scientology.”53 Erlich posted portions

46. 47. 48. 49. 50. 51. 52. 53.

Id. at 1836. Id. 1837. Playboy Enter., Inc. v. Frena, 839 F.Supp. 1552 (M.D. Fla. 1993). Id. at 1554. Id. Id. ar 1559. Religious Tech. Ctrr v. Netcom Online Commc’n Serv., 907 F. Supp. 1361 (N.D. Cal. 1995). Id. at 1365.

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of Hubbard’s works on his site, gaining access to the Internet through Thomas Klemesrud’s bulletin board system, support.com.54 Klemesrud’s bulletin board was not directly linked to the Internet, but gained access via Netcom, then one of the largest Internet access providers in the United States.55 Plaintiffs named Netcom as a codefendant in their lawsuit against Erlich on the copyright infringement claims. To establish direct infringement, Religious Technology Center had to prove (1) ownership of a valid copyright in the infringed work, and (2) “copying” by the defendant.56 Netcom moved for summary judgment, with the court ruling that the ISP could not be held directly liable for the copies made and stored on its servers. To hold otherwise, the court noted, would mean that “every single Usenet server in the worldwide link of computers transmitting Erlich’s message to every other computer” could be liable and “there is no need to construe the [Copyright] Act to make all of these parties infringers.”57 Under the standard for vicarious liability, a defendant is liable “where the defendant (1) has the right and ability to control the infringer’s acts and (2) receives a direct financial benefit from the infringement.”58 The court further held that Netcom could not be vicariously liable, but found there was a genuine issue of fact regarding Netcom’s ability to control Erlich’s acts, rejecting Netcom’s argument that it did not have such an ability “given the speed and volume of data that goes through the system.”59 The court indicated Netcom did not receive any direct financial benefit from the infringing activity, finding insufficient grounds for supporting the plaintiffs’ argument that the policy of not enforcing copyright violations attracted more subscribers to Netcom and thus resulted in a financial benefit.60 However, contributory liability may be established where the defendant “with knowledge of the infringing activity, induces, cause or materially contributes to the infringing conduct of another.”61 Knowledge thus serves as the key element in determining contributory liability. The court found that because Netcom was given notice of an infringement claim before Erlich had completed his infringing activity, there were issues of material fact regarding the contributory liability of Netcom that precluded summary judgment.62

54. 55. 56. 57. 58. 59. 60. 61. 62.

Id. at 1365–66. Id. at 1366. Id. at 1367. Id. at 1369–70. Id. at 1375 (quoting Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304, 306 (2d Cir. 1963)). Id. at 1376. Id. at 1377. Id. at 1373 (quoting Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971)). Id. at 1374.


In SEGA Enterprises v. MAPHIA, the district court followed Netcom but found that plaintiff had a likelihood of success with respect to both direct and contributory liability. Plaintiff SEGA, a major video-game manufacturer, brought suit against a computer bulletin board company and its operator for copyright infringement, trademark infringement, and unfair competition.63 Defendant Chad Sherman operated a bulletin board where copies of SEGA video games could be uploaded and downloaded by members.64 On the direct infringement claim, the court found Sherman was aware of and encouraged copyright violations, but SEGA had failed to show that Sherman directly “caused” the copying and thus could not be held liable.65 On the contributory infringement claim, the court sided with SEGA. SEGA was able to show both (1) Sherman’s knowledge of the infringing activity, and (2) Sherman’s encouragement of such infringing activity by “providing facilities, direction, knowledge” and seeking profits.66 Accordingly, the court granted SEGA a permanent injunction prohibiting further copying of SEGA games on Sherman’s bulletin board.67 Netcom and the other cases above made it relatively clear to ISPs what actions must be taken to avoid liability for copyright infringement. As long as an ISP “realizes no revenue from its subscribers’ behavior, it can safely avoid monitoring that behavior on a day-to-day basis.”68 However, if an ISP became aware of infringing activity on the part of its subscribers, it has a duty to investigate and possibly suspend the infringer’s access to the Internet.69 As a result of Netcom and other rulings, ISPs generally became more risk-averse. Congress enacted § 512 of the Digital Millennium Copyright Act to address such concerns and provide more protection for ISPs against claims of copyright infringement. b. The Digital Millennium Copyright Act The Digital Millennium Copyright Act (DMCA) provides that so long as an ISP meets certain statutory requirements, which are set forth in §§ 512(a)–(d), (f), and (g), it may avoid liability for copyright infringement. The DMCA defines an Internet service provider as: (A) an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of

63. 64. 65. 66. 67. 68. 69.

Sega Enter. Ltd. v. MAPHIA, 948 F.Supp. 923, 926 (N.D. Cal. 1996) Id. at 927. Id. at 932. Id. at 933. Id. at 941. Yen, 88 GEO. L.J. at 1880. Id.

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Chapter 5 Freedom of Expression and the Problem of Anonymity material of the user’s choosing, without modification to the content of the material as sent or received; (B) other than subsection (a), the term “service provider” means a provider of online services or network access.70

The table below summarizes the direct and vicarious/contributory infringement provisions found in § 512 of the DMCA: Liability

DMCA Provision

Direct infringement, § 512(a)

(a) Transitory Digital Network Communications. An ISP shall not be liable for infringement of copyright by reason of the provider’s transmitting, routing, or providing connections for, material through a system or network controlled or operated by or for the service provider, or by reason of the intermediate and transient storage of that material in the course of such transmitting, routing, or providing connections, if— (1) transmission of the material was initiated by or at the direction of a person other than the service provider; (2) transmission, routing, provision of connections, or storage is carried out through an automatic technical process without selection of the material by the ISP (3) the ISP does not select the recipients of the material except as an automatic response to the request of another person; (4) no copy of the material made by the ISP in the course of such intermediate or transient storage is maintained on the system or network and no such copy is maintained on the system or network for a longer period than is reasonably necessary for the transmission, routing, or provision of connections; and (5) the material is transmitted through the system or network without modification of its content.71

Vicarious/ Contributory Infringement § 512(c)(1)(A)–(C)

(c) Information Residing on Systems or Networks At Direction of Users.— (1) An ISP shall not be liable for monetary, or injunctive or other equitable relief, for infringement of copyright by reason of the storage

70. 17 U.S.C. § 512(k)(1)(A)–(B). 71. 17 U.S.C. § 512(a).

Internet Service Provider Liability 173 at the direction of a user of material that resides on a system or network controlled or operated by or for the ISP, if the ISP: (A) (i) does not have actual knowledge that the material or an activity using the material on the system or network is infringing; (ii) in the absence of such actual knowledge, is not aware of facts or circumstances from which infringing activity is apparent; or (iii) upon obtaining such knowledge or awareness, acts expeditiously to remove, or disable access to, the material; (B) does not receive a financial benefit directly attributable to the infringing activity, in a case in which the ISP has the right and ability to control such activity; and (C) upon notification of claimed infringement as described in paragraph (3), responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.72

Section 512(c) provides a “safe harbor” for ISPs to avoid vicarious or contributory liability for infringing acts on the part of subscribers, but the “assurance of non-liability applies largely in situations where ISPs face no liability in the first place.”73 In other words, the risk aversion of ISPs forces compliance with the safe harbor provisions provided by the DMCA to avoid liability that does not exist.74 ISPs may enjoy the safe harbor provisions cited above only if certain conditions are met. Section 512(c) states that the safe harbor provisions cited for vicarious or contributory liability are only available to those ISPs that have an “agent” in place, to whom formal complaints of copyright infringement may be submitted.75 Complaints submitted to such an agent must contain “substantially specified elements,” including: (i) A physical or electronic signature of a person authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.

72. 73. 74. 75.

17 U.S.C. § 512(c)(1)(A)–(C). Yen88 GEO L.J. at 1883. Id. 17 U.S.C. § 512(c)(2).

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(ii) Identification of the copyrighted work claimed to have been infringed, or, if multiple copyrighted works at a single online site are covered by a single notification, a representative list of such works at that site. (iii) Identification of the material that is claimed to be infringing or to be the subject of infringing activity and that is to be removed or access to which is to be disabled, and information reasonably sufficient to permit the service provider to locate the material. (iv) Information reasonably sufficient to permit the service provider to contact the complaining party, such as an address, telephone number, and, if available, an electronic mail address at which the complaining party may be contacted. (v) A statement that the complaining party has a good faith belief that use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law. (vi) A statement that the information in the notification is accurate, and under penalty of perjury, that the complaining party is authorized to act on behalf of the owner of an exclusive right that is allegedly infringed.76 Under § 512(i), limitations on liability established by this section shall apply to an ISP only if the ISP: (A) has adopted and reasonably implemented, and informs subscribers and account holders of the service provider’s system or network of, a policy that provides for the termination in appropriate circumstances of subscribers and account holders of the service provider’s system or network who are repeat infringers; and (B) accommodates and does not interfere with standard technical measures.77

A content provider writing a cease-and-desist letter should be aware that under § 512(f): Any person who knowingly materially misrepresents (1) that material or activity is infringing, or (2) that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer . . . or by a service provider, who is injured by such misrepresentation, as the result of relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.78

76. 17 U.S.C. § 512(c)(3)(A). 77. 17 U.S.C. § 512(i). 78. 17 U.S.C. § 512(f).


This provision will be discussed further below in relation to Online Policy Group v. Diebold Inc. These notice and take down provisions ensure that ISPs will err on the side of caution and remove material whenever a complaint from a content provider has been submitted to the ISP’s agent. Comparison of the provisions of the DMCA to the existing standards for direct, contributory, and vicarious liability discussed above reveals that the so-called safe harbors add only additional burdens to standards already created by the courts and provide little relief for ISPs.79 The passage of § 512 did, however, provide ISPs with more awareness of how knowledge of infringing activity may be shown (i.e., through the notice and take down procedures described above). Through these procedures, ISPs may have gained more burdens, but also better knowledge of how to avoid liability compared to that gleaned from case law alone. c. ISP Liability under the DMCA: Cases One of the first federal circuit court cases testing ISP liability under the DMCA, ALS Scan, Inc. v. RemarQ Communities, Inc., involves a fact scenario similar to Scenario 2 given at the beginning of this chapter. ALS Scan, a producer of adult photographs, became aware that its copyrighted images had been posted on newsgroups housed by the defendant ISP, RemarQ Communities.80 ALS Scan notified the defendant in a cease-and-desist letter, but failed to identify any specific copyrighted images, instead citing the newsgroups that had posted such images.81 RemarQ responded to the letter by refusing to comply, stating it “would eliminate individual infringing items from these newsgroups if ALS Scan had identified them with sufficient specificity.”82 The court agreed with ALS Scan that its letter did identify the copyrighted images with enough specificity to satisfy the notice and take down provisions of the DMCA, noting that ALS Scan had identified the sites posting the images, asserted that almost all images on these sites were copyrighted material, and referred RemarQ to a Web address that would confirm that all pictures featured belonged to ALS Scan.83 This decision in ALS Scan revealed that even where a copyright holder fails to provide details in a ceaseand-desist letter, it is in the best interest of an ISP to remove the content in question. However, removing content at the urging of a cease-and-desist letter can help an ISP avoid liability vis-à-vis a copyright holder, but may expose the

79. 80. 81. 82. 83.

Yen, 88 GEO. L.J. at 1885. ALS Scan v. RemarQ Communities, 239 F.3d 619, 620 (4th Cir. 2001). Id. at 621. Id. Id. at 625.

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ISP to liability from the party posting the content. This liability represents the other side of notice and take down: liability resulting from an ISP overzealously trying to avoid a copyright infringement suit from a content provider. In Online Policy Group v. Diebold, Diebold, a manufacturer of electronic voting machines, had circulated an internal e-mail revealing problems with its equipment.84 This e-mail was obtained by outside parties and posted online. Diebold, pursuant to the notice and take down procedures outlined in the DMCA, notified the relevant ISPs that the e-mail was subject to copyright, and requested the material be taken offline.85 The ISPs complied with the notice, but Online Policy Group (the party who posted the e-mail) sued the ISP and claimed that Diebold had violated § 512(f) of the DMCA.86 The district court held that Diebold had “knowingly misrepresented” its copyright interest, noting that the DMCA’s safe harbor provisions were designed by Congress to protect ISPs—not copyright holders—and were not to be considered “as a sword to suppress publication of embarrassing content rather than as a shield to protect its intellectual property.”87 In Ellison v. Robertson, Harlan Ellison had become aware that a number of his science fiction short stories had been posted on a peer-to-peer file sharing network, the USENET, by Stephen Robertson.88 Once uploaded by Robertson, the works became accessible to the newsgroup and were forwarded to USENET servers around the world.89 Because AOL provides its subscribers with access to the USENET, Ellison brought claims of vicarious and contributory copyright infringement against the ISP, alleging that AOL had temporarily stored the infringer’s posts on its servers and had gained financially by doing so.90 Though the Ninth Circuit Court of Appeals affirmed the district court’s holding that AOL could not be found liable for contributory or vicarious infringement because AOL did not receive a direct financial benefit, the court found that material issues of fact existed regarding AOL’s meeting of the eligibility requirements under § 512(i), calling into question whether AOL could enjoy the safe harbor provisions under the DMCA at all.91 The court noted that AOL had failed to provide a current contact e-mail address to the Copyright Office and thus “allowed notices of potential copyright infringement to fall into a vacuum and to go unheeded.”92 The court remanded to determine AOL’s threshold eligibility under § 512(i).

84. 85. 86. 87. 88. 89. 90. 91. 92.

Online Policy Group v. Diebold, Inc., 337 F.Supp.2d 1195, 1197 (N.D. Cal. 2004). Id. at 1198. Id. Id. at 1205. Ellison v. Robertson, 357 F.3d 1072, 1074 (9th Cir. 2004). Id. at 1075. Id. at 1074. Id. Id. at 1080.


These cases demonstrate that although the DMCA may place additional inconvenience upon ISPs, its application in court has shown that it provides ISPs with clear guidelines identifying these inconveniences in detail. Also although the DMCA guidelines provide at least some clarity, it remains unclear to what extent the DMCA overlaps with the existing case law concerning ISP liability discussed above.93 Online Policy Group v. Diebold, Inc. adds another wrinkle to ISP liability, as ISPs must also be aware of potential liability vis-à-vis a subscriber, not just a content provider.

5. Internet Service Providers and the Fourth Amendment The notice and take down provisions in the DMCA represent just one way in which ISPs can assist (even if unwillingly) copyright holders to counteract the spread of infringing activity online. If copyright holders decide not to go after an ISP on a claim of vicarious or contributory liability, they may nevertheless rely on the ISP to provide information regarding the alleged infringer who is a subscriber to the ISP. However, disclosure of subscriber information by an ISP may raise constitutional issues—namely, the Fourth Amendment. The Fourth Amendment serves as the backdrop against which attempts by copyright holders to receive identification information about an alleged infringer from an ISP are made. This amendment states: The right of the people to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures, shall not be violated, and no Warrants shall issue, but upon probable cause, supported by Oath or affirmation, and particularly describing the place to be searched, and the persons or things to be seized.94

Federal case law interpreting the Fourth Amendment has found no expectation of privacy in Internet subscriber information.95 These decisions draw parallels between the subscriber information submitted to an ISP and the customer information submitted to other third parties, including banks and telephone companies.96

93. Yen, 88 GEO. L.J. at 1890. 94. U.S. const. amend. IV. 95. New Jersey v. Reid, 194 N.J. 386, 396 (2008) (citing Guest v. Leis, 255 F.3d 325, 336 (6th Cir. 2001)); Freedman v. Am. Online, Inc., 412 F.Supp. 2d 174, 181 (D. Conn. 2005); United States v. Sherr, 400 F. Supp. 2d 843, 848 (D. Md. 2005); United States v. Cox, 190 F. Supp. 2d 330, 332 (N.D.N.Y. 2002); United States v. Kennedy, 81 F. Supp. 2d 1103, 1110 (D. Kan. 2000); United States v. Hambrick, 55 F. Supp. 2d 504, 508–09 (W.D. Va. 1999), aff ’d, 225 F.3d 656 (4th Cir. 2000), cert. denied, 531 U.S. 1099, 121 S.Ct. 832, 148 L. Ed. 2d 714 (2001)). 96. Id. (citing Smith v. Maryland, 442 U.S. 735, 742 (1979); United States v. Miller, 425 U.S. 435, 442 (1976)).

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Although the law concerning access to subscriber information and the Fourth Amendment appears to be settled, a number of cases show that attention must be paid to state constitutions as well. In State v. Reid, the Supreme Court of New Jersey held that under Article I, paragraph 7 of the New Jersey Constitution, citizens have a reasonable expectation of privacy in the subscriber information provided to Internet service providers.97 According to the court, constitutional protections may be satisfied by law enforcement serving a grand jury subpoena upon an ISP without notice to the subscriber.98 In that case, Timothy Wilson, the owner of Jersey Diesel, reported to his local police department that someone had used his computer to change his company’s shipping address and password for its suppliers.99 Wilson suggested that Shirley Reid, an employee, might have made the changes. One of Jersey Diesel’s suppliers, Donaldson Company, was able to discover the IP address of the person who had accessed and changed Jersey Diesel’s site and changed Jersey Diesel’s shipping address. Using this IP address, Wilson contacted Comcast and asked for the subscriber information associated with that address. After Comcast declined, Wilson sought a subpoena from a municipal court. Following the issuance of the subpoena, Comcast identified Reid as the subscriber of the IP address, providing her address, telephone number, and other personal information. Ultimately the New Jersey Supreme Court concluded the subpoena was deficient because it involved an offense outside the jurisdiction of the municipal court.100 The court further noted, however, that the subscriber information could be obtained once a proper subpoena had been served upon Comcast.101 Thus, practitioners representing a copyright holder seeking a subpoena or a subscriber affected by such an action should be aware that state constitutional law regarding the release of subscriber information may contradict or be less settled than federal case law.

6. Conclusion This chapter began with two brief scenarios demonstrating potential ISP liability under both § 230 of the Communication Decency Act and § 512 of the Digital Millennium Copyright Act (DMCA). In Zeran v. America Online (the case that inspired the first scenario), the court created a broad conception of ISP immunity, removing the importance of the publisher versus distributor distinction. The broad immunity created by this case has evolved over time,

97. 98. 99. 100. 101.

Id. at 388. Id. Id. at 392. Id. at 389, 393. Id. at 390.

Defamation

particularly in the context of subscriber copyright infringement, as governed by § 512 of the DMCA. Although ISPs may still avoid liability under the safe harbor provisions found in this section, ISPs must now ensure that appropriate safeguards are in place and may not rely on imperfect notice from a copyright holder, as shown in the case used in the second scenario, ALS Scan v. RemarQ Communities. The nature of ISP liability and the tools available for determining that liability differ sharply from Scenario 1 to Scenario 2. These differences may be attributed not only to the differences among the facts of each case and the distinctions between the Communication Decency Act and the DMCA, but also to the changing perception of an ISP and its role in policing subscriber wrongdoing online.

B. Defamation You’re a loudmouth baby You better shut up “Loudmouth” —The Ramones102

1. Scenario Lara has just completed her first semester at top-ranked Yarford Law School where she is an active member of the student body. She decides to log on to www.lawschoollife.com, a Web site that hosts message boards discussing all aspects of law school. After navigating through some message board posts, one series of posts titled “Yarford Law slut” catches her eye. Lara clicks on the link. She sees her name mentioned in posts from porkypig, cheesehead, lonelyvirgin, lawschooldean, spank_me, and others. Their posts are filled with insults directed at Lara. Porkypig claims Lara could barely get in to Yarford Law School, and performed sexual favors to gain admission. LonelyGirl15 states Lara scored a mere 158 on her LSAT. Other posts are more graphic, threatening Lara with sexual violence. YarfordLaw09 encourages someone to rape Lara, while spank_me cautions that doing so would mean contracting a sexually transmitted disease. Overwhelmed, Lara withdraws from her classmates and seeks counseling. The emotional strain proves to be too much. She drops out and fears that messages on www.lawschoolife.com will haunt her professional career. Lara contacts an attorney to discuss potential defamation. Her lawyer informs Lara that

102. Lyrics by Johnny Ramone.

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bringing anonymous posters into court will not be easy as their real identities are known only to their ISP. Determined to save her reputation, despite the potential difficulties Lara decides to file suit.103

2. How to Investigate This scenario warrants a two-prong attack. First identify the owner of the Web site lawschoollife.com and the ISP that hosts the site. Second, try to find the defamers. You want to find the owner of the Web site and the hosting ISP because they may be able to help to some extent; for example, the terms and conditions governing the use of the Web site may have explicit rules prohibiting defamatory and/or inflammatory remarks. If so, ask the Web site owner to investigate and enforce its own terms and conditions as in many instances this will put an end to the problem. Moderated news groups and other moderated forums tend to be cooperative in this regard because they want to encourage an atmosphere that is comfortable for the largest number of users. Other Web sites, such as the example of lawschoollife.com, do not moderate forums and proclaim they will not interfere with First Amendment rights. These are the Web site owners and ISPs that will require you to obtain a subpoena. Back to first steps: you can identify the Web site owner and ISP by running a WHOIS search. Ideally this will give you the registrant’s name and contact information, as well as the site admin details. You will also be able to obtain the name of the ISP by looking up the owner of the server IP address. If the information is false, you will use the WHOIS results as the beginning of your search for additional clues, all as previously described in Chapter II. Obviously, you will need to find the owner in order to serve a subpoena. The goal of the second attack is to find the defamers. However, before putting any of these people on notice that the client is seeking to file a suit, search each of the aliases for any appearances elsewhere on the Web, including newsgroups, networking sites, and other social networks. You may need to enlist the help of a member of some of the social networks to gain access. Some investigators already have a high degree of access into Facebook and MySpace. You are looking for pieces of a puzzle, with these pieces coming usually from much earlier Internet usage when the users were not necessarily trying to protect their identities.

103. Facts inspired by Complaint, Doe I v. Ciolli, Case No. 3:07-cv-00909-CFD (D. Conn. 2008).

Defamation

Some of the aliases such as cheesehead and lonelyvirgin are not likely to be unique to just these users. Do not expect much success in finding these people via their aliases. Other names, such as lonelygirl15, cheese eating Surrender Monkey, and spank_me are sufficiently unique that a search of the entire Internet may yield results. If all of this fails, you will need to get a subpoena to obtain identities. You must undertake efforts to notify the anonymous posters that they are the subject of an application for a subpoena. It is preferable you notify the anonymous posters directly on the Web site on which the actionable statement was made. The Web site owner may be willing to help. In the real case of DOE I v. Ciolliet, the plaintiffs obtained expedited discovery and the requested subpoenas. The plaintiffs’ memorandum of law is partially reproduced (with permission) at Appendix I. Their efforts to notify the defendants are detailed at pp. 7–9. The argument portion of the brief is well worth reading.

3. The Law a. Publication v. Distribution Defamation is “the act of harming the reputation of another by making a false statement to a third person.”104 A false written statement that harms the reputation of another constitutes libel, while an oral statement causing the same constitutes slander.105 Because statements posted on a blog or in a chat room are considered to be written, false statements posted online constitute libel.106 A plaintiff alleging a defamation claim based on statements made online must prove that the statement is factually based and thus capable of defamatory meaning.107 To determine whether an allegedly defamatory statement implies a factual assertion, a court will examine the totality of the circumstances in which the statement was made.108 Courts must “inquire whether the statement itself is

104. Black’s Law Dictionary (8th ed. 2004). 105. Id. 106. Defamation will be used throughout the chapter to refer to the making of false statements online. However, the legal practitioner should note that most Internet defamation will involve exclusively libelous statements. Cases cited throughout the memo use defamation to refer to postings on blogs and messages boards, but note that these statements technically constitute a specific form of defamation: libel. 107. Doe v. Cahill, 884 A.2d 451, 467 (Del. 2005). 108. Rocker Mgmt. LLC v. Does 1–20, 2003 U.S. Dist. LEXIS 16277 at *5 (quoting Rodriguez v. Panayiotou, 314 F.3d 979, 986 (9th Cir. 2002)). In Rodriguez, the court looked to the “general tenor of the entire work, . . . the subject of the statements, the setting, and the format of the

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sufficiently factual to be susceptible of being proved true or false.”109 The nature of the totality of the circumstances and the likelihood that a reader would perceive an allegedly defamatory statement to constitute fact may depend upon where it appears. For example, the circumstances surrounding a statement made in a newspaper column would tend to suggest fact. Articles appearing in any major newspaper discuss factual events, using a tone that suggests they are providing truthful reporting, not the opinion of the author. Aside from the opinion pages featured in a newspaper, reporters refrain from issuing judgments on the events discussed in an article. Readers of newspaper would therefore be more likely to believe that an allegedly defamatory statement featured in an article was truthful, and as a result, damaging to the reputation of the defamed plaintiff. In contrast, on the Internet paying too much attention to circumstances could ultimately lead to a different outcome for plaintiffs than in the offline context. Online defamation claims may ultimately suffer from the totality of the circumstances test due to the fact that many allegedly defamatory statements, although perceived to be fact, are made in an environment with characteristics (such as hyperbole, invective, coarse language, cajoling, misspellings, shorthand, etc.) that suggest they are only opinions. The following cases (Doe No. 1 v. Cahill, SPX v. Doe, and Rocker Management. v. Does 1–20) provide examples of instances in which a court applied the totality of the circumstances test to Internet chat rooms and message boards with mixed results for allegedly defamed plaintiffs. The legal practitioner should note the emphasis that each court respectively placed upon the nature of other posts and the language used by an alleged defamer (offensive or vulgar language and hyperbole) as well as spelling errors. In Doe No. 1 v. Cahill, the court noted that it did not want to “rely on the nature of the Internet as a basis to justify our application of the legal standard” and drew no “distinction between communications made on the Internet and those made through other traditional forms of media.”110 However, the court did state that it was “worth noting” that certain factual and contextual issues relevant to chat rooms and blogs are important in analyzing the defamation claim itself.111 Relying upon the mechanics of a chat room message board, the

work, the content of the statements, the extent of figurative or hyperbolic language used, and the reasonable expectations of the audience in that particular situation.” Id. 109. Id. (quoting Underwager v. Channel 9 Australia, 69 F.3d 361, 366 (9th Cir. 1995)). 110. Cahill, 884 A.2d at 464. (Plaintiff filed suit against defendants who had posted defamatory statements about Cahill, a city councilman, on a Web site sponsored by the government of the city of Smyrna, DE. Statements included “Anyone who has spent any amount of time with Cahill would be keenly aware of such character flaws, not to mention an obvious mental deterioration” and “Gahill [sic] is as paranoid as everyone in the town thinks he is.”) 111. Id. at 465.

Defamation

court indicated that plaintiffs in an online defamation case had a powerful form of extrajudicial relief in the form of a follow-up post to an allegedly defamatory one. As the court noted, “a person wronged by statements of an anonymous poster can respond instantly . . . and thus can, almost contemporaneously, respond to the same audience that initially read the allegedly defamatory statements.”112 Unique features of Internet communication could therefore be used to mitigate the harm. If this view were widely adopted, the targets of defamatory statements made online may find their ability to sue an anonymous poster curtailed simply because the Internet allows a plaintiff to respond to his or her defamer instantly. Cahill discussed the “spectrum of sources” that exist on the Internet, citing the Wall Street Journal online as a reliable news source, easily distinguished from a blog or message board intended to be a “vehicle for the expression of opinions.”113 The court further noted that the message board at issue served as an “open and uncontrolled forum,” and distinguished the Internet from traditional media by the fact that “literally anyone who has access to the Internet has access to the chat rooms.”114 Focusing on the nature of a chat room, the court was persuaded by other federal district courts that had found postings to be opinion on the grounds that surrounding posts were “full of hyperbole, invective, short-hand phrases and language generally not found in fact-based documents” and “lacked a formality and polish typically found in documents in which a reader would expect to find fact.”115 In SPX v. Doe, the court granted a defendant’s motion to dismiss after analyzing four factors: (1) the specific language used, (2) the verifiability of the statement, (3) the written context of the statement, and (4) the broader social context in which the statement is made.116 The defendant’s statements were posted on a message board filled with “cajoling, invective and hyperbole,” making it more likely that the statements were opinion.117 SPX highlighted another complication for plaintiffs in an online defamation case, quoting a disclaimer Yahoo! placed on its message boards: “This board is

112. Id. at 464. 113. Id. at 465. 114. Id at 465–66 (quoting Global Telemedia Int’l, Inc. v. Doe 1, 132 F. Supp. 2d 1261, 1264 (C.D. Cal. 2001)). An interesting question arises in light of this comment: what makes a town square a “controlled forum” compared to an Internet message board operated by an ISP such as Yahoo!? 115. Global Telemedia Int’l, Inc. v. Doe 1, 132 F. Supp. 2d 1261, 1264 (C.D. Cal. 2001). 116. 253 F. Supp. 2d 974, 980 (N.D. Ohio 2003). The four-part test applied by the U.S. District Court for the Northern District of Ohio was first set forth in Scott v. News-Herald and set the standard for analyzing whether statements express opinion or facts. See 253 F. Supp. 2d at 980 (citing Scott v. News-Herald, 25 Ohio St.3d 243 (1986)). The Ohio Supreme Court continues to recognize the Scott test as the standard in making this determination. See Wampler v. Higgins, 93 Ohio. St.3d 111 (2001). 117. Id. at 981.

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not connected with the company. These messages are only the opinion of the poster.”118 Such a blanket declaration that all statements are opinion could ultimately harm those defamed by semi-factual or factual statements contained therein in the midst of expletives, invective, hyperbole, and misspellings. In Rocker Management v. Does 1–20, the U.S. District Court for the Northern District of California found that allegedly defamatory statements, when viewed in context, were mere opinion and not statements of fact.119 Once again, the nature of the postings played a key role. Messages were “replete with grammar and spelling errors” while “most posters [did] not even use capital letters,” and many messages were filled with “vulgar, offensive” language and hyperbole.120 Cahill, SPX, and Rocker Management ostensibly do nothing more than apply the totality of the circumstances test to a defamation case involving Internet postings. Although the outcome in these two cases may be correct under this test, the language adopted by both courts exposes a troubling trend in Internet defamation cases: the nature of an Internet chat room (including the misspellings of posters, use of expletives, and hyperbole) could severely undercut a plaintiff’s ability to bring a successful defamation claim.121

118. Id. 119. 2003 U.S. Dist. LEXIS 16277, *1–*6 (N.D. Cal. 2003). 120. Id. at *3 (Poster “harry3866” made statements suggesting that plaintiff, a stock broker, “is the subject of a Securities and Exchange Commission investigation” and that plaintiff “threatens analyst[s] who are bullish on certain stocks and of spreading lies ‘about those stocks.’” In spite of the factual nature of these statements, the court was persuaded by the fact that Yahoo!’s message board carried a disclaimer, that the screen names of other posters used vulgar language, and that plaintiff responded to one of the posts instantly in his own defense). 121. Some plaintiffs have been successful in their claims that they were defamed online. Cases involving such claims (but not necessarily in an Internet chat room or on a message board) include: Public Relations Society of Am., Inc. v. Road Runner High Speed Online, 799 N.Y.S.2d 847 (Sup. 2005)(finding that an e-mail to the board of a nonprofit suggesting the executive director was unable to manage the organization constituted defamation per se, meaning that the plaintiff need not make a showing of actual harm); Wiest v. E-Fense, Inc., 356 F. Supp. 2d 604 (E.D. Va. 2005)( military cadet successfully stated a claim of defamation against the publisher of an Internet Web site that made false statements regarding a disciplinary proceeding and the ultimate disposition of his case); Scott v. LeClerq, 136 S.W.3d 183, 194 (Mo. Ct. App. W.D. 2004)( rumors started over the Internet and in a chat room injured the reputation of a high school principal and therefore constituted defamation). Cases where a court found that a statement made online did not constitute defamation include: Troy Group, Inc. v. Tilson, 364 F. Supp. 2d 1149 (C.D. Cal. 2005) (investor’s e-mail to other investors referring to a corporation’s managers as “the biggest crooks on the planet” did not constitute defamation, given the investor made clear he was expressing an opinion); Media3 Tech., LLC v. Mail Abuse Prevention System, 2001 WL 92389 (D. Mass. 2001)(finding that labeling a Web site as “spam-friendly” does not constitute defamation).

Defamation

These challenges can be better understood by returning to the scenario given at the beginning of the chapter. In a case currently before the U.S. District Court for the District of Connecticut, two female plaintiffs have alleged that posters on autoadmit.com (an Internet discussion board on which participants can post information about graduate schools and law schools) defamed them and severely damaged their reputations.122 Doe I and Doe II, two female law students at Yale Law School, became the subjects of a vulgar and offensive exchange of postings on autoadmit.com. Among the comments made were those insinuating that Doe I had engaged in a lesbian affair with an administrator at Yale Law School,123 Doe I got only a “157 LSAT,”124 Doe II had the “clap,”125 Doe II had checked into a rehabilitation program for heroin use,126 and Doe II performed fellatio on the dean of Yale Law School to receive a passing grade.127 Other postings threatened sexual violence against both Doe I and Doe II, saying that both “deserved to be raped,” and falsely accused Doe II of “bashing gay people.”128 These postings, as in Rocker Management and Cahill, were made against a backdrop of opinion and contained misspellings, vulgar language, and hyperbole. A number of these statements were made by posters pretending to be Doe I or Doe II and as a result could be more likely to be seen as fact, not opinion.129 Doe I claimed that these statements caused her mental harm as well as damage to her reputation and would continue to cause her financial harm as she searched for employment in the legal industry.130 The nature of online posting and the characteristics of an Internet message board or chat room could lead to a unique and inequitable outcome for plaintiffs like Doe I and Doe II in spite of the the harm to their reputations being no less real. A solution may be an adjustment of the totality of the circumstances test that takes into account the reality that the Internet has become the new “town square.” A new test could force a court to focus on defamatory statements in isolation, not on the totality of the circumstances. Given the rulings in Rocker Management and SPX, Doe I and Doe II may have a difficult time proving that the statements could be taken as fact in light of the totality of the circumstances. But first, Doe I and Doe II must strip the

122. Complaint, Doe I v. Ciolli, Case No. 3:07-cv-00909-CFD (D. Conn. 2008). 123. Plaintiff ’s Memorandum of Law in Support of Motion for Expedited Discovery at *4, Doe I & Doe II v. Individuals, No. 3:07CV009909 (CFD) (D. Conn. Jan. 24, 2008). 124. Id. 125. Id. at 6. 126. Id. at 7. 127. Id. 128. See id. at 4–7. 129. See id. at 20. Plaintiffs are also advancing a claim that defendants wrongfully appropriated their name and likeness. 130. Id. at 5.

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alleged defamers of the anonymity they enjoy on autoadmit.com. To achieve this end, Doe I and Doe II must seek a motion for expedited discovery. To succeed in such a motion (as described below), the plaintiffs need only show that they would be likely to succeed on their libel claim. b. Expedited Discovery The Internet has made it possible for anyone with Internet access to “become a town crier with a voice that resonates farther than it could from any soapbox.”131 Though anonymous speech on the Web is protected under the First Amendment, speakers on the Internet may engage in speech that can at times harm the reputation of another.132 Such defamatory speech does not enjoy First Amendment protection.133 Defamation claims force courts to balance protecting a plaintiff’s reputation against protecting free speech. As one court has stated, this balance serves as the guiding purpose behind the law of defamation.134 Online defamation claims raise a number of issues for U.S. courts. A plaintiff must persuade the court to force an ISP to reveal the identity of a poster who allegedly defamed the plaintiff via a chat room, blog, or Web page. Plaintiffs rely on both expedited discovery under Fed. R. Civ. P. 26(d) to strip the alleged defamer of his or her anonymity. Whether a plaintiff relies on Rule 26(d) or a subpoena, a court must weigh the need for disclosure against the First Amendment rights of the defendant(s). Under Fed. R. Civ. P. 26(f), parties must meet and confer regarding initial disclosures, discovery plan, and other matters “as soon as practicable and in any event at least 21 days before a scheduling conference is held or a scheduling order is due under Rule 16(b).135 Fed. R. Civ. P. 26(d) states that parties can avoid complying with Rule 26(f) in a proceeding exempted from initial disclosure under Rule 26(a)(1)(B) or by court order.136 Without Rule 26(d), plaintiffs suing defendants who refuse to reveal their identities would be placed in an impossible position—they may not conduct discovery before they meet and confer with defendants, but prior to initiating discovery, they cannot meet and confer because they cannot identify the defendants. In these circumstances, plaintiffs seeking identifying information from ISPs that are parties to online defamation litigation rely upon the court order exemption to Rule 26(d) to receive expedited discovery.

131. 132. 133. 134.

Reno v. ACLU, 521 U.S. 844, 896–97 (1997). Id. Chaplinsky v. New Hampshire, 315 U.S. 568, 572 (1942). Dendrite Int’l, Inc. v. Doe, 342 N.J. Super. 134, 150 (N.J. Super. Ct. App. Div. 2001) (quoting New York Times Co. v. Sullivan, 376 U.S. 254, 270 (1964)). 135. Fed. R. Civ. P. 26(f). 136. Fed. R. Civ. P. 26(d).

Defamation

To obtain this information, plaintiffs must show compelling need by arguing that irreparable harm will result if expedited discovery is denied. In the offline context, courts have applied two different standards parties must meet to show compelling need. Under Notaro v. Koch, the court required plaintiffs to make a showing of: (1) irreparable injury, (2) some probability of success on the merits, (3) some connection between the expedited discovery and the avoidance of the irreparable injury, and (4) some evidence the injury that will result without expedited discovery looms greater than the injury the defendant will suffer if the expedited relief is granted.137 The Notaro court found support for its criteria in the law of remedies and modeled them after the steps a plaintiff must meet before receiving a preliminary injunction.138 A number of district courts have adopted the Notaro test.139 Notaro represents one end of the spectrum of standards for expedited discovery that courts have conceived. This may be due in part to the considerable discretion Rule 26(d) leaves to courts to determine when to grant expedited discovery. Courts rejecting the Notaro standard have instead adopted a more flexible good cause test.140 In Ayyash v. Bank Al-Medina, the court reasoned that it made “little sense” to compare a preliminary injunction to expedited discovery, given that the former is a “far more dramatic decision.”141 Similarly, in Merrill Lynch v. O’Connor, the court reasoned that employing preliminary injunction analysis made little sense, particularly when a plaintiff makes an expedited discovery request for the purpose of preparing for a preliminary injunction hearing.142 Courts adopting the good cause test look to the discovery request itself and the reasonableness of the request in light of the surrounding circumstances.143 Good cause may be found where the need for expedited discovery, in consideration of the administration of justice, outweighs the prejudice to the responding party.144

137. 95 F.R.D. 403, 405 (S.D.N.Y. 1982). 138. Id. at note 4. 139. Irish Lesbian and Gay Organization v. Guiliani, 918 F. Supp. 728, 731 (S.D.N.Y. 1996); Crown Crafts, Inc. v. Aldrich, 148 F.R.D. 151 (E.D.N.C. 1993); Gucci Am., Inc. v. Daffy’s, Inc., 2000 U.S. Dist. LEXIS 16714 (D.N.J. 2000); BAE Aircraft Sys. v. Eclipse Aviation Corp., 224 F.R.D. 581 (D. Del. 2004); DC Circuit: In re Fannie Mae Derivative Litig., 227 F.R.D. 142 (D.D.C. 2005); Humane Society of United States v. Amazon, 2007 U.S. Dist. LEXIS 31810 (D.D.C. 2007); Stern v. Cosby, 246 F.R.D. 453 (S.D.N.Y. 2007); BlackRock v. Schroders PLC, 2007 U.S. Dist. LEXIS 39279 (S.D.N.Y. 2007). 140. Ayyash v. Bank Al-Madina, 233 F.R.D. 325, (S.D.N.Y. 2005); (citing Special Situations Cayman Fund, L.P. v. Dot Com Entm’t Group, Inc., 2003 U.S. Dist. LEXIS 25083 (W.D.N.Y.); Qwest Comm. Int’l v. WorldQuest Networks, Inc., 213 F.R.D. 418, 419–20 (D. Colo. 2003); Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273, 275 (N.D. Cal. 2002)). 141. 233 F.R.D. at 326. 142. 194 F.R.D. 618, 624 (N.D. Ill. 2000). 143. Ayyash, 233 F.R.D. at 326. 144. Semitool, Inc. v. Tokyo Electron Am., 208 F.R.D. 273 at 276.

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Following Notaro and Ayyash, courts selecting a standard for expedited discovery must choose from a spectrum of standards, ranging from the good cause standard to the preliminary injunction standard. A number of courts have gone down another path by finding that a plaintiff must plead sufficient facts to survive a motion for summary judgment.145 Courts selecting the summary judgment standard express concern that “setting the standard too low will chill potential posters from exercising their First Amendment right to speak anonymously.”146 Revealing the identity of an anonymous speaker may subject that person to retaliation for her opinions or ostracism for expressing unpopular ideas.147 Under this standard, a plaintiff must: (1) undertake efforts to notify the anonymous poster that he or she is the subject of an order of disclosure and to withhold action to afford the anonymous defendant the opportunity to file and serve opposition to the application (in the Internet context, the plaintiff should also post a message of notification on the same message board where the allegedly defamatory message was posted) and (2) to satisfy the prima facie or summary judgment standard.148 To meet the summary judgment standard, a movant must make the prima facie case for defamation and show that there is no issue of material fact for a jury to determine.149 A trial court must examine the factual record and make all reasonable inferences in favor of the nonmoving party before granting such a motion.150 A number of state and federal courts have followed the summary judgment approach to motions for expedited discovery.151 c. Obtaining a Subpoena In addition to requesting expedited discovery under Fed. R. Civ. P. 26(d), a plaintiff may also issue a subpoena to force disclosure of information from

145. 146. 147. 148.

Doe No. 1 v. Cahill, 884 A.2d 451, 457 (Del. 2005). Id. Id. Dendrite Int’l, Inc. v. Doe, 342 N.J. Super. at 141 (denying motion for expedited discovery after plaintiff corporation could not establish prima facie defamation claim). 149. AeroGlobal Capital Mgmt., LLC v. Cirrus Indus., 871 A.2d 428, 444 (Del. 2005). 150. Id. 151. See McMann v. Doe, 460 F. Supp. 2d 259 (D. Mass. 2006) (using summary judgment standard to deny plaintiff ’s motion to subpoena domain name registration organization to reveal the identity of a defendant who placed photo of plaintiff on Web site with the words, “be afraid, be very afraid.”); Best Western Int’l v. Doe, 2006 U.S. Dist. LEXIS 77942 (D. Ariz. 2006) (granting motion for expedited discovery using the summary judgment standard in a trademark infringement case); see also In re Does 1–10, 242 S.W.3d 805 (Tex. App. Texarkana 2007); Reunion Indus. v. Doe, 2004 Pa. Dist.& Cty. Dec. LEXIS 145 (2007).

Defamation

ISPs that identifies anonymous posters of defamatory material.152 Under Fed. R. Civ. P. 45(a)(3), a clerk of a federal district court must issue a subpoena, signed but otherwise blank, to the attorney who requests it.153 That attorney must in turn complete the blank form before serving it.154 Every subpoena must state the court from which it issued and the title of the action along with its civil action number, and must command each person to whom it is directed to either attend and testify or produce designated documents, electronically stored information, or other “tangible things” in the recipient’s possession.155 Aside from Rule 45(a) for federal cases, each state has its own guidelines for issuing a subpoena. When plaintiffs issue a subpoena to an ISP to reveal the identities of anonymous Internet message board posters so as to name them as defendants, ISPs assert that the First Amendment rights of their subscribers prevent them from being able to release such information. ISPs do not contend that a person’s identity is protected by the First Amendment, but instead contend that compliance with a subpoena “unreasonably impairs” the rights of “John Does” to speak anonymously on the Internet.156 Problems resolving First Amendment issues against a plaintiff’s desire to obtain a defendant’s identity arise in a variety of contexts online, including illegal music and file downloads and unauthorized access to e-mail as posting to Internet bulletin boards. The complicating factor in mandating compliance with a subpoena in these cases arises from the fact that a third party will disclose the defendant’s identity. In In re Subpoena Duces Tecum to Am. Online, the court established a three-part balancing test to determine whether to grant a subpoena in such a situation: (1) when the court is satisfied by the pleadings or evidence supplied to that court (2) that the party requesting the subpoena has a legitimate, good faith basis to contend that it may be the victim of conduct actionable in the jurisdiction where the suit was filed and (3) the subpoenaed information is centrally needed to advance that claim.157 Although the court in America Online ultimately ordered disclosure of the identifies of the John Doe defendants, it believed that a “more probing” evaluation into the plaintiff’s claims

152. A subpoena duces tecum is an order for a witness to appear in court at a certain time and to bring specified documents, records, or things. This form of subpoena may be for documents or a personal appearance by the recipient. Black’s Law Dictionary (8th ed. 2004) 153. Fed. R. Civ. P. 45(a)(3). 154. Id. (“An attorney also may issue and sign a subpoena as an officer of: (A) a court in which the attorney is authorized to practice; (B) a court for a district where a deposition is to be taken or production is to be made, if the attorney is authorized to practice in the court where the action is pending”). 155. Fed. R. Civ. P. 45(a)(1)(A). 156. In re Subpoena Duces Tecum to Am. Online, Inc., 52 Va. Cir. 26, *28 (2000), rev’d on other grounds, AOL v. Anonymous Publicly Trader Co., 542 S.E.2d 377 (Va. 2001). 157. Id. at *37.

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was necessary to evaluate the reasonableness of the subpoena in light of all surrounding circumstances.158 Another approach can be found in Sony Music Entertainment Inc. v. Does 1–40, a copyright infringement suit brought against defendants who illegally reproduced and distributed plaintiff’s’ sound recordings.159 Though that case did not concern a First Amendment right to speak anonymously online, other courts deciding whether to pierce the anonymity of an online bulletin board poster have found it to be persuasive.160 The court in Sony Music combined a variety of factors relied upon by other federal district courts to form a fivefactor test: (1) a concrete showing of a claim of actionable harm, (2) the specificity of the discovery request, (3) the absence of alternative means to obtain the subpoenaed information, (4) a central need for the subpoenaed information to advance the claim, and (5) the party’s expectation of privacy.161 A number of courts have adopted the Sony Music approach in a variety of contexts ranging from downloading music illegally to unauthorized access to e-mail.162 Some courts have expressed, however, that the above test would be insufficient in a case involving the First Amendment rights of an anonymous message board poster.163

4. Strategy Attorneys serving as advocates for plaintiffs such as Lara can therefore argue for expedited discovery by claiming that their client meets (1) the good cause standard; (2) the summary judgment standard, or (3) the more stringent Notaro standard. The chart below summarizes the jurisdictions that have applied these standards:

158. Dendrite Int’l, Inc. v. Does 1–14, 342 N.J. Super. 134 at 158 (quoting Am. Online, 52 Va. at *8). 159. 326 F. Supp. 2d 556. 160. Best Western Int’l v. Doe, 2006 U.S. Dist. LEXIS 56014, 2006 WL 2091695, at *3–*5 (D. Ariz. 2006). 161. 326 F. Supp. 2d at 564–65 (S.D.N.Y. 2004) (quoting Am. Online, 261 Va. at 350; Columbia Ins. Co. v. Seescandy.Com, 185 F.R.D. 573, 578 (N.D. Cal. 1999); Recording Indus. of Am. v. Verizon Internet Servs., Inc., 359 US App. D.C. 85 (D.C. Cir. 2003)). 162. See Gen. Bd. of Global Ministries of the United Methodist Church v. Cablevision Lightpath, 2006 U.S. Dist. LEXIS 86826 (E.D.N.Y. 2006) (unauthorized access to e-mail); Elektra Entm’t Group, Inc. v. Does 1–9, 2004 U.S. Dist. LEXIS 23560 (S.D.N.Y. 2004) (file sharing and copyright infringement). 163. Mobilisa, Inc. v. Doe, 170 P.3d 712, 720 (Ariz. Ct. App. 2007).

Defamation

Notaro standard Notaro v. Koch, 95 F.R.D. 403 (S.D.N.Y. 1982)

Equivalent to standard parties must meet when requesting a preliminary injunction.

Followed by federal district courts in the 2nd, 3rd, 4th, and D.C. circuits

Party seeking expedited discovery must show: (1) irreparable injury; (2) some probability of success on the merits; (3) some connection between the expedited discovery and the avoidance of the irreparable injury, and (4) some evidence that the injury that will result without expedited discovery looms greater than the injury the defendant will suffer if the expedited relief is granted Summary Judgment McMann v. Doe, 460 F. Supp. 2d 259 (D. Mass. 2006).

Moving party must be able to make meet the prima facie case for the cause of action at issue (i.e., defamation) and show that there is no material fact at issue for the jury to determine. Court must make all reasonable inferences in favor of the nonmoving party before granting such a motion. In addition, courts have noted that parties seeking to pierce the anonymity of an online poster must undertake efforts to notify the anonymous poster that he or she is the subject of an order of disclosure and to withhold action to afford the anonymous defendant the opportunity to file and serve opposition to the application (in the Internet context, the plaintiff should also post a message of notification on the same message board where the allegedly defamatory message was posted).

Followed by Best Western Int’l v. Doe, 2006 U.S. Dist. LEXIS 77942 (D. Ariz. 2006); Reunion Indus. v. Doe, 2004 Pa. Dist. & Cty. Dec. LEXIS 145 (2007).

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Good cause standard Ayyash v. Bank Al-Madina, 233 F.R.D. 325 (S.D.N.Y. 2005)

Looks to the language of Fed. R. Civ. P. 26(d) to infer that a finding of good cause must be made before a court can justify an order providing relief from the requirements of Rule 26(f). Courts look to the discovery request itself and the reasonableness of the request in light of the surrounding circumstances.

See United States CFTC v. Rodriguez, No. 06-CV-0855, 2006 U.S. Dist. LEXIS 13773 *3 (S.D.N.Y. Feb. 3, 2006).

Many plaintiffs seek both a motion for expedited discovery and a subpoena. For plaintiffs seeking a subpoena, the table below summarizes these two approaches and the courts that have applied them: In re Subpoena Duces Tecum to Am. Online, 52 Va. Cir. 26 (Cir. Ct. 2000)

Court created a three-part balancing test for when to issue a subpoena to an ISP to reveal the identity of an anonymous subscriber: (1) when the court is satisfied by the pleadings or evidence supplied to that court (2) that the party requesting the subpoena has a legitimate, good faith basis to contend that it may be the victim of conduct actionable in the jurisdiction where the suit was filed, and (3) the subpoenaed information is centrally needed to advance that claim

Followed by Dendrite Int’l, Inc. v. Doe No. 3, 342 N.J. Super. 134 (2001) and Reunion Indus. v. Doe I, 2007 Pa. Dist & Cty. Dec. LEXIS 145 (2007).

Sony Music Entm’t v. Does 1–40, 326 F. Supp. 2d (S.D.N.Y. 2004)

Combined tests from a number of federal district courts to form a 5-part test: (1) a concrete showing of a prima facie claim of actionable harm, (2) the specificity of the discovery request, (3) the absence of alternative means to obtain the subpoenaed information, (4) a central need for the subpoenaed information to advance the claim, and (5) the party’s expectation of privacy

Followed by federal district courts in the 1st, 2nd, 3rd, and 9th Circuits

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Lovely spam, wonderful spam, Lovely spam, wonderful spam. ”Spam Song” —Monty Python164

C. Spam 1. Scenario At Southwest State, a large public university, students have grown accustomed to receiving a significant number of e-mails each day. Recently however, the average number of junk e-mails or spam sharply increased, leading many students to file complaints with the university’s Office of Information Technology. One of the most frequent e-mails contained an advertisement and a link to a new Web site called www.southwestsingles.com. Angry at the slowdown effect upon Southwest State’s servers, the director of IT researches the source of the problem and discovers that a small company called Red Moose is sending the e-mails. Acting quickly, the director gives his employees approval to block Red Moose’s bulk e-mails. Red Moose, furious at the loss of advertising, contends the block is a violation of its First Amendment right to commercial speech. The director comes to you, an attorney in the Office of the General Counsel at Southwest State, asking what the university’s legal response should be.165 The legal landscape surrounding unsolicited bulk e-mail (spam) is complicated and diverse. This chapter begins with a brief history of spam and the legal issues that state legislatures and Congress face in attempting to curb it. Federal courts across the country have grappled with the scope of these efforts, most notably with the CAN-SPAM Act of 2003.166 The borderless nature of the Internet means that the problems created by spam (including the slowdown of critical servers and the financial costs associated with eliminating spam) are felt acutely across the globe. This chapter will discuss state and federal efforts to combat spam in the United States and provide practical tools for the practitioner facing a spammer in the courtroom (or representing one).

164. Performed by Spam Terry Jones, Michael Spam Palin, John Spam, John Spam Cleese, Graham Spam, Spam Spam Chapman, Evie Spam, Egg and Clips Idle, Terry Spam Sausage Egg Spam Gilliam. Lyrics by Terry Jones, Michael Palin, and Fred Tomlinson. 165. Facts taken from White Buffalo Ventures, LLC. v. Univ. of Tex., 420 F.3d 366 (5th Cir. 2005). 166. Officially known as Controlling the Assault of Non-Solicited Pornography and Marketings Act of 2003, 15 U.S.C. § 7704–7713.


2. How to Investigate The source of spam is almost never the business that is advertised in the unwanted e-mail (i.e., southwestsingles.com in the scenario). Service providers offering Web-focused marketing services to legitimate business often use spam marketing as a way to increase traffic to a client’s site. These service providers are often referred to as a search engine optimizer or traffic optimizer. Traffic can be increased by implementing banner ads, sponsored advertising, strategic use of keywords in metatags, and—among the less reputable means—spam mailings, “Affiliate”167 programs, and manipulation of search results through the use of “Link Farms” and “Keyword Stuffing.” Assume that southwestsingles.com was not the source of the spam for the purposes of our scenario. Southwestsingles.com is a legitimate business that hired a service provider to help grow the business. There are at least six points of entry into this investigation: 1. 2. 3. 4. 5. 6.

The content displayed on the Web site itself, southwestsingles.com The registration for the domain name, southwestsingles.com The header information from a piece of spam e-mail The ISP that is being used to originate the spam e-mail Spam blacklists Forums and discussion groups that focus on eradicating spam

It may seem obvious that the starting point should be a thorough review of the Web site that is the subject of the SPAM advertisement. Finding out who is behind the advertised Web site is an often overlooked starting point. Begin with a thorough review of southwestsingles.com. Practice Tip Spam 1 An inexperienced researcher often leaps directly to a WHOIS query. The domain registrant may, in fact, be the same as the owner of the site. Just as often though, the domain is held by someone else, such as the Web site developer, the host company, a proxy, a corporate attorney, or an individual who is seemingly unrelated.

A legitimate company will not try to hide behind the potential anonymity offered by a Web site. Read the “About Us” page, and note names and contact information. What does the legal page say? Is a person identified as the

167. An Affiliate Program is described more thoroughly in the glossary.

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contact to receive complaints? Obtain a Dun & Bradstreet report to find the corporate officers and to cross-check contact information. Assuming you have found legitimate information, consider whether a mere phone call to a corporate officer might solve the problem. Many legitimate businesses do not know that a marketer is using spam as an advertising channel. Often legitimate businesses do not want their reputation tarnished, and many businesses are happy to be told about the unauthorized use of spam to market their goods or services. These types of businesses want the spam stopped too. The business may even give you the name of its service provider. A simple phone call can stop the flow of this particular spam campaign and avoid legal wrangling. Practice Tip Spam 2 Before picking up the phone, you may want to investigate any news about the company, including any gripe or consumer complaint sites to determine if your overture is likely to be successful or rebuffed.

In the event the Web site does not provide information about the owner, then check the registration for the domain name. The mechanics of checking a registration are discussed more thoroughly at §II(C)(3). One angle is likely to be different when trying to trace down the source of spam. The registration information is more likely to be blatantly false or hidden behind a private domain registration. Do not give up at this point. Use a search engine and search the Web for the alias used on the registration. Someone may have already unmasked the registrant and made the information public. You may also discover that the registrant used the alias in connection with some other more traceable activity. A private domain registration does not completely protect registrants.168 Recognizing that private registration can be misused, many registrars reserve the right to unmask a private registrant under certain circumstances in the event that the registrant violates the registrar’s implemented acceptable use policy (AUP). Copyright infringement and the sending of spam, among other activities, are sometimes reasons for revealing a registrant—or, in many instances, the registrar will at least deliver a cease-and-desist letter to the registrant.

168. The original purpose of private registrations was to protect registrants from spam and other unwanted solicitations.


Finally, use the power of the Internet community. Blacklists (discussed in more detail at §V(C) (3)(b)and in the Glossary) reveal known spam domains along with contact and sometimes other information. Check the blacklists to see if your spam problem has already reported. The same investigation principle applies to forums and newsgroups. Search these for information that might help resolve your particular problem. A list of such forums and newsgroups appears in Appendix A under the subheadings “Spam and Abuse Lists” and “Spam and Scam Fighters.”

3. The Law a. Defining Spam Spam, the term applied to bulk junk e-mails, derives from a 1970 Monty Python’s Flying Circus sketch featuring a menu that repeats the word spam to the point of absurdity.169 Spam became a part of everyday usage as the amount of unsolicited commercial e-mails exploded during the mid-1990s when the Internet gained popularity. Commercial advertising via spam serves as a lowcost alternative to conventional mailings and ultimately push costs from the sender to the recipient.170 The term spam is commonly applied to unsolicited e-mails, sent in bulk (in a mass e-mail called a blast) that tend to be commercial in nature, ranging from sales pitches for objectionable and unobjectionable services alike, including pornography or advertisements for pharmaceuticals, insurance, or prizes in exchange for a “quick survey.”171 Many of these e-mails consist of harmless advertisements, but other types include computer viruses that hijack the recipient’s computer and attempts to induce recipients to reveal their credit card number or other personal information.172 Spam can be annoying and costly for recipients and the Internet network. Some consider spam as an invasion of privacy as the perpetrator acquires a recipient’s e-mail address without the addressee’s consent.173 ISPs suffer

169. See id., at note 1. 170. Sabra-Anne Kelin, State Regulation of Unsolicited Commercial E-mail, 16 Berkeley Tech. L.J. 435, 437 n. 11 (2001). 171. For a list of examples and types of spam, see VirusList.com, Types of Spam, http://www. viruslist.com/en/spam/info?chapter=153350533. 172. Meyer Potashman, International Spam Regulation & Enforcement: Recommendations Following the World Summit on the Information Society, 29 B.C. Int’l & Comp. L. Rev. 323, 327 (2006). Examples include the Melissa virus, which automatically resends messages to people on a recipient’s contact list, and viruses that turn computers into “zombies” that allow a spammer to take advantage of a recipient’s Internet connection. 173. Taiwo A. Oriola, Regulating Unsolicited Commercial Electronic Mail in the United States, 7 Tul. J. Tech. & Intell. Prop. 113, 117 (2005).

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the most. Many ISPs spend up to 10 percent of their revenues combating spam.174 Spam contributes to customer attrition as well.175 Though the effects of spam may be readily apparent, defining it can be difficult. For this reason, Justice Stewart’s “I know it when I see it” approach may be appropriate for determining a message to be spam.176 A more concrete definition can be found in the CAN-SPAM Act, the Congressional effort to combat the debilitating effects of spam. The Act regulates “unsolicited commercial electronic messages,” which are defined as “any electronic mail message the primary purpose of which is the commercial advertisement or promotion of a commercial product or service” (including content on an Internet Web site operated for commercial purpose).177 The European Directive 2002/58/EC on Privacy and Electronic Communications similarly refers to “unsolicited communications” by “electronic mail” “for the purposes of direct marketing.”178 b. Private Combat Private and legislative solutions have emerged to combat spam. Private solutions focus on technology solutions, namely: (1) blocks, implemented by an ISP at the originating e-mail server, that prevent spam transmission; (2) filters, implemented by the addressee’s ISP, that stop the message before it arrives in the addressee’s mailbox; and (3) filters installed by Internet users that segregate spam from legitimate e-mail.179 However, a legal professional cannot use any of these solutions to find the source of spam. But there is one solution that can be “repurposed” for your own investigative ends: the wonderfully named Realtime Blackhole List (RBL). RBL combines the

174. Gartner Group, ISPs and Spam: The Impact of Spam on Customer Retention and Acquisition, 4, http:www.brightmail.com/global/pdf/gartner.pdf (June 14, 1999). Direct costs include the allocation of resources to buy additional hardware to handle the spam traffic and to hire additional staff to field complaints and investigate problems. 175. Id. at 12. 176. In Jacobellis v. Ohio, a First Amendment case involving the right of the state of Ohio to ban the showing of a French film on the grounds that it was pornographic, Justice Potter Stewart famously wrote in his concurring opinion, “I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description; and perhaps I could never succeed in intelligibly doing so. But I know it when I see it . . .” 378 U.S. 184, 197 (1964). 177. 15 U.S.C.A. § 7702. (2007). 178. Council Directive 2002/58/EC, on the Processing of Personal Data and the Protection of Privacy in the Electronic Communications Sector, 2002 O.J. (L 201) 37 [hereinafter EU E-Privacy Directive]. 179. Ho Khe Yoke & Lawrence Tan, Int’l Telecomms. Union, ITU WSIS Thematic Meeting on Countering Spam: Curbing Spam Via Technical Measures: An Overview 4–5 (2004), available at: http://www.itu.int/osg/spu/spam/background.html (August 10, 2009).

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power of the Internet-user community with the pervasive necessity of the domain name system (DNS). The RBL was created to list the “hosts and networks that are known to be friendly, or at least neutral, to [spammers] either to originate or relay spam or to provide spam support services.”180 The list is distributed to ISPs to enable them to block all e-mails originating from a source on the RBL.181

Practice Tip Spam 3 “Let’s Advertise—Be a Fink for $25,000!”182 Use the power of the community to locate a spammer. The blacklists mainly function as a repository of information used to cut off such domains from the rest of the Internet. The information found on these lists can be used to track down your targets. As an example, assume a spammer is falsely using your client’s trademark in spam blasts. Your client wants to sue for trademark infringement, but you cannot find the source of the spam. You may find the identity of the spammer by checking the URL and other spam domain information against blacklists. Remember, there is an eager anti-spam community out there whose members can be very willing to help you. If there are promising leads on the blacklists, consider contacting the sponsoring organization and participants in anti-spam forums. Enlist their help directly. If the spammer has not already been reported to a blacklist, then report the spam domain. This will have the practical effect of minimizing the problem while you continue to search for the infringers.

While the RBL and its successor Domain Name System Blacklists (DNSBLs) have lightened the load of ISPs fighting spam, such lists have also received a significant amount of attention from critics who claim the RBL is overinclusive and that few safeguards exist to correct false positives (i.e., when a person is blocked from an ISP even though he or she is not a spammer.183

180. Kelin, supra note 169, at 440. See also HOWTO—Using DNS Blackout Lists, available at http://www.exim.org/howto/rbl.html (August 8, 2009). For a Web site containing links to current Domain Name System DNSBLs, see http://spamblock.outblaze.com/spamchk.html (August 10, 2009). For more information on how RBL technical works, see the Glossary. 181. Id. Other consumer organizations include the Coalition Against Unsolicited Commercial E-mail (CAUCE) (available at www.cauce.org), and Junk Busters (www.junkbusters.com). 182. Vicki Anderson, The Thomas Crown Affair (1968). 183. Id. at 443.

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c. Legal Combat (i) State Legislative Efforts Beginning with Nevada in 1997, a majority of the 50 states have passed some form of anti-spam legislation.184 Though many of these laws may be moot in light of the preemption provision in the CAN-SPAM Act, a discussion of state laws is still warranted as the evolution of the earlier state laws sheds light on the practical and constitutional concerns. Most of these state laws require parties sending spam to use an identifying label, such as ADV for advertisement and contain an “opt-out” provision that allows spammers to send spam unless the recipients exercise it (e.g., by sending an e-mail asking to be taken off the spammer’s list).185 Appendix D features a chart that summarizes states’ anti-spam legislation and provides a brief description of the aim of each statute to guide attorneys prosecuting (or defending) a spammer. State regulation of spam presents constitutional obstacles—namely, the dormant commerce clause. The Commerce Clause of the U.S. Constitution itself states “Congress shall have the Power . . . to regulate Commerce . . . among the several states.”186 The dormant commerce clause, the “negative derivative of the Commerce Clause,” prohibits the states from regulating interstate commerce or from discriminating against it187 States violate this clause when they impede upon the Congressional power to regulate interstate commerce. In the context of anti-spam legislation, spam may be regulated under the Commerce Clause because unsolicited commercial messages serve as an instrument of interstate commerce. However, relatively few spam laws may fall within this constitutional restriction given the reality that many antispam measures place requirements and prohibitions upon e-mail sent within the state as well as outside the state. As a result, a sender outside California would not be able to argue that California’s anti-spam measure results in differential treatment for out-of-state residents because it equally affects a sender within California. Even if a regulation affects resident spammers and out-of-state spammers equally, it may still indirectly place burdens upon interstate commerce.188 Early in its history, the Supreme Court crafted a balancing test to determine whether a state law adequately balances local needs against national ones. Under this test, “Congress has exclusive domain over those aspects of interstate commerce that are so national in character as to demand uniform

184. 185. 186. 187. 188.

For a summary of states’ spam laws, see Appendix D. See id. U.S. Const. art. I § 8 cl. 3 Kelin, supra note 169, at 449 (citing Gen. Motors Corp. v. Tracy, 519 U.S. 278, 287 (1997)). Kassel v. Consol. Freightways Corp., 450 U.S. 662 (1981).

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treatment.”189 By 2003, it became apparent that the increasing volume of unsolicited commercial e-mails and their deleterious effects for individual users, corporations, and Internet service providers alike constituted a problem “national in character.” Two cases, one from New York and the other from California, illustrate the manner in which courts have tackled these constitutional questions in state laws that attempt to regulate content on the Internet as well as the actions of Internet users. From each of these cases, the legal practitioner prosecuting (or representing) a spammer can gain a sense of the constitutional fault lines that lie beneath any attempts to regulate unsolicited commercial e-mail at the state level. Though American Libraries Associationn v. Pataki concerned a New York statute that regulated Internet pornography, a glance at its treatment of constitutional issues and the Internet can shed some light on similar issues in the spam context.190 In that case, the U.S. District Court for the Southern District of New York noted that New York’s statute had overreaching effects due to the borderless nature of the Internet.191 The court’s ruling against the statute on Commerce Clause grounds included a discussion of the inefficacy of state regulations for the Internet: “In almost every case, users of the Internet neither know nor care about the physical location of Internet resources that they access. Internet protocols were designed to ignore rather than document geographic location . . . no aspect of the Internet can feasibly be closed off to users from another state.”192 Although the law at issue in American Libraries concerned a Internet pornography law, the majority’s holding nevertheless underscored the difficulty in creating a regime of state anti-spam laws. A 2002 California case demonstrates how American Libraries fares when applied to a dormant commerce clause challenge to California’s anti-spam legislation. In Ferguson v. Friendfinders, the California Court of Appeals held that a state law regulating unsolicited commercial messages applied only to California residents receiving e-mail through equipment located in California, and thus did not regulate conduct outside California.193 The court distinguished American Libraries on the grounds that the New York statute in that case regulated Internet postings whereas the California statute regulated

189. Kelin, supra note 169, at 455 (citing Cooley v. Bd. of Wardens, 53 U.S. 299, 319 (1851)). 190. See Oriola, supra note 172, at 136. 191. Am. Libraries Ass’n v. Pataki, 969 F. Supp. 160, 170 (S.D.N.Y. 1997) (holding a New York law criminalizing the intentional use of a computer to transmit sexually explicit material violated the dormant commerce clause, given that the law regulated conduct outside the state and that its burden on interstate commerce outweighed its local benefits). 192. Id. 193. Nat’l Ass’n for the Blind v. Target, 452 F. Supp. 2d 946, 959 (2006) (citing Ferguson v. Friendfinders, 94 Cal. Ct. App. 1255 (Cal Ct. App. 2002)).

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e-mail.194 In other words, the New York statute regulated Internet content while the California statute regulated the activity of an e-mail user. Messages may be targeted at individuals in particular geographic areas, whereas a sexually explicit Internet posting may be accessed by anyone, anywhere.195 State courts in Washington and Maryland have adopted the same distinction as California.196 The legal practitioner defending a spammer may encounter significant difficulty when arguing that a state’s anti-spam law violates the dormant commerce clause. This is particularly true if an anti-spam law contains a geographic qualifier, for example, a limitation that applies only to messages sent via equipment located in the state for transmission (as California Business and Professional Code § 17538.4 did). A return to Appendix D reveals that most anti-spam state laws contain such geographic limitations. Although American Libraries has been distinguished in the anti-spam law context, its concern over the extraterritoriality of such laws underscores the need for federal spam legislation. (ii) Federal Law Lack of uniformity in anti-spam legislation was what pushed Congress to pass the CAN-SPAM Act in 2003. Congress cited a number of the same concerns as state legislatures, including the continued convenience and efficiency of electronic mail given the “extremely rapid growth in the volume of unsolicited commercial e-mail” and the “growth in unsolicited commercial electronic mail imposes significant monetary costs on providers of Internet access services.”197 Notably, the CAN-SPAM Act preempted many state laws that were more stringent than the CAN-SPAM Act itself, leading some critics of

194. Friendfinders, 94 Cal. Ct. App. at 1264–65 (holding that defendant electronic advertisers could not successfully claim that Cal. Bus. & Prof. Code § 17538.4 violated the dormant commerce clause because they had transmission equipment located in the state of California). 195. Nat’l Ass’n for the Blind, 452 F. Supp. 2d at 959. 196. Washington v. Heckel, 24 P.3d 404 (Wash. 2001) (upholding a Washington law prohibiting the dissemination of false or misleading information from a computer in Washington or to an e-mail address in Washington but finding that statute did not regulate conduct outside the state of Washington); MaryCLE, LLC v. First Choice Internet, Inc., 166 Md. App. 481, 525–26 (2006) (holding that law prohibiting the transmission of e-mail containing false information to a Maryland e-mail address did not violate the dormant commerce clause because it applied only to transactions that used a computer in Maryland or were sent to an address in Maryland). 197. 15 U.S.C. § 7701 (2)(a)(2)–(6).

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the bill to argue that it has created a “preemptive ceiling” that has “limited the more restrictive nature of state laws dealing with spam.”198 It is not against federal law to send spam. Unsolicited commercial bulk e-mail may be sent, provided it meets the requirements imposed by the CANSPAM Act, summarized in the table below: CAN-SPAM Section

Section Title

Description

15 U.S.C. § 7704(a)(1)

Prohibition of False or Misleading Transmission Information

Sender may not use routing information (originating domain name and originating e-mail address) that includes an originating e-mail address, domain name, or Internet protocol address access that was obtained by false pretenses or representations.

15 U.S.C. § 7704(a)(2)

Prohibition of Deceptive Subject Headings

Unlawful for a sender to initiate transmission of a message if such person has actual knowledge or reason to believe that a subject line of a message would be likely to mislead a recipient, acting reasonably under the circumstances.

15 U.S.C.§ 7704(a)(3)

Inclusion of Return Address or Comparable Mechanism in Commercial E-mail

Sender of commercial e-mail message must include a functioning return electronic e-mail address or other Internet-based mechanism that enables the recipient to “opt out” of receiving future commercial messages from the sender

198. Jameel Harb, White Buffalo Ventures, LLC v. University of Texas at Austin: The CAN-SPAM Act & The Limitations of Legislative Spam Controls, 21 Berkeley Tech. L.J. 531, 535 (2006) (quoting Dominique Chantal-Alepin, “Opting Out”: A Technical, Legal and Practical Look at the CAN-SPAM Act of 2003, 28 Colum. J.L. & Arts, 41, 43 (2004)).

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Prohibition of Transmission of Commercial Electronic Mail After Objection

If a recipient makes a request using one of the “opt-out” mechanisms provided by the sender, then sender must respect that request and may not send any other commercial e-mails to that address.

15 U.S.C.§ 7704(a)(5)

Inclusion of Identifier, Opt-Out, and Physical Address in Commercial Electronic E-mail

Unsolicited commercial e-mails must contain clear and conspicuous identification that the message is an advertisement or solicitation and notice of the “opt out” mechanism as well as a valid postal address for the sender.

15 U.S.C. § 7704(d)

Requirement to Place Warning Labels on Commercial Electronic Mail Containing Sexually Oriented Material

Any sender transmitting sexually explicit material must include a label in the subject line of that message

The CAN-SPAM Act attempted to create a more harmonious anti-spam regime at the federal level that would preempt state spam laws unless they prohibit “falsity or deception” in unsolicited commercial e-mail. Most state anti-spam laws, therefore, apply concurrently with the CAN-SPAM Act. The express preemption provision states: This Act supersedes any statute, regulation, or rule of a State or political subdivision of a State that expressly regulates the use of electronic mail to send commercial messages, except to the extent that any such statute, regulation, or rule prohibits falsity or deception in any portion of a commercial electronic mail message or information attached thereto.199

The CAN-SPAM Act provides that the Federal Trade Commission may bring a criminal action against a spammer defendant; it also creates a civil cause of action for state attorneys general as well as Internet service providers.200 A state attorney general’s power to prosecute a spammer defendant for transmitting unsolicited commercial e-mails is limited, however, depending

199. 15 U.S.C. § 7707(b)(1). 200. 15 U.S.C. § 7706(d), (f), and (g).

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upon whether the Federal Trade Commission or other federal agency decides to file a civil lawsuit against the same defendant.201 A specific exemption applies to the preemption provision: “Nothing in this Act shall be construed to have any effect on the lawfulness or unlawfulness of the adoption, implementation, or enforcement by a provider of Internet access service of a policy of declining to transmit, route, relay, handle, or store certain types of electronic mail messages.”202 Therefore, Internet service providers may draft their own anti-spam legislation outside the preemptive power of the CAN-SPAM Act. (iii) Constitutional Objections to CAN-SPAM Because the CAN-SPAM Act preempted a number of more stringent state spam laws and did not make sending spam illegal, a number of scholars have argued that it fell short of its stated goal of improving the convenience and efficiency of electronic mail. Others claim, however, that CAN-SPAM went too far and crossed constitutional boundaries (namely the First Amendment) to regulate unsolicited commercial e-mails. Anti-spam legislation implicates the First Amendment because it regulates unsolicited commercial e-mails that constitute commercial speech.203 Determining whether the regulation of such e-mails implicates the First Amendment depends upon the definition of spam. Many spammers may attempt to avoid liability under the CAN-SPAM Act by arguing that the e-mails sent were not commercial electronic mail messages. The Act defines commercial e-mails as those “the primary purpose of which is the commercial advertisement or promotion of a product or service.204 The Act also directs the Federal Trade Commission to promulgate regulations that clarify the definition of commercial.205 The Federal Trade Commission has done so, further defining commercial e-mails as those that constitute commercial speech under the First Amendment. As a result, an e-mail is only subject to the CAN-SPAM Act if it is commercial speech within the meaning of the First Amendment.206 Congress may not regulate commercial speech, spam or otherwise, unless it is otherwise unlawful or misleading. In Central Hudson Gas & Electric Co. v. Public Service Commission, the Supreme Court set forth a four-prong test to determine whether a regulation by a public entity violates First Amendment rights: (1) whether the speech is unlawful or misleading; (2) whether the interest expressed by the government is substantial; (3) whether the state

201. 202. 203. 204. 205. 206.

15 U.S.C. § 7706(f)(8). 15 U.S.C. § 7707(c). Harb, supra note 196, at 537. 15 U.S.C. § 7702(2)(A). 15 U.S.C. § 7702(2)(C). 16 C.F.R. § 316.3 n.1.

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action directly promotes that interest; and (4) whether the state action is more extensive than necessary to promote that interest.207 Applying Central Hudson to spam, the government can usually demonstrate a substantial interest in regulating the volume of unsolicited e-mails that are received due to the negative effects that such messages have on individual privacy and server efficiency. Congress therefore was able to meet this part of the Central Hudson test when it passed the CAN-SPAM Act. Governments must not only show a substantial interest but also that the action taken promotes that interest and is no more extensive than necessary to do so. To meet these parts of Central Hudson, Congress had to include a provision in the CAN-SPAM Act that permits the sending of legitimate commercial e-mail message so long as consumers are provided the opportunity to opt out of receiving future messages.208 The CAN-SPAM Act places a number of requirements upon spam, including that a message must contain “a clear and conspicuous identification that the message is an advertisement or solicitation or contains sexually explicit content.”209 Some have argued that the labeling requirement intrudes upon the First Amendment and unduly burdens entities that sell sexually oriented material via e-mail.210 In Reno v. ACLU, the Supreme Court made clear that free speech may not be suppressed online.211 Although few would dispute that such a right exists, the Supreme Court has also held that the privacy rights of a recipient must be respected. In Rowan v. U.S. Post Office Dept., the Court noted that a “mailer’s right to communicate must stop at the mailbox of an unreceptive addressee.”212 Labeling, therefore, serves as a compromise between the right to send and the right to refuse receipt.213 The Supreme Court has yet to address how the Supreme Court would handle the labeling requirement in light of the First Amendment, but in the discussion below, the legal practitioner may learn how various federal courts have addressed a claim by a spammer that CAN-SPAM violates their right to engage in free speech.

207. 447 U.S. 557, 566 (1980). 208. Potashman, supra note 171 at 340 (citing Matthew B. Prince, How to Craft an Effective AntiSpam Law (2004)), http://www.itu.int/osg/spu/spam/contributions/Background%20Paper_ How%20to%20craft%20and%20effective%20anti-spam%20law.pdf) (August 12, 2009). 209. 15 U.S.C. § 7704(a)(5)(A)(i). 210. Center for Democracy and Technology, Notice of Proposed Rulemaking: Proposed Mark for Sexually Oriented Spam, http://www.cdt.org/speech/spam/20040217cdt.shtml (last visited August 12, 2009). 211. 521 U.S. 844, 850 (1997). 212. 397 U.S. 728, 736 (1970). 213. Oriola, supra note 172, at 149.

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(iv) Applying CAN-SPAM in Federal Court The following federal cases demonstrate the legal landscape that has developed following the passage of the CAN-SPAM Act. In reviewing these cases, a legal practitioner facing a spam lawsuit can learn how federal courts have interpreted the Act and have responded to spammers’ constitutional objections. These cases also show that the odds of prevailing in a spam lawsuit are often stacked against a spammer. In FTC v. Phoenix Avatar, the Federal Trade Commission brought its first criminal lawsuit against a spammer under the CAN-SPAM Act. The FTC showed that the defendants, a vendor selling diet patches at Web sites www.countupandlookaway.com and www.keepyourmatehappy.biz214 were engaged in “barraging the public with spam” and introduced expert testimony that e-mail messages transmitted by defendants contained “header information that was materially false in violation of the CAN-SPAM Act.”215 In response to the defendants’ claim that prosecution under the CAN-SPAM Act violated their rights under the First Amendment, the court responded: “Defendant’s contention that a prohibition on e-mails omitting certain information—or requirement of disclosures—amounts to content-based restrictions on speech is rejected because it ‘overlooks material differences between disclosure requirements and outright prohibitions on speech.’”216 The court further noted that the FTC could easily meet its burden of showing that sending spam had a harmful effect on the public due to recipients being “forced to incur the costs of needlessly expended energy and time evaluating and eventually discarding defendants’ unsolicited messages.”217 Following Phoenix Avatar, other federal courts attempted to apply the provisions of the CAN-SPAM Act. In Madorsky v. Does 1–10, a plaintiff Internet user filed suit against the companies that had been clogging his inbox, including www.overnightfast1.com, fantasticgenericdrugs.com, and onlinemedshopping.218 The U.S. District Court for the Northern District of Ohio ruled against Madorsky, noting that while the CAN-SPAM Act was designed to protect consumers, consumers themselves have no private cause of action under the Act.219 Instead, as discussed above, the Act calls for criminal enforcement by the Federal Trade Commission and creates a civil cause of action for Internet access providers who are “adversely affected” by a

214. FTC v. Phoenix Avatar LLC, 2004 U.S. Dist. LEXIS 14717, at *36 (N.D. Ill. 2004). 215. Id. at *40. 216. Id. at *37 (citing Zauderer v. Office of Disciplinary Counsel of the Supreme Court of Ohio, 471 U.S. 626 (1985)). 217. Id. at *40. 218. 2006 U.S. Dist. LEXIS 37631, at *7 (N.D. Ohio 2006). 219. Id.

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violation of the CAN-SPAM Act.220 Internet access providers may bring an action against a spammer to enjoin further violation by the defendant or to recover damages in an amount equal to the greater of either the actual monetary loss incurred by the provider or the amount determined according to the statutory damages provision of that section of the CAN-SPAM Act.221 Courts have determined that a showing of adverse effect must be significant. In Hypertouch v. Kennedy-Western University, the court held that the activities of a spammer adversely affected an Internet access service upon a showing that “high spam loads had caused decreased server response and crashes . . . higher bandwidth utilization, and forced expensive hardware and software upgrades.”222 In contrast, the U.S. District Court for the Western District of Washington in Gordon v. Virtumundo found that an Internet access service could not prove adverse effect given that it could not show harm relating to bandwidth, hardware, Internet connectivity, and network integrity.223 The court reasoned that the plaintiffs’ inconvenience was merely similar to that experienced by the typical e-mail recipient.224 The definition of commercial may also play a role in a spammer’s defense. In Aitken v. Communications Workers of America, Verizon claimed that the mailings of defendants (organizers for the Communications Workers of America) violated the CAN-SPAM Act.225 The e-mails were received by hundreds of their employees and contained no opt-out mechanism or label identifying the messages as advertisements, which was a violation of the CAN-SPAM Act.226 Defendants maintained that their messages were not commercial because they related to union activity and were not selling any product or service. The court disagreed, finding that union activities are not automatically noncommercial and that the e-mails in fact were a “sales pitch” for union membership.227 In doing so, the court broadly defined commercial, noting that a “communication need not attempt to consummate a transaction immediately in order to be commercial in nature,” but an e-mail sent with the hope of generating future business is enough.228 Once standing and the commercial nature of an e-mail are established, the plaintiff must prove to the court that specific provisions of the CAN-SPAM

220. 221. 222. 223. 224. 225.

15 U.S.C. § 7706(g)(1). Id. 2006 U.S. Dist. LEXIS 14673, at *4 (N.D. Cal. March 8, 2006). 2007 U.S. Dist. LEXIS 55941, at *8 (W.D. Wash. 2007). Id. 496 F. Supp. 2d 653 (E.D. Va. 2007) (The e-mails sent by CWA urged Verizon employees to join WCA, telling them that they would enjoy better job security, benefits, and pay if they became members). 226. Id. at 657. 227. Id. at 664. 228. Id. at 666.

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Act (such as labeling requirements or use of a materially misleading subject line) have been violated. Federal courts have exercised caution in determining whether a subject line is in fact materially misleading. The Fourth Circuit found in favor of a spammer who had used an inaccurate “from” address but otherwise complied with opt-out requirements.229 The court further found that the subject line was not in fact materially misleading as reasonable recipients would have perceived the message’s ultimate purpose.230 The legal practitioner reading this chapter has probably realized at this point that most federal spam cases introduce the same issues: whether the plaintiff has standing to sue under the CAN-SPAM Act and can show an adverse effect; whether the e-mails in question constitute commercial e-mails, and whether the e-mails in fact complied with the labeling, opt-out, and other provisions of the CAN-SPAM Act. Once the preliminary issues concerning standing and the commercial nature of the e-mails are settled, the court will be left to study the e-mails themselves to determine if they meet the checklist of requirements set forth in the Act.

4. Prosecution Options Available in the European Union As with all Internet crime, the legal professional should consider whether a better resolution might be had in some other country. The European Union has been a leader on many issues created by the Internet age. Thus, this section briefly describes the laws of the EU that address the harmful effects of spam and discusses whether these laws provide another avenue for recovering damages. a. Obtaining Information, Help, and/or Directive In the European Union, legislation combating spam fits within the framework of legal measures designed to protect privacy, or “each citizen’s basic legal right to ‘information self-determination.’”231 Directive 95/46/EC, the Data Protection Directive, requires Member States to pass implementing legislation protecting all personal information of an individual, whether or not such data is publicly available and requires an individual’s consent before the processing of his or her personal information may take place.232 The EU

229. Omega World Travel v. Mummagraphics, 469 F.3d 348, 357–58 (4th Cir. 2006). 230. Id. 231. Joel Reidenberg, Resolving Conflicting International Data Privacy Rules in Cyberspace, 52 Stan. L. Rev. 1315, 1326 (2000). 232. Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data, 1995 O.J. (L 281) 31 [hereinafter Directive 95/46/EC].

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has become a leader on Internet-related privacy issues, treating privacy as a “political imperative anchored in fundamental human rights.”233 The European approach to information protection online not only imposes responsibilities upon businesses engaged in the processing of personal data online, but also grants individuals the right to consent to the processing of their personal information.234 The lack of analogous privacy protection in the United States has made the EU a model of information privacy protection around the world, “leaving Americans with legal protections as second class citizens in the global marketplace.”235 Practitioners should be aware of the effect this key difference between the United States and the EU has on the latter’s approach to spam regulation. An emphasis on privacy, responsibility, and consent can be seen in European anti-SPAM measures. The EU adopted Directive 2002/58/EC (E-Privacy Directive) to address the spam nuisance for all public electronic communications.236 The E-Privacy Directive has three key provisions, similar to those found in the CAN-SPAM Act. First, the Directive contains an opt-in provision (as opposed to the opt-out provision in the CAN-SPAM Act), requiring prior consent of subscribers before the transmission of unsolicited commercial e-mails.237 Second, the Directive includes a soft opt-in or customer relationship safe harbor that allows the use of e-mail addresses obtained in a lawful manner in connection with the sale of products to send direct marketing messages of the sender’s own similar products or services, but the sender must always offer an opt-out mechanism with each message.238 Third, the Directive contains a prohibition against the disguising or concealment of the identity of the sender of unsolicited e-mail messages and requires that unsolicited e-mails must contain a valid return address, similar to the provision found in the CAN-SPAM Act.239 b. Remedies Available in the European Union Article 15 of the E-Privacy Directive adopts the judicial remedies, liability provisions, and sanctions found in Chapter III of Directive 95/46/EC, the Data Protection Directive. These provisions extend to all national provisions

233. Reidenberg, supra note 239, at 1347. 234. Id. at 1326–27. 235. Joel Reidenberg, E-Commerce and Trans-Atlantic Privacy, 38 Hous. L. Rev. 717, 735 (2001). 236. Directive 2002/58/EC of the European Parliament and of the Council of 12 July 2002 Concerning the Processing of Personal Data and the Protection of Privacy in the Electronic Communications Sector [hereinafter Directive 2002/58/EC or E-Privacy Directive]. 237. Directive 2002/58/EC, art. 13(1). 238. Directive 2002/58/EC, art. 13(2). 239. Directive 2002/58/EC, art. 13(4).

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adopted by member countries of the European Union. According to Chapter III, Member States “shall provide for the right of every person to a judicial remedy for any breach of the rights guaranteed him by the national law applicable to the processing in question.”240 [Note: processing refers to data processing, the concern of this Directive]. Member States shall provide that “any person who has suffered damage as a result of . . . any act incompatible with the national provisions adopted pursuant to this Directive is entitled to receive compensation for the damage suffered.”241 But the sender of unsolicited commercial e-mails may be “exempted from liability, in whole or in part, if he proves that he is not responsible for the event giving rise to the damage.”242 The Directive provides that Member States shall “adopt suitable measures” to ensure the “full implementation of the provisions of this Directive” and establish sanctions to be imposed in case of infringement.243 The adoption of the remedies provisions from the Data Protection Directive thus provides the E-Privacy Directive with a significant advantage over its U.S. counterpart, the CAN-SPAM Act. Under Article 15, an individual has an express statutory right to file a civil suit for an alleged infringement of any of the provisions found in the Directive. No comparable individual right of action exists for plaintiffs filing suit in the United States. Directive 2002/58/EC states that legal, regulatory, and technical provisions should be adopted by the Member States to implement the Directive in a manner that “guarantees that the promotion and development of new electronic communications services and networks between Member States are not hindered.”244 c. Implementation of the E-Privacy Directive EXAMPLE: United Kingdom The Privacy and Electronic Communications Regulations of 2003, adopted in the United Kingdom, provides an example of the way Member States of the European Union have implemented the E-Privacy Directive. Under the Regulations, marketers cannot transmit unsolicited marketing material by electronic mail to an individual subscriber (defined by the Regulations as a person who is party to contracts with providers of public electronic communications services for the supply of such services) unless he or she has previously given consent to the marketer. The sender may not conceal or disguise

240. 241. 242. 243. 244.

Directive 95/46/EC, Ch. III, art. 22. Directive 95/46/EC, Ch. III, art. 23. Directive 95/46/EC, Ch. III, art. 23. Directive 95/46/EC, Ch. III, art. 24. Directive 2002/58/EC § 8.

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its identity and must provide a valid address that the recipient of the marketing material may use to send an opt-out request.245 Subscribers “shall be entitled to bring proceedings for compensation from that other person for that damage.” Parties seeking compensation must bring an action against the alleged violators in court. In any proceedings brought against a spammer under this Regulation, “it shall be a defense to prove that he had taken such care as in all the circumstances was reasonably required to comply with the relevant requirements.”246 Administrative action may also be taken into addition to court proceedings. The Regulations specify that action may be taken by the Office of Communications “where it is alleged that there has been a contravention of any of the requirements.”247 An individual “aggrieved by the alleged contravention” may also request the Data Protection Commissioner (referred to in the Regulations simply as “the Commissioner”), an official post (appointed by Her Majesty by Letters Patent) created by the Data Protection Act, to “exercise his enforcement functions in respect of that contravention.”248 In addition to the Commissioner’s powers of enforcement, the Information Commissioner’s Office (ICO) serves as an independent public body designed to “promote access to public information and protect private information” in the United Kingdom by administering “rulings on eligible complaints and taking appropriate action when the law is broken.”249 The ICO places significant emphasis on alternatives to compensation to prevent the transmission of unsolicited mail. First, the ICO provides online assistance as well as a phone helpline. More importantly, the ICO provides a complaint form on its Web site for subscribers to document and submit their evidence of violation of the Regulations that the ICO may use if it decides to initiate an enforcement action against the spammer. As the ICO notes, subscribers providing this information help “identify the strongest cases more quickly.”250 On a final note, the Regulations do not give corporate subscribes the “full range of rights available to individual subscribers, but does allow a corporate

245. Privacy and Electronic Communications (EC Directive) Regulations 2003, Statutory Instrument 2003 No. 2426, http://www.opsi.gov.uk/si/si2003/20032426.htm [hereinafter Privacy and Electronic Communications]. 246. Privacy and Electronic Communications Regulations at § 30. 247. Id. at § 32. 248. Id. at § 32. 249. Information Commissioner’s Office, Mission Statement, http://www.ico.gov.uk/. 250. Information Commissioner’s Office, Guidance for Subscribers on the Privacy and Electronic Communications (EC Directive), Regulations 2003, Part I, p. 31, available at http://www.ico. gov.uk/upload/documents/library/privacy_and_electronic/detailed_specialist_guides/ guidance_part_1_for_subscribers_v3.1_081007.pdf.


subscriber to ask for its number to be excluded from the directory if they want to.251 d. What Can Be Gained by Suing a Spammer in the European Union? As mentioned above, the E-Privacy Directive provides the practitioner with one significant advantage over the CAN-SPAM Act in that an individual has standing to sue for alleged infringement of any of its provisions. This advantage, however, may not assist the practitioner who is filing suit in the European Union as an alternative to the United States in every instance. For example, if a client received spam in his or her inbox without consent and without a preexisting customer relationship, the practitioner could suggest a civil suit in the European Union (assuming that EU jurisdiction exists and that the client can claim the benefits of EU protection) to seek damages. Altering the facts above, what if the client is not an individual receiving spam in his or her inbox, but a trademark holder seeking an injunction against a spammer who has sent unsolicited, bulk e-mails containing the mark? Directive 2002/58/EC and implementing legislation adopted in Member States (such as the Regulations passed in the United Kingdom) may be of only little help in this scenario, considering their emphasis on the protection of individual subscribers—not businesses—and the priority given to out-of-court, administrative agency-sponsored solutions. As a result, assuming jurisdiction exists, the trademark holder bringing a lawsuit or challenging the actions of a spammer in the EU would face further complications based on standing. If the Regulations and other implementing pieces of legislation are ostensibly designed to protect individuals who receive spam, a trademark holder with an objection to the content of the spam message may have a more difficult time using the Regulations to combat a spammer. The trademark holder may attempt to file complaints with the administrative channels provided, including the ICO, but these channels appear to be reserved for individual subscribers who have suffered some damage as a result of a violation of the Regulations (i.e., the receipt of an unsolicited e-mail would constitute such damage), not as a result of a trademark violation occurring within the text of the unsolicited messages sent. The connection between the E-Privacy Directive and the Regulations adopted in the United Kingdom to previous legislative measures designed to protect the privacy rights of Internet users and data protection measures

251. Information Commissioner’s Office, Guidance on Privacy and Electronic Communications (EC Directive) Regulations 2003, Part 2, § 7.3, available at http://www.ico.gov.uk/upload/ documents/library/privacy_and_electronic/detailed_specialist_guides/pecr_guidance_ part2_1206.pdf.

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(as mentioned above) helps explain the emphasis placed upon individual subscribers’ rights vis-à-vis spammers, not businesses. e. Conclusion This section discussed the possibility that alternative remedies exist in jurisdictions outside the United States. A brief study of the anti-spam directive issued in the European Union, and an example of implementing legislation from the United Kingdom, reveal that while alternative remedies may be available, the ability of a practitioner to use these provisions for a client who has been victimized by spam (either in the content of the message or in its receipt) remains to be seen and will depend entirely upon the facts of the case. Though the EU provides a right for an individual subscriber to file a civil suit against a spammer, practitioners seeking to benefit from this provision of the E-Privacy Directive should remain aware of three key issues: (1) Regulations apply to subscribers of public electronic communications services. (2) Regulations seek to protect individuals rather than businesses. This emphasis may be explained in part by the connection between the E-Privacy Directive and the Data Protection Directive. (3) Given these standing problems, businesses may be less likely to be able to avail themselves of the cause of action to sue for compensation or administrative remedies.

5. Strategies for Resolving the Scenario This brings us back to the Southwest State example given at the beginning of this chapter. The facts featured are those of White Buffalo Ventures v. University of Texas at Austin, a Fifth Circuit decision in which a spammer sued a large state university after it blocked the spammer’s attempts to send unsolicited bulk commercial e-mail to students.252 Interestingly, the spammers themselves relied upon the statute designed to curb their activity, the CAN-SPAM Act, to argue that the University of Texas’s (UT’s) anti-spam policy was preempted by the Act because UT is a state school and its actions state actions by default.253 In deciding its first case under the CAN-SPAM Act, the Fifth Circuit determined that such preemption did not exist because of tension with another provision of the Act—the exemption for Internet

252. 420 F.3d 366 (2005). 253. Id. at 371.

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access services.254 Agreeing with the district court, the court noted that it was “hard pressed to find that providing e-mail accounts and e-mail access does not bring UT within the statutory definition.” White Buffalo therefore presented a situation unanticipated by the CAN-SPAM Act, where an Internet access service is also a state entity.255 In such an instance, the Fifth Circuit ultimately favored the preemption exemption of the Act. White Buffalo (unsurprisingly) also raised a First Amendment claim, arguing that UT’s blocking of its commercial e-mails violated its right to engage in commercial speech. The Fifth Circuit applied the Central Hudson test, finding that UT’s policy survived First Amendment scrutiny, despite the fact that it could not justify the policy with UT’s stated interest in server efficiency.256 White Buffalo has been the subject of a significant amount of commentary from scholars, given the interesting wrinkle it added to CAN-SPAM jurisprudence: a spammer used the Act in this case to bring its claim against an entity the Act was intended to protect.257 Some have argued that this wrinkle adds strength to the argument that the CAN-SPAM Act does not effectively combat spam.258 Though White Buffalo may underscore the need for more stringent antispam legislation, it may also point out the inefficacy of any piece of legislation being used to combat spam. As this chapter has shown, jurisdictional boundaries mean little to an unsolicited commercial e-mail.

254. 255. 256. 257. 258.

Id. at 372. Id. at 373. Id. at 378. Harb, supra note 196, at 545. Id.

CHAP T ER

6 Electronic Evidence— Special Considerations They was takin’ plaster tire tracks, footprints, dog-smellin’ prints and they took twenty-seven 8 x 10 colored glossy photographs with circles and arrows and a paragraph on the back of each one explainin’ what each one was, to be used as evidence against us. “Alice’s Restaurant” —Arlo Guthrie1

A. Unique Characteristics of Electronic Evidence

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B. Authentication of Electronic Evidence

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1. Authentication of E-Mail Messages

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2. Authentication of Web Site Content

220

3. Authentication of Text Messages and Chat Room Content

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4. Authentication of Electronic Public Records or Reports

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5. Authentication of Computer-Stored Data and Records Produced in Civil Discovery or Seized in a Criminal Case

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6. Authentication of Business Records Stored in a Computer

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C. Hearsay Considerations

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1. Business Records Exception

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2. Other Exceptions

225

D. Challenging Authentication

226

E. Stipulated Authentication

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F. Best Evidence Considerations

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1. Lyrics by Arlo Guthrie.

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Chapter 6 Electronic Evidence—Special Considerations

The Federal Rules of Evidence apply to computer-based evidence in the same way as any other evidence. The application of these requirements to computerbased evidence, however, raises additional considerations due to the unique characteristics of computer-based information.

A. Unique Characteristics of Electronic Evidence Computer-based documents possess several unique characteristics: (1) metadata, (2) hidden text, and (3) residual or deleted data.2 Metadata is electronically stored detail about the “characteristics, origin, usage, and validity” of data associated with the document. Word processing applications generate specific markers including a file name, date of creation, date and number of subsequent revisions, and identity of all persons authoring and revising a document.3 The metadata is not visible to a reader on a paper printout of a document or while editing the document in electronic format. Such information is not completely invisible, however, and can be accessed and easily retrieved when documents are viewed on a computer monitor screen.4 Whereas metadata are hidden information about the document itself, hidden text is the portions of the content that a user selects not to display in the print version. User comments are another type of hidden text that are akin to a user’s annotations. They are viewable only when the document is in electronic form, not in hard copy.5 Finally, electronic documents will maintain residual and deleted data. Electronic information can be changed, edited, revised, and presumably deleted by using the computer’s delete button. The deletion process, however, permanently erases neither the earlier changes nor the document itself: the delete process merely removes from the computer’s directory the name of the file. The file itself remains within the computer as a magnetic image until it is overwritten by a new file. This magnetic image is referred to as residual data.6 To obtain this type of data, a forensic expert is often hired to recover

2. Weinstein’s Federal Evidence: Discovering and Admitting Computer-Based Evidence (hereinafter Weinstein) at § 900.01[4] (Joseph M. McLaughlin ed., Matthew Bender 2d ed. 1997). 3. Id. at § 900.01[4][a]. 4. Philip J. Favro, A New Frontier in Electronic Discovery: Preserving and Obtaining Metadata, 13 B.U.J. Sci. & Tech. L. 1, 4. 5. Weinstein, supra note 2, at §900.01[4][b]. 6. Id. at § 900.01[4][c][i].

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deleted computer files without compromising any other information on the computer.7 Practice Tip 1 Before using someone from your internal IT department, or hiring “just any” forensic technician, consider that the results will not be admissible evidence without adequate testimony. Chapter VII discusses the importance and selection of a forensic expert.

B. Authentication of Electronic Evidence Evidence must be authenticated before it is admitted into evidence.8 Fed. R. Evid. 901 applies to computer-based evidence just as it does to other forms of evidence. This rule states that “[t]he requirement of authentication or identification as a condition precedent to admissibility is satisfied by evidence sufficient to support a finding that the matter in question is what its proponent claims.” Authentication goes hand-in-hand with relevance as defined and governed by Fed. R. Evid. 401 and 402. Rule 401 defines relevant evidence as “evidence having any tendency to make the existence of any fact that is of consequence to the determination of the action more probable or less probable that it would be without the evidence.”9 Rule 402 states that “[e]vidence which is not relevant is not admissible.”10 Thus, to establish relevance, a proponent must, as a preliminary matter, authenticate the evidence by showing it is what it purports. Evidence that cannot be authenticated under Rule 901 is irrelevant and inadmissible under Rule 402.11 Fed. R. Evid. 104 contains the general procedures for determining whether evidence has been properly authenticated.12 The procedures for determining admissibility when the relevancy of evidence “depends upon the fulfillment of a condition of fact” are found in section (b) of Rule 401, which states: “[w]hen the relevancy of evidence depends upon the fulfillment of a condition of fact, the court shall admit it upon, or subject to, the introduction of evidence sufficient to support a finding of the fulfillment of the condition.”13

7. 8. 9. 10. 11. 12. 13.

Id. at § 900.01[4][c][ii]. Fed. R. Evid. 901(a). Fed. R. Evid. 401. Fed. R. Evid. 402. Weinstein, supra note 2, at § 900.06[1][a]. Fed. R. Evid. 901, Advisory Committee Notes. Fed. R. Evid. 104(b).

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In making this determination, the trial judge may only consider evidence that is itself admissible.14 The requirement of authentication in Rule 901 is a low hurdle that favors the admission of evidence. Ordinarily, a judge may make a preliminary finding on a prima facie showing that the “matter in question is what its proponent claims.” Under this standard, a judge need only determine that a reasonable juror could find that the evidence is genuine and what its proponent claims it to be.15 The role of the judge is limited to making a preliminary finding of the evidence’s genuineness as a matter of conditional relevancy, subject to later review by the ultimate trier of fact. Thus, the amount of proof necessary to support a preliminary authentication by a judge is minimal. To require more would undermine the role of the jury as the ultimate trier of fact.16 Fed. R. Evid. 901(b) provides illustrations of different methods by which the proponent may satisfy the requirement of authentication.17 This is not an exhaustive list, and a proponent is not limited to only one method of authentication.18

1. Authentication of E-Mail Messages The foundation required for admitting computer based-evidence, such as electronic messages, is the same as that for paper documents. As with paper documents, electronic messages may be authenticated by direct or circumstantial evidence.19 There are several methods available. E-mail messages can be authenticated based on their distinctive characteristics as described in Fed. R. Evid. 901(b)(4).20 Printouts of e-mail messages ordinarily bear distinctive characteristics including actual e-mail addresses containing the @ symbol (widely known to be part of an e-mail address) and names connected to those e-mail addresses. Frequently, e-mail messages also contain the name of the sender and recipient in the body of the e-mail, in the

14. 15. 16. 17.

Weinstein, supra note 2, at § 900.06. Id. Id. Fed. R. Evid. 901(b) (e.g., testimony of a witness with knowledge; nonexpert opinion on handwriting, distinctive characteristics, and the like; voice identification; public records or reports). 18. Id.; Advisory Committee Note to Rule 901(b). 19. Weinstein, supra note 2, at 900.07 20. Federal Rule of Evidence 901(b)(4) provides that the “[a]ppearance, contents, substance, internal patterns, or other distinctive characteristics, taken in conjunction with circumstances” is an example of authentication that conforms with the requirements of the rule.


signature block at the end of the e-mail, in the “To:” and “From:” headings, and in the signature of the sender.21 However, the sending address in an e-mail message may not be entirely conclusive because an e-mail message can be sent by persons other than the named sender—for example, a person with unauthorized access to a computer. Thus, the proponent of an e-mail message would be wise to authenticate with testimony from a person with personal knowledge of the transmission or receipt of the message.22 The contents of the e-mail message may help show authentication by revealing details known only to the sender and the person receiving the message, or by demonstrating the text of the e-mail message contains discussions of various identifiable matters.23 Metadata may also be valuable in authenticating e-mail messages (and other electronic documents, for that matter). The inherent traits of metadata may enable a party to establish such things as when a document was created and the identity of the author. This information can enable the proponent to more easily meet the authentication requirements under Fed. R. Evid. 901.24 E-mail messages that are not clearly identifiable on their own can be authenticated under Fed. R. Evid. 901(b)(3), which allows evidence to be authenticated by comparison with “specimens which have been authenticated.”25 Thus, e-mails that have already been independently authenticated using other methods, such as through the testimony of a witness or by their distinctive characteristics, may be authenticated using this method.26 Interestingly, some e-mail messages may be self-authenticating under Fed. R. Evid. 902(7). Extrinsic evidence is not required for authentication when “[i]nscriptions, signs, tags, or labels purporting to have been affixed in the course of business and indicating ownership, control, or origin” are present.27 As an example, business e-mails may contain an identification sufficient to authenticate an e-mail under Rule 902(7).28

21. See, e.g., United States v. Safavian, 435 F. Supp. 2d 36, 40 (D.D.C. 2006); United States v. Siddiqui, 235 F.3d 1318, 1322 (11th Cir. 2000). 22. Id;see also Fed. R. Evid. 901(b)(1). 23. See, e.g., Safavian, 435 F. Supp. 2d at 40. 24. Favro, supra note 4, at 11. 25. Fed. R. Evid. 901(b)(3). 26. See, e.g., Safavian, 435 F. Supp. 2d at 40–41. 27. Fed. R. Evid. 902(7); see also Weinstein, supra note 2, at § 900.07. 28. Weinstein, supra note 2, at § 900.07[3][c][i].

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2. Authentication of Web Site Content The admissibility of Web site content is subject to the same requirements as e-mail messages, under Fed. R. Evid. 901. As an example, a printout of content from a particular URL would be sufficient to meet Rule 901’s requirements if a witness testifies to the accuracy, date, and handling of the printed page.29 With respect to postings, courts have historically been concerned that third persons (other than the sponsor of the Web site) such as hackers were responsible for the postings that the proponent seeks to introduce. Therefore, many courts require proof that the organization hosting the Web site actually posted the statements or authorized their posting.30 One commentator has suggested that the following factors will influence courts in deciding whether to admit evidence of postings: The length of time the data was posted on the site; whether others report having seen it; whether it remains on the website for the court to verify; whether the data is of a type ordinarily posted on that website or websites of similar entities (e.g. financial information from corporations); whether the owner of the site has elsewhere published the same data, in whole or in part; whether others have published the same data, in whole or in part; whether the data has been republished by others who identify the source of the data as the website in question?31

For example, the Seventh Circuit in United States v. Jackson stated that the defendant needed to show that the Web postings were actually posted by the groups that operated the sites, as opposed to being slipped onto the groups’ Web sites by the defendant herself.32 Counsel attempting to authenticate exhibits from a Web site needs to address these concerns in determining which method of authentication to use.33

29. Id. at § 900.07[5]. 30. See, e.g. Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534, 555 (citing United States v. Jackson, 208 F.3d 633, 638 (7th Cir. 2000) (excluding evidence of Web site postings because proponent failed to show that sponsoring organization actually posted the statements, as opposed to a third party); St. Luke’s Cataract & Laser Inst. v. Sanderson, 2006 U.S. Dist. LEXIS 28873, 2006 WL 1320242 (M.D. Fla. May 12, 2006) (plaintiff failed to authenticate exhibits of defendant’s Web site postings because affidavits used to authenticate the exhibits were factually inaccurate and the author lacked personal knowledge of the Web site). 31. Id. at 555–56 (quoting Gregory P. Joseph, Internet and E-mail Evidence,  Prac. Litigator (Mar. 2002), reprinted in 5 Stephen A. Saltzburg et al., Federal Rules of Evidence Manual, Part 4 at 20 (9th ed. 2006). 32. 208 F.3d 633 (7th Cir. 2000). 33. Id.


3. Authentication of Text Messages and Chat Room Content Internet chat rooms and text messages allow persons to send and reply to electronic conversations in “real time.”34 The first hurdle to overcome when authenticating this type of electronic content is the reproduction of the post in an acceptable format. Courts have found chat room logs admissible, but only when the actual computer files were offered as evidence;35 edited reproductions of chat room logs have been found to be inadmissible.36 In United States v. Jackson, the court held that numerous chat sessions between an undercover agent posing as a 14-year-old girl and defendant that were cut and pasted into a Word document was inadmissible at trial as it did not accurately represent the entire conversations that took place.37 According to computer forensic expert testimony, computer chats can be accurately saved by producing a bit stream image of the hard drive or a screen capture where a log file is saved to the hard drive; it can also be done via the use of the ypager log found in Yahoo, or through third-party software programs.38 The second hurdle is identifying the poster as individuals typically post anonymously under invented screen names instead of using their true legal names. The proponent who wishes to authenticate this type of evidence should be prepared to provide evidence connecting the electronic communication with the purported sender (i.e., connecting the individual with the person’s screen name). This is often done through the contents of the conversation, a reference to a screen name during a conversation, or the records of chat providers such as AOL or MSN (among many others).39

4. Authentication of Electronic Public Records or Reports No special authentication foundation is necessary to account for a computergenerated or computer-stored public record or report.40 All that is required is for the report or compilation to be “from the public office where items of this

34. 35. 36. 37. 38. 39.

Weinstein, supra note 2, at § 900.07[4]. United States v. Tank, 200 F. 3d 627 (9th Cir. 2000). United States v. Jackson, 488 F. Supp. 2d 866, 870-71 (D. Neb. 2007). 488 F. Supp. 2d 866, 870–71 (D. Neb. 2007). Jackson, 488 F.Supp. 2d at 870. Id.; see also Lorraine at 556; see also Mack v. Markel Am. Ins. Co., 241 F.R.D. 534, 556 (D. Md. 2007) (stating that the most likely way to authenticate chat room and text messages is by using Federal Rules of Evidence 901(b)(1) (witness with personal knowledge) and 901(b)(4) (circumstantial evidence of distinctive characteristics)). 40. Fed. R. Evid. 901(b)(7) states: “Evidence that a writing authorized by law to be recorded or filed and in fact recorded or filed in a public office, or a purported public record, report, statement, or data compilation, in any form, is from the public office where items of this nature are kept.”

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nature are kept.” A computer record may also be authenticated by testimony that it represents a public record. “The minimal requirements are satisfied by testimony from a witness who obtained a copy of the record or report, even though the witness may have no special knowledge concerning how the record or report was prepared.”41 Helpfully, copies of certain public records, “including data compilations in any form” are self-authenticating if they are certified as correct by a “custodian or another person authorized to make the certification.”42 Tax documents offered by the government to prove tax evasion are examples of this type of authentication.43

5. Authentication of Computer-Stored Data and Records Produced in Civil Discovery or Seized in a Criminal Case An individual responding to a discovery request in a civil case or a subpoena in a criminal case, implicitly acknowledges that the production is the requested evidence. Thus, the response usually implicitly acknowledges that the matter in question is authentic. This type of evidence requires little, if any, foundation to authenticate depending on the specificity of the request.44 Presumption is stronger the more clearly a discovery request identifies or describes the requested matter. A response is what the proponent claims. On the other hand, a response to a broad discovery request may represent merely a belief that the matter in question relates to the request, not that it necessarily represents the requested matter.45 Therefore, if a discovery request or subpoena is presented in very broad terms, production alone absent corroboration will not be enough to establish that the proffered evidence is authentic.46

6. Authentication of Business Records Stored in a Computer Computer-stored business records are created by inputting data into a computer; these could include account records, spreadsheets, reports, invoices, statistical data, and memoranda.47 As these are usually hearsay, they are

41. Weinstein, supra note 2, at § 900.07[6]. 42. Fed. R. Evid. 902(4). 43. Leah Voigt Romano, Developments in the Law: VI. Electronic Evidence and the Federal Rules, 38 Loy. L.A. L. Rev. 1745, 1755. 44. Weinstein at § 900.07[2][a]. 45. Id. 46. Id. 47. Id. Computer-stored data should be distinguished from computer-generated data. Computergenerated data includes metadata, direct-dialed telephone calls, and automated teller

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inadmissible unless the proponent lays a proper foundation showing that the record satisfies one of the hearsay exceptions.48 Proponents often seek to admit these records under the business records hearsay exception, which recognizes the trustworthiness of “records of regularly conducted activity.” The reported case law tends to hold that evidence is admissible if the proponent shows that the record meets the criteria listed in Fed. R. Evid. 803(6). If a proponent of a computer-based record successfully establishes a foundation showing that the evidence satisfies the requirements of Rule 803(6), the Fed. R. Evid. 901 authentication requirements are also met and no additional foundation is necessary to admit the evidence.49 (See §VI(C) below for a discussion of hearsay considerations.)

C. Hearsay Considerations Even when an electronic document is properly authenticated, it is still subject to hearsay objections.50 Internet data and e-mail messages might even present multiple layers of hearsay concerns. For example, Internet authors may post information that was told to them by a third party who witnessed an event or that was relayed by a third party from a fourth party who was the actual witness. To be admitted as evidence, each level of hearsay must qualify under a hearsay exception.51 To determine whether an e-mail message is subject to the hearsay restrictions, the proponent must analyze five questions: (1) does the evidence constitute a statement, as defined by Fed. R. Evid. 801(a)?;52 (2) was the statement made by a “declarant,” as defined by Fed. R. Evid. 801(b)?53 (3) is the statement being offered as hearsay (that is, to prove the truth of the matter asserted)?;54 (4) is the statement excluded by the definition of hearsay under

48. 49. 50. 51. 52. 53. 54.

machine transactions. Computer-generated data does not present the same hearsay problem as computer-stored data because in these instances, there is no declarant making a statement. Thus, the evidence can be admitted upon a proper authentication foundation under Rule 901(b)(9) (“evidence describing a process or system used to produce a result and showing that the process or system produces an accurate result”). Id. Id. Id. at § 900.07[1][b][i]. Id. at § 900.07[3][c][ii]. Paul R. Rice, Electronic Evidence: Law and Practice 280 (2005). Fed. R. Evid. 801(a) provides: “A ‘statement’ is (1) an oral or written assertion or (2) nonverbal conduct of a person, if it is intended by the person as an assertion.” Fed. R. Evid. 801(b) provides: “A ‘declarant’ is a person who makes a statement.” Fed. R. Evid. 801(c) provides: “’Hearsay’ is a statement, other than one made by the declarant while testifying at the trial or hearing, offered in evidence to prove the truth of the matter asserted.”

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Fed. R. Evid. 801(d)?;55 and (5) if the statement is hearsay, is it covered by one of the exceptions identified in Fed. R. Evid. 803, 804, or 807?56 There are 23 exceptions listed in Fed. R. Evid. 803, many of which are implicated when the proponent is seeking to introduce electronic evidence.57 The most common method of admission is through the business records exception.

1. Business Records Exception A record qualifies for the business records exception if an appropriate witness testifies or certifies that it meets the following criteria: (1) the record was made contemporaneously, or nearly so, with the event recorded by, or with information from, a person with knowledge of the matters recorded; (2) the record was kept in the regular course of business; and (3) the company maintains a regular practice of making that type of record.58 Not all records maintained by a company come within the business-record hearsay exception as only records “kept in the course of a regularly conducted business activity” satisfy the requirements. To show that a record was kept as a regular business practice requires some evidence that its creator had a business duty to make and retain the particular record. Moreover, business records are recognized as reliable under the hearsay exception only if all participants involved in furnishing the information and making the record are under a business duty to do so. For example, ordinarily there is no systematic or routine business policy in the preparing and filing of e-mails between employees, and such records do not comply with Fed. R. Evid. 803(6).59 Similarly, courts have refused to allow Web postings to fit under the business records exception because ISPs do not themselves post or create the information on their sites.60 A records custodian or other qualified witness can testify that computerbased records were made and retained in compliance with the requirements of the business records hearsay exception. The witness need not have

55. For example, e-mail messages sent by a party opponent qualify as party admissions and fall outside of the definition of hearsay. 56. Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534, 562–63 (D. Md. 2007). 57. For an in-depth discussion of all 23 exceptions in Rule 803, see id. at 569–76 (D. Md. 2007). 58. Weinstein, supra note 2, at § 900.07[1][b][i]; see, e.g., Rambus Inc. v. Infineon Tech. AG, 348 F. Supp. 2d 698, 706 (E.D. Va. 2004) (analyzing the admissibility of e-mail under the business record exception to the hearsay rule). 59. Weinstein, supra note 2, at § 900.07[1][c][iii]; see also Monotype Corp. v. Int’l Typeface Corp., 43 F.3d 443, 450 (9th Cir. 1994) (e-mail messages were not “regular, systematic functions” and therefore not admissible under the business records exception because they were not prepared in the regular course of business). 60. United States v. Jackson, 208 F.3d 633 (7th Cir. 2000).

Hearsay Considerations 225

firsthand knowledge of the contents of the record or of the manner in which the record was compiled and kept. A general understanding of the records and how they are prepared is all that is necessary to comply with Rule Fed. R. Evid. 803(6).61 Fed. R. Evid. 902(11) sets up a procedure by which parties can authenticate certain records of regularly conducted activity other than through the testimony of a foundation witness. Rather than testifying at trial, a records custodian or other qualified person may submit a written certification. A certification for domestic business records is sufficient if it complies with the requirements of 28 U.S.C. § 1746, which subjects the declarant to a criminal penalty for knowingly providing false information. A party who intends to use a certification rather than live foundation testimony must give advance written notice of its intent and a timely opportunity for the opposing party to inspect the business record.62 As discussed above, if a proponent of a computer-based record successfully establishes a foundation showing that the evidence satisfies the requirements of Fed. R. Evid. 803(6), the Fed. R. Evid. 901 authentication requirements are also met and no additional foundation is necessary for the evidence to be admitted.63

2. Other Exceptions Fed. R. Evid. 803(1) and 803(2) provide exceptions for a present sense impression and an excited utterance. The prevalence of electronic communication devices such as cell phones, Blackberries, PDAs, and the like mean that people always seem to have their electronic devices with them and available to send e-mails or text messages describing events as they are happening. Thus, Fed. R. Evid. 803(1) and 803(2) may provide hearsay exceptions for electronic communications containing either present sense impressions or excited utterances.64 Similarly, Fed. R. Evid. 803(3) permits the statement of the declarant’s state of mind, sensation, mental, emotional, or physical condition, as well as statements of motive, intent, and plan or design, but excludes statements of memory or belief if offered to prove the truth of the fact remembered.65 The foundation for proving an exception under Fed. R. Evid. 803(3) is that

61. 62. 63. 64.

Weinstein, supra note 2, at § 900.07[1][d][i]. Id. at § 900.07[1][d][ii]. Id. at § 900.07[1][b][i]. See, e.g., United States v. Ferber, 966 F. Supp. 90 (D. Mass. 1997) (holding that an e-mail about the substance of a telephone call with the defendant qualified as a present sense impression under Rule 803(1)). 65. Fed. R. Evid. 803(3).

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the statement be made contemporaneously with the mental state being proven. There must also be no suspicious circumstances that would evidence a motive for fabrication or misrepresentation of the declarant’s state of mind, and the declarant’s state of mind must be relevant in the case.66 Because e-mail is a method of communication that seems particularly prone to candid statements of the declarant’s state of mind, feelings, emotions, and motives, this exception to the hearsay rule may be particularly useful when trying to admit e-mail messages.67

D. Challenging Authentication As it is easy to allege that an electronic document has been altered or testimony fabricated, courts require more than mere speculation that a document was forged or tampered with before they will compel a party to undertake an extensive search of its records. The computer’s ability to retain a record of all earlier edits and versions of a document can be helpful in ascertaining the authenticity of a disputed document. It is here that metadata, hidden data, and deleted or residual data may be useful.68 Metadata can perform a crucial function in establishing whether a document is what the proponent says it is. Basic metadata characteristics can show whether a document has been inadvertently or intentionally modified.69 A general proffer demonstrating that a particular document was tampered with may be sufficient to compel discovery production, particularly if the requested production is relatively easy to accommodate. If retrieval of computer-based documents to prove the authenticity of a disputed document is burdensome, a responding party should be prepared to offer less burdensome alternatives. For instance, if the authenticity of an entire database is disputed, a less burdensome alternative than reviewing all of the documents in the database is to “spot check” a random selection of documents.70

E. Stipulated Authentication Fed. R. Evid. 901 recognizes that authentication of evidence can be accomplished by party stipulation or admission. In civil cases, parties can stipulate

66. Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534, 570 (D. Md. 2007). 67. Id.; see, e.g., Safavian, 435 F. Supp. 2d at 44 (admitting e-mail that contained statements of defendant’s state of mind under Rule 803(3)). 68. Weinstein, supra note 2, at § 900.06[5][a]. 69. Favro, supra note 4, at 11. 70. Id.

Best Evidence Considerations 227

to the authenticity of computer-based evidence during the pretrial conference. The limited discovery available in criminal cases, however, requires that most authentication of evidence in these cases be done at trial.71

F. Best Evidence Considerations At first glance, the Federal Rules of Evidence might seem to post a significant problem to the proponent of electronic evidence by stating that “to prove the content of a writing, recording, or photograph, the original writing, recording, or photograph is required.”72 Most offers of electronic evidence are actually printouts of stored information not the original recording. However, the definition of the term original found in Fed. R. Evid. 1001 states “if data are stored in a computer or similar device, any printout or other output readable by sight, shown to reflect the data accurately, is an ‘original.’”73 Because of this exception, few (if any) reported decisions have discussed serious challenges to electronic records under the best evidence rule.

71. Weinstein, supra note 2 at § 900.06[4]. 72. Fed. R. Evid. 1002. 73. Fed. R. Evid. 1001(3).


CHAP T ER

7 1

Forensics and Experts

An expert, ‘cause I get the job D-O-N-E So, lights, camera, action, All Hail the One that gets the job done. “I Get the Job Done”2 —Big Daddy Kane

A. Scenario

230

B. Understanding the Expertise

231

C. How to Choose an Expert

231

1. What Credentials Should You Look For?

231

2. How Do You Find Experts?

232

3. How Much Do Expert Services Cost?

232

4. How Many Companies Should You Compare?

232

5. What Should an Expert Concentrate on First?

232

6. Can the Expert Write a Clear Report?

233

D. Computer Forensic Science

233

E. Forensics and the Scenario

234

F. Conclusion

238

1. Jeffrey R. Bedser, CPP CCCI President and Chief Operating Officer, Internet Crimes Group Inc., provided the expertise behind this chapter. 2. Lyrics by Big Daddy Kane.

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A. Scenario It is 4:45 pm on a Friday afternoon (of course). Your client starts the call with, “Wow, I’m glad I caught you—we’ve got a real problem.” Here is the scenario: over six months ago, customer research “may” have been taken. The client goes on to explain that confidential files were present in an unsecure folder on a corporate server for an undetermined length of time. To make matters worse, someone had altered the administrative controls on the server so that the files were available to all the users on the local network (LAN) and possibly many users on the wider network (WAN). This situation apparently existed for some time despite the fact that thousands of people could have accessed the files—or noticed and reported the inappropriate presence of same. So what is the problem? These files contained personal data along with other proprietary information. Someone may have accessed the data and taken a copy for illicit purposes. You need to ask the following types of questions to determine whether a forensics expert will be needed. Here is a typical dialogue: Q: How long ago did this take place? A: About three weeks. Q: Has your staff tried to conduct their own investigation? A: Yes. Some searches. Q: Where is the server now? A: Still in use. Q: Who has accessed the server since you were aware of the potential breach? A: We don’t know. Q: Do you maintain records showing how and when the server was used? A: Yes, some. Q: Was there external Internet access to this server? A: We’e not certain—maybe for a couple of weeks.

You should be very concerned if your client’s answers are like these as much of the potential computer evidence has been tampered with or potentially altered. You need information to be able to assess if there has been a breach of data protection laws (this has to be done quickly to comply with the client’s statutory obligation). You need to be able to assess if there are potential negligence claims against your client. Also, does this involve a rogue employee? Has anything else been exposed or taken? However, you need to recognize the limitations of your knowledge. Computer forensics requires technical expertise, with the technology evolving at a staggering rate, so it may be best to let the experts help you. First, you need to understand what an expert can do.

How to Choose an Expert

Almost everyone’s reaction to a situation like the above is to first go after the Web site itself. But although it is important to identify the owner of the site and try to enlist that person’s help, going after the Web site owner tends to be beside the point, as owners of interactive Web sites are immune from liability under the Communications Decency Act.3 The defamers should be the focus of the investigation, even if they are unlikely to have the deep pockets.

B. Understanding the Expertise What defines an expert in this arena? Many legal professionals fall into the trap of the general technologist and bring the wrong resource to bear. Consider this: in an effort to save money, many clients will tell you they are relying on their internal technology staff. This is unlikely to be a sound approach for at least the following reasons: • There is always the potential that a member of the technology staff is complicit in the problem. The technology staff controls the system at the configuration level, as well as controlling all the passwords and privileges. They also know where to hide files on a system. For example, a huge cache of pirated music was being maintained on a client’s system by a member of the staff. • Even if the technology staff is trustworthy, will they be able to present to a fact finder the results of their efforts? • Finally, consider who is going to run the clients’ systems while its staff are investigating their problem, or later, tied up in a courthouse for days or weeks? Although these don’t seem like “legal” issues, they most certainly have legal implications. From the outset you need to build and protect the integrity of any evidence—and you need to protect the credibility of any expert.

C. How to Choose an Expert 1. What Credentials Should You Look For? At the time of publication of this book, there are no standardized credentials that are recognized in more than a handful of jurisdictions. At a minimum,

3. The Communications Decency Act, 47 U.S.C. Section 230 offers immunity from defamation suits to a provider or user of an interactive computer service who posts information provided by another individual.

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however, any potential consultants or experts must have certifications appropriate to the type of computer software they will use.

2. How Do You Find Experts? Advertising can be very deceptive. The best source of good experts is your own social network. Ask the question of your peers within your own organization as well as others. True experts have satisfied clients.

3. How Much Do Expert Services Cost? This will depend on where you are and what level of expertise you need. Be wary of prices at either end of the spectrum. Although direct cost comparison is difficult as every matter is different, keep in mind you are retaining a time and material resource who will bill much in the same way attorneys bill. Always be prepared to at least spend US $5,000 when you engage an expert as rarely can effective forensic effort be delivered for less than this without compromises.

4. How Many Companies Should You Compare? When you are shopping for computer forensic expert/investigators, be prepared to ask qualifying questions to gauge their competency. Here are some suggested interview questions: • Tell me about your most complicated case. • Tell me about an experience you have had with a particular case where you have come across something you did not know how to approach. What did you do to solve this problem? • Are you licensed? Where? Bonded? Insured? What is your E and O liability level? • What training do you have? Are you certified? • Have you testified in court regarding evidence? • Has your testimony or evidence ever been discredited during crossexamination? Why?

5. What Should an Expert Concentrate on First? A potential expert’s first concern should be with securing the system and protecting evidence. The second step is to ensure that there is as little impact on the internal business processes as possible.

Computer Forensic Science 233

6. Can the Expert Write a Clear Report? Whether it is a network hack or recovery of key e-mail messages for evidence of a crime, your expert needs to quickly find the key data and present it to you in a manner that is clear and professional, including translating it from “tech speak” into common courtroom language. Reports should be written and should never be driven by opinion. The key flow of such reports should be: Statement of Facts followed by a short paragraph regarding the relevance of that fact to the conclusions of the report. As this is a forensic process, an expert’s results should be replicable every time someone else follows the same process. Here are some basic questions: • What knowledge does the expert have of network systems, appliances, servers, specific operating systems, and any other technology that could affect the scenario? • How does this operating system log user activity? System activity? • When does the system log information (assuming that someone thought to enable it by turning it on)? Where does it store the data? What is the retention period of these logs? • Who has accessed the machine/server since the event was discovered? Is there a log of these activities that can be used to rule out false positive events?

D. Computer Forensic Science According to the U.S. Federal Bureau of Investigation, “Computer forensic science is the science of acquiring, preserving, retrieving, and presenting data that has been processed electronically and stored on computer media.”4 The basis of a forensic science is to demonstrate through a replicable process that evidentiary findings are the same no matter how many times the process is repeated.5 Accordingly, a computer forensic expert must follow a strict methodology or process that demonstrates the computer evidence is correctly obtained.

4. 5.

http://www.fbi.gov/hq/lab/fsc/backissu/oct2000/computer.htm. Interestingly, the computer forensic process is one of the few forensic processes established that cannot modify or destroy any portion of the evidence. In traditional forensic science, part of the blood spatter, hair follicle, or paint chip is destroyed through the chemical analysis. In the case of computer science, the standard is to not modify any of the evidence, as any change to the data could result in modification that could refute or at least damage the case.

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Practice Tip Forensics 1 In the event a client believes a corporate computer has been used to commit a crime, your best advice is: “Do not touch the computer. If it is on, then leave it on. If it is off, then leave it off.” For a flowchart illustrating the best practice for seizing electronic evidence, see Appendix J.

A key term that comes up in the table that bears further discussion is unallocated file space. When data is written to a storage device, data clusters from the File Allocation Table are allocated to store the data. When subsequently the file is deleted by the user, the data is not destroyed or erased. The delete process will cause these data clusters to become unallocated, but they will still retain the “old” data until the system “reallocates” these data clusters. The data contained in this unallocated file space contains fragments of files and directories. What this means to the layman is that potentially sensitive data/information can be recovered from this area by forensic review with forensic tools. Most persons fail to recognize that the deletion process does not truly erase the sensitive data, and this is often how incriminating evidence will be discovered. Method 1. Protect the computer system from alteration, data corruption, and damage; 2. Locate and enumerate all files, including: normal, hidden, deleted, encrypted, and password-protected; 3. Attempt to break any passwords or encryption; 4. Recover as many of the deleted files as possible; 5. Reveal the contents of hidden and temporary files; 6. Access the protected and encrypted files; 7. Analyze all relevant data, including data located in unallocated file space and file slack; 8. Reveal embedded data that may reveal the data history; 9. Access Internet history logs; 10. Identify content that may contain evidence of user names, passwords, prior visit logs, and custom settings; 11. Produce an index list of all relevant files, and provide an overall opinion on the system examination; and 12. Provide expert testimony or consultation, if required.

E. Forensics and the Scenario It is often helpful at this point to discuss the importance of handling the investigation and evidence in a manner specifically consistent with court

Forensics and the Scenario

requirements. This is obviously an aspect of the investigation that cannot be handled internally. When you arrive on site at the client facility, you are met by the information technology professional (IT Pro) who approaches you with obvious reservations. As the server is under her “control” and her staff performed the initial investigation regarding the data loss, she is skeptical at best that you will be able to improve upon the situation. The server is identified, taken offline, and shut down. Assuming you have hired an expert, your expert’s next step is to preserve the evidence on the server while not making any alterations to it that might overwrite or damage existing data that could be evidence. Using the appropriate tools, the expert should kick off the preservation process. While the process runs, you interview IT Pro to obtain more information (your expert should join you during this meeting). Taking careful notes, you document the operating system version and release as well as the applications/software installed on the system. You determine if the server was ever used for another purpose and whether it has been wiped and rebuilt since that time. Does another machine control access to this server? Does that machine log the users’ access and use of the target server? Where are these logs? Can the expert give you access to them? Hopefully the server acquisition and the interview will end at approximately the same time. The expert gathers up your evidence (copy/image of the server and the various server logs) and documents a chain of custody for IT Pro to sign off on as being accurate. The operation then begins the analysis phase of the investigation. This involves working from the forensic copy or image of the computer’s hard drives to “carve out” data that is relevant to the investigation. This is where the inherent knowledge of the operation of the software applications, appliances, and operating systems becomes very useful. What is the retention period for the data in question? Is it stored for 24 hours or 6 months? In of the scenario, the expert will be looking for log files stored in various locations dictated by the software of both the operating system (in this case Window Server 2003) and the database program that controlled/utilized the customer data. The log files extend back prior to the incident in question (actually over seven months). The IT Pro runs what are called verbose logs, which is to say that they log by default all the events on the server that can be logged and retain them as long as there is space to store them. That is the good news—the bad news is that the log files are huge. The expert will next examine the log files and look for anomalous activity. Answering the following questions is key to the direction of this investigation: • Are their indications in the log that the server was accessed from outside the corporate network? Do any of the IP addresses trace to “risky” parts of the world?

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• Comparing the logs to the information provided by the client regarding permitted access, are there any session times outside of the permissible windows? Once the information is gathered to match the above criteria, an extensive review process needs to take place. In it, two dozen anomalous sessions are identified. They are anomalous because of the suspicious IP addresses or odd time of day. You have a prime suspect session. One session looks promising. It occurred at 11:14 P.M. on a Saturday night when the office was not staffed, and the anomalous system access and database access occurred at about the same time. The IP address traces to an internal corporate computer. Time to get back to the client, as now you need to determine the user of the computer in question and to forensically acquire the hard drive of that target machine. The client checks its records and determines that the person who used the computer was in sales. He left the company rather abruptly two months ago. Interestingly, this former employee went immediately to work for a competitor and is currently being litigated against for a breach of a noncompetition agreement. This is good news for the client’s IT organization, as it is further demonstrates the data breach was internal rather than external. However, this is bad news for the company as it is likely that the customer data was taken by a former employee to use in stealing customers. The acquisition of the former employee’s computer goes ahead as planned. It is time to determine how and if the data has left the network. The examination will involve looking for two types of residual information to answer the question of the customer data breach: Was the data ever on the machine? If so, is there evidence that the data was ever removed from the machine? Using the image of the computer, the expert will look for data related to: • Internet Usage: • Browser (Internet Explorer, Mozilla, Firefox, Safari) • Peer to Peer (P2P) • FTP Sessions (file transfer protocol) • RT Sessions (remote terminal sessions) • E-mail Clients (MS Outlook, Eudora, Thundermail) • NNTP (Usenet) • Instant Messaging (AIM, Yahoo!, MSN, iRC, ICQ, etc) • Physical Access: • CD/DVD Writers (burners) • External Hard Drives (USB cable, Fire wire cabled) • USB Thumb Drives • MP3 Music Players (iPod, Zen Players, Rio, etc) • Digital Cameras

Forensics and the Scenario

Why are all of these important? All of these methods of Internet connectivity provide a person with the ability to move data files. All of the physical devices have hard drives upon which a file can be stored. All of these types of devices leave “fingerprints” or residual information on a computer. Every time an external device is plugged into the computer, information is added to the computer about that device, including a time stamp of when it was added. The software used to transfer files to these devices logs the movement of the files. (This is all retrievable through forensic analysis.) The same goes for the Internet usage. All of those actions and software applications that would be used to transfer a file off of a computer via the Internet will leave logs and traces of that process. All are recoverable through analysis. The expert determines that a digital camera was installed on the machine. This occurred on the day prior to the resignation of the computer user. In checking the settings and logs of the software associated with the camera, you locate a session time that offsets from the file access date on the original server by only 25 minutes. A quick calculation of file transfer times on this computer (followed by a more formal benchmarking of the computer) demonstrates the stolen data file would have taken 18 minutes to be transferred to the camera. While you now know the data file from the server was accessed from this computer and that it was moved to a digital camera shortly thereafter on this same computer, you still do not know whether the former employee was at the computer. In other words, you still have to place him at the keyboard at that time. This can be more complicated than it sounds. The next step will involve detailed time line analysis of the approximate 60 minutes prior to the server access and the 60 minutes trailing the file being moved to the digital camera. What you need to find is some type of user activity on the computer that definitively can be tied to the former employee. There are several categories of “smoking gun” forensic artifacts that are very useful for doing just this. The Internet history is the best place to start. If you can find other activity during the same network login session (of the file theft and digital camera ilk) that is personal to the former employee suspect, you can rule out someone else logging onto the computer with his credentials and setting him up (which of course would be his first line of defense if accused). Several really good indications are: • • • • •

Personal online banking sites; Benefits Web sites; Personal Web-based e-mail accounts; Online music or movie services; and Blogs

In this scenario, the expert found a hit for a local bank’s online Web site that was accessed during the relevant time frame. The user name cached on

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the computer from the session is formatted with the first initial and last name of the bank customer The pattern matches that of the former employee—and the password is not stored for automatic login. At this point, you can confidently tell the client, “We’ve got them!”

F. Conclusion Valid and reliable methods to recover data from computers analyzed as evidence in investigations are a prerequisite for success in court. They must also be legally defensible to ensure that nothing in the original evidence was altered or misinterpreted, and that no data was added to or deleted from the original evidence. There are significantly more potential complications in an investigation of this nature than are readily apparent. Failure to understand all aspects of the technology with which you are interfacing is fraught with peril. It is easy to miss information or misinterpret evidence that is key to a reliable conclusion.

APPENDIX

A Online Investigative Tools

Authorized Domain Registrars ICANN Accredited Registrars

http://www.icann.org/registrars/ accredited-list.html

Complete directory of every registrar for every TLD available.

Corporate information Annual Reports

http://www.annualreports.com

Corporate annual reports

Annual Reports Service

http://www.annualreportservice.com

Corporate annual reports

Hoovers

http://www.hoovers.com/free/

Corporate information

The Corporate Library

http://www.thecorporatelibrary.com

Information on corporations and Investing from the experts

Dun & Bradstreet

http://www.dnb.com/us/index.asp

Order reports on company financials and credit status

SEC EDGAR

http://www.sec.gov/edgar.shtml

Basic SEC filings and corporate information (free)

EDGAR Online

http://www.edgar-online.com

More comprehensive SEC filings database (not free)

Stockhouse

http://www.stockhouse.com

Investors discuss investing, offer advice, etc.

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240

Appendix A Online Investigative Tools

Courts and Docket Information PACER

http://pacer.uspci.uscourts.gov

Access to all dockets of every case in a federal court. Registration required and a fee to download documents.

U.S. Courts

http://www.uscourts.gov/

Basic information for the U.S. federal judiciary

National Center for State Courts

http://www.ncsconline.org/D_KIS/ info_court_web_sites.html

Comprehensive directory of state court Web sites

International Court Directory

http://www.ncsconline.org/D_KIS/ CourtWebSites/International.html

Comprehensive directory of international courts

DNS lookup tools Network Tools

http://network-tools.com

Traceroute, Ping, and DNS lookup utilities

NS Lookup

http://zoneedit.com/lookup.html

Solely DNS lookup

Domain Searches UWhois.com (Universal WHOIS)

http://www.uWhois. com

Search domains worldwide, includes 246 different country codes

InterNIC

http://www.internic. net/Whois.html

Search for domain information on all major top-level domains

ARIN WHOIS

http://www.arin.net/ Whois

Search contact and registration for entities registered with American Registry for Internet Numbers

Instant Domain Search

http:// instantdomainsearch. com

Powerful domain search tool, though limited to .com, .net, and .org

Appendix A Online Investigative Tools Better WHOIS

http://www. betterWhois.com

Powerful domain search includes information from all top-level domains and all registrars

NameDroppers

http://www. namedroppers.com

Complete domain search services, based on keywords

Domain Tools

http://www. domaintools.com

Complete domain search tools, including histories

Finance and Fraud Fraud

http://www.fraud.org

Equifax

http://www.equifax.com

Experian

http://www.experian.com

Forums IP Law Forum

http://www.intelproplaw.com/ ip_forum

Free Advice

http://www.freeadvice.com

Free advice from people all over the Internet, including legal advice

ExpertLaw Forum

http://www.expertlaw.com/ forums/forumdisplay.php?f=81

Legal research forum

Free Legal Research Law Guru

http://www.lawguru.com/ search/lawsearch.html

Free basic legal information

Findlaw

http://www.findlaw.com

Free basic legal search engine; includes basic case law searches and forms

LexisOne

http://www.lexisone.com

Free basic legal search engine; includes basic case law searches and forms

MegaLaw

http://www.megalaw.com/ research.php

More basic legal research, forms, and referrals

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General Intellectual Property Information Intellectual Property Law Server

http://www.intelproplaw. com

IP law portal; includes, links, articles, and more

Electronic Frontier Foundation

http://www.eff.org/issues/ intellectual-property

Articles and discussions re: intellectual property issues

ABA Section of Intellectual Property Law

http://www.abanet.org/ intelprop/home.html

Largest IP organization in the world

American Intellectual Property Law Ass’n

http://www.aipla.org

American Intellectual Property Law Bar Association clearinghouse

Intellectual Property Law for Exporters

http://www.export.gov/ regulation/exp_tic_ipr_ article.asp

World Intellectual Property Organization

http://www.wipo.int/portal/ index.html.en

Global IP Information

Copyright Clearinghouse

http://www.copyright.com

Research copyrights

Informational Blogs and Web Sites LifeHacker

http://lifehacker.com

Tech tips, tricks, and downloads

Underground News

http://www. undergroundnews.com

Users trade security tips and information

Inter Alia

http://www.inter-alia.net

Internet legal research blog

The Patent Librarian’s Blog

http://patentlibrarian. blogspot.com

Up-to-date patent legal research blog

FastCase

http://fastcase. blogspot.com

Accelerated legal research blog

Out of the Jungle

http://outofthejungle. blogspot.com

The future of legal research, as contemplated in a blog

US Post Office

http://www.usps.com

Net Lingo

http://www.netlingo.com

Webopedia

http://www.webopedia.com


International Organizations International Money Laundering Information Network

http://www.imolin.org

Canada Criminal Intelligence Service

http://www.cisc.gc.ca

Council of Europe’s Fight Against Corruption and Organized Crime

http://www.coe.fr/corrupt/adr-web.htm

International Chamber of Commerce

http://www.iccwbo.org

Internet Protocol Tools Internet Protocol (IP) Tools

http://www.iptools.com

Search all information about an IP number

Internet Safety and Security Tools and Sites Shadowsurf

http://www.shadowsurf.com

Anonymous proxy server

Anonymouse

http://anonymouse.org/ anonwww.html


Anonymous Web Browser

http://htmlblock.co.uk/ anonymous_web_browser

Free anonymous browser

Trend Micro Free Port Scan

http://www.hackercheck.com

Discover vulnerabilities in your Internet connection

Audit My PC

http://www.auditmypc.com

Test your firewall, broadband speed, etc.

Spybot

http://www.safer-networking. org/en/index.html

Free spyware scanner; also includes registry scanner

Center for Internet Security

http://www.cisecurity.org

Clearinghouse for news and information on Internet security issues

Insecure.org

http://www.insecure.org

Security information, news, and complete array of hacker lists and security tools

Symantec Anti-Virus Research Center

http://www.symantec.com/ avcenter/venc/data/stealth_ boot.html

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244 Appendix A Online Investigative Tools Anonymizer

http://www.anonymizer.com


Anon

http://anon.efga.org/ WebProxies


Investigative Search Engines US Patent & Trademark Office

http://www.uspto. gov

Research patents, trademarks, and copyrights

BirchBob

http://www.birchbob. com

Technology market search

FBI Reading Room

http://foia.fbi.gov

Access point for the FBI’s Central Records System

Google Scholar

http://scholar.google. com

Search scholarly literature across many disciplines

Northern Light

http://www. northernlight.com

Research and analysis across many different industries

Access My Library

http://www. accessmylibrary.com

Access millions of articles from top publications from libraries

Internet Public Library

http://www.ipl.org

Newspapers, magazines, and books available free for all.

I Slueth

http://www.islueth. com

PI Mall

http://www.pimall. com/nais/missingm. html

Maps and People Search Google Maps

http://maps.google.com

Yahoo Maps

http://maps.yahoo.com

MapQuest

http://www.mapquest.com

ZabaSearch

http://www.zabasearch.com

Type in a name and find people all over the United States

Appendix A Online Investigative Tools People Search

http://www.peoplesearch.net

411 Locate

http://www.411locate.com

Ancestry

http://www.ancestry.com

Marketplaces and Exchanges Sourceguides

http://www.sourceguides. com/markets

Guide to 500 online marketplaces and global exchanges

Networking sites LinkedIn

http://www.linkedin. com

Professional network, built one link at a time

BNI International

http://www.bni.com

World’s largest business networking organization

MySpace

http://www.myspace. com

Social networking site (invitation needed to gain access)

Facebook

http://www.facebook. com

Social networking site

Police Agencies FBI

http://www.fbi.gov

U.S. Federal Bureau of Investigation

United States Secret Service

http://www.treas.gov/ usss

Financial Crimes Enforcement Network

http://www.fincen.gov

Securities & Exchange Commission Enf. Div.

http://www.sec.gov/ divisions/enforce.shtml

Enforcement of securities law violations

Interpol

http://www.interpol.int

International police agency

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Appendix A Online Investigative Tools International Chamber of Commerce

http://www.iccwbo.org

The world business organization

Int’l Ass’n of Chiefs of Police International Police Ass’n

http://www.theiacp.org

Includes global directory of police agencies Police news and information

European Institute for Crime Prevention

http://www.vn.fi/ etusivu/en.jsp

Crime prevention information with a European focus

United Nations Crime and Justice Information Network

http://www.uncjin.org

International crime news and information

CopNet

http://police.sas.ab.ca

Information of interest to police and a directory of police agencies’ Web sites

Nat’l Center for Missing & Exploited Children

http://www.ncmec.org

http://en.ipa-iac.org

Real Property Records, Titles and Mortgage Records Lexis

http://lexis.com

Search Engines Google

http://www.google.com

The king of all search engines; useful investigative functions are: e-mail alerts, blog search, maps (check false address), and notebook to clip and collect information

Yahoo!

http://www.yahoo.com

The original search engine

Ask.com

http://ask.com

Inquiries can be posted in question form

Appendix A Online Investigative Tools Windows Live

http://www.live.com

Microsoft’s search engine

Gigablast

http://gigablast.com

Efficient search engine

Exalead

http://www.exalead.com/ search

Enterprise search engine

Dogpile

http://www.dogpile.com

Dialog

http://www.dialog.com

Euroseek

http://www.euroseek.com

Excite

http://www.excite.com

I-Tools

http://www.itools.com

Extreme Search

http://www.extremesearch.com

IAF

www.iaf.net

E-mail search site

Search Resumes Monster

http://www.monster.com

One of the first jobs databases, and still one that employers sift through daily

Simply Hired

http://www.simplyhired.com

Job search made simple

The Ladders

http://www.theladders.com

Specialize in $100K/ year-plus positions

SPAM and Abuse Blacklists SpamCop

http://www.spamcop.net/ bl.shtml

Research if IP address has been blocked for spam

SpamHaus

http://www.spamhaus. org/sbl

Look up IP addresses to see if they have been identified as spammers

Abusive Hosts Blocking List

http://www.ahbl.org

Look up domains/IPs that have been blocked due to various types of abuse

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Spam and Scam Fighters Spamcop

http://www.spamcop.net

Report spam, spam blocking lists, and spamfighting community

Scambusters

http://www.scambusters. org

Scams, spammers, and identity theft information and advice

Snopes

http://www.snopes.com

Main Internet repository for urban legends.

Internet Crime Complaint Center

http://www.ic3.gov/ media/annualreports.aspx

FBI partners with ISPs to report on Internet crime concerns.

CyberInvestigations

http://www.fbi.gov/ cyberinvest/cyberhome. htm

The latest FBI news regarding current cybercrime investigations

Hoax-Slayer

http://www.hoax-slayer. com

Information on the latest e-mail hoaxes and Internet scams

Cyber-Criminals Most Wanted

http://www. ccmostwanted.com/ topics/sc/scams.htm

Includes specific information on cyber scams

Better Business Bureau

http://www.bbb.org

Consumer information on businesses

National Consumer League

http://www.fraud.org

Comprehensive information about fraud and scams, online and off

Statistics and General Research Sources FedStats

http://www.fedstats.gov

Search U.S. federal statistics, without knowing the source agency

Statistical Abstract of the United States

http://www.census.gov/ compendia/statab

Population and economic statistics for the United States

State and County Quickfacts

http://quickfacts.census. gov/qfd/index.html

Population and economic statistics for U.S. cities and towns with populations over 25,000

Appendix A Online Investigative Tools NationMaster

http://www.nationmaster. com

Database of global statistics

United Nations Statistics Division

http://unstats.un.org/unsd/ methods/inter-natlinks/sd_ intstat.htm

Directory of international statistics

CIA World Factbook

https://www.cia.gov/ library/publications/ the-world-factbook

Excellent resource for demographic and statistical information

Inter-University Consortium for Political and Social Research

http://www.icpsr.umich. edu

Excellent source for political and social science information

U.S. Department of State Country Information

http://www.state.gov/ www/regions/ background_info_ countries.html

Background information on every country in the world.

Telephone Directories The Ultimate White Pages

http://www.theultimates. com/white

Several phone directories combined into one comprehensive page

Switchboard

http://www.switchboard.com

Business phone numbers

Freeality

http://www.freeality.com/ finde.htm

Reverse phone number look up

Numberway

http://www.numberway.com

Worldwide phone numbers

Yellow Book

http://www.yellowbook.com

U.S. business phone numbers

Reverse Phone Detective

http://www. reversephonedetective.com

Traceroute tools Ecrimetools.com

http://www.ecrimetools.com

Comprehensive investigative tool for the legal professional, including traceroute tools

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250 Appendix A Online Investigative Tools Traceroute.org

http://www.traceroute.org

Comprehensive traceroute database.

Network Tools

http://network-tools.com

Traceroute, Ping, and DNS lookup utilities

ARIN

http://www.arin.net/Whois

AP NIC

http://www.apnic.net

Check Domain

http://www.checkdomain.com

Register

http://www.register.com

Sam Spade

http://www.sampspade.org

U.S. Government Information USA.gov

http://www.usa.gov

The U.S. federal government’s Web portal

U.S. Patent & Trademark Office

http://www.uspto.gov

Search database of registered patents, trademarks, and copyrights

Federal Communications Commission

http://www.fcc.gov

Search every item brought before the FCC since 1992

THOMAS

http://thomas.loc.gov

Search everything brought before Congress since 1995

Web Site Archives Internet Archives Wayback Machine

http://www.archive.org/ web/web.php

Investigate the history of a particular URL; see what that site looked like at various times during its history

Web Site Traffic Ranking.com

http://www.ranking.com

Web site traffic rankings

Alexa

http://www.alexa.com

Web site traffic rankings

Internet Traffic Report

http://www. internettrafficreport.com

Basic overview of connections speeds around the world

APPENDIX

B Glossary

Access (copyright) “Opportunity to review the copyrighted work.” E.F. Johnson Co. v. Uniden Corp. of Am., 623 F. Supp. 1485, 1492 n.5 (D. Minn. 1985). (criminal) “To approach, instruct, communicate with, store data in, retrieve data from, or otherwise make use of any resources of a computer, directly or by electronic means.” Wash. Rev. Code (ARCW) § 9A.52.010(6) (2008). “The technical capability to interface with a communications facility, such as a communications line or switch, so that law enforcement can monitor and receive call setup information and call content.” Office of Technology Assessment, Electronic Surveillance in a Digital Age, Glossary (July 1995). “To gain entry to, instruct, or communicate with the logical, arithmetical, or memory function resources of a computer, computer system, or computer network.” Cal. Penal Code § 502(b)(1) (2008). The Computer Fraud and Abuse Act states “the term ‘exceeds authorized access’ means to access a computer without authorization and to use such access to obtain or alter information in the computer that the accesser is not entitled so to obtain or alter;” 18 U.S.C.A. § 1030(e)(6). (technology) 1. The ability and means necessary to store data in, to retrieve data from, to communicate with, or to make use of any resource of a system. 2. To obtain the use of a resource. 3. [The] capability and opportunity to gain detailed knowledge of or to alter information or material. An individual does not have access if the proper authority or a physical, technical, or procedural measure prevents him or her from obtaining knowledge or having an opportunity to alter information, material, resources, or components. Federal Standard 1037C, Institute for Telecommunications Sciences. Access control: The Federal Standard 1037C, Institute for Telecommunications Sciences (188) defines access control as: “1. A service feature or technique used to permit or deny use of the components of a communication system. 2. A technique used to define or restrict the rights of individuals or application

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Appendix B Glossary programs to obtain data from, or place data onto, a storage device. 3. The definition or restriction of the rights of individuals or application programs to obtain data from, or place data into, a storage device. 4. [The] process of limiting access to the resources of an AIS to authorized users, programs, processes, or other systems. 5. That function performed by the resource controller that allocates system resources to satisfy user requests.” ACPA (ACPA) Acronym for the Anticybersquatting Consumer Protection Act. 15 U.S.C. §§ 1114, 1116, 1117, 1125, 1127, 1129 (1998)). (legal) A cybersquatter is liable to the owner of a trademark who, with “a bad faith intent to profit from that mark,” “registers, traffics in or uses a domain name” that is either identical or confusingly similar to a “distinctive” mark or is identical, confusingly similar or dilutive of a “famous mark.” The court can “order the forfeiture or cancellation of the [offending] domain name or [its] transfer . . . to the owner of the mark.” 15 U.S.C. § 1125(D)(1)(c). The mark owner can also recover up to three times his actual damages and obtain injunctive relief. Actual damages include the profits the domain name registrant made from his use of the mark, as well as losses sustained by the mark holder as a result of the domain name registrant’s actions (such as lost sales or harm to the mark’s reputation). In lieu of actual damages, the mark owner can elect to recover statutory damages of between $1,000 and $100,000 per domain (§ 1117). The actual amount awarded is within the court’s discretion. Attorney’s fees can be recovered in exceptional cases. Address record: A record that maps a host or domain name to an IP Address, also referred to as a 32-bit IPv4 address. (See, Domain name system) It is important to know the IP address in order to identify the Internet Service Provider, the physical location of the host server, and the net block owner. Anonymizer: An anonymizer or an anonymous proxy is a tool that attempts to make activity on the Internet untraceable. It accesses the Internet on the user’s behalf, protecting personal information by hiding the source computer’s identifying information. There are many purposes for using anonymizers, including: Anonymizers help minimize risk. They can be used to expose human rights abuses without retribution, to speak about a taboo without loss of reputation, or to receive information within a repressive regime. But there are many ways in which this service can be abused as well. Criminals can use anonymizers along with encryption software to securely hide their identity and keep their message hidden from any police or intelligence agencies. Law abiding citizens who wish to secure their communications from illegal government snooping may do the same. http://en.wikipedia.org/wiki/anonymizer.

Appendix B Glossary Anonymous FTP (Internet) A log-on convention that permits a user to access a computer to which it has no access rights and to transfer files from publicly accessible areas of an FTP site to the user’s computer by using the user name anonymous and the user’s e-mail address as the password. Many computer systems throughout the Internet offer files through anonymous FTP. This means that you can access a machine without having to have an account on that machine (i.e. you do not have to be an official user of the system). These anonymous FTP servers contain software, documents of various sorts, files for configuring networks, graphic images, song lyrics, and all sorts of other information. Archives for electronic mailing lists are often stored on and are available through an anonymous FTP. An enormous amount of information is stored on these machines that is ready for anyone who’s seeking it. http://faqs.org/faqs/usenet/faq/part1/section-27.html. (legal) “In addition to making files available to users with accounts, thousands of content providers also make files available for ‘anonymous’ retrieval by users who do not possess an account on the host computer. A content provider who makes files available for retrieval by anonymous FTP has no way of discerning who gains access to the files.” Shea v. Reno, 930 F. Supp. 916, 928 (S.D.N.Y. 1996). “A content provider who makes files available on an anonymous FTP . . . has no way of knowing the identity of other participants who will have access to those servers.” Id. at 941. Anonymous remailer (legal) A computer programmed to serve as a relay station for electronic mail messages. Identifying information on the original message is removed and the message is then forwarded anonymously to its intended destination. “A server that purges identifying information from a communication before forwarding it to its destination.” Reno v. ACLU, 521 U.S. 844 (1997). “An e-mail address provides no authoritative information about the addressee, who may use an e-mail ‘alias’ or an anonymous remailer. There is also no universal or reliable listing of e-mail addresses and corresponding names or telephone numbers, and any such listing would be or rapidly become incomplete. For these reasons, there is no reliable way in many instances for a sender to know if the e-mail recipient is an adult or a minor. The difficulty of e-mail age verification is compounded for mail exploders such as listservs, which automatically send information to all e-mail addresses on a sender’s list. Government expert Dr. Olsen agreed that no current technology could give a speaker assurance that only adults were listed in a particular mail exploder’s mailing list.” Id. at 845 (finding 90); see also Shea v. Reno, 930 F. Supp. 916, 927 (S.D.N.Y 1997).

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Appendix B Glossary Attack (security) “Attempt to gain unauthorized access to an IS’s [information system’s] services, resources or information, or the attempt to compromise an IS’s integrity, availability or confidentiality.” Comm. on Nat’l Security Sys., National Information Assurance Glossary 4 (Inst. No. 4009 (2006)). Blacklist (Internet) A generic name for a list of e-mail addresses or IP addresses that are known to be used by particular spammers. Also referred to as a blackhole list, the blacklist also can include certain Internet service providers that allow known spammers to use their services. Also, to place an e-mail address or an IP address on a list of known spammers. Blacklist.webopedia, http://webopedia. com/term/b/blacklist.html. These lists can act as a repository of information used to “cut off” such domains from the rest of the Internet. In point of fact, the address for the content is simply delisted so that computers can no longer find the page. For example, most mail servers can be configured to reject messages from addresses on a DNS Blacklist. There are many such blacklists available, maintained by many different organizations, and they are accessible through the Internet. Browser: User agents who access Web servers and their content and display Web pages. Web sites are commonly located by directing the browser to a particular site by referencing a domain name, also known as the Uniform Resource Locator, or URL. The most popular browsers (such as Internet Explorer, Firefox, Chrome, and Safari), are graphical browsers, which means they can display graphics and text. With the use of plug-ins, they are also capable of audio and video information. Cache (computing.) To store (data, files, images, etc.) in a cache or part of a memory used as a cache. A small high-speed memory in some computers into which are placed the most frequently accessed contents of the slower main memory or secondary storage. OXFORD ENGLISH DICTIONARY (2nd ed. 1989) (Internet) A cache is a collection of data duplicating original values stored elsewhere or computed earlier, where the original data is expensive to fetch (owing to longer access time) or to compute as compared to the cost of reading the cache. In other words, a cache is a temporary storage area where frequently accessed data can be stored for rapid access. Once the data is stored in the cache, future use can be made by accessing the cached copy rather than refetching or recomputing the original data, so that the average access time is shorter. Cache, therefore, helps expedite data access that the

Appendix B Glossary CPU would otherwise need to fetch from the main memory. Cache.Wikipedia, http://en.wikipedia.org/wiki/cache. CAN-SPAM Act (legal) Acronym for Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003. The CAN-SPAM Act defines commercial messages as those for which the primary purpose is to advertise or promote a commercial product or service. The FCC’s ban does not cover “transactional or relationship” messages, or notices to facilitate an agreed-upon transaction. As examples, a transaction message would include statements about an existing account or warranty or information about a product a customer has purchased. An Internet company was properly denied recovery in its suit against another Internet company regarding unsolicited E-mail because the Controlling the Assault of Non-Solicited Pornography and Marketing Act of 2003, 15 U.S.C.S. 7701–7713 preempted state law claims, and there were no material inaccuracies in the commercial e-mail or a failure to meet opt-out requirements. Omega World Travel, Inc. v. Mummagraphics, Inc., 469 F.3d 248 (2006). Public university’s regulation that blocked unsolicited commercial e-mails from its servers was not preempted by Controlling the Assault of Non-Solicited Pornography and Marketings Act, 15 U.S.C.S. §§ 7701–7713; commercial speech regulation was also permissible under U.S. Const. amend. I because of substantial state interest of user efficiency. White Buffalo Ventures, LLC v. Univ. of Texas, 420 F.3d 366 (2005) (5th Cir. 2005). Computer Fraud and Abuse Act (criminal) “Whoever knowingly and with intent to defraud, accesses a protected computer without authorization, or exceeds authorized access, and by means of such conduct furthers the intended fraud and obtains anything of value . . . shall be punished.” 18 U.S.C. § 1030(a)(4) (as amended 1994, 1996, and 2001). There must be damage for a claim to be successful under the CFAA. In one instance, a court considered the issue of whether the CFAA can be used against employees who access information from a company computer and later use that information against the employer. The court held that an alleged disloyal employee who copied proprietary company files was not liable under the CFAA because losses under the statute are compensable only when they result from damage to a computer system or an interruption of computer service. Based upon the employer’s failure to properly plead loss under the statute, the Ohio district court dismissed the employer’s action and CFAA claims, noting that the employer “still has traditional state statute and common law remedies available to it for recovery against the dishonest employee.”

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256 Appendix B Glossary Am. Family Mut. Ins. Co., v. Rickman, 554 F. Supp. 2d 766, 772 (N.D. Ohio 2008). The court dismissed the employer’s CFAA counterclaim and held that an employee who copied files from his former employer’s computer system is not liable under the CFAA, absent a showing of loss or damage related to an interruption of service. Ultimately, the court ruled that the alleged copying of the employer’s files and wooing of the employer’s clients does not constitute loss under the CFAA absent claims related to an interruption of computer service. Cohen v. Gulfstream Training Acad., No. 07-60331, 2008 U.S. Dist. LEXIS 29027 (S.D. Fla. Apr. 9, 2008). Circumvention (DMCA) “No person shall import, manufacture, or distribute any device, or offer or perform any service, the primary purpose or effect of which is to avoid, bypass, remove, deactivate, or otherwise circumvent any program or circuit which implements, in whole or in part, a [serial copyright management system or similar system].” 17 U.S.C. § 1002. “To descramble a scrambled work, to decrypt an encrypted work, or otherwise to avoid, bypass, remove, deactivate, or impair a technological measure, without the authority of the copyright owner.” 17 U.S.C. § 1201. A technological measure “effectively controls access to a work” if the measure, in the ordinary course of its operation, requires the application of information or a process or a treatment, with the authority of the copyright owner, to gain access to the work. http://www4.law.cornell.edu/ uscode/17/1201.html. Computer abuse (criminal; security) “Intentional or reckless misuse, alteration, disruption, or destruction of information processing resources.” Comm. on Nat’l Security Sys., National Information Assurance Glossary 12 (Inst. 4009 (2006)). Computer trespass (criminal) “A person is guilty of computer trespass in the first degree if the person, without authorization, intentionally gains access to a computer system or electronic data base of another; and (a) The access is made with the intent to commit another crime; and (b) The violation involves a computer or data base maintained by a government agency.” Rev. Code Wash. (ARCW) §9A.52.110 (2008). Cybersmear (Internet) Posting false rumors and negative comments on Web sites and bulletin boards, often as a means to drive down the price of a targeted stock. OXFORD ENGLISH DICTIONARY (2nd Ed., 1989) In the United States and the United Kingdom, , truth is an absolute defense against defamation. However, in cybersmear

Appendix B Glossary cases, the truth defense may not always resolve the dispute because of the emotional aspect of certain language on the Internet. See discussion at §V.B. Cybersquatting: The act of registering a popular domain name with intent to: use it to sell competing or related goods and services, direct Internet users to commercial content (such as pornographic Web sites) or parked Web pages containing links to third-party websites, or sell it back to its rightful owner. The domain name can be a company name, but may also be a person’s name (see ACPA). Data mining (software) “A technique for extracting knowledge from large volumes of data . . .” GAO, Data Mining: Federal Efforts Cover a Wide Range of Uses 1 (Report No. GAO-04-548 May 2004). “The application of database technology and techniques—such as statistical analysis and modeling—to uncover hidden patterns and subtle relationships in data and to infer rules that allow for the prediction of future results.” Id. Data security (security) “Protection of data from unauthorized (accidental or intentional) modification, destruction, or disclosure.” Comm. on Nat’l Security Sys., National Information Assurance Glossary 21 (Inst. No. 4009 (2006)). Data transfer protocol (technology) A formal set of standards governing the format and control of data, which allows it to be transferred from one computer to another. (Legal) “No single entity—academic, corporate, governmental, or non-profit— administers the Internet. It exists and functions as a result of the fact that hundreds of thousands of separate operators of computers and computer networks independently decided to use common data transfer protocols to exchange communications and information with other computers (which in turn exchange communications and information with still other computers).” ACLU v. Reno, 929 F. Supp. 824, 832 (E.D. Pa. 1996), aff’d, Reno v. ACLU, 521 U.S. 844 (1997). DHCP: Dynamic Host Configuration Protocol is a protocol used by networked devices to automate the assignment of Internet Protocol (IP) addresses in an organization’s network. Using the IP, each machine that can connect to the Internet needs a unique IP address that is assigned when an Internet connection is created for a specific computer. Without DHCP, the IP address must be entered manually at each computer in an organization and a new IP address must be entered each time a computer moves to a new location

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258 Appendix B Glossary on the network. DHCP lets a network administrator supervise and distribute IP addresses from a central point and automatically sends a new IP address when a computer is plugged into a different place in the network. DHCP, Searchunifiedcommunications.com,http://searchunified communications.techtarget.com/sDefinitions/O,,sid186_gci213894,00.html DHCP allows a computer to join an IP-based network without having a preconfigured IP address. DHCP is a protocol that assigns unique IP addresses to devices, then releases and renews these addresses as devices leave and rejoin the network. Internet Service Providers (ISPs) usually use DHCP to allow customers to join the Internet with minimum effort. DHCP, Dynamic Host Configuration Protocol, About.com; http:// compnetworking.about.com/cs/protocolsdhcp/g/bldef_dhcp.htm. Defamation (legal) A wrongful action wherein a false and malicious statement is made that damages the name and/or reputation of an individual. The terms libel and slander are used to distinguish between written and spoken defamation, respectively. The elements are: 1. a publication to one other than the person defamed; 2. a false statement of fact; 3. that is understood as a. being of and concerning the plaintiff; and b. tending to harm the reputation of the plaintiff. 4. If the plaintiff is a public figure, he or she must also prove actual malice. See, Dimeo v. Max, No. 06-3171, 2007 U.S. App. Lexis 22467 (3d Cir. 2007). “There is no reason inherent in the technological features of cyberspace why First Amendment and defamation law should apply differently in cyberspace than in the brick and mortar world. Congress, however, has chosen for policy reasons to immunize from liability for defamatory or obscene speech ‘providers and users of interactive computer services’ when the defamatory or obscene material is ‘provided’ by someone else.” Batzel v. Smith, 333 F.3d 1018, 1020 (9th Cir. 2003). “CompuServe has no more editorial control over such a publication than does a public library, book store, or newsstand, and it would be no more feasible for CompuServe to examine every publication it carriers for potentially defamatory statements than it would be for any distributor to do so . . . ¶ Technology is rapidly transforming the information industry. A computerized database is the functional equivalent of a more traditional news vendor . . .” Cubby, Inc. v. CompuServe, Inc., 776 F. Supp. 135, 140 (S.D.N.Y. 1991).

Appendix B Glossary (Related Issues) “No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.” 47 U.S.C. § 230(C)(1). Denial-of-service attack (criminal; security) Also referred to as a distributed denial-of-service attack or DDOS. A type of attack “ . . . in which an attack from a single source overwhelms a target computer with messages, denying access to legitimate users without actually having to compromise the targeted computer.” U.S. General Accounting Office, Technology Assessment: Cybersecurity for Critical Infrastructure Protection, 185 n.17 (Report No. GAO-04-321 May 2004). A denial-of-service attack (DoS attack) or distributed denial-of-service attack (DDoS attack) is an attempt to make a computer resource unavailable to its intended users. Although the means to carry out, motives for, and targets of a DoS attack may vary, it generally consists of the concerted, malevolent efforts of a person or persons to prevent an Internet site or service from functioning efficiently or at all, temporarily or indefinitely. Perpetrators of DoS attacks typically target sites or services hosted on high-profile Web servers such as banks, credit card payment gateways, and even DNS root servers. One common method of attack involves saturating the target (victim) machine with external communications requests such that it cannot respond to legitimate traffic, or responds so slowly as to be rendered effectively unavailable. In general terms, DoS attacks are implemented by either forcing the targeted computer(s) to reset, consuming its resources so that it can no longer provide its intended service, or obstructing the communication media between the intended users and the victim so that they can no longer communicate adequately. Denial-of-service attack, Wikipedia, http:// Wikipedia.org/wiki/denial-of-service_attack (last visited Feb. 9, 2009). Denial-of-service attacks commonly constitute violations of the laws of individual nations. Derivative work (copyright) “[A] work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ‘derivative work.’” U.S. Copyright Act, 17 U.S.C. §101. “A typical example of a derivative work received for registration in the Copyright Office is one that is primarily a new work but incorporates some previously published material. This previously published material makes the

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260 Appendix B Glossary work a derivative work under the copyright law. To be copyrightable, a derivative work must be different enough from the original to be regarded as a “new work” or must contain a substantial amount of new material. Making minor changes or additions of little substance to a preexisting work will not qualify the work as a new version for copyright purposes. The new material must be original and copyrightable in itself. Titles, short phrases, and format, for example, are not copyrightable.” Copyright Registration for Derivative Works, United States Copyright Office, Circular 14, Rev. 05/2008. Description metatags (Internet) Words that “ . . . are intended to describe the web site . . .” Brookfield Comm., Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1045 (9th Cir. 1999). The meta description tag is a snippet of HTML code that belongs inside the section of a Web page. It usually is placed after the title tag and before the meta keywords tag, although the order is not important. The proper syntax for this HTML tag is: <META NAME=“Description” CONTENT=“Your descriptive sentence or two goes here.”> The Meta Description Tag, October 16, 2004, http://www.highrankings. com/metadescription (last visited Feb. 9, 2009). Dictionary attack (Internet) “Using an automated means that generates possible electronic mail addresses by combining names, letters, or numbers into numerous permutations.” Controlling the Assaults of Non-Solicited Pornography and Marketing Act of 2003, 15 U.S.C. § 7704(b)(1)(A)(ii). A dictionary attack is generally more efficient than a brute force attack because users typically choose poor passwords. Dictionary attacks are generally far less successful against systems that use passphrases instead of passwords. What is a Dictionary Attack?, http://www.tech-faq.com/dictionary-attack. shtml In cryptanalysis and computer security, a dictionary attack is a technique for defeating a cipher or authentication mechanism by trying to determine its decryption key or passphrase by searching a large number of possibilities. In contrast to a brute force attack where a large portion of key space is searched systematically, a dictionary attack only tries the possibilities most likely to succeed, typically derived from a list of words in a dictionary. Dictionary Attack, Wikipedia, http://en.wikipedia.org/wiki/dictionary_attack (last visited Feb. 12, 2009). Digital Millennium Copyright Act (copyright) Abbreviated as DMCA. (See DMCA). Makes it a crime to circumvent anti-piracy measures built into most commercial software.

Appendix B Glossary Outlaws the manufacture, sale, or distribution of code-cracking devices used to illegally copy software. Does permit the cracking of copyright protection devices, however, to conduct encryption research, assess product interoperability, and test computer security systems. Provides exemptions from anti-circumvention provisions for nonprofit libraries, archives, and educational institutions under certain circumstances. In general, limits Internet service providers from copyright infringement liability for simply transmitting information over the Internet. Service providers, however, are expected to remove material from users’ Web sites that appears to constitute copyright infringement. Limits liability of nonprofit institutions of higher education—when they serve as online service providers and under certain circumstances—for copyright infringement by faculty members or graduate students. Requires that webcasters pay licensing fees to record companies. Requires that the Register of Copyrights, after consultation with relevant parties, submit to Congress recommendations regarding how to promote distance education through digital technologies while “maintaining an appropriate balance between the rights of copyright owners and the needs of users.” States explicitly that “[n]othing in this section shall affect rights, remedies, limitations, or defenses to copyright infringement, including fair use . . .” The Digital Millennium Copyright Act, UCLA Online Institute for Cyberspace Law and Policy http://www.gseis.ucla.edu/iclp/dmca1.htm (last visited Feb. 10, 2009). Appellate court remanded to district court for a determination of whether the alleged infringers reasonably implemented a policy under 17 U.S.C.S. § 512(i)(1)(A) based on its treatment of nonparty copyright holders. Because § 512(i)(1)(A) was a threshold determination, the court remanded the remaining issues under § 512 for further proceedings. Perfect 10, Inc. v. CCBill LLC, 488 (F3d. 1102, 1120) (9th Cir. 2004). Based on well-established rule of statutory construction, it was held that the language direct financial benefit found at 17 U.S.C.S. § 512(i)(B) of the Digital Millennium Copyright Act should have been interpreted consistent with the similarly-worded common law standard for vicarious copyright liability. Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102, 1117 (9th Cir. 2007). The defense to infringement in 17 U.S.C.S. § 117(c) applied even though defendants accessed a part of plaintiff’s copyrighted software—the maintenance code—that was not necessary for a machine to be activated where the maintenance code was so entangled with the functional code that the entire code was required for the machine to function at all. Storage Tech. Corp. v. Custom Hardware Eng’g & Consulting, Inc., 421 F3d. 1307, 1314 (Fed. Cir. 2005).

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Appendix B Glossary Defendants’ copying of plaintiff’s copyrighted maintenance code while servicing customers’ computer equipment was protected by 17 U.S.C.S. § 117(c). The code stayed in place during maintenance so defendants could detect and fix malfunctions, and defendants rebooted the equipment upon completing maintenance, which destroyed the copy of the code. Storage Tech. Corp. v. Custom Hardware Eng’g & Consulting, Inc., 421 F3d. 1307, 1314 (Fed. Cir. 2005). Direct attack (criminal; e-mail) “E-mailing, in which [a person] sen[ds] thousands of e-mails to one particular e-mail address . . .” United States v. Carlson, 209 Fed. Appx. 181, 182 22006 WL 3770611, *1 (3d Cir. Dec. 22, 2006). Domain hosting (business; Internet) “Rent space and services from a service provider.” Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 573, 578 n.1; 51 U.S.P.Q.2d (BNA) 1130, 1133 (N.D. Cal. 1999). Domain name[s] (Internet) “ . . . consist of a second-level domain—simply a term or series of terms (e.g., westcoastvideo)—followed by a top-level domain, many of which describe the nature of the enterprise.” Brookfield Comm., Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1044 (9th Cir. 1999). See also Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 19; 60 U.S.P.Q.2d (BNA) 1941 (1st Cir. 2001) (“ . . . consists of at least two parts: the top level domain and the second level domain. The top level domain, such as .com, .net. or .org, is preceded by the second level domain, which consists of a combination of letters, numbers, or some symbols. So, for example, in the domain name uscourts.gov, ‘.gov’ is the top level domain name and ‘uscourts’ is the second level domain name”). “[A]ny alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.” 15 U.S.C. § 1127. See also 15 U.S.C. § 7702(4) (same). “Domain names are alphanumeric strings that are associated with particular IP addresses. Thus to find the computer at 129.99.135.66, a user might type uscourts.gov, and would never need to know the actual IP address. Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 573, 575; 51 U.S.P.Q.2d (BNA) 1130, 1131 (N.D. Cal. 1999). “This two-tiered system for locating a particular place on the Internet exists for two reasons: first, alphanumeric strings, such as uscourts.gov are easier to remember than, for example, 129.99.135.66; second, domain names can be reassigned to different machines simply. To change the machine with which a domain name is associated, the domain name owner need only change the records on file with the Domain Name System (DNS). The DNS is a database that links domain names to IP addresses. Thus when a user types in a domain

Appendix B Glossary name, a message is sent to a name server which accesses the DNS, looks up the domain name, associates it with an IP address, and takes the user to that IP address.” Columbia Ins. Co. v. seescandy.com, 185 F.R.D. 573, 575; 51 U.S.P.Q.2d (BNA) 1130, 1131 (N.D. Cal. 1999). “It seems appropriate to refer to trademark law for guidance where, as here, the domain name consists of a protected trademark or tradename. Indeed, it is trademark law that has been invoked to enjoin the use of trademarks as domain names by entities other than the mark’s owner, and to combat the practice known as ‘cybersquatting,’ i.e., registering and holding domain names based on trademarks and then offering those domain names for sale to the trademark owners. Significantly, trademark law does not suggest that the trademark owner ‘owns’ the words used in the mark, but only that the owner may enjoin others from using the words in commerce so as to avoid confusion or dilution of the value and significance of the mark. And, although trademarks are generally considered an aspect of intellectual property, they are not assets that can be freely traded apart from the goodwill to which they are attached.” Dorer v. Arel, 60 F. Supp. 2d 558, 560–61 (E.D. Va. 1999) (footnotes omitted). “[B]y prevailing . . . [plaintiff] had won the right to enjoin infringement, but had acquired no right of ownership over the four domain names.: Id at 560, 561 n.11 (footnotes and citations omitted; emphasis in original). “[A] domain name that is not a trademark arguably entails only contract, not property rights. Thus, a domain name registration is the product of a contract for services between the registrar and registrant. By this view, the contracted-for-service produces benefit and value depending upon how the party receiving the service exploits it.” Id. At 561. See also Top level domain, Subdomain, and Hostname. Domain name hijacking (Internet) “An Internet phenomenon whereby individuals register Internet domain names in violation of the rights of trademark owners.” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 16–17; 60 U.S.P.Q.2d (BNA) 1941, 1943 (1st Cir. 2001). Domain name registrar (Internet; organization) “ . . . for customers who wish to register a name in the .com, .net, and .org toplevel domains. As a registrar it contracts with these second-level domains (“SLD”) name holders and a registry, collecting registration data about the SLD holder and submitting zone file information for entry in the registry database.” Register.com Inc. v. Verio, Inc., 126 F. Supp. 2d 238, 241 (S.D.N.Y. 2000). Domain name server (Internet) “Specialized computers known as ‘domain name servers’ maintain tables linking domain names to IP numbers.” Lockheed Martin Corp v. Network Solutions, Inc., 985 F. Supp. 949, 952 (C.D. Cal. 1997).

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264 Appendix B Glossary Domain name service (Internet) “A given host looks up the IP addresses of other hosts on the Internet through a system know as domain name service. “Domain name service is accomplished as follows: The Internet is divided into several ‘top level’ domains . . . Each domain name active in a given top-level domain is registered with the top level server which contains certain hostname and IP address information. “ . . . If an Internet user desires to establish a connection with a web page . . . , the Internet user might enter into a web browser program the URL . . . [A]ll queries for addresses are routed to certain computers, the so-called ‘top-level servers.’ The top level server matches the domain name to an IP address of a domain name server capable of directing the inquiry to the computer hosting the web page. Thus, domain name service ultimately matches an alphanumeric name . . . with its numeric IP address.” “Domain name service can be operated by the domain name holder or obtained from any entity with the proper computer equipment, including hundreds of Internet service providers.” Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1231 (N.D. Ill. 1996). Domain name system (Internet) Abbreviated as DNS. A distributed database used to translate alphanumeric domain names into Internet Protocol (IP) numbers used by computers to find a site on the Internet. “The DNS controls the way in which each component of the Internet identifies and communicates with one another.” Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 576 (2d Cir. 2000). “The current DNS has a hierarchical tree structure of names. A domain name, such as <www.uscourts.gov>, comprises a series of alphanumeric fields, or ‘domains,’ separated by periods or ‘dots.’ Within each domain name, the alphanumeric field to the far right is the Top Level Domain (“TLD”), and each prior field to the left of the period preceding the TLD is the Second Level Domain (“SLD”), the Third Level Domain, and so on. Thus, TLDs are the highest subdivisions of Internet domain names, and SLDs and other lower level domain names identify the host computers and individual websites under each TLD.” Id. at 577. On the Internet, the Domain Name System (DNS) associates various sorts of information with so-called domain names; most importantly, it serves as the “phone book” for the Internet; it translates human-readable computer hostnames (e.g., en.wikipedia.org) into the IP addresses that networking equipment needs for delivering information. It also stores other information such as the list of mail exchange servers that accept e-mail for a given domain. In providing a worldwide keyword-based redirection service, the Domain Name System is an essential component of contemporary Internet use.

Appendix B Glossary See also Address record, IPv6 address record, Canonical name record, Mail exchange record, NAPTR record, Name server record, Pointer record, SRV record, and TXT record. ECPA (criminal, privacy) Acronym for Electronic Communications Privacy Act. 18 U.S.C. § 2510–2522. “The ECPA, enacted by Congress to address privacy cons on the Internet, allows the government to obtain information from an online service provider . . . but only if a) it obtains a warrant issued under the Federal Rules of Criminal Procedure or state equivalent; or b) it gives prior notice to the online subscriber and then issues a subpoena or receives a court order authorizing disclosure of the information in question.” McVeigh v. Cohen, 983 F. Supp. 215, 219 (D.D.C. 1998). “A person or entity providing any electronic communication service to the public shall not knowingly divulge to any person or entity the contents of a communication while in electronic storage by that service.” 18 U.S.C. § 2701(a)(1). Annotation: “[T]he statute covers any entity that provides electronic communication service (e.g., e-mail) to the community at large.” Anderson Consulting LLP v. UOP, 991 F. Supp. 1041, 1042 (N.D. JL, 1998). EDI (electronic commerce) Acronym for Electronic Data Interchange. EEA (criminal, trade secret) Acronym for Electronic Espionage Act of 1996. 18 U.S.C. § 1831–1839. “The EEA became law in October 1996 against a backdrop of increasing threats to corporate security and a rising tide of international and domestic economic espionage. The end of the Cold War sent government spies scurrying to the private sector to perform illicit work for businesses and corporations, . . . and by 1996, studies revealed that nearly $24 billion of corporate intellectual property was being stolen each year. “The Problem was augmented by the absence of any comprehensive federal remedy targeting the theft of trade secrets, compelling prosecutors to shoehorn economic espionage crimes into statues direct at other offenses.” United States v. Hsu, 155 F.3d 189, 194 (3d Cir. 1998). EFF (organization) Abbreviation for Electronic Frontier Foundation.

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266 Appendix B Glossary Electronic bulleting board system (Internet) “ . . . which, like national on-line services, provide certain proprietary content; some bulletin-board systems in turn offer users links to the Internet.” Shea v. Reno, 930 F. Supp. 916, 926 (S.D.N.Y. 1996). Annotation: “In some instances, an electronic bulletin board could be made to resemble a newspaper’s editorial page, in others it may function more like a ‘chat room.’“ Lumney v. Prodigy Servs. Co., 94 N.Y. 242, 250, 723 N.E.2d 539, 542, 70 N.Y.S.2d 684, 687 (N.Y. Ct. App. 1999). “In many respects, an ISP bulletin board may serve much the same purpose as its ancestral version, but uses electronics in place of plywood and thumbtacks. Some electronic bulletin boards post messages instantly and automatically, others briefly delay posting so as not to become ‘chat rooms,’ while still others significantly delay posting to allow their operators an opportunity to edit the message or refuse posting altogether.” Id. Electronic communication service (criminal) “[A]ny service which provides to users thereof the ability to send or receive wire or electronic communications.” 18 U.S.C. § 2510(15). Electronic communications system (criminal) “[A]ny wire, radio, electromagnetic, photooptical or photoelectronic facilities for the transmission of electronic communications, and any computer facilities or related electronic equipment for the electronic storage of such communications; . . .” 18 U.S.C. § 2510(15). File transfer protocol (technology) Abbreviated as ftp or FTP. “One type of software implements a set of conventions for copying files from a host computer known as ‘file transfer protocol’ (“FTP”). With appropriate client software, a user with an account on the host computer can contact the server, view a directory of available files, and copy one or more of those files to his own computer. In addition to making files available to users with accounts, thousands of content providers also make files available for ‘anonymous’ retrieval by users who do not possess an account on the host computer. A content provider who makes files available for retrieval by anonymous FTP has no way of discerning who gains access to the files.” Shea v. Reno, 930 F. Supp. 916, 928 (S.D.N.Y. 1996) (citations omitted). Hello domain (e-mail) “Contains the internet protocol (“IP”) address and domain name of the sending party.” Jaynes v. Commonwealth, 48 Va. App. 673, 680; 634 S.E.2d 357, 360 (2006). Annotation: “When e-mail is send, the hello domain and sender information exist as part of the transmission information of the e-mail.

Appendix B Glossary E-mail servers and routers starting with the sender’s Internet Service Provider (“SIP”) relay the message forward until it reaches the e-mail servers of the recipient’s ISP, which then direct the e-mail to the intended recipient. These server interactions include the presentation of the sending e-mail’s hello domain. Essentially, the sending computer identifies itself and presents the hello domain of the e-mail.” Id. at 681, 634 S.E.2d at 360. Hidden text: Portions of the content that a user selects not to display in the print version. User comments are one type of hidden text. Comments are akin to a user’s annotations. They are viewable only when the document is in electronic form, and not in hard copy. It can also refer to computer text that is displayed in such a way as to not be easily readable, often by setting the font color to be the same as the background color, rendering the text invisible unless the user highlights it. Hidden text is often used by Web sites to load up a Web page with keywords that a search engine will recognize, but that are invisible to a reader. Host name: refers to a domain name that has one or more associated IP addresses. See also Domain name, Top level domain, and Subdomain. HTML (Internet) Acronym for Hypertext Markup Language. The standard Web formatting language. Shea v. Reno, 930 F. Supp. 916, 929 (S.D.N.Y. 1996). HTTP (Internet) Acronym for HyperText Transfer Protocol. An Internet communications standard (protocol) that permits access to Web sites from a Web browser and requests for information from the Web pages on a server. The term http appears at the beginning of most Web addresses and designates that the alphanumeric character string following it is a Web address. “Web clients and servers transfer data using a standard known as the Hypertext Transfer Protocol (“HTTP”).” Universal City Studios, Inc. v. Reimerdes, 111 F. Supp. 2d 294, 307 (S.D.N.Y. 2000). ICANN (Internet, organization) Acronym for Internet Corporation for Assigned Names and Numbers. “ICANN accredits institutions and corporations to serve as domain name ‘registrars.’ Registrars assign specific SLDs within a TLD to ‘registrants,’ ensure that each registered SLD is unique within the TLD, and maintain and distribute information correlating SLDs with the appropriate IP addresses. Network Solutions, Inc. is a principal registrar of the second-level domain names within the popular ‘.com’ TLD.” Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 746 n.3, 59 U.S. P.Q.2d (BNA) 1051 (E.D. Va. 2001).

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268 Appendix B Glossary Identifying information (privacy) “With respect to an individual, any of the following: (1) (2) (3) (4) (5) (6) (7) (8) (9)

Social security number; Driver’s license number; Bank account number; Credit card or debit card number; Personal identification number (PIN); Automated or electronic signature; Unique biometric data; Account password; or Any other piece of information that can be used to access an individual’s financial accounts or to obtain goods or services.” Cal. Bus. & Prof. Code § 22948.1(b) (2007).

Individually identifiable health information (privacy) Abbreviated as IIHI. “Information that is a subset of health information, including demographic information collected from an individual, and: (1) Is created or received by a health care provider, health plan, employer, or health care clearinghouse; and (2) Relates to the past, present, or future physical or mental health or condition of an individual; the provision of health care to an individual; or the past, present or future payment for the provision of health care to an individual; and (i) That identifies the individual; or (ii) With respect to which there is a reasonable basis to believe the information can be used to identify the individual.” 45 C.F.R. § 160.103 (2008). Intercept (criminal, telecommunications) “The aural or other acquisition of the contents of any wire, electronic, or oral communication through the use of any electronic, mechanical, or other device.” 18 U.S.C. § 2510(4). Internet Architecture Board (IAB): organization responsible for defining the overall architecture of the Internet. Internet Engineering Task Force (IETF): a large open international community of network designers, operators, vendors, and researchers concerned with the evolution of the Internet architecture and the smooth operation of the Internet, open to any interested individual. Internet forum: A web application for holding discussions and posting user-generated content. Internet forums are also commonly referred to as

Appendix B Glossary Web forums, message boards, discussion boards, (electronic) discussion groups, discussion forums, bulletin boards, fora (the Latin plural) or simply forums. The terms forum and board may refer to the entire community or to a specific subforum dealing with a distinct topic. Messages within these subforums are then displayed either in chronological order or as threaded discussions. Such forums perform a function similar to that of Usenet newsgroups and the dial-up bulletin board systems that were common from the late 1970s to the 1990s. Early Web-based forums date back as far as 1996. A sense of virtual community often develops around forums that have regular users. Technology, computer games and/or video games, sports, fashion, religion, and politics are popular areas for forum themes, but there are forums for a huge number of topics. Internet slang and image macros popular across the internet are abundant and widely used in internet forums. http://en.wikipedia.org/wiki/ Internet_forum. Internet Protocol (Internet) Abbreviated as IP. Also called IP address and IP number. A unique set of numbers that indicates the exact connection between a particular computer and the network on the Internet. They are 32-bit addresses that consist of four octets, expressed as four numbers between 0 and 255, and separated by periods (e.g., 198.41.0.52). Every Internet site is assigned a unique IP address. Because these numbers can be difficult for users to remember, most Internet sites also have a domain name. However, the Internet depends on the numerical address, so domain names must be translated by a computer called a name server into their corresponding IP addresses. “A numbering system [which] gives each individual computer or network a unique numerical address on the Internet. The ‘Internet Protocol number, ’ also known as the ‘IP number,’ consists of four groups of digits separated by periods, such as ’192.215.247.50.’“ Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 952 (C.D. Cal. 1997). “The various protocols that allow such communications to take place are known as Internet protocols (“IP”), and each entity connected to the Internet is assigned one or more unique numeric addresses, known as IP numbers or IP addresses.” Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 576 (2d Cir. 2000). “Before using a domain name to locate an Internet computer site in ‘cyberspace,’ a computer must match the domain name to the domain name’s Internet Protocol number. The match information is stored on various Internetconnected computers around the world known as domain name servers. The computer attempts to find the match information by sending out an address query. The goal of the address query is to find the particular domain name server containing the match information the user seeks.” Thomas v. Network

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270 Appendix B Glossary Solutions, Inc., 176 F.3d 500, 503–04 (D.C. Cir. 1999) (citations and footnotes omitted). “For the domain name system to function, each domain name must be unique and correspond to a unique Internet Protocol number. A new user who wishes to have an Internet site with a domain name address first obtains an Internet Protocol number (e.g., 1.23.456.7). The user then registers a domain name and it becomes linked with that Internet Protocol number.” Id. at 503 (citations omitted). “An IP address is a string of four sets of numbers, separated by periods, such as ’98.34.241.30,’ and every host or computer on the Internet is assigned such a numerical IP address.” Name.Space, Inc. v. Network Solutions, Inc., 202 F.3d 573, 576 (2d Cir. 2000). See also Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1230 (N.D. Ill. 1996). “A string of integer numbers separated by periods, for example, , for ease of recall and use . . .” Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 872 (9th Cir. 1999). Annotation: “Each host computer providing Internet services (‘site’) has a unique Internet address. Users seeking to exchange digital information (electronic mail (‘e-mail’), computer programs, images, music) with a particular Internet host require the host’s address in order to establish a connection. Hosts actually possess two fungible addresses: a numeric ‘IP’ address such as 123,456,123,12, and an alphanumeric ‘domain name’ such as microsoft.com, with greater mnemonic potential.” MTV Networks, Inc. v. Curry, 867 F. Supp. 202, 203 n.2 (S.D.N.Y. 1994) See also Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227, 1230 (N.D. Ill. 1996). Internet Protocol address (Internet) See Internet Protocol. Internet Protocol number (Internet) See Internet Protocol. Internet Society (ISOC): a professional membership organization of Internet experts that comments on policies and practices and oversees a number of other boards and task forces dealing with network policy issues. InterNIC (Internet) “A naming organization, not a regulator of content. InterNIC and two other European organizations maintain a master list of domain names to ensure that no duplication occurs. Creators of Web sites must register their domain name with InterNIC, and the agency will instruct the creator to choose another name if the new Web site has the name of an already-existing site. Inter NIC has no control over content on a site after registration.” ACLU v. Reno, 929 F. Supp. 824, 848 n.20 (E.D. Pa. 1996), aff’d, Reno v. ACLU, 521 U.S. 844 (1997).

Appendix B Glossary IP address (Internet) See Internet Protocol. IPv6 address record: Maps a host name to a 128 IPv6 address (see Domain name system). Mail exchange record: Maps a domain name to a list of mail exchange servers for that domain (see Domain name system). Mail fraud (criminal) A criminal act that involves the use of the U.S. mails to commit fraud. Malicious code (criminal software) “Software or firmware intended to perform an unauthorized process that will have adverse impact on the confidentiality, integrity, or availability of an IS [information system].” Comm. on Nat’l Security Sys., National Information Assurance Glossary 39 (Inst. No. 4009 (2006)). Malware (software) Software specifically designed to cause harm or damage to a computer system, including parasites, Trojan horses, viruses, and worms. Metadata: Electronically stored detail about the “characteristics, origin, usage, and validity” of data associated with the document. For example, word processing applications generate specific markers, including a file name, the date of creation, date and number of subsequent revisions, and the identity of all persons authoring and revising a document. The metadata is not visible to a reader on a paper printout of a document or while editing the document in electronic format. Such information is not completely invisible, however, and can be accessed and easily retrieved when documents are viewed on a computer monitor screen. Web pages also contain metadata in the form of metatags. Description and keyword metatags are often used to describe a Web page’s content and attract search engine attention in order to appear in search results. Name server record: Maps a domain name to a list of DNS servers authoritative for that domain (see Domain name system). NAPTR record: Naming Authority Pointer. A newer type of DNS record that supports regular expression-based rewriting (see Domain name system). NNTP: Abbreviation for Network News Transfer Protocol, which is used to transfer newsfeeds between hosts.

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272 Appendix B Glossary Object code (software) “The version of a program in which the source code language is converted or translated into the machine language of the computer with which it is to be used.” CONTU Final Report 21 n.109 (1978), quoted in Williams Elecs., Inc. v. Artic Int’l., Inc., 685 F.2d 870, 876 n.7 (3d Cir. 1983). Object program (software) “A program written in machine language that can be executed directly by the computer’s CPU without need for translation.” Lotus Dev. Corp. v. Paperback Software Int’l., 740 F. Supp. 37, 44 (D. Mass. 1990). Packet: A small fragment of data that flows across the Internet. Everything a person does on the Internet involves packets. A packet is comprised of at least: the source IP address, the destination IP address, and the “pay load” (i.e. a chunk of the original content). Each packet is separately numbered. At the end, the TCP layer at the receiving end reassembles the packets into the original data. Phishing (software) “A form of e-mail fraud where senders impersonate legitimate businesses and organizations to try to get recipients to divulge personal information such as passwords and account numbers so the senders can steal the recipient’s identity and/or funds from the recipient’s account.” Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969, 973 (N.D. Cal 2006). Fraud perpetrated on the Internet; spec. the impersonation of reputable companies in order to induce individuals to reveal personal information, such as passwords and credit card numbers, online. (OED) Point of presence (POP or PoP): An Internet point of presence is an access point to the Internet. It is a physical location that houses servers, routers, ATM switches, and digital/analog call aggregators. It may be either part of the facilities of a telecommunications provider that the Internet service provider (ISP) rents or a location separate from the telecommunications provider. ISPs typically have multiple POPs, sometimes numbering in the thousands. POPs are also located in Internet exchange points and collection centers. http://en.wikipedia.org/wiki/Point_of_presence POP: telecomm. and computing point of presence. (OED) Posting: Posting consists of directly placing material on or in a Web site, bulletin board, discussion group, newsgroup, or similar Internet site or forum, where it will appear automatically and more or less immediately to be seen by anyone with access to that forum. In short, to post is to directly publish content.

Appendix B Glossary If the host system is accessible to the public, the act of posting constitutes publication to the world.” O’Grady v. Superior Court, 44 Cal. Rptr. 3d 72, 91 (Cal. Ct. App. 2006). Pointer record: Maps an IPv4 address to the canonical name for that host (see Domain name system). POP3: Abbreviation for Post Office Protocol v.3, which is used for retrieving electronic mail messages from a message store. Private domain registration: Some registrars offer at a premium price private domain registration in which the registrant’s personal information is replaced with that of a proxy service (such as Domains by Proxy, Inc., Melbourne IT, or PrivacyProtect.org.) or simply offers alternate contact information. Even though many proxies state they will not reveal registrant information to anyone without express permission, a subpoena, or a law enforcement request, the registrars themselves are not obliged to keep the information confidential. Indeed, many registrars explicitly reserve the right to reveal a registrant’s identity under certain circumstances. These circumstances seem to be legion and are very useful to a legal professional seeking the true identity of a registrant. Here is an example of Register.com’s terms governing its private registration services. (Note that the registrar will reveal the registrant in instances of infringement or for violations of the anti-spam policy.) You understand and agree that the Register.com has the absolute right and power, in its sole discretion and without any liability to you whatsoever, to immediately suspend or terminate the Private Registration Services, display your Personal WHOIS Data in the WHOIS record or disclose the Personal WHOIS Data to resolve any threatened or actual third party claims arising out of your use of the Private Registration Domain(s), or take any other action which Register.com deems necessary in the event of the following:

• If the Private Registration Domain(s) is alleged to violate or infringe a third party’s trademark, trade name, patent or copyright interests or other legal rights of third parties; • If you breach any provision of this Agreement or Register.com’s anti-Spam policy; • If you breach any provision of the Register.com Services Agreement; • If necessary to protect the integrity and stability of the applicable domain name registry;

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• If necessary to comply with any applicable laws, government •

•

•

•

rules or requirements, subpoenas, court orders or requests of law enforcement; If Register.com is named as a defendant in, or investigated in anticipation of, any legal or administrative proceeding arising out of your registration or use of the Private Registration Services or a Private Registration Domain; If necessary to comply with ICANN’s Dispute Resolution Policy or other policies promulgated by ICANN (including policies which may preclude use of a service such as Private Registration Services); If necessary to avoid any financial loss or legal liability (civil or criminal) on the part of Register.com, their parent companies, subsidiaries, affiliates, shareholders, agents, officers, directors and employees; or If it comes to a Register.com’s attention that you are alleged to be using the Private Registration Services for purposes of engaging in, participating in, sponsoring or hiding your involvement in illegal or morally objectionable activities, including but not limited to, activities which are designed, intended to or otherwise: (i) appeal primarily to prurient interests; (ii) defame, embarrass, harm, abuse, threaten, or harass; (iii) violate state or federal laws of the United States and/or foreign territories; (iv) involve hate crimes, terrorism or child pornography; (v) are tortious, vulgar, obscene, invasive of a third party’s privacy, race, ethnicity, or are otherwise objectionable; (vi) impersonate the identity of a third party; (vii) harm minors in any way; or (viii) relate to or transmit viruses, Trojan Horses, access codes, backdoors, worms, time bombs or any other code, routine, mechanism, device or item that corrupts, damages, impairs, interferes with, intercepts or misappropriates any software, hardware, firmware, network, system, data or personally identifiable information.

Registrar: An organization such as GoDaddy, eNom, Network Solutions, or TuCows (among thousands of others) that maintains a databases of the registered domain names, information about the registrant of each, and, if the domain name is in use, information about the IP address. Anyone who wants a presence on the Internet must register a unique name with one of the more than thousand registrars around the world. The Internet Corporation for Assigned Names and Numbers (ICANN) maintains a list of accredited registrars. Registry (Internet) A National Internet Registry (or NIR) is an organization that undertakes IP address allocation and management functions at a national level within a country or economy.

Appendix B Glossary NIRs operate primarily in the Asia Pacific, under the authority of APNIC, the Regional Internet Registry for that region. The following NIRs are currently operating in the APNIC region:

• • • • • •

APJII CNNIC JPNIC KRNIC TWNIC VNNIC

The following NIRs are currently operating in the RIPE region:

• Norid The following NIRs are currently operating in the LACNIC region:

• NIC Mexico • NIC Brazil http://wikipedia.org/wiki/National_Internet_registry Real-time Blackhole List: The Realtime Blackhole List (RBL) is a list of IP addresses determined to be associated with the origination of spam. The list identifies those owners who refuse to discontinue spam mailings. The list will usually contain the server IP address for the ISPs sending spam and also the address of those ISPs whose servers have been hijacked to proliferate spam. The first and most commonly used RBL was created by Mail Abuse Prevention System, LLC, or MAPS, but many other DNS Blackhole Lists have proliferated over the years. ISPs subscribe to the RBL and use it to determine which IP addresses they should block. The ISP will check the RBL for a match with the connecting IP. If there is a match, the connection is dropped before accepting any traffic from the alleged spammer. Sometimes however, an ISP will choose to ignore IP packets at their routers, which effectively blocks all IP traffic. The RBL and its counterparts have become increasingly controversial in recent years, as e-mailers who consider themselves legitimate sometimes find themselves on these lists, in part because different lists have different rules for inclusion. Also, some groups such as EFF object to what is referred to as “stealth blocking,” in which some ISPs use these lists, or other spam- blocking techniques, without informing their clients. Residual data: The magnetic image that remains within the computer after electronic information is changed, edited, revised, and presumably deleted by

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Appendix B Glossary using the computer’s delete button. The deletion process neither permanently erases the earlier changes nor the document itself, but merely removes the name of the file from the computer’s directory. The file itself remains within the computer as a magnetic image until it is overwritten by a new file. To recover residual data, a forensic expert is often hired who may be able to recover deleted computer files without compromising any other information on the computer SMPT: Simple Mail Transfer Protocol, which is used for transferring electronic mail. Sniffer (security, software) Software that monitors network traffic for a user who authenticates himself, at which point the software assumes the user’s credentials and impersonates that user. Software in a desktop or laptop computer can capture packets transmitted in a network for routine inspection and problem detection. Also called a sniffer, packet sniffer, packet analyzer, traffic analyzer, and protocol analyzer, the network analyzer plugs into a port on a network hub or switch and decodes one or more protocols into a human-readable format for the network administrator. It can also store packets on disk for further analysis later on. http://www.pcmag.com/encyclopedia_term/0%2C2542%2Ct%3Dnetwork+ analyzer&i%3d47860%2c00.asp. Reprinted with permission of Ziff-Davis Media, Inc. Social network service: Uses software to build online social networks for communities of people who share interests and activities or who are interested in exploring the interests and activities of others. Most services are primarily Web-based and provide a collection of various ways for users to interact, such as chat, messaging, e-mail, video, voice chat, file sharing, blogging, discussion groups, and so on. Social networking has revolutionized the way we communicate and share information with one another in today’s society. Various social networking Web sites are being used by millions of people everyday on a regular basis, and it now seems that social networking is a part of everyday life. The main types of social networking services are those that contain directories of some categories (such as former classmates), means to connect with friends (usually with self-description pages), and recommender systems linked to trust. Popular methods now combine many of these, with MySpace and Facebook being the most widely used in North America; Bebo, MySpace, Skyrock Blog, Facebook, and Hi5 in parts of Europe; Orkut and Hi5 in South America and Central America; and Friendster and Orkut in Asia and the Pacific Islands.

Appendix B Glossary There have been some attempts to standardize these services to avoid the need to duplicate entries of friends and interests (see the FOAF standard and the Open Source Initiative), but this has led to some concerns about privacy. (Wikipedia) Source code: (software) “The computer program code as the programmer originally writes it, using a particular programming language, generally written in a high-level language, such as BASIC, COBOL, or TORTRAN. A program in source code must be changed into object code before the computer can execute it.” U.S. Copyright Office, Copyright Office Practices II, § 321.01, quoted in Mfr. Tech., Inc. v. CAMS, Inc., 706 F. Supp. 984, 991 n.10 (D. Conn. 1989). Spam: The term commonly applied to unsolicited e-mails, usually sent in bulk, which usually tend to be commercial in nature. Many of these e-mails consist of harmless advertisements, but other types can include computer viruses. The United States has grappled with the overwhelming nature of spam in the CAN-SPAM Act of 2003, officially known as Controlling the Assault of Non-Solicited Pornography and Marketing Act, 15 U.S.C. § 7704, et. seq. Subdomain: Each label to the left of the main “upper level domain,” such as “.com,” or “.net” specifies a subdivision of the domain above it. Note that it expresses relative dependence, not absolute dependence As an example, “ebay.co.uk” makes use of various subdomains. (see also, Domain Name, Top- level domain, and Host name. TCP/IP: Stands for Transmission Control Protocol/Internet Protocol. The TCP/IP protocol assigns a unique identifier to every computer on the Internet. This communications protocol is the de facto Unix standard for the Internet, as well as the global standard for Local Area and Wide Area Networks. TCP ensures that data arrive intact and complete while UDP just sends out packets. The IP network layer provides routing capability. Data transmitted using TCP/IP can be sent to multiple destinations in any number of networks. The terms TCP/IP network and IP network are synonymous. Telnet: Used for interfacing terminal devices and terminal oriented processes. Top-level domain: The rightmost label in a Web address (see also, Domain name, Subdomain, and Host Name). Traceroute: A tool that can be used to determine the route a particular piece of information, or packet, has travelled from a computer to an Internet host,

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278 Appendix B Glossary and shows the number of hops the packet requires to get to the host, and how long each hop takes. This is a useful tool for tracing the origin of spam. WHOIS: A WHOIS query is a formalized query protocol for querying Registered Internet Registries, registry, and registrar databases about domain ownership. For every domain name registration, there must be a WHOIS record that provides the name and contact information for the registrant, as well as information about the IP addresses hosting the particular domain.

APPENDIX

C Federal Laws The Digital Millennium Copyright Act of 1998 U.S. Copyright Office Summary December 1998

Introduction The Digital Millennium Copyright Act (DMCA)1 was signed into law by President Clinton on October 28,1998. The legislation implements two 1996 World Intellectual Property Organization (WIPO) treaties: the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. The DMCA also addresses a number of other significant copyright-related issues. The DMCA is divided into five titles:

• Title I, the “WIPO Copyright and Performances and Phonograms Treaties Implementation Act of 1998,” implements the WIPO treaties.

• Title II, the “Online Copyright Infringement Liability Limitation Act,” creates limitations on the liability of online service providers for copyright infringement when engaging in certain types of activities. • Title III, the “Computer Maintenance Competition Assurance Act,” creates an exemption for making a copy of a computer program by activating a computer for purposes of maintenance or repair. • Title IV contains six miscellaneous provisions, relating to the functions of the Copyright Office, distance education, the exceptions in the Copyright Act for libraries and for making ephemeral recordings, “webcasting” of sound recordings on the Internet, and the applicability of collective bargaining agreement obligations in the case of transfers of rights in motion pictures. • Title V, the “Vessel Hull Design Protection Act,” creates a new form of protection for the design of vessel hulls.

1. Pub. L. No. 105–304, 112 Stat. 2860 (Oct 28, 1998).

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280 Appendix C Federal Laws This memorandum summarizes briefly each title of the DMCA. It provides merely an overview of the law’s provisions; for purposes of length and readability a significant amount of detail has been omitted. A complete understanding of any provision of the DMCA requires reference to the text of the legislation itself.

Title I: WIPO Treaty Implementation Title I implements the WIPO treaties. First, it makes certain technical amendments to U.S. law, in order to provide appropriate references and links to the treaties. Second, it creates two new prohibitions in Title 17 of the U.S Code—one on circumvention of technological measures used by copyright owners to protect their works and one on tampering with copyright management information—and adds civil remedies and criminal penalties for violating the prohibitions. In addition, Title I requires the U.S. Copyright Office to perform two joint studies with the National Telecommunications and Information Administration of the Department of Commerce (NTIA).

Technical Amendments National Eligibility The WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT) each require member countries to provide protection to certain works from other member countries or created by nationals of other member countries. That protection must be no less favorable than that accorded to domestic works. Section 104 of the Copyright Act establishes the conditions of eligibility for protection under U.S. law for works from other countries. Section 102(b) of the DMCA amends section 104 of the Copyright Act and adds new definitions to section 101 of the Copyright Act in order to extend the protection of U.S. law to those works required to be protected under the WCT and the WPPT.

Restoration of Copyright Protection Both treaties require parties to protect preexisting works from other member countries that have not fallen into the public domain in the country of origin through the expiry of the term of protection. A similar obligation is contained in both the Berne Convention and the TRIPS Agreement. In 1995 this obligation was implemented in the Uruguay Round Agreements Act, creating a new section 104A in the Copyright Act to restore protection to works from Berne or WTO member countries that are still protected in the

Appendix C Federal Laws country of origin, but fell into the public domain in the United States in the past because of a failure to comply with formalities that then existed in U.S. law, or due to a lack of treaty relations. Section 102(c) of the DMCA amends section 104A to restore copyright protection in the same circumstances to works from WCT and WPPT member countries.

Registration as a Prerequisite to Suit The remaining technical amendment relates to the prohibition in both treaties against conditioning the exercise or enjoyment of rights on the fulfillment of formalities- Section 411 (a) of the Copyright Act requires claims to copyright to be registered with the Copyright Office before a lawsuit can be initiated by the copyright owner, but exempts many foreign works in order to comply with existing treaty obligations under the Berne Convention. Section 102(d) of the DMCA amends section 411 (a) by broadening the exemption to cover all foreign works.

Technological Protection and Copyright Management Systems Each of the WIPO treaties contains virtually identical language obligating member states to prevent circumvention of technological measures used to protect copyrighted works, and to prevent tampering with the integrity of copyright management information. These obligations serve as technological adjuncts to the exclusive rights granted by copyright law. They provide legal protection that the international copyright community deemed critical to the safe and efficient exploitation of works on digital networks.

Circumvention of Technological Protection Measures General approach Article 11 of the WCT states: Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law. Article 18 of the WPPT contains nearly identical language. Section 103 of the DMCA adds a new chapter 12 to Title 17 of the U.S. Code. New section 1201 implements the obligation to provide adequate and

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Appendix C Federal Laws effective protection against circumvention of technological measures used by copyright owners to protect their works. Section 1201 divides technological measures into two categories: measures that prevent unauthorized access to a copyrighted work and measures that prevent unauthorized copying2 of a copyrighted work. Making or selling devices or services that are used to circumvent either category of technological measure is prohibited in certain circumstances, described below. As to the act of circumvention in itself, the provision prohibits circumventing the first category of technological measures, but not the second. This distinction was employed to assure that the public will have the continued ability to make fair use of copyrighted works. Since copying of a work may be a fair use under appropriate circumstances, section 1201 does not prohibit the act of circumventing a technological measure that prevents copying. By contrast, since the fair use doctrine is not a defense to the act of gaining unauthorized access to a work, the act of circumventing a technological measure in order to gain access is prohibited. Section 1201 proscribes devices or services that fall within any one of the following three categories:

• they are primarily designed or produced to circumvent; • they have only limited commercially significant purpose or use other than to circumvent; or

• they are marketed for use in circumventing. No mandate Section 1201 contains language clarifying that the prohibition on circumvention devices does not require manufacturers of consumer electronics, telecommunications or computing equipment to design their products affirmatively to respond to any particular technological measure. (Section 1201(c)(3)). Despite this general ‘no mandate’ rule, section 1201 (k) does mandate an affirmative response for one particular type of technology: within 18 months of enactment, all analog videocassette recorders must be designed to conform to certain defined technologies, commonly known as Macrovision, currently in use for preventing unauthorized copying of analog videocassettes and certain analog signals. The provision prohibits rightholders from applying these specified technologies to free television and basic and extended basic tier cable broadcasts.

2. “Copying” is used in this context as a short-hand for the exercise of any of the exclusive rights of an author under section 106 of the Copyright Act. Consequently, a technological measure that prevents unauthorized distribution or public performance of a work would fall in this second category.

Appendix C Federal Laws

Savings clauses Section 1201 contains two general savings clauses. First, section 1201(c)(l) states that nothing in section 1201 affects rights, remedies, limitations or defenses to copyright infringement, including fair use. Second, section 120l(c)(2) states that nothing in section 1201 enlarges or diminishes vicarious or contributory copyright infringement.

Exceptions Finally, the prohibitions contained in section 1201 are subject to a number of exceptions. One is an exception to the operation of the entire section, for law enforcement, intelligence and other governmental activities. (Section 1201 (e)). The others relate to section 1201 (a), the provision dealing with the category of technological measures that control access to works. The broadest of these exceptions, section 1201(a)(l)(B)-(E), establishes an ongoing administrative rule-making proceeding to evaluate the impact of the prohibition against the act of circumventing such access-control measures. This conduct prohibition does not take effect for two years. Once it does, it is subject to an exception for users of a work which is in a particular class of works if they are or are likely to be adversely affected by virtue of the prohibition in making noninfringing uses. The applicability of the exemption is determined through a periodic rulemaking by the Librarian of Congress, on the recommendation of the Register of Copyrights, who is to consult with the Assistant Secretary of Commerce for Communications and Information. The six additional exceptions are as follows: 1. Nonprofit library, archive and educational institution exception (section 1201 (d)). The prohibition on the act of circumvention of access control measures is subject to an exception that permits nonprofit libraries, archives and educational institutions to circumvent solely for the purpose of making a good faith determination as to whether they wish to obtain authorized access to the work. 2. Reverse engineering (section 1201 (f)). This exception permits circumvention, and the development of technological means for such circumvention, by a person who has lawfully obtained a right to use a copy of a computer program for the sole purpose of identifying and analyzing elements of the program necessary to achieve interoperability with other programs, to the extent that such acts are permitted under copyright law. 3. Encryption research (section 1201 (g)). An exception for encryption research permits circumvention of access control measures, and the development of the technological means to do so, in order to identify flaws and vulnerabilities of encryption technologies.

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Appendix C Federal Laws 4. Protection of minors (section 1201 (h)). This exception allows a court applying the prohibition to a component or part to consider the necessity for its incorporation in technology that prevents access of minors to material on the Internet. 5. Personal privacy (section 1201(i)). This exception permits circumvention when the technological measure, or the work it protects, is capable of collecting or disseminating personally identifying information about the online activities of a natural person. 6. Security testing (section 1201 (j)). This exception permits circumvention of access control measures, and the development of technological means for such circumvention, for the purpose of testing the security of a computer, computer system or computer network, with the authorization of its owner or operator. Each of the exceptions has its own set of conditions on its applicability, which are beyond the scope of this summary.

Integrity of Copyright Management Information Article 12 of the WCT provides in relevant part: Contracting Parties shall provide adequate and effective legal remedies against any person knowingly performing any of the following acts knowing, or with respect to civil remedies having reasonable grounds to know, that it will induce, enable, facilitate or conceal an infringement of any right covered by this Treaty or the Berne Convention: (i) to remove or alter any electronic rights management information without authority; (ii) to distribute, import for distribution, broadcast or communicate to the public, without authority, works or copies of works knowing that electronic rights management information has been removed or altered without authority. Article 19 of the WPPT contains nearly identical language. New section 1202 is the provision implementing this obligation to protect the integrity of copyright management information (CMI). The scope of the protection is set out in two separate paragraphs, the first dealing with false CMI and the second with removal or alteration of CMI. Subsection (a) prohibits the knowing provision or distribution of false CMI, if done with the intent to induce, enable, facilitate or conceal infringement. Subsection (b) bars the intentional removal or alteration of CMI without authority, as well as the dissemination of CMI or copies of “works, knowing that the CMI has been

Appendix C Federal Laws removed or altered without authority. Liability under subsection (b) requires that the act be done with knowledge or, with respect to civil remedies, with reasonable grounds to know that it will induce, enable, facilitate or conceal an infringement. Subsection (c) defines CMI as identifying information about the work, the author, the copyright owner, and in certain cases, the performer, writer or director of the work, as well as the terms and conditions for use of the work, and such other information as the Register of Copyrights may prescribe by regulation. Information concerning users of works is explicitly excluded. Section 1202 is subject to a general exemption for law enforcement, intelligence and other governmental activities. (Section 1202(d)). It also contains limitations on the liability of broadcast stations and cable systems for removal or alteration of CMI in certain circumstances where there is no intent to induce, enable, facilitate or conceal an infringement. (Section 1202(e)).

Remedies Any person injured by a violation of section 1201 or 1202 may bring a civil action in Federal court. Section 1203 gives courts the power to grant a range of equitable and monetary remedies similar to those available under the Copyright Act, including statutory damages. The court has discretion to reduce or remit damages in cases of innocent violations, where the violator proves that it was not aware and had no reason to believe its acts constituted a violation. (Section 1203(c)(5)(A)). Special protection is given to nonprofit libraries, archives and educational institutions, which are entitled to a complete remission of damages in these circumstances. (Section 1203(c)(5)(B)). In addition, it is a criminal offense to violate section 1201 or 1202 wilfully and for purposes of commercial advantage or private financial gain. Under section 1204 penalties range up to a $500,000 fine or up to five years imprisonment for a first offense, and up to a $1,000,000 fine or up to 10 years imprisonment for subsequent offenses. Nonprofit libraries, archives and educational institutions are entirely exempted from criminal liability. (Section 1204(b)).

Copyright Office and NTIA Studies Relating to Technological Development Title I of the DMCA requires the Copyright Office to conduct two studies jointly with NTIA, one dealing with encryption and the other with the effect of technological developments on two existing exceptions in the Copyright Act. New section 1201 (g)(5) of Title 17 of the U.S. Code requires the Register of Copyrights and the Assistant Secretary of Commerce for Communications and Information to report to the Congress no later than one year from enactment on the effect that the exemption for encryption research (new section 1201 (g))

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Appendix C Federal Laws has had on encryption research, the development of encryption technology, the adequacy and effectiveness of technological measures designed to protect copyrighted works, and the protection of copyright owners against unauthorized access to their encrypted copyrighted works. Section 104 of the DMCA requires the Register of Copyrights and the Assistant Secretary of Commerce for Communications and Information to jointly evaluate (1) the effects of Title I of the DMCA and the development of electronic commerce and associated technology on the operation of sections 109 (first sale doctrine) and 117 (exemption allowing owners of copies of computer programs to reproduce and adapt them for use on a computer), and (2) the relationship between existing and emergent technology and the operation of those sections. This study is due 24 months after the date of enactment of the DMCA.

Title II: Online Copyright Infringement Liability Limitation Title II of the DMCA adds a new section 512 to the Copyright Act3 to create four new limitations on liability for copyright infringement by online service providers. The limitations are based on the following four categories of conduct by a service provider: 1. 2. 3. 4.

Transitory communications; System caching; Storage of information on systems or networks at direction of users; and Information location tools.

New section 512 also includes special rules concerning the application of these limitations to nonprofit educational institutions. Each limitation entails a complete bar on monetary damages, and restricts the availability of injunctive relief in various respects. (Section 512(j)). Each limitation relates to a separate and distinct function, and a determination of whether a service provider qualifies for one of the limitations does not bear upon a determination of whether the provider qualifies for any of the other three. (Section 512(n)). The failure of a service provider to qualify for any of the limitations in section 512 does not necessarily make it liable for copyright infringement.

3. The Fairness in Musical licensing Act, Title II of Pub. L. No. 105–298, 112 Stat. 2827, 2830–34 (Oct 27,1998) also adds a new section 512 to the Copyright Act. This duplication of section numbers will need to be corrected in a technical amendments bill.

Appendix C Federal Laws The copyright owner must still demonstrate that the provider has infringed, and the provider may still avail itself of any of the defenses, such as fair use, that are available to copyright defendants generally. (Section 512(l)). In addition to limiting the liability of service providers, Title II establishes a procedure by which a copyright owner can obtain a subpoena from a federal court ordering a service provider to disclose the identity of a subscriber who is allegedly engaging in infringing activities. (Section 512(h)). Section 512 also contains a provision to ensure that service providers are not placed in the position of choosing between limitations on liability on the one hand and preserving the privacy of their subscribers, on the other. Subsection (m) explicitly states that nothing in section 512 requires a service provider to monitor its service or access material in violation of law (such as the Electronic Communications Privacy Act) in order to be eligible for any of the liability limitations.

Eligibility for Limitations Generally A party seeking the benefit of the limitations on liability in Title II must qualify as a “service provider.” For purposes of the first limitation, relating to transitory communications, “service provider” is defined in section 512(k)(l)(A) as “an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received.” For purposes of the other three limitations, “service provider” is more broadly defined in section 512(k)(l)(B) as “a provider of online services or network access, or the operator of facilities therefor.” In addition, to be eligible for any of the limitations, a service provider must meet two overall conditions: (1) it must adopt and reasonably implement a policy of terminating in appropriate circumstances the accounts of subscribers who are repeat infringers; and (2) it must accommodate and not interfere with “standard technical measures.” (Section 512(i)). “Standard technical measures” are defined as measures that copyright owners use to identify or protect copyrighted works, that have been developed pursuant to a broad consensus of copyright owners and service providers in an open, fair and voluntary multi-industry process, are available to anyone on reasonable nondiscriminatory terms, and do not impose substantial costs or burdens on service providers.

Limitation for Transitory Communications In general terms, section 512(a) limits the liability of service providers in circumstances where the provider merely acts as a data conduit, transmitting

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288 Appendix C Federal Laws digital information from one point on a network to another at someone else’s request. This limitation covers acts of transmission, routing, or providing connections for the information, as well as the intermediate and transient copies that are made automatically in the operation of a network. In order to qualify for this limitation, the service provider’s activities must meet the following conditions:

• The transmission must be initiated by a person other than the provider. • The transmission, routing, provision of connections, or copying must be carried out by an automatic technical process without selection of material by the service provider. • The service provider must not determine the recipients of the material. • Any intermediate copies must not ordinarily be accessible to anyone other than anticipated recipients, and must not be retained for longer than reasonably necessary. • The material must be transmitted with no modification to its content.

Limitation for System Caching Section 512(b) limits the liability of service providers for the practice of retaining copies, for a limited time, of material that has been made available online by a person other than the provider, and then transmitted to a subscriber at his or her direction. The service provider retains the material so that subsequent requests for the same material can be fulfilled by transmitting the retained copy, rather than retrieving the material from the original source on the network. The benefit of this practice is that it reduces the service provider’s bandwidth requirements and reduces the waiting time on subsequent requests for the same information. On the other hand, it can result in the delivery of outdated information to subscribers and can deprive website operators of accurate “hit” information—information about the number of requests for particular material on a website—from which advertising revenue is frequently calculated. For this reason, the person making the material available online may establish rules about updating it, and may utilize technological means to track the number of “hits.” The limitation applies to acts of intermediate and temporary storage, when carried out through an automatic technical process for the purpose of making the material available to subscribers who subsequently request it. It is subject to the following conditions:

• The content of the retained material must not be modified. • The provider must comply with rules about “refreshing” material— replacing retained copies of material with material from the original

Appendix C Federal Laws location—when specified in accordance with a generally accepted industry standard data communication protocol. • The provider must not interfere with technology that returns “hit” information to the person who posted the material, where such technology meets certain requirements. • The provider must limit users’ access to the material in accordance with conditions on access (e.g., password protection) imposed by the person who posted the material. • Any material that was posted without the copyright owner’s authorization must be removed or blocked promptly once the service provider has been notified that it has been removed, blocked, or ordered to be removed or blocked, at the originating site.

Limitation for Information Residing on Systems or Networks at the Direction of Users Section 512(c) limits the liability of service providers for infringing material on websites (or other information repositories) hosted on their systems. It applies to storage at the direction of a user. In order to be eligible for the limitation, the following conditions must be met:

• The provider must not have the requisite level of knowledge of the infringing activity, as described below.

• If the provider has the right and ability to control the infringing activity, it must not receive a financial benefit directly attributable to the infringing activity. • Upon receiving proper notification of claimed infringement, the provider must expeditiously take down or block access to the material. In addition, a service provider must have filed with the Copyright Office a designation of an agent to receive notifications of claimed infringement. The Office provides a suggested form for the purpose of designating an agent (http://www.loc.gov/copyright/onlinesp/) and maintains a list of agents on the Copyright Office website (http://www.loc.gov/copyright/onlinesp/list/). Under the knowledge standard, a service provider is eligible for the limitation on liability only if it does not have actual knowledge of the infringement, is not aware of facts or circumstances from which infringing activity is apparent, or upon gaining such knowledge or awareness, responds expeditiously to take the material down or block access to it. The statute also establishes procedures for proper notification, and rules as to its effect. (Section 512(c)(3)). Under the notice and takedown procedure, a copyright owner submits a notification under penalty of perjury, including a list of specified elements, to the service provider’s designated agent. Failure to

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290 Appendix C Federal Laws comply substantially with the statutory requirements means that the notification will not be considered in determining the requisite level of knowledge by the service provider. If, upon receiving a proper notification, the service provider promptly removes or blocks access to the material identified in the notification, the provider is exempt from monetary liability. In addition, the provider is protected from any liability to any person for claims based on its having taken down the material. (Section 512(g)(l)). In order to protect against the possibility of erroneous or fraudulent notifications, certain safeguards are built into section 512. Subsection (g)(l) gives the subscriber the opportunity to respond to the notice and takedown by filing a counter notification. In order to qualify for the protection against liability for taking down material, the service provider must promptly notify the subscriber that it has removed or disabled access to the material. If the subscriber serves a counter notification complying with statutory requirements, including a statement under penalty of perjury that the material was removed or disabled through mistake or misidentification, then unless the copyright owner files an action seeking a court order against the subscriber, the service provider must put the material back up within 10–14 business days after receiving the counter notification. Penalties are provided for knowing material misrepresentations in either a notice or a counter notice. Any person who knowingly materially misrepresents that material is infringing, or that it was removed or blocked through mistake or misidentification, is liable for any resulting damages (including costs and attorneys’ fees) incurred by the alleged infringer, the copyright owner or its licensee, or the service provider. (Section 512(f)).

Limitation for Information Location Tools Section 512(d) relates to hyperlinks, online directories, search engines and the like. It limits liability for the acts of referring or linking users to a site that contains infringing material by using such information location tools, if the following conditions are met:

• The provider must not have the requisite level of knowledge that the material is infringing. The knowledge standard is the same as under the limitation for information residing on systems or networks. • If the provider has the right and ability to control the infringing activity, the provider must nor receive a financial benefit directly attributable to the activity. • Upon receiving a notification of claimed infringement, the provider must expeditiously take down or block access to the material. These are essentially the same conditions that apply under the previous limitation, with some differences in the notification requirements. The provisions

Appendix C Federal Laws establishing safeguards against the possibility of erroneous or fraudulent notifications, as discussed above, as well as those protecting the provider against claims based on having taken down the material apply to this limitation. (Sections 512(f)-(g)).

Special Rules Regarding Liability of Nonprofit Educational Institutions Section 512(e) determines when the actions or knowledge of a faculty member or graduate student employee who is performing a teaching or research function may affect the eligibility of a nonprofit educational institution for one of the four limitations on liability. As to the limitations for transitory communications or system caching, the faculty member or student shall be considered a “person other than the provider,” so as to avoid disqualifying the institution from eligibility. As to the other limitations, the knowledge or awareness of the faculty member or student will not be attributed to the institution. The following conditions must be met:

• the faculty member or graduate student’s infringing activities do not involve providing online access to course materials that were required or recommended during the past three years; • the institution has not received more than two notifications over the past three years that the faculty member or graduate student was infringing; and • the institution provides all of its users with informational materials describing and promoting compliance with copyright law.

Title III: Computer Maintenance or Repair Title III expands the existing exemption relating to computer programs in section 117 of the Copyright Act, which allows the owner of a copy of a program to make reproductions or adaptations when necessary to use the program in conjunction with a computer. The amendment permits the owner or lessee of a computer to make or authorize the making of a copy of a computer program in the course of maintaining or repairing that computer. The exemption only permits a copy that is made automatically when a computer is activated, and only if the computer already lawfully contains an authorized copy of the program. The new copy cannot be used in any other manner and must be destroyed immediately after the maintenance or repair is completed.

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Title IV: Miscellaneous Provisions Clarification of the Authority of the Copyright Office Section 401 (b), adds language to section 701 of the Copyright Act confirming the Copyright Office’s authority to continue to perform the policy and international functions that it has carried out for decades under its existing general authority.

Ephemeral Recordings for Broadcasters Section 112 of the Copyright Act grants an exemption for the making of “ephemeral recordings.” These are recordings made in order to facilitate a transmission. Under this exemption, for example, a radio station can record a set of songs and broadcast from the new recording rather than from the original CDs (which would have to be changed “on the fly” during the course of a broadcast). As it existed prior to enactment of the DMCA, section 112 permitted a transmitting organization to make and retain for up to six months (hence the term “ephemeral”) no more than one copy of a work if it was entitled to transmit a public performance or display of the work, either under a license or by virtue of the fact that there is no general public performance right in sound recordings (as distinguished from musical works). The Digital Performance Right in Sound Recordings Act of 1995 (DPRA) created, for the first time in U.S. copyright law, a limited public performance right in sound recordings. The right only covers public performances by means of digital transmission and is subject to an exemption for digital broadcasts (i.e., transmissions by FCC licensed terrestrial broadcast stations) and a statutory license for certain subscription transmissions that are not made on demand (i.e. in response to the specific request of a recipient). Section 402 of the DMCA expands the section 112 exemption to include recordings that are made to facilitate the digital transmission of a sound recording where the transmission is made under the DPRA’s exemption for digital broadcasts or statutory license. As amended, section 112 also permits in some circumstances the circumvention of access control technologies in order to enable an organization to make an ephemeral recording.

Distance Education Study In the course of consideration of the DMCA, legislators expressed an interest in amending the Copyright Act to promote distance education, possibly through an expansion of the existing exception for instructional broadcasting in

Appendix C Federal Laws section 110(2). Section 403 of the DMCA directs the Copyright Office to consult with affected parties and make recommendations to Congress on how to promote distance education through digital technologies. The Office must report to Congress within six months of enactment. The Copyright Office is directed to consider the following issues:

• The need for a new exemption; • Categories of works to be included in any exemption; • Appropriate quantitative limitations on the portions of works that may be used under any exemption;

• Which parties should be eligible for any exemption; • Which parties should be eligible recipients of distance education material under any exemption;

• The extent to which use of technological protection measures should be mandated as a condition of eligibility for any exemption;

• The extent to which the availability of licenses should be considered in assessing eligibility for any exemption; and

• Other issues as appropriate.

Exemption for Nonprofit Libraries and Archives Section 404 of the DMCA amends the exemption for nonprofit libraries and archives in section 108 of the Copyright Act to accommodate digital technologies and evolving preservation practices. Prior to enactment of the DMCA, section 108 permitted such libraries and archives to make a single facsimile (i.e., not digital) copy of a work for purposes of preservation or interlibrary loan. As amended, section 108 permits up to three copies, which may be digital, provided that digital copies are not made available to the public outside the library premises. In addition, the amended section permits such a library or archive to copy a work into a new format if the original format becomes obsolete—that is, the machine or device used to render the work perceptible is no longer manufactured or is no longer reasonably available in the commercial marketplace.

Webcasting Amendments to the Digital Performance Right in Sound Recordings As discussed above, in 1995 Congress enacted the DPRA, creating a performance right in sound recordings that is limited to digital transmissions. Under that legislation, three categories of digital transmissions were addressed: broadcast transmissions, which were exempted from the performance right; subscription transmissions, which were generally subject to a statutory license; and on-demand transmissions, which were subject to the full exclusive right.

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294 Appendix C Federal Laws Broadcast transmissions under the DPRA are transmissions made by FCClicensed terrestrial broadcast stations. In the past several years, a number of entities have begun making digital transmissions of sound recordings over the Internet using streaming audio technologies. This activity does not fall squarely within any of the three categories that were addressed in the DPRA. Section 405 of the DMCA amends the DPRA, expanding the statutory license for subscription transmissions to include webcasting as a new category of “eligible nonsubscription transmissions.” In addition to expanding the scope of the statutory license, the DMCA revises the criteria that any entity must meet in order to be eligible for the license (other than those who are subject to a grandfather clause, leaving the existing criteria intact). It revises the considerations for setting rates as well (again, subject to a grandfather clause), directing arbitration panels convened under the law to set the royalty rates at fair market value. This provision of the DMCA also creates a new statutory license for making ephemeral recordings. As indicated above, section 402 of the DMCA amends section 112 of the Copyright Act to permit the making of a single ephemeral recording to facilitate the digital transmission of sound recording that is permitted either under the DPRA’s broadcasting exemption or statutory license. Transmitting organizations that wish to make more than the single ephemeral recording of a sound recording that is permitted under the outright exemption in section 112 are now eligible for a statutory license to make such additional ephemeral recordings. In addition, the new statutory license applies to the making of ephemeral recordings by transmitting organizations other than broadcasters who are exempt from the digital performance right, who are not covered by the expanded exemption in section 402 of the DMCA.

Assumption of Contractual Obligations upon Transfers of Rights in Motion Pictures Section 416 addresses concerns about the ability of writers, directors and screen actors to obtain residual payments for the exploitation of motion pictures in situations where the producer is no longer able to make these payments. The guilds’ collective bargaining agreements currently require producers to obtain assumption agreements from distributors in certain circumstances, by which the distributor assumes the producer’s obligation to make such residual payments. Some production companies apparently do not always do so, leaving the guilds without contractual privity enabling them to seek recourse from the distributor. The DMCA adds a new chapter to Title 28 of the U.S. Code that imposes on transferees those obligations to make residual payments that the producer would be required to have the transferee assume under the relevant collective

Appendix C Federal Laws bargaining agreement. The obligations attach only if the distributor knew or had reason to know mat me motion picture was produced subject to a collective bargaining agreement, or in the event of a court order confirming an arbitration award under the collective bargaining agreement that the producer cannot satisfy within ninety days. There are two classes of transfers that are excluded from the scope of this provision. The first is transfers limited to public performance rights, and the second is grants of security interests, along with any subsequent transfers from the security interest holder. The provision also directs the Comptroller General, in consultation with the Register of Copyrights, to conduct a study on the conditions in the motion picture industry that gave rise to this provision, and the impact of the provision on the industry. The study is due two years from enactment.

Title V: Protection of Certain Original Designs Title V of the DMCA, entitled the Vessel Hull Design Protection Act (VHDPA), adds a new chapter 13 to Title 17 of the U.S. Code. It creates a new system for protecting original designs of certain useful articles that make the article attractive or distinctive in appearance. For purposes of the VHDPA, “useful articles” are limited to the hulls (including the decks) of vessels no longer than 200 feet. A design is protected under the VHDPA as soon as a useful article embodying the design is made public or a registration for the design is published. Protection is lost if an application for registration is not made within two years after a design is first made public, but a design is not registrable if it has been made public more than one year before the date of the application for registration. Once registered, protection continues for ten years from the date protection begins. The VHDPA is subject to a legislative sunset: the Act expires two years from enactment (October 28, 2000). The Copyright Office is directed to conduct two joint studies with the Patent and Trademark Office—the first by October 28, 1999 and the second by October 28, 2000—evaluating the impact of the VHDPA.

Effective Dates Most provisions of the DMCA are effective on the date of enactment. There are, however, several exceptions. The technical amendments in Title I that relate to eligibility of works for protection under U.S. copyright law by virtue of the new WIPO treaties do not take effect until the relevant treaty comes into force. Similarly, restoration of copyright protection for such works does not become effective until the relevant treaty comes into force. The prohibition on the act of circumvention of access control measures does not take effect until two years from enactment (October 28, 2000).

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PUBLIC LAW 104-294-OCT. 11,1996 ECONOMIC ESPIONAGE ACT OF 1996

Public Law 104-294 104th Congress Oct. 11, 1996 [H R 3723]

An Act

To amend title 18, United States Code, to protect proprietary economic information, ant ^ f°r other purposes.

Economic

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

Espionage Act of

SECTION

18 USC 1 note.

1. SHORT TITLE.

This Act may

1996".

j,e cited as the "Economic Espionage Act of

TITLE I—PROTECTION OF TRADE SECRETS SEC. 101. PROTECTION OF TRADE SECRETS.

(a) IN GENERAL.—Title 18, United States Code, is amended by inserting after chapter 89 the following:

"CHAPTER 90—PROTECTION OF TRADE SECRETS "Sec.

"1831. "1832. "1833. "1834. "1835. "1836. "1837. "1838. "1839.

Economic espionage. Theft of trade secrets. Exceptions to prohibitions. Criminal forfeiture. Orders to preserve confidentiality. Civil proceedings to enjoin violations. Conduct outside the United States. Construction with other laws. Definitions.

"§ 1831. Economic espionage "(a) IN GENERAL.—Whoever, intending or knowing that the offense will benefit any foreign government, foreign instrumentality, or foreign agent, knowingly— "(1) steals, or without authorization appropriates, takes, carries away, or conceals, or by fraud, artifice, or deception obtains a trade secret; "(2) without authorization copies, duplicates, sketches, draws, photographs, downloads, uploads, alters, destroys, photocopies, replicates, transmits, delivers, sends, mails, communicates, or conveys a trade secret; "(3) receives, buys, or possesses a trade secret, knowing the same to have been stolen or appropriated, obtained, or converted without authorization; "(4) attempts to commit any offense described in any of paragraphs (1) through (3); or

Appendix C Federal Laws "(5) conspires with one or more other persons to commit any offense described in any of paragraphs (1) through (3), and one or more of such persons do any act to effect the object of the conspiracy, shall, except as provided in subsection (b), be fined not more than $500,000 or imprisoned not more than 15 years, or both. "(b) ORGANIZATIONS.—Any organization that commits any offense described in subsection (a) shall be fined not more than $10,000,000. "§ 1832. Theft of trade secrets

"(a) Whoever, with intent to convert a trade secret, that is related to or included in a product that is produced for or placed in interstate or foreign commerce, to the economic benefit of anyone other than the owner thereof, and intending or knowing that the offense will, injure any owner of that trade secret, knowingly— "(1) steals, or without authorization appropriates, takes, carries away, or conceals, or by fraud, artifice, or deception obtains such information; "(2) without authorization copies, duplicates, sketches, draws, photographs, downloads, uploads, alters, destroys, photocopies, replicates, transmits, delivers, sends, mails, communicates, or conveys such information; "(3) receives, buys, or possesses such information, knowing the same to have been stolen or appropriated, obtained, or converted without authorization; "(4) attempts to commit any offense described in paragraphs (1) through (3); or "(5) conspires with one or more other persons to commit any offense described in paragraphs (1) through (3), and one or more of such persons do any act to effect the object of the conspiracy, shall, except as provided in subsection (b), be fined under this title or imprisoned not more than 10 years, or both. "(b) Any organization that commits any offense described in subsection (a) shall be fined not more than $5,000,000. "§ 1833. Exceptions to prohibitions

"This chapter does not prohibit— "(1) any otherwise lawful activity conducted by a governmental entity of the United States, a State, or a political subdivision of a State; or "(2) the reporting of a suspected violation of law to any governmental entity of the United States, a State, or a political subdivision of a State, if such entity has lawful authority with respect to that violation. "§ 1834. Criminal forfeiture

"(a) The court, in imposing sentence on a person for a violation of this chapter, shall order, in addition to any other sentence imposed, that the person forfeit to the United States— "(1) any property constituting, or derived from, any proceeds the person obtained, directly or indirectly, as the result of such violation; and "(2) any of the person's property used, or intended to be used, in any manner or part, to commit or facilitate the commission of such violation, if the court in its discretion so determines,

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Appendix C Federal Laws taking into consideration the nature, scope, and proportionality of the use of the property in the offense. "(b) Property subject to forfeiture under this section, any seizure and disposition thereof, and any administrative or judicial proceeding in relation thereto, shall be governed by section 413 of the Comprehensive Drug Abuse Prevention and Control Act of 1970 (21 U.S.C. 853), except for subsections (d) and (j) of such section, which shall not apply to forfeitures under this section. "§ 1835. Orders to preserve confidentiality

"In any prosecution or other proceeding under this chapter, the court shall enter such orders and take such other action as may be necessary and appropriate to preserve the confidentiality of trade secrets, consistent with the requirements of the Federal Rules of Criminal and Civil Procedure, the Federal Rules of Evidence, and all other applicable laws. An interlocutory appeal by the United States shall lie from a decision or order of a district court authorizing or directing the disclosure of any trade secret. "§ 1836. Civil proceedings to enjoin violations

"(a) The Attorney General may, in a civil action, obtain appropriate injunctive relief against any violation of this section. "(b) The district courts of the United States shall have exclusive original jurisdiction of civil actions under this subsection. "§1837. Applicability to conduct outside the United States

This chapter also applies to conduct occurring outside the United States if— "(1) the offender is a natural person who is a citizen or permanent resident alien of the United States, or an organization organized under the laws of the United States or a State or political subdivision thereof; or "(2) an act in furtherance of the offense was committed in the United States. "§ 1838. Construction with other laws

"This chapter shall not be construed to preempt or displace any other remedies, whether civil or criminal, provided by United States Federal, State, commonwealth, possession, or territory law for the misappropriation of a trade secret, or to affect the otherwise lawful disclosure of information by any Government employee under section 552 of title 5 (commonly known as the Freedom of Information Act). "§ 1839. Definitions

"As used in this chapter— "(1) the term 'foreign instrumentality' means any agency, bureau, ministry, component, institution, association, or any legal, commercial, or business organization, corporation, firm, or entity that is substantially owned, controlled, sponsored, commanded, managed, or dominated by a foreign government; "(2) the term 'foreign agent* means any officer, employee, proxy, servant, delegate, or representative of a foreign government; "(3) the term 'trade secret" means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, pro-

Appendix C Federal Laws gram devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if— "(A) the owner thereof has taken reasonable measures to keep such information secret; and "(B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, the public; and "(4) the term 'owner', with respect to a trade secret, means the person or entity in whom or in which rightful legal or equitable title to, or license in, the trade secret is reposed.". (b) CLERICAL AMENDMENT.—The table of chapters at the beginning part I of title 18, United States Code, is amended by inserting after the item relating to chapter 89 the following: "90. Protection of trade secrets

1831".

(c) REPORTS.—Not later than 2 years and 4 years after the 42 USC 10604 date of the enactment of this Act, the Attorney General shall note. report to Congress on the amounts received and distributed from fines for offenses under this chapter deposited in the Crime Victims Fund established by section 1402 of the Victims of Crime Act of!984(42U.S.C. 10601). SEC. 102. WIRE AND ELECTRONIC COMMUNICATIONS INTERCEPTION AND INTERCEPTION OF ORAL COMMUNICATIONS.

Section 2516(l)(c) of title 18, United States Code, is amended by inserting "chapter 90 (relating to protection of trade secrets)," after "chapter 37 (relating to espionage),".

TITLE II—NATIONAL INFORMATION INFRASTRUCTURE PROTECTION ACT OF 1996 SEC. 201. COMPUTER CRIME.

Section 1030 of title 18, United States Code, is amended— (1) in subsection (a)— (A) in paragraph (1)— (i) by striking "knowingly accesses" and inserting "having knowingly accessed"; (ii) by striking "exceeds" and inserting "exceeding"; (iii) by striking "obtains information" and inserting "having obtained information"; (iv) by striking "the intent or"; (v) by striking "is to be used" and inserting "could be used"; and (vi) by inserting before the semicolon at the end the following: "willfully communicates, delivers, transmits, or causes to be communicated, delivered, or transmitted, or attempts to communicate, deliver, transmit or cause to be communicated, delivered, or transmitted the same to any person not entitled to receive it, or willfully retains the same and fails to

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Appendix C Federal Laws deliver it to the officer or employee of the United States entitled to receive it"; (B) in paragraph (2)— (i) by striking "obtains information" and inserting "obtains— "(A) information"; and (ii) by adding at the end the following new subparagraphs: "(B) information from any department or agency of the United States; or "(C) information from any protected computer if the conduct involved an interstate or foreign communication;"; (C) in paragraph (3)— (i) by inserting "nonpublic" before "computer of a department or agency"; (ii) by striking "adversely"; and (iii) by striking "the use of the Government's operation of such computer" and inserting "that use by or for the Government of the United States"; (D) in paragraph (4)— (i) by striking "Federal interest" and inserting "protected"; and (ii) by inserting before the semicolon the following: "and the value of such use is not more than $5,000 in any 1-year period"; (E) by striking paragraph (5) and inserting the following: "(5)(A) knowingly causes the transmission of a program, information, code, or command, and as a result of such conduct, intentionally causes damage without authorization, to a protected computer; "(B) intentionally accesses a protected computer without authorization, and as a result of such conduct, recklessly causes damage; or "(C) intentionally accesses a protected computer without authorization, and as a result of such conduct, causes damage;"; and (F) by inserting after paragraph (6) the following new paragraph: "(7) with intent to extort from any person, firm, association, educational institution, financial institution, government entity, or other legal entity, any money or other thing of value, transmits in interstate or foreign commerce any communication containing any threat to cause damage to a protected computer;"; (2) in subsection (c)— (A) in paragraph (1), by striking "such subsection" each place that term appears and inserting "this section"; (B) in paragraph (2)— (i) in subparagraph (A)— (I) by inserting ", (a)(5)(C)," after "(a)(3)"; and (II) by striking "such subsection" and inserting "this section"; (ii) by redesignating subparagraph (B) as subparagraph (C); (iii) by inserting immediately after subparagraph (A) the following:

Appendix C Federal Laws 301 "(B) a fine under this title or imprisonment for not more than 5 years, or both, in the case of an offense under subsection (a)(2), if— "(i) the offense was committed for purposes of commercial advantage or private financial gain; "(ii) the offense was committed in furtherance of any criminal or tortious act in violation of the Constitution or laws of the United States or of any State; or "(iii) the value of the information obtained exceeds $5,000;"; and (iv) in subparagraph (C) (as redesignated)— (I) by striking "such subsection" and inserting "this section"; and (II) by adding "and" at the end; (C) in paragraph (3)— (i) in subparagraph (A)— (I) by striking "(a)(4) or (a)(5)(A)" and inserting "(a)(4), (a)(5)(A), (a)(5)(B), or (a)(7)"; and (II) by striking "such subsection" and inserting "this section"; and (ii) in subparagraph (B)— (I) by striking "(a)(4) or (a)(5)" and inserting "(a)(4), (a)(5)(A), (a)(5)(B), (a)(5)(C), or (a)(7)"; and (II) by striking "such subsection" and inserting "this section"; and (D) by striking paragraph (4); (3) in subsection (d), by inserting "subsections (a)(2)(A), (a)(2)(B), (a)(3), (a)(4), (a)(5), and (a)(6) of before "this section."; (4) in subsection (e)— (A) in paragraph (2)— (i) by striking "Federal interest" and inserting "protected"; (ii) in subparagraph (A), by striking "the use of the financial institution's operation or the Government's operation of such computer" and inserting "that use by or for the financial institution or the Government"; and (iii) by striking subparagraph (B) and inserting the following: "(B) which is used in interstate or foreign commerce or communication;"; (B) in paragraph (6), by striking "and" at the end; (C) in paragraph (7), by striking the period at the end and inserting "; and"; and (D) by adding at the end the following new paragraphs: "(8) the term 'damage' means any impairment to the integrity or availability of data, a program, a system, or information, that— "(A) causes loss aggregating at least $5,000 in value during any 1-year period to one or more individuals; "(B) modifies or impairs, or potentially modifies or impairs, the medical examination, diagnosis, treatment, or care of one or more individuals; "(C) causes physical injury to any person; or "(D) threatens public health or safety; and

302

Appendix C Federal Laws "(9) the term 'government entity1 includes the Government of the United States, any State or political subdivision of the United States, any foreign country, and any state, province, municipality, or other political subdivision of a foreign country."; and (5) in subsection (g)— (A) by striking ", other than a violation of subsection (a)(5)(B),"; and (B) by striking "of any subsection other than subsection (a)(5)(A)(ii)(II)(bb) or (a)(5)(B)(ii)(II)(bb)" and inserting "involving damage as defined in subsection (e)(8)(A)".

TITLE III—TRANSFER OF PERSONS FOUND NOT GUILTY BY REASON OF INSANITY SEC. 301. TRANSFER OF PERSONS FOUND NOT GUILTY BY REASON OF INSANITY.

(a) AMENDMENT OF SECTION 4243 OF TITLE 18.—Section 4243 of title 18, United States Code, is amended by adding at the end the following new subsection: "(i) CERTAIN PERSONS FOUND NOT GUILTY BY REASON OF INSANITY IN THE DISTRICT OF COLUMBIA.— "(1) TRANSFER TO CUSTODY OF THE ATTORNEY GENERAL.— Notwithstanding section 301(h) of title 24 of the District of Columbia Code, and notwithstanding subsection 4247(j) of this title, all persons who have been committed to a hospital for the mentally ill pursuant to section 301(d)(l) of title 24 of the District of Columbia Code, and for whom the United States has continuing financial responsibility, may be transferred to the custody of the Attorney General, who shall hospitalize the person for treatment in a suitable facility. "(2) APPLICATION.— "(A) IN GENERAL.—The Attorney General may establish custody over such persons by filing an application in the United States District Court for the District of Columbia, demonstrating that the person to be transferred is a person described in this subsection. "(B) NOTICE.—The Attorney General shall, by any means reasonably designed to do so, provide written notice of the proposed transfer of custody to such person or such person's guardian, legal representative, or other lawful agent. The person to be transferred shall be afforded an opportunity, not to exceed 15 days, to respond to the proposed transfer of custody, and may, at the court's discretion, be afforded a hearing on the proposed transfer of custody. Such hearing, if granted, shall be limited to a determination of whether the constitutional rights of such person would be violated by the proposed transfer of custody. "(C) ORDER.—Upon application of the Attorney General, the court shall order the person transferred to the custody of the Attorney General, unless, pursuant to a hearing under this paragraph, the court finds that the proposed transfer would violate a right of such person under the United States Constitution.

Appendix C Federal Laws "(D) EFFECT.—Nothing in this paragraph shall be construed to— "(i) create in any person a liberty interest in being granted a bearing or notice on any matter; "(ii) create in favor of any person a cause of action against the United States or any officer or employee of the United States; or "(iii) limit in any manner or degree the ability of the Attorney General to move, transfer, or otherwise manage any person committed to the custody of the Attorney General. "(3) CONSTRUCTION WITH OTHER SECTIONS.—Subsections (f) and (g) and section 4247 shall apply to any person transferred to the custody of the Attorney General pursuant to this subsection.". (b) TRANSFER OF RECORDS.—Notwithstanding any provision of the District of Columbia Code or any other provision of law, the District of Columbia and St. Elizabeth's Hospital— (1) not later than 30 days after the date of enactment of this Act, shall provide to the Attorney General copies of all records in the custody or control of the District or the Hospital on such date of enactment pertaining to persons described in section 4243(i) of title 18, United States Code (as added by subsection (a)); (2) not later than 30 days after the creation of any records by employees, agents, or contractors of the District of Columbia or of St. Elizabeth's Hospital pertaining to persons described in section 4243(i) of title 18, United States Code, provide to the Attorney General copies of all such records created after the date of enactment of this Act; (3) shall not prevent or impede any employee, agent, or contractor of the District of Columbia or of St. Elizabeth's Hospital who has obtained knowledge of the persons described in section 4243(i) of title 18, United States Code, in the employee's professional capacity from providing that knowledge to the Attorney General, nor shall civil or criminal liability attach to such employees, agents, or contractors who provide such knowledge; and (4) shall not prevent or impede interviews of persons described in section 4243(i) of title 18, United States Code, by representatives of the Attorney General, if such persons voluntarily consent to such interviews. (c) CLARIFICATION OF EFFECT ON CERTAIN TESTIMONIAL PRIVILEGES.—The amendments made by this section shall not be construed to affect in any manner any doctor-patient or psychotherapist-patient testimonial privilege that may be otherwise applicable to persons found not guilty by reason of insanity and affected by this section. (d) SEVERABILITY.—If any provision of this section, an amendment made by this section, or the application of such provision or amendment to any person or circumstance is held to be unconstitutional, the remainder of this section and the amendments made by this section shall not be affected thereby.

18 USC 4243 note.

18 USC 4243 note.

18 USC 4243 note.

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TITLE IV—ESTABLISHMENT OF BOYS AND GIRLS CLUBS 42 USC 13751 note.

SEC. 401. ESTABLISHING BOYS AND GERLS CLUBS.

(a) FINDINGS AND PURPOSE.— (1) FINDINGS.—The Congress finds that— (A) the Boys and Girls Clubs of America, chartered by an Act of Congress on December 10, 1991, during its 90-year history as a national organization, has proven itself as a positive force in the communities it serves; (B) there are 1,810 Boys and Girls Clubs facilities throughout the United States, Puerto Rico, and the United States Virgin Islands, serving 2,420,000 youths nationwide; (C) 71 percent of the young people who benefit from Boys and Girls Clubs programs live in our inner cities and urban areas; (D) Boys and Girls Clubs are locally run and have been exceptionally successful in balancing public funds with private sector donations and maximizing community involvement; (E) Boys and Girls Clubs are located in 289 public housing sites across the Nation; (F) public housing projects in which there is an active Boys and Girls Club have experienced a 25 percent reduction in the presence of crack cocaine, a 22 percent reduction in overall drug activity, and a 13 percent reduction in juvenile crime; (G) these results have been achieved in the face of national trends in which overall drug use by youth has increased 105 percent since 1992 and 10.9 percent of the Nation's young people use drugs on a monthly basis; and (H) many public housing projects and other distressed areas are still underserved by Boys and Girls Clubs. (2) PURPOSE.—It is the purpose of this section to provide adequate resources in the form of seed money for the Boys and Girls Clubs of America to establish 1,000 additional local Boys and Girls Clubs in public housing projects and other distressed areas by 2001. (b) DEFINITIONS.—For purposes of this section— (1) the terms "public housing" and "project" have the same meanings as in section 3(b) of the United States Housing Act of 1937; and (2) the term "distressed area" means an urban, suburban, or rural area with a high percentage of high risk youth as defined in section 509A of the Public Health Service Act (42 U.S.C. 290aa-8(f)). (c) ESTABLISHMENT.— (1) IN GENERAL.—For each of the fiscal years 1997, 1998, 1999, 2000, and 2001, the Director of the Bureau of Justice Assistance of the Department of Justice shall provide a grant to the Boys and Girls Clubs of America for the purpose of establishing Boys and Girls Clubs in public housing projects and other distressed areas. (2) CONTRACTING AUTHORITY.—Where appropriate, the Secretary of Housing and Urban Development, in consultation with the Attorney General, shall enter into contracts with the

Appendix C Federal Laws Boys and Girls Clubs of America to establish clubs pursuant to the grants under paragraph (1). (d) REPORT.—Not later than May 1 of each fiscal year for which amounts are made available to carry out this Act. the Attorney General shall submit to the Committees on the Judiciary of the Senate and the House of Representatives a report that details the progress made under this Act in establishing Boys and Girls Clubs in public housing projects and other distressed areas, and the effectiveness of the programs in reducing drug abuse and juvenile crime. (e) AUTHORIZATION OP APPROPRIATIONS.— (1) IN GENERAL.—There are authorized to be appropriated to carry out this section— (A) $20,000,000 for fiscal year 1997; (B) $20,000,000 for fiscal year 1998; (C) $20,000,000 for fiscal year 1999; (D) $20,000,000 for fiscal year 2000; and (E) $20,000,000 for fiscal year 2001. (2) VIOLENT CRIME REDUCTION TRUST FUND.—The sums authorized to be appropriated by this subsection may be made from the Violent Crime Reduction Trust Fund.

TITLE V—USE OF CERTAIN TECHNOLOGY TO FACILITATE CRIMINAL CONDUCT SEC. 501. USE OF CERTAIN TECHNOLOGY TO FACILITATE CRIMINAL CONDUCT.

(a) INFORMATION.—The Administrative Office of the United States courts shall establish policies and procedures for the inclusion in all presentence reports of information that specifically identifies and describes any use of encryption or scrambling technology that would be relevant to an enhancement under section 3C1.1 (dealing with Obstructing or Impeding the Administration of Justice) of the Sentencing Guidelines or to offense conduct under the Sentencing Guidelines. (b) COMPILING AND REPORT.—The United States Sentencing Commission shall— (1) compile and analyze any information contained in documentation described in subsection (a) relating to the use of encryption or scrambling technology to facilitate or conceal criminal conduct; and (2) based on the information compiled and analyzed under paragraph (1), annually report to the Congress on the nature and extent of the use of encryption or scrambling technology to facilitate or conceal criminal conduct.

TITLE VI—TECHNICAL AND MINOR AMENDMENTS SEC. 601. GENERAL TECHNICAL AMENDMENTS.

(a) FURTHER CORRECTIONS TO MISLEADING FINE AMOUNTS AND RELATED TYPOGRAPHICAL ERRORS.—

18 USC 3552 note.

305

306

Appendix C Federal Laws (1) Sections 152, 153, 154, and 610 of title 18, United States Code, are each amended by striking "fined not more than $5,000" and inserting "fined under this title". (2) Section 970(b) of title 18, United States Code, is amended by striking "fined not more than $500" and inserting "fined under this title". (3) Sections 661, 1028(b), 1361, and 270Kb) of title 18, United States Code, are each amended by striking "fine of under" each place it appears and inserting "fine under". (4) Section 3146(b)(l)(A)(iv) of title 18, United States Code, is amended by striking "a fined under this title" and inserting "a fine under this title". (5) The section 1118 of title 18, United States Code, that was enacted by Public Law 103-333— (A) is redesignated as section 1122; and (B) is amended in subsection (c) by— (i) inserting "under this title" after "fine"; and (ii) striking "nor more than $20,000". (6) The table of sections at the beginning of chapter 51 of title 18, United States Code, is amended by adding at the end the following new item: "1122. Protection against the human immunodeficiency virus.".

(7) Sections 1761(a) and 1762(b) of title 18, United States Code, are each amended by striking "fined not more than $50,000" and inserting "fined under this title". (8) Sections 1821, 1851, 1852, 1853, 1854, 1905, 1916, 1918, 1991, 2115, 2116, 2191, 2192, 2194, 2199, 2234, 2235, and 2236 of title 18, United States Code, are each amended by striking "fined not more than $1,000" each place it appears and inserting "fined under this title". (9) Section 1917 of title 18, United States Code, is amended by striking "fined not less than $100 nor more than $1,000" and inserting "fined under this title not less than $100". (10) Section 1920 of title 18, United States Code, is amended— (A) by striking "of not more than $250,000" and inserting "under this title"; and (B) by striking "of not more than $100,000" and inserting "under this title". (11) Section 2076 of title 18, United States Code, is amended by striking "fined not more than $1,000 or imprisoned not more than one year" and inserting "fined under this title or imprisoned not more than one year, or both". (12) Section 597 of title 18, United States Code, is amended by striking "fined not more than $10,000" and inserting "fined under this title". (b) CROSS REFERENCE CORRECTIONS AND CORRECTIONS OF TYPOGRAPHICAL ERRORS.— (1) Section 3286 of title 18, United States Code, is amended— (A) by striking "2331" and inserting "2332"; (B) by striking "2339" and inserting "2332a"; and (C) by striking "36" and inserting "37". (2) Section 2339A(b) of title 18, United States Code, is amended— (A) by striking "2331" and inserting "2332"; (B) by striking "2339" and inserting "2332a";

Appendix C Federal Laws 307 (C) by striking "36" and inserting "37"; and (D) by striking "of an escape" and inserting "or an escape". (3) Section 1961(1)(D1 of title 18. United States Code, is amended by striking "that title" and inserting "this title". (4) Section 2423(b) of title 18, United States Code, is amended by striking "2245" and inserting "2246". (5) Section 3553(f) of title 18, United States Code, is amended by striking "section 1010 or 1013 of the Controlled Substances Import and Export Act (21 U.S.C. 961, 963)" and inserting "section 1010 or 1013 of the Controlled Substances Import and Export Act (21 U.S.C. 960, 963)". (6) Section 3553(0(4) of title 18, United States Code, is amended by striking "21 U.S.C. 848" and inserting "section 408 of the Controlled Substances Act". (7) Section 3592(c)(l) of title 18, United States Code, is amended by striking "2339" and inserting "2332a". (c) SIMPLIFICATION AND CLARIFICATION OF WORDING.— (1) The third undesignated paragraph of section 5032 of title 18, United States Code, is amended by inserting "or as authorized under section 3401(g) of this title" after "shall proceed by information". (2) Section 1120 of title 18, United States Code, is amended by striking "Federal prison" each place it appears and inserting "Federal correctional institution". (3) Section 247(d) of title 18, United States Code, is amended by striking "notification" and inserting "certification". (d) CORRECTION OF PARAGRAPH CONNECTORS.—Section 2516(1) of title 18, United States Code, is amended— (1) in paragraph (1), by striking "or" after the semicolon; and (2) in paragraph (n), by striking "and" where it appears after the semicolon and inserting "or". (e) CORRECTION CAPITALIZATION OF ITEMS IN LIST.—Section 504 of title 18, United States Code, is amended— (1) in paragraph (1), by striking "the" the first place it appears and inserting "The"; and (2) in paragraph (3), by striking "the" the first place it appears and inserting "The". (f) CORRECTIONS OF PUNCTUATION AND OTHER ERRONEOUS FORM — (1) Section 656 of title 18, United States Code, is amended in the first paragraph by striking "Act,," and inserting "Act,". (2) Section 1114 of title 18, United States Code, is amended by striking "1112." and inserting "1112,". (3) Section 504(3) of title 18, United States Code, is amended by striking "importation, of and inserting "importation of. (4) Section 3059A(a)(l) of title 18, United States Code, is amended by striking "section 215 225,," and inserting "section 215, 225,". (5) Section 3125(a) of title 18, United States Code, is amended by striking the close quotation mark at the end. (6) Section 1956(c)(7)(B)(iii) of title 18, United States Code, is amended by striking "1978)" and inserting "1978".

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Appendix C Federal Laws (7) The item relating to section 656 in the table of sections at the beginning of chapter 31 of title 18, United States Code, is amended by inserting a comma after "embezzlement". (8) The item relating to section 1024 in the table of sections at the beginning of chapter 47 of title 18, United States Code, is amended by striking "veterans'" and inserting "veteran's". (9) Section 3182 (including the heading of such section) and the item relating to such section in the table of sections at the beginning of chapter 209, of title 18, United States Code, are each amended by inserting a comma after "District" each place it appears. (10) The item relating to section 3183 in the table of sections at the beginning of chapter 209 of title 18, United States Code, is amended by inserting a comma after "Territory". (11) The items relating to section 2155 and 2156 in the table of sections at the beginning of chapter 105 of title 18, United States Code, are each amended by striking "or" and inserting ", or". (12) The headings for sections 2155 and 2156 of title 18, United States Code, are each amended by striking "or" and inserting ", or". (13) Section 1508 of title 18, United States Code, is amended by realigning the matter beginning "shall be fined" and ending "one year, or both." so that it is flush to the left margin. (14) The item relating to section 4082 in the table of sections at the beginning of chapter 305 of title 18, United States Code, is amended by striking "centers," and inserting "centers;". (15) Section 2101(a) of title 18, United States Code, is amended by striking "(1)" and by redesignating subparagraphs (A) through (D) as paragraphs (1) through (4), respectively. (16) Section 5038 of title 18, United States Code, is amended by striking "section 841, 952(a), 955, or 959 of title 21" each place it appears and inserting "section 401 of the Controlled Substances Act or section 1001(a), 1005, or 1009 of the Controlled Substances Import and Export Act". (g) CORRECTIONS OF PROBLEMS ARISING FROM UNCOORDINATED AMENDMENTS.— (1) SECTION 5032.—The first undesignated paragraph of section 5032 of title 18, United States Code, is amended— (A) by inserting "section 922(x)" before "or section 924(b)"; and (B) by striking "or (x)". (2) STRIKING MATERIAL UNSUCCESSFULLY ATTEMPTED TO BE STRICKEN PROM SECTION 1116 BY PUBLIC LAW 103-322.—Subsection (a) of section 1116 of title 18, United States Code, is amended by striking ", except" and all that follows through the end of such subsection and inserting a period. (3) ELIMINATION OF DUPLICATE AMENDMENT IN SECTION 1958.—Section 1958(a) of title 18, United States Code, is amended by striking "or who conspires to do so" where it appears following "or who conspires to do so" and inserting a comma. (h) INSERTION OF MISSING END QUOTE.—Section 80001(a) of the Violent Crime Control and Law Enforcement Act of 1994 is

Appendix C Federal Laws amended by inserting a close quotation mark followed by a period at the end. (i) REDESIGNATION OF DUPLICATE SECTION NUMBERS AND CONFORMING CLERICAL AMENDMENTS.— (1) REDESIGNATION.—That section 2258 added to title 18. United States Code, by section IGOOQl(a) of the Violent Crime Control and Law Enforcement Act of 1994 is redesignated as section 2260. (2) CONFORMING CLERICAL AMENDMENT.—The item in the table of sections at the beginning of chapter 110 of title 18, United States Code, relating to the section redesignated by paragraph (1) is amended by striking "2258" and inserting "2260". (3) CONFORMING AMENDMENT TO CROSS-REFERENCE.—Section 1961(1)(B) of title 18, United States Code, is amended by striking "2258" and inserting "2260". (j) REDESIGNATION OF DUPLICATE CHAPTER NUMBER AND CONFORMING CLERICAL AMENDMENT.— (1) REDESIGNATION.—The chapter 113B added to title 18, United States Code, by Public Law 103-236 is redesignated chapter 113C. (2) CONFORMING CLERICAL AMENDMENT.—The table of chapters at the beginning of part I of title 18, United States Code, is amended in the item relating to the chapter redesignated by paragraph (1)— (A) by striking "113B" and inserting "113C"; and (B) by striking "2340." and inserting "2340". (k) REDESIGNATION OF DUPLICATE PARAGRAPH NUMBERS AND CORRECTION OF PLACEMENT OF PARAGRAPHS IN SECTION 3563.— (1) REDESIGNATION.—Section 3563(a) of title 18, United States Code, is amended by redesignating the second paragraph (4) as paragraph (5). (2) CONFORMING CONNECTOR CHANGE.—Section 3563(a) of title 18, United States Code, is amended— (A) by striking "and" at the end of paragraph (3); and (B) by striking the period at the end of paragraph (4) and inserting "; and". (3) PLACEMENT CORRECTION.—Section 3563(a) of title 18, United States Code, is amended so that paragraph (4) and the paragraph redesignated as paragraph (5) by this subsection are transferred to appear in numerical order immediately following paragraph (3) of such section 3563(a). (1) REDESIGNATION OF DUPLICATE PARAGRAPH NUMBERS IN SECTION 1029 AND CONFORMING AMENDMENTS RELATED THERETO.— Section 1029 of title 18, United States Code, is amended— (1) in subsection (a)— (A) by redesignating those paragraphs (5) and (6) which were added by Public Law 103-414 as paragraphs (7) and (8), respectively; (B) by redesignating paragraph (7) as paragraph (9); (C) by striking "or" at the end of paragraph (6) and at the end of paragraph (7) as so redesignated by this subsection; and (D) by inserting "or" at the end of paragraph (8) as so redesignated by this subsection;

18 USC 3553.

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310

Appendix C Federal Laws (2) in subsection (e), by redesignating the second paragraph (7) as paragraph (8); and (3) in subsection (c)— (A) JD £ar.agr.apb (J),, by striking "or (7)" .and inserting "(7), (8), or (9)"; and (B) in paragraph (2), by striking "or (6)" and inserting "(6), (7), or (8)". (m) INSERTION OF MISSING SUBSECTION HEADING.—Section 1791(c) of title 18, United States Code, is amended by inserting after "(c)" the following subsection heading: "CONSECUTIVE PUNISHMENT REQUIRED IN CERTAIN CASES.—". (n) CORRECTION or MISSPELLING.—Section 2327(c) of title 18, United States Code, is amended by striking "delegee" each place it appears and inserting "designee". (o) CORRECTION OF SPELLING AND AGENCY REFERENCE.—Section 5038(f) of title 18, United States Code, is amended— (1) by striking "juvenille" and inserting "juvenile", and (2) by striking "the Federal Bureau of Investigation, Identification Division," and inserting "the Federal Bureau of Investigation". (p) CORRECTING MISPLACED WORD.—Section 1028(a) of title 18, United States Code, is amended by striking "or" at the end of paragraph (4) and inserting "or" at the end of paragraph (5). (q) STYLISTIC CORRECTION.—Section 37(c) of title 18, United States Code, is amended by inserting after "(c)" the following subsection heading: "BAR TO PROSECUTION.—". (r) MANDATORY VICTIM RESTITUTION ACT AMENDMENTS.— (1) ORDER OF RESTITUTION.—Section 3663(a)(l)(A) of title 18, United States Code, is amended by adding at the end the following: "The court may also order, if agreed to by the parties in a plea agreement, restitution to persons other than the victim of the offense.". (2) FORFEITURE.—Section 3663(c)(4) of title 18, United States Code, is amended by inserting "or chapter 96" after "under chapter 46". (3) ANIMAL ENTERPRISE TERRORISM.—Section 43(c) of title 18, United States Code, is amended by inserting after "3663" the following: "or 3663A". (4) SPECIAL ASSESSMENT.—Section 3013(a)(2) of title 18, United States Code, is amended by striking "not less than" each place that term appears. (s) CLARIFICATIONS TO ANTITERRORISM AND EFFECTIVE DEATH PENALTY ACT OF 1996. (1) JURISDICTION.—Section 2332b(b)(l)(A) of title 18, United States Code, is amended by— (A) striking "any of the offenders uses"; and (B) inserting "is used" after "foreign commerce". (2) PROVIDING MATERIAL SUPPORT.—Section 2339A(a) of title 18, United States Code, is amended by inserting "or an escape" after "concealment". (3) TECHNICAL AMENDMENTS.—Sections 2339A(a) and 2332b(g)(5)(B) of title 18, United States Code, are each amended by inserting at the appropriate place in each section's enumeration of title 18 sections the following: "930(c),"; "1992,", and "2332c,".

Appendix C Federal Laws 311 SEC. 602. REPEAL OF OBSOLETE PROVISIONS IN TITLE 18.

(a) SECTION 709 AMENDMENT.—Section 709 of title 18, United States Code, is amended by striking ''Whoever uses as a firm cr btiein€€€ "ais€ the v.-srds 'Reconstruction Fiance Corporation' or any combination or variation of these words—". (b) SECTION 1014 AMENDMENT.—Section 1014 of title 18, United States Code, is amended— (1) by striking "Reconstruction Finance Corporation,"; (2) by striking "Farmers' Home Corporation,"; and (3) by striking "of the National Agricultural Credit Corporation,". (c) SECTION 798 AMENDMENT.—Section 798(d)(5) of title 18, United States Code, is amended by striking "the Trust Territory of the Pacific Islands,". (d) SECTION 281 REPEAL.—Section 281 of title 18, United States Code, is repealed and the table of sections at the beginning of chapter 15 of such title is amended by striking the item relating to such section. (e) SECTION 510 AMENDMENT.—Section 510(b) of title 18, United States Code, is amended by striking "that in fact" and all that follows through "signature". SEC. 603. TECHNICAL AMENDMENTS RELATING TO CHAPTERS 40 AND 44 OF TITLE 18.

(a) ELIMINATION OF DOUBLE COMMAS IN SECTION 844.—Section 844 of title 18, United States Code, is amended in subsection (i) by striking "„" each place it appears and inserting a comma. (b) REPLACEMENT OF COMMA WITH SEMICOLON IN SECTION 922.—Section 922(g)(8)(C)(ii) of title 18, United States Code, is amended by striking the comma at the end and inserting a semicolon. (c) CLARIFICATION OF AMENDMENT TO SECTION 922.— (1) AMENDMENT.—Section 320927 of the Violent Crime Control and Law Enforcement Act of 1994 (Public Law 103322) is amended by inserting "the first place it appears" before the period. (2) EFFECTIVE DATE.—The amendment made by paragraph (1) shall take effect as if the amendment had been included in section 320927 of the Act referred to in paragraph (1) on the date of the enactment of such Act. (d) STYLISTIC CORRECTION TO SECTION 922.—Section 922(t)(2) of title 18, United States Code, is amended by striking "section 922(g)" and inserting "subsection (g)". (e) ELIMINATION OF UNNECESSARY WORDS.—Section 922(w)(4) of title 18, United States Code, is amended by striking "title 18, United States Code," and inserting "this title". (f) CLARIFICATION OF PLACEMENT OF PROVISION.— (1) AMENDMENT.—Section 110201(a) of the Violent Crime Control and Law Enforcement Act of 1994 (Public Law 103— 322) is amended by striking "adding at the end" and inserting "inserting after subsection (w)". (2) EFFECTIVE DATE.—The amendment made by paragraph (1) shall take effect as if the amendment had been included in section 110201 of the Act referred to in paragraph (1) on the date of the enactment of such Act.

18 USC 922.

18 USC 922 note.

18 USC 922.

18 USC 922 note.

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Appendix C Federal Laws (g) CORRECTION OF TYPOGRAPHICAL ERRORS IN LIST OP CERTAIN WEAPONS.—Appendix A to section 922 of title 18, United States Code, is amended— (1) in the category designated "Centerfire Rifles—Lever & Slide", by striking "Uberti 1866 Sporting Rilfe" and inserting the following: "Uberti 1866 Sporting Rifle";

(2) in the category designated "Centerfire Rifles—Bolt Action", by striking "Sako Fiberclass Sporter"

and inserting the following: "Sako FiberClass Sporter"; (3) in the category designated "Shotguns—Slide Actions", by striking "Remington 879 SPS Special Purpose Magnum" and inserting the following: "Remington 870 SPS Special Purpose Magnum"

; and (4) in the category designated "Shotguns—Over/Unders", by striking "E.A.A/Sabatti Falcon-Mon Over/Under" and inserting the following: "E,A.A./Sabatti Falcon-Mon Over/Under".

(h) INSERTION OF MISSING COMMAS.—Section 103 of the Brady Handgun Violence Prevention Act (18 U.S.C. 922 note; Public Law 103-159) is amended in each of subsections (e)(l), (g), and (i)(2) by inserting a comma after "United States Code". (i) CORRECTION OF UNEXECUTABLE AMENDMENTS RELATING TO THE VIOLENT CRIME REDUCTION TRUST FUND.— (1) CORRECTION.—Section 210603(b) of the Violent Crime 18 USC 922 note. Control and Law Enforcement Act of 1994 is amended by striking "Fund," and inserting "Fund established by section 1115 of title 31, United States Code,". 18 USC 922 note. (2) EFFECTIVE DATE.—The amendment made by paragraph (1) shall take effect as if the amendment had been included in section 210603(b) of the Act referred to in paragraph (1) on the date of the enactment of such Act. (j) CORRECTION OF UNEXECUTABLE AMENDMENT TO SECTION 923.— (1) CORRECTION.—Section 201(1) of the Act, entitled "An Act to provide for a waiting period before the purchase of a handgun, and for the establishment of a national instant criminal background check system to be contacted by firearms

Appendix C Federal Laws dealers before the transfer of any firearm." (Public Law 103159), is amended by striking "thereon," and inserting "thereon". (2) EFFECTIVE DATE.—The amendment made by paragraph (1) shall take effect as if the amendment had been included in the Act referred to in paragraph (1) on the date of the enactment of such Act. (k) CORRECTION OF PUNCTUATION AND INDENTATION IN SECTION 923.—Section 923(g)(l)(B)(ii) of title 18, United States Code, is amended— (1) by striking the period and inserting "; or"; and (2) by moving such clause 4 ems to the left. (1) REDESIGNATION OF SUBSECTION AND CORRECTION or INDENTATION IN SECTION 923.—Section 923 of title 18, United States Code, is amended— (1) by redesignating the last subsection as subsection (1); and (2) by moving such subsection 2 ems to the left. (m) CORRECTION OF TYPOGRAPHICAL ERROR IN AMENDATORY PROVISION.— (1) CORRECTION.—Section 110507 of the Violent Crime Control and Law Enforcement Act of 1994 (Public Law 103322) is amended— (A) by striking "924(a)" and inserting "924"; and (B) in paragraph (2), by striking "subsections" and inserting "subsection". (2) EFFECTIVE DATE.—The amendments made by paragraph (1) shall take effect as if the amendments had been included in section 110507 of the Act referred to in paragraph (1) on the date of the enactment of such Act. (n) ELIMINATION OF DUPLICATE AMENDMENT.—Subsection (h) of section 330002 of the Violent Crime Control and Law Enforcement Act of 1994 is repealed and shall be considered never to have been enacted. (0) REDESIGNATION OF PARAGRAPH IN SECTION 924.—Section 924(a) of title 18, United States Code, is amended by redesignating the second paragraph (5) as paragraph (6). (p) ELIMINATION OF COMMA ERRONEOUSLY INCLUDED IN AMENDMENT TO SECTION 924.— (1) AMENDMENT.—Section 110102(c)(2) of the Violent Crime Control and Law Enforcement Act of 1994 (Public Law 103322) is amended by striking "shotgun," and inserting "shotgun". (2) EFFECTIVE DATE.—The amendment made by paragraph (1) shall take effect as if the amendment had been included in section 110102(c)(2) of the Act referred to in paragraph (1) on the date of the enactment of such Act. (q) INSERTION OF CLOSE PARENTHESIS IN SECTION 924.—Section 924(j)(3) of title 18, United States Code, is amended by inserting a close parenthesis before the comma. (r) REDESIGNATION OF SUBSECTIONS IN SECTION 924.—Section 924 of title 18, United States Code, is amended by redesignating the second subsection (i), and subsections (j), (k), (1), (m), and (n) as subsections (j), (k), (1), (m), (n), and (o), respectively. (s) CORRECTION OF ERRONEOUS CROSS REFERENCE IN AMENDATORY PROVISION.—Section 110504(a) of the Violent Crime Control and Law Enforcement Act of 1994 (Public Law 103-322) is amended by striking "110203(a)" and inserting "110503".

18 USC 923. IS USC 923 note.

18 USC 924.

18 USC 924 note.

18 USC 924.

18 USC 924. 18 USC 924 note.

18 USC 924.

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314

Appendix C Federal Laws (t) CORRECTION OF CROSS REFERENCE IN SECTION 930.—Section 930(e)(2) of title 18, United States Code, is amended by striking "(c)" and inserting "(d)". (u) CORRECTION OF CROSS REFERENCES IN SECTION 930.—The last subsection of section 930 of title 18, United States Code, is amended— (1) by striking "(g)" and inserting "(h)"; and (2) by striking "(d)" each place such term appears and inserting "(e)". SEC. 604. ADDITIONAL AMENDMENTS ARISING FROM ERRORS IN PUBLIC LAW 103-322.

(a) STYLISTIC CORRECTIONS RELATING TO TABLES OF SECTIONS.— (1) The table of sections at the beginning of chapter 110A of title 18, United States Code, is amended to read as follows: "Sec. "2261. "2262. "2263. "2264. "2265. "2266.

Interstate domestic violence. Interstate violation of protection order. Pretrial release of defendant. Restitution. Full faith and credit given to protection orders. Definitions.".

(2) Chapter 26 of title 18, United States Code, is amended by inserting after the heading for such chapter the following table of sections: "Sec. "521. Criminal street gangs.".

(3) Chapter 123 of title 18, United States Code, is amended by inserting after the heading for such chapter the following table of sections: "Sec. "2721. Prohibition on release and use of certain personal information from State motor vehicle records. "2722. Additional unlawful acts. "2723. Penalties. "2724. Civil action. "2725. Definitions.".

42 USC 14011. 18 USC 794.

18 USC 2339A. 18 USC 1961.

(4) The item relating to section 3509 in the table of sections at the beginning of chapter 223 of title 18, United States Code, is amended by striking "Victims'" and inserting "victims'". (b) UNIT REFERENCE CORRECTIONS, REMOVAL OF DUPLICATE AMENDMENTS, AND OTHER SIMILAR CORRECTIONS.— (1) Section 40503(b)(3) of Public Law 103-322 is amended by striking "paragraph (b)(l)" and inserting "paragraph (1)". (2) Section 60003(a)(2) of Public Law 103-322 is amended by striking "at the end of the section" and inserting "at the end of the subsection". (3) Section 3582(c)(l)(A)(i) of title 18, United States Code, is amended by adding "or" at the end. (4) Section 102 of the Controlled Substances Act (21 U.S.C. 802) is amended by redesignating the second paragraph (43) as paragraph (44). (5) Subsections (a) and (b) of section 120005 of Public Law 103-322 are each amended by inserting "at the end" after "adding". (6) Section 160001(f) of Public Law 103-322 is amended by striking "1961(1)" and inserting "1961(1)".

Appendix C Federal Laws (7) Section 170201(c) of Public Law 103-322 is amended by striking paragraphs (I), (2), and (3). (8) Subparagraph (D) of section 511(b)(2) of title 18, United States Code, is amended by adjusting its margin to be the same as the margin of subparagraph (C) and adjusting the margins of its clauses so they are indented 2 ems further than the margin of the subparagraph. (9) Section 230207 of Public Law 103-322 is amended by striking "two" and inserting "2" the first place it appears. (10) The first of the two undesignated paragraphs of section 240002(c) of Public Law 103-322 is designated as paragraph (1) and the second as paragraph (2). (11) Section 280005(a) of Public Law 103-322 is amended by striking "Section 991 (a)" and inserting "Section 991(a)". (12) Section 320101 of Public Law 103-322 is amended— (A) in subsection (h), by striking paragraph (1); (B) in subsection (c), by striking paragraphs (1)(A) and (2)(A); (C) in subsection (d), by striking paragraph (3); and (D) in subsection (e), by striking paragraphs (1) and (2). (13) Section 320102 of Public Law 103-322 is amended by striking paragraph (2). (14) Section 320103 of Public Law 103-322 is amended— (A) in subsection (a), by striking paragraph (1); (B) in subsection (b), by striking paragraph (1); and (C) in subsection (c), by striking paragraphs (1) and (3). (15) Section 320103(e) of Public Law 103-322 is amended— (A) in the subsection catehline, by striking "FAIR HOUSING" and inserting "1968 Civil Rights"; and (B) by striking "of the Fair Housing Act" and inserting "of the Civil Rights Act of 1968". (16) Section 320109(1) of Public Law 103-322 is amended by inserting an open quotation mark before "(a) IN GENERAL". (17) Section 320602(1) of Public Law 103-322 is amended by striking "whoever" and inserting "Whoever". (18) Section 668(a) of title 18, United States Code, is amended— (A) by designating the first undesignated paragraph that begins with a quotation mark as paragraph (1); (B) by designating the second undesignated paragraph that begins with a quotation mark as paragraph (2); and (C) by striking the close quotation mark and the period at the end of the subsection. (19) Section 3209 ll(a) of Public Law 103-322 is amended in each of paragraphs (1) and (2), by striking "thirteenth" and inserting "14th". (20) Section 2311 of title 18, United States Code, is amended by striking "livestock" where it appears in quotation marks and inserting "Livestock". (21) Section 540A(c) of title 28, United States Code, is amended— (A) by designating the first undesignated paragraph as paragraph (1); (B) by designating the second undesignated paragraph as paragraph (2); and

18 USC 113.

42 USC 10604. 28 USC 994 note. 28 USC 991. 18 USC 112. 18 USC 113. 18 USC 351. 18 USC 1751. 18 USC 1112. 18 USC 241. 18 USC 242. 18 USC 245. 42 USC 3631.

18 USC 704. 18 USC 2114.

18 USC 709.

315

316


18 use 1014. 18 0SC 542, 544, 545. 18 USC 3059A. 18 USC 1169.

42 USC 3631.

18 USC 2325 note.

18 USC 2423. 18 USC 1001 note.

(C) by designating the third undesignated paragraph as paragraph (3). (22) Section 330002(d) of Public Law 103-322 is amended by striking "the comma" and inserting "each comma". (-23) Section 330004(18) of Public Law 103-322 4s amended by striking "the Philippine" and inserting "Philippine". (24) Section 330010(17) of Public Law 103-322 is amended by striking "(2)(iii)" and inserting "(2)(A)(iii)". (25) Section 330011(d) of Public Law 103-322 is amended— (A) by striking "each place" and inserting "the first place"; and (B) by striking "1169" and inserting "1168". (26) The item in the table of sections at the beginning of chapter 53 of title 18, United States Code, that relates to section 1169 is transferred to appear after the item relating to section 1168. (27) Section 901 of the Civil Rights Act of 1968 is amended by striking "under this title" each place it appears and inserting "under title 18, United States Code,". (28) Section 223(a)(12)(A) of the Juvenile Justice and Delinquency Prevention Act of 1974 (42 U.S.C. 5633(a)(12)(A)) is amended by striking "law)." and inserting "law)". (29) Section 250008(a)(2) of Public Law 103-322 is amended by striking "this Act" and inserting "provisions of law amended by this title". (30) Section 36(a) of title 18, United States Code, is amended— (A) in paragraph (1), by striking "403(c)" and inserting "408(c)"; and (B) in paragraph (2), by striking "Export Control" and inserting "Export". (31) Section 1512(a)(2)(A) of title 18, United States Code, is amended by adding "and" at the end. (32) Section 13(b)(2)(A) of title 18, United States Code, is amended by striking "of not more than $1,000" and inserting "under this title". (33) Section 160001(g)(l) of Public Law 103-322 is amended by striking "(a) Whoever" and inserting "Whoever". (34) Section 290001(a) of Public Law 103-322 is amended by striking "subtitle" and inserting "section". (35) Section 3592(e)(12) of title 18, United States Code, is amended by striking "Controlled Substances Act" and inserting "Comprehensive Drug Abuse Prevention and Control Act of 1970". (36) Section 1030 of title 18, United States Code, is amended— (A) by inserting "or" at the end of subsection (a)(5)(B)(ii)(II)(bb); (B) by striking "and" after the semicolon in subsection (cXD(B); (C) in subsection (g), by striking "the section" and inserting "this section"; and (D) in subsection (h), by striking "section 1030(a)(5) of title 18, United States Code" and inserting "subsection (a)(5)".

Appendix C Federal Laws 317 (37) Section 320103(c) of Public Law 103-322 is amended by striking the semicolon at the end of paragraph (2) and inserting a close quotation mark followed by a semicolon. (38) Section 320104(b) of Public Law 103-322 is amended by striking the comma that follows "2319 (relating to copyright infringement)" the first place it appears. (39) Section 1515(a)(D(D) of title 18, United States Code, is amended by striking "; or" and inserting a semicolon. (40) Section 5037(b) of title 18, United States Code, is amended in each of paragraphs (1)(B) and (2)(B), by striking "3561(b)" and inserting "3561(c)". (41) Section 330004(3) of Public Law 103-322 is amended by striking "thirteenth" and inserting "14th". (42) Section 2511(l)(e)(i) of title 18, United States Code, is amended— (A) by striking "sections 2511(2)(A)(ii), 2511(b)-(c), 2511(e)" and inserting "sections 2511(2)(a)(ii), 2511(2)(b)(c), 2511(2)(e)"; and (B) by striking "subchapter" and inserting "chapter". (43) Section 1516(b) of title 18, United States Code, is amended by inserting "and" at the end of paragraph (1). (44) The item relating to section 1920 in the table of sections at the beginning of chapter 93 of title 18, United States Code, is amended by striking "employee's" and inserting "employees'". (45) Section 330022 of Public Law 103-322 is amended by inserting a period after "communications" and before the close quotation mark. (46) Section 2721(c) of title 18, United States Code, is amended by striking "covered by this title" and inserting "covered by this chapter". (c) ELIMINATION OF EXTRA WORDS.— (1) Section 3561(b) of title 18, United States Code, is amended by striking "or any relative defendant, child, or former child of the defendant,". (2) Section 351(e) of title 18, United States Code, is amended by striking "involved in the use of a" and inserting "involved the use of a". (d) EFFECTIVE DATE.—The amendments made by this section shall take effect on the date of enactment of Public Law 103322.

18 USC 245. 18 USC 1956.

18 USC 709.

18 USC 2512.

18 USC 13 note.

SEC. 605. ADDITIONAL TYPOGRAPHICAL AND SIMILAR ERRORS FROM VARIOUS SOURCES.

(a) MISUSED CONNECTOR.—Section 1958(a) of title 18, United States Code, is amended by striking "this title and imprisoned" and inserting "this title or imprisoned". (b) SPELLING ERROR.—Effective on the date of its enactment, Effective section 961(h)(l) of the Financial Institutions Reform, Recovery, date. and Enforcement Act of 1989 is amended by striking "Saving and 18 USC 1014. Loan" and inserting "Savings and Loan". (c) WRONG SECTION DESIGNATION.—The table of chapters for part I of title 18, United States Code, is amended in the item relating to chapter 71 by striking "1461" and inserting "1460". (d) INTERNAL CROSS REFERENCE.—Section 2262(a)(l)(A)(ii) of title 18, United States Code, is amended by striking "subparagraph (A)" and inserting "this subparagraph".

318


Ante, p. 1214.

Ante, p. 1221.

Ante, p. 1229.

Ante, p. 1300.

(e) MISSING COMMA.—Section 1361 of title 18, United States Code, is amended by inserting a comma after "attempts to commit any of the foregoing offenses". (f) CROSS REFERENCE ERROR _FROM PUBLIC _LAW 103-414.— The first sentence of section 2f7U3(d) of title 1», United States Code, by striking "3126(2)(Ar and inserting "3127(2)(A)". (g) INTERNAL REFERENCE ERROR IN PUBLIC LAW 103-359.— Section 3077(8)(A) of title 18, United States Code, is amended by striking "title 18, United States Code" and inserting "this title". (h) SPELLING AND INTERNAL REFERENCE ERROR IN SECTION 3509.—Section 3509 of title 18, United States Code, is amended— (1) in subsection (e), by striking "government's" and inserting "Government's"; and (2) in subsection (h)(3), by striking "subpart" and inserting "paragraph". (i) ERROR IN SUBDIVISION FROM PUBLIC LAW 103-329.— Section 3056(a)(3) of title 18, United States Code, is amended by redesignating subparagraphs (1) and (2) as subparagraphs (A) and (B), respectively and moving the margins of such subparagraphs 2 ems to the right. (j) TABLE OF CONTENTS CORRECTION.—The table of contents at the beginning of the Antiterrorism and Effective Death Penalty Act of 1996 is amended by inserting "TITLE I—HABEAS CORPUS REFORM" before the item relating to section 101. (k) CORRECTING ERROR IN AMENDATORY INSTRUCTIONS.— Section 107(b) of the Antiterrorism and Effective Death Penalty Act of 1996 is amended by striking "IV" and inserting "VI". (1) CORRECTING ERROR IN DESCRIPTION OF PROVISION AMENDED.—With respect to subparagraph (F) only of paragraph (1) of section 205(a) of the Antiterrorism and Effective Death Penalty Act of 1996, the reference at the beginning of such paragraph to "subsection (a)(l)" shall be deemed a reference to "subsection (a)". (m) ADDITION OF MISSING REFERENCE.—Section 725(2) of the Antiterrorism and Effective Death Penalty Act of 1996 is amended by inserting "(2)" after "subsection (b)". (n) CONFORMING AMENDMENT TO TABLE OF SECTIONS.—The table of sections at the beginning of chapter 203 of title 18, United States Code, is amended by inserting after the item relating to section 3059A the following new item: "3059B. General reward authority.". (o) INSERTION OF MISSING PUNCTUATION.—Section 6005(b)(3) of title 18, United States Code, is amended by adding a period at the end. (p) CORRECTION OF ERRONEOUS SECTION NUMBER.— (1) Section 2401 of title 18, United States Code, is redesignated as section 2441. (2) The item relating to section 2401 in the table of sections at the beginning of chapter 118 of title 18, United States Code, is amended by striking "2401" and inserting "2441". (3) The table of chapters for part I of title 18, United States Code, is amended in the item relating to chapter 118, by striking "2401" and inserting "2441". (q) DUPLICATE SECTION NUMBER.—That section 2332d of title 18, United States Code, that relates to requests for military assistance to enforce prohibition in certain emergencies is redesignated as section 2332e and moved to follow the section 2332d that relates

Appendix C Federal Laws 319 to financial transactions, and the item relating to the section redesignated by this subsection is amended by striking "2332d" and inserting "2332e" and moved to follow the item relating to the section 2332d that relates to financial transactions. (T) CORRECTION OF 'WORD USAGE,—Sectiori_247(d.)_of title 18, United States Code, is amended by striking "notification" and inserting "certification". SEC. 606. ADJUSTING AND MAKING UNIFORM THE DOLLAR AMOUNTS USED IN TITLE 18 TO DISTINGUISH BETWEEN GRADES OF OFFENSES.

(a) Sections 215, 288, 641, 643, 644, 645, 646, 647, 648, 649, 650, 651, 652, 653, 654, 655, 656, 657, 658, 659, 661, 662, 665, 872, 1003, 1025, 1163, 1361, 1707, 1711, and 2113 of title 18, United States Code, are amended by striking "$100" each place it appears and inserting "$1,000". (b) Section 510 of title 18, United States Code, is amended by striking "$500" and inserting "$1,000". SEC. 607. APPLICATION OF VARIOUS OFFENSES TO POSSESSIONS AND TERRITORIES.

(a) Sections 241 and 242 of title 18, United States Code, are each amended by striking "any State, Territory, or District" and inserting "any State, Territory, Commonwealth, Possession, or District". (b) Sections 793(h)(l) and 794(d)(l) of title 18, United States Code, are each amended by adding at the end the following: "For the purposes of this subsection, the term 'State' includes a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". (c) Section 925(a)(5) of title 18, United States Code, is amended by striking "For the purpose of paragraphs (3) and (4)" and inserting "For the purpose of paragraph (3)". (d) Sections 1014 and 2113(g) of title 18, United States Code, are each amended by adding at the end the following: "The term 'State-chartered credit union' includes a credit union chartered under the laws of a State of the United States, the District of Columbia, or any commonwealth, territory, or possession of the United States.". (e) Section 1073 of title 18, United States Code, is amended by adding at the end of the first paragraph the following: "For the purposes of clause (3) of this paragraph, the term 'State' includes a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". (f) Section 1715 of title 18, United States Code, is amended by striking "State, Territory, or District" each place those words appear and inserting "State, Territory, Commonwealth, Possession, or District". (g) Section 1716 of title 18, United States Code, is amended— (1) in subsection (g)(2) by striking "State, Territory, or the District of Columbia" and inserting "State"; (2) in subsection (g)(3) by striking "the municipal government of the District of Columbia or of the government of any State or territory, or any county, city, or other political subdivision of a State" and inserting "any State, or any political subdivision of a State"; and (3) by adding at the end the following:

320

Appendix C Federal Laws "(j) For purposes of this section, the term 'State' includes a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". (h) Section 1761 of title 18, United States Code, is amended ioTlowing jiew _subsection: by adding at the end the ioTlowingjiew _subsection: "(d) For the purposes of this section, the term 'State' means a State of the United States and any commonwealth, territory, or possession of the United States.". (i) Section 3156(a) of title 18, United States Code, is amended— (1) by striking "and" at the end of paragraph (3); (2) by striking the period and inserting "; and" at the end of paragraph (4); and (3) by adding at the end the following new paragraph: "(5) the term 'State' includes a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". (j) Section 102 of the Controlled Substances Act (21 U.S.C. 802) is amended— (1) by amending paragraph (26) to read as follows: "(26) The term 'State' means a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States."; and (2) by redesignating paragraph (43), as added by section 90105(d) of the Violent Crime Control and Law Enforcement Act of 1994, as paragraph (44). (k) Section 1121 of title 18, United States Code, is amended by adding at the end the following new subsection: "(c) For the purposes of this section, the term 'State' means a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". (1) Section 228(d)(2) of title 18, United States Code, is amended by inserting "commonwealth," before "possession or territory of the United States". (m) Section 1546(c) of title 18, United States Code, is amended by adding at the end the following: "For purposes of this section, the term 'State' means a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". (n) Section 1541 of title 18, United States Code, is amended— (1) in the first undesignated paragraph, by striking "or possession"; and (2) by adding at the end the following new paragraph: "For purposes of this section, the term 'State' means a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". (o) Section 37(c) of title 18, United States Code, is amended in the final sentence by inserting before the period the following: ", and the term 'State' means a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States".

Appendix C Federal Laws 321 (p) Section 2281(c) of title 18, United States Code, is amended in the final sentence by inserting before the period the following: ", and the term 'State' means a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States". (q) Section 521(a) of title 18, United States Code, is amended by adding at the end the following: "'State' means a State of the United States, the District of Columbia, and any commonwealth, territory, or possession of the United States.". Approved October 11, 1996.

LEGISLATIVE HISTORY—H.R. 3723 (S. 1331) (S. 1332): HOUSE REPORTS: No. 104-788 (Comm. on the Judiciary). CONGRESSIONAL RECORD, Vol. 142 (1996): Sept. 17, considered and passed House. Sept. 18, considered and passed Senate, amended. Sept. 28, House concurred in Senate amendment with an amendment. Oct. 2, Senate concurred in House amendment.

o


APPENDIX

D State Laws

323

State name

Anti-spam provision

Brief summary

Date enacted

Alaska

ALASKA STAT. § 45.50.479

Forbids sending of unsolicited commercial e-mail to another person from a computer located in this state or to an electronic mail address that the sender knows is held by a resident of this state if the commercial electronic mail contains information that consists of explicit sexual material that another law provides may only be viewed, purchased, rented, leased, or held by an individual who is 18 years of age or older, unless the subject line of the advertisement contains “ADV:ADLT” as the first eight characters.

July 30, 2003

Arizona

ARIZ. REV. STAT. ANN. § 44.9.16

Prohibits sender from falsifying transmission information or other routing information for unsolicited commercial electronic mail and using a subject line that contains false or misleading information. A sender may not use a third party’s Internet address or domain name without the third party’s consent for the purpose of transmitting electronic mail in a way that makes it appear that the third party was the sender of the mail. If a person sends unsolicited commercial electronic mail he or she must: 1. Use the label “ADV:” as the first four characters in the subject line of the unsolicited commercial electronic mail. 2. Provide a procedure that allows recipients, at no cost to the recipients, to remove themselves from the sender’s address list and to restrict the future sale or transfer of the recipient’s electronic mail address to others.

May 16, 2003

Arkansas

ARK. CODE. ANN. § 4.88.6

A sender of unsolicited electronic e-mail must: (1) Conspicuously state in the electronic mail the sender’s: (A) Legal name; (B) Correct street address; and (C) Valid Internet domain name;

April 2, 2003

324 Appendix D State Laws

State Spam Laws Summarized

Sender of sexually explicit electronic mail must include in the electronic mail a subject line that contains “ADV:ADULT” as the first nine characters; Senders must provide the recipient a convenient, no-cost mechanism to notify the sender not to send any future electronic mail to the recipient at a functioning return electronic address. Sender must provide notice to recipient that these options exist. CA Bus. & Prof. Code § 17529.2

A person or entity may not do any of the following: (a) Initiate or advertise in an unsolicited commercial e-mail advertisement from California or advertise in an unsolicited commercial e-mail advertisement sent from California. (b) Initiate or advertise in an unsolicited commercial e-mail advertisement to a California electronic mail address, or advertise in an unsolicited commercial e-mail advertisement sent to a California electronic mail address.

Sept. 17, 2003

Colorado

COLO. REV. STAT. § 6-2.5-101

Sender of an unsolicited commercial electronic mail message must disclose the actual point-of-origin electronic mail address of the unsolicited commercial electronic mail message and may not falsify routing information or use a third party’s internet address or domain name without permission. Any person that sends an unsolicited commercial electronic mail message must use the label “ADV:” in the subject line of an unsolicited commercial electronic mail message unless the sender has a pre-existing business relationship with the recipient. Sender must provide a mechanism for recipients to remove themselves at no cost or “opt-out.”

June 3, 2000

Colorado “Junk E-mail” Law

Continued

Appendix D State Laws

California

325

326

State name

Anti-spam provision

Brief summary

Date enacted

Connecticut

CONN. GEN. STAT. § 52-570c

No person shall send unsolicited advertising material by electronic mail, or cause such material to be sent by electronic mail, to an electronic mail address held by a resident of this state unless: (A) Such person identifies in the electronic mail a toll-free telephone number or a valid return electronic mail address that the recipient may use to unsubscribe or otherwise notify the sender to not send any further unsolicited electronic mail, and (B) the subject line begins with the letters “ADV.” No person or entity shall send by electronic mail, or cause to be sent by electronic mail, unsolicited advertising material upon notification by a recipient of such recipient’s request to not receive any further such material.

June 2003

Delaware

DEL. CODE ANN. TIT. 11, § 931 (1999)

Provision makes it illegal to send unsolicited commercial e-mail messages that contain falsified routing information; applies to messages originating outside Delaware sent to recipient within Delaware if the sender is aware of facts that would make the recipient’s Delaware presence a reasonable possibility.

July 1999

Florida

FLA. STAT. § 39.668

Prohibits unsolicited commercial e-mail that uses a third party’s domain name without permission as well as those that contain false routing information; applies to e-mail sent from a Florida computer as well as to e-mails sent from outside Florida to a Florida resident.

May 2004



Georgia Slam Anti-Spam Act” Official Code of Georgia, Title 16, §16-9-90–16-9-109

Makes it a crime to send unsolicited commercial e-mail that contains false or misleading header information or that falsely represents that it is a solicited e-mail message.

April 2005

Idaho

IDAHO CODE ANN. § 648-603E

Unsolicited bulk e-mail messages must include an e-mail address so that recipients may “opt out” of receiving e-mails; e-mail address may not be that of a third party, used without permission and must contain accurate routing information.

April 2000

Illinois

815 ILL. COMP. STAT. 511/1 “Electronic Mail Act”

A person may not send unsolicited commercial e-mail using a third party’s address without permission and e-mails sent may not contain false routing information or a misleading subject line. E-mails containing adult material must use a subject line containing the label “ADV” and a valid reply e-mail address or telephone number for those recipients who wish to “opt out” of receiving such e-mails. Law applies to e-mail sent to a Illinois resident’s computer from a provider’s facilities located in Illinois.

July 2003

Indiana

IND. CODE § 24-5-22

Prohibits commercial e-mail sent using a third party’s domain name without permission or that contains inaccurate routing information; messages must contain a mechanism by which recipients can “opt out” of receiving e-mails and must contain an “ADV” label in the subject line. Applies to messages sent from outside Indiana if the sender knows that the recipient resides in Indiana.

April 2003

Continued


Georgia

327

State name

Anti-spam provision

Brief summary

Date enacted

Iowa

IOWA CODE § 714E.1

Prohibits the sending of e-mail that lists a third party’s domain name as the return address without permission, contains false routing information, and fails to include opt-out instructions and contact information.

May 1999

Kansas

KAN. STAT. ANN § 50-6,107

Unsolicited commercial e-mails may not contained falsified routing information, use a third party’s domain name, or have a misleading subject line; messages must contain opt-out instructions and the label “ADV” or “ADV:ADULT” depending upon the nature of their content.

May 2002

Louisiana

LA. REV. STAT. ANN, § 14:73.1 (2003)

Makes it illegal to send bulk commercial e-mail containing false routing information or using a provider’s facilities to transmit the messages in violation of the provider’s policy; e-mails must contain “ADV” label if commercial in nature and “ADV:ADULT” if they contain pornographic materials; e-mails must also contain opt out instructions and a valid reply e-mail address.

July 2003 (amended)

Maine

ME. REV. STAT. ANN. tit. 10 § 224

Unsolicited commercial e-mails must contain the labels “ADV” or “ADV:ADULT” in their subject line; messages must contain accurate routing information and must contain opt-out instructions for recipients; law applies to e-mail sent to two or more Maine residents.

May 2003

Maryland

MD. CODE ANN., [CRIM. LAW] § 3-805 (2002) Spam Deterrence Act § 14-3001 (2004)

Makes it illegal to send bulk commercial e-mail containing false routing information or a misleading subject line or uses a third party’s domain name without permission. Law applies if the sender is a Maryland resident, if the sender knows that the recipient is a Maryland resident, or if the registrant of the domain name contained in the recipient’s address will confirm that the recipient is a Maryland resident.

May 2002; May 2004



Under the Spam Deterrence Act, it is a misdemeanor to send unsolicited bulk commercial e-mail messages misrepresenting the point of origin or other routing information, or to transmit bulk messages through a computer without authorization. MICH. COMP. LAWS. § 445.2501-2508

Unsolicited commercial e-mail messages must contain the sender’s legal name, street address, domain name and valid return e-mail address, along with an opt-out mechanism and a label in the subject line (“ADV”). Law applies if a message is sent through an e-mail service provider that the sender knows or should know is located in Michigan, or to an e-mail address that the sender knows or should know is held by a Michigan resident. Messages sent through Michigan providers or to Michigan residents must contain correct routing information.

Sept. 1, 2003

Minnesota**

MINN. STAT. §325F.694* *Note: No longer appears in Minnesota Statutes due to federal preemption by the CAN-SPAM Act.

Prohibits commercial e-mail that uses a third party’s domain name without permission, contains false routing information or a misleading subject line. Messages must contain opt-out instructions and contact information as well as an “ADV” or “ADV-ADULT” label at the beginning of the subject line. Law applies to messages sent to Minnesota residents through facilities located in Minnesota** **Law expired by its own terms when CAN-SPAM Act took effect in 2005.

May 2002

Continued


Michigan

329

State name

Anti-spam provision

Brief summary

Date enacted

Missouri

MO. REV. STAT. § 407.1120-1141

Requires unsolicited commercial e-mail messages to contain opt-out instructions and contact information. Provisions added in July 2003 require that e-mails not contain misleading subject lines and carry a label (“ADV” or “ADV:ADLT”) at the beginning of the subject line and require senders to honor opt-out requests.

June 2000, amended July 2003

Nevada

NEV. REV. STAT. § 41.705-735

Nevada became the first state to enact anti-spam legislation in 1997. Prohibits sending of unsolicited commercial e-mail unless it is labeled “ADV” or “ADVERTISEMENT” at the beginning of the subject line, and includes the sender’s name, street address, and e-mail address, along with opt-out instructions. E-mails must contain accurate routing information.

July 1997, amended in 2001 and 2003.

New Mexico

N.M. STAT. § 57-12-23 and -24

Requires that unsolicited commercial e-mail messages contain a label (“ADV” or “ADV:ADULT”) at the beginning of the subject line, and opt-out instructions at the top of the body of the message.

April 2003

North Carolina

N.C. GEN. STAT. § 14-453

Prohibits sending unsolicited bulk commercial e-mail containing falsified routing information if the sender thereby violates a provider’s policies; law applies to mail sent into or within the state

June 1999

North Dakota*

N.D. CENT. CODE §51-27-01 to 09

Prohibits the sending of unsolicited commercial e-mails that contain false or misleading subject line, use a third party’s domain name without permission, or misrepresent routing information. All messages must include an opt-out mechanism and a label (“ADV” or “ADV-ADULT”) at the beginning of the subject line. Law applies to messages sent from outside the state if the sender knows that the recipient is a North Dakota resident, or

April 2003



that the information is readily available from the registrant of the domain name contained in recipient’s e-mail address. *Law contained a contingent expiration date provision, preempted by the CAN-SPAM Act of 2005. OHIO REV. CODE ANN. § 2307.64 and § 2913.421

Requires that unsolicited commercial e-mail contain the sender’s name, address and e-mail address along with opt-out instruction. Law enables a provider to sue a sender of commercial e-mail for violating the provider’s policies (1) if the sender had actual notice of such policies, or (2) the policies were posted on the provider’s Web site and were communicated electronically to the sender’s computer Separate law passed in May 2005 makes it a felony to falsify the routing information in an unsolicited commercial e-mail.

August 2002; May 2005

Oklahoma

OKLA. STAT. tit.15, § 776.1-.7

Prohibits sending of unsolicited commercial e-mails that contain false or missing routing information. Messages must contain a label (“ADV” or “ADV-ADULT”) at the beginning of the subject line and must contain opt-out instructions. Law applies to a nonresident of Oklahoma who sends a message to or through the network of a provider located in Oklahoma.

June 1999 (amended April 2003)

Oregon

2003 Or. Laws 759

Requires that unsolicited commercial e-mails be labeled “ADV” at the beginning of the subject line and prohibits all commercial e-mail that uses a third party’s domain name without permission or contains a false or misleading subject line or routing information.

September 2003 (effective until January 2, 2006) Continued


Ohio

331

State name

Anti-spam provision

Brief summary

Date enacted

Pennsylvania

18 PA. CONS. STAT. § 5903 and § 7661.

Unsolicited commercial e-mail may not use a third party’s domain name without permission, may not include a false or misleading subject line, and must include a valid reply e-mail address and an opt-out mechanism. Messages containing adult material must contain the label “ADV-ADULT” at the beginning of the subject line. Falsification of routing information is unlawful under this provision.

June 2000 and December 2002

Rhode Island

R.I. GEN. LAWS § 11-52-1 to -7

Prohibits sending or unsolicited bulk e-mail with falsified routing information using a Rhode Island Internet provider in violation of the provider’s policies. Unsolicited commercial e-mails must contain opt-out instructions, contract information for the sender and may not use a third party’s domain name without permission or use false routing information. Law applies to messages sent from a Rhode Island computer and to messages sent into the state if the sender had reason to know that the recipient was a Rhode Island resident.

July 1999 (amended 2001)

South Dakota

S.D. CODIFIED LAWS § 37-24-6 and § 37-24-37 to -40

Prohibits sending commercial e-mail that falsifies its point of origin or routing information or contains a misleading subject line. Law applies to message sent in South Dakota if the sender knows that the recipient is a resident of South Dakota, or if the domain name connected to the recipient’s e-mail address will confirm that the recipient is a resident of South Dakota. Messages must contain an “ADV” or “ADV-ADULT” label at the beginning of the subject line.

February 2002



TENN. CODE ANN. § 47-18-2501 to 2502 (2003) ; § 39-14-601 to 606 (2003)

Unsolicited bulk commercial e-mail message must include opt-out instructions and contact information and opt-out requests must be honored. Messages must contain a label, “ADV” or “ADV:ADLT” at the beginning of the subject line. Law applies to e-mail that is delivered to a Tennessee resident via a provider’s facilities located in Tennessee. A separate provision enacted in June 2003 makes it a criminal offense to falsify routing information in unsolicited commercial e-mails.

June 1999; June 2003

Texas

TEXAS [BUS. & COM.] CODE ANN. § 46.001-011

Unsolicited commercial e-mail messages must include a label (“ADV” or “ADV:ADULT ADVERTISEMENT”) at the beginning of the subject line and a functioning return e-mail address for opt-out requests; prohibits messages with falsified routing information and deceptive subject lines or unauthorized use of a third party’s domain name,

June 2003

Virginia

VA. CODE ANN. § 8.01-328.1 (2003) and § 18.2-152.2 to 152.12

Prohibits sending unsolicited bulk e-mail containing false routing information if the sender violates a provider’s policies or distributes software using designed to falsify routing information. Virginia courts may exercise personal jurisdiction over a nonresident who uses a computer or computer network located in Virginia. Law was amended in April 2003 to increase the penalties for sending a high volume of messages containing false routing information.

March 1999 (amended April 2003)

Continued


Tennessee

333


State Spam Laws Summarized State name

Anti-spam provision

Brief summary

Date enacted

Washington

WASH. REV. CODE § 19.190.010 to .070

Sender of commercial e-mail message may not use a third party’s domain name without permission; message may not contain false routing information, or with a misleading subject line. Law applies to message sent from within Washington or if the sender knows that the recipient is a Washington resident, or if the registrant of the domain name contained in recipient’s e-mail address will confirm that recipient is a Washington resident.

March 1998 (amended May 1999)

West Virginia

W. VA. CODE § 46A-6G-1

Prohibits sending unsolicited bulk e-mail messages in violation of provider’s policies that use a third party’s domain name without permission, misrepresent the point of origin or other routing information, contains a misleading subject line, or contain sexually explicit materials. Messages must contain the sender’s name and return e-mail address along with the time the message was sent. Law applies if message is sent from a computer located in West Virginia or if the sender knows or has reason to know that the recipient is a resident of West Virginia.

March 1999

Wisconsin

WIS. STAT. § 947.0125

Requires that unsolicited commercial e-mail messages that contain obscene material or sexually explicit conduct must carry the label “ADULT ADVERTISEMENT” in their subject line.

June 2001

Wyoming

WYO. STAT. ANN. § 40-12-401 to -404

Prohibits commercial e-mail that uses a third party’s domain name without permission, includes a false or misleading subject line, or misrepresents its point of origin or other routing information. Wyoming law makes it unlawful to assist in the transmission of these messages, including the operation of an open relay. Law applies to messages sent from outside Wyoming if the sender knows that the recipient is a resident of Wyoming or a jurisdiction with similar law, or if that information is available upon request from the registrant of the domain name contained in the recipient’s e-mail address.

July 1, 2003

Appendix D State Laws 335


APPENDIX

E ICANN Policies and Rules

Policy Adopted: August 26, 1999 Implementation Documents Approved: October 24, 1999 Notes: 1. This policy is now in effect. See www.icann.org/udrp/udrp-schedule.htm for the implementation schedule. 2. This policy has been adopted by all accredited domain-name registrars for domain names ending in .com, .net, and .org. It has also been adopted by certain managers of country-code top-level domains (e.g., .nu, .tv, .ws). 3. The policy is between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domain-name holder or registrant). Thus, the policy uses “we” and “our” to refer to the registrar and it uses “you” and “your” to refer to the domain-name holder.

Uniform Domain Name Dispute Resolution Policy (As Approved by ICANN on October 24, 1999) 1. Purpose. This Uniform Domain Name Dispute Resolution Policy (the “Policy”) has been adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”), is incorporated by reference into your Registration Agreement, and sets forth the terms and conditions in connection with a dispute between you and any party other than us (the registrar) over the registration and use of an Internet domain name registered by you. Proceedings under Paragraph 4 of this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules of Procedure”), which are available at www.icann.org/udrp/udrp-rules-24oct99. htm, and the selected administrative-dispute-resolution service provider’s supplemental rules. 2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby

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338 Appendix E Uniform Domain Name Dispute Resolution Policy represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. 3. Cancellations, Transfers, and Changes. We will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances: a. subject to the provisions of Paragraph 8, our receipt of written or appropriate electronic instructions from you or your authorized agent to take such action; b. our receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See Paragraph 4(i) and (k) below.) We may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of your Registration Agreement or other legal requirements. 4. Mandatory Administrative Proceeding. This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative-dispute-resolution service providers listed at www.icann.org/ udrp/approved-providers.htm (each, a “Provider”). a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.

Appendix E Uniform Domain Name Dispute Resolution Policy b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. c. How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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Appendix E Uniform Domain Name Dispute Resolution Policy d. Selection of Provider. The complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in Paragraph 4(f). e. Initiation of Proceeding and Process and Appointment of Administrative Panel. The Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the “Administrative Panel”). f. Consolidation. In the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN. g. Fees. All fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where you elect to expand the Administrative Panel from one to three panelists as provided in Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by you and the complainant. h. Our Involvement in Administrative Proceedings. We do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, we will not be liable as a result of any decisions rendered by the Administrative Panel. i. Remedies. The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant. j. Notification and Publication. The Provider shall notify us of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision. k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal

Appendix E Uniform Domain Name Dispute Resolution Policy office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name. 5. All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available. 6. Our Involvement in Disputes. We will not participate in any way in any dispute between you and any party other than us regarding the registration and use of your domain name. You shall not name us as a party or otherwise include us in any such proceeding. In the event that we are named as a party in any such proceeding, we reserve the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend ourselves. 7. Maintaining the Status Quo. We will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in Paragraph 3 above. 8. Transfers During a Dispute. a. Transfers of a Domain Name to a New Holder. You may not transfer your domain name registration to another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded; or (ii) during a pending court proceeding or arbitration commenced regarding your domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. We reserve the right to cancel any

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Appendix E Uniform Domain Name Dispute Resolution Policy transfer of a domain name registration to another holder that is made in violation of this subparagraph. b. Changing Registrars. You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. You may transfer administration of your domain name registration to another registrar during a pending court action or arbitration, provided that the domain name you have registered with us shall continue to be subject to the proceedings commenced against you in accordance with the terms of this Policy. In the event that you transfer a domain name registration to us during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred. 9. Policy Modifications. We reserve the right to modify this Policy at any time with the permission of ICANN. We will post our revised Policy at at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to you until the dispute is over, all such changes will be binding upon you with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of our change. In the event that you object to a change in this Policy, your sole remedy is to cancel your domain name registration with us, provided that you will not be entitled to a refund of any fees you paid to us. The revised Policy will apply to you until you cancel your domain name registration.

Rules for Uniform Domain Name Dispute Resolution Policy Policy Adopted: August 26, 1999 Implementation Documents Approved: October 24, 1999 Note: These rules are now in effect. See www.icann.org/udrp/ udrp-schedule.htm for the implementation schedule.

Appendix E Uniform Domain Name Dispute Resolution Policy

Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) (As Approved by ICANN on October 24, 1999) Administrative proceedings for the resolution of disputes under the Uniform Dispute Resolution Policy adopted by ICANN shall be governed by these Rules and also the Supplemental Rules of the Provider administering the proceedings, as posted on its web site.

1. Definitions In these Rules: Complainant means the party initiating a complaint concerning a domain-name registration. ICANN refers to the Internet Corporation for Assigned Names and Numbers. Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider. Panel means an administrative panel appointed by a Provider to decide a complaint concerning a domain-name registration. Panelist means an individual appointed by a Provider to be a member of a Panel. Party means a Complainant or a Respondent. Policy means the Uniform Domain Name Dispute Resolution Policy that is incorporated by reference and made a part of the Registration Agreement. Provider means a dispute-resolution service provider approved by ICANN. A list of such Providers appears at www.icann.org/udrp/approved-providers.htm. Registrar means the entity with which the Respondent has registered a domain name that is the subject of a complaint. Registration Agreement means the agreement between a Registrar and a domain-name holder. Respondent means the holder of a domain-name registration against which a complaint is initiated. Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

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Appendix E Uniform Domain Name Dispute Resolution Policy Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, the means for communicating with the Provider and the Panel, and the form of cover sheets.

2. Communications (a) When forwarding a complaint to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility: (i) sending the complaint to all postal-mail and facsimile addresses (A) shown in the domain name’s registration data in Registrar’s Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration’s billing contact; and (ii) sending the complaint in electronic form (including annexes to the extent available in that form) by e-mail to: (A) the e-mail addresses for those technical, administrative, and billing contacts; (B) postmaster@; and (C) if the domain name (or “www.” followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e-mail address shown or e-mail links on that web page; and (iii) sending the complaint to any address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other addresses provided to the Provider by Complainant under Paragraph 3(b)(v). (b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made by the preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)), or in the absence of such specification (i) by telecopy or facsimile transmission, with a confirmation of transmission; or (ii) by postal or courier service, postage pre-paid and return receipt requested; or


(c)

(d)

(e) (f)

(g)

(h)

(i)

(j)

(iii) electronically via the Internet, provided a record of its transmission is available. Any communication to the Provider or the Panel shall be made by the means and in the manner (including number of copies) stated in the Provider’s Supplemental Rules. Communications shall be made in the language prescribed in Paragraph 11. E-mail communications should, if practicable, be sent in plaintext. Either Party may update its contact details by notifying the Provider and the Registrar. Except as otherwise provided in these Rules, or decided by a Panel, all communications provided for under these Rules shall be deemed to have been made: (i) if delivered by telecopy or facsimile transmission, on the date shown on the confirmation of transmission; or (ii) if by postal or courier service, on the date marked on the receipt; or (iii) if via the Internet, on the date that the communication was transmitted, provided that the date of transmission is verifiable. Except as otherwise provided in these Rules, all time periods calculated under these Rules to begin when a communication is made shall begin to run on the earliest date that the communication is deemed to have been made in accordance with Paragraph 2(f). Any communication by (i) a Panel to any Party shall be copied to the Provider and to the other Party; (ii) the Provider to any Party shall be copied to the other Party; and (iii) a Party shall be copied to the other Party, the Panel and the Provider, as the case may be. It shall be the responsibility of the sender to retain records of the fact and circumstances of sending, which shall be available for inspection by affected parties and for reporting purposes. In the event a Party sending a communication receives notification of non-delivery of the communication, the Party shall promptly notify the Panel (or, if no Panel is yet appointed, the Provider) of the circumstances of the notification. Further proceedings concerning the communication and any response shall be as directed by the Panel (or the Provider).

3. The Complaint (a) Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN. (Due to capacity constraints or for

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Appendix E Uniform Domain Name Dispute Resolution Policy other reasons, a Provider’s ability to accept complaints may be suspended at times. In that event, the Provider shall refuse the submission. The person or entity may submit the complaint to another Provider.) (b) The complaint shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall: (i) Request that the complaint be submitted for decision in accordance with the Policy and these Rules; (ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Complainant and of any representative authorized to act for the Complainant in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Complainant in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy; (iv) Designate whether Complainant elects to have the dispute decided by a single-member or a three-member Panel and, in the event Complainant elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider’s list of panelists); (v) Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a); (vi) Specify the domain name(s) that is/are the subject of the complaint; (vii) Identify the Registrar(s) with whom the domain name(s) is/are registered at the time the complaint is filed; (viii) Specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.); (ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular, (1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and


(x) (xi)

(xii)

(xiii)

(xiv)

(xv)

(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and (3) why the domain name(s) should be considered as having been registered and being used in bad faith (The description should, for elements (2) and (3), discuss any aspects of Paragraphs 4(b) and 4(c) of the Policy that are applicable. The description shall comply with any word or page limit set forth in the Provider’s Supplemental Rules.); Specify, in accordance with the Policy, the remedies sought; Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; State that a copy of the complaint, together with the cover sheet as prescribed by the Provider’s Supplemental Rules, has been sent or transmitted to the Respondent (domain-name holder), in accordance with Paragraph 2(b); State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction; Conclude with the following statement followed by the signature of the Complainant or its authorized representative: “Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the disputeresolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.” “Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”; and Annex any documentary or other evidence, including a copy of the Policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a schedule indexing such evidence.

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Appendix E Uniform Domain Name Dispute Resolution Policy (c) The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

4. Notification of Complaint (a) The Provider shall review the complaint for administrative compliance with the Policy and these Rules and, if in compliance, shall forward the complaint (together with the explanatory cover sheet prescribed by the Provider’s Supplemental Rules) to the Respondent, in the manner prescribed by Paragraph 2(a), within three (3) calendar days following receipt of the fees to be paid by the Complainant in accordance with Paragraph 19. (b) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant. (c) The date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent. (d) The Provider shall immediately notify the Complainant, the Respondent, the concerned Registrar(s), and ICANN of the date of commencement of the administrative proceeding.

5. The Response (a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider. (b) The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall: (i) Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider’s Supplemental Rules.); (ii) Provide the name, postal and e-mail addresses, and the telephone and telefax numbers of the Respondent (domain-name holder) and

Appendix E Uniform Domain Name Dispute Resolution Policy of any representative authorized to act for the Respondent in the administrative proceeding; (iii) Specify a preferred method for communications directed to the Respondent in the administrative proceeding (including person to be contacted, medium, and address information) for each of (A) electronic-only material and (B) material including hard copy; (iv) If Complainant has elected a single-member panel in the Complaint (see Paragraph 3(b)(iv)), state whether Respondent elects instead to have the dispute decided by a three-member panel; (v) If either Complainant or Respondent elects a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists (these candidates may be drawn from any ICANN-approved Provider’s list of panelists); (vi) Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint; (vii) State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Paragraph 2(b); and (viii) Conclude with the following statement followed by the signature of the Respondent or its authorized representative: “Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”; and (ix) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents. (c) If Complainant has elected to have the dispute decided by a singlemember Panel and Respondent elects a three-member Panel, Respondent shall be required to pay one-half of the applicable fee for a three-member Panel as set forth in the Provider’s Supplemental Rules. This payment shall be made together with the submission of the response to the Provider. In the event that the required payment is not made, the dispute shall be decided by a single-member Panel. (d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider. (e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.

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6. Appointment of the Panel and Timing of Decision (a) Each Provider shall maintain and publish a publicly available list of panelists and their qualifications. (b) If neither the Complainant nor the Respondent has elected a threemember Panel (Paragraphs 3(b)(iv) and 5(b)(iv)), the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time period for the submission thereof, a single Panelist from its list of panelists. The fees for a singlemember Panel shall be paid entirely by the Complainant. (c) If either the Complainant or the Respondent elects to have the dispute decided by a three-member Panel, the Provider shall appoint three Panelists in accordance with the procedures identified in Paragraph 6(e). The fees for a three-member Panel shall be paid in their entirety by the Complainant, except where the election for a threemember Panel was made by the Respondent, in which case the applicable fees shall be shared equally between the Parties. (d) Unless it has already elected a three-member Panel, the Complainant shall submit to the Provider, within five (5) calendar days of communication of a response in which the Respondent elects a three-member Panel, the names and contact details of three candidates to serve as one of the Panelists. These candidates may be drawn from any ICANN-approved Provider’s list of panelists. (e) In the event that either the Complainant or the Respondent elects a three-member Panel, the Provider shall endeavor to appoint one Panelist from the list of candidates provided by each of the Complainant and the Respondent. In the event the Provider is unable within five (5) calendar days to secure the appointment of a Panelist on its customary terms from either Party’s list of candidates, the Provider shall make that appointment from its list of panelists. The third Panelist shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties, the Provider’s selection from among the five being made in a manner that reasonably balances the preferences of both Parties, as they may specify to the Provider within five (5) calendar days of the Provider’s submission of the five-candidate list to the Parties. (f) Once the entire Panel is appointed, the Provider shall notify the Parties of the Panelists appointed and the date by which, absent exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider.

7. Impartiality and Independence A Panelist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to

Appendix E Uniform Domain Name Dispute Resolution Policy justifiable doubt as to the Panelist’s impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such event, the Provider shall have the discretion to appoint a substitute Panelist.

8. Communication Between Parties and the Panel No Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator appointed by the Provider in the manner prescribed in the Provider’s Supplemental Rules.

9. Transmission of the File to the Panel The Provider shall forward the file to the Panel as soon as the Panelist is appointed in the case of a Panel consisting of a single member, or as soon as the last Panelist is appointed in the case of a three-member Panel.

10. General Powers of the Panel (a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. (c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. (d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence. (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.

11. Language of Proceedings (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding

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352 Appendix E Uniform Domain Name Dispute Resolution Policy shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. (b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.

12. Further Statements In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.

13. In-Person Hearings There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.

14. Default (a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. (b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

15. Panel Decisions (a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. (b) In the absence of exceptional circumstances, the Panel shall forward its decision on the complaint to the Provider within fourteen (14) days of its appointment pursuant to Paragraph 6. (c) In the case of a three-member Panel, the Panel’s decision shall be made by a majority.

Appendix E Uniform Domain Name Dispute Resolution Policy (d) The Panel’s decision shall be in writing, provide the reasons on which it is based, indicate the date on which it was rendered and identify the name(s) of the Panelist(s). (e) Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider’s Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

16. Communication of Decision to Parties (a) Within three (3) calendar days after receiving the decision from the Panel, the Provider shall communicate the full text of the decision to each Party, the concerned Registrar(s), and ICANN. The concerned Registrar(s) shall immediately communicate to each Party, the Provider, and ICANN the date for the implementation of the decision in accordance with the Policy. (b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. In any event, the portion of any decision determining a complaint to have been brought in bad faith (see Paragraph 15(e) of these Rules) shall be published.

17. Settlement or Other Grounds for Termination (a) If, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding. (b) If, before the Panel’s decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.

18. Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is

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Appendix E Uniform Domain Name Dispute Resolution Policy the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. (b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.

19. Fees (a) The Complainant shall pay to the Provider an initial fixed fee, in accordance with the Provider’s Supplemental Rules, within the time and in the amount required. A Respondent electing under Paragraph 5(b)(iv) to have the dispute decided by a three-member Panel, rather than the single-member Panel elected by the Complainant, shall pay the Provider one-half the fixed fee for a three-member Panel. See Paragraph 5(c). In all other cases, the Complainant shall bear all of the Provider’s fees, except as prescribed under Paragraph 19(d). Upon appointment of the Panel, the Provider shall refund the appropriate portion, if any, of the initial fee to the Complainant, as specified in the Provider’s Supplemental Rules. (b) No action shall be taken by the Provider on a complaint until it has received from Complainant the initial fee in accordance with Paragraph 19(a). (c) If the Provider has not received the fee within ten (10) calendar days of receiving the complaint, the complaint shall be deemed withdrawn and the administrative proceeding terminated. (d) In exceptional circumstances, for example in the event an in-person hearing is held, the Provider shall request the Parties for the payment of additional fees, which shall be established in agreement with the Parties and the Panel.

20. Exclusion of Liability Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules.

21. Amendments The version of these Rules in effect at the time of the submission of the complaint to the Provider shall apply to the administrative proceeding commenced thereby. These Rules may not be amended without the express written approval of ICANN.


Dispute Resolution for Domain Names Supplemental Rules THE NATIONAL ARBITRATION FORUM’S SUPPLEMENTAL RULES TO ICANN’S UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

1. Definitions (a) The Rules means the Rules for the Uniform Domain Name Dispute Resolution Policy, approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999. (b) The Policy means the Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999. (c) The Forum means the National Arbitration Forum. (d) “The Holder of a Domain Name Registration,” as used in The Rules (Rule 1), means the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint with the Forum; and once the registrar has verified registration, is limited to the single person or entity as verified by the registrar. (i) A Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(f) and 17(a)(i). (e) “The Party Initiating a Complaint Concerning a Domain Name Registration,” as used in The Rules (Rule 1), means the single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint. (f) Submit. In these Supplemental Rules or in a FORUM or Panel Order, documents are deemed Submitted under the following circumstances. Documents necessary to be Submitted in hard copy and electronic copy are deemed Submitted when both the hard copy and the electronic copy are received by the Forum. (i) Electronic Mail will be deemed Submitted when received by the Forum’s mail server; (ii) Facsimile transmissions will be deemed Submitted when the entire fax is received by the Forum; and (iii) Postal mail will be deemed Submitted when received by the Forum (g) Calendar Days means that all days, including weekends and international and national holidays, shall be counted in determining all deadlines and due dates.

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356 Appendix E Uniform Domain Name Dispute Resolution Policy Exceptions-Deadlines: (i) In the event that a deadline falls on a United States federal holiday, as defined by 5 U.S.C. §6103, the deadline shall be extended to the following Calendar Day. (ii) In the event that a Calendar Day deadline falls on a Saturday or Sunday, the deadline shall be extended to the following Calendar Day.

2. Scope The Forum will apply the Rules, the Policy and the Forum’s Supplemental Rules in effect at the time a Complaint is Submitted. The Forum’s Supplemental Rules may be amended by the Forum in its sole discretion.

3. Communications All communications must be directed to the Forum and not to the Panel.

4. The Complaint (a) The Complaint must include all elements listed in Paragraph 3(b) of the Rules; and may not exceed fifteen (15) pages. (b) The Complainant must Submit three (3) hard copies of the Complaint to the Forum if the Complainant requests a single-member Panel. The Complainant must Submit five (5) hard copies of the Complaint if the Complainant requests a three (3) member Panel. If the Respondent requests a three-member Panel, the Complainant may be asked to Submit additional copies of the Complaint. (c) In accordance with Paragraph 3(b)(xii) of the Rules, the Complainant must send or transmit its Complaint to the Respondent under cover of the Complaint Transmittal Cover Sheet posted on the Forum’s web site. (d) The Complaint must be sent to the Forum by e-mail (domaindispute@,adrforum.com), and either by fax or by mail. (e) Notification to Registrar and certification thereof. (i) The Complainant must provide a copy of the Complaint to the registrar of the disputed domain name at the same time the Complaint is sent to the Forum. (ii) The Complainant must certify in the Complaint that Complainant has complied with Supp. Rule 4(e)(i).

Appendix E Uniform Domain Name Dispute Resolution Policy (f) Any arguments alleging Respondent aliases must be included in the Complaint for Panel consideration. (i) All Complaints alleging multiple aliases will be subject to an increased filing fee (see Supp. Rule 17 (a)(i)). (ii) If the Panel determines that insufficient evidence is presented to link the alleged aliases, the domain names held by the unrelated registrants will not be subject to further consideration by that Panel; no portion of the filing fee will be refunded.

5. The Response (a) The Response must include all elements listed in Paragraph 5(b) of the Rules and may not exceed fifteen (15) pages. (b) If no Response is Submitted or if the Response fails to designate a preferred method of communication as required under Paragraph 5(b)(iii) of the Rules, the method used by the Forum to communicate to the Respondent will be: (i) the e-mail address Respondent provided in the Response; (ii) if no Response is Submitted or if no e-mail address is provided in the Response, the e-mail address of the Respondent in the WHOIS on the date the Complaint was filed; (iii) if there is no e-mail address in the WHOIS, the facsimile address the Respondent provided in the Response or the e-mail address provided for the Respondent in the Complaint; (iv) if none of these addresses are provided, the facsimile address provided for the Respondent in the Complaint; or (v) if none of these addresses are provided, the mail address provided for the Respondent in the Complaint. (c) The Respondent must Submit three (3) hard copies of the Response to the Forum if the Complainant requested a single-member Panel. If the Complainant or Respondent requested a three-member Panel, the Respondent must Submit (5) hard copies of the Response to the Forum. (d) The Response must be sent to the Forum by e-mail (domaindispute@ adrforum.com), and by either fax or by mail.

6. Extensions and Stays (a) Extensions for Filing a Response (i) Paragraph 5(d) of the Rules provides that the Respondent may request additional time to Submit a Response, or may be given additional time if the parties stipulate to an extension and the Forum

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Appendix E Uniform Domain Name Dispute Resolution Policy approves. Any request by the Respondent for an extension or any joint request by the parties for an extension must: (A) be Submitted after the parties have first conferred with each other to see if they could reach an agreement concerning the requested extension; (B) be Submitted in writing to the Forum and the parties within the time for the Response to be Submitted; (C) state the exceptional circumstances warranting the request for an extension; (D) state the length of the extension being requested (no more than twenty (20) additional Calendar Days); and (E) be Submitted with an extension fee of $ 100. (ii) The Forum may exercise its discretion in determining whether exceptional circumstances exist warranting an extension and if so, the length of the extension. No request for an extension will be approved if any of the conditions set forth in Paragraph 6(a) have not been performed. (b) Stays of the Administrative Proceeding (i) If a Panel has not been appointed by the Forum, parties may jointly request a stay for a one-time period of forty-five Calendar Days, provided that both parties have agreed to the stay in writing and that the parties Submit the signed agreement to the Forum. A Model Form is available on the Forum’s website: http ://domains.adtforum.com. (ii) Prior to expiration of the Stay, at least one party must request in writing that the case be reinstated. Absent this written request, the Forum will automatically dismiss the case without prejudice. (iii) If a Panel has been appointed by the Forum, a request that the administrative proceeding be stayed shall be granted at the discretion of the appointed Panel.

7. Submission of other Written Statements and Documents; No Amendment to the Complaint (a) A party may Submit additional written statements and documents to the Forum and the opposing party(s) within five (5) Calendar Days after the date the Response was received by the Forum, or, if no Response has been filed, the last date the Response was due to be received by the Forum. (b) Each additional submission pursuant to Supplemental Rule 7(a) must: (i) be timely received by the Forum; (ii) be accompanied by an additional submission fee of $400; (iii) include proof of service of these submissions upon the opposing party(s); and (iv) be Submitted in either hard copy or electronic form.

Appendix E Uniform Domain Name Dispute Resolution Policy (c) The party(s) not filing the original additional submission under 7(a) may file additional written statements and documents to the Forum within five (5) Calendar Days after the date the original additional submission was received by the Forum. (d) Each additional submission pursuant to Supplemental Rule 7(c) must: (i) be timely received by the Forum; (ii) include proof of service of these submissions upon the opposing party(s); and (iii) be Submitted in either hard copy or electronic form. (e) Each party is limited to one additional submission under either 7(a) or 7(c), but not both. (f) Additional submissions must not amend the Complaint or Response.

8. The Record of the Administrative Proceeding. The Complaint, Response, and additional written statements and documents provided in Paragraph 12 of the Rules and Paragraph 7 of the Supplemental Rules constitute the complete record to be considered by the Panel.

9. Appointment of the Panel and Timing of Decision (a) The Forum will maintain and publish a list of Panelists and their qualifications to which any party will be directed on the Forum’s web site, http://domains.adrforum.com. the Forum will appoint a Panelist from this list to serve as a single-member Panel. (b) In cases involving a three-member Panel, the Forum will select a Chair for the three-member Panel and will endeavor to select a Chair who was not from the list of Panelist candidates provided by the parties pursuant to Paragraph 6(e) of the Rules. The Chair will sign all Orders and the Decision, coordinate and preside over the proceeding, and forward to the Forum the Panel’s decision, including any concurring or dissenting opinion as required by Paragraph 15 of the Rules. (c) In cases where the Complainant requested a three-member Panel and no Response was Submitted as required by Rule 5(a), the Complainant may be given the option of converting the three-member Panel to a single-member Panel: (i) After the time for the Response has expired, the Forum will notify the Complainant that no response was Submitted and that the Complainant may convert its three-member Panel request to a single-member Panel request; (ii) Within five (5) Calendar Days of this notification, the Complainant, by e-mail to the Forum ([email protected]),

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Appendix E Uniform Domain Name Dispute Resolution Policy may request that the three-member Panel be converted to a single-member Panel; (iii) If a single-member Panel is requested, the Forum will select a Panelist from its list of Panelists, not on the list of Panelists Submitted by the Complainant; and (iv) If a single-member Panel is appointed to decide the case, the Complainant will be reimbursed $1,000 of its fee. (d) If the Complainant fails to request that the three-member Panel be converted to a single-member Panel as provided in paragraph 9(c)(ii) above, the selection of the three-member Panel will be as follows: (i) The Complainant must provide a list of three candidates and the Forum will endeavor to select a Panelist from that list as provided in Rule 6(e); (ii) The Forum will select a Panelist from its list of Panel members; and (iii) The Forum will supply to the parties a list of five candidates and will select a Panelist as provided in Rule 6(e). (e) In cases where the Respondent requested a three-member Panel and the Complaint is withdrawn prior to the appointment of a Panel, the Respondent will be reimbursed $1,000 of its fee.

10. Impartiality and Independence (a) All Forum Panelists will take an oath to be neutral and independent. (b) A Panelist will be disqualified if circumstances exist that create a conflict of interest or cause the Panelist to be unfair and biased, including but not limited to the following: (i) The Panelist has a personal bias or prejudice concerning a party or personal knowledge of disputed evidentiary facts; (ii) The Panelist has served as an attorney to any party or the Panelist has been associated with an attorney who has represented a party during that association; (iii) The Panelist, individually or as a fiduciary, or the Panelist’s spouse or minor child residing in the Panelist’s household, has a direct financial interest in a matter before the Panelist; (iv) The Panelist or the Panelist’s spouse, or a person within the third degree of relationship to either of them, or the spouse of such a person: (1) Is a party to the proceeding, or an officer, director, or trustee of a Party; or (2) Is acting as a lawyer or representative in the proceeding. (c) A party may challenge the selection of a Panelist, provided that a decision has not already been published, by filing with the Forum a written request stating the circumstances and specific reasons for the disqualification.

Appendix E Uniform Domain Name Dispute Resolution Policy (d) A request to challenge must be filed in writing with the Director of Arbitration within five (5) Calendar Days of the date of receipt of the notice of the selection. (e) Provided a decision has not already been published by the selected Panelist, the Forum will promptly review the challenge and determine whether circumstances exist requiring Panelist disqualification in accord with this rule.

11. Communications Between Parties and the Panel (a) No party may directly communicate with a Panelist. (b) The parties may communicate with the Case Coordinator assigned to their proceeding by phone, fax, e-mail, or mail through the United States Postal Service. (c) Any request by a party for any type of action by the Forum or Panel must be communicated in writing to the Forum and the opposing party(s).

12. Withdrawal (a) Prior to Commencement (i) Before the five (5) Calendar Day deficiency period described in Rule 4(b) expires, the Complainant may withdraw the Complaint without prejudice. A withdrawal request must be Submitted to the Forum in writing and signed by the Complainant. Upon the Forum’s receipt of the withdrawal request, the Complaint will be withdrawn without prejudice and the administrative proceeding will be terminated. (ii) The Complainant may re-initiate a proceeding, which was properly with drawn pursuant to Supplemental Rule 12(a)(i), within thirty (30) Calendar Days. A re-initiation fee of $100 must accompany the request to re-initiate the proceeding. (iii) If the Complaint was withdrawn pursuant to Supplemental Rule 12(a)(i) and if the Complainant does not re-initiate the Complaint at the end of thirty (30) Calendar Days, a subsequent Complaint will be treated as a new Complaint and must be accompanied by payment of the appropriate fees. (b) After Commencement and Prior to Response: (i) After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn by the Complainant. A withdrawal request must be Submitted to the Forum in writing and signed by the Complainant. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(i) will be dismissed without prejudice.

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362 Appendix E Uniform Domain Name Dispute Resolution Policy (ii) After commencement, but before the Forum has received a Response that complies with Supplemental Rule 5, the Complaint may be withdrawn pursuant to a joint request made by both parties. A withdrawal request must be Submitted to the Forum in writing and signed by both Parties. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(ii) will be dismissed with prejudice. (c) After Response is Received: After a Response that complies with Supplemental Rule 5 has been received by the Forum, but before a Panel decision is published, the Complaint may be withdrawn if both parties agree to the withdrawal. A withdrawal request must be Submitted to the Forum in writing and signed by both parties. A Complaint dismissed by the Forum pursuant to Supplemental Rule 12(b)(iii) will be dismissed with prejudice. (d) The Complaint cannot be withdrawn after a Panel decision is published.

13. Panel Decisions Panel decisions will meet the requirements set forth in Paragraph 15 of the Rules and will be of a length that the Panel deems appropriate.

14. Correction of Clerical Mistakes Clerical mistakes or clerical errors in the Panel’s decision arising from oversight or omission by the Panel may be corrected by the Director of Arbitration for the Forum.

15. Communication of Decision to Parties; Publication of Decision (a) The Forum will publish the decision by Submitting the Panel’s decision to the parties, ICANN, and the Registrar as required by the Rules, and by publishing the full decision on a publicly accessible web site. (b) All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is Submitted before the Panel’s decision is published.


16. Conclusion of the Proceedings. Once the Panel’s decision is issued, the case is closed with the Forum. No further submissions or requests will be considered.

17. Fees (U.S. Dollars) (a) Fees: Number of Disputed Domain Names

Single-Member Panel

Three-Member Panel

1–2 3–5 6–10 11–15 16 or more

$1,300 $1,450 $1,800 $2,250 Please contact the Forum for a fee quote.

$2,600 $2,900 $3,600 $5,000 Please contact the Forum for a fee quote.

(i) If a Complainant alleges that a single Respondent is using multiple aliases and makes such arguments in the Complaint for Panel consideration per Supplemental Rule 4(f), the filing fee shall be increased proportionately to the number of aliases involved. Please contact the Forum at [email protected] with the number of domain names and the number of aliases to obtain a fee quote. (b) Participatory hearings: As stated in the Rules, in exceptional circumstances (for example, in the event an in-person hearing is held), the Forum may require the Parties to pay additional fees, which will be established by agreement of the Parties and the Director of Arbitration for the Forum prior to the appointment of the Panel. (c) Non-refundable fees: Fees to be paid to the Forum as provided in these Supplemental Rules must be paid in U.S. Dollars and are non-refundable, except as provided in Supplemental Rule 9(c)(iv) and 9(e). (d) Forms of payment Payment shall be made in one of the following forms: (i) Credit card; (ii) Certified check; or (iii) Personal/business check.

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Appendix E Uniform Domain Name Dispute Resolution Policy (e) If any form of payment is cancelled, stopped, returned unpaid or dishonored, without prior written authorization from the Forum, the Forum reserves the right to charge a service fee of $50 for each cancelled, stopped, returned or dishonored payment.

18. Effective Date These Supplemental Rules apply to all cases filed on or after November 1, 2007.

APPENDIX

F Form ICANN Complaints

1. “Bad Faith” Registration Bad faith use must be proved in order to win back an infringing domain name. But what if the domain name is not in actual use on the Web? The following two model complaints illustrate successful arguments establishing that mere registration should constitute bad faith use. Before the: NATIONAL ARBITRATION FORUM

VICTORIA’S SECRET STORES BRAND MANAGEMENT, INC., Complainant, v. [NAME OF RESPONDENT], Respondent.

) ) ) ) ) ) ) ) ) ) ) )

Disputed Domain Name: victoriassecretsales.com File Number: FA0805001191372

AMENDED COMPLAINT IN ACCORDANCE WITH THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

I. Introduction 1. This Complaint is hereby submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (“Rules”), and the National Arbitration Forum (the “Forum”) Supplemental Rules for Uniform Domain

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366 Appendix F Form ICANN Complaints Name Dispute Resolution Policy (“Supplemental Rules”), effective November 1, 2007. See Rules 3(b)(i).

II. The Parties A. The Complainant 2. The Complainant in this administrative proceeding is Victoria’s Secret Stores Brand Management, Inc., a Delaware Corporation having a place of business at Four Limited Parkway, Reynoldsburg, Ohio 43068. Victoria’s Secret Stores Brand Management, Inc., is a wholly owned subsidiary of Intimate Brands, Inc., a Delaware corporation, which in turn is a wholly owned subsidiary of Limited Brands, Inc., also a Delaware corporation. Victoria’s Secret Stores Brand Management, Inc. is the United States record owner of the VICTORIA’S SECRET Trademarks and Service Marks, which it licenses to other subsidiaries of Limited Brands (Victoria’s Secret Stores Brand Management, Inc. and its licensees are collectively referred to as “Complainant”). 3. The Complainant’s contact details are as follows: Complainant’s address is 666 Fifth Avenue, 4th Floor, New York, NY 10103, its telephone number is (212) 884-3477, and its fax number is (917) 522-7634. The Complainant’s authorized representative in this administrative proceeding is Melise R. Blakeslee, McDermott Will & Emery LLP, 600 Thirteenth Street, N.W., Washington, D.C. 20005. Melise Blakeslee’s telephone number is (202) 756-8362, her facsimile number is (202) 756-8087, and her e-mail address is [email protected]. 4. The Complainant’s preferred methods of receiving communications are as follows: electronic-only material should be sent to Melise Blakeslee at [email protected]. Materials including hardcopy should be sent by facsimile to Melise Blakeslee at (202) 756-8087.

B. The Respondent 5. According to GoDaddy.com, Inc.’s “WHOIS” query results, the domain name victoriassecretsales.com is registered to [Name of Respondent] (“Respondent”). A copy of the database record for the domain name that is the subject of this Complaint is attached hereto as Exhibit A. 6. All information known to the Complainant regarding how to contact Respondent is as follows: Respondent lists its address as [Address of Respondent]. Respondent lists its e-mail address as [email protected]. Respondent does not list a telephone number or a facsimile number.

III. The Domain Name and Registrar 7. This dispute concerns the domain name victoriassecretsales.com (the “Domain Name”), which was registered by Respondent on January 15, 2005.

Appendix F Form ICANN Complaints 8. The registrar of record for the Domain Name is GoDaddy.com, Inc. (“Go Daddy”) The address for Go Daddy is 14455 N. Hayden Road, Suite 219, Scottsdale, AZ 85260, its telephone number is (480) 505-8800, its facsimile number is (480) 624-2546, and its e-mail is [email protected]. 9. Go Daddy has adopted the Policy and Rules, which are incorporated by reference into its Universal Terms of Service and its Uniform Domain Name Dispute Resolution Policy. A copy of these documents are attached hereto as Exhibit B.

IV. The Trademarks and Service Marks Upon Which the Complaint is Based 10. This Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof, which have been adopted and continually used in commerce by the Complainant, its licensees, and predecessors since at least as early as June 12, 1977 in connection with the sale of, inter alia, women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift items. 11. Complainant uses the famous mark VICTORIA’S SECRET as the name of more than 1,000 Victoria’s Secret retail stores located throughout the United States and more than 300 Victoria’s Secret retail stores located in Canada which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA’S SECRET. 12. Additionally, Complainant uses the mark VICTORIA’S SECRET in conjunction with over 45 stand-alone “Victoria’s Secret Beauty” retail stores located throughout the United States and over 410 “Victoria’s Secret Beauty” retail locations located throughout the United States operating within or connected to Victoria’s Secret lingerie stores. 13. Complainant also uses the mark VICTORIA’S SECRET in its worldwide advertising and sales of a wide range of items bearing the mark in connection with Complainant’s print mail order catalogue and its e-commerce web site located at victoriassecret.com. 14. In 2007, more than $5 billion of merchandise was sold in connection with or bearing the mark VICTORIA’S SECRET. In addition, Complainant’s prominent advertising campaign featuring its famous models has succeeded in catapulting the VICTORIA’S SECRET brand into the realm of one of the world’s most recognized marks. 15. The mark VICTORIA’S SECRET, and variations thereof, are duly registered in the United States Patent and Trademark Office under nineteen (19) valid, subsisting and uncancelled registrations, and Complainant is the owner thereof by registration and/or assignment. True and correct copies of trademark registration certificates for those marks are attached hereto as Exhibit C. Many of those registrations are incontestable. Additionally, Complainant has approximately thirty-three (33) applications pending

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Appendix F Form ICANN Complaints before the United States Patent and Trademark Office that contain the mark VICTORIA’S SECRET and variations thereof. 16. The mark VICTORIA’S SECRET has been prominently used on the Internet since at least 1998, in connection with Complainant’s goods at Complainant’s website victoriassecret.com. The Complainant first registered this domain name on January 23, 1995. Additionally, the mark VICTORIA’S SECRET has been prominently used on the Internet in connection with the world-famous Victoria’s Secret online fashion shows. In February 1999, Complainant launched the first live Internet fashion show, attracting a thenrecord 1.5 million reported web site visitors to a single live broadcast. This record was shattered on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the Victoria’s Secret Internet fashion show, which prominently featured the mark VICTORIA’S SECRET. The brand has also been promoted since 2001 through the annual network television broadcast of the Victoria’s Secret Fashion Show. 17. As a result of this widespread, long-time, continuous, and prominent use of the mark VICTORIA’S SECRET, the mark VICTORIA’S SECRET has acquired significant goodwill, wide public recognition, and fame as a means by which Complainant and its merchandise are known to the public and its source and origin are identified. See V Secret Catalogue et al. v. Artco Inc., No. 94342 (NAF, May 9, 2000) (recognizing VICTORIA’S SECRET as a famous mark).

V. Grounds On Which The Complaint is Made A. The Domain Name is Confusingly Similar to Complainant’s Mark 18. Respondent’s registered Domain Name, victoriassecretsales.com, is confusingly similar to Complainant’s mark VICTORIA’S SECRET and the domain name used by Complainant in connection with the legitimate sale of products bearing the mark VICTORIA’S SECRET, namely victoriassecret.com. 19. The Domain Name victoriassecretsales.com incorporates Complainant’s mark in its entirely and merely adds a generic term. The only difference between Respondent’s Domain Name and Complainant’s VICTORIA’S SECRET mark is that the Registrant has added the English word “sales.” By registering a domain name that merely adds a common word to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves. See V Secret Catalogue, Inc. v. Admin c/o LaPorte Holdings, FA 467778 (Nat. Arb. Forum, June 13, 2005) (finding surfvictoriassecret.com and victoriassecretfashion.com confusingly similar to the VICTORIA’S SECRET mark); V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb.

Appendix F Form ICANN Complaints Forum, Sept. 7, 2004) (finding victoriassecrethair.com confusingly similar to the VICTORIA’S SECRET mark); V Secret Catalogue, Inc. v. Oro en Arias S.A., FA 301730 (Nat. Arb. Forum, Sept. 7, 2004) (finding victoriassecretpoker.com confusingly similar to the VICTORIA’S SECRET mark). This likelihood of confusion is heightened by the generic word included in the Domain Name, “sales,” as Complainant sells genuine merchandise under its famous VICTORIA’S SECRET mark at its e-commerce website located at victoriassecret.com. Consumers seeking genuine VICTORIA’S SECRET brand products might assume that victoriassecretsales.com is, in fact, Complainant’s official e-commerce web site or a web site selling genuine Victoria’s Secret brand merchandise to distributors. 20. As a result, it is highly unlikely—if not impossible—that Respondent’s Domain Name will not cause confusion, mistake, and misleadingly divert Internet users trying to locate Complainant’s official site, or those looking for legitimate affiliated sites.

B. Respondent Has No Rights or Legitimate Interest in the Domain Name 21. Respondent is using the Domain Name for a web site that promotes commercial sites, some which offer goods that compete with Complainant’s goods. The Domain Name currently resolves to a parked web site page, courtesy of the Registrar Go Daddy, that provides various sponsored clickthrough links to third party web sites, some of which offer competing products, e.g. “Chadwick’s: Shop our New Spring Styles for Great Deals on Women’s Clothing!” “$250 V. Secret Gift Card. Hurry, Free Offer Valid Today Only!” “Free Victoria’s Coupon: Lingerie Bras & More For Free. Free $100 Coupon While They Last!” (These are bogus lures also using Complainant’s trademarks in an infringing way.) “Bare Necessities: Celebrating 40 Years. Official Site 3000+ Styles of Intimate Apparel.” See Exhibit D. 22. The web site located at the Domain Name is not owned, affiliated with, or endorsed by Complainant. Respondent is neither affiliated with, nor has it been licensed or permitted to use, the VICTORIA’S SECRET mark or any domain names incorporating the mark. None of the linked websites are affiliated with, sponsored or endorsed by Complainant. Therefore, Respondent’s Domain Name infringes upon and dilutes Complainant’s famous VICTORIA’S SECRET mark. 23. Additionally, Respondent appears to be offering the Domain Name for sale through the web site Moniker Marketplace located at marketplacepro. moniker.com. The seller’s minimum asking price for ownership of the domain name is $2,500. See Exhibit E. 24. Complainant sent a cease and desist letter via e-mail and certified mail to Respondent on June 14, 2006, informing it that the registration and use of the Domain Name victoriassecretsales.com infringed upon and was dilutive of Complainant’s mark and further constituted unfair competition, false advertising,

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Appendix F Form ICANN Complaints and passing off, as well as a violation of the Anticybersquatting Consumer Protection Act. See Exhibit F. In this letter, Complainant further requested that Respondent immediately cease using the Domain Name and assign all rights in the Domain Name to Complainant. Id. Complainant received no response from Respondent. 25. Respondent is using the Domain Name to divert Internet traffic from the legitimate VICTORIA’S SECRET web site or legitimate affiliated sites. Particularly when the trademark at issue is famous, as is Complainant’s VICTORIA’S SECRET mark, it is presumed that the registrant of the domain name at issue is commercially benefiting and trading off of the goodwill of the trademark owner. National Rifle Association of America v. FMA (NAF Oct. 13, 2006). This is precisely the sort of use made by Respondent. Moreover, Respondent’s use of the Domain Name to run click-through links or to redirect users to sponsored web sites does not qualify as a bona fide offering of goods and services, and it is presumed that the registrant received compensation for each misdirected user. See e.g., Calcar, Inc. v. Future Media Architects, Inc., FA70709001080147 (NAF Nov. 6, 2007); National Rifle Association of America v. Future Media Architects, Inc., FA 0608000781430 (NAF Oct. 13, 2006); The Wedding Channel.com, Inc. v. Vasiliev, FA 156716 (NAF June 12, 2003). In short, Respondent has never used and cannot possibly use the Domain Name in connection with a bona fide offering of goods or services. See Policy, ¶ 4(c)(i). 26. Further, on information and belief, Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization. See Policy, ¶ 4(c)(ii). The Respondent’s name is [Name of Respondent]. 27. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. On information and belief, the sole reason Respondent has chosen the victoriassecretsales.com domain name is to misleadingly divert Internet traffic from Complainant’s web site to Respondent’s for commercial gain. See Policy, ¶ 4(c)(iii).

C. The Domain Name Was Registered And Is Being Used In Bad Faith 28. Upon information and belief, Respondent registered the Domain Name with the intent to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site, thereby misleadingly diverting Internet traffic from Complainant’s web site to Respondent’s for commercial gain. See Policy, ¶ 4(b)(iv). Again, upon misleadingly diverting internet traffic to its own web site, Respondent runs click-through links and redirect users to sponsored web sites for a commercial gain and therefore, exploits and trades off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark.

Appendix F Form ICANN Complaints 29. Moreover, Respondent’s registration and use of the Domain Name meet the bad faith element set forth in Section 4(b)(i) of the Policy because Respondent registered the Domain Name primarily to sell, rent, or otherwise transfer it for valuable consideration in excess of Respondent’s out-of-pocket expenses. As discussed above, the Domain Name is currently offered for sale at the web site Moniker Marketplace located at marketplacepro.moniker.com. See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the Respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Moreover, the Domain Name is offered for sale at a minimum price of $2,500, an amount which undoubtedly exceeds Respondent’s out-of-pocket registration fee as paid to Go Daddy. See World Wrestling Fed’n Entm’t, Inc. v. Bosman D1999-0001 (WIPO) (finding bad faith where Respondent offered to sell Domain Name for an amount exceeding Respondent’s out-of-pocket expenses). 30. It is inconceivable that Respondent was not aware of Complainant’s famous trademark VICTORIA’S SECRET when Respondent registered the Domain Name. See V Secret Catalogue, Inc. v. PM Websites, No. 94652 (NAF, June 8, 2000) (VICTORIA’S SECRET mark has acquired significant goodwill, wide public recognition and fame). Given the fame of the VICTORIA’S SECRET trademark, there is no reason for Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark. See Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO, June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”); see also National Rifle Association of America v. FMA (NAF Oct. 13, 2006). At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. See 15 U.S.C. § 1072; see also Encyclopedia Britannica, Inc. v. Shedon.com, No. D2000-0755 (WIPO, September 6, 2000). Therefore, Respondent clearly registered and used the Domain Name in bad faith. See Policy, ¶ 4(b)(iv). 31. In addition, Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 43(d), et seq.

VI. Remedies Requested 32. In accordance with ¶ 4(i) of the Policy, for the reasons described in Section V above, the Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that

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372 Appendix F Form ICANN Complaints victoriassecretsales.com be transferred to the Complainant, Victoria’s Secret Stores Brand Management, Inc.

VII. Arbitration Panel 33. Complainant is seeking a panel of one arbitrator to be appointed by the Forum, in accordance with Rules 3(b)(iv).

VIII. Mutual Jurisdiction 34. In accordance with Rules 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the United States District Court for the District of Massachusetts, the location of the Respondent.

IX. Other Legal Proceedings 35. No legal proceedings have been commenced or terminated in connection with the Domain Name victoriassecretsales.com. See Rules 3(b)(xi).

X. Communications and Certification 36. Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the National Arbitration Forum and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents. See Rules 3(b)(xiv). 37. Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Policy and Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. See Rules 3(b)(xiv). 38. Complainant certifies that a copy of this Complaint has been sent or transmitted to Respondent in accordance with Rules 2(b) and 3(b)(xii).

Appendix F Form ICANN Complaints 39. Complainant certifies that a copy of this Complaint has been sent or transmitted to the Registrar, Go Daddy, in accordance with Supplemental Rules 4(e)(i). Dated: May 22, 2008

Respectfully Submitted, ______________________________ Melise R. Blakeslee Rita W. Siamas McDermott Will & Emery LLP 600 13th Street NW Washington, DC 20005 Telephone: (202) 756-8000 Facsimile: (202) 756-8087 Attorneys for the Complainant

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Appendix F Form ICANN Complaints 2. Use of a “Famous Mark” Before the: NATIONAL ARBITRATION FORUM


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XI. Introduction 40. This Complaint is hereby submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (“Rules”), and the National Arbitration Forum (the “Forum”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”), effective November 1, 2007. See Rules 3(b)(i).

XII. The Parties A. The Complainant 41. The Complainant in this administrative proceeding is Victoria’s Secret Stores Brand Management, Inc., a Delaware Corporation having a place of business at Four Limited Parkway, Reynoldsburg, Ohio 43068. Victoria’s Secret Stores Brand Management, Inc., is a wholly owned subsidiary of Intimate Brands, Inc., a Delaware corporation, which in turn is a wholly owned subsidiary of Limited Brands, Inc., also a Delaware corporation.

Appendix F Form ICANN Complaints Victoria’s Secret Stores Brand Management, Inc. is the United States record owner of the VICTORIA’S SECRET Trademarks and Service Marks, which it licenses to other subsidiaries of Limited Brands (Victoria’s Secret Stores Brand Management, Inc. and its licensees are collectively referred to as “Complainant”). 42. The Complainant’s contact details are as follows: Complainant’s address is 666 Fifth Avenue, 4th Floor, New York, NY 10103, its telephone number is (212) 884-3477, and its fax number is (917) 522-7634. The Complainant’s authorized representative in this administrative proceeding is Melise R. Blakeslee, McDermott Will & Emery LLP, 600 Thirteenth Street, N.W., Washington, D.C. 20005. Melise Blakeslee’s telephone number is (202) 756-8362, her facsimile number is (202) 756-8087, and her e-mail address is [email protected]. 43. The Complainant’s preferred methods of receiving communications are as follows: electronic-only material should be sent to Melise Blakeslee at [email protected]. Materials including hardcopy should be sent by facsimile to Melise Blakeslee at (202) 756-8087.

B. The Respondent 44. According to a query conducted with the “WHOIS” tool for Manage. SnapNames.com, the domain name victoriassecret.com is registered to [Name of Respondent]. A copy of the database record for the domain name that is the subject of this Complaint is attached hereto as Exhibit A. 45. All information known to the Complainant regarding how to contact Respondent is as follows: The address for [Name of Respondent] is [Address of Respondent], his telephone number is (831) 236-2408, and his e-mail address is [email protected]. Respondent did not provide a facsimile number.

XIII. The Domain Name and Registrar 46. This dispute concerns the domain name victoriassecretangel.com (the “Domain Name”), which was created on January 1, 2007. 47. The registrar of record for the Domain Name is Manage.SnapNames. com (“Manage.SnapNames”). Manage.SnapNames’ address is 1600 SW Fourth Ave., Suite 400, Portland, Oregon 97201, its telephone number is (503) 459-5739, and its e-mail is manage@ snapnames.com. Manage.SnapNames has adopted the Policy and Rules, which are incorporated by reference into its Customer Domain Registration Product Agreement and its Domain Registrant Agreement. A copy of these documents are attached hereto as Exhibit B.

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XIV. The Trademarks and Service Marks Upon Which the Complaint is Based 48. This Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof, which have been adopted and continually used in commerce by the Complainant, its licensees, and predecessors since at least as early as June 12, 1977 in connection with the sale of, inter alia, women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift items. 49. Complainant uses the famous mark VICTORIA’S SECRET as the name of more than 1,000 Victoria’s Secret retail stores located throughout the United States and more than 300 Victoria’s Secret retail stores located in Canada which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA’S SECRET. 50. Additionally, Complainant uses the mark VICTORIA’S SECRET in conjunction with over 45 stand-alone “Victoria’s Secret Beauty” retail stores located throughout the United States and over 410 “Victoria’s Secret Beauty” retail locations located throughout the United States operating within or connected to Victoria’s Secret lingerie stores. 51. Complainant also uses the mark VICTORIA’S SECRET in its worldwide advertising and sales of a wide range of items bearing the mark in connection with Complainant’s print mail order catalogue and its e-commerce web site located at victoriassecret.com. 52. In 2007, more than $5 billion of merchandise was sold in connection with or bearing the mark VICTORIA’S SECRET. In addition, Complainant’s prominent advertising campaign featuring its famous models has succeeded in catapulting the VICTORIA’S SECRET brand into the realm of one of the world’s most recognized marks. 53. The mark VICTORIA’S SECRET, and variations thereof, are duly registered in the United States Patent and Trademark Office under nineteen (19) valid, subsisting and uncancelled registrations, and Complainant is the owner thereof by registration and/or assignment. True and correct copies of trademark registration certificates for those marks are attached hereto as Exhibit C. Many of those registrations are incontestable. Additionally, Complainant has approximately thirty-three (33) applications pending before the United States Patent and Trademark Office that contain the mark VICTORIA’S SECRET and variations thereof. 54. The mark VICTORIA’S SECRET has been prominently used on the Internet since at least 1998, in connection with Complainant’s goods at Complainant’s website victoriassecret.com. The Complainant first registered this domain name on January 23, 1995. Additionally, the mark VICTORIA’S SECRET has been prominently used on the Internet in connection with the world-famous Victoria’s Secret online fashion shows. In February 1999,

Appendix F Form ICANN Complaints Complainant launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast. This record was shattered on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the Victoria’s Secret Internet fashion show, which prominently featured the mark VICTORIA’S SECRET. The brand has also been promoted since 2001 through the annual network television broadcast of the Victoria’s Secret Fashion Show. 55. As a result of this widespread, long-time, continuous, and prominent use of the mark VICTORIA’S SECRET, the mark VICTORIA’S SECRET has acquired significant goodwill, wide public recognition, and fame as a means by which Complainant and its merchandise are known to the public and its source and origin are identified. See V Secret Catalogue et al. v. Artco Inc., No. 94342 (NAF, May 9, 2000) (recognizing VICTORIA’S SECRET as a famous mark).

XV. Grounds On Which The Complaint is Made A. The Domain Name is Confusingly Similar to Complainant’s Mark 56. Respondent’s registered Domain Name, victoriassecretangel.com, is confusingly similar to Complainant’s mark VICTORIA’S SECRET and the domain name used by Complainant in connection with the legitimate sale of products bearing the mark VICTORIA’S SECRET, namely victoriassecret.com. 57. The Domain Name victoriassecretangel.com incorporates Complainant’s mark in its entirety and merely adds a common word. The only difference between Respondent’s Domain Name and Complainant’s VICTORIA’S SECRET mark is that the Registrant has added the English word “angel.” By registering a domain name that merely adds a common word to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves. See V Secret Catalogue, Inc. v. Admin c/o LaPorte Holdings, FA 467778 (Nat. Arb. Forum, June 13, 2005) (finding surfvictoriassecret.com and victoriassecretfashion.com confusingly similar to the VICTORIA’S SECRET mark); V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb. Forum, Sept. 7, 2004) (finding victoriassecrethair.com confusingly similar to the VICTORIA’S SECRET mark); V Secret Catalogue, Inc. v. Oro en Arias S.A., FA 301730 (Nat. Arb. Forum, Sept. 7, 2004) (finding victoriassecretpoker.com confusingly similar to the VICTORIA’S SECRET mark). This likelihood of confusion is heightened by the generic word included in the Domain Name, “angel,” as Complainant owns a federal trademark registration for the mark ANGELS BY VICTORIA’S SECRET, Registration No. 2,168,500 (See Exhibit C)

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378 Appendix F Form ICANN Complaints and Complainant sells many different styles of products under the “Angel’s By Victoria’s Secret” lingerie line. Moreover, Complainant uses the word “angel” in many of the style names for such products, including styles such as “Angels Air™,” and “dream angels™. 58. Additionally, Complainant owns three pending federal trademark registrations for marks incorporating the word “angels,” namely, VICTORIA’S SECRET ANGELS, VICTORIA’S SECRET SEXY ANGELS, and DREAM ANGELS BY VICTORIA’S SECRET. 59. The Domain Name victoriassecretangel.com incorporates Complainant’s mark in its entirety and merely adds a word (i.e. “Angel”), which is also associated with Complainant’s brand. The only difference between Respondent’s Domain Name and Complainant’s VICTORIA’S SECRET mark is that the Registrant has added the English word “angel.” By registering a domain name that merely adds the word “angel” to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves. See V Secret Catalogue, Inc. v. Admin c/o LaPorte Holdings, FA 467778 (Nat. Arb. Forum, June 13, 2005) (finding surfvictoriassecret.com and victoriassecretfashion.com confusingly similar to the VICTORIA’S SECRET mark); V Secret Catalogue, Inc. v. Wig Distributions, FA 301727 (Nat. Arb. Forum, Sept. 7, 2004) (finding victoriassecrethair.com confusingly similar to the VICTORIA’S SECRET mark); V Secret Catalogue, Inc. v. Oro en Arias S.A., FA 301730 (Nat. Arb. Forum, Sept. 7, 2004) (finding victoriassecretpoker.com confusingly similar to the VICTORIA’S SECRET mark). 60. This likelihood of confusion is heightened by the fact that Respondent is trading off of other Famous Brands, as Complainant owns a federal trademark registration for the mark ANGELS BY VICTORIA’S SECRET, Registration No. 2,168,500 (See Exhibit C). Complainant sells many different styles of products under the “Angel’s By Victoria’s Secret” lingerie line. Moreover, Complainant uses the word “angel” in many of the style names for such products, including styles such as “Angels Air™,” and “Dream Angels™. 61. As a result, it is highly unlikely—if not impossible—that Respondent’s Domain Name will not cause confusion, mistake, and misleadingly divert Internet users trying to locate Complainant’s official site, or those looking for legitimate affiliated sites.

B. Respondent Has No Rights or Legitimate Interest in the Domain Name 62. Respondent is not currently using the Domain Name to direct to any web site content. Respondent’s inactive use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name

Appendix F Form ICANN Complaints where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (concluding that the respondent’s failure to develop the site demonstrated a lack of legitimate interest in the domain name). 63. Respondent is neither affiliated with, nor has it been licensed or permitted to use, the VICTORIA’S SECRET mark or any domain names incorporating the mark. None of the linked websites are affiliated with, sponsored or endorsed by Complainant. Therefore, Respondent’s Domain Name infringes upon and dilutes Complainant’s famous VICTORIA’S SECRET mark. 64. Complainant sent a cease and desist letter via e-mail and certified mail to Respondent on November 2, 2007, informing it that the registration and use of the Domain Name victoriassecretangel.com infringed upon and was dilutive of Complainant’s mark and further constituted unfair competition, false advertising, and passing off, as well as a violation of the Anticybersquatting Consumer Protection Act. See Exhibit D. In this letter, Complainant further requested that Respondent immediately cease using the Domain Name and assign all rights in the Domain Name to Complainant. Id. Complainant received no response from Respondent. 65. Respondent is using the Domain Name to divert Internet traffic from the legitimate VICTORIA’S SECRET web site or legitimate affiliated sites. Particularly when the trademark at issue is famous, as is Complainant’s VICTORIA’S SECRET mark, it is presumed that the registrant of the domain name at issue is commercially benefiting and trading off of the goodwill of the trademark owner. National Rifle Association of America v. FMA (NAF Oct. 13, 2006). This is precisely the sort of use made by Respondent. In short, Respondent has never used and cannot possibly use the Domain Name in connection with a bona fide offering of goods or services. See Policy, ¶ 4(c)(i). 66. Further, on information and belief, Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization. See Policy, ¶ 4(c)(ii). Respondent is listed in the Domain Name’s registration as the company SP and the individual [Name of Respondent]. Nothing in Respondent’s WHOIS information implies that Respondent is “commonly known” by the Domain Name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply). Additionally, Respondent registered the Domain Name almost twentyfive (25) years after Complainant had begun using its VICTORIA’S SECRET mark and approximately ten (10) years after Complainant had registered the domain name victoriassecret.com for its e-commerce website. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the

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380 Appendix F Form ICANN Complaints complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). 67. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. On information and belief, the sole reason Respondent has chosen the victoriassecretangel.com domain name is to misleadingly divert Internet traffic from Complainant’s web site to Respondent’s for commercial gain. See Policy, ¶ 4(c)(iii).

C. The Domain Name Was Registered And Is Being Used In Bad Faith 68. Currently, the Domain Name does not resolve to any content and there is no evidence that Respondent has engaged in demonstrable preparations for use. It is well settled that a merely holding a infringing domain name without active use can constitute use in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). 69. It is inconceivable that Respondent was not aware of Complainant’s famous trademark VICTORIA’S SECRET when Respondent registered the Domain Name. See V Secret Catalogue, Inc. v. PM Websites, No. 94652 (NAF, June 8, 2000) (VICTORIA’S SECRET mark has acquired significant goodwill, wide public recognition and fame). Given the fame of the VICTORIA’S SECRET trademark, there is no reason for Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark. See Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO, June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”); see also National Rifle Association of America v. FMA (NAF Oct. 13, 2006). At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. See 15 U.S.C. § 1072; see also Encyclopedia Britannica, Inc. v. Shedon.com, No. D2000-0755 (WIPO, September 6, 2000). Therefore, Respondent clearly registered and used the Domain Name in bad faith. See Policy, ¶ 4(b)(iv). 70. In addition, Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 43(d), et seq.

XVI. Remedies Requested 71. In accordance with ¶ 4(i) of the Policy, for the reasons described in Section V above, the Complainant requests that the Administrative Panel

Appendix F Form ICANN Complaints appointed in this administrative proceeding issue a decision that victoriassecretangel.com be transferred to the Complainant, Victoria’s Secret Stores Brand Management, Inc.

XVII. Arbitration Panel 72. Complainant is seeking a panel of one arbitrator to be appointed by the Forum, in accordance with Rules 3(b)(iv).

XVIII. Mutual Jurisdiction 73. In accordance with Rules 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the United States District Court for the Southern District of California, the location of the Respondent.

XIX. Other Legal Proceedings 74. No legal proceedings have been commenced or terminated in connection with the Domain Name victoriassecretangel.com. See Rules 3(b)(xi).

XX. Communications and Certification 75. Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the National Arbitration Forum and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents. See Rules 3(b)(xiv). 76. Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Policy and Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. See Rules 3(b)(xiv). 77. Complainant certifies that a copy of this Complaint has been sent or transmitted to Respondent in accordance with Rules 2(b) and 3(b)(xii).

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382 Appendix F Form ICANN Complaints 78. Complainant certifies that a copy of this Complaint has been sent or transmitted to the Registrar, Manage, in accordance with Supplemental Rules 4(e)(i). Dated: June 13, 2008

Respectfully Submitted, ______________________________ Melise R. Blakeslee Rita W. Siamas McDermott Will & Emery LLP 600 13th Street NW Washington, DC 20005 Telephone: (202) 756-8000 Facsimile: (202) 756-8087 Attorneys for the Complainant

Appendix F Form ICANN Complaints

3. Addition of a Generic is Still an Infringement The press widely reported many years ago that Victor’s Little Secret (for an adult sex shop) was not dilutive of the famous mark VICTORIA’S SECRET. Ever since then, would-be-infringers have tried variations on this theme. Today because of amendments to U.S. law, such an infringement strategy is likely to fail. This model complaint provides an example of an appropriate counterstrategy under the amended law. Before the: NATIONAL ARBITRATION FORUM


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XXI. Introduction 79. This Complaint is hereby submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (“Rules”) and the National Arbitration Forum (“NAF”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”), effective January 1, 2006. See Rule 3(b)(i).

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XXII. The Parties A. The Complainant 80. The Complainant in this administrative proceeding is VICTORIA’S SECRET STORES BRAND MANAGEMENT, INC., a Delaware Corporation having a place of business at Four Limited Parkway, Reynoldsburg, Ohio 43068. Victoria’s Secret Stores Brand Management, Inc., is a wholly owned subsidiary of Intimate Brands, Inc., a Delaware corporation, which in turn is a wholly owned subsidiary of Limited Brands, Inc., also a Delaware corporation. Victoria’s Secret Stores Brand Management, Inc. is the United States record owner of the VICTORIA’S SECRET Trademarks and Service Marks, which it licenses to other subsidiaries of Limited Brands (hereafter, Victoria’s Secret Stores Brand Management, Inc. and its licensees shall be referred to collectively as “Complainant”). 81. The Complainant’s contact details are as follows: Complainant’s address is 666 Fifth Avenue, 4th Floor, New York, NY 10103, its telephone number is (212) 424-0434, and its fax number is (917) 522-7634. 82. The Complainant’s authorized representative in this administrative proceeding is Melise R. Blakeslee, McDermott Will & Emery LLP, 600 Thirteenth Street, N.W., Washington, D.C. 20005. Melise Blakeslee’s telephone number is (202) 756-8362, her facsimile number is (202) 756-8087, and her e-mail address is [email protected]. 83. The Complainant’s preferred methods of receiving communications are as follows: electronic-only material should be sent to Melise Blakeslee at [email protected]. Materials including hardcopy should be sent by facsimile to Melise Blakeslee at (202) 756-8087.

B. The Respondent 84. According to GoDaddy.com, Inc. (“GoDaddy”) “WHOIS” query results, the Respondent in this administrative proceeding is [Name of Respondent]. A copy of the database record for the domain name that is the subject of this Complaint is attached hereto as Exhibit A. 85. All information known to the Complainant regarding how to contact Respondent is as follows: Respondent’s address is listed as [Address of Respondent]. Respondent lists her telephone number as (720) 253-4805, and her e-mail addresses as [email protected].

XXIII. The Domain Name and Registrar 86. This dispute concerns the domain name victoriaslilsecret.com (the “Domain Name”).

Appendix F Form ICANN Complaints 87. The registrar of record for the Domain Name is GoDaddy. The address for GoDaddy is 14455 N. Hayden Road, Suite 219, Scottsdale, Arizona 85260. Its telephone number is (480) 505-8800; its facsimile number is (480) 5058844; and its e-mail is [email protected]. 88. GoDaddy has adopted the Policy and Rules, which are incorporated by reference into its Registration Agreement. A copy of the Registration Agreement is attached hereto as Exhibit B.

XXIV. The Trademarks and Service Marks Upon Which the Complaint is Based 89. This Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof, which have been adopted and continually used in commerce by the Complainant, its licensees, and predecessors since at least as early as June 12, 1977 in connection with the sale of, inter alia, women’s lingerie, beauty products, swimwear, outerwear, and gift items. 90. Complainant uses the famous mark VICTORIA’S SECRET as the name of nearly 1,000 Victoria’s Secret retail stores located throughout the United States which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA’S SECRET. Complainant also uses the mark VICTORIA’S SECRET in conjunction with international mail order catalogue sales and Internet commerce through the Complainant’s web site, located at www. victoriassecret.com. 91. In 2005, nearly $4.5 billion of merchandise was sold bearing or in connection with the mark VICTORIA’S SECRET. In addition, Complainant’s prominent advertising campaign featuring its famous models has succeeded in catapulting the VICTORIA’S SECRET brand into the realm of one of the world’s most recognized marks. 92. As a result of this widespread, long-time, continuous, and prominent use of the mark VICTORIA’S SECRET, the mark VICTORIA’S SECRET has acquired significant goodwill, wide public recognition, and fame as a means by which Complainant and its merchandise are known to the public and its source and origin are identified. See V Secret Catalogue et al. v. Artco Inc., No. 94342 (NAF, May 9, 2000) (recognizing VICTORIA’S SECRET as a famous mark). 93. The mark VICTORIA’S SECRET, and variations thereof, are duly registered in the United States Patent and Trademark Office under twenty (20) valid, subsisting and uncancelled registrations, and Complainant is the owner thereof. Database printouts concerning those registrations are attached hereto as Exhibit C. Many of those registrations are incontestable. Additionally, Complainant has approximately twenty-three (23) applications pending before the United States Patent and Trademark Office which contain the mark VICTORIA’S SECRET and variations thereof.

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386 Appendix F Form ICANN Complaints 94. The mark VICTORIA’S SECRET has been prominently used on the Internet in connection with the world-famous Victoria’s Secret online fashion shows. In February 1999, Complainant launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast. This record was shattered on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the Victoria’s Secret Internet fashion show, which prominently featured the mark VICTORIA’S SECRET. The brand has also been promoted since 2001 through the annual network television broadcast of the Victoria’s Secret Fashion Show.

XXV. Grounds On Which The Complaint is Made A. The Domain Name is Confusingly Similar to Complainant’s Mark 95. Respondent’s registered Domain Name, victoriaslilsecret.com, is confusingly similar to Complainant’s mark VICTORIA’S SECRET and the domain name used by Complainant in connection with the legitimate sale of products bearing the mark VICTORIA’S SECRET, namely victoriassecret.com. 96. The Domain Name contains Complainant’s mark, separated only by a common diminutive of the generic word “little.” By registering a domain name that merely adds a common word to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves. The likelihood of confusion is heightened by the choice of word added to Complainant’s mark. Consumers might believe that victoriaslilsecret.com is the official website for a line of Victoria’s Secret clothing, such as for juniors. As a result, Respondent’s Domain Name is likely to cause mistake and misleadingly divert web surfers trying to locate the official VICTORIA’S SECRET web site. See Artco, Inc., supra; V Secret Catalogue, Inc. v. Tri X Group, Ltd., No. 96540 (NAF, March 9, 2001); and V Secret Catalogue, Inc. v. Serbjeet Ahluwalia dba TSE, No. 96559 (NAF, March 14, 2001) (finding victoriassecrets.net, victoriasxxxsecrets.com, and victoriasecretsex.com, respectively, confusingly similar to VICTORIA’S SECRET).

B. Respondent Has No Rights or Legitimate Interest in the Domain Name 97. The Domain Name victoriaslilsecret.com resolves to a site for paid escort services offered by a transsexual. The site includes pictures of the escort

Appendix F Form ICANN Complaints wearing lingerie. A copy of selected pages from the web site are attached hereto as Exhibit D. The site is not owned, affiliated with, or endorsed by Complainant, and the site tarnishes Complainant’s famous VICTORIA’S SECRET mark. 98. Respondent is using the Domain Name to advertise transsexual escort services. Clearly Respondent is using the Domain Name to divert Internet traffic from the legitimate VICTORIA’S SECRET web site to Respondent’s. Such usage of Complainant’s mark to divert Internet traffic to a web site that offers services unrelated to Complainant and derive revenue therefrom does not constitute use in connection with a bona fide offering of goods or services. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO, Dec. 8, 2000) (finding that use of a domain name to redirect Internet users to Respondent’s website offering goods with no connection to Complainant is not a bona fide commercial offering of goods or services). Thus, before receiving notice of the dispute, Respondent was not using the Domain Name in connection with a bona fide offering of goods or services. See Policy ¶ 4(c)(i). 99. The transsexual escort is referred to as “Victoria.” However, as “Victoria” is biologically a man and is 25 years old (see Ex. D), it seems clear that the transsexual adopted the name “Victoria” after Complainant’s VICTORIA’S SECRET marks, which have been in use since before “Victoria” was born, became famous. Thus, it is clear that the name “Victoria” was chosen merely to fit in with the use of Complainant’s famous marks. Further, the Respondent in this case is named “[Name of Respondent].” See Policy, ¶ 4(c)(ii). 100. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. On information and belief, the sole reason Respondent has chosen the victoriaslilsecret.com domain name is to misleadingly divert Internet traffic from Complainant’s web site to Respondent’s for commercial gain. See Policy, ¶ 4(c)(iii); see also supra at ¶¶ 19, 21.

C. The Domain Name Was Registered In And Is Being Used In Bad Faith 101. Upon information and belief, Respondent registered the Domain Name with the intent to attract Internet users to Respondent’s web site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site, thereby misleadingly diverting Internet traffic from Complainant’s web site to Respondent’s for commercial gain. See Policy, ¶ 4(b)(iv). 102. It is inconceivable that Respondent was not aware of Complainant’s famous trademark VICTORIA’S SECRET when Respondent registered the Domain Name. See V Secret Catalogue, Inc. v. PM Websites, No. 94652 (NAF, June 8, 2000) (VICTORIA’S SECRET mark has acquired significant goodwill,

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388 Appendix F Form ICANN Complaints wide public recognition and fame). Given the fame of the VICTORIA’S SECRET trademark, there is no reason for Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark. See Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO, June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”). At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. See 15 U.S.C. § 1072; see also Encyclopedia Britannica, Inc. v. Shedon.com, No. D2000-0755 (WIPO, September 6, 2000). 103. On information and belief, Respondent derives revenue from the use of Complainant’s mark in the Domain Name by using it to attract Internet traffic to a site offering transsexual escort services. This use of the Domain Name indicates that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the Complainants’ Mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” See Policy, ¶ 4(b)(iv). 104. In addition, Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 43(d) et seq.

XXVI. Remedies Requested 105. In accordance with ¶ 4(i) of the Policy, for the reasons described in Section V above, the Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that victoriaslilsecret.com be transferred to the Complainant, VICTORIA’S SECRET STORES BRAND MANAGEMENT, INC.

XXVII. Arbitration Panel 106. Complainant is seeking a panel of one arbitrator to be appointed by NAF, in accordance with Rules ¶ 3(b)(iv).

XXVIII. Mutual Jurisdiction 107. In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant agrees to submit, only with respect to any challenge that may be made by

Appendix F Form ICANN Complaints Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the federal district court for Colorado, where the Respondent is located.

XXIX. Other Legal Proceedings 108. No legal proceedings have been commenced or terminated in connection with the Domain Name victoriaslilsecret.com. See Rules ¶ 3(b)(xi).

XXX. Communications and Certification 109. Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the National Arbitration Forum and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents. See Rules ¶ 3(b)(xiv). 110. Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Policy and Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. See Rules ¶ 3(b)(xiv). 111. Complainant certifies that a copy of this Complaint has been sent or transmitted to Respondent in accordance with Rules 2(b) and 3(b)(xii).

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390 Appendix F Form ICANN Complaints 34. Complainant certifies that a copy of this Complaint has been sent or transmitted to the Registrar, GoDaddy.com in accordance with Supp. Rule 4(e)(i). Dated: July 14, 2006

Respectfully Submitted, ______________________________ Melise R. Blakeslee Sarah Brown McDermott Will & Emery LLP 600 13th Street NW Washington, DC 20005 Telephone: (202) 756-8000 Facsimile: (202) 756-8087 Attorneys for the Complainant

Deluded cybersquatters continue to think that the mere addition of a location indicator in the domain will somehow avoid an infringement problem—for example, ukvictoriassecret.com. Many decisions have correctly set forth that the mere addition of a generic word or location simply does not change the fundamental fact of infringement. This model complaint provides useful arguments and precedent to battle against this type of scam. Before the: NATIONAL ARBITRATION FORUM V SECRET CATALOGUE, INC., Complainant, v. [NAME OF RESPONDENT], Respondent.

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XXXI. Introduction 112. This Complaint is hereby submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (“Rules”) and the National Arbitration Forum (“NAF”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”). See Rule 3(b)(i).

XXXII. The Parties A. The Complainant 113. The Complainant in this administrative proceeding is V SECRET CATALOGUE, INC., a Delaware Corporation having a place of business at 1105 North Market Street, Wilmington, Delaware 19801. V SECRET CATALOGUE, INC. is a wholly owned subsidiary of LIMITED BRANDS, a Delaware corporation and limited liability company. V SECRET CATALOGUE, INC. is the United States record owner of the VICTORIA’S SECRET Trademarks and Service Marks, which it licenses to other subsidiaries of LIMITED BRANDS (hereafter, Complainant and its licensees shall be referred to collectively as “Complainant”). 114. The Complainant’s contact details are as follows: Complainant’s address is 666 Fifth Avenue, 4th Floor, New York, NY 10103, its telephone number is (212) 424-0434, and its fax number is (917) 522-7634. 115. The Complainant’s authorized representative in this administrative proceeding is Melise Blakeslee, McDermott Will & Emery LLP, 600 Thirteenth Street, N.W., Washington, D.C. 20005. Melise Blakeslee’s telephone number is (202) 756-8362, her facsimile number is (202) 756-8087, and her e-mail address is [email protected]. 116. The Complainant’s preferred methods of receiving communications are as follows: electronic-only material should be sent to Melise Blakeslee, at the e-mail address [email protected]. Materials including hardcopy should be sent by facsimile to Melise Blakeslee at the address listed in Paragraph 4 above.

B. The Respondent 117. According to eNom, Inc. “WHOIS” query results, the Respondent in this administrative proceeding is “[Name of Respondent].” A copy of the database search for the domain name that is the subject of this Complaint is attached hereto as Exhibit A.

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392 Appendix F Form ICANN Complaints 118. All information known to the Complainant regarding how to contact Respondent is as follows: Respondent’s contact person is [Name of Respondent] and its address is [Address of Respondent. Respondent lists its telephone number as +1.0000000000, its facsimile number as +1.0000000000, and its e-mail addresses are [email protected].

XXXIII. The Domain Name and Registrar 119. This dispute concerns the domain name ukvictoriassecret.com (the “Domain Name”). 120. The registrar of record for the Domain Name is eNom, Inc. (“eNom”). The address for eNom is 2002 156th Ave. NE, Suite #300, Unigard Park, McKinley Building, Bellevue, WA 98007. Its telephone number is (425) 274-4500, its facsimile number is (425) 274-4519, and its e-mail address is [email protected]. 121. eNom.com has adopted the Policy and Rules, which are incorporated by reference into its eNom Registration Agreement. A copy of this agreement is attached hereto as Exhibit B.

XXXIV. The Trademarks and Service Marks Upon Which the Complaint is Based 122. This Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof, which have been adopted and continually used in commerce by the Complainant, its licensees, and predecessors since at least as early as June 12, 1977 in connection with the sale of, inter alia, women’s lingerie, beauty products, outerwear, and gift items. 123. Complainant uses the famous mark VICTORIA’S SECRET as the name of over 1,000 Victoria’s Secret retail stores located throughout the United States which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA’S SECRET. Complainant also uses the mark VICTORIA’S SECRET in conjunction with international mail order catalogue sales and Internet commerce through the Complainant’s web site, located at www.victoriassecret.com. 124. In 2004, more than $3.1 billion of merchandise was sold bearing or in connection with the mark VICTORIA’S SECRET. In addition, Complainant’s prominent advertising campaign featuring its famous models has succeeded in catapulting the VICTORIA’S SECRET brand into the realm of one of the world’s most recognized marks. 125. As a result of this widespread, long-time, continuous, and prominent use of the mark VICTORIA’S SECRET, the mark VICTORIA’S SECRET has acquired significant goodwill, wide public recognition, and fame as a means

Appendix F Form ICANN Complaints by which Complainant and its merchandise are known to the public and its source and origin are identified. See V Secret Catalogue et al. v. Artco Inc., ICANN Case No. FA 94342 (May 9, 2000) (recognizing VICTORIA’S SECRET as a famous mark). 126. The mark VICTORIA’S SECRET, and variations thereof, are duly registered in the United States Patent and Trademark Office under eighteen (18) valid, subsisting and uncancelled registrations, and V SECRET CATALOGUE, INC. is the owner thereof. Database printouts concerning those registrations are attached hereto as Exhibit C. Many of those registrations are incontestable. Additionally, Complainant has approximately twenty-two (22) applications pending before the United States Patent and Trademark Office which contain the mark VICTORIA’S SECRET and variations thereof. 127. The mark VICTORIA’S SECRET has been prominently used on the Internet in connection with the world-famous Victoria’s Secret online fashion shows. In February 1999, Complainant launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast. This record was shattered on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the Victoria’s Secret Internet fashion show, which prominently featured the mark VICTORIA’S SECRET. The brand has also been promoted since 2001 through the annual network television broadcast of the Victoria’s Secret Fashion Show.

XXXV. Grounds On Which The Complaint is Made A. The Domain Name is Confusingly Similar to Complainant’s Mark 128. Respondent’s registered Domain Name, ukvictoriassecret.com is nearly identical and confusingly similar to Complainant’s mark VICTORIA’S SECRET and the domain name used by Complainant in connection with the legitimate sale of products bearing the mark VICTORIA’S SECRET, namely victoriassecret.com. 129. By registering a domain that merely adds the country abbreviation “uk” as a prefix to Complainant’s famous mark, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the products sold on its web site. As a result, Respondent’s Domain Name is likely to misleadingly divert Internet users trying to locate the legitimate VICTORIA’S SECRET web site, and it is likely to misleadingly suggest sponsorship, affiliation or endorsement of Respondent’s website by Complainant. See America Online, Inc. v. Dolphin@Heart, ICANN Case No. D2000-0713 (September 5, 2000) (domains that combined geographical place names with complainant’s

393

394 Appendix F Form ICANN Complaints well-known mark, such as aolfrance.com and aolgermany.com, were found to be confusingly similar to complainant’s mark); Dell Computer Corporation .v. MTO C.A. and Diabetes Education Long Life, ICANN Case No. D2002-0363 (July 5, 2002) (domain names adding geographical place names to a mark were held to be confusingly similar to the mark); see also V Secret Catalogue et al. v. Artco Inc., ICANN Case No. FA 94342 (May 9, 2000) (victoriassecrets.net is confusingly similar to the mark VICTORIA’S SECRET); V Secret Catalogue et al. v. Internet Investment Trust “In Trust,” ICANN Case No. FA 94344 (May 9, 2000) (victoriasecret.com is confusingly similar to the mark VICTORIA’S SECRET). Internet users are likely to be confused by the similarities between victoriassecret.com and ukvictoriassecret.com and possibly assume that the latter is the United Kingdom version of the official Victoria’s Secret web site.

B. Respondent Has No Rights or Legitimate Interest in the Domain Name 130. The Domain Name ukvictoriassecret.com resolves to a web page selling lingerie products that compete with Complainant’s. A copy of the home page of the web site is attached hereto as Exhibit D. The site is not owned, affiliated with, or endorsed by Complainant, nor are the products the site sells. 131. Complainant sent a cease and desist letter via e-mail and certified mail to Respondent, informing it that the registration and use of the Domain Name ukvictoriassecret.com infringed upon Complainant’s mark and requesting that Respondent assign the Domain Name to Complainant. See Exhibit E. Complainant did not receive a response to this letter. 132. Respondent is using the Domain Name to host a site promoting lingerie products that compete with Complainant’s products. Clearly Respondent is using the Domain Name to confuse consumers and divert them from the legitimate VICTORIA’S SECRET web site to its own. Such usage of Complainant’s mark to divert Internet traffic to a web site that offers competing goods or services and derives revenue therefrom does not constitute use in connection with a bona fide offering of goods or services. See C & E Fein GmbH & Co. v. Mierendorff, ICANN Case No. FA00183729 (October 1, 2003). Thus, before receiving notice of the dispute, Respondent was not using the Domain Name in connection with a bona fide offering of goods or services. See Policy ¶ 4(c)(i). 133. Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization. See Policy ¶ 4(c)(ii). The Respondent’s name is [Name of Respondent]. 134. Respondent is not making a legitimate noncommercial or fair use of the Domain Name, and on information and belief, the sole reason Respondent has chosen the ukvictoriassecret.com domain name is to misleadingly divert

Appendix F Form ICANN Complaints customers looking for Complainant’s site to its own competing site for commercial gain. See Policy, ¶ 4(c)(iii); see also supra at ¶¶ 19-21.

C. The Domain Name Was Registered In And Is Being Used In Bad Faith 135. Upon information and belief, Respondent registered the Domain Name with the intent to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site and the products sold thereon. See Policy, ¶4(b)(iv). 136. It is inconceivable that Respondent was not aware of Complainant’s famous trademark VICTORIA’S SECRET when Respondent registered the Domain Name. See V Secret Catalogue, Inc. v. PM Websites, ICANN Case No. FA 94652 (June 8, 2000) (VICTORIA’S SECRET mark has acquired significant goodwill, wide public recognition and fame). Given the fame of the VICTORIA’S SECRET trademark, there is no reason for Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark. See Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”). At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. See 15 U.S.C. § 1072; see also Encyclopedia Britannica, Inc. v. Shedon.com, WIPO Case No. D2000 0755 (WIPO September 6, 2000). 137. On information and belief, Respondent derives revenue from its use of Complainant’s mark through the selling of lingerie products that do not come from Complainant. This use of the Domain Name indicates that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the Complainants’ Mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” See Policy, ¶4(b)(iv). 138. Respondent’s use of the Domain Name, which is confusingly similar to Complainant’s mark, to sell goods of the type that Complainant sells, demonstrates Respondent’s intent to confuse Internet users about the source or sponsorship of its web site and its products. Consumers may believe that they are purchasing goods from Complainant, endangering the goodwill associated with the mark VICTORIA’S SECRET. 139. In addition, Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 43(d) et seq.

395

396 Appendix F Form ICANN Complaints

XXXVI. Remedies Requested 140. In accordance with Paragraph 4(i) of the Policy, for the reasons described in Section V above, the Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that ukvictoriassecret.com be transferred to the Complainant, V SECRET CATALOGUE, INC.

XXXVII. Arbitration Panel 141. Complainant is seeking a panel of one arbitrator to be appointed by NAF.

XXXVIII. Mutual Jurisdiction 142. In accordance with Paragraph 3(b)(xiii) of the Rules, the Complainant agrees to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the federal district court for the district of Washington, where the Registrar eNom has its principal place of business.

XXXIX. Other Legal Proceedings 143. No legal proceedings have been commenced or terminated in connection with the Domain Name ukvictoriassecret.com.

XL. Communications and Certification 144. Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the National Arbitration Forum and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents. 145. Complainant certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Policy and

Appendix F Form ICANN Complaints Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. 146. Complainant certifies that a copy of this Complaint has been sent or transmitted to Respondent in accordance with Rule 2(b) and Rule 3(b)(xiii). Dated: October 17, 2005

Respectfully Submitted, ______________________________ Melise R. Blakeslee McDermott Will & Emery LLP 600 13th Street NW Washington, DC 20005 (202) 756-8000 (202) 756-8087 (fax) Attorney for the Complainant

397


APPENDIX

G Memorandum of Law in Support of Motion for Expedited Discovery (seeking identity of anonymous posters in defamation case)

UNITED STATES DISTRICT COURT DISTRICT OF CONNECTICUT DOE I, and DOE II,

Case No. 3:07CV00909(CFD)

Plaintiffs, v. Individuals, whose true names are unknown, using the following pseudonyms: pauliewalnuts; neoprag; STANFORDtroll; :D; lkjhgf; yalelaw; Spanky; ylsdooder; HI; David Carr; vincimus; Cheese Eating Surrender Monkey; A horse walks into a bar; The Ayatollah of Rock-n-Rollah; DRACULA; Sleazy Z; Whamo; Ari Gold; Ugly Women; playboytroll; Dean _Harold_Koh; kr0nz; reminderdood; r@ygold; who is, Joel Schellhammer; Prof. Brian Leiter; hitlerhitlerhitler; lonelyvirgin; Patrick Zeke <[email protected]>; Patrick Bateman ; [DOE I] got a 157 LSAT; azn, azn, azn; Dirty Nigger; leaf; t14 gunner; kibitzer; yalels2009; AK47, Defendants.

399

Date: January 24, 2008

EMERGENCY RELIEF REQUESTED

400 Appendix G Memorandum of Law in Support of Motion for Expedited Discovery PLAINTIFFS’ MEMORANDUM OF LAW IN SUPPORT OF MOTION FOR EXPEDITED DISCOVERY [reprinted in part with permission of Plaintiff’s counsel] I. INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 II. FACTUAL BACKGROUND . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 A. AutoAdmit.com . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 B. Threats and defamatory attacks against DOE I. . . . . . . . . . . . . . . . . . . 4 C. Threats and defamatory attacks against DOE II on AutoAdmit.com. . . . . 4 D. Plaintiffs’ attempts to discover the defendants’ identities through informal discovery. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4 III. ARGUMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 A. Plaintiffs meet the good-cause standard for permitting discovery prior to the Rule 26(f) conference. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 1. Plaintiffs also meet the heightened standard articulated in Notaro v. Koch for permitting early discovery. . . . . . . . . . . . . . . . . 9 a. Plaintiffs will suffer irreparable injury if this motion is not granted . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 b. Plaintiffs can easily demonstrate far more than “some probability of success on the merits” on each claim in the FAC.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10 (i) Plaintiffs are likely to succeed on their libel claim. . . . . . . 10 (ii) DOE II is likely to succeed on her claim for copyright infringement.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 (iii) Plaintiffs are likely to succeed on the merits of their Invasion of Privacy claims. . . . . . . . . . . . . . . . . . . . . . . . . 13 (iv) Plaintiffs are likely to succeed on their Intentional Infliction of Emotional Distress claim. . . . . . . . . . . . . . . . . 13 (v) Plaintiffs are likely to succeed on their claim for Negligent Infliction of Emotional Distress. . . . . . . . . . . . . . 13 c. Connection between irreparable harm and expedited discovery . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13 d. Balancing of injury . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 B. First Amendment concerns regarding “anonymous speech” are not implicated in this case, but even if they were, plaintiffs have met their burden to unmask the defendants. . . . . . . . . . . . . . . . 15 C. The Court should consider this motion on an expedited basis . . . . . . 17 IV. CONCLUSION. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery Federal Cases America Online, 52 Va. Cir. at 37. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15 Ayyash v. Bank Al-Madina, 233 F.R.D. 325, 2005 U.S. Dist. LEXIS 14276 (S.D.N.Y. July 12, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . 7, 10 Consolidated Brands, Inc. v. Mondi, 638 F. Supp. 152 (E.D.N.Y. 1986) . . . . 10 In re Baxter, No. 01-00026-M, 2001 U.S. Dist. LEXIS 26001, at *24 (W.D. La. December 20, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . 16 In re Subpoena Duces Tecum to America Online, Inc., 52 Va. Cir. 26, 2000 Va. Cir. Lexis 220, No. 40570, at **21-22 (Va. Cir: Ct. Jan 31, 2000), rev’d on other grounds, American Online, Inc. v. Anonymous Publicly Trader Co., 261 Va. 350, 542 S.E.2d 377 (Va. 2001) . . . . . . . . . . . 8 Mitra v. State Bank of India, 2005 U.S. Dist. LEXIS 19138 . . . . . . . . . . . . . 6, 7 Notaro v. Koch 95 F.R.D. at 405 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9, 10, 13 Sony v. Does 1-40, 326 F. Supp. 2d . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16 United States CFTC v. Rodriguez, No. 06 CV 0855, 2006 U.S. Dist. LEXIS 13773, *3 (S.D.N.Y. Feb. 3, 2006) . . . . . . . . . . . . . . . . . . . . . . 7 United States v. Irving, 452 F.3d 110 (2d Cir. 2006) . . . . . . . . . . . . . . . . . . . 16 United States v. Perez, 247 F. Supp. 2d 459 (S.D.N.Y. 2003) . . . . . . . . . . . . 14

State Cases Angiolillo v. Buckmiller, 102 Conn. App. 697 (Conn. App. 2007) . . . . . . . . . 25 Bell v. Board of Education, 55 Conn. App. 400 (1999) . . . . . . . . . . . . . . . . . 25 Best Western Inc. v. Doe, No. CV-06-1537, 2006 WL 2091695, at *4 (D. Ariz., July 25, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29 Carrol v. Allstate Ins. Co., 262 Conn. 433 (2003) . . . . . . . . . . . . . . . . . . . . . 27 Corbett v. Register Publishing Co., 33 Conn. Supp. 4 (Conn. Super. Ct. 1975) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 Dendrite Intern., Inc. v. Doe No. 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 Goodrich v. Waterbury Republican-American, Inc., 188 Conn. 107 (Conn. 1982). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22 Gorham v. New Haven, 82 Conn. 153 (Conn. 1909) . . . . . . . . . . . . . . . . . . 18 John Doe No. 1 v. Cahill 884 A.2d 451 (Del. 2005) . . . . . . . . . . . . . 16, 29, 30 Korn v. Rennison, 21 Conn. Supp. 400 (1959) . . . . . . . . . . . . . . . . . . . . . . . 22 Lega Siciliana Soc. Club, Inc. v. St. Germaine, 77 Conn. App. 846 (Conn. App. Ct. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 Leone v. New England Communications, 32 Conn, L. Rptr. 72 (2002) . . . . . 26 Miles v. Perry, 11 Conn. App. 584, 529 A.2d 199 (1987) . . . . . . . . . . . . . . . 19 Olson v. Bristol-Burlington Health District, 87 Conn. App. 1, 7, cert. granted, 273 Conn. 914, 870 A.2d 1083 (2005) . . . . . . . . . . . . . . . . . . . . 26 Petyan v. Ellis, 200 Conn. 243 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25

401

402

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery Sedlak v. Lotto, NO. CV 92 328128, 1994 Conn. Super. LEXIS 3041 (Conn. Super. Ct. Dec. 1, 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19 Torosyan v. Boehringer Ingelheim Pharmaceuticals, 234 Conn. 1 (Conn. 1995). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

Federal Authority Fed. R. Civ. P. 26 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1, 13, 14, 15

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery PLAINTIFFS’ MEMORANDUM OF LAW IN SUPPORT OF MOTION FOR EXPEDITED DISCOVERY Plaintiffs DOE I and DOE II move this Court, under Federal Rule of Civil Procedure 26(d), to permit limited, expedited discovery in advance of the Rule 26(f) conference. Plaintiffs require limited, expedited discovery to unearth the identities of the pseudonymous defendants and serve them with process, conduct a meet and confer, and proceed with this action. If this motion is not granted, plaintiffs will not be able to hold a Rule 26(f) conference, and, indeed, will not be able to prosecute this lawsuit.

I. INTRODUCTION “ “[DOE II] (YLS 09) IS AN ANNOYING, SELFISH CUNT. I HOPE SHE GETS RAPED AND DIES. —Posted on AutoAdmit.com by defendant using the pseudonym “Ugly Women.” “i would like to hate-fuck [DOE I] but since people say she has herpes that might be a bad idea.” —Posted on AutoAdmit.com by defendant using the pseudonym “ylsdooder.” “Cum inside [DOE II], and then punch her in the stomach seven months later.” —Posted on AutoAdmit.com by defendant using the pseudonym “Sleazy Z.” The above statements are a sampling of the hundreds of threatening, offensive and/or defamatory messages that defendants—an unknown number of individuals using 39 pseudonyms to post messages on AutoAdmit.com—have unleashed against plaintiffs DOE I and DOE II, two female Yale Law School students. AutoAdmit.com is an Internet discussion board targeted at law students and lawyers, describing itself as “[t]he most prestigious law school discussion board in the world.”1 Plaintiffs’ First Amended Complaint asserts causes of action for libel, invasion of privacy, negligent and intentional infliction of emotional distress, and theft of one plaintiff’s copyrighted photographs. Those causes of action are strong, as explained below. However, the anonymity that emboldened defendants to make statements they were unwilling to make under their real names has also thwarted plaintiffs’ attempts to identify the defendants and serve them with process. This, despite

1. See Declaration of Steve Mitra in Support of Plaintiffs’ Motion for Expedited Discovery, filed herewith, (“Mitra Decl.”), Ex. A.

403

404 Appendix G Memorandum of Law in Support of Motion for Expedited Discovery considerable efforts by plaintiffs to identify defendants and seek their cooperation. The Federal Rules of Civil Procedure and this Court’s Local Rules require the parties to meet and confer prior to initiating formal discovery. But without formal discovery, plaintiffs will be unable to meet and confer (or serve the defendants) because the defendants’ identities are unknown. Plaintiffs thus are stuck in a classic “Catch-22” situation. Appropriately, this Court has discretion to permit expedited discovery in these situations. Plaintiffs simply ask that the Court exercise that discretion so that plaintiffs can identify the defendants who attacked their reputations from behind the veil of secrecy provided by the AutoAdmit.com message board—and so that the lawsuit can proceed.

II. FACTUAL BACKGROUND A. AutoAdmit.com AutoAdmit.com is an Internet discussion board on which participants post and review comments and information about undergraduate colleges, graduate schools, and law schools.2 The AutoAdmit website is administered by Jarret Cohen and was moderated for some time by Anthony Ciolli.3 The site was launched in 2004 and, according to statements made by Cohen and Ciolli, draws between 800,000 and one million visitors per month.4 Anyone who uses the Internet and goes to the AutoAdmit site, either directly or via an Internet search engine such as Google, may view the messages posted to the discussion board. After a participant posts a new message, any further comments or responses to the subject area of that message are collected as a “thread.” Message threads can be quite lengthy depending on the level of interest in a particular subject.5 Registered AutoAdmit users may post new messages and respond to the messages of other registered users.6 Individuals who register with the AutoAdmit site may, but are not required to, provide their real names.7

2. AutoAdmit also has a “mirror site” located at http://xoxohth.com, which contains virtually the same content featured on AutoAdmit. See Mitra Decl. ¶ 3, Ex. B. The site http:// www.xoxoreader.blogspot.com is a web log that republishes information from the AutoAdmit mirror site located at http://xoxohth.cotn. See id. ¶ 3. 3. Id. ¶ 4, Ex. C. 4. Id. 5. Id. ¶ 5. 6. Id. ¶ 6, Ex. D. 7. Id. ¶ 6.

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery Posters thus can adopt multiple user names. The AutoAdmit website appears to use “persistent pseudonymity,” which means that changes in pseudonyms retroactively change previously-stored posts to reflect the changed pseudonyms.8 The threads on the AutoAdmit site can be found by searching on the site or through search engines such as Google. By entering a person’s name as a search term, a search engine will list various threads in which that name appears in search results.9 At times, posters will take steps to ensure that AutoAdmit threads containing statements about an individual appear as one of the first search results returned by a Google search—a practice referred to as “google-bombing.”10

B. Threats and defamatory attacks against DOE I. [facts omitted]

C. Threats and defamatory attacks against DOE II on AutoAdmit.com. [facts omitted]

D. Plaintiffs’ attempts to discover the defendants’ identities through informal discovery Plaintiffs filed their complaint in this action on June 8, 2007, and their First Amended Complaint (“FAC”) on November 8, 2007. Plaintiffs have made repeated efforts to identify and serve the pseudonymous defendants, thus far, to no avail.11 Plaintiffs have sought information relating to the identities of the defendants from several different entities, including AutoAdmit.com, Domains by Proxy, GoDaddy, PenTeleData, Microsoft (owner of Hotmail), HighBeam Research,

8. Id. 9. Id. Ex. E 10. See The New Oxford American Dictionary, (2d ed. 2005) (defining “google bombing” as “the activity of designing Internet links that will bias search engine results so as to create an inaccurate impression of the search target.”), available at http://www. oxfordreference.com/views/ENTRY.html?entry=t183.e32368&srn=1&ssid=1092921 276; see also Declaration of DOE II in Support of Plaintiffs’ Motion for Expedited Discovery, filed herewith, (“DOE II Decl.”) Ex. 22 at 7. 11. Mitra Decl. ¶¶ 10-17.

405

406 Appendix G Memorandum of Law in Support of Motion for Expedited Discovery University of North Carolina, VLEX, ServInt Internet Services, University of Virginia, Yale Law School, AT&T/SBC and Embarq.12 (These entities are believed to have assigned IP addresses to defendants, to have been used by defendants to send e-mail, or to have IP addresses because defendants have visited their web sites.) None of the entities contacted have disclosed the information requested.13 Plaintiffs also have attempted to contact Ryan Mariner, an individual who is believed to have information regarding one or more of the defendants, to voluntarily provide relevant discovery.14 Mr. Mariner has not provided any information as of the date of this filing.15 Plaintiffs have contacted Messrs. Cohen and Ciolli through their counsel, but neither has, thus far, provided any identifying information.16 On November 9, 2007, plaintiffs, through their counsel, posted a notice on AutoAdmit.com requesting that defendants come forward for the purpose of being served with the complaint and conducting a meet and confer.17 The notice included counsels’ contact information.18 Plaintiffs’ counsel received no response.19 On November 27, 2007, plaintiffs’ counsel followed up with an additional post on AutoAdmit.com. The notice stated: Plaintiffs’ counsel hereby renews the previously-posted request that individuals who have used, or currently use, the above pseudonyms on this web site provide identifying information and/or the identity of counsel representing them so that plaintiffs’ counsel may serve them with the complaint and conduct a Fed. R. Civ. P. 26(f) conference. Plaintiffs’ counsel may be contacted at (415) 391 5400. Please ask for Ashok Ramani or Steve Mitra. In addition, plaintiffs’ counsel may also be contacted by e-mail at [email protected]. Plaintiffs’ counsel also hereby notifies individuals who have used the above pseudonyms that plaintiffs intend to move the U.S. District Court, District of Connecticut, to allow plaintiffs to conduct expedited discovery to uncover defendants’ identities.”20 Not a single defendant has come forward as of the date of this filing.21, 22

12. 13. 14. 15. 16. 17. 18. 19. 20. 21. 22.

Id. ¶ 11, Ex. F. Id. ¶ 14, Ex. H. Id. ¶ 13. Id. Id. ¶ 12, 14, Ex. G. Id. ¶ 15, Ex. I. Id. Id. ¶ 15. Id. ¶ 16, Ex. J. Id. ¶ 17. It has become clear that the information that plaintiffs seek was threatened with deletion and, in one case, may already have been deleted. Internet Service Providers, and the other entities contacted, delete such information at different intervals. Mitra Decl

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery

III. ARGUMENT Federal Rule of Civil Procedure 26(f) requires litigants to meet and confer regarding a discovery plan, initial disclosures and other matters “as soon as practicable and in any event at least 21 days before a scheduling conference is held or a scheduling order is due under Rule 16(b)[.]”23 Before this Rule 26(f) conference, parties are prohibited from proceeding with formal discovery under Federal Rule of Civil Procedure 26(d) and under the local rules of this Court.24 When defendants hide their identities and fail to come forward after a lawsuit against them is filed, the rules requiring a meet-and-confer prior to initiating formal discovery puts plaintiffs in a bind: Prior to a meet-and-confer, they may not conduct discovery; but prior to initiating discovery, they cannot conduct a meet-and-confer—or even serve the defendants—because defendants’ identities are unknown. The Federal Rules permit plaintiffs to apply to the Court for relief in these, and other, circumstances in which pre-meet-and-confer discovery may be necessary.25 Here, as discussed in detail below, this relief is unquestionably justified.

A. Plaintiffs meet the good-cause standard for permitting discovery prior to the Rule 26(f) conference Federal Rule of Civil Procedure 26(d) states that “[e]xcept . . . when authorized under these rules or by order or agreement of the parties, a party may not seek discovery from any source before the parties have conferred as required by Rule 26(f).”26 This Rule has been interpreted to “give[ ] district courts the power to order that discovery takes place before the parties’ initial Rule 26(f) discovery conference.”27 Typically, relief from Rule 26(f)’s prerequisites requires a finding of “good cause.”28 The standard is a flexible one, based on

23. 24. 25. 26. 27. 28.

¶ 19. PenTeleData, Inc., for instance, deletes identifying information every 60 days. Mitra Decl. ¶ 19, Exh. H. While the entities contacted stated they would preserve the information they have, the fate of information whose relevance is not currently obvious, or that has not come to light, obviously remains threatened. Fed. R. Civ. P. 26(f). See Fed. R. Civ. P. 26(d); Standing Order on Pretrial Deadlines ¶ 2(d) in the District of Connecticut, Local Rules, at 100. See, e.g, Mitra v. State Bank of India, No. 03-6331, 2005 U.S. Dist. LEXIS 19138, at *26 (S.D.N.Y. September 6, 2005). Fed. R. Civ. P. 26(d). Mitra v. State Bank of India, 2005 U.S. Dist. LEXIS 19138, at *26. See United States CFTC v. Rodriguez, No. 06 CV 0855, 2006 U.S. Dist. LEXIS 13773, *3 (S.D.N.Y. Feb. 3, 2006); Mitra, 2005 U.S. Dist. LEXIS 19138, at *26 (noting that

407

408 Appendix G Memorandum of Law in Support of Motion for Expedited Discovery “the reasonableness of the request in light of all the surrounding circumstances.”29 Here, the “good cause” requirement is satisfied. Plaintiffs seek limited information to ascertain the defendants’ identities in order to serve them with the complaint and conduct a meet and confer. Specifically, plaintiffs seek discovery relating to the identities of defendants from AutoAdmit.com, the University of Virginia, University of North Carolina, Yale University, Microsoft (which owns Hotmail), VLEX, HighBeam Research, GoDaddy, Domains by Proxy, ServInt Internet Services, Embarq, PenTeleData, and AT&T/SBC. These entities are believed to have assigned IP addresses to defendants, to have been used by defendants to send e-mail, or to have IP addresses because defendants have visited their web sites. Plaintiffs also seek documents and deposition testimony from Messrs. Cohen, Ciolli and Mariner because plaintiffs believe that these individuals know the identities of some of the defendants and/or for the purposes of determining whether and how name changes of people posting on AutoAdmit apply retroactively and are tracked.30 Plaintiffs’ considerable efforts to identify the defendants without the benefit of legal process have not been successful.31 These circumstances more than justify a subpoena. Without knowledge of the defendants’ identities, this action simply cannot proceed. In this case, just as in Sony Music Entertainment v. Does 1-40,32 where the plaintiffs sought the identity of copyright infringers, “[a]scertaining the identities and residences of the Doe defendants is critical to plaintiffs’ ability to pursue litigation, for without this information, plaintiffs will be unable to serve process.”33

29. 30.

31.

32. 33.

“[a]lthough [Rule 26(d)] does not say so, it is implicit that some showing of good cause should be made to justify” an order providing relief from the federal rules). Ayyash v. Bank Al-Madina, 233 F.R.D. 325, 327, 2005 U.S. Dist. LEXIS 14276 (S.D.N.Y. July 12, 2005) (citations omitted). Posters on the AutoAdmit site are sometimes “outed” for a brief period of time before the outing information is removed. It is believed that the outing information is removed by, or at the direction of the moderators of the AutoAdmit.com board and that therefore they may have knowledge of some of the defendants’ identities. Mitra Decl. ¶ 7. The subpoenas that plaintiffs seek are attached as Exhibit K to the Mitra Declaration. The subpoenas reflect the information currently known by plaintiffs. Plaintiffs request that the Court permit them to supplement the subpoenas as necessary, as new information becomes available. 326 F. Supp. 2d 556 (S.D.N.Y. 2004). Sony, 326 F. Supp.2d at 566 (emphasis added). The Circuit Court of Virginia recognized in a case involving anonymous defamatory and confidential information, that, disallowing discovery leading to the identity of the people who posted, “would leave [plaintiffs] virtually defenseless to this potentially virulent hazard.” In re Subpoena Duces Tecum to America Online, Inc., 52 Va. Cir. 26, 2000 Va. Cir. Lexis 220, No. 40570, at **21-22 (Va. Cir: Ct. Jan 31, 2000), rev’d on other grounds, American Online, Inc. v. Anonymous Publicly Trader Co., 261 Va. 350, 542 S.E.2d 377 (Va. 2001).

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery As noted above, plaintiffs have made every attempt to notify defendants of this action and that they are the subject of a lawsuit, meeting or exceeding the guidelines established by recent case law involving anonymous defendants. In John Doe No. 1 v. Cahill,34 the court noted: [T]o the extent reasonably practicable under the circumstances, the plaintiff must undertake efforts to notify the anonymous poster that he is the subject of a subpoena or application for order of disclosure. The plaintiff must also withhold action to afford the anonymous defendant a reasonable opportunity to file and serve opposition to the discovery request. Moreover, when a case arises in the internet context, the plaintiff must post a message notifying the anonymous defendant of the plaintiffs discovery request on the same message board where the allegedly defamatory statement was originally posted.35 Similarly, in Dendrite Intern., Inc. v. Doe No. 3,36 the court stated: [P]laintiff [should] undertake efforts to notify the anonymous posters that they are the subject of a subpoena or application for an order of disclosure, and withhold action to afford the fictitiously-named defendants a reasonable opportunity to file and serve opposition to the application. These notification efforts should include posting a message of notification of the identity discovery request to the anonymous user on the ISP’s pertinent message board.37 Here, plaintiffs have more than complied with the letter and spirit of these requirements—having expended considerable resources and time in repeated attempts to contact parties who may have identifying information regarding defendants, as well as posting notices on AutoAdmit.com asking defendants to come forward and identify themselves.38 Plaintiffs will also post notice of this motion on the AutoAdmit board so that defendants have an opportunity to contest this motion should they choose to do so.

1. Plaintiffs also meet the heightened standard articulated in Notaro v. Koch for permitting early discovery Some courts within this circuit require the meeting of a more stringent standard, articulated in Notaro v. Koch39 for the purpose of seeking leave from the Court to conduct expedited discovery. Under this standard, plaintiffs are required to establish “(1) irreparable injury, (2) some probability of success on the merits, (3) some connection between the expedited discovery and the avoidance of the irreparable injury, and (4) some evidence that the injury that

34. 35. 36. 37. 38. 39.

884 A.2d 451 (Del. 2005). Id. at 461. 775 A.2d 756 (App. Div. 2001). Id. at 760. Mitra Decl ¶¶ 10-16. 95 F.R.D. 403, 405 (S.D.N.Y. 1982).

409

410 Appendix G Memorandum of Law in Support of Motion for Expedited Discovery will result without expedited discovery looms greater than the injury that the defendant will suffer if the expedited relief is granted.”40 Even though this standard has been disfavored for the “good cause” standard discussed above,41 it is nevertheless easily met and exceeded in the circumstances of this action.

a. Plaintiffs will suffer irreparable injury if this motion is not granted As noted above, plaintiffs are seeking the Court’s leave to conduct formal discovery prior to a meet and confer because, without it, they will be completely stymied in their effort to pursue their legal remedies in court. They will not be able to serve defendants or conduct a meet and confer because defendants have concealed their identities. Plaintiffs will never be able to seek redress for their injuries—which is the very essence of irreparable harm.42

b. Plaintiffs can easily demonstrate far more than “some probability of success on the merits” on each claim in the FAC Under the Notaro standard, plaintiffs are required to demonstrate “some probability of success on the merits[.]”43 Here, each of the causes of action is supported with indisputable and highly pertinent facts. Plaintiffs not only meet the requisite burden, they far surpass it. (i) Plaintiffs are likely to succeed on their libel claim “Libel is defamation of a character usually consisting of the printed word.”44 For liability to attach, the Court must find that the defendants “published false statements that harmed the defendant, and that the defendants were not privileged to do so.”45

40. Notaro, 95 F.R.D. at 405. 41. Ayyash, 233 F.R.D. at 326 (noting that “many recent cases reject Notaro and apply a more flexible ‘good cause’ test”). 42. See, e.g., Gorham v. New Haven, 82 Conn. 153, 157 (Conn. 1909)(“An injury is irreparable when there is no legal remedy furnishing full compensation or adequate redress. . . .”); Consolidated Brands, Inc. v. Mondi, 638 F. Supp. 152, 155 (E.D.N.Y. 1986)(“Irreparable harm is established not only where the injury is actual and imminent but where no adequate legal remedy exists which would redress the harm, therefore mandating the exercise of the Court’s equity powers.”) 43. Notaro, 95 F.R.D. at 405 (emphasis added). 44. Miles v. Perry, 11 Conn. App. 584, 601 n.11, 529 A.2d 199 (1987). 45. Torosyan v. Boehringer Ingelheim Pharmaceuticals, 234 Conn. 1, 27 (Conn. 1995) (citation omitted).

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery Libelous statements that fall into one of four categories—“1) commission of a crime involving moral turpitude; 2) infection with a loathsome disease; 3) incompetence in business, trade or profession, 4) imputation of unchaste character”—comprise libel per se.46 For these categories of statements “the law conclusively presumes the existence of injury to the plaintiff’s reputation. He is required neither to plead nor to prove it. . . . The individual plaintiff is entitled to recover, as general damages, for the injury to his reputation and for the humiliation and mental suffering which the libel caused him.”47 False statements made about DOE I that constitute libel per se include those claiming that she has herpes,48 and that she had a “lesbian affair” with an administrator at Yale Law School.49 False statements about DOE II that constitute libel per se include those claiming that she has “the clap,”50 that she dreamed about being raped by her father,51 that she was “whoring it up” at Yale Law School,52 that she is a “slut,”53 that she liked to have sex with family members watching,54 that she was “into scat,”55 that she engaged in fellatio for a “P” grade in Civil Procedure,56 that she was “slutting out,”57 that she was featured in Playboy,58 and that she was “whoring around like a feral cat” during her first semester of law school.59 These outrageous and damaging statements are false.60 With respect to these statements, no proof of harm is required since they all fall into either the second or fourth category of libel per se discussed above. Therefore, with respect to the defendants who made these statements, their liability is indisputable.

46. Sedlak v. Lotto, NO. CV 92 328128, 1994 Conn. Super. LEXIS 3041, 4-5 (Conn. Super. Ct. Dec. 1, 1994). See also Corbett v. Register Publishing Co., 33 Conn. Supp. 4, 13 (Conn. Super. Ct. 1975). 47. Lega Siciliana Soc. Club, Inc. v. St. Germaine, 77 Conn. App. 846, 852 (Conn. App. Ct. 2003) (citation and internal quotation marks omitted). 48. These statements were posted by “:D” and “ylsdooder” on AutoAdmit, and in an e-mail to the Yale Law faculty sent by “Patrick Zeke” and then posted on AutoAdmit by “lonelyvirgin.” See DOE I Decl. Exs. A at 15, D, G, and H. 49. This statement was posted by “yalelaw.” Id. Ex. E at 37. 50. This statement was posted by posted by “Whamo.” DOE II Decl. Ex. 8 at 18. 51. This statement was posted by “Ugly Women,” also believed to be known as “t14 gunner.” Id. Ex. 5 at 4. 52. This statement was posted by “The Ayatollah of Rock-n-Rollah.” Id. Ex. 9 at 2. 53. This statement was posted by “Dirty Nigger.” Id. Ex. 4 at 1. 54. This statement was posted by “DRACULA.” Id. Ex. 6 at 3. 55. This statement was posted by “Sleazy Z.” Id. Ex. 7. 56. This statement was posted by “Dean _Harold_Koh.” Id. Ex. 11. 57. This statement was posted by “Whamo.” Id. Ex. 8 at 18. 58. This statement was posted by “playboytroll.” Id. Ex. 12. 59. This statement was posted by “yalels2009.” Id. Ex. 8 at 2. 60. See DOE I Decl. ¶¶ 5-6; DOE II Decl. ¶¶ 3-4.

411

412

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery Numerous other statements, may or may not constitute libel per se, but certainly are libelous.61 Statements made against DOE I that constitute libel include false claims that she received a lower than expected LSAT score62 and bribed her way into Yale Law School.63 Statements made against DOE II that constitute libel include false claims that she engaged in “bashing gay people”64 and had checked into a program for heroin use.65 As already noted, these statements have caused DOE I and DOE II severe emotional distress, including stress, anxiety, depression, and insomnia; damaged their reputation; interfered with their work and academic performance; and caused them pecuniary harm.66 Plaintiffs, therefore, have established that they are entitled to relief on the merits of their libel claim. (ii) DOE II is likely to succeed on her claim for copyright infringement.67 [discussion omitted] (iii) Plaintiffs are likely to succeed on the merits of their Invasion of Privacy claims. [discussion omitted] (iv) Plaintiffs are likely to succeed on their Intentional Infliction of Emotional Distress claim. [discussion omitted] (v) Plaintiffs are likely to succeed on their claim for Negligent Infliction of Emotional Distress. [discussion omitted]

61. Plaintiffs reserve the right to argue that these statements also constitute libel per se. 62. This statement was sent in an e-mail to the Yale Law faculty sent by “Patrick Zeke” and then posted on AutoAdmit by “lonelyvirgin.” See DOE I Decl. Ex. G-H. The statement that DOE I received a 159 in her LSAT was also made by made by “STANFORDtroll.” Id. Ex. F. 63. This statement was posted by posted by “lkjhgf.” DOE I Decl. Ex. E at 24-25. 64. This statement was posted by “reminderdood.” DOE II Decl. Ex. 15. 65. This statement was posted by “who is.” Id. Ex. 10. 66. DOE I Decl. ¶¶ 10-17; DOE II Decl. ¶¶ 20, 22-33. 67. This constitutes Claim 1 of the FAC.


c. Connection between irreparable harm and expedited discovery Under Notaro, the party seeking expedited discovery must establish “some connection between the expedited discovery and the avoidance of the irreparable injury.”68 Here, plaintiffs are seeking leave of the Court to conduct formal discovery for a very limited, but important, purpose: to reveal defendants’ identities in order to serve them with the complaint and proceed with this action. The discovery sought is directly connected to the threat of irreparable harm faced by plaintiffs—the inability to seek redress through the courts.

d. Balancing of injury Plaintiffs also must show “that the injury that will result without expedited discovery looms greater than the injury that the defendant will suffer if the expedited relief is granted.”69 Here, the injury that will result without expedited discovery is that plaintiffs will never be compensated for the injuries they have suffered because they will not be able to proceed with this action. Balanced against this is the harm that defendants will suffer from being unmasked as the posters on AutoAdmit and having to defend their conduct in court. There is simply no contest under the facts of this case. While courts recognize a right to “anonymous speech” under the First Amendment,70 this right is not implicated here because the speech at issue does not receive First Amendment protection. (This is discussed in further detail below.) More importantly, however, plaintiffs do not wish to chill anonymous speech on the Internet—including defendants’ speech on AutoAdmit.com. Defendants may continue to speak anonymously as they have in the past. All plaintiffs are doing is asking the Court for leave to conduct discovery that will allow them to seek redress for wrongs that have unquestionably occurred. Under these circumstances, justice would not be served by blocking plaintiffs’ efforts to conduct expedited discovery. Defendants have been able to inflict injury on plaintiffs by hiding behind pseudonyms that concealed their real identities. This Court should not allow the defendants to escape, entirely, the consequences of their actions because they chose to attack plaintiffs in such a cowardly manner. Such a result would be unjust and unfair.

68. Notaro, 95 F.R.D. at 405. 69. Id. 70. See, e.g., United States v. Perez, 247 F. Supp. 2d 459, 461 (S.D.N.Y. 2003).

413

414


B. First Amendment concerns regarding “anonymous speech” are not implicated in this case, but even if they were, plaintiffs have met their burden to unmask the defendants. In certain circumstances where parties have sought discovery regarding the identity of anonymous posters on the Internet, courts have balanced the First Amendment right to “anonymous speech” against plaintiffs’ rights to conduct discovery and have adopted varying standards for uncovering anonymous posters. These standards are easily met in this case. For instance, in In re Subpoena Duces Tecum to America Online, the Virginia Circuit Court held that a subpoena should issue “(1) when the court is satisfied by the pleadings or evidence supplied to that court (2) that the party requesting the subpoena has a legitimate, good faith basis to contend that it may be the victim of conduct actionable in the jurisdiction where suit was filed and (3) the subpoenaed identity information is centrally needed to advance that claim.”71 As discussed in detail above, plaintiffs have more than a legitimate good-faith basis to assert that they are the victims of the claims set forth in the FAC, and early discovery is needed to uncover the defendants’ identities and advance this case. Other courts have set forth more stringent standards for plaintiffs seeking to conduct discovery to uncover anonymous speakers. For example, in Cahill,72 where the plaintiff claiming defamation on the Internet was a public figure, and the speech at issue involved political criticism, the Delaware Supreme Court required that the plaintiff establish the “prima facie case for each essential element of the claim in question.”73 Similarly in Sony v. Does 1-40, a case pitting record companies against anonymous file sharers on the Internet, the district court in the Southern District of New York first noted that the “speech” at issue in file sharing involved “making a statement by downloading and making available to others copyrighted music. . . .”74 After acknowledging that this speech was entitled to some protection, the court looked at various

71. America Online, 52 Va. Cir. at 37. 72. 884 A.2d 451 (Del. 2005). 73. Id. at 457, 463 (citation omitted). The court in Cahill also termed this a “summary judgment standard” but clarified that it would require a defamation plaintiff to “plead and prove facts with regard to elements of the claim that are within his control.” Id. at 463, 464. See also Best Western Inc. v. Doe, No. CV-06-1537, 2006 WL 2091695, at *4 (D. Ariz., July 25, 2006) (agreeing with Cahill and noting that the case required plaintiff to “produce evidence sufficient to establish the plaintiff’s prima facie case”); Sony v. Does 1-40, 326 F. Supp. 2d at 564-65. The court in Cahill stated that the plaintiff could prove its case by submission of “affidavits to substantiate [the defamation] claim.” Cahill, supra at 464. This has been done here. 74. Id. at 564.

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery factors, including whether plaintiffs had made out a prima facie case of copyright infringement.75 Unlike situations where a higher standard may be applicable, the speech at issue in this case does not implicate the First Amendment. “Certain categories of speech such as defamation, incitement [and] obscenity . . . may be barred without trespassing on individual First Amendment rights.”76 Neither does the First Amendment countenance “spreading false information[.]”77 And, it is beyond question that the First Amendment “does not protect copyright infringement[.]”78 Nor are plaintiffs public figures or the speech in question on a matter of public concern. Therefore, the higher standard articulated in Cahill and Sony is not applicable to this case and the Court need not decide the merits of this motion by applying those cases. But even if the Court were to consider these cases applicable, the standards articulated therein have been met here, as the preceding detailed discussion in this memorandum unequivocally demonstrates. Plaintiffs have established— with the evidence to which they have access at this stage—that they are entitled to relief in this case. They have certainly have established their prima facie case.

C. The Court should consider this motion on an expedited basis Internet Service Providers, and the other entities that plaintiffs seek identifying information from, delete such information at varying intervals.79 Plaintiffs have sent out preservation letters to numerous entities that they now seek to subpoena through this motion.80 Plaintiffs have learned, in the process, that some of the information they seek may already have been deleted, as part of the deletion policy of an Internet Service Provider.81 Plaintiffs’ investigation, in light of the discovery sought in this motion, will undoubtedly reveal additional gaps in information that may be filled by other entities, but that may well be

75. See id. at 565. The other factors considered by the Court in Sony included specificity of the discovery request, absence of alternative means to obtain subpoenaed information, central need for subpoenaed information, and defendants expectation of privacy. Here, all of these factors have been satisfied as the discussion relating to the Notaro factors amply shows. 76. United States v. Irving, 452 F.3d 110, 120 (2d Cir. 2006) (emphasis added). 77. In re Baxter, No. 01-00026-M, 2001 U.S. Dist. LEXIS 26001, at *24 (W.D. La. December 20, 2001). 78. Sony, 326 F. Supp. 2d at 562-563 at 562-63. 79. Mitra Decl. ¶19. 80. Id. Ex. F. 81. Id. ¶19, Ex. H (PenTeleData letter).

415

416

Appendix G Memorandum of Law in Support of Motion for Expedited Discovery subject to the ongoing threat of deletion.82 Plaintiffs therefore request that the Court consider the merits of this motion on an expedited basis so that they are able to get access to any additional information they need to identify defendants before it is deleted.

IV. CONCLUSION For all of the foregoing reasons, this Court should grant plaintiffs Motion for Expedited Discovery.83 Dated: January 24, 2008

PLAINTIFFS DOE I AND DOE II By: /s/ Steve Mitra Mark Lemley (pro hac vice) Ashok Ramani (pro hac vice) Steve Mitra (pro hac vice) KEKER & VAN NEST, LLP 710 Sansome Street San Francisco, CA 94111 Telephone: (415) 391-5400 Facsimile: (415) 397-7188 Email: [email protected] [email protected] [email protected] David N. Rosen David Rosen & Associates PC 400 Orange Street New Haven, CT 06511 Telephone: (203) 787-3513 Facsimile: (203) 789-1605 Email: [email protected]

82. Such information could include, for instance, the identities of persons whose assigned IP addresses are identified through discovery allowed under this motion. 83. In this motion and in the subpoenas attached as Exhibit K to the Mitra Declaration, Plaintiffs have listed the entities and persons that, to their knowledge, potentially have information relating to the defendants’ identities Plaintiffs ask the Court to allow them to conduct additional discovery for the limited purpose of identifying defendants as further information comes to light or as additional investigation sheds light on existing information.

APPENDIX

H Best Practice for the Seizure of Electronic Evidence

DISCOVERY OF COMPUTER OR DIGITAL EQUIPMENT TO BE SEIZED

SECURE SCENE AND MOVE PEOPLE AWAY FROM THE EQUIPMENT AND ANY POWER SUPPLY

No IS THE EQUIPMENT SWITCHED ON?

Yes IS EXPERT ADVICE AVAILABLE?

No

DO NOT TOUCH THE KEYBOARD DO NOT TAKE ADVICE FROM THE OWNER/USER

Yes FOLLOW THE ADVICE

PHOTOGRAPH OR MAKE NOTE OF WHAT IS ON THE SCREEN

ALLOW PRINTER TO COMPLETE RUN

UNDER NO CIRCUMSTANCES SWITCH ON THE COMPUTER

LABEL AND PHOTOGRAPH OR VIDEO THE COMPONENTS IN SITU

Handle all equipment with care

REMOVE ALL OTHER CONNECTION CABLES LEADING TO WALL SOCKETS OR OTHER DEVICES

Keep all equipment away from magnetic sources such as loudspeakers, heated seats/windows or police radios

CAREFULLY PACKAGE AND REMOVE THE EQUIPMENT RECORDING ALL DETAILS ON THE SEARCH FORM

Transport

REMOVE THE POWER CABLES FROM THE TARGET EQUIPMENT DO NOT SWITCH OFF AT WALL What should be seized

ENSURE THAT ALL THE COMPONENTS HAVE EXHIBIT LABELS ATTACHED

For reconstruction of the system: Main Unit – usually the box to which the keyboard and monitor are attached Monitor Keyboard and mouse All leads (including power cables) Power Supply Units Hard Disks – not fitted inside the computer Dongles (small connectors plugged into the back of the machine, usually in socket marked PRINTER or LPT1) Modems (some contain phone numbers)

Transport monitors face down on the back seat of car (belted in) Place personal organizers and palmtop computer in paper envelopes

SEARCH AREA FOR DIARIES, NOTEBOOKS OR PIECES OF PAPER WITH PASSWORDS ON

For retrieval of evidence: Floppy Disks, CDs, DAT Tapes, Jaz cartridges and ZIP cartridges PCMCIA cards Hard Disks not connected to the computer

Place keyboards, leads, mouse and modems in aerated bags. Do not place under heavy objects.

ASK THE USER IF THERE ARE ANY PASSWORDS AND RECORD THESE

Place hard disks and circuit boards in anti-static bags Do not bend floppy disks or place labels directly on them

To assist with the examination:

SUBMIT EQUIPMENT FOR FORENSIC EXAMINATION IN ACCORDANCE WITH SERVICE POLICY

417

Manuals and computer software Paper with passwords on Keys For comparison of printouts: Printers Printouts and Printer Paper

418 Appendix H Best Practice for the Seizure of Electronic Evidence

SECURE SCENE AND MOVE PEOPLE AWAY FROM THE PDA No

IS THE PDA SWITCHED ON?

PALM OS has three modes of operation: SLEEP mode – power trickles to ROM and RAM DOZE mode – power medium flow to ROM and RAM Encryption can be activated in the Doze mode RUNNING MODE – processor actively functioning

Seize all other associated PDA items such as: Expansion cards & packs Cases-may contain Aerials etc

Yes IS EXPERT ADVICE AVAILABLE?

UNDER NO CIRCUMSTANCES SWITCH ON THE PDA

No

PHOTOGRAPH OR MAKE NOTE OF WHAT IS ON THE SCREEN

SEIZE POWER LEADS AND CRADLE CHANGE BATTERIES NEW FOR OLD (normally AAA or AA and CR2032 batteries)

SET PDA IN CRADLE PENDING EXAMINATION FOLLOW THE ADVICE AVOID ENCRYPTION ACTIVATION BY KEEPING PDA IN RUNNING MODE (by tapping on a blank section of the screen) UNTIL EXPERT ADVICE IS AVAILABLE

SEIZE POWER LEADS AND CRADLE

SET PDA IN CRADLE PENDING EXAMINATION

LABEL, RECORD AND CAREFULLY PACKAGE PDA

SUBMIT PDA FOR FORENSIC EXAMINATION IMMEDIATELY IN ACCORDANCE WITH SERVICE POLICY

Table of Cases

A & F Trademark, Inc. v. Jorgensen, Case No. D2001-0900 (WIPO Sept. 19, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n46 AARP v. Elec. Mktg. Serv. c/o Tammy Gloe, No. 366129 (NAF Jan. 3, 2005). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89, 90n41 AARP v. jg aka Josh Green, ICANN 244742 (NAF May 4, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n41, 91n49 ACLU v. Reno, 929 F. Supp. 824 (E.D. Pa. 1996), aff ’d, 521 U.S. 844 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n17 ACLU of N.M. v. Morales/e:bOOm, S.A., Case No. D2004-0473 (WIPO Aug. 23, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n38 Action Instruments, Inc. v. Tech. Assocs., Case No. D2003-0024 (WIPO Mar. 6, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n76, 99n85 ADT Servs. AG v. ADTSucks.com, Case No. D2001-0213 (WIPO Apr. 23, 2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n46 Advance Magazine Publishers Inc. v. Vanilla Ltd., Case No. D2004-1068 (WIPO Apr. 18, 2005). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94n66 AeroGlobal Capital Mgmt., LLC v. Cirrus Indus., 871 A.2d 428 (Del. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 188n149 A.H. Belo Corp. v. King TV, Case No. D2000-1336 (WIPO Dec. 8, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n85 Aitken v. Communc’ns Workers of Am., 496 F. Supp. 2d 653 (E.D. Va. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .207, 207n225 ALS Scan, Inc. v. Digital Serv. Consultants, 293 F.3d 707 (4th Cir. 2002), cert. denied, 537 U.S. 1105 (2003) . . . . . . . . . . . . . . . 49n148, 49n150 ALS Scan v. RemarQ Communities, 239 F.3d 619 (4th Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .175–176, 179 Amberson Holdings LLC v. Westside Story Newspaper, 110 F. Supp. 2d 332 (D.N.J. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n165, 52n168 American Broad. Cos., Inc. v. Sech, Case No. FA 893427 (NAF Feb. 28, 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 93n58 American Express Co. v. Suhendro, Case No. FA 129120 (NAF Dec. 30, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92n53 American Libraries Ass’n v. Pataki, 969 F. Supp. 160 (S.D.N.Y. 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200–201, 200n191 America Online, Inc. v. AOL.org, 259 F. Supp. 2d 449 (E.D. Va. 2003) . . . . . . . . . . . . 38 America Online, Inc. v. Huang, 106 F. Supp. 2d 848 (E.D. Va. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n159, 51n165

419

420 Table of Cases Am. Online, Inc., In re Subpoena Duces Tecum to 52 Va. Cir. 26 (2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 189–190, 189n156, 192 AOL v. Anonymous Publicly Trader Co., 542 S.E.2d 377 (Va. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 189n156 AOL v. Gerberg, Case No. FA 780200 (NAF Sept. 25, 2006). . . . . . . . . . . . . . . . . . 91n50 Arab Bank for Inv. & Foreign Trade v. Akkou, Case No. D2000-1399 (WIPO Dec. 19, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n93 Arista Records, Inc. v. Sakfield Holding Co., 314 F. Supp. 2d 27 (D.D.C. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49n149 Arthur Guinness Son & Co. (Dublin) v. Healy/BOSTH, Case No. D2001-0026 (WIPO Mar. 23, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89n39 Asahi Metal Indus. Co. v. Super.Ct., 480 U.S. 102 (1987) . . . . . . . . . . . . . 37n61, 37n63 Associated Newspapers Ltd. v. Domain Manager, Case No. FA 201976 (NAF Nov. 19, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98n81 AST Sportswear, Inc. v. Hyken, Case No. D2001-1324 (WIPO Mar. 26, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94n63 The Atlantic Paranormal Soc’y v. Domain Admin., Case No. FA 1242901 (NAF Mar. 5, 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n36 Atlas Capco AB v. AtlasCopcoiran.com, No. 07-1208, 2008 WL 149128 (E.D. Va. Jan. 8, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38 Australian Gold, Inc. v. Hatfield, 436 F.3d 1228 (10th Cir. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .119n142, 126–127, 131, 131n197 Australian Trade Comm’n v. Reader, Case No. D2002-0786 (WIPO Nov. 12, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n36 A.V. v. iParadigms, 544 F. Supp. 2d 473 (E.D. Va. Mar. 11, 2008) . . . . . . . . . . . . 144n234 Avnet, Inc. v. Aviation Network, Inc., Case No. D2000-0046 (WIPO Mar. 24, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101n96 Ayyash v. Bank Al-Madina, 233 F.R.D. 325 (S.D.N.Y. 2005) . . . . . . . . . . . .187–188, 192 BAE Aircraft Sys. v. Eclipse Aviation Corp., 224 F.R.D. 581 (D. Del. 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n139 Bancroft & Masters, Inc. v. Augusta Nat’l, Inc., 223 F.3d 1082 (9th Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n110, 50n157 Bank of Am. Corp. v. Nw. Free Cmty. Access, Case No. FA 180704 (NAF Sept. 30, 2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n83 Batzel v. Smith, 333 F.3d 1018 (9th Cir. 2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166n26 Bayer Corp. v. Custom Sch. Frames, LLC 259 F. Supp. 2d 503 (E.D. La. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128, 133n206, 135n218 Bayer Healthcare LLC, v. Nagrom, Inc., 72 U.S.P.Q.2d 1751 (D. Kan. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 127n176 Benusan Rest. Corp. v. King, 937 F. Supp. 295 (S.D.N.Y. 1996), aff ’d, 126 F.3d 25 (2d Cir. 1997) . . . . . . . . . . . . . . . . . . . . . . 30n15, 40, 40n76, 48n145 Bernina of Am., Inc. v. Fashion Fabrics Int’l, 57 U.S.P.Q.2d 1881 (N.D. Ill. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .114n132, 131n197, 132, 132n198 Best Van Lines v. Walker, 490 F.3d 239 (2d Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .36n48, 41n90, 47n139, 48n141 Best W. Int’l v. Doe, Case No. CV-06-1537, 2006 U.S. Dist. LEXIS 77942 (D. Ariz. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 188n151, 190n160

Table of Cases 421 Bihari v. Gross, 119 F. Supp. 2d 309 (S.D.N.Y. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n142, 130n194, 133n202 Bijur Lubricating Corp. v. Devco Corp., 332 F. Supp. 2d 722 (D.N.J. 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 124n168, 130, 133n200 BlackRock v. Schroders PLC, Case No. 07 Civ. 3183, 2007 U.S. Dist. LEXIS 39279 (S.D.N.Y. 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n139 Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240 (W.D. Wash. 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142n229 Blumenthal v. Drudge, 992 F. Supp. 44 (D.D.C. 1998) . . . . . . . . . . . . . . . . . . . . . . 47n138 Board of Trade v. Dow Jones & Co., 98 Ill. 2d 109 (1983) . . . . . . . . . . . . . . . . . . 147n247 Bochan v. LaFontaine, 68 F. Supp. 2d 692 (E.D. Va. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .32n23, 47n139, 48n142, 52n168 Boschetto v. Hansing, 539 F.3d 1011 (9th Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . 50n153 Bosley Med. Group v. Kremer, Case No. D2000-1647 (WIPO Feb. 28, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n76 Bosley Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005). . . . . . . . . . . . . . . . . . . . . . 110 Boston Duck Tours, LP v. Super Duck Tours, LLC, 527 F. Supp. 2d 205 (D. Mass. 2007), rev’d, 531 F.3d 1 (1st Cir. 2008). . . . . . . . . . . . . . . . . . . . . . . . 122n158 Brannock Device Co. v. ABC Indus., Inc., Case No. 5:04-CV-1300, 2006 U.S. Dist. LEXIS 64661 (N.D.N.Y. 2006). . . . . . . . . . . . . . . . . . . . . . . . . . 119n142 Bridgestone Firestone, Inc. v. Myers, Case No. D2000-0190 (WIPO July 6, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n76 British Nuclear Fuels PLC v. Greenpeace Int’l, Case No. D2001-1318 (WIPO Jan. 10, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . 114n131, 122n154, 125–126, 129n189 BSN Med., Inc. v. Witkowski, Case No. 3:08-CV-00347, 2008 U.S. Dist. LEXIS 95338 (W.D.N.C. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n169 Burger King Corp. v. Rudzewicz, 471 U.S. 462 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29n4, 35n39, 36n55, 37n57, 37n60 Burnham v. Super.Ct., 495 U.S. 604 (1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36n53 Busy Body, Inc. v. Fitness Outlet Inc., Case No. D2000-0127 (WIPO Apr. 22, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89n39 Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310 (D.N.J. 2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n158, 123–124 Caesars World, Inc. v. Caesars-Palace.Com, 112 F. Supp. 2d 502 (E.D. Va. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n163 Cahill; Doe v., 884 A.2d 451 (Del. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . 181n107, 182–183, 182n110, 184, 188n145 Calcar, Inc. v. Future Media Architects, Inc., Case No. FA 1080147 (NAF Nov. 6, 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112n129 Calder v. Jones, 465 U.S. 783 (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .37n62, 46–48 Caravan Club v. Mrgsale, Case No. FA 95314 (NAF Aug. 30, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n89 CCC Info. Serv., Inc. v. MacLean Hunter Mkt. Reports, 44 F.3d 61 (2d Cir. 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 146 CD Solutions, Inc. v. Tooker, 15 F. Supp. 2d 986 (D. Or. 1998). . . . . . . . . . . . . . . . . . 109

422

Table of Cases Central Hudson Gas & Elec. Co. v. Pub. Serv. Comm’n, 447 U.S. 557 (1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .204–205, 214 CFTC v. Rodriguez, Case No. 06-CV-0855, 2006 U.S. Dist. LEXIS 13773 (S.D.N.Y. Feb. 3, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 192 Chamilia, LLC v. Pandora Jewelry, LLC, 85 U.S.P.Q.2d 1169 (S.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75n8 Chaplinsky v. New Hampshire, 315 U.S. 568 (1942) . . . . . . . . . . . . . . . . . . . . . . 186n133 Chicago Lawyers’ Comm. for Civil Rights Under Law v. Craigslist, Inc., 519 F.3d 666 (7th Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166n26 Chi-Chi’s, Inc. v. Rest. Commentary, Case No. D2000-0321 (WIPO June 29, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91n47 Cianci v. New York Times Publ’g Co., 639 F.2d 54 (2d Cir. 1980) . . . . . . . . . . . . . 163n6 Ciolli; Doe I v., 561 F. Supp. 2d 249 (D. Conn. 2008) . . . . . . . . . 180n103, 181, 185n122 Citgo Petroleum Corp. v. Antinore, Case No. D2006-1576 (WIPO Mar. 14, 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n78 Citigroup, Inc. v. City Holding Co., 97 F. Supp. 2d 549 (S.D.N.Y. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n111 Citigroup, Inc. v. Shui, 611 F. Supp. 2d 507 (E.D. Va. 2009) . . . . . . . . . . . . . . . . 103n102 Coca-Cola Co. v. Purdy, 382 F.3d 774 (8th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 81n21, 103n102, 104n106 Columbia Ins. Co. v. Seescandy.Com, 185 F.R.D. 573 (N.D. Cal. 1999). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190n161 Compagnie Generale Des Etablissements Michelin—Michelin & Cie. v. Graeme Foster, Case No. D2004-0279 (WIPO May 25, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n44 CompuServe, Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996) . . . . . . . . . . . . . . . . . . . . 41 Consorzio del Prosciutto di Parma v. Gasser, Hanslmeier Fleischwarenfabrik, Case No. 2003-0474 (WIPO Aug. 15, 2003). . . . . 95n70, 95n71 Cooley v. Bd. of Wardens, 53 U.S. 299 (1851) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200n189 Coppertown Drive-Thru Sys., LLC v. Snowden, Case No. FA 715089 (NAF July 17, 2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94n62 Cox; United States v., 190 F. Supp. 2d 330 (N.D.N.Y. 2002) . . . . . . . . . . . . . . . . . 177n95 Cross Media Mktg. Corp. v. Nixon, 06 Civ. 4228, 2006 U.S. Dist. LEXIS 56112 (S.D.N.Y. Aug. 11, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149 Crown Crafts, Inc. v. Aldrich, 148 F.R.D. 151 (E.D.N.C. 1993) . . . . . . . . . . . . . 187n139 Cubby, Inc. v. CompuServe, Inc., 776 F. Supp. 135 (S.D.N.Y. 1991). . . . . . . . . . . . . . 163 Curt Mfg. v. Sabin, Case No. FA 1220025 (NAF Sept. 23, 2008) . . . . . . . . . . . . . . 96n73 Cybersell, Inc. v. Cybersell, Inc., 130 F.3d 414 (9th Cir. 1997) . . . . . . . . . . . . . . . 48n145 DaimlerChrysler v. Net Inc., 388 F.3d 201 (6th Cir. 2004) . . . . . . . . . . . . . . . . . 103n103 Darden v. Peters, 402 F. Supp. 2d 638 (E.D.N.C. 2005), aff ’d, 488 F.3d 277 (4th Cir. N.C. 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 142n229 DCI S.A. v. Link Commercial Corp., Case No. D2000-1232 (WIPO Dec. 7, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n92 Dell Computer Corp. v. Got Domain Names For Sale, Case No. D2000-0659 (WIPO Aug. 15, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . 93n59 Dell Inc. v. Innervision Web Solutions, Case No. 445601 (NAF May 23, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n77, 111n128

Table of Cases 423 Dendrite Int’l, Inc. v. Doe, 342 N.J. Super. 134 (N.J. Super. Ct. App. Div. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .186n134, 188n148, 190n158, 192 Designer Skin, LLC v. S & L Vitamins, Inc., 560 F. Supp. 2d 811 (D. Ariz. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128n183 Desotec N.V. v. Carbons AB, Case No. D2000-1398 (WIPO Dec. 21, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92n53 Digital Equip. Corp. v. Altavista Tech., Inc., 960 F. Supp. 456 (D. Mass. 1977) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .30n7, 40n75 Diners Club Int’l Ltd. v. Infotechnics Ltd., Case No. FA169085 (NAF Aug. 20, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n73 Disney Enters. Inc. v. Meyers, Case No. FA 697818 (NAF June 26, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n89 Doe v. See name of opposing party Does 1–10, In re, 242 S.W.3d 805 (Tex. App. Texarkana 2007). . . . . . . . . . . . . . 188n151 Dominos Pizza PMC v. Caribbean Rhino, 453 F. Supp. 2d 998 (E.D. Mich. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n153 Dow Jones & Co. v. Gutnick, [2002] HCA. . . . . . . . . . . . . . . . . . . . . . 56, 61–63, 62n195 Drexel Univ. v. Brouda, Case No. D2001-0067 (WIPO Mar. 20, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94n64 Dudnikov v. Chalk & Vermilion Fine Arts, 514 F.3d 1063 (10th Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35n44, 37n59 DVD Copy Control Ass’n v. Bunner, 10 Cal. Rptr. 3d 185 (Cal. Ct. App. 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n255 E & J Gallo Winery v. Spider Webs Ltd., 286 F.3d 270 (5th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 105n111 EDIA Software Int’l v. Basis Int’l, Ltd., 947 F. Supp. 413 (D. Ariz. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39n74, 47n138 Edina Realty, Inc. v. The MLSOnline.com, 80 U.S.P.Q.2d 1039 (D. Minn. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n196 800-JR Cigar, Inc. v. GoTo.Com, Inc. 437 F. Supp. 2d 273 (D.N.J. 2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .123–124, 127 Elektra Entm’t Group, Inc. v. Does 1–9, Case No. 04 Civ. 2289, 2004 U.S. Dist. LEXIS 23560 (S.D.N.Y. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190n162 Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000) . . . . . . . . 128n182 Ellison v. Robertson, 357 F.3d 1072 (9th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . 176 Enfinger Dev., Inc. v. Montgomery, Case No. FA 370918 (NAF Feb. 16, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n36 EPA European Pressphoto Agency B.V. v. Wilson, Case No. D2004-1012 (WIPO Feb. 9, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n86 E.W. Scripps Co. v. Sinologic Indus., Case No. D2003-0447 (WIPO July 1, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75n6 Ezra v. Am. Online, Inc., 206 F.3d 980 (10th Cir. 2000). . . . . . . . . . . . . . . . . . . . . 166n26 Faegre & Benson, LLP v. Purdy, 447 F. Supp. 2d 1008 (D. Minn. 2006) . . . . . 130n196, 134n208 Fair Housing Council of San Fernando v. Roommates.com, 521 F.3d 1157 (9th Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166–167

424 Table of Cases Fair Isaac Corp. v. Experian Info. Solution, Inc., Civ. No. 06-4112, 2009 U.S. Dist. LEXIS 64022 (D. Minn. 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n169 Fannie Mae Derivative Litig., In re, 227 F.R.D. 142 (D.D.C. 2005). . . . . . . . . . . 187n139 FC Inv. Group v. IFX Mkts., Ltd., 529 F.3d 1087 (D.C. Cir. 2008) . . . . . . . . . . . . 44n110 Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). . . . . . . . . . . . . . . 146n241 Feldman v. Google, Inc., 513 F. Supp. 2d 229 (E.D. Pa. 2007). . . . . . . . . . . . . . . . . 31n16 Ferber; United States v., 966 F. Supp. 90 (D. Mass. 1997) . . . . . . . . . . . . . . . . . . . 225n64 Ferguson v. Friendfinders, 94 Cal. Ct. App. 1255 (2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200–201, 200n193, 201n197 Financial Express LLC v. Nowcom Corp., 564 F. Supp 2d 1160 (C.D. Cal. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n153, 127n177 Financial Info., Inc. v. Moody’s Investors Serv., Inc. 808 F.2d 204 (2d Cir. 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 146 Fitgers On-the-Lake, LLC v. Fitger Co., LLC, Case No. 07-CV-54687, 2007 U.S. Dist. LEXIS 93378 (D. Minn. 2007). . . . . . . . . . . . . . . . . . . . . .133, 133n205 Flexible Benefits Council v. Feltman, Case No. 1:08-CV-371, 2009 U.S. Dist. LEXIS 40686 (E.D. Va. 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . 105n116 Flow Control Indus. v. AMHI, Inc., 278 F. Supp. 2d 1193 (W.D. Wash. 2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128n183 Ford Motor Co. v. Catalanotte, 342 F.3d 543 (6th Cir. 2003) . . . . . . . . . . . . . . . 105n108 Ford Motor Co. v. Greatdomains.com, Inc., 177 F. Supp. 2d 635 (E.D. Mich. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n103 Forte Commc’ns, Inc. v. Serv. for Life, Case No. D2004-0613 (WIPO Sept. 22, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n85 FragranceNet.com, Inc. v. FragranceX.com, Inc., 493 F. Supp. 2d 545 (E.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n142 France Manche v. Cimagotipo S.L., Case No. D2001-0771 (WIPO Aug. 6, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n85 Freedman v. Am. Online, Inc., 412 F. Supp. 2d 174 (D. Conn. 2005) . . . . . . . . . 177n95 Friendfinder Network, Inc.; Doe v., 540 F. Supp. 2d 288 (D.N.H. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 167n34 FTC v. See name of opposing party Gannet Co. v. Chan, Case No. D2004-0117 (WIPO Apr. 8, 2004) . . . . . . . . . . . . . 90n43 Garden of Life, Inc. v. Letzer, 318 F. Supp. 2d 946 (C.D. Cal. 2004). . . . . . . . . . 103n105 Gardline Surveys Ltd. v. Domain Fin. Ltd., Case No. FA 153545 (NAF May 27, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89n39 Gator.com Corp. v. L.L. Bean, Inc., 341 F.3d 1072 (9th Cir. 2003), vacated, 366 F.3d 789 (9th Cir. 2004), dismissed on reh’g, 398 F.3d 1125 (9th Cir. 2005) (en banc) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44–45 General Bd. of Global Ministries of the United Methodist Church v. Cablevision Lightpath, Case No. CV 06-3669, 2006 U.S. Dist. LEXIS 86826 (E.D.N.Y. 2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190n162 General Motors Corp. v. Tracy, 519 U.S. 278 (1997) . . . . . . . . . . . . . . . . . . . . . . 199n187 Gershwin Publ’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159 (2d Cir. 1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 170n61 GlobalSantaFe Corp. v. Globalsantafe.com, 250 F. Supp. 2d 610 (E.D. Va. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38

Table of Cases 425 Global Telemedia Int’l, Inc. v. Doe 1, 132 F. Supp. 2d 1261 (C.D. Cal. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 183nn114–115 Google Inc. v. Am. Blind & Wallpaper Factory, Inc., Case No. C 03-5340, 2007 U.S. Dist. LEXIS 32450 (N.D. Cal. 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n153 Gordon v. Virtumundo, Case No. 06-0204, 2007 U.S. Dist. LEXIS 55941 (W.D. Wash. 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 207 Gorman v. Ameritrade Holding Corp., 293 F.3d 506 (D.C. Cir. 2002) . . . . . . . . . 30n11 Government Employees Ins. Co. v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 117n136, 123, 134 Great Plains Metromall, LLC v. Creach, Case No. FA 97044 (NAF May 18, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n36 Green v. Am. Online, Inc., 318 F.3d 465 (3d Cir. 2003) . . . . . . . . . . . . . . . . . . . . . 166n26 Gregerson v. Vilana Fin., Inc., Civ. Action No. 06-1164, 2006 U.S. Dist. LEXIS 81731 (D. Minn. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . 129n189, 133n202 Grotrian v. Steinway & Sons, 365 F. Supp. 707 (S.D.N.Y. 1973) . . . . . . . . . . . . . 125n170 Grupo Picking Pack, S.A. v. Moran, Case No. D2000-1220 (WIPO Dec. 18, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 GTE Corp.; Doe v., 347 F.3d 655 (7th Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . 166n26 GTE New Media Serv. v. BellSouth Corp., 199 F.3d 1343 (D.C. Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n154, 52n169 Gucci Am., Inc. v. Daffy’s, Inc., Civil Action No. 00-4463, 2000 U.S. Dist. LEXIS 16714 (D.N.J. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n139 Guinness UDV N. Am., Inc. v. UKJENT, Case No. D2001-0684 (WIPO Aug. 9, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91n48, 109n119 Hambrick; United States v., 55 F. Supp. 2d 504 (W.D. Va. 1999), aff ’d, 225 F.3d 656 (4th Cir. 2000), cert. denied, 531 U.S. 1099, 121 S. Ct. 832, 148 L. Ed. 2d 714 (2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 177n95 Hamptons Locations, Inc. v. Rubens, Case No. 01-CV-5477, 2009 U.S. Dist. LEXIS 46856 (E.D.N.Y. 2009). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102n98 Hamzik v. Zale Corp./Del., Case No. 3:06-CV-1300, 2007 U.S. Dist. LEXIS 28981 (N.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .119n142, 134 Handelskwekerij G.J. Bier v. Mines de Potasse d’Alsace S.A., [1978] QB78 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 62n197 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, Case No. FA 741828 (NAF Aug. 18, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91n50 Hanson v. Deckla, 357 U.S. 235 (1958). . . . . . . . . . . . . . . . . . . . . . . 31n19, 37n56, 39n69 Harcourt, Inc. v. Fadness, Case No. FA 95247 (NAF Sept. 8, 2000) . . . . . . . . . . . . 99n86 Harper & Row, Publishers Inc. v. Nation Enter., 471 U.S. 539 (1985). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n233 Harris v. Balk, 198 U.S. 215 (1905) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38n65 Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n101 Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214 (4th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n164 HCS Misco v. Caturegli, Case No. D2000-1438 (WIPO Jan. 29, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n38

426

Table of Cases Healix Infusion Therapy, Inc. v. Murphy, Civ. Action No. H-08-0337, 2008 U.S. Dist. LEXIS 67723 (S.D. Tex. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . 105n110 Hearts on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n169 Helicopteros Nacionales de Colombia v. Hall, 466 U.S. 408 (1984) . . . . . . . . . . . . 36n50 Henry L. Doherty & Co. v. Goodman, 294 U.S. 623 (1935) . . . . . . . . . . . . . . . . . . 34n33 HER, Inc. v. Re/Max First Choice, LLC, Case No. 2: 06-CV-492, 2008 U.S. Dist. LEXIS 40164 (S.D. Ohio 2008) . . . . . . . . . . . . . . . . . . . . . . . . . 111n128 Heroes, Inc. v. Heroes Found., 958 F. Supp. 1 (D.D.C. 1996) . . . . . . . . . . . . . . . . . 39n74 Hess v. Pawloski, 274 U.S. 352 (1927). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34n32 Hewlett-Packard Co. v. High Performance Networks, Inc., Case No. FA 95083 (NAF July 31, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95n67 Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036 (9th Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 129n189 Humane Soc’y of U.S. v. Amazon, Civil Action No. 07-623, 2007 U.S. Dist. LEXIS 31810 (D.D.C. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n139 Hy Cite Corp. v. Badbusinessbureau.com, LLC, 297 F. Supp. 2d 1154 (W.D. Wis. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42n96 Hypertouch v. Kennedy-Western Univ., Case No. No. C 04-05203, 2006 U.S. Dist. LEXIS 14673 (N.D. Cal. Mar. 8, 2006) . . . . . . . . . . . . . . . . . . . . . . . 207 Hysitron, Inc. v. MTS Sys. Corp., Civ. No. 07-01533, 2008 U.S. Dist. LEXIS 58378 (D. Minn. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n169 Inconnu Lodge v. Commbine.com, LLC, 214 F. Supp. 2d 1204 (D. Utah 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n157 IndyMac Bank FSB. v. Case No. Ebeyer, Case No. FA 175292 (WIPO Sept. 19, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92n56 In re. See name of party Inset Sys., Inc. v. Instruction Set, Inc., 937 F. Supp. 161 (D. Conn. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .39, 51n159 Insurance Corp. of Ireland v. Compagnie des Bauxites, 456 U.S. 694 (1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 29n3 International Harvester Co. v. Kentucky, 234 U.S. 579 (1914) . . . . . . . . . . . . . . . . 34n31 International Profit Ass’n v. Paisola, 461 F. Supp. 2d 672 (N.D. Ill. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n169 International Shoe Co. v. Wash., 326 U.S. 310 (1945) . . . . . . . . . . . . . . . . .34–35, 36n54 Interstellar Starship Serv. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 77n14 Irish Lesbian and Gay Org. v. Guiliani, 918 F. Supp. 728 (S.D.N.Y. 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n139 ISI Brands v. KCC Int’l, Inc., 458 F. Supp. 2d 81 (E.D.N.Y. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30n7, 48n146 ISL Mktg. AG v. Chung, Case No. D2000-0034 (WIPO Feb. 18, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89n40 Jackson; United States v., 208 F.3d 633 (7th Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 220–221, 220n30, 221n36, 224n60 Jacobellis v. Ohio, 378 U.S. 184 (1964) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 197n176

Table of Cases 427 Janus Int’l Holding Co. v. Rademacher, Case No. D2002-0201 (WIPO Mar. 5, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87n35 J.G. Wentworth, S.S.C. L.P. v. Settlement Funding LLC, 85 U.S.P.Q.2d 1780 (E.D. Pa. 2007) . . . . . . . . . . . . . . . . . . . . . . 122n158, 123–124, 128, 128n186, 135n216 Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Xindong, Case No. D2003-0408 (WIPO July 11, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n45 Kassel v. Consol. Freightways Corp., 450 U.S. 662 (1981) . . . . . . . . . . . . . . . . . . 199n188 Keeton v. Hustler Magazine, 465 U.S. 770 (1984) . . . . . . . . . . . . . . . 29n5, 36n45, 46–48 Kelly v. Arriba Soft Corp., 280 F.3d 934 (9th Cir. 2003). . . . . . . . . . . . . . . . . . . . 144n234 Kennedy; United States v., 81 F. Supp. 2d 1103 (D. Kan. 2000) . . . . . . . . . . . . . . 177n95 Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974) . . . . . . . . . . . . . . . . . . . . 147n251 Kip Cashmore v. URLPro, Case No. D2004-1023 (WIPO Dec. 18, 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 88n37 Kirkland & Ellis LLP v. DefaultData.com, Am. Distribution Sys., Inc., Case No. D2004-0136 (WIPO Apr. 2, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n73 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 129n190 Kulachev v. Gelfman, 600 F. Supp. 2d 437 (E.D.N.Y. 2009). . . . . . . . . . . . . . . . . . . . 75n7 Kulko v. Super.Ct., 436 U.S. 84 (1978) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35n42 Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . 81n21 Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d. 522 (6th Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145n239 Literary Works in Elec. Databases Copyright Litig., In re, 509 F. 3d 116 (2d Cir. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n234 Lockheed Martin Corp. v. Parisi, Case No. D2000-1015 (WIPO Jan. 26, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n46 Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534 (D. Md. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 220n30, 221n39, 224n56, 226n66 Los Angeles Times v. Free Republic, 54 U.S.P.Q.2d 1453 (C.D. Cal. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n235 Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75n7 Lucas Nursery & Landscaping v. Grosse, 359 F.3d 806 (6th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 81n21, 106n118 Lucent Tech., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D. Va. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 106n118 Luck’s Music Library, Inc. v. Ashcroft, 321 F. Supp. 2d 107 (D.D.C. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 145n239 Mack v. Markel Am. Ins. Co., 241 F.R.D. 534 (D. Md. 2007) . . . . . . . . . . . . . . . . 221n39 Madorsky v. Does 1–10, Case No. 1:06 CV 0123, 2006 U.S. Dist. LEXIS 37631 (N.D. Ohio 2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 206–207 Malcolm v. Esposito, 63 Va. Cir. 440 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . .64n210, 65 Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1328 (E.D. Mo. 1996) . . . . . . . . . . . . 39n74 MaryCLE, LLC v. First Choice Internet, Inc., 166 Md. App. 481 (2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 201n196

428 Table of Cases Mary Kay, Inc. v. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009) . . . . . . . . . . . . . 130n193 Mashantucket Pequot Tribe v. Redican, 309 F. Supp. 2d 309 (D. Conn. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50n157 Mastercard Int’l Inc. v. Trehan, Case No. 1:08-CV-05793, 2009 U.S. Dist. LEXIS 57717 (N.D. Ill. 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n103 Masters v. UHS of Del., Inc., Case No. 4:06CV1850, 2008 U.S. Dist. LEXIS 107383 (E.D. Mo. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75n8 Mattel, Inc. v. Internet Dimensions, Inc., 55 U.S.P.Q.2D (BNA) 1620 (S.D.N.Y. July 13, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n102, 105n113 McGuire v. Lavoie, Case No. 3:03-CV-0161-BH, 2003 U.S. Dist. LEXIS 24256 (N.D. Tex. 2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 65n213 McMann v. Doe, 460 F. Supp. 2d 259 (D. Mass. 2006) . . . . . . . . . . . . . . . . .188n151, 191 Media3 Tech., LLC v. Mail Abuse Prevention Sys., Case No. 00-CV-12524, 2001 U.S. Dist. LEXIS 1310, No. 2001 WL 92389 (D. Mass. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 184n121 MedImmune, Inc. v. Genentech, Inc. 127 U.S. 764 (2007) . . . . . . . . . . . . . . . . . . . 85–86 Medinah Mining, Inc. v. Amunategui, 237 F. Supp. 2d 1132 (D. Nev. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47n139, 48n142 Merck & Co. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402 (S.D.N.Y. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n142 Merrill Lynch v. O’Connor, 194 F.R.D. 618 (N.D. Ill. 2000) . . . . . . . . . . . . . . . . . . . . 187 Metcalf v. Lawson, 802 A.2d 1221 (N.H. 2002). . . . . . . . . . . . . . . . . . . . . . . . . . . . 65n218 Mierczkowski v. Masco Corp., 997 F. Supp. 782 (E.D. Tex. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33n24, 45n119 Migros Genossenschaftsbund (Federation of Migros Cooperatives) v. Centro Consulenze Kim Paloschi, Case No. D2000-1171 (WIPO Nov. 6, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 Millennium Enter., Inc. v. Millennium Music, Inc., 33 F. Supp. 2d 907 (D. Or. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32n21, 48n146, 51n159 Milliken v. Meyer, 311 U.S. 457 (1941). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36n52 Mission KwaSizabantu v. Rost, Case No. D2000-0279 (WIPO June 7, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 Mobilisa, Inc. v. Doe, 170 P.3d 712 (Ariz. Ct. App. 2007) . . . . . . . . . . . . . . . . . . 190n163 Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n170 Monotype Corp. v. Int’l Typeface Corp., 43 F.3d 443 (9th Cir. 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 224n59 Moore v. Microsoft Corp., 293 A.D.2d 587 N.Y.S.2d 92 (2002) . . . . . . . . . . . . . . . 31n16 Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Group Ltd., Case No. FA 571918 (NAF Nov. 29, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87n35 Motorola, Inc. v. NewGate Internet, Inc., Case No. D2000-0079 (WIPO Apr. 20, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95n70 MS Tech. Inc., U.S. Office of Personnel Mgmt. v., Case No. FA 198898 (NAF Dec. 9, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87n35 Muggles Magical Toys, Inc. v. muggles.org., Case No. 94798 (NAF July 24, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94n61, 94n62 Murphy Bros. v. Michetti Pipe Stringing, Inc., 566 U.S. 344 (1990). . . . . . . . . . . . 33n28 Myspace, Inc. v. Kang, Case No. FA 672160 (NAF June 19, 2006) . . . . . . . . . . . . . 90n42

Table of Cases 429 National Ass’n for the Blind v. Target, 452 F. Supp. 2d 946 (2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200n193, 201n195 National Ass’n of Prof ’l Baseball Leagues v. Zuccarini, Case No. D2002-1011 (WIPO Jan. 21, 2003) . . . . . . . . . . . . . . . . . . . . 92n56, 100n90 National Collegiate Athletic Ass’n v. Brown, Case No. D2004-0491 (WIPO Aug. 30, 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n78 National Numismatic Certification, LLC v. eBay, Inc., No. 2008 WL 2704404 (M.D. Fla. July 8, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 168 Nautilus Group, Inc. v. Icon Health and Fitness, Inc., Case No. C02-2420RSM, 2006 U.S. Dist. LEXIS 92550 (W.D. Wash. 2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 134–135, 134n214 NBA v. Motorola, Inc., 101 F.3d 841 (2d Cir. 1997) . . . . . . . . . . . . . . . . . . . . . . . 147n246 NBC Universal, Inc. v. NBCUniversal.com, 378 F. Supp. 2d 715 (E.D. Va. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38 Neiman Marcus Group, Inc. v. AchievementTec, Inc., Case No. FA 192316 (NAF Oct. 15, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n82 New Kids on the Block v. New Am. Publ’g, Inc., 971 F.2d 302 (9th Cir. 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .129, 129n190 New York Times Co. v. Sullivan, 376 U.S. 254 (1964) . . . . . . . . . . . . . . . . . . . . . 186n134 Niton Corp. v. Radiation Monitoring Devices, Inc., 27 F. Supp. 2d 102 (D. Mass. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128n182, 134nn208–209 Nokia Corp. v. Private, Case No. D2000-1271 (WIPO Nov. 3, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n87 North Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n155 Northern Light Tech., Inc. v. N. Lights Club, 236 F.3d 57 (1st Cir. 2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n102 Northland Ins. Cos. v. Blaylock, 115 F. Supp. 2d 1108 (D. Minn. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 106n118 Notaro v. Koch, 95 F.R.D. 403 (S.D.N.Y. 1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . 187, 191 Novak v. Tucows, Inc., 73 Fed. R. Evid. Serv. 331 (E.D.N.Y. 2007). . . . . . . . . . . . . . 75n8 NRA v. Future Media Architects, Inc., Case No. FA 781430 (NAF Oct. 13, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112n129 Oakley, Inc. v. Watson, Case No. D200-1658 (WIPO Jan. 5, 2001) . . . . . . . . . . . . 99n85 Oasis Corp. v. Judd, 132 F. Supp. 2d 612 (S.D. Ohio 2001) . . . . . . . . . . 47n139, 48n141 Oki Data Ams., Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95 Omega S.A. v. Omega Eng’g, Inc., 228 F. Supp. 2d 112 (D. Conn. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n101 Omega World Travel v. Mummagraphics, 469 F.3d 348 (4th Cir. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 208n229 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 118–121, 135n216 Online Policy Group v. Diebold Inc., 337 F. Supp. 2d 1195 (N.D. Cal. 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 176–177 On-Line Tech. v. Perkins Elmer Corp., 141 F. Supp. 2d 246 (D. Conn. 2001), aff ’d in part, rev’d in part, 386 F.3d 1133 (Fed. Cir. 2004) . . . . . . . . . . . . . . . . . 49n148

430 Table of Cases Panavision Int’l v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) . . . . . . . . . . . 50n157, 65–66 Parfums Christian Dior v. QTR Corp., Case No. D2000-0023 (WIPO Mar. 9, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n84 Pavlovich v. Super. Ct., 29 Cal. 4th 262, 127 Cal. Rptr. 2d 329, 58 P.3d 2 (2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49n152 Pebble Beach Co. v. Caddy, 453 F.3d 1151 (9th Cir. 2006) . . . . . . . . . . 48n145, 51n159 Pennoyer v. Neff, 95 U.S. 714 (1888). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34n29 Pensacola Christian Coll. v. Gage, Case No. FA101314 (NAF Dec. 12, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n76 Perfect 10, Inc. v. Amazon, Inc., 487 F.3d 701 (9th Cir. 2003) . . . . . . . . . . . . . . 144n234 Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007) . . . . . . . . . . . . . . . . . . . 167 PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 76n11, 104n106, 105n112 Philadelphia & Reading Ry. Co. v. McKibbin, 243 U.S. 264 (1917) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34n31 Phoenix Avatar LLC; FTC v., Case No. 04 C 2897, 2004 U.S. Dist. LEXIS 14717 (N.D. Ill. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 206 Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. 124 (N.D. Ga. 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 144n236 Playboy Enter., Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993). . . . . . . . . . . . . . . . 169 Playboy Enter., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020 (9th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 126, 135 Playboy Enter., Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122n154, 129, 130, 133, 133n203 Porsche Cars N. Am., Inc. v. Porsche.Net, 302 F.3d 248 (4th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 51n164 Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808 (7th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 126 Publications Int’l, Ltd. v. Burke/ Triolo, Inc., 121 F. Supp. 2d 1178 (N.D. Ill. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n111 Public Relations Soc’y of Am., Inc. v. Road Runner High Speed Online, 799 N.Y.S.2d 847 (2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 184n121 PwC Business Trust v. CulitoSa, Case No. D2001-1109 (WIPO Dec. 14, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94n65 Qwest Commc’ns Int’l v. WorldQuest Networks, Inc., 213 F.R.D. 418 (D. Colo. 2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n140 Rambus Inc. v. Infineon Tech. AG, 348 F. Supp. 2d 698 (E.D. Va. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 224n58 Recording Indus. of Am. v. Verizon Internet Servs., Inc., 359 U.S. App. D.C. 85 (D.C. Cir. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190n161 Red Bull GmbH v. Gutch, Case No. D2000-0766 (WIPO Sept. 21, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 94n63 Reid; New Jersey v., 194 N.J. 386 (2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . .177n95, 178 Religious Tech. Ctr. v. F.A.C.T.Net, 901 F. Supp. 1519 (D. Colo. 1995). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n255 Religious Tech. Ctr. v. Lerma, 908 F. Supp. 1362 (E.D. Va. 1995) . . . . . . . . . . . . . . . . 149

Table of Cases 431 Religious Tech. Ctr. v. Netcom Online Commc’n Serv., 907 F. Supp. 1361 (N.D. Cal. 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 149n255, 169–171 Reno v. ACLU, 521 U.S. 844 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . 164, 186n131, 205 Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393 (N.D.N.Y. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119–121, 119n143 Rescuecom Corp. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119–121, 200n145, 200n148 Research in Motion Ltd. v. Espinoza, Case No. D2008-0759 (WIPO July 23, 2008 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75–76 Reunion Indus. v. Doe, Case No. GD-06-007965, 2007 Pa. Dist. & County Dec. LEXIS 145, 80 Pa. D. & C.4th 449 (Allegheny C. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 188n151, 191, 192 Revell v. Lidov, 317 F.3d 467 (5th Cir. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n110 Rocker Mgmt. LLC v. Does 1-20, 2003 U.S. Dist. LEXIS 16277 (N.D. Cal. 2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181n108, 182, 184 Rohr-Gurnee Motors, Inc. v. Patterson, 71 U.S.P.Q.2D 1216 (N.D. Ill. Feb. 9, 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 106n118 Romeo & Juliette Laser Hair Removal Inc. v. Assara I LLC, No. 08 Civ. 0442, 2009 U.S. Dist. LEXIS 22597 (S.D.N.Y. 2009) . . . . . . . . . . . 119n142 Rowan v. U.S. Post Office Dep’t, 397 U.S. 728 (1970) . . . . . . . . . . . . . . . . . . . . . . . . . . 205 R.T. Quaife Eng’g Ltd. v. Luton, Case No. D2000-1201 (WIPO Nov. 14, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95n70 Safavian; United States v., 435 F. Supp. 2d 36 (D.D.C. 2006). . . . . . . . . 219n21, 226n67 St. Clair v. Cox, 106 U.S. 350 (1882) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 34nn30–31 St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson, Case No. 08-11848, 2009 U.S. App. LEXIS 15268 (11th Cir. 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . 105n116 St. Luke’s Cataract & Laser Inst. v. Sanderson, 70 Fed. R. Evid. Serv. 174 (M.D. Fla. May 12, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 220n30 Salle v. Meadows, Case No. 6:07-cv-1089, 2007 U.S. Dist. LEXIS 92343, 2007 WL 4463920 (M.D. Fla. Dec. 17, 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . 82n25 S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F. Supp. 2d 188 (E.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n142 Satchidananada Ashram—Integral Yoga Inst. v. Domain Adm’r, Case No. FA125228 (NAF Dec. 13, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n76 Scott v. LeClerq, 136 S.W.3d 183 (Mo. Ct. App. W.D. 2004) . . . . . . . . . . . . . . . . 184n121 Scott v. News-Herald, 25 Ohio St. 3d 243 (1986) . . . . . . . . . . . . . . . . . . . . . . . . . 183n116 Sega Enter. Ltd. v. MAPHIA, 948 F. Supp. 923 (N.D. Cal. 1996) . . . . . . . . . . . . . . . . 171 Semitool, Inc. v. Tokyo Electron Am., Inc., 208 F.R.D. 273 (N.D. Cal. 2002). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n140, 187n144 Sermo, Inc. v. CatalystMD, LLC, Case No. D2008-0647 (WIPO July 2, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n88 Shaffer v. Heitner, 433 U.S. 186 (1977) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 38n64, 38n66 Shapiro, Bernstein & Co. v. H.L. Green Co., 316 F.2d 304 (2d Cir. 1963) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 170n58 Sherr; United States v., 400 F. Supp. 2d 843 (D. Md. 2005) . . . . . . . . . . . . . . . . . . 177n95 Shevill v. Presse Alliance S.A., [1995] all ER (EC) . . . . . . . . . . . . . . . . . . . . . .289, 62–63 Shields v. Zuccarini, 254 F.3d 476 (3d Cir. 2001) . . . . . . . . . . . . . . . . . . 77n13, 103n104

432

Table of Cases Shisler v. Sanfer Sports Cars, Inc., 146 Cal. App. 4th 1254, 53 Cal. Rptr. 3d 335 (2006). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44n110, 50n153 Siddiqui; United States v., 235 F.3d 1318 (11th Cir. 2000) . . . . . . . . . . . . . . . . . . . 219n21 Site Pro-1, Inc. v. Better Metal, LLC, 506 F. Supp. 2d 123 (E.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119n142 Six Continents Hotels, Inc. v. Nowak, Case No. D2003-0022 (WIPO Mar. 4, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n91 Skattedirectoratet v. Eivind Nag, Case No. D2000-1314 (WIPO Dec. 18, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 Skyy Spirits LLC v. Krzenszczynski, Case No. FA 1220829 (NAF Nov. 26, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91n51 Smith v. Hobby Lobby Stores, 968 F. Supp. 1356 (W.D. Ark. 1997) . . . . . . . . . . . 50n154 SNA, Inc. v. Array, 51 F. Supp. 2d 554 (E.D. Pa. 1999) . . . . . . . . . . . . 124n168, 134n207 Soilworks, LLC v. Midwest Indus. Supply, Inc., 575 F. Supp. 2d 1118 (D. Ariz. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 128n183 Sony Music Entm’t Inc. v. Does 1–40, 326 F. Supp. 2d 556 (S.D.N.Y. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 190, 192 SOUTHBank v. Media Street, Case No. D2001-0294 (WIPO Apr. 11, 2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101n94 Southern Co. v. Dauben Inc., 90 U.S.P.Q.2d 1651 (5th Cir. 2009) . . . . . . . . . . . 103n102 Southern Co. v. Doms, Case No. D2000-0184 (WIPO May 8, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n83 Southern Grouts & Mortars, Inc. v. 3M Co., No. 07-61388-CIV, 2008 U.S. Dist. LEXIS 70222, 2008 WL 4346798 (S.D. Fla. Sept. 17, 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 86n32 Space Imaging LLC v. Brownwell, No. AF-0298 (eResolution, Sept. 22, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91n49 Spear, Leeds, & Kellogg v. Rosado, 122 F. Supp. 2d 403 (S.D.N.Y. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103n103 Special Situations Cayman Fund, L.P. v. Dot Com Entm’t Group, Inc., Case No. 03-CV-0811E, 2003 U.S. Dist. LEXIS 25083 (W.D.N.Y. 2003). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n140 Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 104n106 SPX Corp. v. Doe, 253 F. Supp. 2d 974 (N.D. Ohio 2003) . . . . . . . . . . . . . .182, 183–184 Standard Process, Inc. v. Banks, 554 F. Supp. 2d 866 (E.D. Wis. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .114n132, 132 Standard Process, Inc. v. Total Health Discount, Inc., 559 F. Supp. 2d 932 (E.D. Wis. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 130n193 Stern v. Cosby, 246 F.R.D. 453 (S.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . 187n139 Stomp, Inc. v. Neato, LLC, 61 F. Supp. 2d 1074 (C.D. Cal. 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30n14, 49n149 Storus Corp. v. Aroa Mktg., Case No. C-06-2454, 2008 U.S. Dist. LEXIS 11698 (N.D. Cal. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 127n177, 135n217 Stratton Oakmont v. Prodigy Serv. Co., Not Reported in N.Y.S.2d, 1995 N.Y. Misc LEXIS 229, 1995 WL 323710, 23 Media L. Rep. 1974 (N.Y. Sup. Ct. May 24, 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 163–164

Table of Cases 433 Sunlight Saunas, Inc. v. Sundance Sauna, Inc., 427 F. Supp. 2d 1032 (D. Kan. Apr. 17, 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .111, 111n128 Swiss Am. Bank; United States v., 274 F.3d 610 (1st Cir. 2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33n25, 35n43 Syncsort Inc. v. Innovative Routines Int’l, Inc., Civ. Action No. 04-3623, 2008 U.S. Dist. LEXIS 35364 (D.N.J. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .124n168, 128n186, 130, 133n200 Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 80n18 Tank; United States v., 200 F.3d 627 (9th Cir. 2000) . . . . . . . . . . . . . . . . . . . . . . . . 221n35 Tdata Inc. v. Aircraft Technical Publishers, 411 F. Supp. 2d 901 (S.D. Ohio 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .127, 127n178 Techheads, Inc. v. Desktop Serv. Ctr., Inc., 105 F. Supp. 2d 1142 (D. Or. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30n14, 44n110 Telco Commc’n v. An Apple a Day, 977 F. Supp. 404 (E.D. Va. 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47n138 Telebyte, Inc. v. Kendaco, Inc., 105 F. Supp. 2d 131 (E.D.N.Y. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36n48, 52n169 Telewizja Polska USA, Inc. v. Echostar Satellite Corp., 65 Fed. R. Evid. Serv. 673 (N.D. Ill. Oct. 15, 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 75n7 Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-003 (WIPO Feb. 18, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n85 Teollisuuden Voima OY v. Vastamaki, Case No. D2001-0321 (WIPO May 4, 2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 Tercent Inc. v. Lee Yi, Case No. FA 139720 (NAF Feb. 10, 2003) . . . . . . . . . . . . . . 94n62 Tesco Personal Fin. Ltd. v. Domain Mgmt. Servs., Case No. FA 877982 (NAF Feb. 13, 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98b81 Texas Int’l Prop. Assoc. v. Hoerbiger Holding AG, Civ. Action No. 3:07-CV-2099, 2009 U.S. Dist. LEXIS 40409 (N.D. Tex. 2009). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 106n117 Thompson v. Handa-Lopez, Inc., 998 F. Supp. 738 (W.D. Tex. 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 31n16 322 West 57th Owner LLC v. Adm’r, Domain, Case No. D2008-0736 (WIPO Aug. 6, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n75 Ticketmaster Corp. v. Devane, Case No. 7:07-CV-196-F, 2008 U.S. Dist. LEXIS 39369 (E.D.N.C. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 125n169 Ticketmaster Corp. v. Prem, Case No. D2000-1550 (WIPO Jan. 16, 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n85 Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008) . . . . . . . . . . 130, 134 TM Acquisition Corp. v. Sign Guards, Case No. FA 132439 (NAF Dec. 31, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92n55, 112n129 TMI Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . 81n21 TMP Worldwide Inc. v. Potter, Case No. D2000-0536 (WIPO Aug. 5, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97n76 Toronto-Dominion Bank v. Karpachev, 188 F. Supp. 2d 110 (D. Mass. 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 105n110, 105n115

434

Table of Cases Toys ‘R’ Us, Inc. v. Step Two, S.A., 318 F.3d 446 (3d Cir. 2003). . . . . . . . . 30n15, 41n90 Tridos Bank NV v. Dobbs, Case No. D2002-0776 (WIPO Oct. 3, 2002). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 Troy Group, Inc. v. Tilson, 364 F. Supp. 2d 1149 (C.D. Cal. 2005) . . . . . . . . . . . 184n121 UEJF & Licra v. Yahoo! Inc. & Yahoo France Tribunal De Grand Instance De Paris 22, mai 2000 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 60n191 U-Haul Int’l, Inc. v. WhenU.Com, Inc., 279 F. Supp. 2d 723 (E.D. Va. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 120n147, 134n210 Underwager v. Channel 9 Australia, 69 F.3d 361 (9th Cir. 1995) . . . . . . . . . . . . 182n109 United States v. See name of opposing party Universal Commc’ns Sys., Inc. v. Lycos, 478 F.3d 413 (1st Cir. 2007). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166n26 U.S. News & World Report, Inc. v. Zhongqi, Case No. FA 917070 (NAF Apr. 9, 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 93n58 Venetian Casino Resort, LLC v. VenetianGold.com, 380 F. Supp. 2d 737 (E.D. Va. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102n100 Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d 56 (1st Cir. 2008). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 127–128 VeriSign, Inc. v. Tandon, Case No. D2000-1216 (WIPO Nov. 16, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n43 Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088 (C.D. Cal. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 78n15 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., Case No. FA 95095 (NAF July 31, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 80n18 Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264 (4th Cir. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 104n106 Vivendi Universal Games v. XBNetVentures Inc., Case No. FA 198803 (NAF Nov. 11, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87n35 Vulcan Golf, LLC v. Google Inc., 254 F.R.D. 521 (N.D. Ill. 2008). . . . . . . . . . . . 121n150 Vulcan Golf, LLC v. Google Inc., 552 F. Supp. 2d 752 (N.D. Ill. 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 78n15, 101n97 Wachovia Corp. v. Carrington, Case No. D2002-0775 (WIPO Feb. 10, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n85 Wal-Mart Stores, Inc. v. Hostmaster, Domain Park Ltd., Case No. D2008-1158 (WIPO Oct. 10, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n86 Wal-Mart Stores, Inc. v. wallmartcanadasucks. com, Case No. D2000-1104 (WIPO Nov. 23, 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n46 Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150 (WIPO May 2, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 90n43 Wampler v. Higgins, 93 Ohio. St. 3d 111 (2001) . . . . . . . . . . . . . . . . . . . . . . . . . . 183n116 Warner Bros. Entm’t Inc. v. Ideal World Direct, 516 F. Supp. 2d 261 (S.D.N.Y. 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 49nn151–152 Warner Bros. Entm’t Inc. v. Nikolaevich, Case No. FA 1225813 (NAF Nov. 5, 2008) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 93n57, 100n91

Table of Cases 435 Washington v. Heckel, 24 P.3d 404 (Wash. 2001) . . . . . . . . . . . . . . . . . . . . . . . . . 201n196 Weber v. Jolly Hotels, 977 F. Supp. 327 (D.N.J. 1977). . . . . . . . . . . . . . . . . . . . . . . 50n154 The Wedding Channel.com, Inc. v. Vasiliev, Case No. FA 156716 (NAF June 12, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112n129 Weetabix Ltd. v. Clarke, Case No. D2001-0775 (WIPO Oct. 13, 2000). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99n85 Wells Fargo & Co. v. Party Night Inc., Case No. FA 144647 (NAF Mar. 18, 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100n91 Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 120n147, 134n210 Western Int’l v. Doe, Case No. No. CV-06-1537, 2006 U.S. Dist. LEXIS 77942 (D. Ariz. 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 191 White Buffalo Ventures, LLC. v. Univ. of Tex., 420 F.3d 366 (5th Cir. 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .193, 213–214 Wiest v. E-Fense, Inc., 356 F. Supp. 2d 604 (E.D. Va. 2005). . . . . . . . . . . . . . . . . 184n121 Winfield Collection, Ltd. v. McCauley, 105 F. Supp. 2d 746 (E.D. Mich. 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 64n209, 65n218 World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286 (1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33n27, 37n56, 37n61 Yahoo! Inc. v. Cupcakes, Case No. D2000-0777 (WIPO Oct. 2, 2000) . . . . . . . . . 90n41 Yahoo! Inc. v. Korshunov, Case No. FA 176666 (NAF May 21, 2008) . . . . . . . . . . 90n45 Yahoo! Inc. v. Zuccarini, Case No. FA 183997 (NAF Oct. 20, 2003) . . . . . . . . . . . 93n57 Yahoo! v. La Ligue Contra Le Racisme et L’Antisemitisme, 433 F.3d 1199 (9th Cir. 2006) (en banc), cert. denied, 547 U.S. 1163 (2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .29n6, 60–61 Young v. New Haven Advocate, 315 F.3d 256 (4th Cir. 2002) . . . . . . . . . . . . . . . . 47n139 Yüksel Inşaat A.Ş. v. Koparal, Case No. D2002-0285 (WIPO May 28, 2002). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 96n74 Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109n121 Zeran v. Am. Online, Inc., 129 F.3d 327 (4th Cir. 1997) . . . . . . . . . . 165–166, 178–179 Zippo Mfg. Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41–43, 45, 49, 61, 64–66


Index

Atlas Capco AB v. AtlasCopcoiran.com (2008), 38 Auctions, online jurisdiction and, 63–65 theft/sale of proprietary information and, 140 theft/sale of trade secrets and, 149 AUP (acceptable use policy), 195 Australian Gold, Inc. v. Hatfield (2006), 119n142, 126–127, 131, 131n197 Australian High Court on international defamation, 61–63 Authentication, electronic evidence, 217–223 challenges of, 226 of chat room content, 221 of computer-stored business records, 222–223 of computer-stored data/records, 222 of electronic public records/reports, 221–222 of e-mail messages, 218–219, 218n20 stipulated, 226–227 of text messages, 221 of Web site content, 220 Ayyash v. Bank Al-Madina (2005), 187–188, 192

A AARP v. Elec. Mktg. Serv. c/o Tammy Gloe (2005), 89, 90n41 Acceptable use policy (AUP), 195 ACPA (Anticybersquatting Consumer Protection Act) bad faith factors, 104–106 drafting trademark complaints under, 101–107 bad faith intent to profit and, 104–107 covered activities, 102 factors in, 81–82, 81nn19–20, 86–87 identical or confusing similarity, 102–104 trademark rights, 102 intellectual property law and, 101–107 personal names, 82, 82n24 in rem jurisdiction cases, 82, 82n23 scope of, 51, 80–82 Add Grace Period (AGP), 78, 78n15 Affiliate programs, 194 African Network Information Centre (AfriNIC), 13 Aitken v. Commc’ns Workers of Am. (2007), 207, 207n225 ALS Scan v. RemarQ Communities (2001), 175–176, 179 American Libraries Ass’n v. Pataki (1997), 200–201, 200n191 American Registry for Internet Numbers (ARIN), 13, 161–162 America Online, Inc. v. AOL.org (2003), 38 Anonymity, 21–25. See also Freedom of expression and anonymity Anticybersquatting Consumer Protection Act. See ACPA Anticybersquatting laws, 51, 83 AOL (America Online), 159–160, 176 Asia-Pacific Network Information Centre (APNIC), 13

B Bad faith intent ACPA and, 104–106 domain names and reverse WHOIS query for registration information, 19 UDRP and, 79–80, 79n16 gripe Web sites and, 106, 106n118 intent to profit in trademark disputes, 104–107 personal jurisdiction and, 65–66 Barron’s Online, 61–63

437

438 Index Bayer Corp. v. Custom Sch. Frames, LLC (2003), 128, 133n206, 135n218 Benusan Rest. Corp. v. King (1997), 30n15, 40, 40n76, 48n145 Bernina of Am., Inc. v. Fashion Fabrics Int’l (2001), 114n132, 131n197, 132, 132n198 Berzon, Marsha S., 126 Bijur Lubricating Corp. v. Devco Corp. (2004), 124n168, 130, 133n200 BLACKBERRY trademark, 75–76 Blacklists, of spam abusers, 8n6, 196–198 Blanchard, Robert, 163 Blogs content as written statement, 181–186, 181n106 copyright and, 141, 143 defamation and, 186 as specialty websites, 9 Blue Note jazz clubs, 40 Bosley Med. Inst. v. Kremer (2005), 110 Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp. (1999), 114n131, 122n154, 125–126, 129n189 Browsers, 9, 9n7 Business Software Alliance (BSA), 135 Business-to-business sites (B2B), 9n9 Buying for the Home, LLC v. Humble Abode, LLC (2006), 122n158, 123–124

C Cahill; Doe v. (2005), 181n107, 182–183, 182n110, 184, 188n145 Calder v. Jones (1984), 46–48 California, 83, 83n26, 121–122, 200–201 Callinan, Ian, 62 CAN-SPAM Act (2003), 193, 201–208 constitutional objections to, 204–205 federal court application of, 206–208 First Amendment and, 203–206 scope of, 202–204 state laws and, 201–204 CAUCE (Coalition Against Unsolicited Commercial E-mail), 198n181 CCC Info. Serv., Inc. v. MacLean Hunter Mkt. Reports (1994), 146 CDA. See Communications Decency Act CD Solutions, Inc. v. Tooker (1998), 109 Cease-and-desist letters in copyright disputes, 142 ISP liability and, 138–139, 174, 175–176 spam and, 195 theft of content and, 138–139 in trademark disputes, 83–86, 84n30

Central Hudson Gas & Elec. Co. v. Pub. Serv. Comm’n (1980), 204–205, 214 Chat rooms authentication of content, 221, 221n39 content as written statement, 181 defamation and, 186 IRC technology and, 11 totality of the circumstances in, 181–185 Chicago Board of Trade (CBT), 147 Choice-of-forum provisions, 30–31 Ciolli; Doe I v. (2008), 180n103, 181, 185n122 Classic fair use, 110, 129 Click through, cybersquatting, 78 Click-wrap contracts, 30–31 Coalition Against Unsolicited Commercial E-mail (CAUCE), 198n181 Comcast, 178 Commerce Clause, 121, 199–201 Commercial cases, 49–50 Commercial ethics, 147–149 Commercial speech, 203, 207–208 Commonly known domain names, 93–94 Communications Decency Act (CDA, 1996) broad immunity for ISPs, 164–166, 231 exceptions to, 166–168 Good Samaritan provisions of, 166–168 freedom of speech and, 60 CompuServe, Inc. v. Patterson (1996), 41 Computer forensic science, 233–234, 233n5 Computer-stored data, 222–223, 222n47 Confidential information. See Web content Connecticut, 185–186 Constitution, U.S., 147 Consumer gripe sites. See Gripe Web sites Controlling the Assault of Non-Solicited Pornography and Marketing Act. See CAN-SPAM Act Copyright. See also Web content basic law of, 140–143 blogs, 141, 143 cease-and-desist letters in disputes, 142 derivative work, 141 exclusive rights, 141, 141n228 facts and hot news, 145–147, 145n240 fair use of materials, 143–145 misappropriation, 146–147 original work of authorship, 141 safe harbor under DMCA, 141, 142, 171–176 specific jurisdiction in disputes, 49 substantiality and, 143–144

Index theft investigation and notice and take down procedures, 137–139, 137n221, 171–176 unique/novel work of authorship, 141 Copyright Office, 139, 161 Counterfeiting practice tips, 7, 150, 151, 152–153 scenarios, 150 in trademarks, investigation of, 151–156 online tools, 155–156 pharmaceutical network model, 151–154 registration and hosting information, 154–155 Web sites used in, 151 Country-code top-level domains (ccTLDs), 17, 71–72 Country of origin principle, 55, 59–61 Courts. See Supreme Court, U.S.; specific states and Circuit Courts Cross Media Mktg. Corp. v. Nixon (2006), 149 Cubby, Inc. v. CompuServe, Inc. (1991), 163 Cyberspace, 8–17 as borderless environment, 30 definition of, 8n5 domain name retailers, 15 information packets, 15–17 Internet vs. World Wide Web, 8–12, 8n6 owners of Internet directory, 12–14 Cybersquatters, search for reverse WHOIS query, 19 tracing information, 19–20 WHOIS query, 17–19 Cybersquatting. See also ACPA anticybersquatting laws federal, 51 state, 83 click-through deception, 78 domain name parking, 78 intellectual property law and, 77–83 ACPA, 80–82, 101–107 cease-and-desist letters, 83–86, 84n30 definition of cybersquatting, 77–83 federal claims, 101–108 trademark infringement claims and, 83 UDRP, 79–80, 86–101 investigation of prior activities of, 76 jurisdiction and, 50–51 practice tips, 71, 72, 85, 87, 93, 98, 101, 106–107 recent case law, 50–51 tasting, 78, 78n15 typosquatting, 78, 92, 92n56

D Databases, 9, 145n240 Data Protection Directive 95/46 (EU), 208–209 Defamation blogs and, 186 chat rooms and, 186 freedom of expression and anonymity in, 179–192 expedited discovery, 186–192 good cause standard, 190, 192 investigation of, 180–181 Notaro standard, 190–191 publication vs. distribution, 181–186, 184nn120–121 scenarios, 179–180 subpoenas, 188–190, 192 summary judgment standard, 190–191 international issues and, 61–63 libel as, 181n106 personal jurisdiction and Internet defamation cases, 47–48 specific jurisdiction and, 45–48 subpoenas and, 188–190 totality of the circumstances in, 181–182 Dendrite Int’l, Inc. v. Doe (2001), 186n134, 188n148, 190n158, 192 Derivative work, copyright, 141 Digital Millennium Copyright Act (DMCA, 1998) ISPs and, 54–55, 169–177 cases, 175–177 cease-and-desist letters, 138–139, 174, 175–176 direct infringement, 172 vicarious/contributory infringement, 172–173 notice and take down procedures, 137–139, 137n221, 171–176 safe harbor under, 141, 142, 171–176 serving notice on auction sites under, 140 Web site operators and, 61 Disclaimers, 30 Discussion groups, 10 Dispute-resolution service providers, 79. See also UDRP District Courts. See specific states DMCA. See Digital Millennium Copyright Act Doe v. See name of opposing party Domain name parking, 78

439

440

Index Domain names, 70–77. See also Cybersquatting; UDRP Add Grace Period, 78, 78n15 bad faith intent and, 19, 79–80, 79n16 commonly known, 93–94 definition of, 12 fair use of, 95–101 IP addresses and, 15 noncommercial use of, 95–101 private/proxy registration services, 18, 73, 195 retailers of, 15 in trademark disputes assessment protocol, 70 documentation of domain usage, 74 documentation of previous cybersquatting, 76 Dun & Bradstreet reports, 74 prior use of domain name, 75–76 private investigators and, 77 reverse WHOIS query, 76–77 WHOIS query, 71–74 web site owners and, 17 World Wide Web and, 9 Domain Name System (DNS), 12–14, 198 Domain Name System Blacklists (DNSBLs), 198 Donaldson Company, 178 Dow Jones & Company, 147 Due Process Clause, 33, 36, 40, 43, 49, 65–66 Dun & Bradstreet reports, 74, 195

E eBay auctions, 63–65 E-Commerce Directive 2001/31 (EU) exceptions to Jurisdiction Regulation, 58–59, 62–63 Rome I Regulation, 59 general rule coordinated field, 57 place of establishment, 56–57 jurisdiction and, 54–61 e-commerce vs. commerce, 58 national courts vs. country of origin, 59–61 800-JR Cigar, Inc. v. GoTo.Com, Inc. (2006), 123–124, 127 Electronic evidence, 215–227 authentication of, 217–223 challenges of, 226 chat room content, 221, 221n39 computer-stored business records, 222–223, 222n47

computer-stored data/records, 222 electronic public records/reports, 221–222 e-mail messages, 218–219, 218n20 stipulated, 226–227 text messages, 221 Web site content, 220 best evidence considerations, 227 characteristics of, 216–217 hearsay considerations, 223–226 business records exception, 224–225 other exceptions, 225–226 practice tips, 217 records produced in civil discovery, 222 records seized in criminal cases, 222 Eleventh Circuit Court on use in commerce, 122 Ellison, Harlan, 176 Ellison v. Robertson (2004), 176 E-mail. See also Spam authentication of, 218–219, 218n20 interpretation of headers, 20–21 investigation of anonymous senders, 21–25 investigation of headers, 20–21 practice tips, 10–11 tracing false addresses, 10–11 E-Privacy Directive 2002/58 (EU), 209–213 customer relationship safe harbor, 209 on direct marketing, 197 implementation of, 210–212 soft opt-in, 209 Erlich, Dennis, 169–170 Europe, jurisdiction and, 55 European Union (EU). See also specific countries; specific Directives database protection in facts and hot news, 145n240 jurisdiction of ISPs in, 55 prosecution of spam in, 197, 208–209 individual lawsuits and, 212–213 privacy rights and, 209–213 Evidence. See Electronic evidence E.W. Scripps Co. v. Sinologic Indus. (2003), 75n6 Exchange principle (Locard), 6n3 Excited utterance exception, 225 Exclusive rights, copyright, 141, 141n228 Expedited discovery, defamation, 186–192 Experts, forensic, 231–238

Index

F Facts, 145–147, 145n240 Fair Housing Act (FHA), 166 Fair Housing Council of San Fernando v. Roommates.com (2008), 166–167 Fair use classic, 110, 129 of copyrighted materials, 143–145 domain names and, 95–101 as infringement defense metatags/keywords, 129–131 primary meaning and, 109, 109n120 nominative, 117, 130, 132, 134 Federal Bureau of Investigation, U.S., 233 Federal claims drafting ACPA trademark complaints, 101–107 bad faith intent to profit and, 104–107 factors in, 86–87 identical or confusing similarity, 102–104 liability conditions, 102 trademark rights, 102 drafting UDRP trademark complaints bad faith, 79–80, 79n16 factors in, 86–87 identical or confusing similarity, 89–91 noncommercial or fair use of domain name, 95–101 rights or legitimate interests, 91–95 trademark rights, 87–88 Federal Regulation of Civil Procedures on expedited discovery, 186 on use of subpoena, 188–189, 189n152, 189n154 Federal Rules of Evidence electronic evidence under, 217–218, 227 computer-stored business records, 223 e-mail messages and, 218–219, 218n20 public records and, 221nn39–240 Wayback Machine, 74–75 hearsay considerations, 223–224, 224n55 75, 223nn52–254 business records exception, 224–225 excited utterance, 225 mental state and, 225–226 present sense impression, 225 original data, definition of, 227 Federal Trade Commission, 203, 206–207 Ferguson v. Friendfinders (2002), 200–201, 200n193, 201n197 FHA (Fair Housing Act), 166 Fifth Circuit Court

on spam, 213–214 File Transfer Protocol (FTP), 12 Financial Info., Inc. v. Moody’s Investors Serv., Inc. (1986), 146 First Amendment. See also Freedom of expression and anonymity CAN-SPAM Act and, 203–206 gripe Web sites, 95–97 international jurisdiction and, 29, 29n6 Nazi materials and, 60–61 First Circuit Court on initial interest confusion, 127–128 First sale doctrine, 132 Fitgers On-the-Lake, LLC v. Fitger Co., LLC (2007), 133, 133n205 Florida, 85–86 Forensic expert, definition of, 231 Forensics and experts, 230–238 computer forensic science, 233–234, 233n5 experts choosing of, 231–233 cost of services, 232 definition of, 231 practice tips, 234 residual/deleted data and, 216–217 scenarios, 230–231, 234–238 unallocated file space, 234 Fourth Amendment, 177–178 Fourth Circuit Court on spam, 208 on use in commerce, 122 France, 60–61 Freedom of expression and anonymity, 159–214 defamation and, 179–192 expedited discovery, 186–192 good cause standard, 190, 192 investigation of, 180–181 Notaro standard, 190–191 publication vs. distribution, 181–186, 184nn120–121 scenarios, 179–180 subpoenas, 188–190, 192 summary judgment standard, 190–191 ISP liability and broad immunity for, 164–166 denials of broad immunity and, 166–168 history of, 162–164 investigation of, 160–162 scenarios, 160–161 ISPs and Fourth Amendment, 177–178

441

442

Index Freedom of expression and anonymity (cont.) ISPs and intellectual property, 168–177 DMCA and, 171–177 pre-DMCA liability, 169–171 spam and, 193–214 CAN-SPAM in federal courts, 206–208 constitutional objections to CAN-SPAM, 204–206 definition of, 196–197 EU prosecution of, 208–213 federal legislative efforts, 201–204 investigation of, 194–196 private solutions to, 197–198 scenarios, 193, 213–214 state legislative efforts, 199–201 Free speech. See First Amendment; Freedom of expression and anonymity Friendfinder Network, 167, 168 FTC v. See name of opposing party FTP (File Transfer Protocol), 12 FTP servers, 12

G Gator.com Corp. v. L.L. Bean, Inc. (2005), 44–45 GEICO, 117n136, 123, 134 General top-level domains (gTLDs) free searches for, 19 ICANN and, 79 WHOIS query and, 17, 71 Germany, 60–61 Girls Girls Girls site scenario, 160 GlobalSantaFe Corp. v. Globalsantafe.com (2003), 38 Good cause standard, defamation, 190, 192 Good Samaritan provisions (CDA), 166–168 Google keyed ads as trademark infringement, [Chapter IV] keyed ads as use in commerce, [Chapter IV] keyed ads as product placement, 120n146 Keyword Tool, 120n144 trademark complaint policies, 116–117, 116n135 Go! Online site scenario, 160 Gordon v. Virtumundo (2007), 207 Government Employees Ins. Co. v. Google, Inc. (2004), 117n136, 123, 134 Gripe Web sites bad faith factors and, 106, 106n118 fair use defense and, 129–131

First Amendment and, 95–97 libel suits and, 47–48, 48nn141–142 trademark disputes and, 95–97 Gutnick, Joseph, 61–63

H Hamzik v. Zale Corp./Del. (2007), 119n142, 134 Hawaii, 83 Hidden text, 216 Home country control, 55, 59–61 Hubbard, L. Ron, 169–170 Hypertouch v. Kennedy-Western Univ. (2006), 207

I IANA (Internet Assigned Numbers Authority, 13n15 ICANN (Internet Corporation for Assigned Names and Numbers), 15, 73, 73n4, 78n15, 79. See also UDRP practice tips, 15 Identical or confusing similarity, trademarks, 89–91, 102–104 Illinois on misappropriation, 147 Information Commissioner’s Office (ICO) (UK), 211, 212 Information packets, 15–17 Information society services, 55 Infringement claims fair use defense and metatags/keywords, 129–131 primary meaning and, 109, 109n120 ISPs and, 172–173 trademark use and cybersquatting and, 83 keyword advertising, 131–135 metatags, 129–134 Initial interest confusion theory, 117, 125–129 In re. See name of party Instant Messaging, 11 Intellectual property, 70–156 counterfeiting investigation of, 151–156 scenarios, 150 domain names and trademark disputes, 70–77 ISPs and, 168–177 DMCA and, 171–177 pre-DMCA liability, 169–171

Index legal ramifications cease-and-desist letters, 83–86, 84n30 cybersquatting, 77–83 federal claims, 101–108 UDRP complaints, 86–101 scenarios, 70, 108–112 theft of Web content, 135–149 basic copyright, 140–143 copyright, facts and hot news, 145–147, 145n240 fair use of materials, 143–145 investigation of, 137–140 legal ramifications, 140–149 scenarios, 136–137 trade secrets, 147–149 trademark disputes, 70–77 investigation of, 70–77 private investigators and, 77 scenarios, 70 trademark use, metatags/keyword advertising and, 112–135 fair use, 129–131 infringement claims, 131–135 initial interest confusion, 125–129 keywords and sponsored ads, 116–117 legal ramifications, 117–131 metatags, searching for, 115 metatags, technical use of, 114–115 sponsored ads, searching for, 117 use in commerce, 118–125 Interactive Web sites, 42–43, 45, 64–65 International jurisdiction issues, 53–63 defamation, 61–63 E-Commerce Directive, 54–59, 61 e-commerce vs. commerce, 58 European perspective, 55 jurisdiction complexity, 54–55 national courts vs. country of origin, 59–61 International Shoe Co. v. Wash. (1945), 34–35, 36n54 [same case as above] Internet, history of backbone, 12–14 Internet, mechanics of investigations, 5–26 anonymous e-mailers, 21–25 cyberspace, 8–17 definition of, 8n5 domain names, 15 information packets, 15–17 Internet vs. World Wide Web, 8–12, 8n6 owners of Internet directory, 12–14 cybersquatters, 17–20 tracing information, 19–20

WHOIS query, 17–19 e-mail headers, 20–21 investigation protocol, 25–26 money trail, 6–7 site owners, 17–20 tracing information, 19–20 trust your gut, 7–8 Internet Archive, 74–75 Internet Assigned Numbers Authority (IANA), 13n15 Internet chat rooms. See Chat rooms Internet Corporation for Assigned Names and Numbers. See ICANN Internet directory, owners of, 12–14 Internet Protocol address (IP), 155 Internet Relay Chat (IRC) technology, 11 Internet Service Providers (ISPs) cost of spam to, 196–197 EU jurisdiction and, 55 Fourth Amendment and, 177–178 intellectual property and, 168–177 DMCA and, 171–177 pre-DMCA liability, 169–171 international jurisdictions and, 54–55, 61 jurisdiction and, 52 liability conditions and anonymity, 159–179 broad immunity for, 164–166, 231 denials of broad immunity and, 166–168 history of, 162–164 investigation of, 160–162 scenarios, 160–161 practice tips, 14 safe harbor and copyright, 141, 171–176 scope of, 14 servers and, 52 terms of use, 160–161 WHOIS query and, 161–162 Internet vs. World Wide Web components of, 9–12 definitions of, 8–12 investigation case example, 8n6 Investigation protocol, steps for, 25–26 IP (Internet Protocol address), 155 IP addresses/numbers country codes, 15 domain names and, 15 history of, 12–14 location of, 13–14 practice tips, 13–14 supply of, 13n16

443

444

Index IRC (Internet Relay Chat) technology, 11 ISP. See Internet Service Providers

J Jackson; United States v. (2000), 220–221, 220n30, 221n36, 224n60 Jersey Diesel, 178 J.G. Wentworth, S.S.C. L.P. v. Settlement Funding LLC (2007), 122n158, 123–124, 128, 128n186, 135n216 Jones, Shirley, 46–48 Journalism Forum, 163 Junk Busters, 198n181 Jurisdiction and Internet, 29–66 case scenarios, 32–33, 52–53 international issues, 53–63 defamation, 61–63 E-Commerce Directive, 54–59, 61 e-commerce vs. commerce, 58 European perspective, 55 jurisdiction complexity, 54–55 national courts vs. country of origin, 59–61 personal jurisdiction, 29–31 definition of, 33 emerging principles of, 35–38 general jurisdiction, 36–37, 44–45 history of, 29–35, 38–41, 39n74 in rem jurisdiction, 38, 38n65, 51 specific jurisdiction, 37, 43, 45–48, 49 web site functionality and, 41–43 recent case law cybersquatting, 50–51 servers and ISPs, 52 scams and torts online auctions, 63–66

K Keeton v. Hustler Magazine (1984), 29n5, 36n45, 46–48 Keyword advertising, 112–135 infringement claims, 134–135 trademark use and keywords and sponsored ads, 116–117, 134–135 legal ramifications, 117–131 searching for, 117 Keywords definition of, 112–113 fair use defense and, 129–131

sponsored ads and trademarks, 116–117, 134–135 use in commerce in trademark disputes, 123–125 Keyword stuffing, 114, 114n132, 194 Klemesrud, Thomas, 170

L Labeling of spam, 199, 203, 205, 207 Laches doctrine, 86 Lanham Act (1946). See also ACPA ACPA codification under, 78 descriptive trademarks, 109 dilution of famous trademarks, 83 doctrine of laches and, 86 infringement of registered trademarks, 83 in rem action under, 82 use in commerce, 118–122, 123–125 Latin American and Caribbean Internet Address Registry (LACNIC), 13 Legitimate interests, trademarks, 79–80, 80n17, 91–95 Libel. See Defamation Life Search, 115, 115n133 Link farms, 194 Locard, Edmond, 6n3 Long-arm statutes in New York, 40 rise of, 34–36 in Virginia, 65 Louisiana on initial interest confusion, 128

M Madorsky v. Does 1–10 (2006), 206–207 Mail servers, 12 Malcolm v. Esposito (2003), 64n210, 65 Mapping, definition of, 12 Marketplaces, 9 Maryland on Internet regulation, 201 McLaughlin, Sean, 41–43 McMann v. Doe (2006), 188n151, 191 MedImmune, Inc. v. Genentech, Inc. (2007), 85–86 Merrill Lynch v. O’Connor (2000), 187 Metadata, 216, 219, 226 Metatags, 112–135 definition of, 112–113 first sale doctrine and, 132

Index infringement claims and, 129–131, 132–134 practice tips, 114–115, 131–132 trademark use and legal ramifications, 117–131 searching for, 115 technical use of, 114–115 Metatag stuffing, 114, 114n132 Microsoft Corp., 115, 115n133 Misappropriation, copyright, 146–147, 149 Money Talk bulletin board, 163–164 Mosaic browser, 9n7 Motion Picture Association of American (MPAA), 135

N National Arbitration Forum (NAF), 79 National Conference of Commissioners on Uniform State Laws, 147 National Enquirer, 46–48 National Numismatic Certification, LLC v. eBay, Inc. (2008), 168 Nautilus Group, Inc. v. Icon Health and Fitness, Inc. (2006), 134–135, 134n214 Nazi materials, 60–61 NBC Universal, Inc. v. NBCUniversal.com (2005), 38 Netcom, 169–171 Network Solutions, Inc., 51 Nevada anti-spam legislation, 199 New Jersey on fair use in trademark disputes, 130 on subscriber privacy, 178 on use in commerce, 124 New Kids on the Block v. New Am. Publ’g, Inc. (1992), 129, 129n190 Newsgroups, 10 New York anticybersquatting laws, 83 on fair use in trademark disputes, 130 on Internet regulation, 200–201 Ninth Circuit Court on CDA and ISP liability, 166–168 on fair use in trademark disputes, 130 on initial interest confusion, 125–127 on ISP liability, 176 on use in commerce, 121, 122 Nominative fair use, 117, 130, 132, 134 Notaro v. Koch (1982), 187, 191 Notaro standard, defamation, 190–191 Notice and take down procedure (DMCA), 137–139, 137n221

O Ohio on initial interest confusion, 127 on spam, 206 on statements of opinion vs. facts, 183n116 Oki Data Ams., Inc. v. ASD, Inc. (2001), 95 1-800 Contacts, Inc., v. WhenU.com, Inc. (2005), 118–121, 135n216 Online auctions jurisdiction and, 63–65 theft/sale of proprietary information and, 140 theft/sale of trade secrets and, 149 Online Policy Group v. Diebold Inc. (2004), 176–177 Online retailers, 44–45 Original data, definition of, 227 Original work of authorship, copyright, 141

P Panavision Int’l v. Toeppen (1998), 50n157, 65–66 Parodies, 106, 106n118 Passive Web sites, 42–43, 45, 49–50, 65–66 Patent disputes, 49 Patent & Trademark Office (USPTO), 83, 87, 102 Pennsylvania on initial interest confusion, 128 on use in commerce, 124 Perfect 10, Inc. v. CCBill LLC (2007), 167 Personal jurisdiction and Internet, 29–31, 33 emerging principles of, 35–38 general jurisdiction, 36–37 business contacts and, 44–45 history of, 29–35, 38–41, 39n74 in rem jurisdiction, 38, 38n65, 51 specific jurisdiction and commercial cases, 49–50 copyright disputes, 49 defamation, 45–48 patent disputes, 49 purposeful availment and, 43, 52, 65 trademark disputes, 48 web site functionality and, 41–43 Pharmaceuticals, online counterfeiting networks, 151–154 Phishing, 77 Phoenix Avatar LLC; FTC v. (2004), 206

445

446

Index Playboy Enter., Inc. v. Frena (1993), 169 Playboy Enter., Inc. v. Netscape Commc’ns Corp. (2004), 126, 135 Playboy Enter., Inc. v. Welles (2002), 122n154, 129, 130, 133, 133n203 Pornography, 92–93, 164–165 Practice tips cooperation with enforcement, 18 counterfeiting, 7, 150, 151, 152–153 cybersquatting, 71, 72, 85, 87, 93, 98, 101, 106–107 electronic evidence, 217 false e-mail addresses, 10–11 forensics, 234 ICANN lists, 15 ISPs, 14, 162 lP addresses, 13–14 metatags, 114–115, 131–132 money trail, 6 private/proxy registration services, 18 spam, 194, 195, 198 trade boards, 10 Present sense impression exception, 225 Privacy protection, in EU, 197, 209–213 Private investigators in theft investigations, 139, 140 in trademark disputes, 77 Private/proxy registration services acceptable use policy of, 195 domain names, 18, 73, 195 practice tips, 18 spam and, 18, 195, 195n168 WHOIS query and, 73 wholesalers vs. retailers, 73 Promatek Indus., Ltd. v. Equitrac Corp. (2002), 126 Public key, 118 Public records/reports, 221–222

R Racism, illegal incitement of, 60 Realtime Blackhole List (RBL), 197–198 Recording Industry Association of America (RIAA), 135 Regional Internet Registry (RIR), 13, 13n15 AfriNIC, 13 APNIC, 13 ARIN, 13 LACNIC, 13 RIPE NCC, 13 rules for IP numbers, 13n16 Registrars, 73

Relevant evidence, 217 Religious Tech. Ctr. v. Lerma (1995), 149 Religious Tech. Ctr. v. Netcom Online Commc’n Serv. (1995), 149n255, 169–171 Reno v. ACLU (1997), 164, 186n131, 205 Rescuecom Corp. v. Google, Inc. (2006), 119–121, 119n143 Rescuecom Corp. v. Gogle, Inc. (2009), 119–121, 120n145, 120n148 Research in Motion Ltd. v. Espinoza (2008), 75–76 Residual/deleted data, 216–217 Reunion Indus. v. Doe (2007), 191 Reverse WHOIS query. See also WHOIS query for cybersquatters, 19 for site owners, 19 in trademark disputes, 76–77 RIAA (Recording Industry Association of America), 135 RIPE Network Coordination Centre (RIPE NCC), 13 RIR. See Regional Internet Registry Robertson, Stephen, 176 Rome Convention (1980), 59 Rome I Regulation, 59 Root servers, 13–14, 13n14 Rowan v. U.S. Post Office Dep’t (1970), 205 Rumorville USA, 163

S Safe harbor rights under DMCA, 142 for ISPs, 141, 171–176 under EU Directive, 209 Scam Web sites, 19–20 Scientology, Church of, 148–149, 169–170 Scuttlebutt, 163 Search engine optimizer, 194 Search engines optimizers, 194 using multiple, 155 Second Circuit Court on misappropriation, 146–147 on use in commerce, 118–121, 118n138, 120n145 Sega Enter. Ltd. v. MAPHIA (1996), 171 Servers definition of, 9 FTP, 12 ISPs and, 52

Index Mail, 12 root, 13–14, 13n14 Seventh Circuit Court on electronic evidence, 220 on initial interest confusion, 126 Sherman, Chad, 171 Shevill v. Presse Alliance S.A. (1995), 62–63 Site owners, search for reverse WHOIS query, 19 tracing information, 19–20 WHOIS query, 17–19, 138, 138n224, 154–155 Sixth Circuit Court on use in commerce, 122 Skype, 11 Social networks, 9 Sony Music Entm’t Inc. v. Does 1–40 (2004), 190, 192 Source code, 115 Spam. See also CAN-SPAM Act blacklists of abusers, 8n6, 196–198 cease-and-desist letters, 195 commercial nature of, 207–208 cost of, 196–197 EU prosecution of, 208–213 Directive 95/46, 208–209 Directive 2002/58, 197 individual lawsuits and, 212–213 privacy rights and, 209–213 freedom of expression and anonymity, 193–214 CAN-SPAM in federal courts, 206–208 constitutional objections to CAN-SPAM and, 204–206 definition of, 196–197 federal legislative efforts, 201–204 investigation of, 194–196 private solutions to, 197–198 scenarios, 193, 213–214 state legislative efforts, 199–201 labeling of, 199, 203, 205, 207 opt-out provisions, 199 practice tips, 194, 195, 198 private/proxy registrations and, 18, 195, 195n168 significant adverse effect and, 207 use of private investigators for, 77 Specialty Web sites, 9 Sponsored ads, trademark use and, 116–117, 134–135

Spoofing information, 155 SPX Corp. v. Doe (2003), 182, 183–184 Standard Process, Inc. v. Banks (2008), 114n132, 132 States. See also specific states anticybersquatting laws, 83 legislation against spam, 199–201 trade secret laws in, 148n253 Stein, Sidney, 40 Stewart, Potter, 197, 197n176 Subpoena Duces Tecum to Am. Online, Inc., In re (2000), 189–190, 189n156, 192 Subpoenas, defamation, 188–190, 192 Subscriber information, disclosure of, 177–178 Substantiality, copyright, 143–144 Summary judgment standard, defamation, 190–191 Sunlight Saunas, Inc. v. Sundance Sauna, Inc. (2006), 111, 111n128 Supreme Court, U.S. on declaratory judgment and patents, 85 on interstate commerce, 199–200 on online free speech rights, 205 on personal jurisdiction, 31–35 in contract cases, 37 pre-Internet cases, 29, 45–48 in rem jurisdiction cases, 37 on privacy rights, 205 on trade secret law, 148 Syncsort Inc. v. Innovative Routines Int’l, Inc. (2008), 124n168, 128n186, 130, 133n200

T Tasting, cybersquatting, 78, 78n15 TBB. See Trade Bulletin Boards TCP/IP, 12–14 Tdata Inc. v. Aircraft Technical Publishers (2006), 127, 127n178 Techs Warehouse BBS, 169 Telephone service, 11–12 Television Without Frontiers Directive (EU), 55–56 Tenth Circuit Court on fair use in trademark disputes, 131 on initial interest confusion, 126–127 Text messages, 221, 221n39 Theft. See Web content Third Circuit Court on initial interest confusion, 127 Thomas Crown Affair, The (film), 7

447

448

Index Tiffany (NJ) Inc. v. eBay, Inc. (2008), 130, 134 Toeben, Frederick, 60 Torts database protection and, 145n240 jurisdiction and, 37 long-arm statutes and, 40 misappropriation, 146 online auctions and, 63–66 Traceroute tools, 16–17 Trade Bulletin Boards (TBBs), 9–10, 9n9, 151, 152 Trademark disputes investigation of domain names and, 70–77 assessment protocol, 70 documentation of domain usage, 74 documentation of previous cybersquatting, 76 Dun & Bradstreet reports, 74 prior use of domain name, 75–76 private investigators and, 77 reverse WHOIS query, 76–77 WHOIS query, 71–74 private investigators and, 77 recent case law cybersquatting, 50–51 scenarios, 70 specific jurisdiction and, 48 Trademarks in metatags and keyword advertising, 112–135 infringement claims, 131–135 keywords and sponsored ads, 116–117 legal ramifications, 117–131 metatags, searching for, 115 metatags, technical use of, 114–115 sponsored ads, searching for, 117 Trade secret law Internet and, 147–149 variance among states, 148n253 Traffic optimizer, 194 Traffics, definition of, 102 Typosquatting, 78, 92, 92n56

U UDRP (Uniform Domain Name Dispute Resolution Policy) bad faith use of domain names, 79–80, 79n16 dispute-resolution service providers, 79 drafting trademark complaints under factors in, 86–87

identical or confusing similarity, 89–91 noncommercial or fair use of domain name, 95–101 rights or legitimate interests, 91–95 trademark rights, 87–88 Internet Archive web pages, 75 legitimate interests, 79–80, 80n17, 91–95 pros/cons of settlement, 107–108 scope of, 79–80 Unallocated file space, 234 Uniform Resource Locator (URL). See Domain names Uniform Trade Secrets Act (UTSA, 1979), 147–149 Unique/novel work of authorship, copyright, 141 United Kingdom, 211–213 United States v. See name of opposing party Use in commerce in trademark disputes, 118–122 buying/selling keywords and, 123–125 Usenet, 10 USENET network, 176 USPTO (U.S. Patent & Trademark Office), 83, 87, 102

V Venture Tape Corp. v. McGills Glass Warehouse (2008), 127–128 Verizon, 207 Virginia long-arm statutes and, 65 on in rem jurisdiction, 51 Virtual Private Networks (VPNs), 11 Voice Over IP channels (VoIP), 11–12

W Washington on Internet regulation, 201 on spam, 207 WayBack Machine, 74–75 Web content authentication of, 220 theft of copyright and confidential information, 135–149 investigation of, 137–140 legal ramifications, 140–149 scenarios, 136–137 Web sites AllWhois.com, 71 disclaimers on, 30 interactive, 42–43, 45, 64–65

Index international jurisdictions and, 61 IP addresses, 155 passive, 42–43, 45, 49–50, 65–66 scammers and, 19–20 searching for metatags, 115 signs of counterfeiting on, 154 speciality blogs, 9 databases, 9 marketplaces, 9 Web sites, mentioned aliaba.com, 9 AllWhois.com, 17 copyright.gov, 139 DomainTools.com, 17 eCrimetools.com, 151 GoDaddy.com, 102 Hoovers.com, 74 ithreat.com, 156 online investigation services, 156 SearchBug.com, 17 TBBs, 151 Western Int’l v. Doe (2006), 191 White Buffalo Ventures, LLC. v. Univ. of Tex. (2005), 193, 213–214 WHOIS query for cybersquatters, 17–19 gTLDs and, 17, 71 ISPs and, 161–162 for owners of ISPs, 161–162 private/proxy registration services and, 73 reverse WHOIS query for cybersquatters, 19 in trademark disputes, 76–77

for site owners, 17–19, 154–155 domain names and, 17 limits of, 138, 138n224 in trademark disputes, 71–74, 76–77 Wilson, Timothy, 178 World Intellectual Property Organization (WIPO), 79 World Wide Web components of, 9–12 FTP servers, 12 Instant Messaging, 11 Internet chat rooms, 11 mail servers, 12 specialty Web sites, 9 Usenet, 10 Virtual Private Networks, 11 Voice Over IP channels, 11–12 Internet vs., 8–12, 8n6

X XO Communications, Inc., 159

Y Yahoo!, 115, 115n133, 116n135 Yahoo! v. La Ligue Contra Le Racisme et L’Antisemitisme (2007), 29n6, 60–61

Z Zahn, Jacob, 159–160 Zeran v. Am. Online, Inc. (1997), 165–166, 178–179 Zippo Mfg. Co. v. Zippo Dot Com, Inc. (1997), 41–43, 45, 49, 61, 64–66

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