Marty Schwimmer over at the Trademark Blog reports on a recent trademark infringement case filed by Cleanflicks.
I noticed a rather interesting issue in the complaint. The plaintiff includes a count against the defendant under the Cybersquatting Act.
As a result of Defendant’s unauthorized registration and use of the confusingly similar http://www.myspace.com/cleanflicks Plaintiff Clean Flicks is damaged and will continue to be damaged. Therefore Plaintiff is entitled to injunctive relief, to an order transferring the domain name to Plaintiff, and to recover against Defendant statutory damages, plus interest and costs in an amount to be proven at trial, and to its attorney’s fees. (source)
I can not recall another cybersquatting case in which the defendant was found liable under the ACPA for bad faith registration or use of a web address or subdirectory path.
The ACPA is triggered if a defendant registers, traffics in, or uses a domain name that is identical or confusingly similar to another’s mark. The plain language of the ACPA doesn’t seem to limit this to second level domains.
However, 15 U.S.C. § 1127 defines “domain name” as follows:
The term “domain name” means any 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.
I could see a court agreeing that myspace fits into the term “other domain name registration authority,” without making completely bizarre legal contortions. Nevertheless, I don’t think that the name of a myspace account fits into this definition of “domain name” very neatly. It may very well come down to how tech-savvy the judge is. A judge who understands how the internet works will certainly be less inclined to agree with this expansive reading of the term “domain name.” A luddite judge will likely not see the distinction.
That being said, I’m not sure that the luddite point of view is necessarily wrong, but something just does not feel right about putting such restrictions on subdirectories.
This will be a good case to watch. If the court agrees that myspace account names are covered under the ACPA, this could open some major ACPA floodgates (with some possible First Amendment implications).