Domain Name Seizure

By Janelle H.

   In an effort to curb copyright infringement, the U.S. government through the Department of Homeland Security (hereafter DHS) is starting to seize domain names from Web site owners using in rem warrants. DHS is then repurposing many of the sites to display anti-piracy public service announcements. Such seizure, however, might be illegal. Under this new seizure process the government is not required to prove its case of direct, willful copyright infringement, nor give owners of the domain name due process. This seizure may also be an unconstitutional prior restraint of free speech.

   In Puerto 80 Projects v. U.S. Dept. Homeland Security, ICE (S.D.N.Y. Aug. 4, 2011), U.S. customs agents seized the domain names Rojadirecta.com and Rojadirecta.org. The sites were suspected of being pirate internet sites used to direct users via links to illegal Web broadcasts of live sporting events and Pay-Per-View shows which violated copyright law. There was, however, no directly infringing material on Puerto 80’s Web site. Puerto 80 filed a petition in district court requesting the domain names be released pending trial on the merits of the case. The judge denied the petition because Puerto 80 did not prove seizure would cause undue hardship and “[t]he main purpose of the Rojadirecta Web site . . . is to catalog links to the copyrighted athletic events. Any argument to the contrary is clearly disingenuous.” Puerto 80’s motion to dismiss is pending oral argument.

I. Government’s arguments that domain name seizure is legal

   The government argues that there is rampant online infringement that must be stopped in order to enforce its own copyright laws and protect copyright holders. Returning the domain names would enable Puerto 80 to continue to violate copyright law. Furthermore, domain owners do not experience obvious financial hardship because, like Puerto 80, owners can simply purchase new domain names in other countries and return to business. The government’s position is that this seemingly drastic measure is necessary because many of these pirate sites are foreign—U.S. courts have no jurisdiction over the individuals who run the sites, so th traditional means of enforcement are not feasible. Lastly, the government argues that there is not a prior restraint on speech because people who participate in the sites’ discussion forums can easily find another platform for their speech online.

II. Problems with the legality of domain name seizure

   A. No direct copyright infringement
   
   The government claims that the Web site owners are subject to forfeit the domain names because they have engaged in criminal copyright infringement. Criminal copyright infringement, however, ordinarily requires a showing of willful, direct infringement. Courts have held that linking is not direct infringement. Regarding secondary liability, Puerto 80, if anything, only engaged in vicarious infringfement.  But since vicarious copyright infringement is not covered by the criminal copyright statute, forfeiture is not legal.

   B. Violation of First Amendment

   The Puerto 80 contained user-generated speech via its discussion forums. In order for the government to impose a prior restraint on this user-generated speech, the government must show: (1) the reason for the ban is a government interest of the highest magnitude, and (2) the prior restraint is necessary. To be “necessary”, the proposed harm must be certain and irreparable. Also, the restraint must be effective to prevent harm and no alternatives to the restraint can exist. In Puerto 80, it is not clear that the government has fulfilled its First Amendment burden. Also, the argument that there is no speech infringement if other forums exist contravenes established First Amendment law: “one is not to have the exercise of his liberty of expression in appropriate places abridged on the plea that it may be exercised elsewhere.” Schneider v. N.J. 308 U.S. 147 (1939). Seizure is overbroad too.

   C. Violation of Due Process

   
   Before the government may impose sanctions, the government must provide notice and a hearing  for the accused to challenge government’s actions, except in extraordinary circumstances. Hamdi. The question is if, as a matter of policy, enforcing copyright law should be one of those rare circumstances when less/no process is acceptable.

   D. Seizure may curb Internet innovation

   Seizures interfere with and disrupt the critical Domain Name System infrastructure of the internet. Also, since the government may seize domains at their discretion, internet developers may have less incentive to put their time, creativity and effort into their domains in the future.

Search Engine Optimization: Black Hat v. White Hat

By Phillip D.

Search engine optimization (SEO) is the process of improving visibility in a search engine through the organic/natural search results. As a result of an increase in the visibility of its web presence , a particular website will rank higher in the organic search results.

   The original search engines required the websites to provide information about individual websites. This is particularly important because it was the webmasters that determined what information was provided and hence determined the keywords that were relevant to the websites. As a result, webmasters were able to manipulate the search engines through the keywords provided. This manipulation lead to websites being ranked higher in the organic results over other sites that may have been more pertinent to the user’s searches. Webmasters were able to place those keywords on their websites and increase their websites’ presence on search engines.

   In the mid 1990’s Google was started as a reaction to how search engines were operating. Instead of searching for keywords on websites, the creators of Google believed that looking at the relationship between sites was a better means of ranking websites. Google’s algorithm stopped relying on webmaster provided content and looked at the importance of a site on the web in relation to other websites.

   Google and other search engines do not ordinarily have a problem with techniques of search engine optimization. There is one caveat: the search engine optimization must conform to the rules and procedures promulgated by the search engines. Google has no problem with the optimization if the process does not try to game the company’s algorithm for search results. When websites follow the search engine rules, then this is called “white hat optimization.” When websites do not follow the search engine’s rules, this is called “black hat optimization.”

   There are no federal or state laws regulating search engine optimization. Therefore, black hat optimization is not illegal, but the search engines severely frown upon such activity. If the search engine determines that a particular website is gaming the algorithm, then the search engine will take corrective measures against that website. These corrective measures could include adjusting the algorithm to more accurately represent the website’s presence on the web to fully removing the offending website from appearing in the search results.

   There are companies which will perform search engine optimization for your website. Just remember that in the end, even if a website’s owner is not aware that the company hired to increase this optimization is performing black hat optimization, the search engine may take corrective measures that causes the website ultimately to suffer in terms of visibility.

The Value of a “-book”: Facebook v. Teachbook

 By Carlos R.

   On August 18, 2010 Facebook, Inc., better known as Facebook.com, one of the world’s most popular Internet websites, filed a federal lawsuit against Teachbook.com LLC alleging trademark infringement due to the use of Teachbook.com’s “-book” suffix in its registered domain name. This will be a case of first impression in the Northern District of California, and will test the ability of wholly online services to trademark otherwise generic portions of their domain name.

   This suit against Teachbook is the main warning shot of a carefully launched campaign against other social networking websites that use the “-book” suffix in their domain names. Besides this  suit other sites that received cease and desist letters from Facebook to refrain from using “-book” in their name were Placebook, Redneckbook, Doctorbook, Vetbook, and Geezerbook. Many of these sites complied and were taken down. Teachbook may have been specifically targeted because it was planning a large nation-wide launch in the fall of 2010 and has explicitly advertised itself as an alternative to Facebook for teachers.

   Another targeted site, Lamebook, recently turned the tables and filed their own proactive trademark proceedings in the Western District of Texas against Facebook. Lamebook seeks declaratory judgment it is protected by the free speech element of the First Amendment as a parody and that it is a non-competitor of Facebook since it does not offer any social networking services.

   Many tech commentators on the Internet have suspected that Facebook's campaign was coordinated as a response to the release of David Fincher and Aaron Sorkin’s largely unflattering film adaptation of the events that led to the foundation of Facebook titled The Social Network. The lawsuit may also have much to do with the fact that many in Silicon Valley are betting on social networking websites expanding in the future and that Facebook sought to make a clear statement that it will protect its trademark name from dilution and infringement from imitators at all costs.

   Trademark law differs from copyright and patent law in that for a trademark to be  enforceable it must be in use in the marketplace. The central theories behind trademark law is that a mark will help identify goods in the marketplace and serve the dual purpose of protecting consumers from being tricked by imitator goods and also giving the owners of the mark a cause of action against competitors who piggyback off the success of the original mark to sell their own goods. A mark is considered "in use" once it is a recognizable indicator of a particular good in the marketplace. Marks can be things such as words, logo designs, colors, sounds, smells, or any combination of features that accomplishes the purpose of identifying one good.

   Words are often tricky to trademark because they can easily be found to be “generic” and not subject to trademark protections. Generic words are common or descriptive terms. For example a trademark for “apple” would be impossible to establish if one was selling apples. However, the more unique the mark to the good the better chance of success in obtaining a trademark. If one used the term “apple” to establish a mark in the computer hardware world they have a much higher likelihood of being successful (if not for the fact that Steve Jobs has gotten there first.)

   Domain names online may be considered trademarks because domain names are the central tool used by online consumers to access online goods and services. Facebook is operating under the central theory that they have established use in the marketplace and registered the name “Facebook” as a trademark for the purpose of online social networking.

   In the August 18th complaint against Teachbook the plaintiffs made two primary accusations against Teachbook.

   First, Facebook alleges trademark infringement based on the fact that the suffix “-book” causes Facebook and Teachbook to sound similar which may lead to confusion. They also claim Teachbook is directly competing for the same market pool as both Facebook and Teachbook operate online and both offer social networking to working professionals.

   Second, Facebook alleges dilution of its name brand. Facebook claims that Teachbook will weaken the strength of Facebook’s name, which has been expensive to build and maintain. Allowing a direct competitor to piggyback off the name recognition of Facebook, particularly through the use of “-book” in its domain name, will allow others to do the same and weaken the overall name brand of Facebook. The key wording here is that adding the term “-book” to the Teachbook domain name is wholly arbitrary to the function of it’s service as a social networking site for teachers, and that the only possible explanation for its use is to make consumers identify it through Facebook’s own name.

   The dilution cause of action may clearly be the stronger of the two. A similar case was decided in the fast food world earlier this year in Malaysia, where the nations highest court ended a lengthy eight year court battle between McDonalds and McCurry, an Indian-food based fast food chain. The allegations by McDonalds were very similar to the allegations made by Facebook, particularly to how the prefix “Mc-” was being used by McCurry to cause confusion among consumers and piggyback off McDonald’s name brand. For it’s own part McCurry claimed the “Mc” stood for “Malaysian Chicken” and that they were not direct competitors with McDonalds as they did not sell American fast food. The Malaysian court bought both of these arguments and found no infringement on McCurry’s part.

   The Facebook v. Teachbook case however will be fought in the Northern District of California. American Federal Courts are known to more friendly to intellectual property holders than courts in other areas of the world. It will be interesting to see which direction the court decides to go with. A win on Facebook’s part could shut down any running social networking site with the suffix “-book” and give Facebook a complete monopoly on the name and, in many ways, protect it from any competitors whose presence might be healthier for the marketplace. On the other side a win by Teachbook might open a floodgate for competitors to drown out any current value of “-book” in Facebook’s name and possibly spread the trend to other popular domain names.

   In either case the court will have a difficult time parsing through the worth of suffixes and prefixes on domain names and what value they have to the overall value of the name. I expect this will become an important issue as the Internet marketplace grows in the future. This is a case to keep an eye on.

The Name Game (Plus Typos)

THE practice of “cybersquatting” has evolved from the days when people bought a trademarked Internet domain name and hoped to squeeze the trademark owner for some cash. The law is pretty clear on that: you can’t do it.

But now, companies like Microsoft are filing lawsuits against outfits they say engage in a more complicated but potentially much more lucrative practice called “domain tasting” or “domain swiping.”

Here, domains are purchased, and Web pages festooned with advertisements built behind them to see how much traffic the U.R.L.’s attract. If it is not much, the domains are returned to the registrar within five days for a full refund. If the traffic is adequate, the domain is kept, and the domain owner collects money every time someone clicks on one of the ads.

[Click here to read the full article]

For Student Commentary, See the Comments Section of this Post

Agency Rejects .xxx Suffixes for Sex-Related Sites on Internet

A longstanding proposal to create a specialized .xxx suffix for sex-related entertainment Web sites received a final rejection yesterday by the agency governing the Internet address system.
The plan, first introduced seven years ago by ICM Registry, was rejected by a vote of 9 to 5 by the Internet Corporation for Assigned Names and Numbers, or Icann, at a meeting in Lisbon.

Board members who voted against the plan expressed concern that it would compel Icann to become involved in regulating content, among other issues.

Some who objected to the proposal included companies in the sex-related entertainment industry as well as religious groups. The entertainment executives raised fears that use of the domain, although voluntary, could open the way for governments to isolate sex-oriented Web sites into a single part of the Internet.

Others warned that the move would create a bonanza for ICM Registry, since companies with existing Web sites would be compelled to buy .xxx domain names to prevent someone else from creating sites using their company names.

[Click here to read the full article]

For Student Commentary, See the Comments Section of this Post

Cybersquatting Remains on the Rise

The number of cybersquatting disputes filed with the World Intellectual Property Organization (WIPO) in 2006 increased by 25 percent as compared to 2005. In a related development, the evolution of the domain name registration system is causing growing concern for trademark owners, in particular some of the effects of the use of computer software to automatically register expired domain names and their "parking" on pay-per-click portal sites, the option to register names free-of-charge for a five-day "tasting" period, the proliferation of new registrars, and the establishment of new generic Top Level Domains (gTLDs). The combined result of these developments is to create greater opportunities for the mass, often anonymous, registration of domain names without specific consideration of third-party intellectual property rights.

[Click here to read the full story]

For Student Commentary, See the Comments Section of this Post