The recent case of Kubert v. Best, (August 27, 2013) in New Jersey has caused a great stir: The facts of the case are, essentially, that the plaintiffs were “grievously injured by an eighteen-year-old driver who was texting while driving and crossed the center-line of the road.” New Jersey prohibited texting while driving at the time (N.J.S.A. 39:4-97.3). The underlying claims against the driver were settled, but the Plaintiffs appealed the dismissal of their claims “against the driver’s seventeen-year-old friend who was texting the driver much of the day and sent a text message to him immediately before the accident.” In its opinion New Jersey’s three-judge Court of Appeals panel decided, with a concurring opinion but no dissenting opinion, that “when the sender ‘has actual knowledge or special reason to know,’ … from prior texting experience or otherwise, that the recipient will view the text while driving, the sender has breached a duty of care to the public by distracting the driver.” Contrary to popular belief, the texter was not held liable in this case, and the dismissal of claims against her was upheld. This despite the fact that :
Hiring is always a dicey proposition. Hiring the wrong person can be costly in a number of ways: the search process is expensive, training is expensive, and bad employees can try to destroy a company from within by stealing trade secrets or revealing private company information.
Truevalueweb.com and Westorange.info – How to Learn from UDRP Complaints and Cease and Desist Letters
Domain name disputes are nothing new, and as a business you should be monitoring the potential use of your trademarks by those not authorized to use them. Eventually, the unthinkable will happen and you will find out that someone is using your trademark in their domain name. At this point you can send a cease and desist letter, pursue a Uniform Domain Name Resolution Policy “UDRP” Complaint, file a lawsuit, or do nothing. Most folks will not want to pursue a lawsuit due to the costs involved, but at the same time won’t be ignoring this type of infringement. That leaves you with the two most popular options, which are sending the opposing party a cease and desist letter, or filing a UDRP Complaint.
UDRP Complaints have various criteria that must be met in order for the Complainant to prevail. Before moving forward with a complaint, you may want to ask yourself if you can satisfy the three main criteria that every Complaint must have in order to be successful. The ICANN UDRP Policy includes these three main elements that a Complainant must prove, and they are stated within the policy as follows:
(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.
True Value Company recently filed a UDRP complaint against the registrant of Truevalueweb.com with the National Arbitration Forum “NAF”. The Complainant undoubtedly has trademark rights in the mark “True Value” as evidenced from its use of the mark in connection with hardware products since 1963 and its registered trademarks and service marks. The perplexing part of True Value’s complaint is that it claims that there is confusion in the marketplace because the Respondent is offering similar services in connection with Truevalueweb.com. Since True Value Company is a hardware store and Truevalueweb.com offers web hosting services, I really don’t see how this is possible. Evidently, Complainant does offer web hosting and design services to businesses that are part of its cooperative, but not to the general public. This is certainly not the strongest argument, but an attempt nonetheless to satisfy a necessary element by illustrating consumer confusion.
The Complainant also argues that the Respondent’s website uses the same color scheme in an attempt to confuse people and make them believe that Respondent is in some way affiliated with Complainant’s business. A simple glance at the two websites is all you will need to conclude that this an odd claim. The folks over at domainnamewire.com have done an excellent job illustrating the oddity of Complainant’s assertions in their article, and I urge you to look at the screenshots that they provided. The final decision from the NAF, published here, references the three criteria I inserted above. The NAF decided that Complainant provided enough evidence to satisfy criterion number 1 above, but that it did not prove that Respondent had no rights or legitimate interests in the disputed domain name. Not being able to satisfy the second criterion, analyzing the third was not necessary.
If you do not want to pursue a UDRP Complaint, perhaps a cease and desist letter is better suited for your needs. This is a less formal option, but is certainly something to be taken seriously. If you are considering this approach then it may be worthwhile to review this rather humorous story about a New Jersey Township attorney’s letter to a citizen of West Orange, NJ, who is the owner of Westorange.info. Cease and desist letters should not be issued lightly, and diligent research is a key element to preparing a good one. In this situation, the West Orange Township attorney, Richard D. Trenk, issued the letter to a citizen who had registered a domain name that included the township’s name with the accompaniment of the “.info” domain extension. After reviewing the site, it is blatantly clear that there could be no confusion as to whether the site was affiliated with the official government website located at westorange.org. With that being said, the cease and desist letter was clearly not well thought out or planned. If you have a few minutes, and are up for a good laugh, then I encourage you to read the entire uproxx.com article referenced above including pro bono counsel’s response to West Orange Township attorney, Richard D. Trenk.
It is important for every business to police its trademarks to the extent possible, and this may involve sending cease and desist letters and filing UDRP complaints when necessary. If you are thinking of taking action, make sure that the necessary elements are in place prior to jumping the gun. If you have any questions about this, please feel free to contact one of our Internet attorneys.
The author runs the table on OSes: I have a Linux-laptop, a Windows XP laptop and desktop, a Windows Vista laptop, a Windows 7 laptop, and a Windows 8 laptop. To call Windows 8 a “disappointment” is like calling the Atlantic Ocean a puddle… You may be wondering what Windows 8 has to do with business law. The fact of the matter is that Windows, in its various versions, is the most popular software ever, and the migration (or failure to migrate) to a new version is a major business concern.
More importantly, Windows XP, sometimes billed as “the most popular operating system ever,” is set to reach “End of Life” less than a year from now, on April 8, 2014. This might not seem like an issue, but millions of users, particularly businesses, continue to use the venerable Microsoft XP operating system. For those of you who are visual, consider the following data from Netmarketshare:
In a voluntary self-policing effort most likely intended to help safeguard their Communications Decency Act (“CDA”) Section 230 immunity from suit, several Internet Service Providers (“ISPs”) have created a “Copyright Alert System” (“CAS”) to allow content owners the opportunity to report piracy, through which “strikes” can be issued to Internet service users as a warning for piracy. This YouTube user who I can’t identify as an authority, has a few generally accurate, and fairly informative videos about the CAS regime. It’s not clear whether this user is a representative of the ISPs or not. Comcast also has a pretty good set of faqs on the CAS.
Essentially, the CAS allows content owners to identify infringing IP addresses after verifying that infringement is taking place by P2P (“peer to peer”) file sharing. The ISP then sends a warning to the Internet service user who had that IP address at the relevant time. After multiple warnings the Internet service user may be required to view a video about piracy, and after several warnings that user’s service may be “throttled,” or slowed down to make piracy more difficult or time-consuming. The CAS includes an arbitration process for challenging warnings (Russell’s teapot: How do you prove you weren’t pirating?), but no circumstance under which an Internet service user’s account is to be terminated.
Earlier this week, the U.S. District Court for the Southern District of New York ruled in favor of record label Capitol Records LLC in its dispute against Redigi Inc., a facilitator of online music resale. The Court held that Redigi violated the Copyright Act when it facilitated the sale of used digital music files, even though Redigi’s program ensured that seller’s copies are deleted upon sale.
How Your Cell Phone Became a Perching Felony: About the Recent DMCA Transition to Making Cell Phone Unlocking Illegal
Before you read any further, go read and take note of this petition. You may want to sign it (I did), but context will help in reading this blog post. In case you’ve been studying really, really hard for the Bar Exam, or were suffering from a surprise case of “dead” over the last week, you inevitably heard that the process of “unlocking” cell phones, previously legal, is now illegal because of government fiat. For those who may not have understood or thought to ask, “unlocking” is not the same as “jailbreaking.” In a nutshell, jailbreaking involves making it possible for a device to run code either from sources the manufacturer did not intend the device to be able to use or to run code the manufacturer did not intend it to be able to run (though most people talk about Apple IOS devices, Sony, for example, will note that other devices can also be “jailbroken”). Unlocking, however, involves making it possible for a device intended for use on one wireless network to be used on a different network – wireless devices sold by a particular wireless company are generally, but not always, sold programmed so that they can only use that company’s network.
Regular readers of Internetbizlaw and the Centre Knowledge blog know that I am pro technology consumer, and very cynical about the “graying” of property rights. I am not going to spend a lot of time in this post discussing the “right and wrong” of legalizing unlocking, or not, but everyone should understand a few facts:
The Computer Fraud and Abuse Act (CFAA) is a powerful weapon in a prosecutor’s arsenal. Though imperfect in some ways, it provides a way for citizens and the Government to seek redress for wrongs that previously had no crime attached to them. Much has been made of the Department of Justice’s prosecution of Mr. Swartz in the wake of his death.
Regular readers of this blog know that I will be speaking at Affiliate Summit West in Las Vegas on Tuesday, January 14th. In advance of my presentation, I thought I would give you a sneak preview. There are some good lessons for all companies – whether Internet based or not.