Category: University of Washington School of Law

What’s in a (Domain) Name?

Amber L. Leaders

In the history of time, or the Internet, one word has become the word to end all words.  It has reached the climax.  Hit the high note.  Gone the distance.  What is that giant of the Google search?  Sex.  That’s right, Sex.  It should come as no surprise to anyone that in the world of domain names, that simple three letter word is the world’s most expensive.  In a recent California bankruptcy case, Escom LLC named a winning bidder in its Sex.com sweepstakes.  Clover Holdings Ltd will be the new lucky owner of this valuable site, coming in with cool $13 million bid.   It’s a staggering sum.  To come close to matching it would take a treacherous  combination of porn(.com) and vodka(.com) or a tamer, but still entertaining, combo of slots(.com), toys(.com) and candy(.com) to be in the ballpark of the “sex” sale.

Such is the growth of the internet that simple and common words carry such high price tags.  Folks out to reach a wide audience and be tops in the search window will shell out exorbitant amounts for those precious little words.  Popular words like “internet,”  “computer” and “insure” have all sold for sums in the millions.  It’s an interesting commentary on what we value and what sells in today’s web world.  Our top selling websites are almost universally descriptions of our common  vices.   Over the past year some of the top sellers include: dating.com ($1.7 million), poker.org ($1 million), guns.com ($800,000),  IPO.com ($500,000) and  kredit.com ($270,000).  But the top 100 include some surprises as well: disco.com ($255,000), wicker.com ($230,000), pig.com ($125,000), dirt.com ($100,000) and the always popular schmuck.com ($65,000).

Taking a deeper look at popular domain name auction sites likes Sedo.com and Snapnames.com reveals our more intriguing, but less obvious, “vices.”

  • In a close one in the war on drugs, stopdrugs.com ($5000) beats out marijuanaparty.com ($3900).
  • Looking for some direction in the grim legal market (I know I am)?  Maybe consider a career in PI(personal injury)!  Asbestoslawyer.com ($12,500) and cigaretteslawyer.com ($10,000) easily beat out the less lucrative, but hopefully more fulfilling, other PI(public interest) sites lawandjusticenetwork.com ($3000), humanjustice.com ($588) and fightpoverty.org ($70, really? For shame.)
  • In a fine showing for a pacifists everywhere, peaceforall.com, peaceloving.com and forpeace.org all come in over $3000  while militants.com, nopeace.com and killthem.com don’t even break the $500 mark.
  • In sad news for the well-educated everywhere, schoolisforfools.com ($1588) edges businessgraduate.com ($1395), law-degree.com ($449) and engineeringgraduate.com ($788).  Though doctors still end up on top (medicaldegree.com $68,000).
  • Pugs.com comes in a whopping $10,099, but in a triumph of big over little GreatDanes.com trumps the little pug at $18,500.

All in all, it’s an interesting landscape in the domain names buying and selling game.  A landscape that reflects, to some degree, our greatest pursuits.  A landscape that is only going to grow more expensive as the web reaches further and further corners of the globe.  A landscape that honors the obvious and the obscure.  A landscape where the fool is king, where sex sells and where justice comes cheap.

But if that landscape sounds appealing and you have some dollars in your pocket, then keep in mind a couple important points.  First, what do you actually get when you buy a domain name?  Legal scholars debate whether buyers of domain names receive property or a service agreement or something in between.  For example, in Network Solutions, Inc. v. Umbro International, Inc., et al., the Supreme Court of Virgina recognized that domain names are unique and unlike trademark, but did not directly address whether domain names could be considered as  intangible property. In contrast, some tax experts argue domain names do constitute property.

The distinction is important for buyers in the case of litigation over the domain.  If the domain is property, property law applies; if the domain is a service agreement, contract law applies.  The other important point is that different domains carry different levels of restrictions. Domain names are generally owned by the person who registered the name with the registrar. But it is somewhat unclear whether this means the person ordered the domain name through the registrar, the person who paid consideration for the domain name, or the person whose contact information appears in the registry. One reading of the ICANN Registrar Accreditation Agreement Section 3.3 suggests the owner of a domain name is the party whose name and address is published as the Registered Name Holder.

Top-level domains such as .com and are unrestricted and open to all.  Generally speaking, there are no geographic or other registration restrictions these domains. Other top-level domains, such as .gov or  certain country-specific handles, can carry heavy restrictions and may limit who is allowed to register the domain. The country-specific domains are based on standardized abbreviations set by the International Standards Organization (ISO). The central governing body for top-level domains, the Internet Corporation for Assigned Names and Numbers (ICANN), has its principal offices in the United States, but the organization is international in scope.

Although the registration of generic top-level domain names is automated, many of the registries for country-specific domain names are not automated and may require detailed paperwork and compliance. Given all this complexity, prior to spending your pennies on a fancy new domain name, researching and understanding these issues is recommended.

AOL Loses Trademark Protection for Advertising.com After Suing Advertise.com for Infringement

Gareth S. Lacy

Zillow, GoDaddy, Yahoo—Ever wonder why so many businesses choose weird names for their Web sites? One benefit of gibberish names is that they are easier to trademark than general terms like “hotel,” “lawyer,” or “mattress.” In Advertise.com, Inc. v. AOL Advertising, Inc., the Ninth Circuit recently issued the sixth decision in a line of cases highlighting the difficulty of obtaining trademark protection for domain names that contain general terms.

In Abercrombie & Fitch, Co. v. The Hunting World, Inc., Judge Henry Friendly articulated the four widely accepted classes of trademarks: generic, descriptive, suggestive, and arbitrary or fanciful. Arbitrary or fanciful marks are inherently distinctive and presumptively protected by trademark law, while generic terms are not protectable.

A generic term is one that refers to the “genus” or class of which the particular product is a “species.” For example, “apple” is a generic term for the fruit and therefore orchards cannot trademark the term “apple.” But “apple” is not a species of the genus “computer”—using “apple” as a species of “computer” falls within Judge Friendly’s “arbitrary or fanciful” category and is presumptively protectable by trademark law.

Credit: National Institute of Health

In Advertise.com v. AOL Advertising, Inc., AOL sued Advertising.com for trademark infringement and obtained an injunction. Advertising.com appealed to the Ninth Circuit on grounds AOL’s trademark was generic and therefore invalid. The court imposed a presumption that AOL’s trademark was valid because it was registered. The burden was on defendant Advertise.com to prove “genericness” through substantial evidence. Advertise.com met this burden by showing consumers widely accept that an “advertising dot com” is a Web site that provides online advertising services.

Adding “.com” to an otherwise unprotectable term will only, in two rare circumstances, create a distinctive composite capable of trademark protection. First, some top-level domains (i.e., “.com”) indicate a source that renders a generic mark registrable. The example give by the USPTO would be the addition of “.peter” to the generic “clothes” to form “clothes.peter,” which would be a registrable mark. Second, a term that is not distinctive could acquire additional meaning when a top-level domain is added. For example, the Federal Circuit held “Steelbuilding” was generic, but the addition of “.com” created a registrable trademark. In 555-1212.com, Inc. v. Communication House Intern., Inc., the addition of “.com,” to the generic “555-1212,” created a potentially protectable non-generic trademark, “555-1212.com.”

The first step of the analysis in Advertise.com v. AOL Advertising, Inc. was to separately consider the “impression conveyed” by the terms “advertising” and the top-level domain, “.com.” The court quickly concluded the public understands these terms to be generic. The second step was determining whether the composite of these two terms created a distinctive mark as in 555-1212.com or In re Steelbuilding.com. The court distinguished Steelbuilding.com on grounds that the services provided on that Web site went far beyond the sale of “steel buildings”—the addition of “.com” conveyed a unique and unexpected characteristic to an otherwise brick-and-mortar operation. In contrast, the Advertise.com services were, at their core, online advertising and the addition of “.com” did not mitigate this aspect.

Advertise.com, Inc. v. AOL Advertising, Inc. found In re Hotels.com was more analogous than In re Steelbuilding.com. In re Hotels.com examined the “focus” of the claimed services to determine whether the proposed mark was generic for those services. In particular, the service of Hotels.com was “making reservations and bookings for temporary lodging” and “Hotels.com” was, indeed, generic for those services. Substantial evidence that Hotels.com was generic included a large number of similar “hotel” domain names and dictionary evidence that “hotels” and “.com” were generic terms. Advertise.com, Inc. v. AOL Advertising, Inc. also gave a weight to evidence that 32 separate domain names incorporate “advertising.com,” such as “travel-advertising.com,” “aplusadvertising.com” and “domainadvertising.com.”

A generic term categorizes by conveying information about the nature or class of an article. This is often known as the “who-are-you/what-are you” test. Advertise.com, Inc. v. AOL Advertising, Inc. employed this test to determine whether the composite was a distinct mark:

A mark answers the buyer’s questions ‘Who are you?’ ‘Where do you come from? ‘Who vouches for you?’ A generic name of the product answers the question ‘What are you?’ Applying this test strongly suggested that ADVERTISING.COM is generic. When any online advertising company, including AOL’s competitors, is asked the question ‘what are you?’ it would be entirely appropriate for the company to respond ‘an advertising.com’ or ‘an advertising dot-com.’

In other words, a mark is generic when consumers use the mark to refer to the general kind or genus of goods or services the Applicant seeks to trademark. The two-step inquiry is: (1) What is the general kind of goods or services at issue; and (2) Does the general public understand that applied-for mark to refer to the general kind of goods or services at issue? For example, In re 1800Mattress.com concluded mattresses were the goods being sold and the public would view “Mattress.com” as “no more than the sum of its constituent parts.” The Federal Circuit also found no evidence that consumers view “.com” as shorthand for “comfort” to create a non-generic composite term.

Advertise.com, Inc. v. AOL Advertising, Inc. is the sixth decision in a line of cases that make it difficult for businesses to obtain trademark protection for domain names that include general terms for the services offered. In this month’s issue of Landslide, Thomas L. Casagrande has an excellent survey of five other key cases litigating Patents.com, Steelbuilding.com, Lawyers.com, Hotels.com, and Mattress.com. Casagrande argues the Federal Circuit’s decision to apply a “genericness” analysis conflicts with controlling precedent requiring analysis on “descriptiveness” grounds.

In summary, marks that embrace an entire class of products or services—not all of which necessarily emanate from the same source—are generic. The evaluation of a proposed trademark requires considering the mark as a whole and the potential distinctiveness derived from connection with a top-level domain.

For more information on how USPTO makes decisions regarding trademark registration of domain names, take a look at the Trademark Manual of Examining Procedure.



“Magic Words” Protect Software Developer’s Copyright

Kendra Rosenberg

SEATTLE — In Vernor v. Autodesk, a three-judge panel on the Ninth Circuit recently held that customers purchasing second-hand computer software are licensees–not owners–and therefore cannot invoke “first sale doctrine” or “essential step” affirmative defenses to copyright infringement lawsuits. This means a purchaser of second-hand software will not be able to resell the software if the “magic words” of a three-part test appear in the software use agreement.

Timothy Vernor purchased copies of Autodesk Inc.’s AutoCAD Release 14 software–with handwritten activation codes–at an office sale by Cardwell/Thomas & Associates, Inc. (“CTA”).  Vernor then tried to sell the software on eBay.  Autodesk filed a Digital Millennium Copyright Act (“DMCA”) take-down notice claiming Vernor’s sale infringed on its copyright.  eBay initially removed Vernor’s auction, but reinstated it after Vernor filed a counter-notice contesting Autodesk’s copyright claim.

Vernor sought a declaratory judgment that the “first sale” doctrine protected his resale of the software and therefore did not infringe on Autodesk’s copyright. The first sale doctrine is an affirmative defense to copyright infringement that permits owners of copyrighted work to resell those copies. The doctrine allows book owners, for example, to sell their used books to others. A first sale affirmative defense requires showing (1) a legal purchase, (2) of copyrighted material, (3) which the seller had the right to resell without restriction by the copyright owner.  17 U.S.C. § 109. The defense is only available to owners–not licensees–of software.

Venor also raised the “essential step” affirmative defense. Under this defense, if copying software is necessary (“essential step”) to using the software (such as temporarily loading software during installation), such copying is not infringement. Again, this affirmative defense is only available to an owner of copyrighted software. 17 U.S.C. § 117(a)(1).

The software at issue in Vernor was provided on a CD-ROM accompanied by a Software License Agreement (“SLA”).  The SLA granted customers a nonexclusive and nontransferable license to use Release 14, imposed transfer and use restrictions, and required destruction of older software copies if the customer received an upgrade. The issue was whether CTA was an owner of the software under this SLA–and therefore able to pass title to Vernor–or merely a licensee.

The district court initially found Vernor’s sales were non-infringing under the first sale doctrine and the essential step defense because Venor purchased the software from an end-user, granting him indefinite possession, regardless of the restricting language in the SLA.  Because Vernor retained indefinite possession, the first sale doctrine permitted him to freely resale the software.

The Ninth Circuit, however, devised a new three-part test and reversed because the SLA: (1) specifically authorized only one license; (2) significantly restricted the user’s ability to transfer the software; and (3) imposed notable use restrictions:

CTA was a licensee rather than an ‘owner of a particular copy’ of Release 14, and it was not entitled to resell its Release 14 copies to Vernor under the first sale doctrine. 17 U.S.C. § 109(a). Therefore, Vernor did not receive title to the copies from CTA and accordingly could not pass ownership on to others. Both CTA’s and Vernor’s sales infringed Autodesk’s exclusive right to distribute copies of its work. . . .

In other words, the court used a three-prong test to determine that Autodesk retained title under the SLA and CTA was therefore a licensee–rather than owner–of the Release 14 copies. As such, CTA did not grant title to Vernor so Vernor could not pass ownership to others. In fact, anyone who purchased Venor’s software on eBay and installed it would be violating Autodesk’s copyright and also unable to invoke the first sale doctrine or essential step defense.

In 2009, Thomas A. Hackett, in a Shidler Journal of Law, Commerce + Technology (now the Washington Journal of Law, Technology & Artsarticle analyzing the district court’s decision, approached the issues in a similar manner to that of the Ninth Circuit: “Vernor v. Autodesk may be a last stand of sorts for the first sale doctrine with software sales as digital media is increasingly sold via downloads.” Hackett observed that the district court provided a fresh approach to the transfer of software, but concluded that the practical realities of software downloading would likely give way to the position the Ninth Circuit ultimately adopted.

Following the Ninth Circuit’s decision, it appears software makers can protect their copyrighted material by drafting SLA provisions that comply with Vernor’s three-prong test and specifically authorize users to only one license and prohibit the transfer of licenses. Software makers may grant a nonexclusive and nontransferable license with transfer and use restrictions to protect their copyright.

The Ninth Circuit has two similar cases pending, UMG v. Augusto and MDY v. Blizzard, which both involve transfer of copyrighted materials. These cases will decide whether transactions involving copyrighted works including books, music, and movies, are also subject to Vernor’s three-prong test for whether someone is an owner or licensee.

Washington Journal of Law, Technology & Arts Publishes Autumn Edition

Logo

SEATTLE—Today the University of Washington School of Law published the Autumn 2010 issue of the new Washington Journal of Law, Technology & Arts, the nation’s first student-run electronic law journal focusing on technology, commerce, and artistic innovation.

The Washington Journal of Law, Technology & Arts publishes concise legal analysis aimed at practicing attorneys. The Journal publishes on a quarterly basis. This quarter’s edition includes five articles on topics such as:

  • How to avoiding declaratory judgments in patent disputes
  • New Securities and Exchange Act liability for “hacking and trading”
  • Avoiding liability for content published by third-parties on websites
  • Workplace GPS surveillance
  • New restrictions on anti-spam lawsuits

The Journal is the nation’s first technology and law journal that also publishes articles involving the arts. The new Journal plays a key role in furthering the University of Washington School of Law’s reputation as a center of innovation and path-breaking legal research.
The Journal replaced the Shidler Journal of Law, Commerce + Technology in 2009 as part of a merger with the Law, Technology & Arts Group (LTA), a research group at the law school.  LTA was formed to take a comprehensive approach to legal issues involved in artistic and technological innovation.  LTA consolidated the J.D. and LL.M. programs, the former Shidler Center for Law, Commerce + Technology, and the Center for Advanced Research in Intellectual Property (CASRIP) into a single research unit covering the full scope of these areas.

The Journal accepts outside submissions from students, law professors, and practicing attorneys. For more information about the Washington Journal of Law, Technology & Arts please visit their new website.

A link to download the entire Autumn 2010 issue of the Washington Journal of Law, Technology & Arts is available here.

Washington Supreme Court Cites LTA Journal in Landmark Metadata Opinion

Gareth S. Lacy

OLYMPIA — In an opinion holding that metadata is an electronic version of a record subject to disclosure under the state Public Records Act (PRA), the Washington Supreme Court today cited Jembaa N. Cole’s article, When Invisible Electronic Ink Leaves Red Faces: Tactical, Legal and Ethical Consequences of the Failure to Remove Metadata, published in the Shidler Journal of Law, Commerce + Technology in 2005. The court’s landmark decision, O’Neill v. City Of Shoreline, is now the second state supreme court opinion holding metadata subject to state public disclosure law. In 2009, the Arizona Supreme Court ruled similarly in Lake v. City of Phoenix.

Credit: Zina Deretsky, National Science Foundation

The controversy arose after a private citizen sent a “blind carbon copy” e-mail to various local government officials including the deputy mayor and a city council member. Later, Beth O’Neill, a member of the public, requested a copy of that email. So the deputy mayor removed the “To” and “From” information from the email and forwarded the message. O’Neill then filed a written PRA request for “all information relating to the e-mail, including how it was received . . .  from whom it was received, and the forwarding chain of the e-mail.” The city attorney released a print-out of the e-mail. O’Neill then requested all metadata pertaining to the e-mail chain. O’Neill sued the city under the PRA after the city failed to provide the metadata.

At issue in the case was whether e-mail metadata is a public record that must be disclosed under the PRA. The Washington Supreme Court held metadata is a “public record” subject to the PRA. Quoting from the PRA, the court noted that “public record is defined very broadly, encompassing virtually any record related to the conduct of government”:

‘Public record’ includes any writing containing information relating to the conduct of government or the performance of any governmental or proprietary function prepared, owned, used, or retained by any  state or local agency regardless of physical form or characteristics. Former RCW 42.56.010 (2005) (codified as former RCW 47.12.020(41) (2005))

The Court favorably cited the Arizona Supreme Court’s holding that “when a public entity maintains a public record in an electronic format, the electronic version of the record, including any embedded metadata, is subject to disclosure under [Arizona’s] public records law.” The Court found this holding particularly persuasive given that Arizona, unlike Washington, has no statute defining “public record.”

On remand, the trial court must give the city an opportunity to inspect the computer’s hard drive to consider whether all public records were properly disclosed. If the City  refuses to inspect the hard drive, they will have indisputably violated the PRA. Furthermore, if the city inspects the hard drive, but cannot find the metadata, the trial court must determine whether deletion of the metadata violated the PRA: “If it is possible for the City to retrieve this information, the PRA requires that it be found and released to the O’Neills.”

This Washington Supreme Court’s decision raises issues concerning what will constitute a sufficient search of the hard drive. The court did not address, for example, whether the city must conduct  data recovery if the files have, in fact, been deleted from the computer. The Arizona Supreme Court’s opinion did not require that computer systems maintain any metadata; it only required disclosure of whatever metadata was present.

Only one other state court has considered the issue of metadata and public records. In Irwin v. Onondaga County Resource Recovery Agency, the Appellate Division of the Supreme Court of New York ruled the trial court erred in denying an order to compel disclosure of metadata associated the disclosure of the metadata associated with unpublished photographs relating to ongoing law enforcement investigations. On appeal, the court amended the judgment to order the production of the metadata. Irwin is useful for describing the three types of metadata: substantive, system, and embedded.

The metadata at issue in Irwin included file names and extensions, sizes, creation dates, and latest modification dates of digitally-stored photographs and was therefore of the “system’s” variety (metadata reflecting automatically generated information about the creation or revision of a document). The court found that such metadata “is at its core the electronic equivalent of notes on a file folder indicating when the documents stored therein were created or filed, [and therefore] constitutes a “record” subject to disclosure under FOIL.”

Other state courts have not addressed the issue of whether metadata constitutes a public record. (Kara Millonzi at Coates’ Canons blog has an excellent analysis of how the law might evolve in North Carolina.) Several useful secondary sources include: Access to Metadata in Public Records, a cover story by Peter S. Kozinets published in the July 2010 issue of  Communications Lawyer; David W. Degnan, Accessing Arizona’s Government: Open Records Requests for Metadata and Other Electronically Stored Information After Lake v. City of Phoenix, 3 Phoenix L. Rev. 69 (2010); Andrea G. Nadel, What are “records” of agency which must be made available under state freedom of information act, 27 A.L.R. 4th 680 (2010); and Scott W. Cockerham, Lake v. City of Phoenix: Is Metadata a Public Record?, 51 Arizona L. Rev. 517 (2009).

In the civil litigation context, Kentucky Speedway, LLC v. NASCAR, Inc. (E.D. Ky.2006) found a presumption that metadata is not subject to disclosure because of the likelihood of its irrelevance. For example metadata will often only identify the typist and not the document’s author or computer from which it was generated. Nevertheless, metadata can be a serious trap for the unwary. Useful advice for businesses seeking to avoid generating metadata is available in Jembaa N. Cole’s 2005 article in the Shidler Journal of Law, Commerce + Technology, When Invisible Electronic Ink Leaves Red Faces: Tactical, Legal and Ethical Consequences of the Failure to Remove Metadata. Cole recommends educating employees, minimizing and reducing metadata, using paper copies, and developing clean document templates.

Jembaa N. Cole is an associate in the Seattle office of K&L Gates LLP. Her practice focuses on corporate and  intellectual property transactions, including mergers and acquisitions and trademark clearance, prosecution, counseling and enforcement. The Washington Journal of Law, Technology & Arts publishes concise legal analysis for practicing attorneys. The Journal began in 2004 as the Shidler Journal of Law, Commerce +Technology. The Shidler Journal was named after Bellingham native Roger Shidler, a founding member of the law firm Shidler McBroom & Gates. In 1990 the Shidler firm merged with Preston, Thorgrimson, Ellis & Holman, which became Preston Gates & Ellis LLP, and then K&L Gates LLP. Today K&L Gates LLP, has approximately 1,800 lawyers across three continents.