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Session 2: Setting UPTeaching Fellow: Matt LovellGuest Panelists:
E-commerce,
however, presents a wholly different challenge for the site creator
and the legal practitioner. The sophisticated nature of the technology
required, the number of players involved in setting up a site and
facilitating transactions, the privacy concerns of customers who
may be giving the site information about themselves, and a host
of other realities of online business make effective legal representation
critical in this arena. In addition, e-commerce set-up often requires
great speed due to the nature of the industry, therefore adding
an additional layer of complexity that calls for even more vigilance
and preparedness on the part of the legal practitioners in structuring
transactions and advising clients. This section of the course will
examine some general steps that most U.S. e-businesses will follow
in establishing an e-commerce site and explore the necessity or
possibility of legal representation at different critical junctures
of the set-up process. A handy
keyword searchable glossary for e-commerce terminology is Internet.com's
ECommerce
Webopedia. II.
Registering a Domain Name Choosing
a TLD then is the first step in registering a domain name. There
are many registry services for the three unrestricted gTLDs, with
a variety of prices and service options available. One must closely
review the terms of the registrar service agreement policies. The
domain holder's rights in a gTLD domain name are very tenuous; most
registrars reserve the right to revoke a domain registration at
their own discretion. And courts have only just begun to explore
the boundaries of domain names and property rights. In one of the
few cases addressing domain names as property, a state court in
Virginia ruled that a domain name is a form of intangible intellectual
property subject to post-judgment creditor remedies (Website)(Umbro).
The case was later reversed when the Virginia Supreme Court ruled
that the domain names at issue could not be garnished, but that
court left open the question of whether the domain names themselves
could be considered property (Website)(Umbro
II) However, a subsequent Federal court decision (Website)(Dorer),
cast some doubt on property rights in domain names before the court
ultimately disposed of the case without definitively answering the
question. In
addition, all of the current open gTLDs (.com, .org and .net) must
abide by a standard Uniform Domain Name Dispute Resolution Agreement
under which the domain holder is subject to a mandatory resolution
procedure if any trademark owner complains about the domain name.
For more details about the UDRP, see the course section on Disputes.
In the end, most commercial concerns usually register the same name
in all three gTLDs just to avoid confusing customers. B.
CHOOSING A SECOND-LEVEL DOMAIN NAME (SLD) One
is safest when registering one's own trademark or tradename. If
it has already been registered by another party, consult the UDRP
or local law for possible grounds to force a transfer of the domain
to you. If the other party has superior rights, or if you have not
yet established any legal right in the name you wish to use, an
important first step in registering a second level domain name is
a trademark search. Due to the focus on trademarks in the ICANN
UDRP - under which a domain name registrant may be forced to give
up a domain name to its trademark holder - it is crucial to make
sure the domain name being registered is not a registered trademark
belonging to someone else. For a review of the ICANN dispute procedure,
see Diane Cabell, Using ICANN's UDRP (2000) (Website)(Cabell). See
Conducting A Trademark Search for more information. C.
CHOOSING A REGISTRAR Different
registrars also may offer differing packages of services for additional
fees. Network Solutions (Website)(NSI),
for instance, offers hosting services for registrants. Some registrars
do not offer hosting, instead requiring the registrant to provide
them with domain name server (DNS) information before they will
register the name. The easiest road for those not quite ready to
set up their websites is to choose a registrar that offers free
parking, which basically means that the registrar registers the
name without requiring DNS information and "parks" the
name on its server until the registrant is ready to use the name. While
many registrants simply choose the first registrar they come to,
the above options considered in light of the user's needs will aid
in choosing the best registrar. An equally important consideration
that is often overlooked, however, is the Terms of Service (TOS)
agreement, or the registration contract. Unfortunately, the registrars
are often the guilty party in this oversight, as TOS agreements
require the registrant to follow an often-subtle link; most registrars
do not even require the TOS agreement page to be accessed before
processing an order. See
Domain Name Registration Agreements
for more information. III.
Hosting A.
ADVANTAGES OF UTILIZING A HOST While
registering a domain name can and is often done without legal representation,
the many legal issues arising in the context of a hosting agreement
make the services of a transactional lawyer a necessity. This is
especially important considering the somewhat vague definition of
what is included in hosting, as the practitioner must make certain
that all of the e-commerce client's needs are met when drafting
a hosting agreement or making changes to boilerplate hosting agreements.
There are several major areas that require special attention to
detail when structuring such deals, including: equipment, maintenance,
service stoppages, security, and allocation of risk. Part
3: Consumer Privacy reviews some of the issues concerning collection
of personal data by hosts. Back
to TOC The
first major case to arise in the realm of ISP liability was Cubby
v. CompuServe (Website)(Cubby).
Cubby involved a situation where allegedly defamatory statements
regarding the plaintiffs were published on a CompuServe bulletin
board, resulting in suit against both the content developer and
service provider (CompuServe). In granting summary judgment for
CompuServe, the district court emphasized the fact that CompuServe
had no editorial control over, or even knowledge of the contents
of, the statements published and therefore acted as a mere distributor
of the materials available on its message boards and other online
fora. The court relied on general principles emanating from the
First Amendment (as interpreted in analogous cases dealing with
traditional media) to rule that a distributor cannot be held liable
for distributed publications containing defamatory statements if
it neither knows nor has reason to know of the allegedly defamatory
statements. The rule established in Cubby thus provided an incentive
for ISPs to remain ignorant of the actual contents of the publications
on its network in order to be considered a distributor immune from
liability. The
next major development in the realm of ISP liability came in the
case of Stratton Oakmont, Inc. v. Prodigy Services Co. (Website)(Stratton).
In that case, the court held that the Internet service provider
Prodigy could be held liable for libelous statements posted on a
bulletin board it operated by anonymous users, even though it was
not aware of the statements. Key to the court's analysis was that
the ISP in this case was more akin to a publisher than a distributor,
and was therefore not entitled to special protection under the defamation
law. The court further reasoned that because the ISP made representations
to the public concerning its regulation and screening of content
on its bulletin boards, it was exposed to greater liability than
an ISP not making such representations. In the court's opinion,
the fact that Prodigy screened only for indecent and obscene content
and not defamation was of no consequence. This case could be reconciled
with Cubby - and indeed, the court relied on Cubby to reach its
outcome - due to the fact that the ISP here attempted to exercise
editorial control. However, the reasoning led to the seemingly perverse
result that service providers who actually made an effort to police
their sites would be judged more harshly than those who chose to
remain totally ignorant. A.
THE COMMUNICATIONS DECENCY ACT (1996) These
surviving provisions of the CDA played a prominent role in the case
of Zeran v. AOL (Website)(Zeran).
In that case, a user pretending to be Mr. Zeran posted comments
on an AOL message board, offering T-shirts with offensive and tasteless
slogans regarding the Oklahoma City bombing, which had occurred
just days earlier. The posting, which included Zeran's phone number,
resulted in a large volume of angry phone calls, including death
threats. While AOL personnel removed this original posting when
Zeran notified them, they refused to publish a retraction, and subsequent
postings offering merchandise with even more offensive slogans soon
followed. The problem was exacerbated when an Oklahoma City radio
station broadcast Zeran's phone number and encouraged listeners
to call him and let him know what they thought about his offer.
Zeran's suit against AOL claimed that the ISP had failed in its "duty to remove the defamatory posting promptly, to notify its subscribers of the message's false nature, and to effectively screen future defamatory material" (Website)(Zeran,330 ). AOL relied on 47 U.S.C. §230 as an affirmative defense, and the trial court granted its motion to dismiss. In upholding the district court's ruling, the 4th Circuit explored Congress' intent in passing this section of the CDA: The purpose of this statutory immunity is not difficult to discern. Congress recognized the threat that tort-based lawsuits pose to freedom of speech in the new and burgeoning Internet medium … Faced with potential liability for each message republished by their services, interactive computer service providers might choose to severely restrict the number and type of messages posted. Congress considered the weight of the speech interests implicated and chose to immunize service providers to avoid any such restrictive effect. (Website)(Zeran 330-331) The court went on to suggest that §230 of the CDA was drafted to respond to and overrule Stratton Oakmont, seeking to remove the disincentives to self-regulation that resulted from that line of reasoning. Along these lines, the court also rejected Zeran's claim that the rules applying to a distributor, as opposed to a publisher, should apply to AOL in this case, arguing that such a conception would defeat the purpose of the statute. While the Zeran court thus recognized the broad sweep of ISP immunity under the CDA, it did stress that the Act allows an injured party to seek redress from the individual responsible for the injury. Zeran, however, was unable to identify the defamatory poster and therefore was left without an easy remedy. See
Additional CDA Cases for more information. B.
THE DIGITAL MILLENNIUM COPYRIGHT ACT (1998) The
immunities granted in these DMCA provisions are subject to numerous
conditions that make the law somewhat convoluted. The most basic
and important of these conditions are that the ISP have no knowledge
of the infringing conduct of its users (or infringing nature of
its own links) and that, once an infringement is discovered, it
take steps to expeditiously remove infringing material and suspend
service to the infringing party. In this way, the DMCA offers a
safe harbor to ISPs by withholding liability for infringement from
ISPs that have no knowledge of an infringement. When infringement
is discovered, the ISP can remain within the safe harbor and escape
liability by promptly following the specified procedures for removal
or diabling of access once it is notified of the infringement. While
this safe harbor combines with the protections of the CDA to give
a broad immunity to ISPs, the DMCA provisions may have the ancillary
effect of impinging upon free speech by encouraging more stringent
actions to be taken by ISPs against alleged infringers in an effort
to remain within the safe harbor. C.
ISP LIABILITY AND THE E-BUSINESS The
DMCA safe harbor provision presents an opportunity for a practitioner
to draft specific contractual provisions for a hosting arrangement
to address the execution of the statutory processes. Because the
DMCA safe harbor may give ISPs an incentive to overreact in shutting
down sites that are allegedly infringing, an e-business may wish
to modify a hosting agreement to allow recovery for damages due
to improper termination of service (i.e. termination when there
was no infringing content or other infringing activity). An e-business
may also wish to draft contractual language concerning the processes
by which a host ISP may shut down service. For instance, an agreement
could require notice of pending termination to be given to the e-business
and provide for a specific period of time to cure the allegedly
infringing conduct prior to termination or suspension of service.
Such contractual provisions regarding recovery for improper termination
or the process of termination can be a powerful tool to blunt the
blow upon content providers and other Internet users by the DMCA
and its encouragement of vigilance on the part of ISPs. It should
be noted however, that contractual provisions that work within the
contours of the DMCA and attempt to reach agreement on the ambiguous
interpretive junctions of specific statutory provisions will be
more likely to withstand challenge, as the federal statute may be
found to preempt any explicitly contrary contractual language in
court proceedings. This is particularly important considering the
rights of third parties (copyright holders) are involved in these
types of cases. The
other main situation in which an e-business may be affected by issues
of ISP liability is that in which the e-business itself takes on
the attributes of an ISP, opening itself up to potential liability
for the acts of its users. This process of an e-business taking
on the characteristics of an ISP is common for those websites that
offer users more interactive services. An e-business may find it
advantageous to give its customers fora, such as chat rooms, to
discuss products and other topics related to the e-business. Or
it may wish to allow its customers to post product reviews that
potential buyers can then access. These chat rooms or review areas
may be used in a manner that injures third parties - ranging from
the posting of defamatory content to copyright infringement (either
direct posting of copyrighted material or contributory infringement
by posting sites where copyrighted material can be illegally obtained).
Assessing
whether an e-business can be held liable for such acts of its users
depends on the construction of the statutes at issue. The courts
have explored the contours of the CDA and DMCA and their applicability
to websites in several major cases. V.
Website Development Like
hosting, web design and programming is something that can be developed
by in-house personnel or can be outsourced. While most businesses
take advantage of the benefits of outsourcing the hosting of servers,
web design and, to a lesser extent, programming are often kept in
house for several reasons. However,
it is not always feasible for every business to keep a fully equipped
in-house design and programming team. Some small businesses may
not have the budget or the pressing business need to develop their
own programmers. Large businesses may choose to outsource certain
aspects of the design and programming services, such as graphic
design, editing, and backend software development. Many of these
oft-outsourced services have to do with design and programming aspects
that are not site-specific. One reason for this is the idea that
an outside party may not fully understand the vision and purpose
of the e-business, so should work only on the more generic aspects
of design and programming. In other cases, it may not be cost-effective
to develop one's own designers/programmers for things that are not
site-specific. For instance, a site in need of graphics for its
website may hire an outside graphic designer to develop pictures
and icons. Outside programmers are often hired to implement credit
card verification systems, inventory and archiving systems, and
internal search engines. The more mechanical an aspect of website
functioning, the more likely it is to be outsourced. Thus, much
programming outsourcing is geared towards backend functionality
and internal aspects that keep a website running smoothly behind
the scenes. See Security for more information about external threats to website integrity. D.
SOFTWARE LICENSING AND WORK-FOR-HIRE CONTRACTS In
addition to respecting others' rights in their software, it is important
for an e-business to take measures to protect the software and other
materials (including the web page itself, databases, etc.) developed
for the e-business itself. All free-lance and other contract work
should be done on a "work-for-hire" basis which, when
specified in advance by the parties in their written agreement,
allows all copyrights in the contractor's work to vest automatically
in the e-business. If such agreements are not executed in advance,
then the material belongs to the contractor and the e-business must
obtain a written license to use the work on the website, or preferably
an outright assignment of all rights. The work-for-hire rights automatically
accrue to employers when the creation of the website material is
required as part of the employee's job duties. Copyright
and trademark infringement issues may arise as a result of infringement
directly in the displayed advertisement itself or by linking through
the advertisement to a site that contains infringing works. In the
former case, the infringement itself is posted on the host site
and the host is therefore potentially liable for copyright infringement
(Website)(Fausett).
The case of advertisements linking to a site that contains a copyright
or trademark infringement may give rise to a claim of contributory
or vicarious infringement against the linking party. Contributory
copyright infringement results when "one who, with knowledge
of the infringing activity, induces, causes, or materially contributes
to the infringing conduct of another" (Gershwin).
The U.S. Supreme Court has also acknowledged the doctrine of contributory
copyright infringement (Website)(Sony,
435). To deal with these situations, the parties should agree
upon which party will be held liable for such infringement, as well
as create a plan of action in the case that a possible infringement
is brought to the attention of the host or advertiser. B.
DIRECT MARKETING The
question of whether to use an opt-in or opt-out scheme for targeted
emails is a sensitive one that brings in questions of consumer expectations
and privacy. An opt-out scheme may seem invasive to some consumers
because they end up receiving emails for which they did not explicitly
sign up. However, the user's feeling of inconvenience is probably
less in this case than it is in the case where the user simply received
unsolicited mail from a website or e-business with which he or she
had no prior contact. This is largely because the consumer has already
taken active steps to develop a relationship with the e-business,
either by signing up as a registered member or by purchasing a product.
Due to this relationship, the consumer has or should have more of
an expectation that the e-business will contact him/her in the future
and should not be put out by receiving emails from the e-business.
In
the case of Intel Corp. v. Hamidi (Website)(Hamidi),
a California Court issued an injunction against a former employee
of Intel who was sending unsolicited emails to Intel employees regarding
the company's employment policies. The court based its ruling on
a trespass theory, suggesting that such emails were tying up the
computing resources and time of Intel employees and therefore causing
material loss to the corporation. While this case involved a somewhat
different factual situation than one where an e-business spams a
wide range of potential customers, it does show that certain forms
of abuse will not be tolerated and that spamming can be illegal
in certain circumstances. In
addition to legal issues raised by reaching potential customers
through unsolicited emails, there are other measures taken to prevent
Internet users from receiving spam that may adversely affect an
e-business attempting to utilize mass mailings. In
the end, the threat of an e-business' emails being blocked by a
private service, triggering penalties under the proposed federal
statute, or causing loss of business due to annoyance to potential
customers leads to the conclusion that mass unsolicited mailings
are an unwise (and potentially illegal) marketing method to be employed
by an enterprise. Furthermore, promoting an e-business via spam
may also constitute a breach of the company's ISP/host agreement
and result in termination of service. The best way to reach customers
therefore is through the aforementioned techniques of advertising
or using targeted email directed at past customers or registered
users of a website. See Search Engines and Directories for more information. In
contrast to the early days of search engines, the ability to purchase
higher rankings on the top search engines no longer exists. Understanding
the ranking systems of search engines, however, allows an e-business
to take measures in several major areas to ensure higher placement.
These areas include click popularity, stickiness, link popularity,
and page-related factors such as tags and keywords. Link
popularity is very important in certain search engines' ranking
schemes, particularly Google's. This metric basically measures the
number of links to a website from other websites, giving higher
rankings to sites with more links to them from other websites. In
addition to measuring sheer numbers, certain ranking schemes (most
notably Google) take into account the origin of the links, weighing
links from more highly rated pages greater than those of lesser-ranked
pages. Thus, a link to one's website from CNN.com is given more
weight than a link from Joe Smith's News of Wichita. The effect
of link popularity on ranking schemes thus may influence marketing
plans when determining affiliate and partnership agreements with
other websites, as well as different advertising strategies. Page-related
factors deal less with viewer's perceptions of a website and more
with how a search engine reads the internal placement of keywords
in the text of a website and use of meta-tags in web programming.
In this sense, while the above factors more heavily influence the
ranking or placement of a site on a results page, the page-related
factors are the gatekeepers for whether a site is returned as a
result in a search at all. An e-business website thus must reverse-engineer
searches in a way, making a determination of how users will get
to the site through a search engine or how it wishes these users
to get to its site. The main way to ensure that users get to one's
site is to create a set of keywords that describe the content and
product offerings of the website. Practitioners
and e-businesses alike should be aware that a large number of cases
have arisen involving meta-tags and trademark disputes. Many of
these cases have involved situations where, in an effort to drive
traffic to their sites (and away from competitors), web developers
have used the trademarks of competitors in their meta-tags. One
major case involving such a dispute was Playboy Enterprises, Inc.
v. Welles (Website)(Playboy).
The defendant in that case, a former Playboy model, used the plaintiff's
trademarks such as "Playboy" and "Playmate of the
Year" as keywords in her website's meta-tags. Playboy claimed
that the use of these trademarks by her site, which was a competitor
to Playboy's own website due to its adult content, constituted trademark
infringement. The court, however, granted summary judgment for the
defendant, ruling that, as a former Playboy model and Playmate of
the Year, defendant was entitled to use the trademarks to identify
herself as such under the fair use exception to the trademark doctrine
(Website1,
Website2)(§1115(b)(4)
and 1125(c)(4)). In
other cases where a fair use defense has not been available, however,
the competitor's use has been found to constitute an infringement.
In Brookfield Communications, Inc. v. West Coast Entertainment Corp.
(Website)(Brookfield1),
the defendant used the plaintiff's trademark "MovieBuff"
in both its domain name and meta-tags. The appellate court reversed
the district's court denial of a preliminary injunction for the
plaintiff, ruling that irreparable injury would likely result from
the defendant's continued use of the trademark in the domain name
and meta-tags. On the meta-tag issue, the court stated that while
"West Coast can legitimately use an appropriate descriptive
term in its metatags," plaintiff's trademark MovieBuff was
"not such a descriptive term" (Website)(Brookfield2).
Plaintiffs have prevailed on motions for preliminary injunctions
in similar cases involving the use of plaintiffs' trademarks in
defendant competitors' meta-tags (Website)(Roberts).
These
cases sound a stern warning to e-businesses thinking about using
competitors' trademarks in meta-tags. However, they should not prevent
an e-business from using in its website text terms that may be trademarked
but are used for descriptive purposes in accordance with trademark's
fair use doctrine. To this end, an e-commerce practitioner should
be familiar with the relevant sections of the trademark code dealing
with fair use [Website1,
Website2)(§1115(b)(4)
and 1125(c)(4)] and run a trademark search (Website)(TESS)
on any potential keywords that may be trademarked by a competitor.
And to the extent that these issues will be encountered in website
development, a web development agreement should incorporate an e-business'
policies regarding tagging for search engine placement.
ICANN, http://www.icann.org (back to text) See
ICANN, Seven New TLD Proposals Accepted, available at http://www.icann.org/tlds/
(back to text) See
Umbro Int'l, Inc. v. 3263851 Canada, Inc., 50 U.S.P.Q.2d (BNA) 1786
(Va. Cir. Ct. 1999), available at http://www.bc.edu/bc_org/avp/law/st_org/iptf/headlines/content/umbroadd.html
(back to text) See
Network Solutions, Inc. v. Umbro Int'l Inc., 259 Va. 759, 770 (2000)
("[W]e do not believe that it is essential to the outcome of
this case to decide whether the circuit court correctly characterized
a domain name as a 'form of intellectual property.'"), available
at http://www.gigalaw.com/library/nsi-umbro-2000-04-21-p1.html
(back to text) Dorer
and Forrms, Inc. v. Arel, 60 F. Supp. 2d 558 (E.D. Va. 1999), available
at http://lw.bna.com/lw/98266.htm (back
to text) Whois,
http://www.crsnic.net/whois/ (back to text) Uwhois,
http://www.uwhois.com/ (back to text) Network
Solutions, http://www.networksolutions.com (back
to text) Cubby
v. CompuServe, 776 F. Supp. 135 (S.D.N.Y. 1991), available at
http://www.loundy.com/CASES/Cubby_v_Compuserve.html (back
to text) Stratton
Oakmont, Inc. v. Prodigy Services Co., No. 31063/94, 1995 N.Y. Misc.
LEXIS 229 (N.Y. Sup. Ct. May 24, 1995), available at http://www.jmls.edu/cyber/cases/strat1.html
(back to text) Communications
Decency Act, Pub. L. No. 104-104, 110 Stat. 133 (1996) (codified
as amended in scattered sections of 47 U.S.C.), available at
http://www.epic.org/cda/cda.html (back to text)
47 U.S.C. §230(c) (Supp. IV 1998), available at http://caselaw.lp.findlaw.com/casecode/uscodes/47/chapters/5/subchapters/i/sections/section_230.html (back to text) See
141 CONG. REC. H8469-70 (1995) (statement of Rep. Cox.), available
at http://frwebgate3.access.gpo.gov/cgi-bin/waisgate.cgi?WAISdocID=0554725202+0+0+0&WAISaction=retrieve
(back to text) 47
U.S.C. §230(c)(1) (Supp. IV 1998), available at http://caselaw.lp.findlaw.com/casecode/uscodes/47/chapters/5/subchapters/i/sections/section_230.html
(back to text) Zeran
at 330 (back to text) Zeran
at 330-31 (back to text) Digital
Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (1998)
(codified as amended in scattered sections of 17 U.S.C.), available
at http://thomas.loc.gov/cgi-bin/query/z?c105:H.R.2281.ENR:
(back to text) 17
U.S.C. §512 (Supp. V 1999), available at http://caselaw.lp.findlaw.com/casecode/uscodes/17/chapters/5/sections/section_512.html
(back to text) See
17 U.S.C. §107 (1994), available at http://caselaw.lp.findlaw.com/casecode/uscodes/17/chapters/1/sections/section_107.html
(back to text) Bret
A. Fausett, Linking Legalities, WEBTECHNIQUES (2001), available
at http://www.webtechniques.com/archives/2001/02/legal/ (back
to text) See
Sony at 435 ("[T]he concept of contributory infringement is
merely a species of the broader problem of identifying the circumstances
in which it is just to hold one accountable for the actions of another.")
(back to text) Intel
Corp. v. Hamidi, 1999 WL 450944 (Cal. Super. Apr. 28, 1999) (unpublished
case), available at http://www.faceintel.com/permanentinjunction.htm#Tentativeruling
(back to text) Anti-Spamming
Act of 2001, H.R. 1017, 107th Cong. (2001), available at
http://www.spamlaws.com/federal/hr1017.html (back
to text) See
Carl S. Kaplan, In Spam Case, Another Defeat for State Internet
Laws, NEW YORK TIMES CYBER LAW JOURNAL, Mar. 24, 2000, available
at http://www.nytimes.com/library/tech/00/03/cyber/cyberlaw/24law.html
(back to text) U.S.
CONST. art. I, §8, cl. 3, available at http://caselaw.lp.findlaw.com/data/constitution/article01/
(back to text) Yahoo!,
http://www.yahoo.com (back to text) See
Yahoo!, How to Suggest Your Site, available at http://docs.yahoo.com/info/suggest/
(back to text) Google,
http://www.google.com (back to text) See
Google, For Site Owners: Submit Your URL, available at http://www.google.com/addurl.html
(back to text) Playboy
Enterprises, Inc. v. Welles, 78 F. Supp. 2d 1066 (S.D. Cal. 1998),
available at http://www.loundy.com/CASES/Playboy_v_Wells.html
(back to text) 15
U.S.C. §§1115(b)(4), 1125(c)(4) (1994), available at
http://caselaw.lp.findlaw.com/casecode/uscodes/15/chapters/22/subchapters/i/sections/section_1115.html,
http://caselaw.lp.findlaw.com/casecode/uscodes/15/chapters/22/subchapters/i/sections/section_1125.html
(back to text) Brookfield
at 1066 (back to text) See,
e.g., Ken Roberts Co. v. Go-To.com, No. C99-4775-THE, 2000 U.S.
Dist. LEXIS 6740 (N.D. Cal. May 10, 2000) (Judgment against defendants
who used plaintiff's trademarks in meta-tags on basis of trademark
law regarding false designation of origin and trademark dilution,
as well as state law claims), summary available at http://www.finnegan.com/summ/cases/kenroberts.htm
(back to text)
Back to TOC A.
CONDUCTING A TRADEMARK SEARCH To determine whether a potential SLD is free or trademarked by another entity, one should run a trademark search. If the enterprise intends to do business on a global basis through its website, then it would be advisable to search for trademark conflicts on a global basis. Trademarks registered in Europe can be searched theough the Community Trademark Consultation Service (available at http://www.oami.eu.int/search/trademark/la/en_tm_search.cfm), while marks registered in Canada can be searched at the Canadian Trade-Marks Database (available at http://strategis.ic.gc.ca/cgi-bin/sc_consu/trade-marks/search_e.pl.). For U.S. federal marks, one can run a search for potential domain names through the U.S. Trademark Electronic Search System (TESS) (available at http://www.uspto.gov/web/menu/tm.html) of the United States Patent and Trademark Office (USPTO) (available at http://www.uspto.gov). This can then be supplemented with a quick nationwide business name search through an online yellow pages (available at http://www.yellowpages.com). Together, these searches will give the user a rough idea of any potential conflicts and exhibit a good faith effort to ferret them out, although such cursory searches do not guarantee the absence of conflicts or indemnification of the user. An exhaustive search would include state trademark registrations, other national registries and other business registries. For more information on searching, see Susan E. Gindin, Researching Trademarks (1998) at http://www.info-law.com/tmsearch.html. More comprehensive services along these lines are available through private trademark search services such as Trademark.com at http://www.trademark.com/new_tmdocs/index.shtml, Thomson & Thomson at http://www.thomson-thomson.com/, DialogWeb at www.DIALOGweb.com, Micropatent at http://www.micropatent.com, and Trademark Register at http://www.trademarkreg.com/. Selection
of a domain name for an online enterprise is as complex as the process
for choosing a trademark name. Legal advice is strongly recommended
to protect the value of the entrepreneur's investment in the name
from claims of infringement. In the end, those wishing to take the
most effective measures possible against potential conflict can
take steps to register their trademarks through their local government
(in the U.S., the USPTO). The USPTO website, for one, allows users
to make an official
registration filing online at http://www.uspto.gov/teas/index.html.
B.
DOMAIN NAME REGISTRATION AGREEMENTS
In addition to general contractual language concerning payment of fees and what constitutes breach, provisions concerning the following are common in gTLD registration terms of service agreements:
These
boilerplate contracts/agreements are generally nonnegotiable due
to transaction costs associated with the customization of contracts.
Most registrants take substantially the same positions in their
contracts, although some have additional provisions exceeding those
above. One provision that often differs from registrar to registrar
in its specifics are the governing law and forum selection clauses,
as these tend to be tied to the registrar's place of business. In
the end, very few users will take the time to look through such
provisions and most of the disputes that arise will probably deal
with the UDRP procedure and the cancellation or transfer of a domain
name. Due to the fact that many e-commerce entrepreneurs will seek
legal representation only at a later stage in the set-up process,
practitioners should be aware of these agreements should any disputes
arise at a later date or if the client wishes to modify the registration
in some manner. An example from the UDRP context shows the importance of awareness of the specifics of a TOS. Under the UDRP, a trademark owner who brings an action agrees to submit to one of two possible jurisdictions should the domain holder wish to appeal an adverse decision. The choice is between the jurisdiction of the domain holder or the jurisdiction of the registrar. The registrar's location may therefore be important to a domain registrant who has no prior legal rights in the domain name. The language of the registration agreement is the language in which the UDRP must be conducted, so this is another factor to consider in selecting one's registrar. For those registrants with the foresight to obtain representation prior to registering a domain name, the practitioner's comparison of the specifics of different registrars' TOS agreements can be helpful in advising the client as to which service to use.
Back
to TOC For
a good checklist of hosting issues, see Scott Austin, Fifteen Things
You Need to Know to Advise Your Clients About Websites (Website).
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