A World Intellectual Property Organization Arbitration and Mediation Center panelist recently decided that the existence of a U.S. trademark registration for the term “EXPRESS” should not bar use of the .express top-level domain (TLD), because the generic term “express” has many uses and there are a variety of domains that could be used with the TLD that would not involve the registrant’s mark.
California Federal Court Dismisses in Part Plaintiff’s Claims Against Emailer Arising under California’s Email Law
On June 18, 2013 in a case arising under California’s Commercial Email Law (“CEL”; Business and Profession Code §17529.5), Moreland v. Ad Optimizers LLC, et al., Case No.: 5:13-CV-00216-PSG, a federal court in the Northern District of California dismissed in part Moreland’s second amended complaint against an emailer where he failed to plead fraud with particularity as required by the Federal Rules of Civil Procedure 9(b). The court noted the lack of specifics alleged such as the types of allegedly false or misleading advertisements, the number of advertisements or the date ranges of the emails in each category of alleged wrong. The court further noted that Moreland did not allege the domain names for the landing sites to which the emails redirected, who those sites were registered to, any of the allegedly unlawful subject lines or the sender of any of the emails.
While the court was prepared to dismiss plaintiff’s claims on this ground alone, it nonetheless addressed Moreland’s two other arguments. The court said that plaintiff’s conspiracy claim against defendant Lopez – an owner of co-defendant Ad Optimizers – was barred by California’s Agent’s Immunity Rule, which bars a claim that an agent of a corporation conspired with its corporate principal where it acts in an official capacity on behalf of the corporation and not for individual advantage. It also barred Moreland’s claim that Lopez also conspired with at least one unnamed third party.
However, the court rejected Lopez’ argument that he was not liable under the CEL, where Lopez argued the law applied only to advertisers and not those who create and send third-party email advertisements. In support of this position, Lopez pointed to the difference between the use of “advertiser and initiator” language in §17529.4 and §17529.6 and the solitary “advertiser” language in §17529.5. The court referenced past interpretation by California courts to reject the contention.
No Initial Interest Confusion from Use of Competitor’s Service Mark in Google AdWords Where Few Consumers Click on Results
In 1-800 Contacts, Inc. v. Lens.com, Inc., et al., Case No: 11-4114, 11-4204, 12-4022 (U.S. Court of Appeals, Tenth Circuit, order entered July 16, 2013), a federal appeals court ruled that an online contact lens business’ use of Google AdWord keyword terms similar to a competitor’s service mark was not infringing where only one and a half percent of consumers clicked the resulting ads.
Would Your Web Site Terms and Conditions Be Considered Enforceable if a Dispute Arises?
In Zaltz v. JDate, Case No: 12-CV-3475 (U.S. District Court, E.D. New York, order entered July 8, 2013), a federal court in New York held that an online dating service user who registered for the site by checking a box to assent to the terms followed by the ‘accept’ button was bound by the terms even though she did not read them, notwithstanding the fact it was necessary to click a link to access the terms.
Providing Cell Number During Web Transaction Did Not Constitute Express Consent to Receive Marketing Texts
In Lusskin v. Seminole Comedy, Inc., Case No: 12-62173 (U.S. District Court, S.D. Florida, order entered June 19, 2013), a federal court in Florida held that a consumer did not expressly consent to receive marketing texts by providing his cell number as part of an online ticketing transaction with an entertainment venue.
Online Dating Site Immune from User’s Tort Action Under Communications Decency Act § 230
In Beckman v. Match.com, Case No: 2:13-CV-97 (U.S. District Court, D. Nevada, order entered May 29, 2013), a federal court in Nevada held that online dating site Match.com was immune from a user’s claim the site had negligently exposed her to a serial killer. Focusing on the claim as being essentially based on a profile created by another user, the court held the site was protected by CDA §230, which provides immunity to providers and users of interactive computer services for information provided by other users.
Ensure That Your Contracts Are Drafted in a Manner That Protects You from Infringement
In Righthaven LLC v. Hoehn, Case No: 11-16751 (U.S. Court of Appeals, Ninth Circuit, order entered May 9, 2013), the Ninth Circuit held that agreements assigning plaintiff the bare right to sue for copyright infringement of newspaper articles, without the transfer of any associated exclusive rights in the articles, did not confer standing to sue. The lower court therefore lacked jurisdiction to rule in the alternative on the fair use defense. If you need help with internet contract law visit this page.
Use of Competitor’s Mark as Keyword Not Likely to Cause Confusion in Expensive and Complex Sale
In General Steel Domestic Sales, LLC v. Chumley, et al., Civil Action No: 10-cv-01398 (U.S. District Court, D. Colorado, order entered May 7, 2013), a federal judge in Colorado held that a company’s use of a competitor’s trademarked term as a keyword in its Google AdWords campaign did not create a likelihood of confusion or constitute trademark infringement, because the level of care required to make a purchase as expensive and complex as buying a steel building, as was the case, made it unlikely a customer would base his or her decision upon which provider’s Web site he or she first discovered.
Dangers of Secretive Domain Registration
In Entrepreneur Media, Inc. v. Entrepreneursstartup.com, Civil Action No: 1:12cv1375 (U.S. District Court, E.D. Virginia, Alexandria Division, order entered April 15, 2013), a federal judge in Virginia ruled that a Web site registrant’s use of a privacy service in registering a domain name may be interpreted as an attempt to avoid providing accurate contact information and constituted an indicator of bad faith under the Anticybersquatting Consumer Protection Act.
FTC Updates Dot Com Guidance for Digital Advertisers
On March 12, 2013, the Federal Trade Commission (“FTC”) updated its online advertising guidelines (“.com Disclosures”). The update is intended to provide guidance to digital advertisers delivering ads to desktop computers, laptops, net books and mobile devices, in order to help them comply with consumer protection laws regarding deceptive and unfair business practices.
The main theme of the update relates to clarity and conspicuousness. The FTC listed several factors that should be used in determining whether a disclosure is clear and conspicuous. These include proximity and placement, prominence, other distracting factors in the ads, repetition, multimedia messages and campaigns, and understandable language.
The FTC suggested disclosures be as close as possible to the claims to which they relate. Disclosures and claims should appear on the same screen, if possible, and suggestive text or visual cues should be used otherwise to encourage scrolling that leads to the disclosure. Any hyperlinks should be obvious, well-labeled and easy to access.
In light of the guidance, advertisers should ensure their disclosures will appear clearly and conspicuously on all platforms and devices that may be used to view the ad. If an ad would be deceptive or unfair without a disclosure, and the disclosure cannot be made clearly and conspicuously on a particular platform or device, that platform or device should not be used for the ad.
The FTC can bring an enforcement action against an advertiser for deceptive or unfair business practices in violation of the FTC Act. The dot com Disclosures are not intended as a regulation or rule, but rather as guidance to digital advertisers regarding how the FTC interprets the laws it administers.
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