Lewis & Lin secured a victory for our client today in a case involving an e-commerce site’s liability for misdirected goods. Plaintiff sued our client, a top five Internet daily deal site, for damages resulting from the loss of a shipment of $200,000 worth of flat screen TVs.
Lewis & Lin filed a motion to dismiss on three grounds:
(1) Plaintiff failed to state a claim for breach of contract because, under the Uniform Commercial Code, the Purchase Invoice governing the sale of the TVs was a “shipment” contract, not a “destination” contract, and the risk of loss was borne by the plaintiff;
(2) Plaintiff failed to state a negligence claim because there was no allegation of a legal duty independent of the duty imposed by the contract itself; and
(3) Plaintiff failed to state claims for unjust enrichment or money had and received because those quasi-contract doctrines do not apply where the parties’ obligations are governed by a written contract for the sale of goods.
In a Report and Recommendation adopted by Judge Richard J. Arcara of the U.S. District Court of the Western District of New York, the court agreed with Lewis & Lin’s arguments on all three points. The case is Stampede Presentation Products, Inc. v. Productive Transportation, Inc. et al., No. 12-CV-491A (Sr) (W.D.N.Y.).
Lewis & Lin obtained a victory in a domain name action filed against our client by Comtex News Network over the domain name <Smartrend.com>. Comtex, the complainant, owned the registered trademark rights to the SMARTREND mark and operated the website hosted at <MySmartrend.com>. In its complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), Comtex claimed that our client lacked legitimate interests in the <Smartrend.com> domain name and was using it in bad faith.
Lewis & Lin argued that the instant case was a business dispute and therefore was outside the scope of the UDRP. Our client was hired by Comtex as its Director of Marketing in 2010. As part of his job duties, respondent was requested to purchase and register the <Smartrend.com> domain, and transfer it to the complainant. Comtex, in turn, would compensate respondent for his services and expenses. A dispute arose, and instead of compensating our client, Comtex filed a UDRP action to attempt to gain control of the domain name.
A single-member panel of the National Arbitration Forum agreed with Lewis & Lin. The panel recognized that the instant case was “not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the UDRP was designed to address.” According to the panel, “a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.” Thus, the panel ordered that the <Smartrend.com> domain remain with our client.
The case, Comtex News Network, Inc. v. Haney, FA1211001472158 (N.A.F. Jan. 8, 2013), can be accessed here.
Lewis & Lin obtained a victory in a UDRP domain name action filed against our client by Laminex, Inc., the owner of the website at <IDshop.com>. The complainant owned a United States trademark registration for the ID SHOP mark, registered in 1989, and provided photography services and supplies associated with identification devices such as ID cards, name badges, and electronic access cards.
Our client, the respondent, had owned and operated a novelty ID shop, housed at <theIDshop.com> since 1998. The website <theIDshop.com> generated over $2 million in sales, serving tens of thousands of customers while employing dozens of employees and expending over $100,000 for promotional purposes.
In addition to arguing that the complainant had failed to meet its burden under the UDRP, Lewis & Lin also argued the complaint failed on the basis of laches. Laches is an equitable legal doctrine that provides a defense when a brand owner has unreasonably delayed in asserting its rights, and thereby unduly prejudices the defending party.
Although laches has rarely been successfully used as a defense in a UDRP proceeding, the three-member UDRP panel agreed with Lewis & Lin that it was appropriate under the circumstances. The respondent registered the domain name in 1998 and has consistently been in business since then, investing substantial sums promoting the business through the <theIDshop.com> domain name. Although the complainant had a trademark with the USPTO for the ID SHOP mark since 1989, it offered no explanation for the 14-year delay in bringing its complaint. The panel concluded that in light of the “unexplained delay in bringing this proceeding, and the demonstrable harm to Respondent should the domain name be transferred,” relief was denied under the doctrine of laches.
The case, Laminex, Inc. v. Yan Smith, FA1211001470990 (N.A.F. Jan. 7, 2013), can be accessed here.
In a case heard before the American Arbitration Association, Lewis & Lin obtained for its client Datran Media Corp. (the predecessor to PulsePoint, Inc.) a major victory on Datran’s breach of contract claim.
Under the contract, Datran provided email marketing services to ModernAd Media LLC, with the contract renewing annually unless ModernAd provided notice of termination. ModernAd, however, stopped paying for the services beginning in August 2010, never providing the required notice of termination.
ModernAd asserted various defenses, including unconscionability, violation of New York General Obligations Law § 5-903 (regarding automatically renewing contracts), lack of authority of its Chief Operating Officer, and that an email sent by ModernAd’s CFO served as a termination notice. ModernAd also asserted a counterclaim for over $670,000, claiming that Datran unilaterally changed the pricing on a separate agreement between the parties regarding list management services.
The Arbitrator awarded Datran the full amount of damages sought for the 2010 and 2011 contract years, totaling $1,572,500. The Arbitrator also awarded over $324,000 in attorneys’ fees and expenses, and ordered ModernAd to pay $132,000 in costs associated with the proceedings. With respect to ModernAd’s counterclaim, the Arbitrator denied it in its entirety.
About PulsePoint, Inc.
Datran Media Corp, now known as PulsePoint, Inc. is an award-winning technology and marketing company that leading brands, agencies and publishers depend on to discover, reach and retain their ideal audiences across all digital media channels. PulsePoint’s top-ranked solutions for digital audience measurement, advertising, CRM, commerce and monetization have allowed thousands of companies to execute unparalleled advertising and communications campaigns across social, mobile, the Web and email. PulsePoint is headquartered in New York, with offices across the US and the UK. For more information, please visit www.pulsepoint.com.
About Lewis & Lin, LLC:
Lewis & Lin, LLC is an Internet and Intellectual Property law firm based in Brooklyn, New York. The firm’s highly experienced legal team has helped clients worldwide secure their IP rights, as well as anticipate and resolve a diverse range of Internet and IP issues. Lewis & Lin’s particular expertise lies in Internet transactions and disputes, including domain name licensing and sale agreements, domain name hijacking claims, Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation. The team also expertly handles licensing agreements, website user agreements, service agreements and privacy policies, as well as Internet-related trademark and copyright litigation. For further information, visit www.ilawco.com.
Chick-fil-A Loses Effort to Shut Down Parody Website
New York Internet law firm Lewis & Lin defended against Chick-fil-A’s allegations of trademark infringement.
Brooklyn, New York (December 3, 2012) – Jason Selvig and Davram Stiefler, two Brooklyn-based comedians and social commentators, have won their fight to defend their parody website against Chick-fil-A, the Atlanta-based fast-food chain that was thrust in the national spotlight this year for its stance against gay marriage.
Chick-fil-A’s parent company, CFA Properties, Inc., had filed a complaint in September with the World Intellectual Property Organization (“WIPO”) against the owners of the website ChickfilaFoundation.com, claiming that the website’s domain name was confusingly similar to the Chick-fil-A trademark, and was registered and used in bad faith. Selvig and Stiefler contested these charges, retaining the New York Internet law firm Lewis & Lin, LLC to defend against Chick-fil-A’s allegations.
ChickfilaFoundation.com is a website featuring satirical videos, parodies and written content intended to critique the controversy surrounding Chick-fil-A president Dan Cathy’s stated opposition to gay marriage. The website contained a “coupon” for a free chicken sandwich to customers renouncing their homosexuality: “Trade your Homosexuality for a FREE Original Chicken Sandwich!” The site also included “messages” from former Arkansas governor Mike Huckabee and Chick-fil-A’s President and CEO, Dan T. Cathy.
According to David Lin, lead attorney for the website owners, the domain name is perfectly legitimate parody. “The whole point of parody websites is to lead readers to briefly think that the website is perhaps coming from the company, and then realize that the message is a larger criticism and social commentary,” says Lin. “Chick-fil-A’s trademark doesn’t mean they have a right to silence legitimate commentary about their brand.”
“While trademark law protects corporations from infringement, corporations can’t use trademark law to squelch free speech made through parody and satire, which is what is occurred in this case,” says Lin. The World Intellectual Property Organization agreed: “The Panel is not persuaded here that Respondent’s registration and use of the disputed domain name has been shown to be for purposes of capitalizing on Complainant’s trademark.”
Lin continues, “This case is a prime example of a huge corporation trying to bully those who speak out against its business practices. The website owners engaged in legitimate, protected free speech about Chick-fil-A’s stance on gay marriage. Large corporations cannot be allowed to use trademark law as a sword to silence criticism of their company.”
The full text of the decision is available at http://www.ilawco.com/wp-content/uploads/2012/12/Decision-D2012-1618.pdf.
About Lewis & Lin, LLC:
Lewis & Lin, LLC is an Internet and Intellectual Property law firm based in Brooklyn, New York. The firm’s highly experienced legal team has helped clients worldwide secure their IP rights, as well as anticipate and resolve a diverse range of IP issues. Lewis & Lin’s particular expertise lies in Internet transactions and disputes, including domain name licensing and sale agreements, domain name hijacking claims, Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation. The team also expertly handles licensing agreements, website user agreements, service agreements and privacy policies, as well as Internet-related trademark and copyright litigation. For further information, visit www.ilawco.com.
About Jason Selvig and Davram Stiefler:
Jason Selvig and Davram Stiefler are two Brooklyn-based actors, comedians and social commentators whose projects have appeared in the Washington Post, CNBC, and ABC News. They can be contacted through their attorney, David Lin at david@iLawco.com.
For more information, contact: