The U.S. District Court for the Eastern District of New York issued a judgment in favor of our client Millennium TGA, an award-winning producer of online media. Millennium operates 13 internet websites through which it releases entertainment content through subscription-based online services or video-on-demand.
The defendant, Joel Leon, spent several years stealing and redistributing Millennium’s copyrighted works. Mr. Leon used passwords that he hacked or stole from others, and then copied or posted Millennium’s content through blogs and one-click hosting sites. The material that defendant downloaded included full-length movies and photosets that Millennium made available only to paying subscribers.
Lewis & Lin commenced litigation against Leon, seeking damages for copyright infringement and violation of the Computer Fraud and Abuse Act. When defendant failed to answer or otherwise appear in the action, we sought entry of a default against him, and promptly appeared at an inquest hearing before a U.S. Magistrate Judge. Upon our motion, the court awarded both actual copyright damages and damages relating to our client’s investigation of Mr. Leon’s activities. The recommendation of the Magistrate Judge was adopted by U.S. District Judge Margo Brodie, and a judgment was issued. The case is Millennium TGA v. Leon, No. 12 CV 1360 (MKB) (EDNY).
Lewis & Lin obtained another UDRP victory this week, defending the domain name <palace.com> against a complaint filed by the owner of The Palace of Auburn Hills, home to the Detroit Pistons.
The complainant had argued that the domain name was confusingly similar to its registered trademark THE PALACE OF AUBURN HILLS, and its common law rights to the mark PALACE. Complainant further argued that our client lacked rights or legitimate interests to the domain name, and that our client registered and was using the domain name in bad faith.
Lewis & Lin defended the domain dispute on three grounds. First, the domain name <palace.com> was not identical or confusingly similar to a mark the complainant had rights to. Regarding complainant’s federally-registered trademark, its five-word mark combined the generic word “palace” with the geographic modifier “of Auburn Hills,” and therefore obtained distinctiveness only in the combination as registered. Regarding complainant’s allegation that it had common law rights to the term “Palace,” complainant had failed to offer any evidence in support of its claim.
Second, Lewis & Lin pointed out that our client had spent several years prior to learning of the UDRP to prepare to use the domain name in connection with an online gambling business that it was contemplating. Lewis & Lin submitted proof of our client’s actions in creating a website, executing an SEO and marketing strategy, obtaining required licenses, and entering into contracts to develop its business.
Finally, Lewis & Lin argued that the complainant failed to show that our client both registered and used the domain name in bad faith—a required element under the UDRP.
A three-member panel of the World Intellectual Property Organization (“WIPO”) agreed with Lewis & Lin on all three points, ruling for our client, and denying the complaint in its entirety. The full decision is available here.
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.