Gripe Sites and Takedown Notices - americanbar.org · • The Wild West of the Internet and the “Culture of Free” • The arrival of Web 2.0: user-generated content is the force

Gripe Sites and Takedown NoticesApril 5, 2017

INTRODUCTION

• The Wild West of the Internet and the “Culture of Free”• The arrival of Web 2.0: user-generated content is the

force behind social media and other online communities• Consider different approaches for different situations

(e.g., fan site versus genuine criticism versus bad actor)• When should brand owner tolerate the “gripe” speech?• When should the brand owner fight back?

Where Do We Find Gripe Sites?

Everywhere…• Individual User Websites / Domain Names• Social Media (Facebook, Twitter, LinkedIn,

Pinterest)• E-Commerce Sites (eBay, Amazon, individual

merchant sites)

Who Are the Gripers?

• Fans• Reviewers• Critics• Competitors• Counterfeiters• Criminals

Nature of the Griping

• BENEFICIAL: Show loyalty and affection for the brand• OBJECTIVE: Commentary, review, comparison

~• COMPETITIVE: Free-riding• COUNTERFEIT: Commercially exploitative• TARNISHING: Defamatory sites• CRIMINAL: Phishing, trafficking

First Defense – Be Nice

• Fans vs. legitimate critics vs. bad actors• Turn a disgruntled user into a loyal fan• Encourage the business folks to reach out• Keep the tone positive – ask for the fan’s help• Offer swag, recognition, a simple license• “Nice” Cease-and-Desist Letters

Case Study: Parody Site

• Linden Lab, creator of the virtual community known as Second Life

• Encountered a website that poked fun at the company titled “Get a First Life”

• Parody site created by Vancouver website designer, Darren Barefoot

Case Study: Parody Site

Case Study: Parody Site

Linden Lab’s response was brilliant – they acknowledged the site for what it was, a parody:

“We do not believe that reasonable people would argue as to whether the website located at http://www.getafirstlife.com/ constitutes parody — it clearly is. Linden Lab is well known among its customers and in the general business community as a company with enlightened and well-informed views regarding intellectual property rights, including the fair use doctrine, open source licensing, and other principles that support creativity and self-expression. We know parody when we see it.”

Case Study: Parody Site

They also showed that a sense of humor can be invaluable:

“Linden Lab objects to any implication that it would employ lawyers incapable of distinguishing such obvious parody. Indeed, any competent attorney is well aware that the outcome of sending a cease-and-desist letter regarding a parody is only to draw more attention to such parody, and to invite public scorn and ridicule of the humor-impaired legal counsel. Linden Lab is well-known for having strict hiring standards, including a requirement for having a sense of humor, from which our lawyers receive no exception.”

C&D Letter: Doing it Right

• On March 1, 2012, author Patrick Wensink published a book titled Broken Piano for President with cover art that mimicked the well-known Jack Daniels’ whiskey bottle label

• Jack Daniel Distillery learned about the book and its use of the artwork, and sent a cease and desist letter in July 2012

C&D Letter: Doing it Right

C&D Letter: Doing it Right

• Jack Daniels’ C&D letter went viral, and was heralded by Business Insider as the “Nicest Cease-And-Desist Order Of All Time”

• Showed appreciation for Wensink’s fondness for the brand

• Educated Wensink as to Jack Daniels’ problem and asked for his reasonable help

C&D Letter: Doing it Right

“We are certainly flattered by your affection for the brand, but while we can appreciate the pop culture appeal of Jack Daniel’s, we also have to be diligent to ensure that the Jack Daniel’s trademarks are used correctly…if we allow uses like this one, we run the very real risk that our trademark will be weakened. As a fan of the brand, I’m sure that is not something you intended or would want to see happen.”

Notice and Take-Down

What happens when being nice doesn’t work?• Notice and Take Down Request to Internet

Service Provider (ISP)• Many ISP’s have terms of service allowing

targeted company or brand owner to request removal of “gripey” material, provided the brand owner can show actual harm (e.g., infringement, impersonation, consumer safety, etc.)

Social Media Sites – Terms of Use

Facebook:

– Trademark: “If you select a username or similar identifier for your account or Page, we reserve the right to remove or reclaim it if we believe it is appropriate (such as when a trademark owner complains about a username that does not closely relate to a user’s actual name).” (https://www.facebook.com/terms)

– Community Standards: “To help balance the needs, safety, and interests of a diverse community, however, we may remove certain kinds of sensitive content or limit the audience that sees it.” (https://www.facebook.com/communitystandards)

Social Media Sites – Terms of Use

Twitter:– Trademark: “We reserve the right to reclaim usernames on

behalf of businesses or individuals that hold legal claim or trademark on those usernames. Accounts using business names and/or logos to mislead others may be permanently suspended.” (https://support.twitter.com/articles/18311#)

– Abuse: “Twitter strives to provide an environment where people can feel free to express themselves. If abusive behavior happens, we want to make it easy for people to report it to us.” (https://support.twitter.com/articles/20169998#)

Social Media Sites – Terms of Use

LinkedIn:– Trademark: “To be eligible to use the Service, you must meet the

following criteria and represent and warrant that you…(6) will not violate any rights of LinkedIn, including intellectual property rights such as copyright or trademark rights” (https://www.linkedin.com/static?key=pop%2Fpop_multi_currency_user_agreement&type=sub)

– Community Guidelines: “Community Guidelines outlining the types of discussions and content that are acceptable on LinkedIn, and what may be deemed inappropriate and stopped by LinkedIn.” (https://www.linkedin.com/help/linkedin/answer/34593)

Social Media Sites – Terms of Use

Yelp:– Trademark: “We do not take kindly to those who abuse the intellectual

property rights of others. If you believe that your copyright or trademark is being infringed on Yelp, please let our Support team know using the form below.” (https://www.yelp.com/support/contact/copyright_trademark)

– Defamation: “If you received notification that the review you reported was not removed by our moderators, but you or your lawyer have obtained a final adjudication from a court of competent jurisdiction indicating that the review is defamatory, please contact our Support team.” (https://www.yelp-support.com/article/Will-Yelp-remove-a-false-or-defamatory-review?l=en_US)

ISP Terms of Service

• Broader IP protection – many ISPs prohibit user content that infringes any form of intellectual property, not just trademark or copyright

• Available for many types of ISPs:– Social media– E-commerce– Web hosting

ISP Terms of Service

• Many ISP’s have incorporated Notice & Take-Down procedures into their Terms of Service (TOS) or Acceptable Use Policy (AUP)

• Trademark infringement is often actionable as a breach of the user agreement

• Privacy policy may prohibit infringement, as well as defamation or personal attacks

• Many registrars will stop services (privacy service, site parking, etc.) upon receipt of a take down request

ISP Terms of Service: Defamation

• Take-down notices can be a quick and cheap remedy for removing certain negative content

• BUT, legitimate “criticism” can be much more difficult to remove than truly defamatory content

How is Defamation Defined?

“Intentional publication of a statement of fact that is false, unprivileged, and has a natural tendency to injure or which causes special damage.”

Smith v. Maldonado, 72 Cal. App. 4th 637, 645 (1999)

ISP Terms of Service

• Submitting a complaint:– Identify the ISP’s procedures for filing a complaint– If the ISP offers an online form, use it – you will

often get a faster response– Make sure your complaint is complete – failure to

provide all the information requested by the ISP is the most common reason take down requests are ignored or rejected

Anonymous Online Users

• Identifying a critic on social media platforms and e-commerce websites–Terms of Service for available remedies–Subpoenas–“John Doe” lawsuit–Law enforcement – bad acts/public harm

Stay Vigilant and Consistent

• Be proactive and visible, but realistic – you won’t catch everything

• Designate responsible person or team in your organization to monitor infringement

• Create a system to prioritize action• Maintain social media presence and stay

active – engage with customers and users!

Notice and Takedown – DMCA

• Digital Millennium Copyright Act (DMCA) (17 U.S.C. § 512)

– For copyright infringement ONLY– Provides safe harbor for Internet Service Providers

(ISPs) who act quickly to remove infringing content– May be applicable to foreign ISPs who have

sufficient ties to the U.S. market to support U.S. jurisdiction (e.g., site marketed to U.S. consumers)

Notice and Takedown – EU

• European Union Electronic Commerce Directive (ECD)

– Provides safe harbor for Internet Service Providers (ISPs) who act quickly to remove infringing content

– Less specific than its U.S. counterpart; court implementation has been less consistent

– Still very useful tool for battling infringement for content on websites hosted outside the USA

Notice and Takedown – Global

• Other Jurisdictions have provisions similar to the DMCA/ECD:

– YES: Australia, China, France, Italy, Germany, Japan, New Zealand, Singapore, South Africa, South Korea, Taiwan, UK

– NO: Argentina, Brazil, Canada, India, Israel, Mexico, Russia

Gripe Websites and Domain Names

• Great third-party resources for investigating a website or domain name:– ICANN WHOIS, DomainTools– WhoIsHostingThis.com

• Contact the domain name registrar– Sometimes registrars will life a privacy screen if

the domain owner’s use violates Terms of Service

Anatomy of a URL

Anatomy of a WHOIS Listing

• Who’s behind that website?? Check out the WHOIS listing:

Identifying the Web Host

• Sample website: www.karascupcakes.com• Web Host: Media Temple• Comprehensive Use/Infringement Policies

AND online infringement complaint form:• https://mediatemple.net/legal/terms-of-

service/

Identifying the Web Host (cont.)

• Registrars, name servers, hosting companies, oh my…!

Identifying the Web Host (cont.)

Identifying the Web Host (cont.)

Domain Name Disputes – Overview

• What if someone has registered a domain name for a gripe site that reflects your brand? (e.g., thiscompanysucks.com)

• File a UDRP, URS, ccTLD proceeding– Limited relief, but faster/cheaper than

litigation– Brand owner can obtain cancellation, transfer,

or suspension of offending domain name

Domain Name Disputes – Overview

CAUTION: Domain name dispute may not be appropriate (or even advisable) for some gripe/criticism sites, fan sites• Much more aggressive tactic• Can backfire from a PR standpoint• In cases of true non-commercial, free speech

(reporting and/or criticism), likelihood of success is often lower

UDRP

• UDRP (Uniform Domain Name Dispute Resolution Policy)• Streamlined administrative procedure to obtain cancellation

or transfer of infringing domain name• Currently 5 providers, including WIPO, Forum, ADNDRC• Generally, must show that the registrant registered domain

name:a) similar to mark in which complainant has rightsb) registrant has no legitimate rights in the domain namec) domain name registered and used in bad faith

URS

• Uniform Rapid Suspension System (URS)• Provides a cheaper, faster alternative to UDRP

proceedings• Same test as UDRP, but higher burden of proof on

Complainant – appropriate in cases of CLEAR infringement

• NOT appropriate for gripe sites with at least some legitimate free speech aspect

UDRP Case Law

• Does a “gripe” site constitute a registrant’s legitimate right to the domain name?

• For cases involving “genuine, noncommercial criticism”, there are two main views:– Balance risk of impersonation with desire to

protect legitimate, noncommercial free speech

UDRP Case Law

Panel View #1 – Impersonation:• “The right to criticize does not necessarily extend to

registering and using a domain name that is identical or confusingly similar to the complainant's trademark. That is especially the case if the respondent is using the trademark alone as the domain name (i.e., <trademark.tld>) as that may be understood by Internet users as impersonating the trademark owner.”

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")

UDRP Case Law• Myer Stores Limited v. Mr. David John Singh, WIPO Case No.D2001-

0763, <myeronline.com>, Transfer• Complainant is Australia’s largest department store• Registrant had other domains reflecting well-known Australian

brands• Claimed to have registered domain “in order to inform the public,

potential and current stock holders of the parent company of the Complainant…as to the business description, financial performance and stock performance, free of any type of advertising, commercial gain for me or any other party.”

UDRP Case Law• Panel found no legitimate right to the domain name by the registrant:

[I]n balancing the rights of Complainant in its mark, and the rights of Respondent to freely express its views about Complainant’s services, the Panel concludes that Respondent has impermissibly taken advantage of Complainant’s commercial interests in the mark… the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine."

UDRP Case Law• Triodos Bank NV v. Ashley Dobbs, WIPO Case No.D2002-0776,

<triodos-bank.com>, Transfer• Complainant is a Dutch bank with a place of business in the UK.;

Respondent was a director of a company named Acorn Televillages Limited, which borrowed money from the Complainant and whose assets were later placed into receivership by Complainant, leading to company closure

• Registrant used the domain name to “air his grievances against the Complainant” and "to make the public aware of the unethical and non-transparent treatment experienced by Acorn Televillages at the hands of this self-proclaimed ethical and transparent bank".

UDRP Case Law• Complainant produced consumer survey showing likelihood of confusion,

and claimed that “it is clear that the intent is to publish to a reader highly negative views which inevitably have a propensity to undermine any favorable views that the visitor to the website might have previously had.”

• Panel found that Respondent “has a genuine grievance against the Complainant and genuinely believes that the Complainant has behaved reprehensibly. The Panel further accepts that the Respondent’s rights of free speech entitle him fairly to express his views on the matter. However, none of that entitles the Respondent to represent that he is the Complainant…[d]epriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech.

UDRP Case Law• Hoteles Turísticos Unidos S.A., HOTUSA v. Jomar Technologies, WIPO Case

No.D2008-0136, <eurostarsblue.com>, Transfer• Complainant operates line of successful hotel properties; at one point, the

property experienced a theft of guest money and valuables• Respondent claimed legitimate non commercial and fair use as a “protest”

or “criticism” website, reporting on the alleged theft, and urging a boycott of Complainant’s hotel chain

• Panel acknowledged Respondent’s right to express critical views, but found no legitimate interest in the domain name because “[d]epriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech.”

UDRP Case Law

• The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No.D2009-0022, <fbcglenarden.com>, Transfer

• Panel found Respondent’s website to be Respondent's website to be “a criticism site that raises issues of free speech under the United States Constitution. Particularly is that so in light of the political, social, and religious nature of the topics discussed; this kind of speech is entitled to special protection under American Constitutional law.”

UDRP Case Law

• While acknowledging freedom to criticize, and declining to find defamation, the Panel found that “Respondent's selection of Complainant's name for her criticism site allows her to make use of Complainant's service mark in a manner that would lead an ordinary Internet user initially to believe that Respondent was Complainant or that Respondent had Complainant's permission to distribute her message.”

UDRP Case Law• Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev,

WIPO Case No.D2009-1416, <anastasia-international.info>, Transfer• Complainant is a Kentucky-based company which provides Russian-

American introduction and romance tour services, predominantly via interactive websites.

• Respondent operates a website at the disputed domain name titled “anastasia-international.com scam” and reflected statements critical of the Complainant's business practices.

• Complainant claimed Respondent may have been a competitor, but put forth no evidence to support this claim

UDRP Case Law• Respondent claimed to use the domain name “for a website which

would provide a warning to prospective customers of the Complainant regarding allegedly deceptive business practices of the Complainant” and that its statements regarding such alleged practices on the Internet is “telling the truth.”

• Panel acknowledged the genuine, non-commercial critical nature of Respondent’s website – yet followed the precedential line of cases in View #1, holding that “the Respondent's right to exercise freedom of speech does not extend to an entitlement to disseminate its views by deliberately and misleadingly cloaking itself in the name of the Complainant in order to maximise the numbers in its audience.”

UDRP Case LawPanel View #2 – Legitimate, non-commercial criticism:• In the event that a domain name identical or confusingly similar to

a trademark is being used for a genuine noncommercial free speech website (especially in the US)

• Regardless of whether the domain name itself connotes criticism (e.g., thiscompanysucks.com), “the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and noncommercial.”

WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")

UDRP Case Law

• Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No.D2000-0190, <bridgestone-firestone.net>, Denial

• Complainant alleged three claims of bad faith:• a) Redirect customers to his site for profit, b)

tarnishment/dilution, and c) attempt to sell/transfer by stating on his website “Why Bridgestone/Firestone must pay John Myers“

UDRP Case Law

• In view of the U.S. identity of both sides, panel relied heavily on U.S. civil law and its interpretation of “fair use.”

• Likened the analysis to Central District of California’s 1998 ruling in Bally Total Fitness Holding Corp. v. Faber, agreeing that a defendant’s use of a trademark in an Internet site for purposes of consumer commentary and criticism did not infringe or dilute the plaintiff’s mark, and was permissible because not for commercial gain, but rather to exercise his First Amendment right to criticize the Complainants.

UDRP Case Law• TMP Worldwide Inc. v. Jennifer L. Potter, WIPO Case No.D2000-0536,

<tmpworldwide.net> inter alia, Denial• Complainant operated large advertising agency directed to “yellow page”

directories• Respondent was a former client of Complainant, and had amassed over

$890,000 is past due fees for Complainant’s advertising services• Complainant was awarded an arbitrator’s judgment of over $900,000 –

shortly thereafter, Complainant began circulating an “open letter” to various Fortune 500 companies, claiming that TMP had mis-handled her company advertising account and caused her financial hardship in the form of an arbitrator’s award for the monies apparently due to TMP.

UDRP Case Law• Complainant alleged that Respondent stated in their first conversation

concerning the domain names that “I have a couple of domain names that your client might be interested in purchasing” – Respondent disputed this characterization of the conversation, and disagreed with Complainant’s assertion that her website contained falsehoods or libelous statements.

• Citing the Anti-Cybersquatting Consumer Protection Act (ACPA), Panel held that Respondent had a legitimate right to the domain because “[t]he principal, if not sole, purpose of Respondent’s Web site…appears not to be for commercial gain, but, rather, to exercise her First Amendment right to criticize Complainant and comment on her experiences in dealing with Complainant.”

UDRP Case Law

• Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No.D2004-0014, <hjta.com>, Denial

• Complainant is a tax-relief advocacy organization, and Respondent was highly critical of Complainant’s business practices

• Decade-long history of litigation between the parties• Complainant alleged registration of the domains solely to

disrupt Complainant’s business – Respondent asserted no possible confusion of the source of his website, given his considerable criticism

UDRP Case Law• Panel gave detailed explanation of UDRP case law split, and acknowledged

the impact on parties who seek predictability and consistency in decisions• Panel opted to defer to local law (U.S.) and to uphold strong U.S.

protections for free speech within the context of “legitimate criticism sites.”

• Distinguished other cases (also involving U.S. parties) where panel found for Complainant on the grounds that registrant was engaged in commercial activity

• Take-aways:– Focus on commercial activity if you’re dealing with a U.S. registrant;

conversely, focus on risk of impersonation for a non-U.S. registrant, and assert cases from Panel View #1

UDRP Case Law• Sermo, Inc. v. CatalystMD, LLC, WIPO Case No.D2008-0647,

<sermosucks.com>, Denial• Complainant operated online user forums for use in the medical

community• Respondent used domain name for “a website which disseminates

grievances towards the Complainant” – reflected Complainant’s stylized logos with no disclaimer stating no relation to Complainant

• Panel found legitimate, non-commercial fair use• Upheld earlier “Jarvis approach”, urging panels to “also consider national

laws in assessing whether Respondent has established a fair use right”• Panel’s rationale was that both parties had agreed to mutual jurisdiction in

Tulsa, Oklahoma – so U.S. law would apply in the event of any challenge

UDRP Case Law

• Sutherland Institute v. Continuative LLC, WIPO Case No.D2009-0693, <sutherlandinstitute.com>, Denial

• Complainant is a “non-profit state-based public-policy think tank” located in Utah

• Instances of actual confusion between Complainant’s authentic website and that of Respondent – Panel actually acknowledged “Respondent has gone to considerable lengths to create Internet user confusion regarding Complainant's association with its website.”

UDRP Case Law• Nominative fair use? Parody site? No!• Panel found no legitimate interest:

– (“The Panel is not convinced that Respondent's free speech interests take such significant precedence over Complainant's interest in being properly identified by the public as to cause Respondent to have a legitimate interest in the disputed domain name, as such.”)

• BUT declines to find for Complainant on bad faith intent to disrupt the business of a competitor (emphasis added) (“[O]nly by the exercise of mental gymnastics may a group of gay rights activists be defined as a “competitor” of a conservative public policy think tank.”)

• Very literal definition of competitor – although panel acknowledged that elements constituting “bad faith” are non-exhaustive

UDRP Case Law

• Panel will usually order relief in cases where free speech is primarily a pretext for commercial advantage. – Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto

Rico, WIPO Case No.D2000-0477, <walmartcanadasucks.com> inter alia, Transfer(Respondent charged “consulting fees” for domains)

– Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No.D2001-0398, <relojesrolex.com> inter alia), Transfer(Panel inferred bad faith intent to sell/profit from domain)

UDRP – Best Practices

• Focus on commercial aspects of domain use• Tread lightly with most registrants, especially

those likely to engender sympathy with panel• Be as accurate and objective as possible about

the facts and claims of the case– Do not mislead (directly or by omission)– Do NOT over-reach!

UDRP – Best Practices

• Compare forums for greater chance of success– WIPO: Majority of panelists are trademark

practitioners, global range of panelists, stronger emphasis on impersonation

– Forum: Mostly US practitioners, drawn from broader practice areas, emphasis on free speech

• Beware: Reverse Domain Name Hijacking (reserved for claims with no legitimate basis)

Litigation Remedies – ACPA

• Civil Action in Federal or State Court– Anti-cybersquatting Consumer Protection Act

(ACPA), 15 U.S.C. § 1125(d)• Provides a cause of action against a person or

entity who registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, or is diluting or tarnishing a famous mark, with a bad faith intent to profit from the domain name

Litigation Remedies – Lanham Act

• Civil Action in Federal or State Court–Infringement, Dilution–Defamation–Tortious Interference, Unfair

Competition

Earliest “Gripe Site” Cases

• Bally Total Fitness Holding Corp. v. Faber (C.D. Cal. 1998)

• Website contained logos and the brand BALLY – used to host criticism about the Bally’s health club; court found no infringement or tarnishment

Earliest “Gripe Site” Cases

• Planned Parenthood Fed’n of Am., Inc. v. Bucci (S.D.N.Y. 1997)

• Court found commercial use under the Lanham Act and therefore liability

Review of ACPA

• Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D. Va. 2000)

• Dismissed because Plaintiff failed to satisfy In Remrequirement to contact Defendant before filing suit

• Commentary on side issues:– Upheld previous findings that domain name is

“property”– A finding that <lucentsucks.com> is parody/criticism

would strongly diminish Lucent’s claim of bad faith

Review of ACPA

• Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th Cir. 2003)

• “[T]he domain name is a type of public expression, no different in scope than a billboard or a pulpit, and [the defendant] has a First Amendment right to express his opinion about [the plaintiff], and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it.”

Review of ACPA

• Lucas Nursery and Landscaping, Inc. v. Grosse, (E.D. Mich. 2002), aff’d (6th Cir. 2004)

• Defendant used domain name to host a legitimate, critical, noncommercial site.

• Sixth Circuit found no bad faith intent to profit, only good intentions to educate other consumers about her experience.

Review of ACPA

• Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005)• Court also looked at content, in addition to domain

name: website included prominent disclaimer, stating no affiliation with Falwell or his ministry

• Court found no commercial use, or likelihood of confusion

• No liability under ACPA

Reverse Domain Name Hijacking

• PITFALL: reverse domain name hijacking• Jeffrey Walter v. Ville de Paris, (4:09-cv-

03939) first known instance of award of statutory damages after finding of RDNH

• Court levied damages of $100,000 on the city of Paris

Review of Lanham Act cases

• Jews for Jesus v. Brodsky (D.N.J.), aff’d (3d Cir. 1998)

• Court found disclaimer of non-affiliation insufficient to avert likelihood of confusion

• Court also found evidence of commercial use by virtue of site’s affiliation with the commercial site, Outreach Judaism

Review of Lanham Act Cases

• Bosley Medical Inst. v. Kremer (S.D. Cal. 2004), aff’d in part and rev’d in part (9th Cir. 2005)

• Former patient created website www.bosleymedicalviolations.com to criticize past service by the company

• Multiple claims (infringement, dilution, Lanham Act anti-dilution)

• NO liability under the Lanham Act

Lanham Act – Defamation

• Ascentive, LLC v. Opinion Corp. (E.D.N.Y. 2011)• Plaintiffs claimed defendants created multiple fake

websites and social media accounts, designed to link back to website and make complaints appear newer

• On individual target webpages, defendant linked to ads for competing products – and also offered a paid service where users could pay Ascentive to curate its pissedconsumer.com page

CDA Section 230 – Defamation

• Court found pissedconsumer.com to be engaged in questionable business practices – but NO liability for defamation

• No likelihood of confusion

CDA Section 230 – Defamation

• Hassell v. Bird, 2016, WL 3163296 (Cal. App. Ct. June 7, 2016)

• Disgruntled client wrote negative (allegedly false) Yelp reviews against former lawyer

• ISP’s now responsible for removing defamatory content

• Yelp appealed to CA Supreme Court - pending

SPEAKER BIOGRAPHIES

SPEAKER

Alyssa ReinerAssociate General Counsel

AOL, Inc.

SPEAKER

Mindy M. MortonPartner

Procopio, Cory, Hargreaves & Savitch, LLP

MODERATOR

Marina A. LewisVice Chair

Trademarks and the Internet Committee

Thank you!