Eddie On Everything » legal

Domain Name Registrars Can Be Held Liable For Contributory Trademark Infringement

eddie — Fri, 30 Jul 2010 12:53:57 +0000

Attention domain parkers and registrars offering “cash parking” and domain monitization services:

Yes, you can be held liable for contributory trademark infringement if you knowingly profit from your clients’ infringement.

So sayeth the Southern District of Florida.

More specifically, the allegations against the defendants included conduct enabling a class of customers comprised of fictitious entities and anonymous individuals to “monetize” counterfeit domain names, acting as their authorized licensee and/or otherwise in concert with them, profiting with them jointly in the process, concealing their identity when challenged, and intentionally or recklessly continuing to supply registration services to them with knowledge that they are fictitious entities engaged in trademark and service mark counterfeiting, or with willful blindness to that fact.

Transamerica Corp. v. Moniker Online Services, 672 F.Supp.2d 1353 (S.D. Fla. 2009)

I think this decision is exactly right – Moniker was essentially trying to argue that they weren’t the ones doing the actual infringing, yet they refused to identify the infringer and continued to profit from the infringement. It’s important to note that simply allowing a client to register an infringing domain name isn’t enough.

In this case, Moniker:

1. Provided registration and monetization services

2. Concealed the registrant’s identity when asked to identify the registrant

3. Allowed the registrant to continue to use its domain parking monetization service, from which Moniker also profited, even though it had knowledge that the registrant was willfully using another’s trademark in a confusingly similar manner

Read the whole decision here: Transamerica Corp. v. Moniker Online Services, 672 F.Supp.2d 1353 (S.D. Fla. 2009)

The Phone Spamming Doves at 1-800-679-0336

eddie — Fri, 19 Jan 2007 22:54:44 +0000

Over the last 3 weeks, my business has received at least 15 calls from the number 800-679-0336. Each call features a computer voice that says “Hi, this is Kami, may I please speak to the woman of the house?” No, Kami, you may not.

A little research shows that this number belongs to a “charity” calling themselves “The Dove Foundation.” They claim to be a Christian charity, ironic since they’re clearly not living Jesus’ teachings – I’m quite sure that “Thou shalt not be a robo-spammer” is in there somewhere. At least it would be if the good book was written today.

Calling the number 800-679-0336 to complain brought on more frustration – they have a computer over there pretending to be a person. Using voice recognition software, this thing goes as far as to pretend that it’s an actual employee, saying “My name is Megan, and my Employee ID is ….”

Way to go. I guess it’s not lying if you have a computer do it for you, eh?

Since organizations like these seem to be immune from Do Not Call list violations, there is little we can do to stop them.

Fisher v. Lowe – A Decision in Prose

eddie — Mon, 21 Aug 2006 01:29:45 +0000

This rather poetic case comes to us from the Michigan Court of Appeals. Who said that judges don’t have a sense of humor?

______________________________________
Fisher v. Lowe
333 N.W. 2d 67 (Mich. App. 1983)
______________________________________
A wayward Chevy struck a tree
Whose owner sued defendants three.
He sued car's owner, driver, too,
And insurer for what was due
For his oak tree that now may bear
A lasting need for tender care.
The Oakland County Circuit Court,
John N. O'Brian, J., set forth
The judgment that defendants sought,
And quickly an appeal was brought.
Court of Appeals, J.  H. Gillis, J.,
Gave thought and then had this to say:
1) There is no liability,
Since No-Fault grants immunity,
2) No jurisdiction can be found
Where process service is unsound;
And thus the judgment, as it's termed
Is due to be, and is
Affirmed.

[1] AUTOMOBILES k251.13
Defendant's Chevy struck a tree,
There was no liability.
The No-Fault Act comes into play,
As owner and the driver say.
Barred by the act's immunity,
No suit in tort will aid the tree.
Although the oak's in disarray,
No court can make defendants pay.

[2] PROCESS k4
No jurisdiction could be found,
Where process service is unsound.
In personam jurisdiction
Was not even legal fiction
Where plaintiff failed to well comply
With rules of court that did apply.

  * * *

J. H. GILLIS, Judge.
We thought that we would never see
A suit to compensate a tree.
A suit whose claim in tort is prest,
Upon a mangled tree's behest;
A tree whose battered trunk was prest
Against a Chevy's crumpled crest;
A tree that faces each new day
With bark and limb in disarray;
A tree that may forever bear
A lasting need for tender care.
Flora lovers though we three,
We must affirm the court's decree.

Affirmed.

Random Posts

Judge Kent order denying Motion to Transfer in case Smith v. Colonial Penn

eddie — Thu, 08 Jun 2006 21:22:26 +0000

Texas Judge Samuel Kent has gained nationwide notoriety owe to his propensity to write humorous orders and opinions.

This Judge Kent classic doesn’t disappoint, as he denies a defendant’s request for transfer from Galveston to Houston due to due to claimed travel inconveniences, assuring Defendant that “the trip [to Galveston] should be free of rustlers, hooligans, or vicious varmints of unsavory kind,” and that the Galveston Courthouse “has got lights, indoor plummin’, ‘lectric doors, and all sorts of new stuff, almost like them big courthouses back East.”

The entire ruling is linked to below.

What follows is an excerpt.

Defendant should be assured that it is not embarking on a three- week-long trip via covered wagons when it travels to Galveston. Rather, Defendant will be pleased to discover that the highway is paved and lighted all the way to Galveston, and thanks to the efforts of this Court’s predecessor, Judge Roy Bean, the trip should be free of rustlers, hooligans, or vicious varmints of unsavory kind. Moreover, the speed limit was recently increased to seventy miles per hour on most of the road leading to Galveston, so Defendant should be able to hurtle to justice at lightning speed. To assuage Defendant’s worries about the inconvenience of the drive, the Court notes that Houston’s Hobby Airport is located about equal drivetime from downtown Houston and the Galveston courthouse. Defendant will likely find it an easy, traffic-free ride to Galveston as compared to a congested, construction-riddled drive to downtown Houston. The Court notes that any inconvenience suffered in having to drive to Galveston may likely be offset by the peacefulness of the ride and the scenic beauty of the sunny isle.

As to Defendant’s argument that Houston might also be a more convenient forum for Plaintiff, the Court notes that Plaintiff picked Galveston as her forum of choice even though she resides in San Antonio. Defendant argues that flight travel is available between Houston and San Antonio but is not available between Galveston and San Antonio, again because of the absence of a commercial airport. Alas, this Court’s kingdom for a commercial airport! (fn) The Court is unpersuaded by this argument because it is not this Court’s concern how Plaintiff gets here, whether it be by plane, train, automobile, horseback, foot, or on the back of a huge Texas jackrabbit, as long as Plaintiff is here at the proper date and time. Thus, the Court declines to disturb the forum chosen by the Plaintiff and introduce the likelihood of delay inherent in any transfer simply to avoid the insignificant inconvenience that Defendant may suffer by litigating this matter in Galveston rather than Houston.

fn. Defendant will again be pleased to know that regular limousine service is available from Hobby Airport, even to the steps of this humble courthouse, which has got lights, indoor plummin’, ‘lectric doors, and all sorts of new stuff, almost like them big courthouses back East.”

The Smoking Gun has the full text of the order.

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Judge Kent: Republic of Bolivia v. Philip Morris Co., Inc.

eddie — Thu, 08 Jun 2006 21:06:17 +0000

This has to be one of my all-time favorite cases.

Penned in 1999, it’s quickly becoming a law school classic as Legal Research instructors across the country have their students track down the case in “How to use the Reporter” exercises.

At my law school, the reported that contains this case flips right open to it because it’s been looked up so many times.

Judge Kent has authored other humorous opinions as well. Hey, why not? If you have no chance of making Supreme Court Justice, you might as well go down in legal history some other way!

In case you’re wondering, you can find it in West at 39 F. Supp. 2d 1008.

Republic of Bolivia v. Philip Morris Co., Inc., Civil Action No. G-99-110 (March 1, 1999)(Kent, J.).

39 F. Supp. 2d 1008 (D. Tex. 1999)

Plaintiff, the Republic of Bolivia, brings this action to recover from numerous tobacco companies various health care costs it allegedly incurred in treating illnesses its residents suffered as a result of tobacco use. This action was originally filed in the District Court of Brazoria County, Texas, 239th Judicial District, and removed to this Court on February 19, 1999, by certain Defendants alleging jurisdiction under 28 U.S.C. Section 1331 and 28 U.S.C. Section 1332. For the following reasons, the Court exercises its authority and discretion pursuant to 28 U.S.C. Section 1404(a) to sua sponte transfer this case to the United States District Court for the District of Columbia.

This is one of at least six similar actions brought by foreign governments in various courts throughout the United States. The governments of Guatemala, Panama, Nicaragua, Thailand, Venezuela, and Bolivia have filed suit in the geographically diverse locales of Washington, D.C., Puerto Rico, Texas, Louisiana, and Florida, in both state and federal courts. Why none of these countries seems to have a court system their own governments have confidence in is a mystery to this Court. Moreover, given the tremendous number of United States jurisdictions encompassing fascinating and exotic places, the Court can hardly imagine why the Republic of Bolivia elected to file suit in the veritable hinterlands of Brazoria County, Texas. The Court seriously doubts whether Brazoria County has ever seen a live Bolivian … even on the Discovery Channel. Though only here by removal, this humble Court by the sea is certainly flattered by what must be the worldwide renown of rural Texas courts for dispensing justice with unparalleled fairness and alacrity, apparently in common discussion even on the mountain peaks of Bolivia! Still, the Court would be remiss in accepting an obligation for which it truly does not have the necessary resources. Only one judge presides in the Galveston Division–which currently has before it over seven hundred cases and annual civil filings exceeding such number–and that judge is presently burdened with a significant personal situation which diminishes its ability to always give the attention it would like to all of its daunting docket obligations, despite genuinely heroic efforts to do so. And, while Galveston is indeed an international seaport, the capacity of this Court to address the complex and sophisticated issues of international law and foreign relations presented by this case is dwarfed by that of its esteemed colleagues in the District of Columbia who deftly address such awesome tasks as a matter of course.

Indeed, this Court, while doing its very best to address the more prosaic matters routinely before it, cannot think of a Bench better versed and more capable of handling precisely this type of case, which requires a high level of expertise in international matters. In fact, proceedings brought by the Republic of Guatemala are currently well underway in that Court in a related action, and there is a request now before the Judicial Panel on Multidistrict Litigation to transfer to the United States District Court for the District of Columbia all six tobacco actions brought by foreign governments, ostensibly for consolidated treatment. Such a Bench, well-populated with genuinely renowned intellects, can certainly better bear and share the burden of multidistrict litigation than this single judge division, where the judge moves his lips when he reads….

Regardless of, and having nothing to do with, the outcome of Defendants’ request for transfer and consolidation, it is the Court’s opinion that the District of Columbia, located in this Nation’s capital, is a much more logical venue for the parties and witnesses in this action because, among other things, Plaintiff has an embassy in Washington, D.C., and thus a physical presence and governmental representatives there, whereas there isn’t even a Bolivian restaurant anywhere near here! Although the jurisdiction of this Court boasts no similar foreign offices, a somewhat dated globe is within its possession. While the Court does not therefrom profess to understand all of the political subtleties of the geographical transmogrifications ongoing in Eastern Europe, the Court is virtually certain that Bolivia is not within the four counties over which this Court presides, even though the words Bolivia and Brazoria are a lot alike and caused some real, initial confusion until the Court conferred with its law clerks. Thus, it is readily apparent, even from an outdated globe such as that possessed by this Court, that Bolivia, a hemisphere away, ain’t in south-central Texas, and that, at the very least, the District of Columbia is a more appropriate venue (though Bolivia isn’t located there either). Furthermore, as this Judicial District bears no significant relationship to any of the matters at issue, and the judge of this Court simply loves cigars, the Plaintiff can be expected to suffer neither harm nor prejudice by a transfer to Washington, D.C., a Bench better able to rise to the smoky challenges presented by this case, despite the alleged and historic presence there of countless "smoke-filled" rooms. Consequently, pursuant to 28 U.S.C. Section 1404(a), for the convenience of parties and witnesses, and in the interest of justice, this case is hereby transferred to the United States District Court for the District of Columbia.

IT IS SO ORDERED.

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Judge Orders Lawyers to Play Game of “Rock Paper Scissors” to Resolve Dispute

eddie — Thu, 08 Jun 2006 17:46:50 +0000

If I’ve said it once, I’ve said it a thousand times – most practicing attorneys are about as emotionally advanced as a fourth grade student. Looks like there’s a Judge in Florida who agrees with me.

From CNN:

NEW YORK (FORTUNE) – Faced with the inability of two bickering attorneys to resolve even the most innocuous scheduling questions without his intervention, a Florida federal judge yesterday ordered the two to meet on the steps of the federal courthouse and resolve their latest quarrel by playing “one (1) game of ‘rock, paper, scissors.’ ”

Judge Gregory A. Presnell of Orlando ordered the unusual measure, which he characterized as “a new form of alternative dispute resolution,” after the two Tampa attorneys had proven unable to agree upon where to hold a deposition, even though both of their offices are just four floors away in the very same building in Tampa.

The Ruling:
______________________________________

UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA ORLANDO DIVISION

AVISTA MANAGEMENT, INC., d/b/a Avista Plex, Inc.,

Plaintiff,

-vs-

WAUSAU UNDERWRITERS INSURANCE COMPANY,

Defendant.

______________________________________

ORDER

This matter comes before the Court on Plaintiff’s Motion to designate location of a Rule 30(b)(6) deposition (Doc. 105). Upon consideration of the Motion – the latest in a series of Gordian knots that the parties have been unable to untangle without enlisting the assistance of the federal courts – it is

ORDERED that said Motion is DENIED. Instead, the Court will fashion a new form of alternative dispute resolution, to wit: at 4:00 P.M. on Friday, June 30, 2006, counsel shall convene at a neutral site agreeable to both parties. If counsel cannot agree on a neutral site, they shall meet on the front steps of the Sam M. Gibbons U.S. Courthouse, 801 North Florida Ave., Tampa, Florida 33602. Each lawyer shall be entitled to be accompanied by one paralegal who shall act as an attendant and witness. At that time and location, counsel shall engage in one (1) game of “rock, paper, scissors.” The winner of this engagement shall be entitled to select the location for the 30(b)(6) deposition to be held somewhere in Hillsborough County during the period July 11-12, 2006. If either party disputes the outcome of this engagement, an appeal may be filed and a hearing will be held at 8:30 A.M. on Friday, July 7, 2006 before the undersigned in Courtroom 3, George C. Young United States Courthouse and Federal Building, 80 North Hughey Avenue, Orlando, Florida 32801.

DONE and ORDERED in Chambers, Orlando, Florida on June 6, 2006.

Copies furnished to: Counsel of Record

Unrepresented Party

————
A couple more examples of random decisionmaking can be found here at Volokh.com.

Eddie On Everything » legal

Domain Name Registrars Can Be Held Liable For Contributory Trademark Infringement

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The Phone Spamming Doves at 1-800-679-0336

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Fisher v. Lowe – A Decision in Prose

Random Posts

Judge Kent order denying Motion to Transfer in case Smith v. Colonial Penn

Random Posts

Judge Kent: Republic of Bolivia v. Philip Morris Co., Inc.

Random Posts

Judge Orders Lawyers to Play Game of “Rock Paper Scissors” to Resolve Dispute

Random Posts