Internet Trademark Case Summaries

Carl v. bernardjcarl.com

662 F. Supp. 2d 487 (E.D. Va. Sept. 30, 2009) aff’d in part and rev’d in part, 2010 WL 4925840 (4th Cir. Dec. 3, 2010)

Carl v. bernardjcarl.com, 662 F. Supp. 2d 487 (E.D. Va. Sept. 30, 2009), aff’d in part and rev’d in part, 2010 WL 4925840 (4th Cir. Dec. 3, 2010).

Plaintiff Bernard J. Carl (“Carl”) was a partner in Brazos Europe (“Brazos”), a private-equity firm in Washington, D.C. In 2005, Brazos retained a French law firm to handle the acquisition of a French luxury brand. The French firm subcontracted with Fabrice Marchisio and his law firm Cotty Vivant Marisio & Lauzeral (“defendants”) without Carl’s knowledge. A dispute arose when both Brazos and the French firm refused to pay defendants for their services. Defendants sued Carl and Brazos in a French court, but the case was dismissed. Defendants then registered the domain name bernardjcarl.com (the “Domain”) under the registrant name “Benjamin Franklin” and posted a letter on the website claiming that Carl owed them money for services performed. Carl sued for trademark infringement, cybersquatting, and libel, among other claims. The district court dismissed all of Carl’s federal and state trademark claims. Regarding Carl’s trademark infringement, the district court found that Carl’s infringement claim failed because Carl did not own a protectable mark. First names or surnames are deemed descriptive marks and are thus unprotectable absent a showing of secondary meaning, but Carl did not present any evidence to show that his name had acquired secondary meaning or was used to “symbolize a particular business.” The court also found it unlikely that defendants’ website would confuse consumers because Carl’s personal name was not a strong mark and defendants did not offer a product on the site. The district court similarly dismissed Carl’s cybersquatting claim because his personal name had not acquired secondary meaning at the time the Domain was registered. And the court dismissed Carl’s claim for “cyberpiracy” of his personal name under 15 U.S.C. § 8131(1)(A). Carl argued that defendants intended to profit from their registration of the Domain by extorting Carl into paying the allegedly owed fees. According to the court, however, an intent to recover an alleged debt did not satisfy the statutory requirement of selling the domain name. Finally, the district court held that defendants were liable on Carl’s defamation claim and awarded Carl $10,000 in compensatory damages, but refused to award punitive damages because Carl failed to show that defendants acted with “actual malice.” Carl appealed.

The Fourth Circuit affirmed the district court’s dismissal of Carl’s trademark and cybersquatting claims. Carl first argued that the district court erred “misinterpreted” 15 U.S.C. § 8131(1)(A) by holding that defendants did not intend to profit from their registration of the Domain. The Fourth Circuit disagreed, holding that Section 8131(1)(A) was limited to actions involving registration of a domain name consisting of the name of another living person “with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party” (emphasis added). Although defendants may have been attempting to profit by recovering an alleged debt from Carl, they did not attempt to sell the Domain to Carl or any other party and thus did not have the kind of intent to profit required by Section 8131. The Fourth Circuit also affirmed the dismissal of Carl’s trademark infringement claims. Carl urged the court to revisit its decision in Lamparello v. Fallwell in which the Fourth Circuit declined to adopt the doctrine of initial-interest confusion in trademark cases, but a three-judge panel of the court of appeals did not have the power to overrule the decision of a prior panel. Finally, the Fourth Circuit vacated the district court’s ruling on actual malice, finding that there was sufficient evidence of “actual malice,” and remanded to the district court the issue of whether to award punitive damages, and if so, how much.