Internet Trademark Case Summaries
Dawson v. Brandsberg
2006 WL 2915234 (W.D. Va. Oct. 10, 2006)
Plaintiff Robert E. Dawson owned a real estate firm and hired defendant to register the “robertedawson.com” domain name and host a site at that name. Plaintiff paid the initial registration fees and renewal fees for the domain name and supplied the content for the corresponding website. The parties later had a falling out, and when plaintiff requested transfer of the domain name to another web-hosting company, defendant refused “and essentially held the domain name hostage.” Plaintiff sued for cybersquatting and trademark infringement. Defendant moved to dismiss plaintiff’s claims for failure to state a claim, arguing that plaintiff’s name “Robert E. Dawson” was not a protected registered or common law trademark. To support its assertion that plaintiff’s name had not acquired secondary meaning and that plaintiff’s name was too common to be distinctive, defendant offered the results of an Internet search for “Robert E. Dawson,” which yielded more than 200 hits including references to “an attorney, a photographer, and several physicians.” But the court noted that defendant did not limit its search to real estate and that when plaintiff searched for “Robert E. Dawson” and the term “real estate,” the number of results dropped to only seven hits. Moreover, only three of these seven hits were relevant, and two of them referenced plaintiff and the other identified a person in China. Defendant also argued without any support that plaintiff’s name had not acquired secondary meaning because plaintiff used it only “sporadically and recently.” To the contrary, plaintiff submitted evidence showing use of his name for more than 20 years including on business cards, letterhead, announcements, and advertising in the real estate field. The court held that because “distinctiveness is an inherently factual issue and as it appears that this issue will be hotly disputed in this case, this issue cannot be resolved on the pleadings.” Defendant also argued that it was not liable under an exception in the ACPA (15 U.S.C. § 1129(1)(B)) for works made for hire where the alleged cyberpirate maintained a copyright in the website as a work of authorship. Plaintiff responded that defendant had no copyright in the website because plaintiff created the domain name and provided a copyrighted digital version of a brochure for reproduction on the website. Plaintiff argued that defendants thus simply made a mere “mechanical transfer of computer files to a web compatible version which would not entitle her to a copyright in the website.” Defendant responded that it wrote the code that permitted this translation. Plaintiff countered that because this “Internet source code is widely available,” defendant did not “impart any independent or creative development into the website because plaintiffs provided all information and detail for the development of the website, including digitalized text, photos, and layout.” Finding that plaintiff’s assertions raised a factual question regarding authorship of the website and thus any purported copyright in the final product, and that defendant’s good faith in registering the domain name was “clearly at issue,” the court held that defendant did not establish the exception to liability under § 1129(1)(B). Finally, plaintiff’s argument that it had an implied license in the domain name provided further support to deny defendant’s motion to dismiss.