e-Commerce Docket Sheet

Trademark Infringement Absent Cybersquatting Proof Doesn't Warrant Domain Name Transfer

A successful plaintiff in a trademark infringement action is not entitled to obtain transfer of the defendant's infringing domain name absent further proof that the defendant is a cybersquatter. Women to Women, Inc. v. Woman to Woman, Co., Civil No. 02-52-P-H (D. Me. Apr. 1, 2003). The plaintiff won a default judgment on its Lanham Act claims, obtaining, among other things, a permanent injunction against defendant's further use of the infringing mark in connection with its domain name. However, the magistrate judge refused to direct transfer of the domain name absent proof of the 'rigorous elements' under the Anticybersquatting Consumer Protection Act, which include a bad faith intent to profit from the mark.

A party's failure to cease destruction of documents under its document retention program notwithstanding reasonably anticipated litigation constitutes spoliation of evidence and warrants rebuttable adverse presumptions against it during an administrative proceeding. In the Matter of Rambus, Inc., Docket No. 9302 (F.T.C. prelim. determination Feb. 26, 2003). An administrative law judge imposed the presumptions as a sanction against the respondent in a Federal Trade Commission antitrust action for 'its gross negligence concerning, or reckless disregard of, its obligation to maintain documents potentially relevant to litigation and [to] inventory those documents destroyed.' The judge found that although the documents were destroyed as part of a corporate document retention program, the destruction occurred when the respondent 'knew or should have known that it could reasonably anticipate litigation' to which the documents might be relevant.

Docket Sheet and Developments of Note are written by Julian S. Millstein, Edward A. Pisacreta and Jeffrey D. Neuburger, partners in the New York office of Brown Raysman Millstein Felder & Steiner.

DMCA Subpoena Withstands ISP's Constitutional Challenges

The subpoena power authorized under '512(h) of the Digital Millennium Copyright Act does not violate the case or controversy requirement of Article III, and does not abridge Internet users' First Amendment rights. In re: Verizon Internet Services, Inc., Subpoena Enforcement Matter, Civ. No. 03-MS-0040 (D.D.C. Apr. 24, 2003). The defendant Internet service provider moved to quash on constitutional grounds a subpoena seeking the identity of an anonymous Internet user alleged to have infringed copyrights. Denying the motion to quash, the district court held that the requirements of '512(h) provide sufficient safeguards of Internet users' First Amendment rights, and that issuance of a subpoena unrelated to a pending federal action did not violate the case or controversy requirement.

DMCA Protection Extended To Virtual Private Network

Circumvention of the encryption and password protections of a virtual private network (VPN) to gain unauthorized access to copyrighted software may be a violation of the Digital Millennium Copyright Act (DMCA). Pearl Investments, LLC v. Standard I/O, Inc., Civ. No. 02-50-P-H (D. Me. Apr. 2, 2003). The magistrate judge held that defendant's alleged creation of a 'tunnel' from the defendant's server to plaintiff's VPN to access a copyrighted software program may have been a DMCA violation. The court found that the VPN, which was encrypted and password-protected, fit the definition of 'a technological measure put in place by a copyright owner to prevent access to a copyrighted work.' The magistrate recommended denial of defendant's motion to dismiss this claim, and noted that the extension of the protections of the DMCA to VPNs appeared to be an issue of first impression.

Trademark Infringement Absent Cybersquatting Proof Doesn't Warrant Domain Name Transfer

A successful plaintiff in a trademark infringement action is not entitled to obtain transfer of the defendant's infringing domain name absent further proof that the defendant is a cybersquatter. Women to Women, Inc. v. Woman to Woman, Co., Civil No. 02-52-P-H (D. Me. Apr. 1, 2003). The plaintiff won a default judgment on its Lanham Act claims, obtaining, among other things, a permanent injunction against defendant's further use of the infringing mark in connection with its domain name. However, the magistrate judge refused to direct transfer of the domain name absent proof of the 'rigorous elements' under the Anticybersquatting Consumer Protection Act, which include a bad faith intent to profit from the mark.

A party's failure to cease destruction of documents under its document retention program notwithstanding reasonably anticipated litigation constitutes spoliation of evidence and warrants rebuttable adverse presumptions against it during an administrative proceeding. In the Matter of Rambus, Inc., Docket No. 9302 (F.T.C. prelim. determination Feb. 26, 2003). An administrative law judge imposed the presumptions as a sanction against the respondent in a Federal Trade Commission antitrust action for 'its gross negligence concerning, or reckless disregard of, its obligation to maintain documents potentially relevant to litigation and [to] inventory those documents destroyed.' The judge found that although the documents were destroyed as part of a corporate document retention program, the destruction occurred when the respondent 'knew or should have known that it could reasonably anticipate litigation' to which the documents might be relevant.

Docket Sheet and Developments of Note are written by Julian S. Millstein, Edward A. Pisacreta and Jeffrey D. Neuburger, partners in the New York office of Brown Raysman Millstein Felder & Steiner.