Yes, it’s the lazy way to do a post during the week before Christmas and New Year.  In my next post, we will use this information to help predict the trends of legal issues for online media, marketing, internet law and start-ups for 2013.

1.   SOPA The Debate in Plain English and the SOPA Update and Editorial

The two posts were actually numbers 1 and 3 respectively and if you click on the Update and Editorial, you can see the original post.  The original post was done in December 2011, but as Congress debated the issue in early January 2012, the readers kept coming.  These two posts were the most popular ever for this blog and there was a lot of angst about what Congress.  As we sit here with three days before the end of 2012, it almost seems quaint that Congress fought about SOPA rather than a made up self-imposed fiscal cliff.

2.   The Law of Using Images from the Web on Your Blog

This tells me there is a need for some Internet Law 101 type of information.  On my list of things to do in 2013 is to put together a series of these types of posts for a more permanent placement.  Should I self-publish an e-book?

3.  City of Paris Ordered to Pay for Reverse Domain Name Hijacking

This was the most interesting litigation matter I worked on this year.  If you are a domainer the decision was very important.  Or, if you just think the French are rude or still don’t like Zinedine Zidane from his 2008 World Cup headbutt, you might just find this story interesting.

Yes, that was a gratuitous French soccer snub.  Now, to collect against the City of Paris in 2013.

4.  The three-part series on online defamation that included (1)  Protecting Yourself Online Does not Have to Include Legal; (2) How to Identify the Anonymous Online Defamer; and (3) Conclusion – Anti-SLAPP

This may have been popular because I often send potential clients there.  If you think you have been wronged on a review site or by some blogger, read this series for a basic understanding of your options and the role a lawyer can play.

5.   The Cost of Fake Online Reviews Goes Beyond Morality

This tells me businesses are really concerned about online reviews.  The DMCA protects the review sites, but should there be changes to this law?  Of course, the review site is protected, but you should know by now that if you provide the review and it crosses the line, you could be liable.

On an interesting note, just out of the top five most viewed posts in 2012 was a post I did back in 2009 entitled Online Harassment Becomes Law Today.  That tells me not much has been written about the Texas law and it probably has not been used too often.  I often tell potential clients about it suggesting they visit with a local D.A. about enforcing the penal provision.  I’ve not had anyone come back and tell me the D.A.. agreed to prosecute.

 

 

I was fortunate to work with the team that won a $125,000+ judgment against the City of Paris (France, not Texas) for reverse domain name hijacking.  In laymen’s terms, that is when an alleged trademark owner overreaches and tries to hijack a domain name to which they don’t have rights.

 It is a groundbreaking decision because, as far as we could tell, it was the first time a court has awarded statutory damages in a reverse domain name hijacking case under the Anti-Cybersquatting Consumer Protection Act–not just some, but the maximum amount the court could award of $100,000. 

I worked on the case with domain name attorneys John Berryhill and Paul Keating.  You can read more from Domain Name Wire.

Along with attorneys’ fees and the statutory award, Houston Federal Judge Melinda Harmon ordered the City of Paris to transfer the rights to the domain name parvi.org to a California man in the ruling this afternoon.   

It all started when Jeffrey Walter registered as a conjugated form of the Latin word parvus, meaning small, as set forth in a latin translation of a slogan from a science fiction work, Universum ingens est et nos tam parvi sumus – “The Universe is vast and we are small” – which appealed to Walter who was providing a software “kernel”, or small core of programming at the heart of a computer operating system.  A few years later the City of Paris filed domain name a UDRP complaint with the World Intellectual Property Organization because Paris obtained a French trademark for PARVI for services related to its Wi-Fi services. 

The effort was part of an all out war by the City of Paris over domain names held by U.S. citizens such as WifiParis.com, Wifi-Paris.com, paris.com and paris.tv.  The fight for parvi.org was the only one where the City of Paris was successful—at least at first.  By filing the complaint, the City of Paris agreed to jurisdiction in Texas for matters stemming from the dispute because the domain name was registered with GKG.net of Bryan, Texas.  Despite agreeing to be subject to jurisdiction in Texas, the City of Paris refused to appear and defaulted.

At the hearing, we put on evidence of Paris’s abusive efforts to take away domain names from U.S. citizens.  For years, Paris has been sending threatening cease and desist letters to holders of domain names with the word paris in it hoping the underfunded individuals would capitulate.  Despite the registration of French trademarks, the City of Paris would have no rights to the name under U.S. law.  Before formal arbitrations were a filed, a couple of domain name holders preemptively sued in U.S. courts, but the City of Paris would claim immunity and nothing of lasting precedent would come from those suits. 

Much like bullies, when truly confronted and forced to defend themselves under U.S. law, the City of Paris defaulted.  The Court agreed and issued statutory penalties for the first time, we were able to find, in a reverse domain name hijacking case.  

The law was clear that trademark holders may recover statutory damages between $1,000 and $100,000.  This makes sense because it is often difficult to prove that an infringer causes damages sufficient enough to make a federal lawsuit worth it. 

The language under the reverse domain name hijacking provisions of the ACPA, make it clear Walter was entitled to “any damages.”  Any damages should include the punitive-type statutory damages to make the overreaching stop. 

There is further support for the statutory damages because the Lanham Act at 15 U.S.C. § 1117(d) says, that in cases “involving a violation of section 1125,” an election of damages in the courts discretion of “not less than $1,000 and not more than $100,000 per domain name, as the court considers just.”  Section 1125 is the portion dealing with a trademark owner’s rights.  We successfully argued that our claim was also one “involving a violation” because to establish reverse domain name hijacking, you have to show there is no violation of 1125.  Finally, the same policy that supports statutory awards against infringers supports statutory awards against the overreachers.  Without it, a judgment for attorneys’ fees would simply not to deter further hijacking.

This is the first step in the battle, but an iteresting one nonetheless.  Hopefully, it can be used as others that fall victim to overreaching and discourage reverse domain name hijacking.

Raising two young kids, I am used to giving repeated warnings.  In fact, I am not really sure what happens if I make it to five.  Luckily, my kids don’t either and are in no hurry to find out. 

The bottom line on the .xxx domain name situation is the deadline is October 28 – that’s Friday.  I highly recommend companies associated with non-profits, schools, hospitals and high-profile brands take action.  For the rest, you simply need to decide if the relatively small fee is worth not having to worry about it again. 

My more recent (more substantive) post:

If you are like me and are told in March you need to do something in October, then you probably forgot by now.  That is exactly what we did when we warned you back then that you needed to take action in October to prevent your site from being associated with a .xxx pornography site.  It’s now October, so have you done it?

.XXX

We are currently in what is called the “Sunrise” period which runs through October 28.  Now is the time for trademark holders to pay a one time fee to block a .xxx site from ever being registered–known as “Sunrise B”.  Read more about Sunrise B.

If you run an adult site, then you care about Sunrise B.  It is the period where you can apply for a .xxx domain name to match your existing trademark or existing top level domain name.  If you are interested in Sunrise A, you can go here

If you prefer a short video explanation, watch this:

OOPS!  I did not read this until October 29!

If you miss the deadline, it is not the end of the world.  As explained in this Domain Name Wire post, the .xxx domain space is highly regulated and includes numerous safeguards.  The $75 registration fees will also keep away many cybersquatters.

If you are like me and are told in March you need to do something in October, then you probably forgot by now.  That is exactly what we did when we warned you back then that you needed to take action in October to prevent your site from being associated with a .xxx pornography site.  It’s now October, so have you done it?

.XXX

We are currently in what is called the “Sunrise” period which runs through October 28.  Now is the time for trademark holders to pay a one time fee to block a .xxx site from ever being registered–known as “Sunrise B”.  Read more about Sunrise B.

If you run an adult site, then you care about Sunrise B.  It is the period where you can apply for a .xxx domain name to match your existing trademark or existing top level domain name.  If you are interested in Sunrise A, you can go here

If you prefer a short video explanation, watch this:

OOPS!  I did not read this until October 29!

If you miss the deadline, it is not the end of the world.  As explained in this Domain Name Wire post, the .xxx domain space is highly regulated and includes numerous safeguards.  The $75 registration fees will also keep away many cybersquatters.

You may have recently read the government seized the domain names of several online gambling sites.  In the past, they have also seized the domain names of sites known for counterfeiting.  Now, they not only take the domain name, but make you watch a video when you visit the sites.

The Government does not have much control over sites with servers overseas.  Therefore, it takes whatever action it can against assets or operations in the United States.   For sites specializing in piracy, they take the domain names because most .com names are administered by a U.S. entity.  The tactic is only moderately effective.  The domain name merely points your web browser where to go and does not impact the site’s operation.  A website operator can obtain a new domain name and be back in business in a matter of minutes.  The site can also register with other country codes or other gTLD’s outside of the U.S. and avoid the problem.

Given these workarounds, the Government is trying a new tactic — shame and guilt.  If you visited one of these seized domain names, there used to be an ominous statement with official seals to scare you.  Now, they play the following video when you visit one of the sites:

Why do they make the guy with “no soul” look like a lawyer?

Piracy is wrong, but it seems like the Government is going down a slippery slope to help certain private, but well-funded, enterprises.   It sure would be nice to know they would do the same for one of my clients not in the movie, music or software business.  You can read more from Wired Magazine.

After much debate, the international body in charge of governing domain names, ICANN, has authorized pornography-based websites to register with a top-level domain of .xxx as opposed to the more common .com or .net in the next couple of months.

While most of the debate has centered on whether this will make it easier to access porn or easier to police and monitor porn, traditional trademark owners have raised concern about making sure their brands don’t become associated with a .xxx site. In other words, should you be worried someone will register www.lrmlaw.xxx and associate your brand or trademark with pornography?  You can take steps now to prevent that from happening.

To alleviate the concerns, the entity responsible for administering the .xxx domain names, ICM Registry, established procedures to prevent this from happening. You can link to their published outline here. Business owners can pre-reserve .xxx domain names to prevent them from ever being used. The window to do this will be limited to the first 30 days following launch of the new .xxx domain names.

Rather than monitoring the latest on the timing of the launch, you can take action today to prevent a cybersquatter from taking your .xxx domain name. Companies can use ICM Registry’s reservation service to pre-reserve names now at no charge. The process is designed to be an easy, cheap, do it yourself process. Or, you can contact an attorney experienced in domain name issues or your web hosting companies for assistance. More than 500,000 companies have pre-reserved their names. You can begin the process here.

Special thanks to Looper Reed’s Carol Wilhem for her assistance with this issue.

Losing a domain name challenge is no reason to cry.  UT still dictates exactly how the Big 12 minus 2 is run.  Loyal readers know I am a Mizzou sports fan, so maybe this domain name post is really a chance to relish in a rare loss for the University of Texas.  So note, here comes bitter sarcasm admittedly borne out of envy:  Had Big XII Commissioner Dan Beebe been in charge of the arbitration, perhaps UT would have won. 

UT recently sought to acquire the domain name www.texassports.org (h/t to Tamera Bennett).  UT already owns www.texassports.com and wanted to make a claim to the .com version which was a parked page with links.  So, they filed a UDRP arbitration claim.  The UDRP, or Uniform Domain Name Dispute Resolution Policy is a binding arbitration where the only issue is the rights to the domain name.  Every registrar (think your GoDaddy’s of the world) agrees to be bound by the UDRP and abide by the decision to transfer domain names as directed by the arbitrators. 

The UDRP is an online process that is decided on the papers without discovery or live testimony.  As the holder of a domain, you are required to submit to a “mandatory administrative proceeding” to determine rights to the domain. Regardless of whether you participate, your domain registrar must enforce the decision of UDRP Panel. If either side elects to go to court instead, the UDRP proceedings are usually put on hold.

To prevail in a UDRP claim, you must prove: (1) you have a trademark right that is identical or confusingly similar to the domain of the infringer; (2) that the infringer has no legitimate interest in the domain name; and (3) and that the person is using the name in bad faith.  

The arbitration panel decided the name “Texas sports” was simply too generic and ruled in favor of the respondent because UT did not show a superior right in the name.  The full ruling is here

More importantly, college football kick off, at least for the Missouri Tigers is 32 days and 2 hours and six minutes away (not that I am counting).  To get you in the mood, enjoy:

Maybe this is my excuse to write about conference realignment.  Regular readers know I am a Mizzou graduate and sports fan so I am a little nervous about what is happening.  Rather than dwell on the rumor, speculation and innuendo, I thought I would check the domain names of various conferences to see if we could find any clues.

The Big Ten

Which was really a 11-team conference and is now the new Big XII with the addition of Nebraska. The official site is www.bigten.org.  The record was recorded in 1996 and is owned by the Big Ten Conference.  The Conference also owns www.bigten.comwww.bigX.org is a parked page and www.bigX.com leads to an adult personals site (no surprise).

The Big XII

Now the Big X with the departure of Nebraska and Colorado and perhaps soon to be the Little 5 with UT, OU, Texas Tech, Oklahoma State leaving for the PAC 10 and Texas A&M allegedly headed for the SEC.  Surprisingly, the official website is not Big12.com or even BigXII.com.  Instead, it is Big12Sports.com.  The Big 12 began play in the fall of 1996.   

Big12.com was created on March 28, 1995 and is owned by someone who has chosen to remain private.  It takes you to a parked page.

BigXII.com is also a parked page and with the record created in 2002 and is currently owned by someone in China. 

Big12sports.com is owned by Big 12 Conference, Inc.

Big 14

 Big 14.com is owned by ChicRegister and the record was created on October 29, 2004.  When I tried to access it, it read “This website is temporarily unavailable, please try again later.”  Could the Big Ten be looking to buy it when Notre Dame and Mizzou join?  I got that from a source whose kid goes to Notre Dame and gets his hair cut by the same person who cuts the hair of the wife of the Notre Dame president.  That’s about the reliability of everyone else’s source so I am running with it.  Good thing I am not a journalist or I would have to give back my degree for publishing that type of speculation. 

BigXIV.com is a parked page also owned by ChicRegister.

Big XVI

The Big XVI of Big 16 does not exist . . . yet.  www.big16.comtakes me to a 404 error page.   Andrea Martin of Oregon is the owner of the domain name and guess what, it is for sale.  That record was created on November 5, 2008.  Soren Teichman of Michigan owns www.big16.org with the last record on this name created in February of 2010.  Apparently Soren is a Nebraska fan because the site simply shows the University of Nebraska. 

www.bigxvi.com is a parked page owned by Chad Buchanan of New Jersey.  His record for this name was recorded on April 22, 2010. 

www.bigxvi.org is available.  At least for now.

PAC-16

The official PAC-10 website is www.pac-10.org.  They also have www.pac-10.comwww.pac10.com and www.pac10.org both go to parked pages “under construction” on Network Solutions, but are both owned by the PAC-10 conference. 

www.pac16.org www.pac-16.org  says the sites are coming soon and are both held privately with the most recent record was created in May of 2010.   

www.pac-16.com and www.pac16.com are parked pages.     The former domain is held privately and the last record was not created until June 3, 2010.   The latter is owned by “Orange County Shredding” and was creating in May of 2010. 

Could there be a Heartland Athletic Conference with the leftover Big XII schools.  Are domainers out there making purchases on other speculations?

I am not going to speculate because I have absolutely no sources about what will happen which I think makes me as equally authoritative as most of the other bloggers and radio personalities.  Instead, I am going to tell you what, I hope eventually happens, from my own personal perspective as one Mizzou fan assuming the rumors described above are true.

Preference #1

Big Ten

West-Mizzou, Iowa, Illinois, Minnesota, Wisconsin, Northwestern, Nebraska, Notre Dame

East-Indiana, Purdue, Michigan, Michigan State, Ohio State, Penn State, Rutgers, Maryland (actually not much of a preference between Syracuse, Pitt and Maryland).

Because A&M joins the SEC, the PAC 16 picks up Kansas.  I know I am supposed to despise KU, but I would prefer they stay relevant for the sake of the rivalry if we aren’t going to stay in the same conference and assuming Mizzou does not end up as a leftover.

Preference #2

SEC

West- Texas A&M, Mizzou, Arkansas, LSU, Ole Miss, Mississippi State, Auburn and Alabama

East – Florida, Vanderbilt, Tennessee, Kentucky, South Carolina, Georgia, Miami, Florida State

Alternate #3

A New Big 12 (16)

North – Mizzou, Iowa State, Kansas, K-State, Utah, BYU, Colorado State, Boise State

South – Baylor, TCU, Houston, Memphis, Louisville, New Mexico, Rice and SMU

If the last one happens, at least I would get to see more games here in Houston.

This whole end of the decade thing snuck up on me so I did not prepare a list of internet marketing and online media law stories for the decade.  I could have argued that the decade does not end until next year, but the people who took the fun out of celebrating Y2K got on my nerves.  When the 80’s turned to the 90’s, the column I wrote for my high school paper, the Humble High School Pride, making sports predictions for the 90’s was off horribly.  Who knew Bo Jackson would injure his hip? So, with that, we bring you some domain name dispute updates and other Holiday tidbits. 

The first is to announce our win in the WIPO UDRP arbitration for the domain name www.pbsnewshour.orgLooper Reed & McGraw, P.C. allowed us to represent the quality news program on a pro bono basis to help them obtain the domain names associated with their rebranding from The NewsHour with Jim Lehrer to the PBS NewsHour.  You can read more about the case, including a link to the actual decision on our firm website here.  As part of the PBS NewsHour rebranding they also launched their own YouTube channel.

That leads into an issue for domainers that will take center stage next year over geographic names.   The City of Paris is trying every tactic in the book to obtain useful domain names with the word “paris” or “Parvi” in it.  We have been hired as the local counsel for the team who filed the lawsuit against the City of Paris here in Houston on behalf of the holder of the domain name.   This is a pretty big deal in the domain name world because if the City of Paris can win their claims, then all geographic based names could be subject to claims by governmental entities.  In other words, the City of Houston could then make a claim to obtain the domain name www.houstonrestaurants.com to take it away from the advertiser who currently has it and might have paid good money for it.  You can read more about the issue on the Domain Name Wire blog.

Because I did not put together a Top 10 List, I will simply link to the Technology and Marketing Law Blog Top Cyberlaw Developments of 2009

Finally, just in time for Christmas, I present the reason I stopped watching the Fox TV show 24 after the second season.  OK, Elisha Cuthbert’s absence had something to do with it, but I could actually imagine this making into one of the plot lines.  You can only have so many ways Jack Bauer can save the world in one day from universal destruction.

Why doesn’t he just come out and address the questions about whether or not he wants to suppress Constitutionally-protected free speech through a process that is supposed to handle cybersquatting domain name disputes?  If he would simply answer the question or deny the allegations, perhaps it will all just go away.  Because he doesn’t, the questions will remain and should continued to be asked.  I’m not saying Beck hates the First Amendment, but his refusal to address this issue is puzzling.

Yes, that was my weak attempt to emulate Glenn Beck’s style of making unfounded allegations through rhetorical questions and then saying the target of the accusations should defend themselves.   The tactic is explained better with an examle in the first part of this clip from the Daily Show.

Someone with a much better sense of satire and parody than me turned the tables on Beck with the website, www.glennbeckrapedandmurderedayounggirlin1990.com.  You can see the whole story about the origin of domain by visiting the site, but it stems from a roast of Bob Saget by Gilbert Gottfried. Someone took the line from Gottfried and applied it to Beck’s style on one website in August of this year and, like other viral phenomena–Boom goes the Dynamite

Apparently, Glenn Beck was not amused.  Knowing he could not sue the creators for libel because of the Supreme Court’s holding in Hustler Magazine v. Falwell that protects satire and parody, Beck filed a UDRP claim. The Uniform Domain Name Dispute Resolution Policy is an out-of-court process to settle domain name disputes.  While not a lawsuit, ICANN has the ability to order the deletion or transfer of domain names for .biz, .com, .info, .org because each registrant agreed to be bound by the UDRP when the domain names were registered.

To prevail on a UDRP claim, you must prove: (1) you have a trademark right that is identical or confusingly similar to the domain of the infringer; (2) that the infringer has no legitimate interest in the domain name; and (3) and that the person is using the name in bad faith. In other words, the process is used to prevent cybersquatters as opposed to a family website showing pictures that happens to be similar to a trademarked word or phrase.

In other words, to win, Beck would have to show (1) by and through his famous name, he has a publicity interest that is identical or confusingly similar to www.glennbeckrapedandmurderedayounggirlin1990.com; (2) the satirist has no legitimate interest in the domain name (think a blank or parked page); and (3) that the person is using the name in bad faith (think demanding to be paid an extortionist amount for the site).  

Beck should have known better than to use a flimsy legal tactic to attack a satirist.  The creator of the site teamed with attorney Marc Randazza to provide one of the most entertaining UDRP responses.  Addressing each element, the respondent wrote:

None of the factors in ¶4(b) of the UDRP apply.  There is no evidence that Respondent has registered and used the domain name for the purpose of selling it for profit.  Respondent is not engaged in a pattern of cybersquatting.  Respondent did not register the domain name to disrupt the business of a competitor, he registered it to pay homage to an existing internet meme that poked fun at Glenn Beck, to poke fun at Glenn Beck directly, and to express his political opinions.  

There is no indication that the Respondent has intentionally attempted to confuse anyone searching for Mr. Beck’s own website, nor that anyone was unintentionally confused — even initially.  Only an abject imbecile could believe that the domain name would have any connection with the Complainant.

We are not here because the domain name could cause confusion.  We do not have a declaration from the president of the international association of imbeciles that his members are blankly staring at the Respondent’s website wondering “where did all the race baiting content go?”  We are here because Mr. Beck wants Respondent’s website shut down. He wants it shut down because Respondent’s website makes a poignant and accurate satirical critique of Mr. Beck by parodying Beck’s very rhetorical style.  Beck’s skin is too thin to take the criticism, so he wants the site down.  Beck is represented by a learned and respected legal team.  Accordingly, it is beyond doubt that his counsel advised him that under the First Amendment to the United States’ Constitution, no action in a U.S. Court would be successful. . . .  Accordingly, Beck is attempting to use this transnational body to circumvent and subvert Respondent’s constitutional rights.    

 You can read the entire biting response here.  The response goes on to point out the UDRP is not meant to circumvent the First Amendment defenses to defamation claims.

While entertaining, the Citizen Media Law Blog post about this story points out that perhaps Beck was merely using the UDRP to out the owner of the website.  Most courts require a prima fascia showing of a defamation claim before they will order the disclosure of identifying information online.  Because of the obvious parody, Beck would not have been able to satisfy his burden and would not have otherwise been able to force the disclosure of his critic.  Through the UDRP, he was able to.  Could this tactic be used in the future?  The UDRP does allow for the recovery of fees if the initial filing is made in bad faith, but will that be enough of a deterrent to unmask a critic?

For now, to avoid any conflicts with Beck, I will forgo changing the url of this blog to www.BeckhatestheFirstAmendmentemedialaw.com