bad faith – Attorney Evan Brown

March 7, 2024 Copyright, DMCA

Game developer prevails in action over bogus DMCA takedown notices

DMCA good faith

Defendant posted some videos on YouTube about the game Destiny 2. The videos stayed online for eight years with no issues until Bungie, the game’s developer and publisher sent a Digital Millennium Copyright Act (“DMCA”) takedown notice to YouTube because defendant’s video violated Bungie’s intellectual property policy. This policy encouraged Destiny 2 enthusiasts to create and post Destiny 2 content so long as the content conformed with the policy. Defendant felt wronged by Bungie’s DMCA takedown notice and, seeking to highlight flaws in the DMCA takedown process, posed as a Bungie employee and submitted 96 fraudulent takedown requests targeting other Destiny 2 content, including videos on Bungie’s own channel.

Bungie sued under Section 512(f) of the DMCA which provides that one may be liable for sending any takedown notification that knowingly materially misrepresents that complained of material is infringing. To be liable, a defendant must lack a subjective, good faith belief that the material targeted by the takedown notification is infringing. Bungie moved for summary judgment on its own claim and defendant did not oppose the motion, even though he had sat for a deposition and otherwise participated in the litigation. The court granted the summary judgment motion in favor of Bungie.

In his deposition, defendant had admitted he was “oblivious to the reprehensible damages [he] was causing to the community” and Bungie in issuing the fraudulent takedown notices, and that he caused financial and emotional damage to several Destiny 2 fans whose videos were subject to the fraudulent takedown notices he had sent. The court determined that defendant lacked a good faith belief in the infringing nature of the content, which supported his liability under the statute. Bungie demonstrated that the material did not infringe its intellectual property policy and that defendant had no authority to issue the DMCA notices. As a result of defendant’s actions, Bungie faced reputational damage and incurred significant costs in addressing the issue. Consequently, the court granted summary judgment in favor of Bungie, recognizing the intentional nature of defendant’s violations and the resultant harm to Bungie.

Bungie, Inc. v. Minor, 2024 WL 965010 (W.D. Washington, March 6, 2024)

February 2, 2022 Cybersquatting

Strip club operator wins motion in domain name dispute against GoDaddy company

NameFind is a GoDaddy company that holds registrations of domain names and seeks to make money off of them by placing pay-per-click ads on parked pages found at the domain names. Global Licensing owns the DEJA VU trademark that is used in connection with strip clubs and other adult-related services. When NameFind used the domain name dejavushowgirls.com to set up a page of pay-per-click ads, Global Licensing sued, raising claims under the federal Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. 1125(d).

cybersquatting domain name dispute

Arguing that the cybersquatting claim had been insufficiently pled, NameFind moved to dismiss. The court denied the motion.

To establish a “cybersquatting” claim under the ACPA, a plaintiff must establish that: (1) it has a valid trademark entitled to protection; (2) its mark is distinctive or famous; (3) the defendant’s domain name is identical or confusingly similar to, or in the case of famous marks, dilutive of, plaintiff’s mark; and (4) defendant used, registered, or trafficked in the domain name (5) with a bad faith intent to profit. DaimlerChrysler v. The Net Inc., 388 F.3d 201 (6th Cir. 2004) (citing Ford Motor Co. v. Catalanotte, 342 F.3d 543, 546 (6th Cir. 2003)).

Identical or confusingly similar

NameFind first argued that the court should dismiss the ACPA claim because there were no “non-conclusory” allegations explaining how the content on its website could be confusingly similar to plaintiff’s entertainment services. The court found this argument unpersuasive, however, because the content of the website was not important in evaluating this element. Instead, the court was to make a direct comparison between the protected mark and the domain name itself, rather than an assessment of the context in which each is used or the content of the offending website. It found the disputed domain name and plaintiff’s mark to be identical or confusingly similar because the disputed domain name incorporated plaintiff’s mark, and there were no words or letters added to plaintiff’s mark that clearly distinguished it from plaintiff’s usage.

Bad faith intent to profit

The court likewise rejected NameFind’s second argument, which was that plaintiff had not sufficiently pled NameFind’s bad faith intent to profit. The main point of the argument was that most of plaintiff’s allegations were made “on information and belief”. (That phrase is used in lawsuits when the plaintiff does not know for sure whether a fact is true, so it hedges a bit.) The court observed that allegations made on information and belief are not per se insufficient.

In this case, the court stated that the “on information and belief” allegations should not be considered in isolation, but should be considered in the context of the entire Complaint, including the factual allegations that: (1) NameFind had no intellectual property rights in or to the DEJA VU mark; (2) the disputed domain name was essentially identical to plaintiff’s mark and did not contain defendant’s legal name; (3) plaintiff did not authorize or consent to such use; (4) the domain name was configured to display pay-per-click advertisements to visitors, which provided links to adult-related entertainment sites; (5) as such, the disputed domain name was likely to be confused with plaintiff’s legitimate online location and other domain names, and deceive the public; and, (6) defendant’s website harmed plaintiff’s reputation and the goodwill associated with its marks by causing customers to associate plaintiff with the negative qualities of defendant’s website.

Global Licensing, Inc. v. NameFind LLC, 2022 WL 274104 (E.D. Michigan, January 28, 2022)

May 29, 2019 Cybersquatting

Coachella unsuccessful in domain name dispute, failing to prove bad faith use and registration

Disputed domain name: chellastore.com

The Complainant is the owner of the well-known Coachella festival. It owns a trademark registration, issued in 2016, for the mark CHELLA.

The Respondent asserted that he intended to use the disputed domain name to set up an online women’s clothing store but never did so. He claimed that growing up, his nickname was “Chelle” and that he modified that name to make it sound more feminine for use in connection with the store.

Coachella challenged the domain name registration. A single-member NAF panel denied the complaint. It found in favor of the Complainant on the first two UDRP elements, but did not find that the Respondent registered and used the disputed domain name in bad faith.

In the present case, the Panel found that, in contrast to the COACHELLA mark, the Complainant failed to show that its CHELLA mark was sufficiently well-known. All of the Complainant’s exhibits substantiating the well-known character of its mark related to its COACHELLA mark. Since the disputed domain name was considered to only be confusingly similar to Complainant’s CHELLA mark, the Panel found that future active use of the disputed domain name could thus be legitimate without interfering with the Complainant’s marks.

The Panel was also of the opinion that the Complainant did not sufficiently show the Respondent’s constructive knowledge of the COACHELLA or CHELLA marks to evidence bad faith registration of the disputed domain name. Considering that the term “Chella” is used as a personal name or to denote a town in Spain, the Panel found that it was plausible that the disputed domain name was registered in good faith by the Respondent, without any knowledge of or intention to target the Complainant’s marks. Finally, the Panel found that the Respondent had not violated any of the factors listed in Paragraph 4(b) of the UDRP or engaged in any other conduct that would constitute bad faith registration and use under the UDRP.

Coachella Music Festival, LLC v. John Mercado, FA1904001840140 (Forum, May 27, 2019)

This post originally appeared on UDRP Tracker.