« Trademark Principles Not Appropriate in Determining "Voter Confusion" | Main | Trouble with TESS »

Western District Denies Dismissal of Novel Trademark Theories

Novel causes of action for contributory cybersquatting and contributory dilution appear to viable here in the Western District.

On Jan. 12, Western District Judge Ricardo Martinez refused to dismiss such claims plaintiff brought in Microsoft Corp. v. Shah.

In that case, Microsoft alleges defendants, among other things, induced others to engage in cybersquatting and dilution by instructing them on how to use Microsoft trademarks to increase traffic on their Web sites. Microsoft also alleges defendants sold a product that contained software that enabled buyers to create Web sites incorporating Microsoft marks to help sell emoticon-related software, including a video narrated by defendant Amish Shah.

Defendants moved to dismiss, arguing claims for contributory cybersquatting and contributory dilution are not recognized.

The court denied the motion.

“In the current case, Defendants’ alleged conduct falls squarely within the statute’s goal of imposing liability on those who seek to profit in bad faith by means of registering, trafficking, or using domain names that contain identical or confusingly similar marks. Defendants allegedly sought to profit in bad faith by teaching others how to trade off the widespread recognition of Plaintiff’s mark in order to drive traffic to a given website. A defendant who seeks to profit by selling a method that teaches others how to benefit from violating the [Anticybersquatting Consumer Protection Act] should not be able to escape liability by interpreting the statute so narrowly. The practice of instructing others on how to engage in cybersquatting runs counter to the purpose of the ACPA. … [T]he ACPA should not be read so narrowly as to unduly constrain the protections the statute is meant to afford against cybersquatters.”

The court made a similar finding with regard to Microsoft’s claim for contributory dilution.

“As with contributory cybersquatting, contributory dilution is a tort-like cause of action which naturally lends itself to the theory of contributory liability. In the case at hand, Defendants are alleged to have encouraged others to utilize the famous Microsoft mark in such a way that could cause dilution of the Microsoft mark. The Trademark Dilution Act seeks to provide a mechanism through which owners of famous marks may seek protection against exactly the kind of harm — in the form of blurring or tarnishing — that is alleged in the present case. It would be inconsistent with the Trademark Dilution Act to prohibit a cause of action for contributory dilution.”

The case cite is Microsoft Corp. v. Shah, No. 10-653 (W.D. Wash. Jan. 12, 2011) (Martinez, J.).

PrintView Printer Friendly Version

EmailEmail Article to Friend

Reader Comments

There are no comments for this journal entry. To create a new comment, use the form below.

PostPost a New Comment

Enter your information below to add a new comment.

My response is on my own website »
Author Email (optional):
Author URL (optional):
All HTML will be escaped. Hyperlinks will be created for URLs automatically.