ABSTRACT.

Information Technology is growing faster than any other communication things inthis decade. Invention of digital technology was the most important revolution in the last century. The influence of digital technology on information technology is phenomenal. The present millennium is witnessing a new culture that is internet culture. It is changing our life style and way of doing business form traditional commerce to e-commerce. Furthermore, availability of radio, telephone, television and computer made it possible to carry out most of the business activities by on-line, through the information technology and communication network. The continued rapid evolution of a number key technologies and convergence of broadcasting media, communication media, home electronics, and publishing on computers creating a lot of legal issues. Today computer has made television, fax and telephone redundant. Thus important attributes like data text images and voice are combined by the computers in the form of multimedia which raise the issue of neighboring rights. Some of the issues of privacy and security have been mentioned, but there are many other issues with which individuals and commerce must be familiar when using the internet and the World Wide Web. Many potential legal issues may arise while doing commerce on internet. For example, is web content protected by copyright laws, or can it be considered public domain information? Copyrights protect the creative content of Web pages. Through this report we're going to talk about what copyright is, what the exceptions to copyright are, and how the Internet and digital materials have changed some of our thoughts about copyright, as well as the effects of certain new technologies such as Peer-to-Peer file sharing.

INTRODUCTION.
The history of the copyright law starts at Britain, the British Statue of Anne 1710, full title An Act for the Encouragement of Learning by vesting the Copies of Printed Books in the Authors or purchasers of such Copies, during the Times therein mentioned, was the first copyrightstatute. In order to implement the congressional authority as stated in the U.S. Constitution of granting exclusive rights to copyright owners, Congress adopted in 1790 the first U.S. copyright law. The statue has gone through numerous researches and resulting in 1976 copyright law followed international law, extending copyright for 50 years after death of the author/creator. At first, copyright law only applied to the copying of books. Nowadays, other uses such as translations and other works were made subject to copyright and copyright now covers a wide range of works including maps, performances, paintings, photographs, sound

recordings, motion pictures and computer programs.Copyright are exclusive rightsto the creator of an original work, including the right to copy, distribute and adapt the work. Copyright does not protect ideas, but protect only their expression in medium. In most jurisdictions copyright arises upon fixation and does not need to be registered. Copyright owners have the exclusive statutory right to exercise control over copying and other exploitation of the works for a specific period of time, after which the work is said to enter the public domain. Uses which are covered underlimitations and exceptions to copyright, such as fair use, do not require permission from the copyright owner. All other uses require permission and copyright owners can license or permanently transfer or assign their exclusive rights to others.

DEFINITION BASED ON THE TOPIC.

Cyberspace refers to the nonphysical environment created by joined computers interoperating on a network. In cyberspace, computer operators interact in ways similar to the real world, except cyberspace interaction does not require physical movement beyond typing. Information can be exchanged in real time or delayed time, and people can shop, share, explore, research, work or play. The Internet forms the largest cyberspace environment, housing many sub-environments within it and these include the World Wide Web (Web). Copyright is the property right that subsists in certain specified types of works as provided for by Copyright, Designs and Patents Act 1988. Examples of the works in which copyright subsist are original literary works, films and sound recordings. The owner of the copyright subsisting in a work has the exclusive right to do certain acts in relation to the work, such as making a copy, broadcasting or selling the copies to the public. These are examples of the acts restricted by copyright. Copyright law does not protect ideas, systems, or business methods. For example, copyright does not protect your ideas and graphs expressed in in an original business plan, but the original written and graphic description is protected. Copyright issues are pervasive in cyberspace. This is largely because everything communicated on an online service or a network must be protected.Copyright legally protects a vast array of original works of authorship fixed in a tangible medium of expression including: Computer software & architecture (code) Movies and other audiovisual works, including those on a Web site. Musical compositions, including the lyrics of the song. Novels, Poetry, including e-books. Literary works, including Web site content Dramatic works. Sound recordings, including Web site audio transmissions. Pantomimes & choreographic works. Sculptural works or Architectural works;

DISSCUSSION OF THE TOPIC IN DETAIL.

With the emergence of the internet and increasing use of the world wide web possibilities of infringement of copyright have become mind start free and easy access on the web together with possibilities of downloading has created new issued in copyright infringement. Taking content from one site, modifying it or just reproducing it on another site has been made possible by digital technology and this has posed new challenges for the old interpretation of individual rights and protection. Any person with a personal computer and a modem can become a publisher. Activities like downloading, uploading, saving or transforming a derivative work is just a mouse click away. A web page is not much different than a book a magazine or other multimedia medium and will be eligible for copyright protection, as it contains text graphics and even audio and videos.

Copyright law allows the owner an exclusive right to authorize reproduction of the copyright works preparation as example a derivative works. However application of this concept on the internet cannot be strictly applied to copyright. Duplication of the information is an essential step in the transmission of information on the internet and even plain browsing information at a computer terminal which is equivalent to reading a book or a magazine at book store that may result in the creation of an unauthorized copy since a temporary copy of the work is created in the RAM of the user of computer for the purpose of access.

The person that creates a copyrightable work is known as an author. Copyright ownership can be registered for such as literary works, musical work, dramatic works, pantomimes or choreographic works, sounds recordings and architectural works. In order for this material to be registered in the Copyright Office as a copyright, it must be an original work of authorship that fixed in any medium of expression from which they can be perceived, reproduced or otherwise communicated either directly or with the aid of machine or desire [17 U.S.C. Sec. 102 (a) ]. This requirement may fit the application of the material found on Web pages, allowing them to be federally registered with U.S. Copyright Office.

Original and creative digital works fixed in atangible medium of expression will receive exclusive statutory rights under copyright law. This is the basis of Web site federal registration in the U.S Copyright Office. Registration of a copyright in the Copyright Office requires a completed registration form and a submission of the original work. The Copyright Office will then issue to the ownera certificate of registration. In a copyright infringement case, the plaintiff will submit this certificate to prove copyright registration and ownership. The certificate of registration constitutes prima evidence of the validity of the copyright and allows the owner to sue an infringer in the federal court and pursue statutory remedies. So the importance of the federal registration of the e-business Web site cannot be overestimated. It provides the ebusiness with a property interest in the Web site that is legally protected. Copyright has its own duration. In October 1998, Congress enacted the Sonny Bono Term Extension Act (CTEA). It extends the term of the most copyrights by twenty years. These changes U.S. law with European copyright laws. Thus, copyright for works created prior to January 1, 1987, generally endure for a term of 28 years with the option to renew for a further term of 67 years. Prior to the CTEA, the renewal term was for 47 years [17 U.S.C. sec. 304]. Copyright for the works created on or after 1, 1978, generally endure for a term consisting of the life of the author plus an additional 70 years after the authors death. Prior to the CTEA the term after death was for 50 years [17. U.S.C. sec. 302].

CASES.
1. MAI Systems Corporation v. Peak Computer, Inc. (9th Cir. 1993) Background MAI Systems was a manufacturer of computers, who both designed software for those computers and serviced the same. MAI had a copyright in the operating software utilized in its computers. Defendant Peak Computer was in the business of maintaining and servicing computers, including those manufactured by MAI Systems. In the course of servicing these computers, Peak would turn on the computer and run the computer's operating software, which had been licensed to the owner and/or lessee of the machine. This was done to view the system error log, which assisted the repairman in servicing the machine. When this program was run, it was retrieved from the computer's storage system, placed into the computer's Random Access Memory ("RAM") and viewable on the computer's screen. After the repair was completed, the machine was turned off and no permanent copy of the copyrighted operating system software was made or removed from the machine or premises by Peak. If a computer had to be removed from the client's place of business to repair it, Peak apparently offered to loan the customer a similar MAI machine until the computer was repaired. MAI charged the defendants, inter alia, with copyright infringement. Trial Court Proceedings The Ninth Circuit affirmed the district court below, and held that the foregoing conduct constituted copyright infringement. The linchpin of the court's holding was its finding that unauthorized "copying, for purposed of copyright law occurs when a computer program is transferred from a permanent storage device to a computer's RAM." Thus, the court concluded that such action created a copy within the meaning of 17 U.S.C. 101. Section 101 defines copies as: "Material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." The act further explained that "a work is 'fixed' in a tangible medium of expression when its embodiment in a copy or phone record, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration." It does not appear that the Court addressed the

argument that the license granted by MAI to the purchaser and/or lessee of the machine and its operating program gave that licensee the right to utilize the program or cause third parties such as Peak to use the program to repair the machine.

2. Designer Skin LLC v. S & L Vitamins, Inc., et al. (D. Arizona, May 19, 2008) Background Designer Skin, LLC is a manufacturer of certain indoor tanning products. It owns a number of registered trademarks in these products and its company name, and also owns the copyright in certain artwork related to its products. Designer Skin distributes its products through independent distributors. The relationship between Designer Skin and its distributors is governed by the terms of distributorship agreement, which limits the distributors ability to resell Designer Skins products. Specifically, the agreement prohibits the distributors from selling Designer Skins products to anyone other than certain qualifying tanning salons. More specifically, theagreement prohibits the distributors from selling Designer Skins products to internet resellers. S & L Vitamins, Inc. is an internet reseller: it buys various products in bulk and then resells those products on its websites at discount prices. Since some time near the beginning of 2004, S & L Vitamins has sold Designer Skin products on its websites. S & L Vitamins has obtained all of its Designer Skin products through tanning salons. It has not purchased any of these products directly from a Designer Skin distributor. On its websites, S & L Vitamins displays thumbnail images of the Designer Skin products for sale and identifies those products by using Designer Skins trademarks. In addition, S & L Vitamins uses Designer Skins trademarks in the metatags of its sites and as search-engine keywords. On the current websites at issue, S & L Vitamins has posted a disclaimer stating that it is not affiliated with or authorized by any tanning lotionmanufacturers to sell their products. It is unclear, however, when S & L Vitamins firstposted this disclaimer on its sites. Designer Skin filed this action oon November 14, 2005, claiming trademark Infringement,1 trademark dilution, copyright infringement, intentional interference with contractual relations, and unfair competition. S & L Vitamins filed counterclaims for unfair competition and for declaratory judgments of no infringement of trademark and noninterference with contract. Designer Skin now moves for partial summary

judgment on its claims of trademark infringement, copyright infringement, and intentional interference with contractual relations, and on all counterclaims. Trial Court Proceedings Court holds that unauthorized internet reseller of plaintiffs tanning products is not guilty of trademark infringement as a result of its use of plaintiffs trademarks in the meta tags of a website at which such products are sold, and as search engine keywords triggering the display of a link to such a website. In reaching this result, the Court rejected plaintiffs claim that such use of its marks causes actionable initial interest confusion by directing those searching for plaintiffs site to that of the defendant. To sustain such a claim, holds the court, defendants conduct must be deceptive. Plaintiff failed to meet this burden because defendants site does indeed offer plaintiffs products for sale, and thus, its use of plaintiffs mark in the sites Meta tags is not deceptive, but rather accurately describes the contents of defendants site. This was true, held the Court, notwithstanding the fact that S & L offered plaintiffs competitors products for sale on its site as well. The Court also dismissed trademark dilution claims arising out of defendants use of plaintiffs marks. The Court held that, under the circumstances, defendants use of plaintiffs marks in the Meta tags of its site, and as search engine key words, constituted a permissible nominative fair use of those marks. To establish that a use of a trademark qualifies as a permissible nominative fair use, the defendant must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Notably, the Court reached this result because plaintiff failed to submit adequate evidence as to the impact this use of its marks had on the listing of defendants site in search results for plaintiffs mark. The Court left open the possibility that such a use of plaintiffs mark may not qualify as a nominative fair use if in fact it caused defendants site to appear at or near the top of search engine results for plaintiffs mark, and thereby suggested that plaintiff sponsored or endorsed defendants site. The Court denied so much of defendants motion for summary judgment which sought dismissal of copyright infringement claims arising out of its use of electronic renderings of plaintiffs products to promote the sale of such products on its web site. Issues of facts as to whether defendant copied such images from plaintiffs web site, or created its own, precluded an award of summary judgment. In allowing this claim to proceed to trial, the Court rejected defendants argument that its alleged use of plaintiffs images was protected as a fair use. Notwithstanding the fact that defendants use did not affect the potential market for plaintiffs

images which plaintiff does not offer for sale the Court rejected defendants fair use argument, pointing to the fact that its use was commercial, and copied plaintiffs image, which was a creative work, in its entirety. Finally, the Court rejected plaintiffs claim for intentional interference with contractual relations, which arose out of prohibitions contained in contracts with plaintiffs distributors precluding their resale of plaintiffs products to Internet resellers such as defendant. Defendant obtained plaintiffs products from tanning salons, to which the distributors were permitted to sell such products. Because there was no evidence either that such tanning salons were acting as defendants agent in purchasing goods from plaintiffs distributors or that defendant directly purchased such goods from the distributors in breach of the prohibitions contained in their agreements, this claim failed.

3. A.V., et al. v. IParadigms, Limited Liability Company.

(E.D. Va., March 11, 2008)
Background Court holds that minors entered into valid click wrap agreement with defendant IParadigms LLC (IParadigms) by clicking an I agree icon which appeared directly below an online Usage Agreement, and indicated their assent to be bound thereby. Plaintiffs were high school students that were directed by the schools they attended to submit class work to defendant IParadigms Turnitin website to check for plagiarism. As part of this submission process, plaintiffs were obligated to assent to the sites Usage Agreement. Because the Usage Agreement contained a limitation of liability clause precluding liability to plaintiffs as a result of their use of the Turnitin site, the Court rejected plaintiffs copyright infringement claims, which arose out of defendants storage of plaintiffs class work in a database used to check student homework for plagiarism. In reaching this result, the Court rejected plaintiffs claims that, as minors, they were not bound by the terms of the sites Usage Agreement. Because they had accepted the benefits of the agreement the ability to submit their class work for grade to their respective schools was dependent upon their use of the site they could not escape the contractual conditions upon which such benefits were rendered.

The Court further held that plaintiffs copyright infringement claims failed because defendant had made a permissible fair use of their works. In reaching this result, the Court relied on the fact that Turnitins use of plaintiffs school work was highly transformative of the original works, in that it added plaintiffs school work to a non-publicly available database used only to check for plagiarism by students. The Court also rested its holding of fair use on the fact that defendants use did not impact the market for plaintiffs works, as the copies Turnitin made thereof were not available to the public, but rather maintained in a non-public database. The Court rejected the counterclaims advanced by defendant iParadigms, including a claim for indemnification as a result of the commencement of this action. This claim was based on a separate Usage Policy found on the Turnitin site. The Court held that plaintiffs were not bound by this policy, which was not linked or otherwise referenced in the Usage Agreement to which plaintiffs were in fact bound. There was no evidence that plaintiffs were aware of this separate usage policy, which was contained in a link on each page of the Turnitin site. As a result, and because the parties contract stated that it constituted the full agreement between the parties, the plaintiffs use of the site was held not to create a valid browse wrap agreement, and the claim for indemnification, predicated on the Usage Policy, was dismissed. The remaining counterclaims advanced by iParadigms arose out of the use of the site by one of the plaintiffs to submit class work to an institution he did not attend. These claims for trespass to chattels, and violations of both the Computer Fraud and Abuse Act and Virginia Computer Crimes Act, failed due to the absence of the requisite damage.

4. Adobe Systems Inc. v. Canus Productions, Inc., et al

(C.D.Cal., October 23, 2001)
Background Court denies plaintiff's motion for summary judgment, seeking to hold operator of computer fairs liable for copyright infringement as a result of the sale of allegedly infringing software by various unaffiliated vendors at fairs operated by defendants. The court held that issues of fact precluded it from determining that the fair operator was liable, on theories of vicarious and contributory infringement, for such sales. As to the former, the court held that issues of fact existed both as to whether the copyright infringement at issue provided a direct

financial benefit to the fair operators, or whether the defendants had the requisite ability to control the vendor selling the allegedly infringing merchandise, both necessary to establish vicarious infringement. The court held that while defendants did not need to share in the proceeds of the goods in question to establish the requisite financial benefit, the sale of the infringing materials had to be the "draw" which attracted customers to defendants' shows, and hence produced revenue for defendants in terms of entrance and vendor fees. Issues of fact precluded the court from reaching a determination on this issue. Such issues also existed as to whether defendants had the ability to exercise the requisite control over the vendors, given, in part, the difficulty in determining whether the vendors in question had authority to sell the products in question. The court also held that issues of fact precluded it from holding defendants liable on a theory of contributory infringement, as the record did not permit the court to determine whether defendants had the requisite knowledge that infringing activities were being carried on at the fair. This determination was based, in part, on evidence that the amount of infringing goods sold at the fair was a relatively small percentage of the overall number of goods sold. Plaintiff Adobe Systems Incorporated ("Adobe") is a software development and publishing company. Defendants are the operators of a number of computer fairs at which both computer hardware and software is offered for sale to the public by vendors not affiliated with the defendants. Defendants derive their revenue from these fairs predominantly from fees charged both to the public to entrance the fair, and to the vendors to display and sell their goods at the fair. The fees collected from the vendors are not dependent on the quantity of goods sold, or revenues achieved therefrom. Defendants reserve the right to eject from the premises any objectionable person or vendor. Defendants employ about 20 security personnel at their events. The majority operate at the perimeter of the fair, collecting the required entrance fees and monitoring fair entrance and exit. Two to five of the guards operate as undercover security agents at the fair, monitoring such issues as booth placement, vendor disputes and theft. Trial Court Proceedings In April 1996, Adobe's counsel sent a letter to defendants describing allegedly activity taking place at defendants' shows and requesting that defendants insure that vendors selling infringing products be ejected from the shows. Plaintiff claimed that no action was taken in response to this notice. Thereafter, in 1999, plaintiff and the U.S. Marshall seized over one hundred units of unauthorized software from a computer fair operated by defendants. These

items were being offered for sale by vendors unaffiliated with the defendants. The items seized included boxes containing genuine software manufactured by Adobe but with "Educational" or "Not for resale" stickers either removed or covered over by "Sale" or plain white stickers. Defendants claimed that such items represented a relatively minor portion of the goods offered for sale at the show. According to defendants, "less than two percent of the vendors selling less than one percent of the products for sale are involved in allegedly infringing activity." The parties disagreed as to whether such infringing activity was continuing at defendants' fairs, with defendants denying that such activity was continuing. According to the court, defendants' "position is summed up in a letter to Adobe's counsel "We are an event that sells exhibit space to reseller. We don't have a working knowledge of every piece of product that every vendor brings to the show to sell. But we do not condone illegal activity, and if a vendor is caught selling stolen, illegal, etc. merchandise, it will be prevented from exhibiting in the show." Plaintiff moved for summary judgment, seeking to hold defendants liable for copyright infringement on theories of vicarious and contributory infringement. Finding issues of fact existed as to defendants' liability, the court denied plaintiff's motion. The court held that to establish a claim for vicarious infringement, the plaintiff must establish (1) direct infringement of plaintiff's copyright; (2) that the copyright infringement provides a direct financial benefit to the defendant; and (3) the defendant has the right and ability to control the direct infringer. The defendant can be held liable even though it does not directly participate in the profits reaped on the sale by third parties of infringing products. Said the court: National contends that it has no direct financial interest in the infringing activities because it receives no percentage of any sales or any compensation based on vendor sales at the shows. Under Fonovisa, this argument is irrelevant. Commissions on individual vendor sales are not required to support a finding of vicarious liability: booth and admission fees may suffice. However, where such direct financial interest was absent, the sale of counterfeit products must be the draw for customers to the venue operated by the defendants, which in turn produces a profit for the show operator via increased entrance and vendor fees. Said the court: To satisfy the direct financial benefit prong of the vicarious copyright infringement test, Fonovisa holds that the sale of the counterfeit products must in fact be the "draw" for customers to the venue. Under Fonovisa, the plaintiff bears the burden of demonstrating profits which flow directly from customers who want to buy the counterfeit recordings. The direct financial benefit

must stem from the fact that substantial numbers of customers are drawn to a venue with the explicit purpose of purchasing counterfeit goods. The court held that on the record before it, issues of fact precluded it from determining whether the sale of counterfeit goods was the "draw" which attracted the public to defendants' shows, and hence whether defendants had the requisite direct financial interest in the sales of those products by vendors to be held vicariously liable therefor. In reaching this conclusion, the court distinguished this case from Fonovisa v. Cherry Auction, Inc., 76 F.3d 259 (9th Cir. 1996). There, the operator of a swap meet at which counterfeit music recordings were sold by unaffiliated vendors was held liable for copyright infringement on such sales on theories of vicarious and contributory infringement. As with the defendants here, the swap meet operator derived its profits not from a direct participation in the sales, but rather through admission and exhibition fees collected from the vendors and public, as well as concession stand and parking fees. However, in a prelitigation raid, over 38,000 counterfeit recordings were seized, leading the court to conclude that the lure of acquiring such counterfeit items was the draw which attracted the public to the swap meet, and which in turn produced the profit the operator received in admission and other fees. In the case at bar, however, the court, given the relative size of the items in question (approximately 100 pieces), could not determine if the availability of such counterfeit goods was the draw which brought the public to the shows. The court also held that issues of fact precluded it from determining if defendants had the requisite degree of control over the vendors and their activities necessary to establish vicarious liability. Here, the court focused, in part, on the difficulty in determining if the vendors were permitted to sell the software in question, stating "there is a question of fact regarding the ability of National's security guards to recognize the alleged infringing product. There can be no practical ability to control the infringing behavior if National does not know what constitutes an unauthorized Adobe product." The court also pointed to the size of the shows, at which 350 to 450 vendors and an average of 15,000 visitors were present, and the relative size of defendants' security force, as raising further issues as to defendants' ability to exercise the required degree of control over the vendors in question. The court also held that issues of fact precluded it from finding defendants responsible for the infringing sales by vendors at their fairs. "One who, with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another, may be

held liable as a contributory infringer." The court held that an issue of fact precluded it from determining whether defendants "had sufficient knowledge of the infringing activity to justify the imposition of liability." The court reached this conclusion despite the fact that plaintiff had sent defendants a letter four years prior to the commencement of the instant lawsuit informing them of allegedly infringing activity occurring at meets at that time. In reaching this conclusion, the court again pointed to the relatively small number of infringing items seized compared with the overall sales occurring at the fairs. 4. Nintendo of America, Inc. v. Dragon Pacific Int'l, (9th Cir. 1994)

Background The dispute between Universal City Studios, Inc. (Universal) and Nintendo Co., Ltd. (Nintendo) arose when Donkey Kong became enormously popular in 1981 and 1982. The game was played by millions of Americans, including some of the top management at Universal, who concluded that it reminded them of King Kong. Universal filed a lawsuit against Nintendo, alleging claims for trademark infringement and unfair competition. Universal alleged that Nintendo infringed Universal's trademark in King Kong when it marketed its popular video game Donkey Kong. Trial Court Proceedings After filing the lawsuit, Universal sent cease and desist letters to all of Nintendo's licensees demanding that each licensee either cease marketing Donkey Kong products or obtain a license from Universal.

The facts described above gave rise to three Nintendo counterclaims. First, Nintendo claimed that Universal's "cease and desist" letters threatening litigation against Nintendo's third party licensees tortuously interfered with Nintendo's contractual relations with those licensees. Second, Nintendo claimed that Universal's modified agreement licensing Tiger's King Kong video game vicariously infringed Nintendo's copyright in Donkey Kong. Third, Nintendo contended that Universal's agreements with Coleco, Atari and Ruby-Spears tortuously interfered with Nintendo's agreements with those three companies and resulted in unjust enrichment.

The trial court, on motions for summary judgment, dismissed Universal's complaint for trademark infringement and unfair competition against Nintendo. The trial court then proceeded to try Nintendo's counterclaims against Universal. The trial court ruled for Nintendo on part of its tortious interference counterclaim; for Nintendo on its vicarious copyright infringement counterclaim; and against Nintendo on its unjust enrichment counterclaim. The court also awarded Nintendo punitive damages for tortious interference, attorney's fees for successfully defending against Universal's trademark infringement claim, and attorney's fees for successfully prosecuting its vicarious copyright infringement counterclaim. Appellate Court Proceedings The appellate court affirmed the trial courts rulings. The appellate court held that Universal tortuously interfered with contractual relations by sending "cease and desist" letters to Donkey Kong licensees, that an award of attorney's fees was proper, that an award of punitive damages on tortious interference counterclaim was appropriate, that Universal had vicariously infringed the Donkey Kong copyright by licensing the competing King Kong game, and that Nintendo was not entitled to damages for alleged tortious interference with licensing agreements.The court stated that: First, Universal knew that it did not have trademark rights to King Kong, yet it proceeded to broadly assert such rights anyway. This amounted to a wanton and reckless disregard of Nintendo's rights. Second, Universal did not stop after it asserted its rights to Nintendo. It embarked on a deliberate, systematic campaign to coerce all of Nintendo's third party licensees to either stop marketing Donkey Kong products or pay Universal royalties. Finally, Universal's conduct amounted to an abuse of judicial process, and in that sense caused a longer harm to the public as a whole. Depending on the commercial results, Universal alternatively argued to the courts, first, that King Kong was a part of the public domain, and then second, that King Kong was not part of the public domain, and that Universal possessed exclusive trademark rights in it. Universal's assertions in court were based not on any good faith belief in their truth, but on the mistaken belief that it could use the courts to turn a profit.

5. America Online, Inc. v. IMS, (E.D. Va. 1998)

Background Plaintiff, America Online ("AOL") is an Internet service provider, and Defendant Joseph J. Melle, Jr., ("Melle") is the creator and operator of defendants TSF Marketing and TSF Industries (collectively "TSF"). AOL alleges that Melle and TSF improperly sent unauthorized bulk e-mail advertisements ("spam") to AOL subscribers. Specifically, AOL alleges that Melle sent over 60 million e-mail messages over the course of 10 months; that he continued to send spam after he was notified in writing by AOL to cease and desist these activities; that his activities caused AOL to spend technical resources and staff time to "defend" its computer system and its membership against this spam; and that Melle's messages damaged AOL's goodwill among its members and generated more than 50,000 member complaints. Trial Court Proceedings AOL sued six defendants under five causes of action: false designation of origin under the Lanham Act (Count I); dilution of interest in trademarks and service marks under the Lanham Act (Count II); violation of the Computer Fraud and Abuse Act (Count III); violation of the Virginia Computer Crimes Act (Count IV); and trespass to chattels under Virginia common law (Count V). Of the six defendants, only Melle filed an answer to the complaint, and the Court found the remaining defendants in default. After entry of those defaults, Melle stipulated to a permanent injunction against him. AOL filed a summary judgment motion and agreed to dismiss the remaining counts of the complaint against Melle, if summary judgment were granted in its favor.

The trial court granted plaintiff summary judgment. Following the decision in CompuServe, Inc. v. Cyber Promotions, Inc.,[1] the trial court found that the defendant, by continuing to send spam to plaintiff's subscribers after being told by AOL to cease and desist, had trespassed on plaintiff's computer network in violation of Virginia common law.

[Defendant] Melle admits that he received a cease and desist letter from AOL . . . and that, as a result of that letter, he knew his contact with AOL's computer network was unauthorized, yet he continued spamming. The trial court further found that defendant's act of forging "aol.com" in the headers of his e-mail constituted both a false designation of origin and dilution in violation of federal trademark law. This conduct constituted false designation of origin because Any e-mail recipient could logically conclude that a message containing the initials "aol.com" in the header would originate from AOL's registered Internet domain . . . [and thereby be] deceived into thinking that AOL sponsored or approved of [defendant] Melle's bulk mailing activities. This injured AOL's reputation with its subscribers. This conduct also diluted AOL's famous mark by associating it with the transmission of junk e-mail. Such association tarnished the mark. The court awarded plaintiff summary judgment on liability. Left for another day was the question of damages.

6. Nettis Environmental Ltd. v. IWI, Inc., (N.D. Ohio 1999)

Background Plaintiff Nettis Environmental Ltd. and defendant were competitors in the in-plant ventilation market. Defendant used nettis and nettis environmental as metatags on its website and registered nettis and nettis environmental as keywords with almost 400 search engines or websites. Thus, when a person searched for the terms nettis or nettis environmental on a search engine, defendants site was revealed in the search results. Nettis filed suit, alleging violations of Section 43(a) of the Lanham Act. On that same day, defendant agreed to purge its webpage of all materials which could cause a web search engine looking for Nettis Environmental, Nettis, or similar phrases to pull up IWIs webpage. The parties stipulated to a temporary restraining order and then a preliminary injunction enjoining the complained-of activities. Although defendant purged its site of the offending metatags, it did not deregister Nettis and Nettis Environmental as keywords. Defendants computer consultant mistakenly believed the keywords would be removed automatically when the metatags were purged. When plaintiff discovered the keywords were not removed, it filed a

contempt motion. One day after receiving notice of the motion, defendant shut down its website and sent an e-mail requesting all the search engines that registered the Nettis keywords to deregister them. Trial Court Proceedings Although defendant took all reasonable steps to purge its site of the offending metatags, the court found defendant in contempt because it took no affirmative action to deregister the Nettis keywords until two months after ordered to do so. Defendants reliance on the advice of its computer consultant was an indication that it did not willfully violate the order, but the court found that a reasonable person at least would have checked to see that the keywords were actually removed, as the consultant claimed they would be. The court sanctioned defendant by ordering it to pay plaintiffs attorneys fees and costs incurred in seeking the contempt sanctions.

7. Paccar, Inc. v. Telescan Techs., L.L.C., (E.D. Mich. 2000)

Background Plaintiff owns the PETERBILT and KENWORTH trademarks for trucks and truck parts. Defendant, owner of several online truck-locator services, used plaintiff's trademarks in a number of domain names (e.g., peterbilttrucks.com; peterbiltdealers.com; kenworthdealers.com) and in its metatags. Trial Court Proceedings Plaintiff sought a preliminary injunction against defendants use of these domain names. In finding trademark infringement, the court noted that the addition of generic terms such as "trucks" or "dealers" did not avoid a likelihood of confusion between defendant's domain names and plaintiff's marks. The court rejected defendants argument that its use of plaintiffs trademarks in its [domain name]] s was a fair use, distinguishing use of anothers trademark in [domain name]] s from use in advertising. According to the court, use of a brand of truck in an advertisement conveys the source of the truck, not the seller of the truck. In contrast, use of the brand name in [domain name]] s communicates information about the source of the website, not the source of the products being sold on the site.

Using the name Peterbilt or Kenworth in a domain name sends a message to Internet users that the website is associated with, or sponsored by the company owning the trademarks Peterbilt or Kenworth. In finding dilution, the court rejected defendant's assertion that no dilution or tarnishment occurred because the trucks shown on its websites were manufactured by plaintiff. The court emphasized that the issue is the website itself, not the trucks. Because plaintiff had no control over what messages, goods, or services were associated with defendants websites, it is effectively 'at the mercy of [defendant]. The preliminary injunction enjoined defendant from using plaintiff's trademarks in any domain name, in metatags, as the title of a web page, or as a wallpaper background of a web page. The injunction did not, however, prohibit defendant from using plaintiff's trademarks on its website in a no infringing manner. The court also suggested that defendant could use plaintiffs trademarks in the post domain path of an URL (e.g., www.telescan.com/peterbilt). Finally, defendant was required to: (1) immediately transfer the disputed domain names to plaintiff, (2) post the courts order on its websites, and (3) give notice of the order to all its customers, correspondents, members, and subscribers. Appellate Court Proceedings On appeal, the Sixth Circuit affirmed the district court's grant of a preliminary injunction, finding that plaintiff demonstrated a "strong" likelihood of success on the merits of its trademarkinfringement claim based on defendant's use of plaintiff's trademarks in its domain names. Central to the appellate court's decision was its recognition that a domain name can be more than a mere address because "words in many domain names can and do communicate information as to the source or sponsor of the web site." The district court properly found that defendant's disclaimer did not remedy the initial interest confusion caused by defendant's domain names.

The Sixth Circuit rejected defendant's three primary defenses. First, defendant's use of plaintiff's trademarks in its domain names did not constitute a "descriptive" fair use because defendant used PETERBILT and KENWORTH in its domain names as trademarks, not as descriptive terms.

Second, regarding defendant's nominative fair-use defense, the Sixth Circuit noted that it had never followed the nominative fair-use test advanced by the Ninth Circuit in New Kids and was not "inclined" to do so here. Even if the court did apply the nominative use test here, however, defendant's use of plaintiff's trademarks did not satisfy that test because defendant used plaintiff's trademarks in its domain names to describe its own products its websites rather than plaintiff's trucks, parts, and dealers. Moreover, defendant's use of plaintiff's marks in its domain names, coupled with its other uses of plaintiff's marks on its websites, went beyond using the marks 'as is reasonably necessary to identify' PACCAR's trucks, parts, and dealers."

The Sixth Circuit distinguished this case from Volkswagenwerk v. Church, in which the Ninth Circuit upheld a lower court decision that a repair shop unaffiliated with Volkswagen could refer to itself as "Independent Volkswagen Porsche Service." In that case, the defendant's "prominent use of the word 'Independent' whenever the terms 'Volkswagen' or 'VW' appeared in his advertising was sufficient to distinguish his business to the eye of the customer" so they would not believe that defendant was "part of Volkswagen's organization of franchised dealers and repairmen." Here, however, defendant's domain names did not contain words like "independent" or "unaffiliated" to distinguish the producers websites. Third, the first-sale doctrine offered no relief for defendant as it applies only when a purchaser "does no more than stock, display, and resell" a product under its trademark. It did not apply where, as here, a reseller uses the trademark "in a manner likely to cause the public to believe the reseller was part of the producer's authorized sales force or one of its franchisees." Given plaintiff's strong showing on the likelihood of success of its infringement claim, the appeals court did not consider the district court's "cursory analysis" that led to its finding of dilution. Finally, because the lower court failed to consider whether defendant's use of plaintiff's marks in metatags created a likelihood of confusion separate from use of those marks in defendant's domain names, the Sixth Circuit vacated the injunctions prohibition on the use of plaintiffs trademarks in defendants metatags.

8. Volkswagen of America, Inc. v. Virtual Works, Inc., (E.D. Va. Nov. 23, 1999)
Background Virtual Works, an ISP, registered the domain name "vw.net" in October 1996. In or about June 1999, Volkswagen filed a protest with NSI to try to place defendant's "vw.net" domain name on hold under NSI's Domain Name Dispute Policy, claiming that Virtual Works's use and registration of the "vw.net" domain name violated Volkswagen's trademark rights. Trial Court Proceedings Virtual Works filed suit against Volkswagen and NSI in August 1999 to block NSI from deactivating or assigning the "vw.net" domain name. Volkswagen then counterclaimed and sought a preliminary injunction against Virtual Works's use of "vw.net," alleging that it infringed and diluted Volkswagen's VW trademark. Because Virtual Works had been using the "vw.net" name for three years, however, the court found that Volkswagen made "no showing of any irreparable harm" and thus denied Volkswagen's motion for a preliminary injunction. The court also dismissed Virtual Works's claims for breach of contract against NSI. On the parties' cross-motions for summary judgment, the court granted summary judgment for Volkswagen on its claims for cybersquatting, trademark infringement, and dilution by blurring. Retroactively applying the ACPA, the court found that Virtual Works "attempted to profit from the trafficking of a domain name of a previously trademarked name," finding that: (1) Virtual Works never registered a trademark or conducted business under the VW mark; (2) Volkswagen is the only entity with trademark rights in the VW mark; (3) the use of "vw.net" had already caused confusion; (4) the "vw.net" site disparaged Volkswagen by referring to it as "Nazis using slave labor"; (5) Virtual Works attempted to sell the "vw.net" domain name to Volkswagen for financial gain; and (6) Volkswagen's VW trademark is famous.

As to trademark infringement, the fact that Virtual Works and Volkswagen offered different products was irrelevant because "both parties use the Internet as a facility to provide goods and services." The court also noted that "[t]he holder of a domain name should give up that domain name when it is an 'intuitive domain name' that belongs to another." Appellate Court Proceedings

The Fourth Circuit court affirmed, upholding the district court's decision that Virtual Works had bad-faith intent to profit from Volkswagen's famous VW mark. In addition to circumstantial evidence of bad faith (e.g., the VW mark was famous), Virtual Works never used VW to identify its business or services, Virtual Works could have registered the domain name "vwi.org" corresponding to its prior use of the name VWI), there was direct evidence of Virtual Works's bad faith (Virtual Works admitted that it knew that Internet users might confuse "vw.net" with Volkswagen when it registered the name, and Virtual Works threatened to auction the name to the highest bidder if Volkswagen did not make an offer within twenty-four hours). Nor was Virtual Works entitled to protection under the ACPA's "safe harbor" provision. Even though Virtual Works used the "vw.net" name for two years as part of an ISP business, the court held that "[a] defendant, who acts even partially in bad faith in registering a domain name, is not, as a matter of law, entitled to benefit from the Act's safe harbor provision.

9. BroadBridge Media, L.L.C. v. Hypercd.com, (S.D.N.Y. 2000)

Background Under the mark HYPERCD, plaintiff offered software that converts and compresses analogaudio information into digital information. Plaintiff advertised its HYPERCD mark and HYPERCD.COM domain name on millions of compact discs it distributed. After plaintiff inadvertently failed to renew its domain-name registration for HYPERCD.COM, the registration lapsed and a Canadian individual registered the domain name. After negotiations to regain possession of the domain name failed, plaintiff filed an arbitration complaint under ICANN's Uniform Dispute Resolution Policy. Two days later, plaintiff brought this in rem proceeding under the ACPA. Trial Court Proceedings Ten days later, plaintiff sought a temporary restraining order and the court ordered the domainname registrar to transfer the domain name to plaintiff. At issue in this decision was plaintiff's motion for preliminary injunction and defendant's motion to dismiss. Initially, the court rejected defendant's argument that plaintiff gave up the right to proceed in court by filing a complaint under ICANN's Uniform Dispute Resolution Policy (UDRP), as the

UDRP acknowledges that civil litigation and UDRP complaints are not mutually exclusive. Substantively, the court granted plaintiff's motion for preliminary injunction. The court found irreparable harm because plaintiff had advertised HYPERCD.COM on millions of its CDs and invested a significant amount of money developing its HYPERCD trademark.

The court also noted that plaintiff's loss of the HYPERCD.COM domain name would make it impossible for plaintiff to fulfill its contractual obligations to clients and thereby damage its reputation and goodwill. Plaintiff showed a substantial likelihood of success on the merits because its federally registered mark HYPERCD was distinctive and the HYPERCD.COM domain name was confusingly similar.

The court also held that the plaintiff must prove the "bad faith intent to profit" required by the ACPA in an in rem action, and then found that the third-party registrant acted in bad faith primarily because he repeatedly offered to sell or lease the domain name to plaintiff for an exorbitant amount of money. Accordingly, the court ordered the domain name registrar to maintain ownership of the HYPERCD.COM domain name in plaintiff's name.

10. Dell Computer Corp. v. Dellkorea.com,

(E.D. Va. Dec. 11, 2000)

Background Plaintiff, owner of the federally registered mark DELL for computers, brought an in rem action under the ACPA against the domain name "dellkorea.com," which connected to the "Dell Korea Digital Shopping Mall" website selling computers, monitors, printers, scanners, and other related products. Trial Court Proceedings Plaintiff moved for a temporary restraining order to transfer the "dellkorea.com" domain name to plaintiff pending a decision on the merits. On December 11, 2000, the court issued a temporary restraining order, ordering the registrar to transfer of the "dellkorea.com" domain name to plaintiff pending further order of the court.

The court found that plaintiff was likely to succeed on the merits of its ACPA claim, that plaintiff would suffer irreparable injury if the court did not order transfer of the registration, that plaintiff's irreparable injury outweighed any injury to the registrant of the defendant domain name, and that transfer of registration served the public interest in preventing consumer confusion. On December 20, 2000, the court, reiterating its findings in its temporary restraining order, issued a preliminary injunction requiring the registrar to "continue its transfer [of] the registration of DELLKOREA.COM to Dell, pending a decision after trial on the merits . . . ." On February 1, 2001, the defendant consented to entry of judgment ordering the permanent transfer of the "dellkorea.com" domain name to plaintiff.

11. A1 Mortgage Corp. v. A1 Mortgage & Financial Services

(W.D. Pa. 2006).

Background Plaintiff and defendant operated competing mortgage companies. Plaintiff had operated its mortgage business under the mark and name A1 MORTGAGE since 1996. In 2001, defendant adopted the trade name "A1 Mortgage and Financial Services, LLC" and opened an office about 30 miles from plaintiff's office. Defendant also registered and used the domain name "a1mortgagellc.com" to promote its services. Following a state-court lawsuit filed by plaintiff, the parties entered into a settlement agreement in 2003 that permitted defendant to continue to use its full corporate name and the "a1mortgagellc.com" domain name but only with an appropriate disclaimer. Defendant purchased the domain name "a1mortgage.com" in May 2003 and began using that name in August 2003 despite the prior state-court lawsuit and the parties' settlement agreement. Trial Court Proceedings Following a bench trial, plaintiff brought this suit for false designation of origin under Section 43(a) and cybersquatting. The court initially held that defendant's use of the "a1mortgage.com" domain name, as well as its noncompliance with the parties' settlement agreement, infringed plaintiff's unregistered mark A1 MORTGAGE.

Regarding cybersquatting, although plaintiff's mark was descriptive, it had acquired secondary meaning through plaintiff's advertising, volume of business, and reputation. The court also held that the "a1mortgage.com" domain name was "actually identical" to plaintiff's A1 MORTGAGE mark but for the ".com." The court next found that defendant registered and used the "a1mortgage.com" with bad-faith intent to profit from plaintiff's mark. According to the court, plaintiff used the domain name with the clear intent to divert consumers from plaintiff and to compete with plaintiff. The court rejected defendant's argument that it shortened its legal name into the domain name "a1mortgage.com" for the sake of "consumer convenience" "in view of the contentious litigation history between the parties." The court also held that defendant did not qualify for ACPA's safe-harbor provision because defendant could not have believed and did not have reasonable grounds to believe that its use of the domain name was a fair use or otherwise lawful based on the parties' "protracted litigation history." Accordingly, the court permanently enjoined defendant from using the domain name and ordered defendant to transfer the domain name to plaintiff. The court awarded plaintiff its reasonable attorney's fees. It also awarded statutory damages for cybersquatting, which serves to deter wrongful conduct and to provide adequate remedies for trademark owners to enforce their rights. The court described statutory damages as "essential" based on the statement in Electronics Boutique that "actual damages suffered by a plaintiff as a result of lost customers and goodwill is incalculable." Here, "[b]based on the facts established by [plaintiff] and the incalculable nature of [plaintiff's] loss and damages," the court awarded statutory damages in the amount of $50,000.

12. America Online, Inc. v. AOL.org

(E.D. Va. 2003)

Background Plaintiff, owner of the trademark AOL, brought an in rem suit under the ACPA against the domain name "aol.org," asserting claims for federal trademark infringement and unfair competition. The "aol.org" name linked to a Korean-language site with further links to other sites that promoted various Internet and computer-related services. The domain name registrar never

deposited with the court a registrar's certificate acknowledging the court's authority over the "aol.org" domain name but did acknowledge in an e-mail that it would not transfer or modify the domain name except upon order of the court. Trial Court Proceedings The district court held in plaintiff's favor on its infringement and unfair competition claims, finding that the registrant's intent was to use the domain name to divert traffic intended for plaintiff to its own site. The registrant used the "aol.org" name in commerce through the links to the third-party sites noted above. Accordingly, the court ordered OnlineNIC, the China-based registrar, to transfer the "aol.org" domain name to plaintiff within twenty days after receipt of the court's order. But OnlineNIC refused to transfer the name to plaintiff. Instead, it transferred responsibility for the name to Neptia.com, a registrar based in South Korea. Plaintiff then moved the court to amend its original transfer order to order the .org registry, which was located in Virginia, to transfer the name to plaintiff. This case presented the same situation the court faced in Globalsantefe v. Globalsantafe.com[1] but the plaintiff there requested only that the registry cancel or disable the domain name at issue pending its transfer to plaintiff. However, because nothing in the ACPA limits the transfer and cancellation remedies to orders directed only at registrars and because the ACPA specifically provides for jurisdiction in the district in which the registrar or registry is located, the court concluded that it could direct the registry, if necessary, to transfer an infringing domain name to the trademark owner.

Moreover, the interests of international comity did not militate against the transfer of the name for several reasons. First, unlike GlobalSantaFe, there was no order of a foreign court directing the registrar not to transfer the name. Second, even though the registrant and registrar were foreign, the location of the .org registry in this district provided jurisdiction for an in rem action against the domain name in this district. Third, an order directing a U.S.-based registry to transfer an infringing domain name to the trademark owner did not require any foreign entity to do anything outside the U.S. and thus was not an improper extraterritorial application of the Lanham Act. Accordingly, the court ordered the .org registry to transfer the domain name "aol.org" to plaintiff.

12. Cable News Network, L.P. v. cnnews.com,

(E.D. Va. 2001)

Background Plaintiff, owner of the federally registered CNN mark for news services, filed an in rem action under the ACPA against the domain name "cnnews.com." The domain name was initially registered by a Chinese individual and later transferred to a Chinese company, Maya Online Broadband Network Co. Maya operated the "cnnews.com" website, which provided news and information to Chinese-speaking people. Maya asserted that its target audience was located entirely in China and that "cn" is a popular abbreviation for China. Trial Court Proceedings Maya moved to dismiss, arguing that: (1) the ACPA's in rem provisions do not provide a constitutionally permissible basis for jurisdiction, (2) bad faith is a jurisdictional element of an ACPA in rem action that plaintiff failed to plead or prove, (3) plaintiff failed to join Maya as an indispensable part as required by Fed. R. Civ. P. Rule 19(b), and (4) plaintiff's service of process was fatally defective. The court denied Maya's motion to dismiss in its entirety. First, the court found that in rem jurisdiction over the "cnnews.com" domain name was proper because the domain-name registry was within its jurisdiction and in personal jurisdiction over Maya or the former registrant did not exist. According to the court, owners of the res need not have minimum contacts with the forum because ACPA in rem actions "are of the true in rem genre because they involve the rights of a disputed mark for every potential rights holder." The constitutionality of plaintiff's in rem action was further strengthened by the Chinese registrar's decision to transfer the domain name certificate for "cnnews.com" to the court. The absence of a contract between Maya and the registry was not critical; it was the nexus that existed between the registry and the domain name that was important. Second, the court rejected Maya's argument that the plaintiff in an in rem action must plead and prove the registrant's bad faith to withstand a threshold jurisdictional challenge. Maya confused a jurisdictional requirement with a substantive element for an ACPA cause of action.

Third, the court found no authority to support Maya's assertion that Rule 19 applies to in rem actions. Indeed, any requirement that the domain-name registrant must be joined in an in rem action would defeat the purpose of the ACPA's in rem provision. In short, if in personal jurisdiction over the registrant did not exist a prerequisite for an in rem action the registrant could not be constitutionally joined as a necessary party. Finally, the court held that plaintiff provided proper notice in accordance with the ACPA's requirements by publishing notice in several Hong Kong newspapers. The court had earlier denied plaintiff's motion to waive publication because Maya already had received actual notice of the action. In December 2001, on the parties' cross-motions for summary judgment, the court granted summary judgment on plaintiff's ACPA claim as to trademark infringement, but not dilution. Regarding trademark infringement, Maya argued that the "use in commerce" requirement was not met because the "cnnews.com" domain name was not substantially "used in commerce" because "commerce" for purposes of the Lanham Act is U.S. commerce. According to Maya, its use of the "cnnews.com" domain name did not have any effect on U.S. commerce because the domain-name registration contract was with a Chinese registrar, it received royalties from a Chinese entity, and that only persons residing in China can purchase goods at the "cnnews.com" website using only Chinese currency. The court, however, held that providing news and information services on the Internet constituted "commerce" because Congress did not limit the Act's application to profit-making activity. The question then became whether a website ostensibly directed solely at Internet users outside the U.S. can constitute "use" in U.S. commerce. Although the court noted that the effect on U.S. commerce here was "not obvious," it was nonetheless established by the global nature of the Internet, the existence of a substantial number of Chinese-speaking persons in this country, the fact that ".com" is "essentially an American top-level domain," and the fame of the CNN mark in the United States. The court granted summary judgment in plaintiff's favor that use of the "cnnews.com" domain name established a likelihood of confusion and thus trademark infringement under the ACPA. Among other factors, plaintiff's CNN mark is famous and strong, the "cnnews.com" domain name incorporated the CNN mark in its entirety, Maya publicly admitted that it intended the domain name to be viewed as including the acronym CNN, both "cnn.com" and "cnnews.com"

were used to offer news and information services over the Internet, and both Maya and the registrant had actual knowledge of plaintiff's rights throughout Asia. According to the court, both Chinese and English speakers alike would mistakenly believe that "cnnews.com" was in some manner affiliated with the CNN mark. Chinese speakers would note that the content on "cnnews.com" is similar to what plaintiff is known for and could wonder about a possible connection to plaintiff. English speakers could mistakenly believe that "cnnews.com" is one of the many regional-language websites plaintiffs operated under the mark CNN. Turning to plaintiff's dilution claim, plaintiff was unable to establish dilution for purposes of the ACPA because it failed to show actual economic harm as required by the Fourth Circuit. The court next addressed the unsettled question of whether the ACPA's in rem provision requires a showing that the registrant or user of the disputed domain name acted in bad faith. The court held that in rem ACPA actions, like in personal ACPA actions, require a showing of bad faith. Because the ACPA was ambiguous on this issue, the court looked to the purpose of the statute to resolve the ambiguity, noting that the ACPA's purpose is "to deter, prohibit and remedy 'cyberpiracy,' which is defined in the legislative history as the bad faith registration or use of a domain name." According to the court, "[t]his purpose is given proper effect by resolving the ambiguity in favor of requiring bad faith in ACPA in rem actions." In this case, the court held that the original registrant or Maya acted with the requisite bad faith based on various factors including the following. First, Maya did not have any legitimate rights in the CNN mark. Maya did not claim any rights in the CNN mark, and its selection of "cnnews.com" as a domain name was unrelated to any of its trademarks. Second, "cnnews.com," or anything similar, was neither the legal name nor the nickname for Maya. Third, Maya admitted that it made no prior use of the domain name in connection with the offering of bona fide services before plaintiff's use of the CNN mark. Fourth, Maya's news services did not constitute a noncommercial or "fair use" of the CNN mark. Fifth, Maya intended to divert consumers from plaintiff's website. Maya's contention that it targeted customers only in China had no merit because Maya chose the "American" .com top-level domain instead of the .cn top-level domain for China. And the use of the English word "news" in the domain name, as well as the website's significant amount of English-language content, suggested that the target audience was not restricted to China.

Sixth, Maya knew that the CNN mark was distinctive and famous and still chose to use the mark in its domain name. The court found no reasonable grounds for Maya to gain benefit of the ACPA's safe-harbor provision. The court also rejected Maya's contention that transfer of the "cnnews.com" domain name to plaintiff would violate due process by unconstitutionally disrupting a contract between two foreign entities, and that transfer of the domain name constituted an issuance of an unconstitutional extraterritorial injunction. Due process was not violated, however, because the domain-name certificate was located within the district. Moreover, although an order transferring the ownership of a domain-name certificate within its jurisdiction may affect foreign contracts, it was accomplished by conduct completely within the jurisdiction. Finally, the court rejected Maya's argument that the case should be dismissed on forum non convenient grounds. Not only was this argument untimely, but it had no merit because this forum is the situs of both the disputed domain name and the pertinent domainname registry. Appellate Court Proceedings In an opinion designated as not for publication, the Fourth Circuit held that the district court properly exercised in rem jurisdiction over the domain name. It also affirmed the finding of trademark infringement based on the reasoning of the lower court. Because the district court decided the issue of Maya's bad faith before the Fourth Circuit's decision in Harrods Ltd. v. Sixty Internet Domain Names[1] that a plaintiff may prevail in an in rem trademark infringement and dilution action without alleging and proving bad faith, the appeals court vacated the portions of the district court's opinion regarding the issue of bad faith.

13. Hasbro, Inc. v. Internet Entertainment Group, Ltd.,

(W.D. Wash, Feb. 9, 1996)

Background Hasbro Inc., the owner of the trademark Candyland for children's games, sued the defendants for using the domain name candyland.com in connection with a sexually explicit website. The complaint alleged, in pertinent part: 17. Through their advertising, operation and maintenance of a sexually explicit pornographic Internet site which used the CANDYLAND name and which is accessed using the Internet

domain name "candyland.com", Defendants have caused and if not enjoined will continue to cause consumers to be confused as to the affiliation, connection or association of Defendants with Hasbro, or as to Hasbro's sponsorship or approval of Defendants' pornographic Internet site. 18. Defendants' willful and unauthorized use of the CANDYLAND name and of the domain name "candyland.com" in connection with their sexually explicit pornographic Internet site has damaged Hasbro in an amount to be determined at trial. Such use has also caused Hasbro irreparable harm, and Hasbro will continue to be irreparably harmed unless and until Defendants' unlawful conduct is enjoined. Trial Court Proceedings Hasbro moved for a temporary restraining order. The court found that the plaintiff had demonstrated a likelihood of prevailing on its claims that such use tarnished and thereby diluted the Candyland trademark. After the court rendered its oral decision, the parties agreed to the terms of a preliminary injunction. The preliminary injunction ordered that all content be immediately removed from the site and the defendant was given the right to post a forwarding address for ninety days. (The defendant originally had sought a six month transition period, because of the necessity of contacting dozens, if not hundreds, of indexing services to give them the new Internet address).

14. Shields v. Zuccarini,

(E.D. Pa. 2000)

Background Plaintiff owned the popular "joecartoon.com" website featuring animated cartoons such as "Frog Blender," "Micro-Gerbil," and "Live and Let Dive." Plaintiff's website and cartoons were well known, with the "joecartoon.com" website averaging over 700,000 hits per month. In November 1999, defendant registered five domain names consisting of slight misspellings of "joecartoon.com." Each of defendant's websites "mousetrapped" visitors so they could exit only after clicking on a succession of advertisements, which resulted in a profit for defendant.

Trial Court Proceedings Almost immediately after plaintiff brought this suit, defendant turned his sites into "political protest" pages, protesting (1) defendant's graphic depictions of animals being brutalized, (2) the Internet Corporation for Assigned Names and Numbers (ICANN), and (3) the ACPA. In an earlier decision, plaintiff's motion for summary judgment was denied because defendant raised a genuine issue of material fact under the ACPA. In another decision, however, the court granted plaintiff's motion for preliminary injunction on its ACPA claim. The court held that: (1) plaintiff's JOE CARTOON mark was distinctive and famous; (2) defendant's domain names were practically identical to plaintiff's mark; and (3) defendant acted with bad-faith intent to profit. Regarding defendant's bad faith, the court considered many factors. First, defendant registered thousands of misspellings of popular trademarks and celebrities' names, and the profits from those activities were approaching $1,000,000 per year. Second, defendant's attempt to characterize his website as a venue for political commentary in support of animal rights was not credible because defendant did not put up the protest pages until after he was sued, and he owned the domain names "sexwithanimal.com" and "girlwithanimals.com." Lastly, the court rejected defendant's argument that a retroactive application of the ACPA to domain names registered before its passage violated the Fifth Amendment right to due process.

Following the Second Circuit's reasoning in Sporty's Farm v. Sportsman's Market, the court noted that an injunction would not be unconstitutional because it only redressed violations that continued after the ACPA's passage and was therefore prospective. The court thus preliminarily enjoined defendant from using or abetting the use of any of the infringing domain names at issue "and any other cognate domain name," and ordered defendant to deactivate the infringing domain names at its own expense. The court granted plaintiff's renewed motion for summary judgment on June 5, 2000, permanently enjoining defendant from using any domain name substantially similar to plaintiff's marks, and ordering the transfer of the five disputed domain names to plaintiff. In a later ruling on plaintiff's motion for statutory damages and attorneys fees, the court awarded plaintiff statutory damages of $10,000 per domain name for a total of $50,000, finding that defendant's conduct was "utterly parasitic and in complete bad faith." Furthermore, "based

on the egregiousness of Zuccarini's conduct and his complete lack of contrition," the court held that the case was "exceptional" under 15 U.S.C. 1117(a) and that the plaintiff was entitled to recover attorneys fees and costs totaling more than $39,000. Appellate Court Proceedings On appeal, defendant claimed that the registration of purposeful misspellings of a trademark, or "typosquatting," was not actionable under the ACPA. Rejecting this argument, the Third Circuit noted that the statute also covers domain names that are confusingly similar to distinctive and famous marks. "[A] reasonable interpretation of conduct covered by the phrase 'confusingly similar' is the intentional registration of domain names that are misspellings of distinctive or famous names, causing an Internet user who makes a slight spelling or typing error to reach an unintended site." Noting that Zuccarini's intent to profit from confusion paralleled an example included in the legislative history of the ACPA, the court concluded that defendant's conduct was a "classic example of the specific practice that the ACPA was designed to prohibit." Defendant also argued that his websites were protected by the First Amendment because he used them as selfdescribed "protest pages," such that this "protest" use fell under the ACPA's "safe harbor" provision barring a finding of bad-faith intent where the person "believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."

Defendant admitted, however, that he posted these protest pages only after receiving plaintiff's complaint. The court found no authority where "fair use" after the filing of a complaint exonerated earlier unlawful activity. Even if such authority existed, it would be contrary to the orderly enforcement of the trademark and copyright laws. The Third Circuit thus affirmed the district court's finding of bad-faith intent to profit. The appellate court also upheld the district court's granting of a permanent injunction, statutory damages of $10,000 for each domain name, and attorneys fees. Defendant argued th at the assessment of statutory damages was punitive in nature because he used the website for only 60 days before being sued. There was nothing in the ACPA, however, that required the court to

consider duration of the infringement when calculating damages. The Third Circuit also agreed with the district court's finding that defendant's "flagrant" conduct warranted attorneys fees.

15. Northern Light Technology, Inc. v. Northern Lights Club, (D. Mass. 2000)
Background Plaintiff registered its northernlight.com domain name in September 1996 and began operating its NORTHERN LIGHT search engine at that domain name in August 1997. Defendant was a one-person unincorporated association owned by Jeff Burgar, the contact person for several thousand domain names. Burgar was associated with many vanity e-mail services, including FlairMail.com, which registered and licensed domain names as part of e-mail addresses. Defendant registered the domain name northernlights.com in October 1996 and began usin g it as a vanity e-mail address shortly thereafter. In April 1999, however, defendant began using the northernlights.com domain name as an Internet search site. In addition, that site provided a list of businesses using the name Northern Light, including plaintiffs search engine, and provided links to various sites, including the FlairMail site. Plaintiffs search site began receiving several thousand referrals per day from defendants search site. Trial Court Proceedings In August 1999, plaintiff filed suit and obtained a preliminary injunction requiring defendant to black out its website except for a single page listing links to (1) plaintiffs search engine, (2) defendants flairmail.com website, and (3) a list of other Northern Light businesse s. In its decision, the court first, found that plaintiff was likely to succeed on the merits on its trademark infringement and ACPA claims; second, refused to modify the preliminary injunction in place; and, third, denied defendants motion to dismiss for failure to state a claim. The court found a high likelihood of success on the merits of the trademark infringement claim, noting that consumers were more likely to be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a stores ownership. And although plaintiffs evidence of initial-interest confusion was not relevant because the First Circuit did not recognize initial-interest confusion, the absence of actual confusion was not important where the parties search sites coexisted for only a few months.

Regarding plaintiffs ACPA claim, defendants initial refusal to sell the northernlights.com domain name and his use of the name for legitimate e-mail purposes for several years undermined a finding of bad faith. This evidence, however, was outweighed by defendants: (1) practice of registering numerous domain names consisting of others well-known trademarks (e.g., hewlettpackard.com, givenchy.com); (2) creation of fictional entities to register them (e.g., The Lois Katherine Lane Club registered loislane.com); and (3) dubious and inconsistent explanations for selecting these domain names (e.g., defendant allegedly registered yankees1.com to identify Americans even though he registered numerous other domain names consisting of baseball team names and the number 1); and (4) subsequent willingness to sell at least the northernlights.com website pointer to the plaintiff if the price is attractive enough. Lastly, plaintiff filed for contempt, alleging that defendant violated an earlier preliminary injunction requiring defendant to post the following three disclaimers on its website: (1) IF YOU ARE LOOKING FOR FLAIRMAIL, THE FREE E-MAIL SERVICE, FOUND AT www.flairmail.com, click here; (2) IF YOU ARE LOOKING FOR THE NORTHERN LIGHT SEARCH ENGINE, FOUND AT www.northernlight.com, click here; and (3) IF YOU ARE LOOKING FOR BUSINESSES THAT ARE LISTED WITH THE NORTHERN LIGHTS COMMUNITY (Not affiliated with the Northern Light search engine), click here. Defendant posted these three disclaimers and properly linked the first two to the specified websites. But the third, which was supposed to link to businesses affiliated with the Northern Lights community, instead linked to a message board discussing the lawsuit. Under the courts analysis of whether this message-board link constituted contempt, defendants greeting page technically complied with the order because defendant copied the disclaimer verbatim. Because it was not completely clear and unambiguous whether the injunction covered only the actual text on the greeting page or whether it also included the linked-to pages, defendants link to the message board fell short of the First Circuits clear and convincing standard for contempt. Appellate Court Proceedings On appeal, defendant claimed district court error in (1) finding a likelihood of success on plaintiffs trademark infringement claim based on a finding that defendant acted in bad faith using the ACPAs test for a bad-faith intent to profit from plaintiffs mark, and (2) retroactively applying the ACPA.

Initially, the First Circuit held that the ACPAs bad-faith intent to profit factors were relevant in analyzing the issue of bad faith in a trademark infringement analysis. The appeals court then held that the lower courts finding of bad faith was not clearly erroneous, noting that defendants well-established pattern of registering multiple domain names containing famous trademarks . . . [was] highly relevant to the determination of bad faith . . . in the likelihood-of-confusion analysis. Similarly, the district courts finding that defendant was not entitled to the ACPAs escape clause, which exempts those who believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful, was not clearly erroneous. Defendants various and oft-changing fair-use explanations evince a lack of subjective belief in the domain names fair use. Although defendant did not expect revenue from his site, he could still have a bad-faith intent to profit because defendant likely hoped to cash in on the confusion surrounding the sponsorship of the websites by finding famous trademark holders willing to pay defendants to end the diversion of Internet traffic from their website to defendants sites. Finally, as to the permissibility of retroactively applying the ACPA, the appeals court declined to reach this issue because the district court ultimately entered the preliminary injunction on the basis of plaintiffs trademark infringement claim, not the ACPA claim.On the motion for rehearing and rehearing en banc, defendants argued that a rehearing was needed: to secure and maintain uniformity with prior decisions, citing a 1992 case, andTo determine (a) whether in personal jurisdiction could be obtained by service of a second summons just before a hearing, (b) the proper interpretation of the ACPA, and (c) whether the preliminary injunction violated the First Amendment. All five active judges of the First Circuit ruled on defendants' motions, denying both a simply rehearing and a rehearing en banc.

CONCLUSION.
Always take advice from the people who expert in the law field to know what you can do and dont. The copyright in cyberspace laws are important to protect our own creations from any identity thief, misuse of personal data. Always secure all the our creations even there are private or not secure in the cyberspace. Even there is the law, not all the time the law take a sides on us, sometimes its again us depending how smart we can play with the law. So, it is importance to take note of your right especially incopyright in cyberspace.

BIBLIOGRAPHY

1. Brainbridge, David. (YEAR). Intellectual Property : Sixth Edition. (PUBLISHER). 2. (author). (year). CyberLaw, Text and Cases. (publisher). 3. Samson, Martin. (2008,November 27). Internet Library of Law and Court Decisions. Retrieved from http://www.internetlibrary.com/ 4. IT Law Wiki. (n.d.). Retrieved from http://itlaw.wikia.com/wiki/The_IT_Law_Wiki 5. Nintendo of America v. Dragon Pacific International. (n.d.). Retrieved from http://itlaw.wikia.com/wiki/Nintendo_of_America_v._Dragon_Pacific_International 6. Universal City Studios v. Nintendo. (n.d.). Retrieved from

http://itlaw.wikia.com/wiki/Universal_City_Studios_v._Nintendo 7. AOL v. IMS. (n.d.). Retrieved from http://itlaw.wikia.com/wiki/AOL_v._IMS 8. Nettis Environmental v. IWI (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/Nettis_Environmental_v._IWI 9. Paccar v. Telescan Technologies (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/Paccar_v._Telescan_Technologies 10. Volkswagen v. Virtual Works (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/Volkswagen_v._Virtual_Works 11. Dell v. Dellkorea.com (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/Dell_v._Dellkorea.com 12. BroadBridge Media v. Hypercd.com (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/BroadBridge_Media_v._Hypercd.com 13. Ficker v. Tuohy (n. d.). Retrieved fromhttp://itlaw.wikia.com/wiki/Ficker_v._Tuohy 14. Diller v. Steurken (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/Diller_v._Steurken 15. AOL v. AOL.org (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/AOL_v._AOL.org 16. Northern Light Technology v. Northern Lights Club (n. d.). Retrieved from http://itlaw.wikia.com/wiki/Northern_Light_Technology_v._Northern_Lights_Club 17. Shields v. Zuccarini (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/Shields_v._Zuccarini

18. Hasbro

v.

Internet

Entertainment

Group

(n.

d.).

Retrieved

from

http://itlaw.wikia.com/wiki/Hasbro_v._Internet_Entertainment_Group 19. Cable News Network v. cnnews.com (n. d.). Retrieved from

http://itlaw.wikia.com/wiki/Cable_News_Network_v._cnnews.com 20. Designer Skin LLC v. S & L Vitamins, Inc., et al. (n. d.). Retrieved from http://www.internetlibrary.com/cases/lib_case619.cfm 21. MAI Systems Corporation v. Peak Computer, Inc. (n. d.). Retrieved from http://www.internetlibrary.com/cases/lib_case50.cfm