Protection of trademarks from infringement in the cyber marketplace has never been more important to businesses. Internet sales and marketing, driven in part by ever-expanding social media applications, is rapidly increasing at the rate of over 15% per year since 2010, accounting for over $304 billion in annual sales. With this steady increase in consumer Internet purchasing comes the incentive for infringement, counterfeiting and consumer deception by unscrupulous operators seeking to misappropriate and profit from theft of intellectual property, such as by adopting domain names confusingly similar to genuine company websites. It is crucial for counsel for entrepreneurs and growing companies to have a thorough grasp of what to do when their clients either find domain names copying, simulating or “squatting” on their trademarks or domain names.
Conversely, counsel also need to be able to represent domain name holders on the receiving end of cease and desist letters or served with papers claiming cybersquatting when their client’s position is defensible. Attorneys for IP owners need to understand if their clients have a meritorious claim for cybersquatting and which of two possible legal regimes—arbitration or litigation—are most appropriate for vindicating their rights. For domain name holders charged with cybersquatting under the online dispute resolution arbitration procedures of the Uniform Domain Name Dispute Resolution Policy (“UDRP”), a decision has to be made based on the merits of their clients’ defenses and whether to challenge any adverse UDRP award in U.S. federal court litigation under the Anticybersquatting Consumer Protection Act.
I. Grasp the fundamental elements of the administrative and statutory schemes for combating cybersquatting via the UDRP or federal courts
II. Understand the evidentiary requirements for asserting claims and defending rights to domain names
III. Review and analyze the expectations and demands of proof of each scheme
IV. Recognize the fundamental elements of claims and defenses
V. Assess economic considerations
VI. Gain familiarity with differences between UDRP and federal court actions
This course originally appeared as a part of our October 2015 Bridge the Gap Event.
Gerald M. Levine, Esq. is the author of the recently published Second Edition of Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting. His numerous articles have appeared in law journals and online publications and he is a frequent contributor of analytical blogs on domain names and cybersquatting for www.udrpsearch.com. Besides having a litigation practice, he represents and counsels clients on a range of issues and disputes relating to copyright and trademark practice and law. He is on the panel of neutral arbitrators for commercial and intellectual property disputes for the American Arbitration Association, and the Final Industry Regulatory Authority (FINRA); on the mediator Panel for commercial disputes for the Commercial Division of the Supreme Court, New York County, and for Volunteer Lawyers for the Arts. He received his J.D. from Brooklyn Law School in 1975 and PhD from New York University in 1968.
William Thomashower is a member of Pryor Cashman’s Intellectual Property Group. With more than 40 years of experience litigating complex IP cases, he represents clients in state and federal courts, before arbitration panels and in matters before the U.S. Patent and Trademark Office.
Bill counsels global brands, consumer goods companies, luxury goods manufacturers, digital media companies, web-based businesses, entertainment and publishing companies and B2B industrial entities on all aspects of trademark law, including selection, prosecution, policing and litigation. He has extensive experiencing handling cases involving dilution, cybersquatting, trade dress and false advertising claims.
Bill also advises on a wide range of copyright issues, including registration, licensing and infringement, as well as patent validity and infringement matters.
Additionally, he counsels clients on defamation and constitutional issues, antitrust claims and the regulations governing physicians and healthcare providers.
His recent experience includes:
Bill is a frequent lecturer and writer on issues involving intellectual property, licensing and legal ethics, among other subjects. He serves on the New York Intellectual Property Law Association’s (“NYIPLA”) Trademark and Programs Committees.
Steven M. Levy, Esq. is the principal of the Accent Law Group, Inc. In his over 26 years of practice, Mr. Levy’s experience has been quite broad, but he has a particular focus on the enforcement of trademarks against cybersquatted domain names. He’s filed over 300 complaints under the Uniform Dispute Resolution Policy (UDRP) and other similar domain name dispute policies, is a frequent speaker and blogger on the topic of anticybersquatting, and is also a UDRP Panelist for the National Arbitration Forum (NAF) and the Asia Domain Name Dispute Resolution Centre (ADNDRC). Mr. Levy also handles trademark enforcement against social media usernames and has had success in taking down phishing and other impersonation pages. Mr Levy has presented many educational programs for both clients and outside audiences and currently serves on the Internet Committee of the International Trademark Association (INTA). He received his J.D. in 1989 from Brooklyn Law School and his B.S. from SUNY at Buffalo. Mr. Levy is a member of the bar in Pennsylvania, New York and the District of Columbia.
Very good content
speakers were great
FINALLY, a CLE program worth watching. The presenters were experienced, knowledgeable, articulate, and interesting. The conference format was engaging and kept my interest. Please do more of this type of content in the future, and much less of the single-presenter-in-front-of-a-camera type.
Great course, gave me some great ideas on and resources on how to protect my clients' interests!
panel format keeps it interesting, generous written supplements
Very enjoyable panel!
Best written materials for any Lawline course that we have seen
Panel of speakers made it easier to listen to the materials.
One of the speakers was a little challenging to understand from time to time.
very good info
Very informative. Thanks.
Good panel format. Great examples included.
Very well done. Organized and well presented.
Lots of great useful info.
Very knowledgeable panelists
I appreciated the panel format - very engaging