White Blackbirds: Defining the Exceptional Cybersquatter
Joshua Counts Cumby
George Mason University, Antonin Scalia Law School, Students/Alumni; The Green Bag, an independent scholarly law journal
May 30, 2013
Santa Clara Law Review, Forthcoming
George Mason Law & Economics Research Paper No. 13-34
This paper has two interrelated goals. The first is resolution of a recent circuit split on the availability of attorney’s fees awards in trademark cases where the prevailing party seeks an award of statutory, rather than actual damages. A detailed review and analysis of both the relevant statutory text and the legislative history of the remedial provisions of the Lanham Act reveals that neither the text nor the intent and purpose of Congress in providing remedies in trademark disputes precludes a prevailing party who elects to receive statutory damages from also recovering attorney’s fees, “in exceptional cases".
The second goal of this paper is resolution of the issue presented in trademark cases brought under the Anti Cyber-Squatting Consumer Protection Act, or ACPA: What (or who) is the “exceptional” cyber-squatter? The Lanham Act’s “exceptional cases” provision is consistently interpreted by Federal Courts at both the trial and appellate levels to require malicious, fraudulent, deliberate, willful, or bad faith conduct on the part of the cyber-squatter. However, as defined in the ACPA, a cyber-squatter has already shown, “bad faith intent to profit", and too often courts confuse that showing with the finding of extraordinarily culpable conduct required to make a case “exceptional” – a prerequisite to any discretionary award of attorney’s fees. This paper argues that a clear distinction between the mere act of cyber-squatting, (based in part on a finding of “bad faith intent to profit”), and the extraordinary conduct justifying an attorney’s fees award, (including bad faith and willfulness), is necessary to a proper interpretation and application of the Lanham Act and the ACPA.
Simply put, many courts seem to implicitly or explicitly assume that all cyber-squatters are “exceptional,” and if all cyber-squatters are “exceptional", then none of them are. As neither proposition is supported by the text, purpose, or intent of either the Lanham Act or the ACPA, this paper attempts to distinguish cyber-squatters from “exceptional” cyber-squatters by defining the latter, and shedding much needed light on this frequently decided, but infrequently litigated question.
Keywords: distinctive, domain name, extorting, false, famous, goodwill, ICANN, in personam jurisdiction, Internet Corporation for Assigned Names and Numbers, Judiciary Committee, misleading, registration, service mark, Spencer Abraham, textual ambiguity, treble, WIPO, World Intellectual Property Organization
JEL Classification: O31, O32, O33, O34, O38
Date posted: May 31, 2013 ; Last revised: June 1, 2013
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