DC Bar Intellectual Property Law Section Trademark Committee
October 2, 2003

David M. Kelly
Finnegan, Henderson, Farabow & Dunner, L.L.P.
1300 I Street NW
Washington, D.C. 20005-3315
202-408-4050
david.kelly@finnegan.com

Table of Contents

1. Uniform Dispute Resolution Policy (“URDP”)
2. Anticybersquatting Protection Act (“ACPA”)
3. Other Internet Trademark Cause of Action
4. Fair Use
5. Domain Name Enforcement Strategies

Table of Cases

I. Uniform Dispute Resolution Policy (“UDRP”)

1. The UDRP is located at www.icann.org/dndr/udrp/policy.htm and the rules governing UDRP proceedings are located at www.icann.org/dndr/udrp/uniform-rules.htm
2. The UDRP covers approximately 70 percent of generic top-level domains (“gTLDs”)—.com, .net, .org, .biz, info, and .us
3. Some countries have opted to have disputes regarding country-code top-level domains (“ccTLDs”) decided under the UDRP (see arbiter.wipo.int/domains/cctld/index.html for list of ccTLDs for which WIPO handles UDRP complaints)
4. Many countries have adopted UDRP-like policies to handle disputes involving ccTLDs (e.g., Belgium, Canada, Chile, Denmark, Hong Kong, Italy, Singapore, Sweden, Taiwan, U.K.)
5. Elements required to prevail under the UDRP:
1. The complainant has protectable trademark rights (registered or common law);
2. The domain name is identical or confusingly similar to the complainant’s mark;
3. The registrant has no rights or legitimate interests in the domain name; and
4. The registrant both registered and is using the domain name in bad faith.
6. The complainant must notify the service provider of any related litigation filed before or during the UDRP proceeding, and the Panel has the discretion to suspend or terminate the proceeding, or to render a decision. (UDRP Rule 18.) Most Panels will suspend or terminate the UDRP proceeding in the event of litigation.
7. To prevent transfer of a domain name, a losing registrant must file a lawsuit against the complainant in a jurisdiction to which the complainant has submitted, i.e., either where the registrar is located or where the registrant is located.
8. UDRP actions do not constitute arbitrations under the Federal Arbitration Act. (Parisi, Dluhos)
9. UDRP proceedings are not binding on federal courts. In fact, courts give them no weight due to the limited nature of UDRP proceedings. (Weber-Stephen, Barcelona.com)
10. Factors to consider in choosing the right dispute resolution service provider to process the UDRP Complaint (i.e., WIPO, NAF, and others):
    
1. Time to completion (NAF generally faster)
2. Cost
1. Filing fee (NAF generally less expensive)
2. Availability of partial refund in case of early settlement (WIPO only)
3. Ability of trademark owner to file reply as a matter of right (NAF only)
4. If trademark owner wins, where must the registrant file a civil action to stay transfer of name (if outside of the U.S., WIPO decision may carry more weight with a foreign court)
5. Nature of the issues presented in the Complaint—WIPO panelists are primarily experienced trademark lawyers whereas many NAF panelists are not (e.g., may want to use WIPO for issues that require a more sophisticated analysis by an experienced trademark lawyer)

II. Anticybersquatting Protection Act ("ACPA")

1. 15 U.S.C. § 1125(d)
2. ACPA applies to all domain names registered before, on, or after November 29, 1999, the effective date of the ACPA (ACPA § 3010 (codified at 15 U.S.C. § 1117 note)).
3. Domain names are defined in the ACPA as “any alphanumeric designation which is registered with or assigned by an domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.” (15 U.S.C. § 1127.) Domain names thus include ccTLDs as well as gTLDs for purposes of ACPA.
4. Unlike the UDRP, ACPA does not require both bad-faith registration and use of the domain name. To establish an ACPA claim, a plaintiff must show that:
   
1. Registrant registers, traffics, in or uses a domain name that:
1. dilutes a famous mark, or
2. is confusingly similar to a distinctive mark (15 U.S.C. §
   1125(d)(1)(A))
2. Registrant has a bad faith intent to profit from the mark—the ACPA provides a non-exhaustive list of nine factors to consider in determining whether a person has a bad-faith intent (15 U.S.C. § 1125(d)(1)(B)(i)(I-IX)
5. ACPA allows for in rem claims
1. Plaintiffs must exercise “due diligence” to find the registrant. (15 U.S.C. § 1125(d)(2)(A)(ii); Lucent). But a plaintiff does not have to first sue the registrant and attempt to obtain personal jurisdiction before filing an in rem action (Caesars World).
2. Plaintiff must ultimately demonstrate that the court does not have personal jurisdiction over registrant in any judicial district in the U.S. (Heathmount)
3. “Service” of an in rem complaint is accomplished by sending notice to the registrant at the postal and e-mail address provided to the registrar and by publishing notice of the action as the court may direct. (15 U.S.C. § 1125(d)(2)(A)(ii)(I-II)). Courts in many cases have waived the publication requirement where the registrant has actual notice of the suit. (Banco Inverlat, Harrods)
4. In rem jurisdiction is proper only where the domain name registrar or registry is located. (15 U.S. C. § 1125(d)(2)(C)(i-ii); Electronic Funds, FleetBoston, Mattel v. Barbie-Club.com)
5. Once in rem jurisdiction is established, it is not lost simply because personal jurisdiction is established later in the case. But the availability of personal jurisdiction early in the case may defeat in rem jurisdiction. (Porsche)
6. Significantly, in rem actions can also be based on claims of infringement and dilution as well as bad faith registration, use, or trafficking under the ACPA. (Harrods)
7. Cannot proceed based on both in rem and personal jurisdiction. (Alitalia)
8. The registrant’s appearance in an in rem action does not confer personal jurisdiction over the registrant. (Caesars World)
9. Registrants or other claimants who make an appearance in an in rem action must engage in discovery. (Caesars World)
6. ACPA also protects against registration of domain names that consist of a living person’s name, or a name substantially and confusingly similar thereto, with the specific intent to profit from the name by selling it to that person or any third party. (15 U.S.C. § 1129; Schmidheiny, Wright). Significantly, there is no requirement to establish protectable trademark rights in the personal name.
7. Remedies for ACPA claims based on personal jurisdiction include:
1. transfer or cancellation of domain name;
1. the typical remedy is transfer, but courts occasionally order cancellation of the name, especially if there are conceivable, non- infringing uses (Mattel v. Adventure Apparel)
2. injunctive relief (15 U.S.C. § 1116(a));
3. traditional damages (15 U.S.C. § 1117(a)-(b)); and
4. elect to attempt to recover statutory damages between $1,000 and $100,000 per domain name (15 U.S.C. § 1117(d))
8. Statutory Damages
1. Statutory damages (as well as actual damages) are not “available with respect to the registration, trafficking, or use of a domain name that [occurred] before” ACPA’s enactment on November 29, 1999. (ACPA § 3010 (codified at 15 U.S.C. § 1117 note)). Courts have interpreted this language to hold that persons registering domain names before November 29, 1999 may still be liable for actual or statutory damages as long as he or she also used or trafficked in the name after November 29, 1999 (Ford v. Catalanotte, Gallo, Shields, Volkswagen)
2. The Fifth Circuit has held that ACPA’s statutory damages provision is similar to the statutory damages provision in the Copyright Act, which is intended not only to compensate the rights owner but also to discourage wrongful conduct. It also held that the duration of the offending use of the domain name did not have to be considered when calculating statutory damages. (Gallo)
3. The courts have considered a number of factors in calculating the amount of statutory damages including, the egregiousness of the defendant’s conduct, whether the defendant had a history of cybersquatting, whether the defendant’s site offered competitive products or services, whether plaintiff suffered any harm, and the amount of other monetary relief, if any, awarded to the plaintiff.
9. Remedies for an ACPA claim based on in rem jurisdiction
1. a. transfer or cancellation only
10. Domain name registrars (Lockheed Martin) and domain name auction sites (Ford v. Great Domains) are not liable under ACPA because they do not register, traffic in, or use the domain names
11. Factors to consider in choosing UDRP vs. ACPA:
1. timing
2. cost
3. chances of success
4. issues not susceptible for decision under the UDRP
5. need for court’s contempt power
6. ability to obtain damages (and to actually recover them)

III. Other Internet Trademark Causes of Action

1. Infringement
1. Covers infringement of registered marks (15 U.S.C. § 1114(1)) and unregistered marks (15 U.S.C. § 1125(a)(1)(A)).
2. Many domain name cases involve the concept of “initial-interest confusion,” i.e., Internet users type a domain name containing another’s trademark and expect to reach the trademark owner’s web site but reach a different web site. Although the user quickly realizes the mistake when he reaches the web site, he is nonetheless initially confused. As this doctrine has developed, courts have found initial-interest confusion actionable only where the user could stay at the defendant’s web site and conduct the business he originally intended or obtain the services he originally wanted. (Network Network, Brookfield)
3. In the pre-Internet world, many businesses used the same or similar marks for different products and services and peacefully coexisted because their marketing channels did not overlap. The Internet, however, changed that and spawned numerous trademark conflicts where none previously existed. After a shaky start, courts now tend to issue tailored injunctive relief that protects the interests of both trademark owners. (Entrepreneur Media, Interstellar, Oracle, Nissan)
2. Dilution
1. The Federal Trademark Dilution Act (15. U.S.C. § 1125(c)) protects only “famous” marks. State dilution statutes provide protection for “distinctive” marks.
2. Dilution by blurring cases (Ty v. Agnes, Victoria’s Cyber Street)
3. Dilution by tarnishment cases (Mattel v. McBride, Hasbro v. IEG, Toys “R” Us v. Akkaoui)
4. Under the Supreme Court’s recent decision in Moseley v. V Secret Catalogue, a dilution plaintiff must show actual dilution, not a likelihood of dilution
3. Counterfeiting
1. Trademark Counterfeiting Act (15. U.S.C. § 1116(d))
2. A few cases have found counterfeiting where the defendant used the plaintiff’s mark to identify a web site as opposed to counterfeit goods (Playboy v. Universal Tel-A-Talk, Playboy v. AsiaFocus)
4. Metatags
1. Metatags are hidden text that could influence placement of a web site in the results of a search using a search engine.
2. Courts will generally permit limited use of another’s mark as a metatag in a fair use manner to describe or identify the content of a web site. (Playboy v. Welles, Trans Union)
3. Courts will generally permit limited use of another’s mark as a metatag for a criticism site (Bihari, Bally)
4. Courts may permit more extensive use of another’s mark in metatags in a criticism context (J.K. Harris)
5. But courts generally will not permit misleading uses of a competitor’s mark in metatags (Eli Lilly, Promatek), or multiple uses of another’s mark in metatags. (Playboy v. Welles, Horphag, Eli Lilly)
5. Linking
1. Linking as a Claim—Deep Linking
1. Deep linking into another’s web site and bypassing the home page may not constitute infringement due to lack of likelihood of confusion. (Ticketmaster v. Tickets.com)
2. Web site owners may not be able to prevent others from linking to their sites simply because they do not like the content of the linked site. (Ford v. 2600 Enters)
2. Linking as a Claim—Trademark Infringement
1. Linking of a commercial web site featuring unrelated goods or services to sites offering related goods or services can be enough to establish a likelihood of confusion and thus infringement (Nissan, OBH, Interstellar)
3. Linking as a Claim—Dilution by Tarnishment
1. Most courts have found that links from a legitimate web site to a pornographic site are too tenuous to establish liability (Bally, 24 Hour Fitness, Voice-Tel)
2. But if the links to pornography or other unsavory content (e.g., racist materials) are on a cybersquatter’s site, liability may exist (Morrison & Forester)
4. Linking of a non-commercial web site to commercial web sites can constitute the “use in commerce” required for infringement and the “commercial use ” required for dilution (PETA, Jews for Jesus)
5. Linking of a defendant’s site to the plaintiff’s site can establish a defendant’s intent to trade on the goodwill of the plaintiff’s mark (Playboy v. Universal Tel-A-Talk)
6. Framing
1. Framing involves displaying another’s web site within a frame on your own web site and replacing advertisements and content from the other web site with your own content and advertisements on the outside of the frame.
2. No reported decisions in the context of trademarks
7. URL Post-Domain Paths
1. Use of another’s trademark in a post-domain path of a URL may not constitute infringement because consumers would not view the term in the URL as a source indicator.
1. www.idiosync.com/goped (Patmont)
2. www.a2zsolutions.com/desks/floor/
   laptraveler/dkfl-lt.htm (Interactive Products)
8. Keyword-Activated Banner Ads
1. Search engines sell advertising keyed to the terms searched by its users. Instead of posting the ads in a random rotation, search engines deliver a preselected set of banner ads to certain “keyword” search terms purchased by advertisers. Sometimes the purchased keywords are also trademarks
2. In the one case decided to date, Playboy sued several search engines for selling “playboy” and “playmate” as keywords. The court denied Playboy’s motion for preliminary injunction because in part nontrademark uses of the words “playboy” and “playmate” were possible. It is unclear whether the court’s analysis would change if a coined trademark like EXXON or KODAK without nontrademark significance was at issue. The court also found that Playboy had not shown a likelihood of confusion because defendants were merely selling banner ads, not operating a competing web site or intercepting potential customers looking for Playboy’s site. (Playboy v. Netscape)
9. Keyword-Activated Paid Search Listings
1. This is similar to keyword-activated banner ads, except the keyword search term produces paid search listings for other companies’ products or services that appear before regular web search results that include the trademark owner’s web site.
2. There have been a number of lawsuits on this practice but no reported decisions.
10. Keyword-Activated Pop-up Ads
1. The litigation to date has focused on Gator, which provides software that generates pop-up ads when a user types in a URL. Gator sells URLs to advertisers. The pop-up ads typically obscure some part of the web site reached, including paid advertisements on the site.
2. A group of media companies obtained a preliminary injunction against Gator, but the court provided no analysis for its decision. (Washingtonpost.Newsweek Interactive Co. v. Gator Corp., 2002 U.S. Dist. LEXIS 20879 (E.D. Va. July 16, 2002)). This case was eventually settled and the preliminary injunction dissolved. There is presently pending a multi-district litigation against Gator in Atlanta.
11. Non-Keyword Activated Pop-Up Ads
1. A different result was reached with WhenU’s SaveNow software, which scans the user’s Internet browser activity to determine whether any of the terms, web addresses, or content match the information in defendant’s proprietary directory, which is organized much like a yellow-pages directory. If the software finds a match, it identifies an associated product or service category (e.g., moving). The SaveNow program then determines whether the user’s computer should receive a pop-up ad in a WhenU-branded window that is selected at random from WhenU’s advertising clients that match the category of the user’s activity. Unlike Gator, however, WhenU does not sell URLs to its advertisers and it does not guarantee to any advertiser that its ad will be shown when a user visits a particular site.
2. U-Haul filed suit for various trademark-related claims, copyright infringement, and assorted other claims. The district court granted WhenU’s motion for summary judgment on the trademark-related and copyright-infringement claims. Regarding the trademark claims, the court’s decision was based primarily on the user inviting the pop-up ads by downloading free software from the Internet (much like a computer user invites spam by using e-mail) and on a lack of use in commerce of U-Haul’s marks by WhenU. (U-Haul)
12. Spoofing
1. Spoofing occurs when e-mail is sent under return e-mail addresses comprised of the domain names and trademarks of others to make it appear like the e-mail was sent by or approved by the trademark owner. (HotmaiI)
13. Trespass to Chattels
1. The court issued a preliminary injunction stopping Bidder’s Edge, an auction aggregation site, from using “spiders” to comb eBay’s web site as an unauthorized trespass to eBay’s personal property. The key was the extent of Bidder’s Edge’s actions—it accessed eBay’s site about 100,000 times a day and represented between 1.1% and 1.5% of the total load on eBay’s listing servers. (eBay)

IV. Fair Use

1. Descriptive Fair Use
1. Even if an ordinary word or a combination of ordinary words enjoys trademark protection (e.g., MOVIEBUFF for an online business providing information about movies), businesses are free to use the term in its ordinary descriptive sense (e.g., use of the slogan THE MOVIE BUFF’S MOVIE STORE for an online movie store). (Brookfield)
2. The same principle applies to geographic terms. (Lewis, Barcelona.com)
3. Generic terms are free for all to use in their generic sense (Retail Services)
2. Nominative Fair Use
1. Nominative fair use permits use of another’s trademark to identify the trademark owner or its goods or services if the following criteria are met:
1. The trademark owner or its goods or services are not readily identifiable without using the trademark;
2. The defendant must use only so much of the mark as is reasonably necessary; and
3. The defendant must not use the mark in such a way that suggests that the trademark owner sponsors or is somehow connected to the defendant.
2. Leading cases (Brookfield, Playboy v. Welles, Paccar)
3. In Paccar, the Sixth Circuit distinguished between using others’ marks in advertisements to state that one sells or services the trademarked goods, which it deemed a fair use, and use of another’s mark in a domain name to communicate the source of the web site as opposed to the source of the products on the site, which it deemed to be a trademark violation.
4. In Ty v. Perryman, however, the Seventh Circuit held that the defendant could use the plaintiff’s BEANIES mark in the domain name bargainbeanies.com to market plaintiff’s BEANIE BABIES products.
3. First Amendment Considerations
1. Criticism/Sucks web sites
1. Courts generally will not enjoin uses of trademarks, including logos, on web sites in a purely critical sense (Bally), or uses of trademarks in domain names that convey the critical nature of the web site. (Taubman)
2. Courts are split as to whether the domain name must convey the critical nature of the web site. (Nissan, Northland)
2. Parody web sites
1. Parody is not a defense to infringement but rather is a factor to consider in the likelihood of confusion analysis.
2. For a domain name to constitute a parody, the name itself must convey two simultaneous and contradictory messages—it is the original, but also that it is not the original. (PETA)

Domain Name Enforcement Strategies

1. Questions to ask to determine whether to take a domain name enforcement action, to prioritize enforcement matters, and to determine what type of action to take:
1. Is this a domain name that the client wants to use for itself? If so, when does the client need it?
2. How similar is the domain name and/or URL to the client’s trademarks?
3. Which of the client’s mark(s) are contained in the domain name (i.e., how important is the mark)?
4. Has the client received any complaints or other communications regarding the domain name or associated web site?
5. Is the domain name being offered for sale?
6. Does the domain name connect to an active web site?
7. If the domain name connects to an active web site:
1. What is the nature of the site’s content?
2. What is the geographical scope of the business promoted at the web site?
3. In what language(s) is the web site content displayed?
4. What is the extent of the infringing activity?
5. Does the site display any logos of the client?
6. Does the site link to other sites? If so, what is the nature of the linked sites’ content?
7. Does the site use any of the client’s marks as metatags?
8. Where is the registrant located?
9. If the domain name is a ccTLD, is it one administered under the UDRP or an UDRP-like dispute policy?
10. Does the registrant have any connection or relationship with the client? If so, is there any contractual prohibition on registration or use of the domain name?
11. Does the registrant own any other domain names containing the client’s trademarks?
12. Does the registrant own any domain names containing well-known third-party trademarks?
13. If the client filed an action under the Lanham Act or ACPA, would it have a good chance of obtaining monetary damages? If so, what are the chances of actually recovering those damages?
14. Is there a potential negative public relations impact if the client objected to this domain name?
15. Would the client still have a winning ACPA or UDRP case if the current registrant transferred the domain name to a third party? If not, it may make sense to first file a UDRP complaint or civil action to “lock” the domain name and prevent its transfer.

Table of Cases
24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC,
    2003 U.S. Dist. LEXIS 14307 (S.D.N.Y. Aug. 18,2003)

Am. Online, Inc. v. AOL.ORG,
    2003 U.S. Dist. LEXIS 6899 (E.D. Va. Apr. 23, 2003)

AT&T Corp. v. ATT&T, Inc.,
    2002 U.S. Dist. LEXIS 24079 (D. N.J. Oct. 31, 2002)

Aztar Corp. v. MGM Casino,
    59 U.S.P.Q.2d 1460 (E.D. Va. Mar. 12, 2001) (Magistrate’s recommendation) and 2001 U.S. Dist. LEXIS 13110 (E.D. Va. Apr. 9, 2001) (adopting Magistrate’s recommendation)

Bally Total Fitness Holding Corp. v. Faber,
    29 F. Supp. 2d 1161 (C.D. Cal. 1998)

Banco Inverlat, S.A. v. www.inverlat.com,
    112 F. Supp. 2d 521 (E.D. Va. 2000)

Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona,
    89 F. Supp. 2d 367 (E.D. Va. 2002), aff’d, 330 F. 3d 617 (4th Cir. 2003)

Baylor Univ. v. Int’l Star, Inc.,
    61 U.S.P.Q.2d 1700 (W.D. Tex. 2001)

Bihari v. Gross,
    119 F. Supp. 2d 309 (S.D.N.Y. 2000)

Brookfield Communications, Inc. v. W. Coast Entm’t Corp.,
    174 F.3d 1036 (9th Cir. 1999)

Cable News Network, L.P. v. cnnews.com,
    162 F. Supp. 2d 484 (E.D. Va. Sept. 18, 2001) (Respondent’s motion to dismiss), 177 F. Supp. 2d 506 (E.D. Va. 2001) (cross motions for summary judgment), aff’d, 2003 U.S. App. LEXIS 1065 (4th Cir. 2003)

Caesars World, Inc. v. Caesars-Palace.com,
    112 F. Supp. 2d 502 (E.D. Va. 2000) (defendant’s motion to dismiss); 112 F. Supp. 2d 505 (E.D. Va. 2000) (plaintiff’s contempt motion)

Dluhos v. Strasberg
     321 F.3d 365 (3d Cir. 2003)

Degidio v. W. Group Corp.,
    191 F. Supp. 2d 904 (N.D. Ohio 2002) (motion for summary judgment), 205 F. Supp. 2d 806 (N.D. Ohio 2002) (renewed motion for summary judgment)

E. & J. Gallo Winery v. Spider Webs Ltd.,
    129 F. Supp. 2d 1033 (S.D. Tex. 2001), aff’d, 286 F.3d 270 (5th Cir. 2002)

eBay, Inc., v. Bidder’s Edge, Inc.,
    100 F. Supp. 2d 1058 (N.D. Cal. 2000)

Elec. Funds & Data Corp. v. Zlobec,
    No. 99-26830 (N.Y. Sup. Ct., Suffolk Cty., June 27, 2000)

Elecs. Boutique Holdings Corp. v. Zuccarini,
    56 U.S.P.Q.2d 1705 (E.D. Pa. 2000) (plaintiff’s motion for permanent injunction and statutory damages); 2001 U.S. Dist. LEXIS 765 (E.D. Pa. Jan. 25, 2001) (defendant’s motion to set aside judgment)

Eli Lilly & Co. v. Natural Answers, Inc.,
    86 F. Supp. 2d 834 (S.D. Ind. 2000), aff’d, 233 F.3d 456 (7th Cir. 2000)

Entrepreneur Media, Inc. v. Smith,
    279 F.3d 1135 (9th Cir. 2002)

Eurotech, Inc. v. Cosmos European Travels AG,
    189 F. Supp. 2d 385 (E.D. Va. 2002) (motion to dismiss); 213 F.Supp. 2d 612 (E.D. Va. 2002) (motion for summary judgment)

Fleetboston Fin. Corp. v. Fleetbostonfinancial.com,
    138 F. Supp. 2d 121 (D. Mass. 2001)

Ford Motor Co. v. 2600 Enters.,
    177 F. Supp. 2d 661 (E.D. Mich. 2001)

Ford Motor Co. v. Catalanotte,
  Civ. A. No. 2:00cv75260 (E.D. Mich. Jan. 14, 2002), aff’d, 2003 U.S. App. LEXIS 17960 (6th Cir. Aug. 28, 2003)

Ford Motor Co. v. Great Domains, Inc.,
    2001 U.S. Dist. LEXIS 12712 (E.D. Mich. Mar. 30, 2001) (motion to dismiss regarding personal jurisdiction); 177 F.Supp. 2d 656 (E.D. Mich. 2001) (motions to dismiss on other grounds)

GlobalSantaFe Corp. v. GlobalSantaFe.com,
    250 F. Supp. 2d 610 (E.D. Va. 2003)

Harrods Ltd. v. Sixty Internet Domain Names,
    110 F. Supp. 2d 420 (E.D. Va. 2000) (defendant’s motion to dismiss), 157 F. Supp. 2d 658 (E.D. Va. 2001) (decision after trial), rev’d in part and aff’d in part, 302 F.3d 214 (4th Cir. 2002)

Hasbro, Inc. v. Internet Entm’t Group, Ltd.,
    40 U.S.P.Q.2d 1479 (W.D. Wash. 1996)

Heathmount A.E. Corp. v. Technodome.com,
    106 F. Supp. 2d 860 (E.D. Va. 2000) (plaintiff’s motion for service), 60 U.S.P.Q.2d 2018 (E.D. Va. 2000) (defendant’s motion to dismiss), 22 Fed. Appx. 344 (4th Cir. 2002) (defendant’s interlocutory appeal)

Horphag Research Ltd. v. Garcia,
    Civ. A. No 8:99-cv-00816 (C.D. Cal. Aug. 29, 2001), aff’d in part and vacated and remanded in part, 328 F.3d 1108 (9th Cir. 2003), amended by, 2003 U.S. App. LEXIS 14993 (9th Cir. May 9, 2003)

Hotmail Corp. v. Van$ Money Pie Inc.,
    47 U.S.P.Q.2d 1020 (N.D. Cal. 1998)

Int’l Bancorp, L.L.C. v. Societe Des Bains De Mer Et Du Cercle Des Etrangers A Monoco,
    192 F. Supp. 2d 467 (E.D. Va. 2002) aff’d, 329 F.3d 359 (4th Cir. 2003)

Interactive Prods. Corp. v. A2Z Mobile Office Solutions, Inc.,
    195 F. Supp. 2d 1024 (S.D. Ohio 2001), aff’d, 326 F.3d 687 (6th Cir. 2003)

Interstellar Starship Servs., Ltd. v. EPIX, Inc.,
    983 F. Supp. 1331 (D. Or. 1997), rev’d, 184 F.3d 1107 (9th Cir. 1999), 125 F. Supp. 2d 1269 (D. Or. 2001) (motion to compel production), aff’d, 304 F.3d 936 (9th Cir. 2002)

Interstate Net Bank v. Netbank, Inc.,
    221 F. Supp. 2d 513 (D.N.J. 2002)

J.K. Harris & Co. v. Kassel,
    2002 U.S. Dist. LEXIS 7862 (N.D. Cal. Mar. 22, 2002), modified in part, 253 F. Supp. 2d 1120 (N.D. Cal. 2003)

Jews for Jesus v. Brodsky,
    993 F. Supp. 282 (D.N.J.), aff’d, 159 F.3d 1351 (3d Cir. 1998)

Lewis v. Rocky Mountains Internet,
    96-CV-4693 (D. Colo. Sept. 26, 1997)

Mattel, Inc. v. Adventure Apparel,
    2001 U.S. Dist. LEXIS 13885 (S.D.N.Y. Sept. 7, 2001)

Mattel, Inc. v. Barbie-Club.com,
    58 U.S.P.Q.2d 1798 (S.D.N.Y. 2001), aff’d, 310 F.3d 293 (2d Cir. 2002)

Mattel, Inc. v. McBride,
    48 U.S.P.Q.2d 1467 (S.D.N.Y. 1998)

Microsoft Corp. v. Lindows.com Inc.,
    2002 U.S. Dist. LEXIS 24616 (W.D. Wash. Mar. 15, 2002) (denying preliminary injunction), 2002 U.S. Dist. LEXIS 26307 (W.D. Wash. May 13, 2002) (denying motion for reconsideration), Case No. C01-2115C (W.D. Wash. Jan. 22, 2003) (denying defendant’s motion for summary judgment)

Morrison & Foerster LLP v. Wick,
    94 F. Supp. 2d 1125 (D. Colo. 2000)

Moseley v. V. Secret Catalogue, Inc.,
    537 U.S. 418 (2003)

Network Network v. CBS, Inc.,
    54 U.S.P.Q.2d 1150 (C.D. Cal. 2000)

Nissan Motor Co. v. Nissan Computer Corp.,
    89 F. Supp. 2d 1154 (C.D. Cal. 2000), aff’d, 246 F.3d 675 (9th Cir. 2000); 204 F.R.D. 460 (C.D. Cal. 2001) (defendant’s motion for leave to add counterclaims); 2002 U.S. Dist. LEXIS 6365 (C.D. Cal. Jan. 8, 2002) (plaintiff’s motion for partial summary judgment); 61 U.S.P.Q.2d 1839 (C.D. Cal. 2002) (defendant’s motion for partial summary judgment); 231 F. Supp. 2d 977 (C.D. Cal. 2002) (plaintiff’s motion for permanent injunction)

Northland Ins. Cos. v. Blaylock,
    115 F. Supp. 2d 1108 (D. Minn. 2000)

Oracle Corp. v. Light Reading Inc.,
    233 F. Supp. 2d 1228 (N.D. Cal. 2002)

Paccar, Inc. v. Telescan Techs., L.L.C.,
    115 F. Supp. 2d 772 (E.D. Mich. 2000), aff’d in part and vacated in part, 319 F.3d 243 (6th Cir. 2003)

Parisi v. Netlearning Inc.,
    139 F. Supp. 2d 745 (E.D. Va. 2001)

Patmont Motor Werks, Inc. v. Gateway Marine, Inc.,
    1997 U.S. Dist. LEXIS 20877 (N.D. Cal. Dec. 17, 1997)

People for the Ethical Treatment of Animals, Inc. v. Doughney,
    113 F. Supp. 2d 915 (E.D. Va. 2000) (cross motions for summary judgment); 2000 U.S. Dist. LEXIS 13421 (E.D. Va. Aug. 31, 2000) (motion for attorney’s fees); 263 F.3d 359 (4th Cir. 2001)

Pinehurst, Inc. v. Wick,
    2002 U.S. Dist. LEXIS 19527 (M.D.N.C. May 15, 2002), 2003 U.S. Dist. LEXIS 5388 (M.D.N.C. Mar. 21, 2003)

Playboy Enters., Inc. v. AsiaFocus Int’l Inc.,
    1998 U.S. Dist. LEXIS 10359 (E.D. Va. Feb. 2, 1998) (magistrate’s report and recommendation on liability and damages), 1998 U.S. Dist. LEXIS 10459 (E.D. Va. Apr. 10, 1998) (court adoption of magistrate’s recommendation on liability and damages), 1998 U.S. Dist. LEXIS 10460 (E.D. Va. June 16, 1998) (magistrate’s report and recommendation on attorney’s fees)

Playboy Enters., Inc. v. Netscape Communications, Inc.,
    55 F. Supp. 2d 1070 (C.D. Cal. 1999) (plaintiff’s motion for preliminary injunction), aff’d, 1999 U.S. App. LEXIS 30215 (9th Cir. 1999); 2000 U.S. Dist. LEXIS 13418 (C.D. Cal. Sept. 14, 2000) (defendants’ motions for summary judgment)

Playboy Enters., Inc. v. Universal Tel-A-Talk, Inc.,
    1998 U.S. Dist. LEXIS 17282 (E.D. Pa. Nov. 2, 1998)

Playboy Enters., Inc. v. Welles,
    7 F. Supp. 2d 1098 (S.D. Cal. 1998) (preliminary injunction), aff’d, 162 F.3d 1169 (9th Cir. 1998); 78 F. Supp. 2d 1066 (S.D. Cal. 1999) (summary judgment), aff’d, 279 F.3d 796 (9th Cir. 2002)

Porsche Cars N. Am., Inc. v. Porsche.com,
    51 F. Supp. 2d 707 (E.D. Va. 1999), vacated and remanded, 215 F.3d 1320 (4th Cir. 2000), aff’d, 55 U.S.P.Q.2d 1158 (4th Cir. 2000), rev’d and remanded, 302 F.3d 248 (4th Cir. 2002)

Promatek Indus. v. Equitrac Corp.,
    300 F.3d 808 (7th Cir. 2002)

Retail Servs., Inc. v. Freebies Publ’g,
    247 F. Supp. 2d 822 (E.D. Va. 2003)

Schmidheiny v. Weber,
    146 F. Supp. 2d 701 (E.D. Pa. 2001) (motion to dismiss for lack of standing), 164 F. Supp. 2d 484 (E.D. Pa. 2001) (motion to dismiss counterclaims), C.A. No. 01-377 (E.D. Pa. Feb. 14, 2002) (cross motions for summary judgment), rev’d and remanded, 2003 U.S. Dist. LEXIS (3rd Cir. Feb. 11, 2003) (default judgment)

Shields v. Zuccarini,
    89 F. Supp. 2d 634 (E.D. Pa. 2000) (plaintiff’s motion for preliminary injunction granted); 2000 U.S. Dist. LEXIS 15225 (E.D. Pa. June 5, 2000) (plaintiff’s motion for summary judgment and permanent injunction granted); 2000 U.S. Dist. LEXIS 15223 (July 18, 2000) (plaintiff’s motion for statutory damages and attorney’s fees granted), aff’d, 254 F.3d 476 (3d Cir. 2001)

Taubman Co. v. Webfeats,
    No. 01-72987 (E.D. Mich. Oct. 11, 2001) (granting preliminary injunction), rev’d, 319 F. 3d 770 (6th Cir. 2003)

Ticketmaster Corp. v. Tickets.com, Inc.,
    2000 U.S. Dist. LEXIS 12987 (C.D. Cal. Mar. 27, 2000) (defendants’ motion to dismiss); (C.D. Cal. August 10, 2000) (plaintiff’s motion for preliminary injunction)

Toys “R” Us, Inc. v. Akkaoui,
    40 U.S.P.Q.2d 1836 (N.D. Cal. 1996)

Trans Union LLC v. Credit Research, Inc.,
    142 F. Supp. 2d 1029 (N.D. Ill. 2001)

Ty, Inc. v. Agnes M. Ltd.,
    2001 US. Dist. LEXIS 18852 (N.D. Ill. Nov. 13, 2001)

Ty Inc. v. Perryman,
    2001 U.S. Dist. LEXIS 10303 (D. Ill. July 23, 2001), rev’d in part and remanded, 306 F.3d 509 (7th Cir. 2002), cert. denied, 123 S. Ct. 1750 (2003)

U-Haul Int’l, Inc. v. WhenU.com, Inc.,
    No. 02-1469-A (E.D. Va. Sept. 5, 2003)

United Greeks, Inc. v. Klein,
    2000 U.S. Dist. LEXIS 5670 (N.D.N.Y. May 1, 2000)

Victoria’s Cyber Secret, L.P. v. V Secret Catalogue, Inc.,
    161 F. Supp. 2d 1339 (S.D. Fla. 2001)

Voice-Tel Enters, Inc. v. JOBA, Inc.,
    2003 WL 1949825 (N.D. Ga. Mar. 31, 2003)

Volkswagen of Am., Inc. v. Virtual Works, Inc.,
    1999 U.S. Dist. LEXIS 23181 (E.D. Va. Nov. 23, 1999) (motion for preliminary injunction), 106 F. Supp. 2d 845 (E.D. Va. 2000) (motions for summary judgment), aff’d, 238 F.3d 264 (4th Cir. 2001)

Weber-Stephen Prods. Co. v. Armitage Hardware and Bldg. Supply, Inc.,
    54 U.S.P.Q.2d 1766 (N.D. Ill. 2000)

Wright v. Domain Source, Inc.,
    2002 U.S. Dist. LEXIS 16024 (N.D. Ill. Aug. 28, 2002)