from the we're-still-big,-it's-the-courts-that-got-small dept
Back in 2010, the notoriously-litigious Motion Picture Academy sued GoDaddy for allowing a bunch of “infringing” domains to be registered. According to the Academy, anything that might use the word “Oscar” is under its control, thanks to several registered trademarks. Trademark infringement doesn’t fall under Section 230 protections, which is basically the only reason this lawsuit managed to stay alive for five years.
Now, it’s finally over. (Well, pending appeal…) Kieren McCarthy of The Register is reporting that the court has found in favor of GoDaddy.
The Academy was seeking $31m in damages for 293 domain names that it identified as being registered with and hosted by GoDaddy. An original list of 151 domains in 2009 was subsequently added to as the complaint progressed through the courts.
However, a significant number of the names registered were either found not to infringe the Academy’s trademarks or were being used legitimately (usually by people called Oscar).
Far too many trademark holders believe holding a registered wordmark gives them veto power on any use of that word. This simply isn’t the case, but acts of faith predicated on this belief have resulted in multiple bogus lawsuits and an even greater number of baseless legal threats.
The court found that GoDaddy had a significant number of domain-squatting deterrents built into its system. And, even if it didn’t, the sheer number of domains registered with the company makes it impossible to police thoroughly, or at least not to the extent the Academy would like.
GoDaddy is the largest domain name registrar in the world with approximately 60 million domain names under management. GoDaddy has registered more than 150 million domain names since becoming an ICANN-accredited registrar in 2000, averaging over 25,000 domain registrations per day. On average, GoDaddy registers a domain name every 0.7 seconds.
Requiring GoDaddy to subject each domain registration to a costly, manual legal review is not commercially practical and would dramatically increase GoDaddy’s costs, which would in turn be passed on to the consumer.
The Academy further claimed that GoDaddy violated its trademarks with relevant ads (from Google) running on parked domain pages.
GoDaddy pointed out that it had no control over what ads would be run by Google on parked domain pages. It further pointed out that the Academy could have contacted Google to prevent the placement of Oscar-related ads on parked domain pages, but chose not to.
Google has implemented a comprehensive trademark protection policy for those domains participating in AdSense for Domains.
Despite being aware of the protections afforded by Google’s trademark policy, AMPAS (Academy of Motion Picture Arts and Science) chose not to avail itself of the policy in relation to any of the domain names at issue.
AMPAS never contacted Google to object to the use of the AMPAS Marks in Google’s AdSense program, nor has AMPAS complained to Google that the use of the AdSense or AdWords programs infringe on the AMPAS Marks.
The court also noted that GoDaddy makes several proactive efforts to protect trademark holders — like warning prospective registrants against registering domains using trademarked terms as well as shifting the liability to registrants, who must agree they are not knowingly committing infringement before a registration is granted. On top of that, GoDaddy strips ads from any domain being disputed to ensure no one is capitalizing on possible infringement.
Beyond its internal constraints, GoDaddy is forbidden by ICANN from unilaterally cancelling registrations. To do so without the permission of the registrant, a court order must be presented to GoDaddy. Obviously, this is what the Academy was seeking, but it skipped a step by taking GoDaddy to court for not immediately killing registered domains the moment the Academy started getting grumpy about it.
Because this is a trademark case, the Academy’s arguments revolved around GoDaddy profiting from allowing the registration of “infringing” domains. As noted above, GoDaddy stripped all ads from the parked domains the Academy complained about. Even the sites that remained active hardly generated any money for GoDaddy or the registrants themselves. Over the years, the Academy has claimed anywhere from $6 to $31 million in damages. The court does the math and finds that if anything was actually owed to the Academy, the check amount wouldn’t even reach four digits.
GoDaddy received approximately $107 in total revenue from popunder and Google-provided, third-party pay-per-click advertisements on seventy-two (72) of the 293 domain names at issue. The pop-under revenue accounted for less than $1 of the total revenue.
Of the 293 domain names at issue, 221 domain names generated no revenue from Google-provided, third-party pay-per-click advertisements. The most revenue generated by any domain was $13.67.
The total page impressions recorded from 2005 to 2014 for the 293 accused domains was 48,763: (a) 60 accused domains had less than or equal to 10 impressions, (b) 244 accused domains had less than 100 impressions. Some of the recorded impressions were made by AMPAS’s counsel and consultants. The 48,763 recorded impressions on the accused domains represent 0.00044% of all impressions (10,997,067,487) on all domain names participating in one of GoDaddy’s Parked Page programs.
The court finds that GoDaddy made significant good faith efforts to resolve the issues brought to its attention. Not only did it proactively strip ads from offending domains, but it instituted additional keyword blacklists for future use. But this wasn’t good enough for the Academy, which still believed the only reason anyone would use the word “Oscar” in a domain name was to siphon profit away from the Academy.
As Kieren McCarthy points out, the Academy long thought it had an open-and-shut case. That’s the sort of misconception often accompanies inflated senses of self-worth. To the Academy, the word “Oscar” only refers to one thing. But on the internet, it can mean thousands of things — most of them entirely unrelated to its annual bloated act of self-congratulation.
Taken overall, the five-year court battle highlighted an enormous clash of cultures. The Academy Awards believes that anything at all to do with its name represents a calculated effort to extort millions of dollars, while GoDaddy as a company that deals with the broader internet and millions of web addresses barely registers the Oscars existence in their systems.
The decision will undoubtedly be appealed, but there’s not much in this decision that points to a more favorable outcome. The Academy threw it weight around and expected that would be all it ever needed to do. It failed to provide anything that backed up its claims that an internet entity was (yet again) screwing a legacy out of its “rightful” earnings. GoDaddy, on the other hand, showed the court it had done everything it could to assist the Academy in its ridiculous trademark protection efforts, and got thanked for its efforts with five years of litigation.
Filed Under: domain registration, domains, oscars, secondary liability, third party liability, trademark
Companies: godaddy, motion picture academy, oscars