Using DMCA As A Dodge Costs Host 32 Million

[gonzo]

In what's being called a landmark decision, a federal jury in California has found two Web hosting companies and their owner liable for contributing to trademark and copyright infringement for hosting sites selling counterfeit Louis Vuitton goods.

In a verdict handed down last week, the jury assessed damages totaling more than $32 million against hosting companies Akanoc Solutions Inc., Managed Solutions Group Inc., both in Fremont, Calif., and Steven Chen, the owner of the two companies. In awarding the damages, the jury agreed with Paris-based Louis Vuitton Malletier S.A.'s claims that the defendants knowingly allowed several Web sites they hosted to sell products that infringed Louis Vuitton's copyrights and trademarks.


The U.S. District Court for the Northern District of California is expected to issue a permanent injunction banning the Internet service providers from hosting Web sites that selling fake Louis Vuitton goods in the future, the company said.


Attorneys for the luxury goods maker said in a statement that the case is the first successful application on the Internet of the theory of contributory liability for trademark infringement.


Under this theory, companies that know, or should know, that they are enabling illegal activities have an obligation to remedy the situation. Entities that fail to do so, as Louis Vuitton alleged in this case, can be held legally responsible for contributing to the illegal activities.


Lawyers for Chen had argued that Akanoc and Managed Solutions were protected under the Digital Millennium Copyright Act's (DMCA), which limits the liability of ISPs for activities by its customers that might constitute copyright infringements. The defense lawyers said Chen and his companies could not be held liable for the actions of Web sites they might have hosted but did not directly own or operate.



Read more here . . .

But feel free to discuss here!

[Toby]

Louis Vuitton very agressively protects it's brand. Just try to sell something by Louis Vuitton on eBay. Odds are high the listing will get pulled at LV's request even if the item is genuine.

While this is indeed an important decision, it's not the first successful Internet case of contributory copyright infringement. There have been a couple of others in the last year or two.

Those hosting illegal tubes etc. that are receiving a high number DMCA complaints should be feeling a bit more uneasy this morning.

[pornlaw]

This is a huge decision in regards to contributory trademark infringement which is much different that copyright infringement.

The DMCA has killed copyright claims, but it doesnt appear to effect trademarks. We have been telling clients for years to secure the proper trademarks in regards to their business and content. If you do not have your name trademarked you should seriously consider it.

I am curious to see if there is an appeal. I would assume so but if upheld on appeal this decision will give online adult businesses an approach to take with those violating their trademarks. I would advise everyone to watermark their content with a trademarked logo. You can always use the trademark as a way to force the ISP to take the content down if they ignore the copyright. Best of all the trademark is a one time application and doesnt require you to get registrations on each piece of content.

[housekeeper]

Oh well, I guess it's back to buying them off the guy on the street...

[EmporerEJ]

Originally Posted by pornlaw

\
I would advise everyone to watermark their content with a trademarked logo. You can always use the trademark as a way to force the ISP to take the content down if they ignore the copyright. Best of all the trademark is a one time application and doesnt require you to get registrations on each piece of content.

Good plan...but a bit "simplistic," don't you think?
Trademark is something a bit more than a "one time application."

[pornlaw]

Originally Posted by EmporerEJ

Good plan...but a bit "simplistic," don't you think?
Trademark is something a bit more than a "one time application."

Please explain further... I dont think we are talking about the same thing.

[EmporerEJ]

Originally Posted by pornlaw

Please explain further... I dont think we are talking about the same thing.

Well, it's a bit more complicated, and expensive, "getting" a trademark.....
First, one must demonstrate "use in commerce, or intent to use in commerce," then, they may object to "subject matter," then comes the inevitable battle with the USPTO, that your wording/category isn't quite right, back & forth a couple times, and then of course, publish for opposition.Providing no opposers, you then go on to publish. After that, maintenance fees at intervals. and, of course, the constant policing.

Unless of course, you are referring to a state trademark?

Yes, a trademark has more "power," once obtained, but everything connected to it is expensive.

Basic Copyright is free.....to every red blooded free American.
Registration of a "body of work" is economical, and allows for high damages when violated. It's almost never challenged for registration. (Is there even a vehicle for challenging it? Not sure)

But there SURE is with trademark!



But still, an interesting strategy.

[pornlaw]

Originally Posted by EmporerEJ

Well, it's a bit more complicated, and expensive, "getting" a trademark.....
First, one must demonstrate "use in commerce, or intent to use in commerce," then, they may object to "subject matter," then comes the inevitable battle with the USPTO, that your wording/category isn't quite right, back & forth a couple times, and then of course, publish for opposition.Providing no opposers, you then go on to publish. After that, maintenance fees at intervals. and, of course, the constant policing.

Unless of course, you are referring to a state trademark?

Yes, a trademark has more "power," once obtained, but everything connected to it is expensive.

Basic Copyright is free.....to every red blooded free American.
Registration of a "body of work" is economical, and allows for high damages when violated. It's almost never challenged for registration. (Is there even a vehicle for challenging it? Not sure)

But there SURE is with trademark!



But still, an interesting strategy.

No I am referring to a federal registration.

If you are trying to do it yourself then you are correct. We rarely get office actions when we file TMs for clients. Usually doing your research first will prevent most if not all the problems and knowing the categories/classes will also prevent a lot of problems. We also make sure that clients avoid intent to use filings. That is another waste of time and money.

I would not suggest that someone try to do a TM on their own. That usually results in problems. For most TMs we charge a flat rate of $1000 and that includes the USPTO fee.

We do suggest that clients do their own copyright registrations though. They are much easier but offer less protection.

Your likelihood of success really comes down to what word/phrase/logo are you trying to trademark.

[EmporerEJ]

Originally Posted by pornlaw

No I am referring to a federal registration.

If you are trying to do it yourself then you are correct. We rarely get office actions when we file TMs for clients. Usually doing your research first will prevent most if not all the problems and knowing the categories/classes will also prevent a lot of problems. We also make sure that clients avoid intent to use filings. That is another waste of time and money.

I would not suggest that someone try to do a TM on their own. That usually results in problems. For most TMs we charge a flat rate of $1000 and that includes the USPTO fee.

We do suggest that clients do their own copyright registrations though. They are much easier but offer less protection.

Your likelihood of success really comes down to what word/phrase/logo are you trying to trademark.

Yup, a "G" including the fee is not a bad price.
I would encourage all those thinking about it to go that way.
And have some kind of unique design or word. Then you can slip it through.
But there really isn't any Rhyme or Reason to the USPTO's thinking. Depending on the day, you can pass through the door and get the wrong examiner.

Some day, I'll write a book, and then you'll hear a story that will curl your hair.

[pornlaw]

Originally Posted by EmporerEJ

Yup, a "G" including the fee is not a bad price.
I would encourage all those thinking about it to go that way.
And have some kind of unique design or word. Then you can slip it through.
But there really isn't any Rhyme or Reason to the USPTO's thinking. Depending on the day, you can pass through the door and get the wrong examiner.

Some day, I'll write a book, and then you'll hear a story that will curl your hair.

Thanks and yes "Hollywood Whores" is not going to slip through. The more unique the easier it is. The examiners can be quite difficult depending on whom you draw. But usually they are easy to deal with.

I would love to hear at least one story !!!

[EmporerEJ]

Originally Posted by pornlaw

Thanks and yes "Hollywood Whores" is not going to slip through. The more unique the easier it is. The examiners can be quite difficult depending on whom you draw. But usually they are easy to deal with.

I would love to hear at least one story !!!

As the story is yet unfolding, I am unable to share.
But it will be one hell of a book!

Now, if you were my attorney, and it was "privileged...."
But alas.....