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Personal Names and the ACPA

I have previously blogged that 15 U.S.C. § 1125(d) and 15 U.S.C. § 1129 apply to personal names.

The Western District of Virginia and the Third Circuit appeared to agree with this theory. See Dawson v. Brandsberg, 2006 U.S. Dist. LEXIS 73512, 13-7 (W.D. Va. 2006); Shields v. Zuccarini, 254 F.3d 476, 481 (3d Cir. 2001). However, in a case that my firm handled, the Middle District of Florida rejected this theory. See Salle v. Meadows (M.D. Fla. 2007). The M.D. Fla. held that for a personal name to have protection under 1125(d), that name must also have trademark significance.

The language of 15 U.S.C. § 1125 is a bit ambiguous.

A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person –

In that portion of the ACPA, Congress either negligently omitted the comma before “which,” or used “which” instead of “that.” The plain meaning analysis comes down to which grammatical error you want to say was committed. Given the grammatical ambiguity, we looked at the legislative history of the Act and interpretive cases.

One of the purposes of the ACPA is to stop bad-faith registration and use of domain names, including those that constitute personal names of individuals. See Schmidheiny v. Weber, 319 F.3d 581, 582 (3d Cir. 2003); Shields v. Zuccarini, 254 F.3d 476, 481 (3d Cir. 2001) (The ACPA made it “illegal for a person to register or to use with the ‘bad faith’ intent to profit from an Internet domain name that is “identical or confusingly similar” to the … name of another person or company.”) Since Section 1129 prohibits the registration of a personal name with a “specific intent to profit,” then the Third Circuit must be talking about Section 1125(d) — which prohibits “”bad faith intent to profit.” Different standards…

The initial version of the ACPA provided protection for personal names only to recognized celebrities, stating: “A person shall be liable in a civil action by the owner of a mark, including a famous personal name…” 145 Cong. Rec. H 10823, H10823 (106th Cong. Oct. 26, 1999). Nevertheless, Representative Bono prevailed upon her colleagues to expand this protection to all individuals. “This protection in my opinion must not be limited to the famous or just celebrities, it must be universal.” 145 Cong. Rec. H10823, H10830 (106th Cong., Oct. 26, 1999).

As the ACPA wound its way through the legislative process, the Congressional intent to protect personal names became fully apparent. “This bill prevents cybersquatting when a trademark, service mark, famous name or any personal name is involved.” 145 Cong. Rec. H11811, H11815 (106th Cong., Nov. 9, 1999). Senator Hatch agreed, and upon presentation for the President’s signature, it is clear that the ACPA contained a clear intent to protect both trademarks and personal names.

As with trademark cybersquatting, cybersquatting of personal names poses similar threats to consumers and e-commerce in that it causes confusion as to the source or sponsorship of goods or services, including confusion as to the sponsorship or affiliation of websites bearing individuals’ names. In addition, more and more people are being harmed by people who register other peoples names and hold them out for sale for huge sums or money or use them for various nefarious purposes. 145 Cong. Rec. S14986, S15019 (106th Cong., Nov. 19, 1999).

This strong Congressional intent manifested itself in the enactment of not one, but two separate additions to the Lanham Act providing protection for personal names, both of which would entitle Kanter to relief. 15 U.S.C. § 1129 and 15 U.S.C. § 1125(d)(1)(A)(i).

The Congressional intent seems to be to provide two avenues for an individual to reclaim his or her name from a cybersquatter. Section 1129 has a lower standard of proof – requiring only that the Plaintiff demonstrate that the Defendant had a “specific intent to profit.” However, that “profit” must be sought through sale of the domain name itself, not just through its use. On the other hand, 15 U.S.C. § 1125(d)(1)(A)(i), requires that the Plaintiff show that the Defendant had a “bad faith intent to profit,” but requires no specific intent to profit through the sale of the domain name. Section 1125(d) provides for severe financial penalties of between $1,000 and $100,000 in statutory damages in addition to the forfeiture of the domain name. Section 1129 comes along with lesser remedies of forfeiture and discretionary awards of attorneys’ fees and costs to the prevailing party.

However compelling you may find this argument (or maybe you don’t), it must be noted that at least one court has roundly rejected it. Nevertheless, the Third Circuit and the Western District of Virginia seem to support it.

Note: The M.D. Fla. did find liability under the low standard required by 15 U.S.C. § 1129 and awarded Salle both the domain name, and an attorneys’ fees award.

Congratulations and kudos to my former student who wrote a magnificent memo of law on the issue.

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