June 25, 2013 4:20pm PT by Eriq Gardner
Film Academy Nears Trial Against GoDaddy Over 'Oscars' Trademarks
The Academy of Motion Picture Arts & Sciences is on the verge of a big showdown with GoDaddy.
AMPAS, most famous for its annual Oscars awards ceremony, is suing GoDaddy under the Anticybersquatting Consumer Protection Act, alleging that the domain registrar giant traffics in unauthorized trademarks. Specifically in dispute is GoDaddy's "CashParking" program that allows customers to buy a domain like Oscarbets.com or Oscarsornot.com, "park" that page and collect a portion of revenue from GoDaddy's advertising partners on a pay-per-click basis.
On Friday, the Academy took a big step forward in the lawsuit when a California federal judge rejected GoDaddy's summary judgment motion and ruled that the defendant isn't eligible for safe harbor. The Academy got other wins by getting the judge to acknowledge that GoDaddy "uses" and "traffics" in domain names, although the judge declined to give the "Oscars" trademark owner a complete victory. For example, the judge says that whether the Academy's marks are really famous is something that would be left to a jury to decide.
Judge Audrey Collins refused GoDaddy's bid for safe harbor by agreeing with the Academy that GoDaddy did not function solely as a registrar when it allowed users to park domain names like traveloscar.com and oscarshotel.com.
"First, the Parked Pages Program applies to pages already registered with GoDaddy, indicating that GoDaddy has fulfilled its registration role by the time it implements the parking programs," writes the judge. "Second, through its Parked Pages Program, GoDaddy uses its servers to create webpages for registered domain names, and to place advertising on those pages for which it can collect a fee-per-click. Creating webpages, placing ads, and collecting ad revenue is not registration activity."
The judge says it's not important that the Academy hasn't shown it has profited from this.
"The safe harbor provision simply does not apply to conduct, like operating the Parked Pages Program, that goes beyond mere registration and maintenance," adds the judge. "Furthermore, a registrar’s mere bad faith intent to profit – as opposed to actual profit – is sufficient to disqualify it from safe harbor protection."
The judge also goes a long way to establishing one of the prongs of GoDaddy's alleged cybersquatting activity by determining that it has "used" domains by acting affirmatively to place domain names in a program designed to make money and engaged in "trafficking" by receiving from registrants a license to place revenue-generating ads on webpages. GoDaddy's argument that it is merely routing domain names is thoroughly rejected.
There are still many questions to be answered.
One is whether the Academy's marks are famous. GoDaddy has objected to the fact that the Academy hadn't taken the time to do consumer surveys and sought to fill the void with its own studies that allegedly showed that respondents couldn't recognize domain names in dispute as being entertainment-related.
Judge Collins says that marks related to "Oscars" may be distinctive, but that it's a triable fact as to whether the Academy's marks meet the tests of recognition.
Another unresolved question has to do with whether the domain names -- like betacademyawards.com and oscarsunplugged.com -- are "confusingly similar" to the Academy's marks. In the ruling, the judge gives some guiding principles on what she will be looking for, but holds off on any ruling until the parties can present a unified list of domains in dispute. The Academy has alleged more than 100 of them, but a few have been taken out of the lawsuit for being presented too late.
Finally, the Academy wins another important victory by lowering its burden of proof. Judge Collins rejects GoDaddy's assertion that the Academy has to show "actual dilution" of its marks. Instead, it appears that the plaintiff will only need to show that the domains in question were merely dilutive of its marks.
The parties still need to figure out a day for the trial. The judge has extended discovery on certain issues and there are likely witness lists and evidence to be sorted. The dispute could be handed to a jury by the end of the year.