6:09pm PT by Eriq Gardner
Film Academy Loses to GoDaddy in Oscars Cybersquatting Battle
In a cybersquatting case that lasted more than five years, the Academy of Motion Picture Arts and Sciences has suffered a landmark loss to GoDaddy with a judge on Thursday ruling in the domain registrar giant's favor.
The Academy had hoped to win as much as $30 million and looked to be the heavy favorite given earlier rulings in the case, but will be walking away with nothing because U.S. District Court Judge Andre Birotte Jr. decides there's a lack of proof that GoDaddy had a bad faith intent to traffic in trademarks like the "Academy Awards" and "Oscars."
The lawsuit filed in 2010 targeted GoDaddy for allowing customers to buy domains like 2011Oscars.com or betacademyawards.com, "park" that page and collect a portion of revenue from GoDaddy's advertising partners on a pay-per-click basis.
On summary judgment at an earlier stage in the case, the Academy prevailed in showing that all but 57 of 293 domains at issue were confusingly similar to their own trademarks. A trial was held in early August, and GoDaddy was pretty much down to its last defense — that there was no bad faith intent to profit.
GoDaddy's program hardly made any money. Domains like academyawardbuzz.com generated just a few hundred dollars in advertising revenue and less than 50,000 page impressions in total. Nevertheless, it triggered litigation that lasted half a decade. Many saw this as a test case in the cybersquatting arena.
In a whopping 129-page decision, Birotte lays out his conclusion that "the unique circumstances compel a finding that GoDaddy did not possess the requisite bad faith intent to profit from the AMPAS Marks."
Those circumstances included representations made by the registrants; the automated nature of the registration process; GoDaddy’s efforts to assist brand owners in protecting their intellectual property rights; Google’s control over the pay-per-click advertisements displayed on the websites in question; GoDaddy witness testimony; GoDaddy’s near-immediate cessation upon complaint; GoDaddy's later decision to filter Academy-related marks; and no evidence GoDaddy promoted or drove traffic to the domains in dispute.
GoDaddy wins the hard-fought lawsuit that got pretty heated from early efforts to depose GoDaddy founder Bob Parsons, GoDaddy's accusation at one point that the Academy was gaming the judicial system and disclosures of AMPAS's various settlement offers including $20 million at the outset and $6 million as recently as 2013.
In his decision, Judge Birotte also speaks at various turns about the nominative fair use of trademarks, speaking how newspapers are filled with ads for “Academy Award Nominated” films.
"Although the Court finds that AMPAS has failed to meet its affirmative burden of proof on the dispositive question of GoDaddy’s bad faith intent to profit, the Court also finds in the alternative that GoDaddy has met its burden of proof on its related affirmative defense that it acted with a good faith belief that its use of the domain was a fair use or otherwise lawful."
Towards the end of the lengthy ruling (read in full here), the judge says there is a "fundamental problem" with the Academy's theory of liability under the Anticybersquatting Consumer Protection Act. He writes, "[I]t confuses GoDaddy’s technical capacity to filter all trademarks with AMPAS’s legal duty to police its own trademarks. At its core, AMPAS’s ACPA claim would impose upon GoDaddy (and presumably any other company offering parking, hosting, or other basic internet services) the unprecedented duty to act as the internet’s trademark police. The ACPA did not impose such sweeping obligations."