GoDaddy victorious in OSCARS dispute
In Academy of Motion Picture Arts and Sciences v GoDaddy.com (CV 10-03738 AB (CWx)), the US District Court for the Central District of California has held that the Academy of Motion Picture Arts and Sciences had failed to prove that domain name registrar GoDaddy had acted with a bad-faith intent to profit from the academy’s marks under the federal Anti-cybersquatting Consumer Protection Act.
The academy had sued GoDaddy under the act based on GoDaddy’s registration of 293 domains containing the academy’s registered trademarks ACADEMY AWARDS and OSCARS.
The court also found that undisputed evidence demonstrated GoDaddy’s reasonable belief that the placement of ads on the accused domains was fair use or otherwise lawful; therefore, the registrar safe harbour provision of the act applied.
While this is a great victory for GoDaddy and other domain registrars, it should be noted that the federal Anti-cybersquatting Consumer Protection Act does not provide for claims for contributory or vicarious liability and requires direct liability, unlike more traditional trademark infringement claims. Thus, online service providers should still be wary of contributory or vicarious liability under more traditional trademark infringement claims under the Lanham Act.
Susan Natland, partner, and Jessica Sganga, associate, at Knobbe Martens Olson & Bear LLP