Top Defense Results: Academy of Motion Picture Arts and Sciences v. GoDaddy.com Inc. et al

Trademark infringement

Central District

U.S. District Judge André Birotte Jr.

Defense attorneys: Wilmer Cutler Pickering Hale and Dorr LLP, Robert M. Galvin, William F. Lee, Jimmy T. Doan; Ring Bender McKown & Castillo LLP, Aaron M. McKown, Paula L. Zecchini; GoDaddy Inc., Nima Kelly, Nicholas Beizer

Plaintiffs' attorneys: Boies, Schiller & Flexner LLP, David L. Zifkin, Stuart Singer; Davis Wright Tremaine LLP, David W. Quinto; Foote, Mielke, Chavez & O'Neil LLC, Robert M. Foote, Matthew Herman; Lee Tran & Liang LLP, James M. Lee, Enoch H. Liang

When the anticipated cybersquatting trial between the Academy of Motion Picture Arts and Sciences and GoDaddy.com Inc. began, the digital domain giant was left with few defenses.

Facing trademark infringement claims on 56 domains, carrying statutory damages of up to $100,000 each, the stakes were high for GoDaddy's attorney Robert M. Galvin, a partner with Wilmer Cutler Pickering Hale and Dorr LLP.

Galvin said by the time his firm was hired, about six weeks before trial, there had been rulings on summary judgment that had eliminated defenses GoDaddy would have liked to put forward.

That left two major issues for U.S. District Judge Andre C. Birotte of the Central District to decide: whether GoDaddy had acted in bad faith, and if it did, what the statutory damages would be.

AMPAS claimed its trademarks in phrases such as "Oscars" and "Academy Awards" were being infringed by people illegally registering domains including those character strings, and alleged GoDaddy was at fault for not preventing the practice and for placing ads on "parked pages" - registered domains without hosted websites.

GoDaddy registers one and a half domains every second, Galvin said, and because there would be no way to manually check them all on the front end, the company requires customers to certify they aren't infringing someone else's rights.

"Although that was in place before this lawsuit, the Academy took a pretty aggressive view that it wasn't good enough," Galvin said. "It was a very kind of novel reading of the statute. We weren't aware of anyone applying it that way."

The case boiled down to explaining the technology and the business reality, which Galvin said was successful thanks to two key witnesses from GoDaddy and a comedian named Oscar Sagastume who had registered one of the domains in question - oscarcomedy.com.

"By giving examples like that, we showed, 'What is GoDaddy supposed to do?'" Galvin said. "Is that guy trying to play on the Academy's Oscar mark or is he a guy named Oscar who's a comedian and wants a website?"

In a 129-page decision, Birotte found in September that AMPAS did not meet its burden of proving that GoDaddy registered, trafficked in or used any of the accused domains with a bad faith intent to profit from the 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," Birotte wrote. Academy of Motion Picture Arts and Sciences v. GoDaddy.com, Inc. et al., 10-CV3738 (C.D. Cal., filed May 18, 2010).

Galvin said the opinion clarifies the ACPA and the limits for which the act is intended. "That will hopefully prevent others who are in the Academy's shoes from trying to twist the statute and apply it much more broadly than it was ever intended," he said.

AMPAS' attorneys have filed a notice of appeal.

"We are confident that Judge Birotte is correct," Galvin said. "It will be a very tough opinion to challenge on appeal."

- Ashley Cullins