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August 12, 2004, 9:00 AM ET, Alert No. 958.
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9th Circuit Rules in Trademark Dilution and Infringement Case Involving Domain Name Registration

8/6. The U.S. Court of Appeals (9thCir) issued its opinion [30 pages in PDF] in Nissan Motor Co. v. Nissan Computer Corp., a dispute over the operation of a web site with a domain name that includes a trademarked name.

Uzi Nissan is an individual who owns a computer store in the state of North Carolina. He formed a corporation named Nissan Computer Corp. He registered the domain name in 1994. He maintained a web site at this domain name that also included automobile related advertising.

Nissan Motor Co. is an automobile manufacturer based in Japan, with operations and sales in the U.S. It registered the trademark "Nissan" in 1959. Nissan Motor unsuccessfully sought to obtain the domain name from Nissan Computer.

Nissan Motor filed a complaint in U.S. District Court (CDCal) against Nissan Computer alleging that the domain name "" diluted the "NISSAN" trademark in violation of the Federal Trademark Dilution Act (FTDA), which is codified at 15 U.S.C. § 1125(c), and that the domain name registration infringed the trademark under the Lanham Act, which is codified at 15 U.S.C. § 1114.

The complaint also included claims for domain name piracy, false designation of origin, and violation of Cal. Bus. & Prof. Code § 14330, which are not at issue in this appeal.

The District Court held that Nissan Computer's automobile related advertising constituted trademark infringement on the basis of initial interest confusion, but that non-automobile related advertising did not.

It also held that Nissan Motor's dilution suit was not barred by laches, that Nissan Computer's first commercial use of "nissan" was in 1994 when it registered the domain name because that was the only use identical to the mark, that by then Nissan Motor’s mark had become famous, and that Nissan Computer's use of the domain name dilutes the quality of Nissan Motor’s mark.

The District Court enjoined Nissan Computer from publishing any commercial content in its web site located at and from placing links to other web sites that contain disparaging remarks or negative commentary about Nissan Motor.

See, the District Court's 2000 preliminary injunction order, also published at 89 F.Supp.2d 1154, which the Court of Appeals previously affirmed, and the District Court's 2002 permanent injunction [9 pages in PDF], also published at 231 F.Supp.2d 977, which is the subject of the present appeal.

The Court of Appeals affirmed in part, reversed in part, and remanded.

The Appeals Court affirmed on the trademark infringement issue. It wrote that "Initial interest confusion exists as a matter of law as to Nissan Computer’s automobile-related use of ``´´ because use of the mark for automobiles captures the attention of consumers interested in Nissan vehicles. To this extent ``´´ trades on Nissan Motor's goodwill in the NISSAN mark and infringes it, but other uses do not because there is no possibility of confusion as to them."

The Appeals Court reversed on the trademark dilution issue. It concluded that "Even though the NISSAN mark was distinctive and incontestible within five years of registration, it must also have become ``famous´´ before Nissan Computer’s first commercial use in order to be entitled to protection against dilution. The first use for purposes of the FTDA is that use which is arguably offending, here, ``Nissan Computer,´´ because any commercial use of a famous mark is diluting regardless of whether it is confusing or combined with other identifiers. As such a use occurred in 1991, and because the district court believed that triable issues of fact exist about fame of the NISSAN mark before 1994, summary judgment on the dilution claim cannot be sustained."

The Appeals Court also reversed the injunction. It concluded that "to enjoin Nissan Computer from providing visitors to a link to sites with disparaging or negative commentary about Nissan Motor is a content-based restriction on non-commercial speech that is inconsistent with the First Amendment."

Judge Pam Rymer wrote the opinion for the Appeals Court. Judges Stephen Trott and Sidney Thomas joined.

This case is Nissan Motor Co. v. Nissan Computer Corp., et al., and consolidated cases, Nos. 02-57148, 03-55017, 03-55144, and 03-55236, appeals from the U.S. District Court for the Central District of California, Judge Dean Pregerson presiding.

People and Appointments

8/11. Federal Trade Commission (FTC) Commissioner Mozelle Thompson released a statement. He wrote that "On Friday, August 6, 2004, I submitted my resignation as Commissioner of the Federal Trade Commission, effective August 31st." He will be replaced by Jonathan Liebowitz.

8/11. D'wana Terry was named Chief of Staff and Associate Bureau Chief of the Federal Communications Commission's (FCC) Wireless Telecommunications Bureau (WTB). She had been the Chief of the WTB's Public Safety and Critical Infrastructure Division (PSCID). The FCC stated in a release [PDF] that she will "oversee strategic and long-range planning, assist in Bureau management, provide staffing and support for the Bureau Chief, and advise the Bureau Chief on key policy initiatives". Michael Wilhelm was named the new Chief of the PSCID. The FCC stated in a release [PDF] that he will "oversee policy, regulatory and licensing matters related to public safety entities, the Nation’s critical infrastructure industries, and private wireless radio services". Before joining the FCC, Terry worked for the law firm of Dow Lohnes & Albertson, and Wilhelm worked for the law firm of Verner Liipfert, which is now a part of Piper Rudnick.

8/11. Kevin Brock was named Assistant Director for the Office of Intelligence at the Federal Bureau of Investigation (FBI). He was previously the Special Agent in Charge of the Cincinnati Division. He has worked for the FBI since 1983. See, FBI release.

More News

8/11. President Bush spoke at an event in Albuquerque, New Mexico. One of the topics that he discussed was computer programs that assist visually impaired users. He said that "one of the great advances of our era is technology. There's fantastic technological opportunities for the visually-impaired to be able to have a computer that speaks to them." He continued that "one thing we can do is help members of our community who need this kind of program. We can help them with financial aid to buy them." He added that "the role of government is to help people help themselves." See, transcript.

8/11. The Department of Justice's (DOJ) Antitrust Division announced that it has, along with BellSouth and SBC, "reached an agreement to seek a modification to a consent decree that currently prohibits the companies from reacquiring previously divested spectrum licenses in California and Indiana. The proposed modification would allow SBC and BellSouth, through their joint venture Cingular Wireless LLC, to reacquire certain of the divested spectrum licenses as part of their planned acquisition of AT&T Wireless Services Inc., which is currently under separate investigations by the Department and the Federal Communications Commission. The requested modification, which was filed today in the U.S. District Court in Washington, D.C. and which must be approved by the court, is subject to the condition that the companies not acquire control over other spectrum currently being used by AT&T Wireless in five of the license areas in Indiana." See, DOJ release.

8/6. The Federal Communications Commission (FCC) filed a petition for rehearing en banc [15 pages in PDF] with the U.S. Court of Appeals (3rdCir) in Prometheus Radio Project v. FCC. The Appeals Court issued its opinion [213 pages in PDF] on June 24, 2004, overturning some of the FCC's media ownership rules.

8/4. A grand jury of the U.S. District Court (CDCal) returned an indictment that charges six individuals in Romania and the U.S. in connection with hacking Ingram Micro's online ordering system. The Office of the U.S. Attorney (CDCal) stated in a release that "The indictment alleges that Calin Mateias hacked into Ingram Micro's online ordering system and placed fraudulent orders for computers and computer equipment. He directed that the equipment be sent to dozens of addresses scattered throughout the United States as part of an Internet fraud ring." It further states that after Ingram Micro blocked deliveries to Romania, where Mateias lives, he recruited persons in the U.S. to set up mail drops. The U.S. defendants are Olufemi Tinubu, Tarion Finley, Valeriu Crisovan, Jeremy Long, and Warren Bailey. The USAO release further states that "All six defendants are charged with conspiring to commit mail fraud by causing Ingram Micro to ship computer equipment based on the false pretenses that the equipment was ordered by legitimate customers. In addition to the conspiracy count, Mateias is charged with 13 mail fraud counts; Tinubu and Finley are charged with three mail fraud counts; Crisovan is charged with six mail fraud counts; and Long is charged with four mail fraud counts for shipments."

Blaster Worm Defendant Pleads Guilty

8/11. Jeffrey Lee Parson plead guilty in U.S. District Court (WDWash) to intentionally causing and attempting to cause damage to a protected computer in violation of 18 U.S.C. §§ 1030.

The Office of the U.S. Attorney for the Western District of Washington stated in a release [PDF] that "According to the plea agreement, PARSON admitted that he created his worm by modifying the original MS Blaster worm and adding a mechanism that allowed him to have complete access to infected computers. PARSON then infected approximately fifty computers that he had previously hijacked with his worm. From those fifty computers, PARSON's worm spread to other individual computers. PARSON's worm then directed those infected computers to launch an attack against a Microsoft web site."

See also, criminal complaint filed on August 28, 2003, and story titled "FBI Makes Arrest In Connection With Variant of Blaster Worm" in TLJ Daily E-Mail Alert No. 730, September 2, 2003.

Washington Tech Calendar
New items are highlighted in red.
Thursday, August 12

The House and Senate are in recess through September 6.

Deadline to submit comments to the Library of Congress in response to its notice of proposed rulemaking (NPRM) regarding amendments its regulations to provide for the reporting of uses of sound recordings performed by means of digital audio transmissions pursuant to statutory license for the period October 28, 1998, through March 31, 2004. See, notice in the Federal Register, July 13, 2004, Vol. 69, No. 133, at Pages 42007 - 42010.

Monday, August 16

9:30 AM. The Senate Governmental Affairs Committee will hold a hearing titled "Reorganizing America's Intelligence Community: A View from the Inside". Location: Room 342, Dirksen Building.

9:30 AM. The Senate Commerce Committee will hold a hearing on titled "9/11 Commission Recommendations on Transportation Security". The witnesses will be Thomas Kean (Chairman of the 9/11 Commission), Lee Hamilton (Vice-Chairman of the 9/11 Commission), and Asa Hutchinson (Under Secretary for Border and Transportation Security, Department of Homeland Security). See, notice. Location: Room 253, Russell Building.

Deadline to submit comments to the Federal Communications Commission's (FCC) Consumer and Governmental Affairs Bureau regarding informal complaints submitted to the FCC regarding slamming, or the unauthorized change of a subscriber's selection of telephone exchange or telephone toll service. See, FCC notice [PDF], and notice in the Federal Register, August 4, 2004, Vol. 69, No. 149, at Pages 47152 - 47153.

Deadline to submit reply comments to the Federal Communications Commission (FCC) regarding reserve prices, minimum opening bids, and other auction procedures for the FCC's broadband PCS spectrum auction (Auction No. 58), which is scheduled to commence on January 12, 2005. See, FCC Public Notice [PDF] (DA 04-2451).

Tuesday, August 17

9:30 AM. John Muleta, Chief of the Federal Communications Commission's (FCC) Wireless Telecommunications Bureau, will hold a briefing. The FCC notice states that this briefing is "for members of the media" and that persons planning to attend should contact Lauren Patrich at 202 418-7944 Location: FCC, 445 12th Street, SW, Room TW A-402/A-442.

1:30 - 4:00 PM. The Federal Communications Commission's (FCC) WRC 07 Advisory Committee, Informal Working Group 1: Terrestrial and Space Science Services, will meet. See, notice [PDF]. Location: FCC, 445 12th Street, SW, 8th Floor, Room 8-B411 (Conference Room #5).

6:00 - 8:15 PM. The DC Bar Association's Intellectual Property Law Section and Computer and Telecommunications Law Section will host a continuing legal education (CLE) program titled "Introduction to Anti-Spam Laws". The speakers will be Jason Levine (Covington & Burling) and Samuel Kaplan (Department of Justice). Prices vary. See, notice. For more information, contact 202-626-3488. Location: D.C. Bar Conference Center, B-1 Level, 1250 H Street, NW.

Wednesday, August 18

RESCHEDULED FOR SEPTEMBER 2. 1:30 - 3:30 PM. The Federal Communications Commission's (FCC) WRC 07 Advisory Committee, Informal Working Group 5: Regulatory Issues, will meet. See, notice [PDF]. Location: The Boeing Company, Arlington, VA. See, rescheduling notice [PDF].

Thursday, August 19

10:00 AM. The Senate Judiciary Committee will hold a hearing titled "The 9-11 Commission and Recommendations for the Future of Federal Law Enforcement and Border Security". Location: Room 226, Dirksen Building.

12:00 NOON - 1:30 PM. The DC Bar Association's International Law Section and Antitrust and Consumer Law Section will host a panel discussion titled "The Reach Of U.S. Antitrust Law After Empagran". The subject will be the U.S. Supreme Court's June 14, 2004 opinion [23 pages in PDF] in F. Hoffmann-La Roche Ltd., v. Empagran, S.A. The speakers will be Steven Mintz (Department of Justice, Antitrust Division), Peter Orszag (Brookings Institution), Elaine Metlin (Dickstein Shapiro), and Jonathan Franklin (Hogan & Hartson). See, notice. Prices vary from $10-$15. For more information, call 202 626-3463. Location: Fried Frank, 1001 Pennsylvania Ave. NW.

6:00 - 9:15 PM. The DC Bar Association's Telecommunications Law Section will host a continuing legal education (CLE) program titled "New FCC Media Ownership Rules Made Simple". The speakers will be Tom Davidson (Akin Gump) and Gregory Masters (Wiley Rein & Fielding). Prices vary. See, notice. For more information, contact 202-626-3488. Location: D.C. Bar Conference Center, B-1 Level, 1250 H Street, NW.

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