Kathleen Peterson, a partner at Preston Gates & Ellis LLP, focused on strategies for fighting instances of "cybersquatting," under both the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the Anti-Cybersquatting Protection Act ("ACPA").
Addressing the UDRP, Ms. Peterson noted that the Policy has been adopted by all accredited domain-name registrars for ".com", ".net", and ".org" domain names, and provides for resolution of disputes through arbitration. Other characteristics of the UDRP are that it is typically incorporated by reference into Registration Agreements, and it requires actual service to addresses listed in registration data in the Registrar's "Whois" database. Ms. Peterson points out that in order to satisfy the Policy, the domain name must be identical or confusingly similar, the respondent must have no rights or legitimate interest in the domain name, and the domain name must be both registered and being used in "bad faith".
Ms. Peterson outlined the dispute resolution procedures under the UDRP. When a complaint is filed, a one or three-member panel is elected, and a response to the complaint must be filed 20 days after commencement of proceedings. The complainant pays fees under most circumstances, and no in-person hearings are conducted unless the panel determines it is necessary. Absent exceptional circumstances, the panel makes a decision within 14 days of appointment.
Speaking to the volume of UDRP cases heard by the World Intellectual Property Organization ("WIPO"), Ms. Peterson stated that the WIPO had handled 5,000 disputes as of May 2003, and a total of 20,000 cybersquatting cases overall. The WIPO receives an average of three UDRP matters per day, with the top five filing countries being the United States, the United Kingdom, France, Spain, and Germany.
Shifting focus of the discussion to the ACPA, Ms. Peterson noted the differences between "in rem" and "in personam" actions.
In an "in personam" action, a person is liable if he or she has a bad faith intent to profit from the mark, and registers, traffics in, or uses a domain name that is identical, confusingly similar, or dilutive to or of a distinctive or famous mark. "Bad faith" can be based on a number of factors identified in the ACPA, including bonafide non-commercial or fair use, intent to divert business to an extent that may harm goodwill, and offers to sell or transfer the domain name without having used (or having any intent to use) the domain name.
Ms. Peterson pointed out that the distinguishing characteristic of an "in personam" action under the ACPA is that the complaining party must actually find someone to bring suit against, usually the domain name registrant or its licensee.
An "in rem" action under the ACPA can be filed in any district where the domain name registrar, registry, or other domain name authority is located, and in such an action it must be shown that the plaintiff cannot obtain "in personam" jurisdiction over a person who would have been a defendant in an "in personam" action. The remedy in an "in rem" action is limited to a court order for forfeiture or cancellation and transfer.
Ms. Peterson concluded by noting: "Now that we have four years of experience with the UDRP and the ACPA we see that they are important tools in fighting cybersquatting. It's unusual for us to find legal solutions that provide such quick, cost effective results for our clients."
Next, Michael Bettinger, leader of the Intellectual Property Litigation Group at Preston Gates & Ellis LLP, discussed the Markman hearing, which in patent litigation determines the meaning and scope of the patent claims in dispute.
In the Supreme Court's Markman decision, Mr. Bettinger explained, the court held that meaning of patent claims is to be determined by judges as a matter of law, not by juries. According to Mr. Bettinger, it is now the single biggest event that happens in a patent case prior to trial. The practical considerations are enormous. Federal district court judges, whose dockets include a wide variety of criminal and civil Federal cases, now have to decide what a patent means. The judges often do not have the technical expertise of the inventors, engineers and experts, and so they rely upon the lawyers for their understanding of the patent and underlying technology. Patent cases are often won by the legal team that makes the most effective Markman presentation.
Mr. Bettinger focused on the educational role a patent litigator must assume in a Markman hearing, pointing out that federal judges typically have liberal arts, not technical backgrounds, by nature. "Your job is to take a complex task of giving meaning to patent claims and condense it down into a winning formula, to convince a federal judge." Mr. Bettinger pointed out the competing strategies, step back from the technology and focus on the plain meaning of the words used in patent claims, or to concentrate on the technical aspects of the context in which the invention and patent claims arise. "Regardless of which strategy you choose, it is important, early on in a case to have the engineers and technical folks must work closely with the courtroom litigators' strategy to articulate a persuasive argument that is technically accurate and resonates with common sense."
In preparing for the Markman hearing, counsel must closely analyze the patent file history, the limitations added during prosecution of the patent and the meaning of claim terms used in the patent. Mr. Bettinger advised counsel to look at the claims themselves and determine what the words mean. "Recent case authority says that, in determining what claims mean, you start with the words themselves, even the dictionary. Sometimes, if nothing is contrary to the dictionary meaning, you may just get a simple ordinary plain meaning for the term."
Mr. Bettinger stressed the importance of narrowing the Markman presentation to as few terms as possible to avoid overwhelming the Court. The best way to crystallize the claim terms at issue and shape the Markman debate hearing is for the litigators to work with the engineers and technical experts in synthesizing the case down to a single graphic. The graphic should present the complexities of the case in a simple, understandable fashion. Mr. Bettinger concluded "An effective graphic will become the focus of the Markman hearing. It will frame the debate in a way that favors your position on how the patent claim terms are to be construed. It will also force the legal team to articulate clearly and precisely the core of the case."