Wednesday, August 03, 2011

The Nefarious ACPA: The Nefarious Methodology #cybersquatting #acpa #dns

Methodology is the boring icky stuff of research.  For a lawyer, methodology is normally simple.  You sit down with a big stack of dusty books and read what a bunch of old dusty judges said, based on their research of what some even older dusty judges said.

With this research I wanted to do a statistical analysis of court decisions.  That meant sorting out what cases were within scope and what were outside.  In order to find every ACPA dispositive federal case since enactment of the ACPA, I used Google Scholar.  I searched for all federal cases using the term "cybersquatting," reviewed all cases cited by cases uncovered from Google Scholar and discussed in literature, and tracked new cases using a Google Scholar Alert. While this may have missed some decisions, it reasonably uncovered ACPA federal decisions of a sufficient sample size.

I was looking for dispositive cases, in other words, cases where the judge made a ruling that resolved the case (not procedural orders on whether an attorney could have additional time for discovery).  "Dispositive cases" typically include trials, motions for summary judgment, motions to dismiss, and motions for preliminary injunctions where there is no further litigation on record.  Cases only get counted once; if there is a lower court decision and an appellate decision, that's just one case in the database. And I am specifically reviewing how courts have applied the bad faith factors of the ACPA cause of action.

Not counted were litigations resolved through default (where the defendant did not respond and did not appear in court; this is particularly, although not always, true of the in rem ACPA causes of action).  This actually turns out to be quite important later on in the analysis.

This methodology favors victorious plaintiffs. For a plaintiff to be successful, the plaintiff must successfully demonstrate every element of a cause of action.  In order to be successful on an ACPA cause of action, a plaintiff must demonstrate that the plaintiff has a valid trademark entitled to protection, that the trademark is distinctive or famous, that the domain name owner used, registered, or trafficked in the domain name, and bad faith.  In order for the defendant to be successful, the defendant need only knock out one of those elements.  For example, the defendant can be dripping in bad faith, but if plaintiff does not have a trademark entitled to protection, there is no successful claim.  Furthermore, courts generally consider whether there is in fact a trademark before they consider whether there is bad faith.  This means that a significant number of ACPA litigations were knocked out prior to the court conducting a bad faith analysis.  As this research only looks at litigations that were solved with a bad faith analysis, it does not count the litigations where defendants were successful on other ACPA grounds.

So what did I come up with?  Sixty-seven cases over 11 years.  As indicated yesterday, trademark owners won 66% of the time while domain name owners won 34% of the time.  The number of ACPA dispositive cases resolved per year has been inconsistent, with a dramatic increase in 2010. 

It's impressive to see how few cases there are each year.  When I was a judicial clerk, my judge was on a Civil II Fast Track docket.  I forget how many hundreds of cases were filed each year on our docket, and how many were pending at any given time.  The cases would go through discovery, mediation, and negotiations…. What was left went to trial.  And as I have frequently recounted to friends, what was left fell into two categories: (1) cases involving at least one incompetent attorney who simply could not do a proper analysis of the facts of his case and negotiate a settlement, or (2) a truly difficult or complex case where the resolution was anything but clear.  Those cases that went to trial frequently represented less than 5% of the litigations initially filed with the court.  I certainly expect something similar is happening here.  The cases that make it to a fully resolved court case tend to be the tip of the iceberg of the litigations initially filed in courts.
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