Academy of Motion Picture Arts & Sciences v. Network Solutions, Inc., 989 F. Supp. 1276 (C.D. Cal. 1997) (full-text).
Factual Background Edit
The Academy sued NSI for trademark dilution, contributory trademark dilution, trademark infringement, contributory trademark infringement, wrongful use of a registered mark, contributory wrongful use of a registered mark, false designation of origin, and unfair competition because NSI permitted third parties to register domain names similar to the Academy’s federally registered ACADEMY AWARDS and OSCAR trademarks.
Trial Court Proceedings Edit
The court found the Academy unlikely to succeed on the merits of any of its claims. As to dilution, the court agreed with NSI that the mere act of registering and cataloging domain names does not constitute a commercial use of a mark required by the FTDA. Absent evidence that NSI used the Academy’s marks to promote its registration services, the use-in-commerce requirement was not met.
The court similarly rejected the Academy’s claims for direct trademark infringement and unfair competition because the Academy had once again failed to show that NSI had made commercial use of its marks. In discussing the Academy’s unfair-competition claim, the court noted that the act of registering a domain name does not cause goods and services to enter into commerce.
The court also held that a preliminary injunction was unwarranted with respect to the Academy’s contributory dilution claim because plaintiff provided no statutory basis or case precedent recognizing such a claim.
Turning to the Academy’s claim for contributory trademark infringement, the court held that the Academy failed to adequately prove the claim because it could not show that NSI knew that the domain name registrants would use the domain names to engage in trademark infringement.
- This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA).