IP ADR Blog

What follows is a Press Release from the National Arbitration Forum

MINNEAPOLIS, June 24, 2008—The National Arbitration Forum issued decisions on the rights to YouTube.net, CTV.com, and AmericanGirl.net. Conflicts over domain names are on the rise. The dispute resolution provider handled 1,658 domain disputes in 2006, a 21 percent increase from the prior year, and 1,805 disputes in 2007.

The following decisions were made in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) by independent and neutral arbitrators on the National Arbitration Forum Panel.

YouTube.net

Complainant Google Inc., owner of the popular video sharing site YouTube.com, filed a complaint on March 11, 2008 against YiWuShi Shuangfeng Jixie Youxian Gongsi of China, the registered owner of YouTube.net.

The National Arbitration Forum Panelist followed traditional UDRP principles in disregarding the functional “.net” generic top-level domain (gTLD) when determining the “YouTube” domain name was identical to Complainant’s YOUTUBE trademark. The arbitrator also found that the website at the domain name advertises and displays adult-oriented content. The owner of YouTube.net registered and used the domain name in bad faith based on the fact that it was using Complainant’s well-known mark to provide such content. For these reasons, the National Arbitration Forum granted transfer of YouTube.net to Google Inc. on May 5, 2008.

CTV.com

Complainant CTV Inc., a Canadian English language television network, brought a complaint against CTV.com owner Murat Yikilmaz of Turkey, on April 11, 2008.

Complainant has used the CTV mark since 1961 to identify its goods and services, and registered the CTV mark in 1974 with the Canadian Intellectual Property Office. A three member Panel found that the domain name was identical to the CTV trademark. The Panel determined that the three letters which constitute the essence of the disputed domain name are generic initials used by many parties to identify many goods and services. The Panel found Respondent to be in the domain name warehousing business, specializing in three character domains. Respondent’s use of CTV.com to attract Internet traffic is a legitimate business interest, especially in this case where none of the advertisements are related to Complainant’s television operations. Additionally the Panel found CTV Inc. had not proven the domain name was registered or used in bad faith. The majority of the Panel denied Complainant’s requested relief on June 10, 2008. Panelist Kerans dissented in the decision, inferring that Respondent likely was aware of CTV Inc.’s business and mark in Canada and the U.S.

AmericanGirl.net

American Girl, LLC, a subsidiary of Mattel that manufactures dolls and books for young girls, submitted a complaint against The Tidewinds Group, Inc on February 25, 2008 seeking transfer of AmericanGirl.net.

The National Arbitration Forum arbitrator found that the domain name was identical to the AMERICAN GIRL trademark, which Complainant had submitted into the record. Further, Respondent used the site to display links to commercial websites, proving no legitimate interest in the disputed domain name. Finally, the Panelist looked at the registration and use of the disputed domain name. It was found that Respondent registered the domain name in 2002, three years before the application filing date for the AMERICAN GIRL mark that Complainant provided. While noting that Complainant provided no evidence that it possessed common law rights or any other trademarks previous to 2005, the National Arbitration Forum Panelist found no bad faith registration or use and denied transfer of AmericanGirl.net to American Girl, LLC on April 16, 2008.

To file a claim see www.domains.adrforum.com. Contact domaindispute[at]adrforum.com with questions. Media please contact Christina Doucet at 952-516-6486 or cdoucet@forthrightsolutions.com.

About the National Arbitration Forum
Based in Minneapolis, Minnesota, United States, the National Arbitration Forum is an international leader in arbitration and mediation services. An innovator in the industry, the National Arbitration Forum was appointed an approved provider of the Uniform Dispute Resolution Policy (UDRP) by the Internet Corporation of Assigned Names and Numbers (ICANN) in 1999. Since then, over 10,000 domain name disputes worldwide have been filed through the National Arbitration Forum’s state-of-the-art case management system, now optimized by Forthright. For more information, visit www.domains.adrforum.com.

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Here's the opinion:  comment soon.

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Thanks to Colm Brannigan for posing this question to the LinkedIn Legal Community:  What Qualities Do Counsel Look for in a Mediator? 

We've already posted -- here -- the answer of L.A. Sheppard Mullin attorney Jim Burgess.

Below, we give you the thorough and insightful answer of Vermont attorney, mediator and arbitrator Richard Cassidy of Hoff Curtis. 

From Richard's response you can tell that he understands mediation theory and practice from every angle you want a mediator to know. 

So if you practice in Vermont and are looking to settle a commercial case (he also does labor and personal injury) you probably couldn't do much better than to give Richard a call. 

So herewith and all that, we give you Ricahrd Cassidy's thoughts on what qualities lawyers are looking for in mediators:

From my perspective, it’s important to analyze what you want from the mediation and attune your selection to your needs and goals.

Choice of Mediator -- "Someone Who Will Have Credibility with my Opponents"

In selecting a mediator, I am often most in need of someone who will have credibility with my opponents. I do my best to understand the strengths and weaknesses of my case before I get to mediation. Hopefully, there is little a third party can teach me about my own case. Of course, it is human to be imperfect and so sometimes there is more to learn at mediation than I would prefer. So good judgment is important.

Case Assessment

But assuming that enough work has been done to properly assess the case before mediation, I am often hoping to use the mediator’s knowledge and credibility to help persuade my opponents to see things more my way. In such cases, I am happy to agree on whomever my opponent wants, so long as they have the basic skills.

A Mediator My Client Will Respect:  "Seeing a Neutral Learn About the Case and Then Point Out Important Weaknesses Can Be Very Powerful"

Sometimes, however, client control is a real issue. You wonder why some clients hire you and ignore your advice, but it happens. Seeing a neutral learn about the case and then point out important weaknesses can be very powerful for clients who do easily accept a realistic evaluation of their prospects. So, on such occasions I am looking for a mediator my client will respect.

The Basics:  Interpersonal Skill, Patience, Persistence, Stamina and Optimism

Of course, there are basics that one almost always wants. Good interpersonal skills are essential. An understanding of the mediation process and technique is critical. I look for lots of patience, persistence, stamina and optimism. (I have seen many a mediator throw away a real chance of settlement by trying to move too fast or quitting too early. As a mediator, I do not quit until at least one party insists that I do so). Timing is often important. In most of my cases, knowledge of the litigation process is very important because it gives the mediator the ability to point out the problems of the “best” alternative to a negotiated settlement.

Substantive Knowledge

Knowledge of the substance and dynamics of the particular subject area is very important. For example, I do lots of work as an advocate and as a mediator in employment litigation. Many plaintiffs and many plaintiffs’ lawyers don’t understand up front how hard the process is going to be for them, and how bad the statistics are for the employee. A mediator who can genuinely show empathy for the plaintiff’s plight and deliver the bad news when it’s called for is what is needed.

Co-Mediating with Experts

Sometimes, in more esoteric subject areas, substantive knowledge can be hard to find. As a mediator I have successfully occasionally co-mediated with experts (not necessarily mediators) in fields that are outside of my usual range, such as in patent cases.

Evaluator or Facilitator?

On the facilitative/evaluative question, I usually want a mix. It is almost always a mistake for the mediator to try to impose his or her view of the right the resolution on the parties. But for cases in litigation or headed there, I find that a mediator who is unwilling to express any view of the case is usually not very helpful. I understand that, particularly in domestic relations matters, many mediators are unwilling to do any evaluation at all. I understand that if the real goal of the process is not to resolve the specific issues then holding the parties attention but to transform their communication so that they can resolve things themselves in the future, evaluation can be a road block. Ordinarily, however, in my cases (civil litigation, mostly employment, commercial, construction, or personal injury disputes) someone usually needs the kind of reality check that a few well timed evaluative comments can provide.

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(photo:  Victory is Mine! by Rentahamster)

Just a note for the moment when you need to convince your client that it's time to settle the patent litigation.  

No, I'm not suggesting you tell them about the potential for a patent malpractice action (this one in the news to tell us that patent malpractice litigation must be waged in federal, not state, court).

I leave the analysis of the case law to Patently O's coverage here.  My purpose is simply to remind everyone of just how endless patent litigation can be.  

First the patent litigation.  Then the motion to arbitrate some portion of that litigation.  Motion denied.  Appealed.  Reversed.  Litigation stayed.  Arbitration hearing conducted.  Decision made.  Reconsidered.  Rehearing.  Decision.  Litigation re-opened.  Trial.  Appeal.  Reversal.  Remittitur.  Retrial.  Final judgment. 

Then the malicious prosecution action. 

And if we're really really really unlucky, the patent malpractice litigation. 

Breathe in you win, breathe out you lose, breathe in, breathe out . . . . . wouldn't you really rather control your own destiny?

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by Eric van Ginkel

You can probably guess that  most of us here at the IP ADR Blog think it's a good idea to  include in your ADR clauses specialty requirements for the arbitration or mediation of your  commercial or IP disputes. 

Not to mention a bad idea to serve your infant beer before bed! 

The need for an ADR neutral with specialized legal or industry knowledge is particularly true for patent litigation but also important for the other "soft" forms of IP disputes.  

Let's not go overboard however, by requiring that the arbitrator have at least twenty-five years experience in trademark litigation, an office in Santa Barbara County, belong to a lawfirm with at least five offices and no fewer than 1,000 attorneys, and . . . . serve his clients beer before bed!

Riduculous you say?  Don’t be surprised, I have seen weirder clauses.

The Beer Before Bed Amendment to the Business and Professions Code

I was reminded of this problem today when I came across a proposed amendment to the Business and Professions Code introduced by Gloria Negrete McLeod, California State Senator for the 32nd District (San Bernardino County) back in February of this year. It is currently on Governor Schwarzenegger’s desk awaiting his signature.

This is a good example of legislators going overboard.  

The proposed legislation requires the arbitration of disputes concerning the termination of an existing wholesaler by a company aquiring a beer brewery.  If the terminated wholesaler believes the new brewer has not paid him the fair market value of his distribution rights, the dispute over compensation must be submitted to arbitration. So far so good.  But here's where the legislation goes astray.

The proposed amendment requires that the arbitration of the dispute must be held

through a private arbitration services provider with at least three offices in California and a statewide roster of at least 70 neutral arbitrators, of which at least 30 have prior experience as a sole arbitrator in franchise, distribution, or related business litigation.

We don't even want to go tothe "additional amendments" that will govern the "arbitration process."

So, as in all things, moderation is key.

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We learn this morning from the National Arbitration Forum that a federal district court in the District of Columbia has held that inventorship claims under 35 U.S.C. § 256 are arbitrable. In particular, the Court held that an arbitrator has the power to require parties to a technology agreement to correct a patent by changing the names of the inventors from those presently designated to those required to be designated in the event of breach.   If the respondents failed to comply, held the court, "the arbitration award could be converted into a court order for correction."  

The case is INVISTA North America, S.a.r.l. v. Rhodia Polyamide Intermediates S.A.S., No. 06-2180, 2007 WL 2230273 (D.D.C. Aug. 6, 2007),

For the full text of NAF's article on this important decision, click here. 

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(left:  Mr. Alcalá)

DLA Piper recently released its terrific International Arbitration Newsletter for the Summer of 2007. 

Of greatest interest to us is Juan M. Alcalá's article  Narrow Legal Issue, Broad Philosophical Divide:  Hall Street Associates, L.L.C. v. Mattel, Inc.  

"The issue before the Court," he reports, "is relatively straight forward—may parties to an arbitration agreement agree to non-statutory grounds for vacating an arbitration award (including de novo review of legal findings)?"

The First, Third, Fourth, Fifth, and Sixth Circuits all appear to answer the question in the affirmative. See, e.g., Puerto Rico Telephone Co., Inc. v. U.S. Phone Mfg. Corp., 427 F.2d 21 (1st Cir. 2005), cert. denied, 126 S.Ct. 1785 (2006); Roadway Package System, Inc. v. Kayser, 257 F.3d 287 (3rd Cir. 2001), cert. denied, 534 U.S. 1020 (2001); Syncor Int’l Corp. v. McLeland, 120 F.3d 262 (4th Cir. 1997), cert. denied, 522 U.S. 1110 (1998); Gateway Technologies, Inc. v. MCI Telecommunications Corp., 64 F.3d 993 (5th Cir. 1995); Jacada, Ltd. v. Int’l Mktg. Strategies, 401 F.3d 701 (6th Cir.), cert. denied, 126 S.Ct. 735 (2005).

The Ninth and Tenth Circuits disagree. See Kyocera v. Prudential-Bache Trade Services, Inc., 341 F.3d 987 (9th Cir. 2003) and Bowen v. Amoco Pipeline, Inc., 254 F.3d 925 (10th Cir. 2001).

This simple legal issue, however, is premised on a fundamental philosophical divide concerning the purpose of the FAA. Those courts favoring expanded review of arbitration awards argue that the FAA’s ultimate purpose is to enforce the terms of the arbitration agreement. Those courts with a narrow interpretation of the FAA contend that allowing private parties to contract for broader review standards would “jeopardize the very benefits of arbitration, rendering informal arbitration merely a prelude to a more cumbersome and time-consuming judicial review process.” Kyocera, 341 F.3d at 999

For the remainder of this cogent, timely and thorough analysis, click here.

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We're delighted to have as one of our bloggers international IP mediator and arbitrator Eric Van Ginkel.

With a background in both transactional and litigation law practices, Eric has been dealing with complex international corporate and business transactions for more than three decades. 

In addition to his IP practice, Eric has also litigated cases and advised clients concerning co-development deals, mergers and acquisitions, commercial real estate developments, straight and syndicated loans, and license and distribution agreements.

Eric acted as in-house counsel for almost ten years, and in that capacity, supervised the litigation of a substantial number of cases in the member countries of the European Union.

Eric is an arbitrator and mediator for the International Chamber of Commerce (ICC), the American Arbitration Association (AAA), the International Centre for Dispute Resolution (ICDR), the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), the Australian Centre for International Commercial Arbitration (ACICA), and the International Mediation and Arbitration Center (IMAC).

He also serves on the Panels of the United States District Court (Central District of California), the Los Angeles Superior Court and the California Court of Appeal (Second Division).

In addition to his LL.M. in dispute resolution from the Straus Institute, Eric holds Juris Doctor degrees from both the Law Faculty of Leiden University in the Netherlands and Columbia Law School in New York City. Being a Netherlands citizen living in California (having lived both in Europe and the United States), Mr. van Ginkel is sensitive to cross-cultural issues.

Eric is fluent in Dutch, English, French and German, and somewhat proficient in Italian and Spanish.

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(photo:  Surfer Girl by Chris)

Why an IP ADR Blog?

We litigators are trained to organize party interests around legal theories. Our clients, however, organize their thinking around their business interests, which often involve potential synergies with the competition.

Whether you're negotiating the settlement of your IP case or striving to obtain a more efficient arbitral resolution, it's helpful to have a "coach" or neutral who is as attuned to potential business solutions to legal problems and s/he is to the legal strategies already being pursued.

That's why we're joining the high-level conversation about IP commercial, regulatory, legal and technical issues already underway in the IP blogs we've listed in our sidebar.

Collaboration and reciprocity are the by-words of the blogosphere and the key to the settlement -- or the effective management -- of complex IP litigation.

We're looking forward to learning from those already at the table and hopeful that we'll be able to add value for everyone who preceded us here, be they transactional or trial attorneys, General Counsel or the executives they serve.

 We're here to listen and to connect. 

 Whether you were first introduced to us by our (old) blogger site or are finding us for the first time here, please pause to leave us a comment, letting us know who you are and how we might best serve you.

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Appeal of Arbitration Awards Should Be Permissible 

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(photo by Bansky)

by Eric Van Ginkel

If you and opposing counsel enter into a post-dispute arbitration agreement that involves a copyright infringement issue, be sure to dismiss the action that was pending in the US district court. If not, chances are you will be held liable for the winning party’s legal fees incurred in post-award proceedings under 17 USC § 505.

That is the lesson I draw from the decision of the US District Court for the Northern District of California in Brayton Purcell LLP v. Recordon & Recordon, --- F.Supp.2d ---, 2007 WL 1462365 (N.D. Cal., May 18, 2007) (currently available only on Westlaw).

What happened?

The law firm Brayton Purcell, headquartered in Novato, California (near San Francisco), discovered that the website of San Diego-based Recordon & Recordon had materials on elder abuse that looked a lot like Brayton Purcell’s page on that subject. Recordon brought the web designer, Apptomix, into the lawsuit, which argued that it had developed that page based on independent research.

The three parties decided to submit the dispute to binding arbitration. In May 2006, the arbitrator found in favor of Brayton Purcell, and the two defendants sought to vacate the award. The district court denied the motions to vacate and confirmed the award. Then Brayton Purcell filed a motion for post-arbitration fees and costs.

The Court’s Holding

The court found that Section 505 of the Copyright Act applied to this case.  

As this case was not dismissed by the parties when they agreed to submit the dispute to arbitration, this case remains a “civil action under this title” within the literal meaning of § 505. In this regard, cases cited by Recordon denying post-arbitration fees are inapposite. They do not involve a continuation of a court case in which interim arbitration has taken place, but rather the initiation of an independent lawsuit seeking confirmation of an arbitration award.

In other words, [t]he analysis might be different had the parties in the case at bar stipulated to a dismissal of the case as part of their agreement to submit to binding arbitration. There would no longer have been a “civil action” under the Copyright Act pending before the Court, and any new court filing seeking to confirm the arbitration award arguably would not be a “civil action” under the Copyright Act.

Rather, federal jurisdiction for such a suit would have to have been independently established, e.g., diversity. To be absolutely clear on the matter, the court stressed that in agreeing to binding arbitration, the parties could have stipulated that fees would be awarded only in arbitration, and not for any post-arbitration proceedings.

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Les Weinstein, who remains affiliated with the law firm of Shelton Mak Rose Anderson PC while arbitrating national and international intellectual property cases with the American Arbitration Association, was my boss, mentor and teacher more than twenty years ago (yikes!) when we practiced together at Pepper, Hamilton & Scheetz.

It's a pleasure and privilege to welcome Les as one of the contributors to the IP ADR Blog.  Since meeting one another again in the ADR world, Les and I have co-mediated copyright and patent infringement cases and I have assisted him with some of the most sophisticated and complex arbitrations, including a billion dollar infringement case between two IP industry titans. 

Les has over 40 years of experience as a trial, counseling and appellate lawyer specializing in patent, copyright and trademark law, as well as the law of competition (antitrust, trade secrets, unfair competition and unfair trade practices). Mr. Weinstein's knowledge of patent law and practices is particularly deep.

He is not only registered to practice before the U.S. Patent and Trademark Office, he had early experience as a Patent Examiner, before which he worked as an engineer to ITE Circuit Breaker Co.

No stranger to the courtroom, Mr. Weinstein worked for the U.S. Department of Justice in Washington D.C. under an appointment to the Attorney General's Honor Program. It was there that Mr. Weinstein earned his trial stripes before going on to a long and distinguished private career as a partner with McKenna, Conner & Cuneo; name partner with Bleecher, Collins & Weinstein, and Senior Partner with the law firms of Pepper, Hamilton & Scheetz, Graham & James LLP, Squire Sanders & Dempsey LLP and Sheldon Mak.

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