User:Frgx/sandbox
Microsft Corp. v Shah, was a Anticybersquatting Consumer Protection Act case heard before the United States District Court for the Western District of Washington. The case is notable for the court's expansion of the ACPA liability to include contributory cybersquatting.
Background
[edit]The defendant, Amish Shah, registered domain names containing Microsoft trademarks, as well as induced others to register such domains. Consumers seeking Microsoft products could mistakenly end up at the defendants website, and be tricked into downloading the defendants' products. In addition to cyber-squatting, the defendant also produced instructions (including a video) on how to use Microsoft's marks in a misleading manner to maximize traffic to the website. Shah also offered a software system that enabled buyers to easily create websites incorporating Microsoft's marks.
On the basis of the latter, Microsoft made claims for contributory cybersquatting and contributory dilution, in addition to cybersquatting, trademark dilution, and trademark infringement. Defendants moved to dismiss the claim for contributory cybersquatting and contributory dilution arguing that such causes of action are not recognized under law. The Anticybersquatting Consumer Protection Act (ACPA) created liability only for registering, trafficking or using a domain name that is identical or confusingly similar to a protected mark. Additionally, the ACPA required proof that the defendant acted with 'bad faith with intent to profit from the mark.'
Opinion of the Court
[edit]Judge Ricardo Martinez decided in favor of Microsoft. The court first noted that while contributory trademark infringement is well established, the ACPA, unlike trademark law, required a showing of 'bad faith intent.' Previous courts, notably in Ford Motor Co. v. Greatdomains.com, reasoned that a higher standard was required for claims of contributory cybersquatting. The court noted that the decision of the Ford court indicated that the court had recognized a cause of action under contributory cybersquatting, but found in favor of GreatDomains.com since Ford failed to show the requisite bad faith by GreatDomains.com. The Judge noted that in this particular case, the facts clearly demonstrated bad faith with an intent to profit, and as such denied the defendant's motion to dismiss.
While the ACPA doesn't explicitly address causes of action under contributory liability, the court noted that action under the ACPA is a tort-like cause of action, and traditional principles of tort law impose liability on those who assist or contribute in the infringement.
Impact
[edit]The court's decision notably expanded liability under the ACPA to include contributory damages, basing its decision on traditional principles of liability of tort law. Several scholars noted that the court's decision provides a precedent for expanding ACPA liability, beyond actions explicitly prohibited by the text of the law.