e-Commerce Docket Sheet

A defendant's acquisition of domain names containing a plaintiff's trademark and their use solely to redirect Internet users to the defendant's Web site does not violate the Lanham Act, where no further use of the trademark term was made. Global Vision Products v. Pfizer Inc., 04 Civ. 9198 (LAK), 2006 U.S. Dist. LEXIS 6042 (S.D.N.Y. Feb. 14, 2006). In granting summary judgment to the defendant, the court noted that the defendant's evidence concerning its intent in acquiring the domain names and their actual use was uncontradicted by the plaintiff. The evidence established that the defendant's predecessor had acquired the domain names in anticipation of using them with a product, later abandoned, that was not competitive with the plaintiff's product, and that the trademark term was never used on the Web site to which the domain names redirected traffic. The court concluded that the defendant had not made actual use of the trademark term in commerce, and that this 'exceptionally limited' use of the trademark term was unlikely to cause consumer confusion. The court also ruled that the uncontradicted evidence showed that the defendant did not register the domain names with 'a bad faith intent to profit from' the use of the mark, within the meaning of the federal Anticybersquatting Consumer Protection Act.

The failure of a student-loan processing firm to encrypt nonpublic customer data stored on a laptop stolen from an employee's home did not violate the firm's statutory duty under the Gramm-Leach-Bliley Act to secure customer financial information. Guin v. Brazos Higher Education Service Corp., No. 05-668 (D. Minn. Feb. 7, 2006). The court concluded that the firm had complied with the data-security procedures required under the Act, and that there is nothing in those requirements that prohibits an employee from working with unencrypted customer data on a laptop in a home office. The court also ruled that the firm had complied with the 'reasonable duty of care' imposed in the firm's privacy policy, because it 'had policies in place to protect ' personal information, trained [the employee] concerning those policies, and transmitted and used data in accordance with those policies.' In addition, the court ruled that without any evidence of identity theft arising from the incident, the plaintiff had failed to raise a material issue of fact with respect to sustaining an injury, which is a required element of a negligence claim.

A finding that a licensee did not engage in willful misconduct within the meaning of the liability limitation in a technology license mandates the dismissal of the licensor's trade secret misappropriation claims, as well as its breach of contract claims against the licensee. Digital Envoy, Inc. v. Google, Inc., No. 5:04-cv-1497 (N.D. Cal. Jan. 24, 2006). In November, the court found that there was no evidence that the licensee engaged in willful misconduct with respect to its use of the licensed technology; the court dismissed the licensor's breach of contract claims because the license expressly precluded liability except in the event of willful misconduct by either party. Clarifying its November ruling, the court concluded that trade secret misappropriation claims must be dismissed as well, because the contractual preclusion of liability for 'losses' was unambiguous and contained no limiting language suggesting that it applied only to breach of contract claims.

The time and money expended to monitor credit following a data theft does not satisfy the element of damages necessary to sustain an action for negligent maintenance of data. Forbes v. Wells Fargo Bank, N.A., No. 05-2409 (D. Minn. March 13, 2006). The court noted that there was no indication of any fraudulent use of the plaintiff's personal data following the theft of the computers on which unencrypted personal information was stored. The court concluded that under Minnesota law, a plaintiff may recover damages for an increased risk of harm in the future only if there is a 'reasonably certain future harm.' The court granted summary judgment dismissing the plaintiff's negligence claim, ruling that the credit monitoring expenditures were 'solely the result of a perceived risk of future harm' rather than any present injury or reasonably certain future injury.

A buyer's signature acknowledging the express language of a purchase order that incorporates an end user licensing agreement (EULA) expresses the parties' intent to be bound by the EULA and its exclusive forum-selection clause. Salco Distributors, LLC v. Icode, Inc., No. 8:05-CV-642-T-27TGW, 2006 U.S. Dist. LEXIS 9483 (M.D. Fla. Feb. 22, 2006). In granting defendant's motion to transfer venue from the plaintiff's home state to the venue dictated by the EULA, the district court rejected the plaintiff's arguments that the purchase order constituted the parties' contract and that the EULA's forum-selection clause was an additional contract term that plaintiff had not expressly accepted. The court found that the EULA was referenced in the purchase order, and that by failing to return the software within seven days, as was its right, after having the opportunity to review and accept the EULA three separate times during installation and registration of the software, plaintiff was bound by its terms, including the forum-selection clause. The court also ruled that plaintiff has not established that the new venue in Virginia was an inconvenient forum that would deprive the plaintiff of its day in court or to a specific remedy.

Parties who were in the process of negotiating a settlement agreement are not bound by an e-mailed version of the agreement where the evidence showed that the e-mailed version was a preliminary draft and the execution of a final paper document was contemplated. Poly USA, Inc. v. Trex Company, Inc., No. W.D. Va. 5:05-CV-00031 (W.D. Va. March 1, 2006). Applying Virginia law, the court rejected the argument that the e-mailed version had effectively been signed on behalf of one of the parties by virtue of having been sent through the party's
e-mail account. The court ruled that the use of a party's e-mail account to send an e-mail does not necessarily constitute an electronic signature under the Federal Electronic Signatures Act, and that the party had in fact not intended to sign the document by sending it through that e-mail account.

Assertions in a search warrant affidavit that the defendant subscribed to a Web site on which prohibited images of children were sold supported a magistrate's conclusion that there was a 'fair probability' that such images would be found on the defendant's computer. U.S. v. Gourde, No. 03-30262, 2006 U.S. App. LEXIS 5890 (9th Cir. March 9, 2006) (en banc). The court noted that the affidavit supporting the issuance of a warrant to seize and search the defendant's computer identified evidence that the defendant took affirmative steps to join the Web site and remained a member for 2 months, that the Web site advertised and made available pictures of underage girls, that the images included explicit conduct, and that during each visit to the Web site the defendant was presented with prohibited images. The court ruled that under a totality-of-the-circumstances analysis, there was probable cause to believe that the defendant viewed or downloaded prohibited images onto his computer.

The contentious litigation history between the parties, and the defendant's continuous failure to abide by a prior settlement, support a finding that the defendant registered an infringing domain name in bad faith within the meaning of the Anticybersquatting Protection Act. A1 Mortgage Corp. v. A1 Mortgage & Financial Services, LLC, No. 2:03-cv-2002, 2006 U.S. Dist. LEXIS 10767 (W.D. Pa. Mar. 16, 2006). The court issued a permanent injunction barring the defendant from using the domain name and directing an immediate transfer of the domain name to the plaintiff. The court also awarded statutory damages and attorney's fees.

Mark Infringement Not Established By
Registration, Limited Domain Name Use

A defendant's acquisition of domain names containing a plaintiff's trademark and their use solely to redirect Internet users to the defendant's Web site does not violate the Lanham Act, where no further use of the trademark term was made. Global Vision Products v. Pfizer Inc. , 04 Civ. 9198 (LAK), 2006 U.S. Dist. LEXIS 6042 (S.D.N.Y. Feb. 14, 2006). In granting summary judgment to the defendant, the court noted that the defendant's evidence concerning its intent in acquiring the domain names and their actual use was uncontradicted by the plaintiff. The evidence established that the defendant's predecessor had acquired the domain names in anticipation of using them with a product, later abandoned, that was not competitive with the plaintiff's product, and that the trademark term was never used on the Web site to which the domain names redirected traffic. The court concluded that the defendant had not made actual use of the trademark term in commerce, and that this 'exceptionally limited' use of the trademark term was unlikely to cause consumer confusion. The court also ruled that the uncontradicted evidence showed that the defendant did not register the domain names with 'a bad faith intent to profit from' the use of the mark, within the meaning of the federal Anticybersquatting Consumer Protection Act.

The failure of a student-loan processing firm to encrypt nonpublic customer data stored on a laptop stolen from an employee's home did not violate the firm's statutory duty under the Gramm-Leach-Bliley Act to secure customer financial information. Guin v. Brazos Higher Education Service Corp., No. 05-668 (D. Minn. Feb. 7, 2006). The court concluded that the firm had complied with the data-security procedures required under the Act, and that there is nothing in those requirements that prohibits an employee from working with unencrypted customer data on a laptop in a home office. The court also ruled that the firm had complied with the 'reasonable duty of care' imposed in the firm's privacy policy, because it 'had policies in place to protect ' personal information, trained [the employee] concerning those policies, and transmitted and used data in accordance with those policies.' In addition, the court ruled that without any evidence of identity theft arising from the incident, the plaintiff had failed to raise a material issue of fact with respect to sustaining an injury, which is a required element of a negligence claim.

A finding that a licensee did not engage in willful misconduct within the meaning of the liability limitation in a technology license mandates the dismissal of the licensor's trade secret misappropriation claims, as well as its breach of contract claims against the licensee. Digital Envoy, Inc. v. Google, Inc., No. 5:04-cv-1497 (N.D. Cal. Jan. 24, 2006). In November, the court found that there was no evidence that the licensee engaged in willful misconduct with respect to its use of the licensed technology; the court dismissed the licensor's breach of contract claims because the license expressly precluded liability except in the event of willful misconduct by either party. Clarifying its November ruling, the court concluded that trade secret misappropriation claims must be dismissed as well, because the contractual preclusion of liability for 'losses' was unambiguous and contained no limiting language suggesting that it applied only to breach of contract claims.

The time and money expended to monitor credit following a data theft does not satisfy the element of damages necessary to sustain an action for negligent maintenance of data. Forbes v. Wells Fargo Bank, N.A., No. 05-2409 (D. Minn. March 13, 2006). The court noted that there was no indication of any fraudulent use of the plaintiff's personal data following the theft of the computers on which unencrypted personal information was stored. The court concluded that under Minnesota law, a plaintiff may recover damages for an increased risk of harm in the future only if there is a 'reasonably certain future harm.' The court granted summary judgment dismissing the plaintiff's negligence claim, ruling that the credit monitoring expenditures were 'solely the result of a perceived risk of future harm' rather than any present injury or reasonably certain future injury.

A buyer's signature acknowledging the express language of a purchase order that incorporates an end user licensing agreement (EULA) expresses the parties' intent to be bound by the EULA and its exclusive forum-selection clause. Salco Distributors, LLC v. Icode, Inc., No. 8:05-CV-642-T-27TGW, 2006 U.S. Dist. LEXIS 9483 (M.D. Fla. Feb. 22, 2006). In granting defendant's motion to transfer venue from the plaintiff's home state to the venue dictated by the EULA, the district court rejected the plaintiff's arguments that the purchase order constituted the parties' contract and that the EULA's forum-selection clause was an additional contract term that plaintiff had not expressly accepted. The court found that the EULA was referenced in the purchase order, and that by failing to return the software within seven days, as was its right, after having the opportunity to review and accept the EULA three separate times during installation and registration of the software, plaintiff was bound by its terms, including the forum-selection clause. The court also ruled that plaintiff has not established that the new venue in Virginia was an inconvenient forum that would deprive the plaintiff of its day in court or to a specific remedy.

Parties who were in the process of negotiating a settlement agreement are not bound by an e-mailed version of the agreement where the evidence showed that the e-mailed version was a preliminary draft and the execution of a final paper document was contemplated. Poly USA, Inc. v. Trex Company, Inc., No. W.D. Va. 5:05-CV-00031 (W.D. Va. March 1, 2006). Applying Virginia law, the court rejected the argument that the e-mailed version had effectively been signed on behalf of one of the parties by virtue of having been sent through the party's
e-mail account. The court ruled that the use of a party's e-mail account to send an e-mail does not necessarily constitute an electronic signature under the Federal Electronic Signatures Act, and that the party had in fact not intended to sign the document by sending it through that e-mail account.

Assertions in a search warrant affidavit that the defendant subscribed to a Web site on which prohibited images of children were sold supported a magistrate's conclusion that there was a 'fair probability' that such images would be found on the defendant's computer. U.S. v. Gourde, No. 03-30262, 2006 U.S. App. LEXIS 5890 (9th Cir. March 9, 2006) (en banc). The court noted that the affidavit supporting the issuance of a warrant to seize and search the defendant's computer identified evidence that the defendant took affirmative steps to join the Web site and remained a member for 2 months, that the Web site advertised and made available pictures of underage girls, that the images included explicit conduct, and that during each visit to the Web site the defendant was presented with prohibited images. The court ruled that under a totality-of-the-circumstances analysis, there was probable cause to believe that the defendant viewed or downloaded prohibited images onto his computer.

The contentious litigation history between the parties, and the defendant's continuous failure to abide by a prior settlement, support a finding that the defendant registered an infringing domain name in bad faith within the meaning of the Anticybersquatting Protection Act. A1 Mortgage Corp. v. A1 Mortgage & Financial Services, LLC, No. 2:03-cv-2002, 2006 U.S. Dist. LEXIS 10767 (W.D. Pa. Mar. 16, 2006). The court issued a permanent injunction barring the defendant from using the domain name and directing an immediate transfer of the domain name to the plaintiff. The court also awarded statutory damages and attorney's fees.