How the 9th Circuit drove secondary cybersquatting liability off the cliff
In December 2013 I wrote about and linked to the devastating critique by the diva of secondary trademark liability, Jane Coleman, of the Ninth Circuit’s decision reading contributory liability for cybersquatting out of the law in Petroliam Nasional Berhad v. GoDaddy.com, 737 F.3d 546 (2013).
But wait. There’s more. Now that she has sent her annual update of Secondary Trademark Infringement to Bloomberg BNA, she’s gunning for (more) bear in a new post at her blog called “How the 9th Circuit Veered Off Course in Petroliam Nasional Berhad (Petronas) v. GoDaddy.com: The Misapplication of Central Bank of Denver, N.A. v. First Interstate Bank of Denver, N.A.
We’ve had a lot to say — and with good reason — about Petroliam Nasional Berhad (Petronas) v. GoDaddy.com, Inc., the Ninth Circuit decision that held there is no cause of action for contributory cybersquatting under the Anti-Cybersquatting Consumer Protection Act (ACPA), which was passed as an amendment to the Lanham Act in 1999. This ruling was no mere “development”; it was a great upheaval in the law. The court’s analysis is at odds with the plain meaning of the statute, its legislative history, and the contributory liability case law construing it. We first reported the decision as a blog post here. A lengthier analysis appeared in the Winter 2014 issue of Bloomberg BNA’s Books Monitor. And the case gets the million-dollar treatment in the upcoming 2014 Supplement to Secondary Trademark Infringement. Each time we looked at the opinion, it became harder to understand it.
In addition to the issues we’ve already addressed is the less obvious but equally problematic dependence by the court on Central Bank of Denver, N.A. v. First Interstate Bank of Denver, N.A (Central Bank), which involved aiding and abetting liability under the SecuritiesExchange Act of 1934 (the “Exchange Act”).The GoDaddy court relied on that Supreme Court case to help answer an old question that had already been answered, albeit not in the cybersquatting context: Should courts apply common law principles of secondary liability to the Lanham Act?
Both the Supreme Court and subsequent circuit courts have done so for decades. . . .
Heh. “The court’s analysis is at odds with the plain meaning of the statute, its legislative history, and the contributory liability case law construing it.” Otherwise, no problem, huh?
That means you, Supreme Court!