Criminalizing Bootlegging is Constitutional

The U.S. Second Circuit Court of Appeals recently ruled that Congress, pursuant to the U.S. federal anti-bootlegging statute (18 U.S.C. § 2319A) (the "Act"), has the power to outlaw "bootlegging", a term used to describe the act of illegally selling goods. This decision overturned an earlier trial court decision that held that the Act violated Article 1, Section 8, Clause 8 of the U.S. Constitution (otherwise referred to as the "Copyright Clause") since it appeared to provide for an indeterminate term of copyright protection over live performances. The Copyright Clause requires that authors' exclusive rights to their works be secured for only a limited time (currently 70 years from the date of an author's death under the U.S. Copyright Act). The Court of Appeals, however, upheld the Act under Article 1, Section 8, Clause 3 of the U.S. Constitution which gives Congress the power to regulate commerce among the states. While the Court of Appeals' decision reopens the possibility of charges being laid under the Act, the statute may be open to further challenges, including whether it violates the constitutional right to Freedom of Expression.

This entry first appeared in the June 28, 2007 edition of lawsof.com. For additional information, click here. For a copy of the anti-bootlegging statute, click here.

CIRA Disallows Complaint Over yellowpage.ca

In a dispute over the domain name yellowpage.ca, a panel appointed under the Canadian Internet Registration Authority's Domain Name Dispute Resolution Policy dismissed the complaint of Yellow Pages Group Co. ("Yellow Pages"), a Canadian-based directory publisher, against Coolfred Co. ("Coolfred"), an Ontario-based sole proprietorship. In making its decision, the panel accepted that Yellow Pages has been the owner of the YELLOW PAGES and YELLOWPAGES.CA trade-marks since 1980 and 2003, respectively.

Pursuant to the Domain Name Dispute Resolution Policy, Yellow Pages proved that the disputed domain name is confusingly similar to a mark in which it had rights prior to the date of registration of the domain name, and to which such rights still exist. Specifically, the panel found yellowpage.ca to be confusingly similar to Yellow Pages' trade-mark since "the average Internet user, based on first impression and imperfect recollection," is likely to mistake YELLOWPAGE for YELLOW PAGES. Second, there was evidence Coolfred had no legitimate interest in the domain name. Although Coolfred had a business plan involving the domain name, no related commercial activity was carried out and therefore 'use' constituting a legitimate interest was not found. The domain name was also not a legal name of Coolfred or a geographical name. Notwithstanding the foregoing, Coolfred was found not to have registered the domain name in bad faith. Even though it planned to offer domain names for sale, this was not adequate evidence of an offer to specifically sell yellowpage.ca. Also, registering yellowpage.ca did not prevent Yellow Pages from registering its trade-marks. Since bad faith was not shown, the panel declined to transfer the domain name to Yellow Pages.

On a related point, Coolfred sought compensation of $5,000.00 from Yellow Pages, which can be awarded by the panel if the complaint was commenced "for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of the disputed domain name". However, since Yellow Pages established rights in its trade-marks and yellowpage.ca was confusingly similar to such marks, the request for compensation was dismissed.

This entry first appeared in the June 14, 2007 edition of lawsof.com. For a copy of the CIRA decision, click here.