Ventures and Victories

Ventures and Victories: December 2012

THE LITIGATION DOCKET: WHEN YOUR OWN PUBLISHER DOES A COPYCAT VERSION OF YOUR TEXTBOOK

In September, we successfully settled a lawsuit on behalf of a distinguished team of textbook authors against a leading publishing company: Thomas Fahey, Paul Insel, and Walton (Tom) Roth vs. McGraw-Hill Companies, Inc.

Fit & Well is a pioneering and market-leading textbook for introductory college courses on health and physical fitness, written by eminent scholars in the field of exercise physiology (Tom Fahey), health education (Paul Insel), and psychiatry (Tom Roth). It was first published in 1993 and now is in its Tenth Edition.

Some say that imitation is the sincerest form of flattery. But when Tom, Paul, and Tom discovered that their long-time publisher was about to publish a copycat book called FitWell, aimed at the same course market, they weren't flattered. They were outraged.

We demanded before publication that the publisher change the title of FitWell, but McGraw-Hill would not oblige. Once we saw the published work, we found that FitWell not only had an almost identical title to Fit & Well but it also closely resembled Fit & Well in its structure and content. Interestingly, FitWell didn’t list the names of any authors on its cover. It seemed likely that prospective adopters would jump to the conclusion that FitWell was an alternate version of the market-leading Fit & Well.

After trying unsuccessfully to settle the matter without litigation, we filed suit in federal district court in San Francisco, which is the area where our clients live and also the place where McGraw-Hill Education's health book division was based. (We worked closely with our San Francisco counsel, Ian Boyd.) We brought claims against McGraw-Hill for (among other things) infringement of a registered trademark (we had registered the Fit & Well trademark in the authors' names) and breach of the covenant of good faith and fair dealing, which is an implied part of every contract.

Our principal argument was that even though McGraw-Hill had a right to publish more than one book for the same market (and many publishers indeed publish multiple books in particular markets), it did not have the right to publish a copycat book that adopters would be likely to mistake for our clients' book and that would be likely to cut into our clients' sales and royalties.

After a court-ordered mediation session, we were able to reach a successful settlement for our clients. As is the case with most settlements, there was no admission of liability. But McGraw-Hill made a monetary payment to our clients, agreed to change the name and content of FitWell in future editions, and agreed to make certain favorable changes in our clients' publishing contract going forward.

 

Ventures and Victories: December 2012

 

THE ".ME" GENERATION: RECLAIMING FRAUDULENT DOMAIN NAMES FROM CYBERPIRATES

When Montenegro (a part of the former Yugoslavia) became an independent nation in June 2006, it was assigned ".me" as its country code for Internet domain names. It didn't take long for the government to realize that it could increase its revenues by selling ".me" names on the open market. During its initial "land rush" registration period in 2008, domain names like insure.me, date.me, and love.me were auctioned off for healthy amounts. In the following years, ".me" became the fastest selling of the "debut top-level domains," with close to 600,000 ".me" domain names registered by the end of 2011.

As ".me" became popular, the cyberpirates moved in. One such operator registered the names of many colleges and universities, followed by ".me." This enterprising pirate proceeded to set up phony websites on these domains, from which he offered to sell college-based Google apps in return for "tax-free contributions" that would ostensibly go to the colleges.

At the request of four New England colleges, we filed a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint with WIPO (the World Intellectual Property Organization) in order to reclaim babson.me, brandeis.me, tufts.me, and uvm.me from the ".me"-heister. Our 2011-2012 law student intern Michael Greene (Boston College Law School, 2012) played a leading role in drafting the Complaint and assembling the supporting documentation, which included the federal trademark registrations owned by each of our clients. In August, 2012, we received the decision of the WIPO arbitrator, adopting our arguments that the domain names had been registered and used in bad faith and ordering that the domain names be transferred to the respective colleges.

Before ruling on the merits of our clients' claim, the arbitrator considered the question of whether, under the UDRP rules, four unrelated colleges and universities could join their complaints in a single action. We believed that they could, thus permitting our clients to share the filing fee and costs of the action. The arbitrator agreed, noting that the four colleges "have demonstrated that they have a 'common grievance' with the Respondent . . . . To require each Complainant to file and pay for an individual claim, which would necessitate four panels and four opinions, would be procedurally inefficient and economically wasteful." This holding may be helpful to other colleges and universities seeking to reclaim their domain names from cyberpirates.

In the past we have also been successful in forcing cybersquatters to relinquish ".xxx" domain names -- registered in the new top-level domain reserved for adult entertainment websites -- that made use of the names of colleges and universities.

Copyright 2010. The Law Office of Zick Rubin. All rights reserved.