By: Ryan Compton & James Stewart

The modern era of general Top-Level Domains (gTLDs) is here.  The last several years of discussion, negotiation, public comment, lobbying, applications, and objections have finally led to delegation of the first new gTLDs in several years—the first handful in a sea of hundreds to thousands of new gTLDs—which will forever change the landscape of what Internet users put into the address bar of web browsers.   As previously reported, ICANN has begun delegating these new gTLDs, following entry into relevant registry agreements with the applicants for those gTLDs.  

Along with the delegation of the new gTLDs, these new registries will open to allow the registration of second-level domains by third parties.  Before opening to the public, each of the registries for the new gTLDs will open to trademark owners, registered with the Trademark Clearinghouse, for an initial Sunrise period—allowing trademark owners a first opportunity to secure second-level domains on the particular gTLD which incorporate their core marks. To that end, a number of Sunrise periods are currently open, or set to open within the coming weeks for the following gTLDs:

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*gTLD registries which are covered under the Donuts Domain Protected Marks List (DPML)


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Reposted from DLA Piper’s Sports, Media and Entertainment Blog

By Frank Ryan, Richard Flaggert, Matthew Ganas and Rebecca Smock

On May 21, 2013, the US Court of Appeals for the Third Circuit held that the First Amendment does not shield Electronic Arts, Inc. (EA) from right of publicity violations alleged in connection with its depiction of college-athlete “avatars” in its series of NCAA Football videogames. Ryan Hart v. Electronic Arts, Inc., No. 11-3750, 2013 U.S. App. LEXIS 10171 (3d Cir. 2013).

As a matter of first impression for the Third Circuit, the Hart case involves the complex intersection of First Amendment protections and the publicity rights of individuals. By determining that plaintiff Ryan Hart’s publicity rights trump First Amendment considerations in this instance, a Third Circuit majority panel reversed the US District Court of New Jersey’s prior grant of summary judgment in EA’s favor and remanded the case to the district court for further proceedings.


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Reposted from July 2013 issue of DLA Piper’s Sports, Media and Entertainment Intelligence

By Giulio Coraggio

The Court of Palermo (Italy) held that Google as an hosting provider is not obliged to monitor the AdWords keywords selected by its users. The court did find liability for a local rental company, Sicily by Car, for the usage of the trademark “maggiore” held by a major rental company, Maggiore Rent SpA. This was only when done in connection with the usage of AdWords “dynamic keyword insertion” tool allowing to show the selected keyword as ad text in the sponsored link when users were searching such term.


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By Ryan Compton & James Stewart

The imminent launch of more than 1,400 new generic top-level domains (gTLDs) poses a major challenge to brand owners seeking to enforce and maintain control over the way their key trademarks appear in domain names. The domain ender “.com” is the most widely used of the current gTLDs, but “.net,” “.org” and “.edu” gTLDs are also prevalent. All of the current gTLDs are managed by the Internet Corporation for Assigned Names and Numbers (ICANN). On June 20, 2011, ICANN approved a plan to expand the universe of gTLDs to include virtually any string of characters, including trademark words (e.g., “.docs,” “.rocks,” “.world,” “.pepsi,” etc.).

To help brand owners exercise greater control over use of their trademarks, ICANN has developed the Trademark Clearinghouse (TMCH), which gives brand owners the first opportunity to obtain domain names incorporating their trademarks upon the launch of a new gTLD. Brand owners registered with the TMCH will receive notice when a third party registers a domain name incorporating their trademark. The third-party registrant is also notified of the brand owner’s rights in the mark.


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UPDATE:  Earlier this month, the Second Circuit in a 2-1 decision affirmed a lower court ruling rejecting an injunction against broadcast television retransmitting service Aereo, based on the Copyright Act’s public/private performance provisions. Yesterday, in response to this decision, broadcasters filed a petition with the Second Circuit for an en banc review arguing that the recent decision defeats the “express purposes” of the Copyright Act of 1976 by “allowing new and existing distributors to design around th[e] license requirement and profit from the delivery of copyrighted programming while paying nothing for it.”

Below we have republished our firm’s blog entry discussing the recent Second Circuit decision, which the broadcasters are now challenging in their petition. 


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Repost from the Sports, Media and Entertainment Intelligence bulletin from the Media & Sports Group at DLA Piper

INTERNET AND DIGITAL MEDIA

UK: Proprietary rights from copyright infringement – Twentieth Century Fox Film Corporation v David Harris

A copyright owner does not have a proprietary claim to the profits from an infringement of its copyright, a UK court has ruled in a case involving a website that offered its users unlawful copies of copyrighted films, TV shows and other materials.


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Repost from E-Commerce and Privacy Alert

By Scott W. Pink

On March 12, 2013, the Federal Trade Commission issued its long-awaited update to its 2000 guidance on disclosures in online marketing and advertising.

The guidance, entitled .com Disclosures: How to Make Effective Disclosures in Digital Advertising, not only reaffirms many of the FTC’s longstanding principles for effective online disclosures, but also provides guidance as to how those principles will be applied to new technologies that have emerged since 2000, such as mobile phones and tablets with more limited space, banner ads and multimedia messaging, and social media platforms such as Facebook and Twitter.

The FTC has broad powers under Section 5 of the FTC Act to protect consumers from “unfair and deceptive acts or practices.”i Under the FTC Act, the FTC has long required effective disclosures for claims that would otherwise be deceptive or misleading without them. .com Disclosures is designed to help businesses comply with the FTC Act by providing examples and direction on how to avoid unfair and deceptive practices through appropriate disclosures in their online and mobile marketing.


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By John Wilks and Catherine Beloff

The CJEU has handed down its decision on the copyright questions referred by the UK High Court in the long-running battle between ITV, Channel 4 and Channel 5 and TV Catchup (“TVC”). Copyright owners will be relieved that the CJEU has confirmed that streaming content via the internet constitutes the infringing act of communication to the public. 


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By Erin Wright Lothson

The famous Kardashian sisters are making news again, but this time not for their well-known reality television show Keeping Up With the Kardashians. Kim, Kourtney and Khloe Kardashian launched a line of personal care and makeup products in 2012 under the mark KHROMA, and their beauty care products are currently sold at nationwide retaliers including CVS, Ulta, Sears and Kmart. However, the Kardashian sisters are being sued in federal court for trademark infringement for use of the mark KHROMA.


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