108 F. Supp. 3d 369
E.D. Va.2015Background
- Plaintiff Zinner is a musician and owner of related entities; Olenych and Lone Tree Printing provided services to Zinner’s entities since 2010.
- Defendants Olenych and Lone Tree purchased edzinner.com on March 6, 2014, and kept registrar privacy with Tucows to mask identity.
- Website edzinner.com contained critical text targeting Zinner’s MEWA conviction but did not identify owners.
- Around March 2014, communications between Plaintiff’s counsel and Tucows occurred regarding disclosure of registrant information.
- Plaintiff filed suit April 21, 2014, asserting two Lanham Act claims: 8131 (personal name domain) and 1125(d) (cybersquatting).
- PTO later registered ED ZINNER in January 2015, post-dating some early proceedings, affecting distinctiveness analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether ED ZINNER was distinctive at domain registration. | Certificate of registration suggests distinctiveness. | Descriptive personal name mark requires secondary meaning; registration timing unclear. | Genuine fact issue remains about distinctiveness; cannot grant summary judgment. |
| Whether Defendants had a bad faith intent to profit under 1125(d). | Evidence supports intent to sell domain for profit. | Many factors weigh against bad faith; some factors are neutral or favor defendants. | Summary judgment denied; triable issues exist on bad faith intent. |
| Whether the copyright-owner exception applies to 8131 claim. | Exception may apply if domain relates to Olenych’s manuscript and sold with lawful exploitation. | Content does not clearly relate to the manuscript; fact disputes exist. | Genuine dispute of material fact; exception not granted on summary judgment. |
| Damages under 1125(d) and 8131—whether Plaintiff can recover. | Damages may be awarded under 1125(d) even if not registered; statutory damages available. | Some barriers to damages; waiver issues raised in reply. | Damages issues unresolved; statute allows damages; waiver arguments denied; statutory damages possible. |
| ( optional extra ) Whether Plaintiff’s lack of pre-suit mark registration bars damages. | Registration not required for damages under 1125(d). | Some courts require registration to recover damages. | Not controlling; 1125(d) damages available regardless of pre-suit registration. |
Key Cases Cited
- Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005) (guide for bad faith factors in 1125(d) analysis)
- OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334 (4th Cir. 2009) (presumption of validity and distinctiveness considerations for registrations)
- American Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) (presumption from registration; evidence on validity of mark)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (4th Cir. 1984) (regulatory treatment of registration as evidence of distinctiveness)
- Synergistic Int’l, LLC v. Korman, 470 F.3d 162 (4th Cir. 2006) (descriptive vs. suggestive marks; secondary meaning considerations)