Hollywood takes a beating in Oscar cybersquatting battle
Academy Awards loses five year lawsuit against GoDaddy in dramatic fashion
The Oscars has lost a five-year cybersquatting lawsuit against the world's biggest domain registrar, GoDaddy.
In a decision [PDF] handed down by Judge Andre Birotte in a Los Angeles district court this week, a claim by the Academy of Motion Picture Arts and Sciences' (AMPAS) that GoDaddy had infringed on its trademarks by selling domain names that included the words "Oscars" and "Academy Awards" to be registered was roundly defeated.
The Academy was seeking $31m in damages for 293 domain names that it identified as being registered with and hosted by GoDaddy. An original list of 151 domains in 2009 was subsequently added to as the complaint progressed through the courts.
However, a significant number of the names registered were either found not to infringe the Academy's trademarks or were being used legitimately (usually by people called Oscar).
The judge found that GoDaddy had in place a wide range of measures to limit possible cybersquatting, and had pocketed just $348 from ads that were hosted on "parking pages" for many of the web addresses the Academy had a problem with.
The parking pages were created automatically, and the ads were served by Google, with GoDaddy having no control over them, the judge found. At no point did the Academy contact Google, however, leading to GoDaddy's attorney taunting AMPAS in court. "Why are you going after GoDaddy?" asked Robert Galvin. "Is it because we have kind of a funny name, and we're not the world's largest search provider?"
That's not all
There were a host of other reasons why GoDaddy could not be held liable, including: the fact that it is prohibited from cancelling registrations under rules from domain overseer ICANN; that the company relies on an agreement from registrants that they are not infringing trademarks; that GoDaddy has a VIP service specifically to help companies with possible trademark infringement; and that GoDaddy didn’t in any way promote the domains; amid other points.
The judge also found that there was "no evidence of injury" to AMPAS; that it had not lost any profits and not seen any traffic diverted:
The Court finds that AMPAS has not met its burden of proving that GoDaddy registered, trafficked in or used any of the Accused Domains with a bad faith intent to profit from the AMPAS Marks. Quite the opposite.
In short, the Oscars lost and lost badly – which came as a big surprise to the movie industry press which has been hailing the inevitable GoDaddy loss for some time, even when it was revealed that the Academy was offering to settle the case for less and less money.
To the fury of AMPAS, GoDaddy inserted into one of its filings in January this year that the Academy has offered to settle the case for $20m in 2010; $12m in 2012; $10.7m in 2013; and $6m in 2014.
Some other stats over the domains at the heart of the case: of the 293 domains, 75 per cent of them (221) never made a dime. The highest earner made just $13.67. And across all the domains for five years from 2009 to 2014, the domains received a total of just 48,763 page impressions – sod all, in other words.
Those 293 domains also represent 0.0005 per cent of the 60 million domains managed by GoDaddy; and the $348 profit from them represents 0.001 per cent of the $6.7m it made from parked pages in just 2010.
Noteworthy domains in the case included 'theoscarteam.com' run by realtor Oscar Hernandez, and 'oscarcomedy.com' run by stand-up comedian Oscar Sagastume.
Taken overall, the five-year court battle highlighted an enormous clash of cultures. The Academy Awards believes that anything at all to do with its name represents a calculated effort to extort millions of dollars, while GoDaddy as a company that deals with the broader internet and millions of web addresses barely registers the Oscars existence in their systems.
AMPAS has until September 25 to appeal the ruling. ®