GoDaddy prevails in lawsuit over Oscar trademarks

[September 12, 2015]  By Jonathan Stempel

(Reuters) - GoDaddy Inc prevailed in a cybersquatting lawsuit brought by the Academy of Motion Picture Arts and Sciences, which accused the Internet domain registrar of illegally profiting off its trademarks, including for the Oscar telecasts.

In a 129-page decision on Thursday, U.S. District Judge Andre Birotte in Los Angeles said the Academy failed to show that GoDaddy acted in bad faith by letting customers purchase 293 domain names such as academyawards.net, oscarsredcarpet.com, billycrystal2012oscars.com and theoscargoestothehangover.com.

The Academy sued GoDaddy in 2010, accusing the Scottsdale, Arizona-based company of letting customers "park" their pages on the Internet and share in revenue collected from advertising on those pages.

It sought statutory damages of $100,000 per infringement, equal to more than $29 million, court papers showed.

Birotte, however, said GoDaddy "reasonably relied" on its users' representations that their domain registrations did not infringe any trademarks, including the Academy's.

He also said GoDaddy always, and sometimes within a matter of minutes, reassigned domains to advertising-free templates after trademark holders filed takedown requests.

"Any inadvertent use by GoDaddy of domain names that are confusingly similar or identical to the AMPAS Marks via its automated processes was unintentional," Birotte wrote. "AMPAS has failed to prove that GoDaddy had the required specific bad faith intent to profit from the AMPAS marks."

Birotte ruled after a four-day, non-jury trial in early August.

"We are disappointed at the court's decision," an Academy spokeswoman said. "While we appreciate the court's recognition of the strength of the Academy's marks, we believe the court should have found that the GoDaddy Parked Pages program improperly uses those marks. We will evaluate our appellate options."

Nima Kelly, GoDaddy's general counsel, said the company "has always supported brand owners in protecting their intellectual property rights," and that the decision supports its efforts to protect the legitimate interests of customers and brand owners.

GoDaddy went public five months ago, and generated $770.8 million of revenue from January to June.

The case is Academy of Motion Picture Arts and Sciences v. GoDaddy.com Inc et al, U.S. District Court, Central District of California, No. 10-03738.

(Reporting by Jonathan Stempel in New York; Editing by Grant McCool)

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