IP Law Daily Lack of copyright registration and judicially declared ownership of domain name defeats infringement claims
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Tuesday, September 29, 2020

Lack of copyright registration and judicially declared ownership of domain name defeats infringement claims

By Pamela C. Maloney, J.D.

Copyright and trademark infringement claims brought by singer-songwriter against his sister were dismissed as there was no evidence that he had registered the domain name or website "professionalgambler.com" and a state trial court had declared the sister the owner of the name.

A singer-songwriter offered no evidence that he had registered the domain name "professionalgambler.com" or its associated website with the U.S. Copyright Office to support his claim that his sister’s use of the domain constituted infringement, a federal district court in Nashville ruled in dismissing the claims without prejudice. The district court also dismissed trademark infringement claims on the ground that a Tennessee state court had declared the sister the owner of the domain name and because she had not used domain name in commerce (Miller v. Hurst, September 28, 2020, Trauger, A.).

A professional singer-songwriter, who allegedly composed and recorded three songs, "Ain’t Coming Home," "Burning Rubber," and "Cheater of the Year," claimed that his sister presented these songs to Russell Sims and Ted Graves as her own, and that they, along with Kenneth Hurst and Lillibeth Music, Sims Records, and English Music, recorded and released an album that included his songs without crediting him and without his consent, and that they sold merchandise featuring the title "Burning Rubber. The singer-songwriter also alleged that his sister falsely identified herself as the author of the lyrics when she applied for and received copyright registrations for the three songs. The singer-songwriter filed a lawsuit against the defendants setting forth claims for copyright infringement, conspiracy to engage in copyright infringement, and fraud on the Copyright Office. The lawsuit also stated claims against his sister for trademark infringement, unfair competition and cybersquatting in violation of the Lanham Act and the Anticybersquatting Consumer Protection Act (ACPA), and violation of the Computer Fraud and Abuse Act (CFAA) against his sister to settle ownership of the domain name "professionalgambler.com" and the website corresponding to that name. The matter was referred to a magistrate judge who granted a stay pending resolution of parallel litigation in the Tennessee state courts involving the ownership of the domain name "professionalgambler.com" and the website corresponding to that name, among other issues.

After a Tennessee chancery court declared that the sister was the legal owner of both the domain name and the website associated with it and the singer-songwriter exhausted his appeals of that decision, the magistrate judge dismissed the copyright claims without prejudice. According to the magistrate judge, the singer-songwriter had conceded that his attempts to register "Ain’t Coming Home" and "Cheater of the Year" were unsuccessful, and that registration of "Burning Rubber" was not completed until after he filed his original complaint. The magistrate also found that the singer-songwriter’s copyright conspiracy claim and claim for fraud on the Copyright Office were preempted by the Copyright Act. The singer-songwriter did not object to those findings.

With regard to the trademark infringement and unfair competition claims, the magistrate judge recommended that they be dismissed with prejudice based on the complaint’s failure to allege facts suggesting that the singer-songwriter’s sister had used the allegedly registered mark in commerce. Similarly, the magistrate judge recommended dismissal of the ACPA claim because there were no allegations that the sister had registered or "trafficked in" the domain name, or that she had unauthorized access to a protected computer. The singer-songwriter objected to the magistrate’s report and recommendations regarding dismissal of his Lanham Act claims.

Domain name rights. The singer-songwriter argued that the magistrate judge had failed to acknowledge that domain name rights and trademark rights were separate and that his sister’s right to the domain name "professionalgambler.com" did not give her the right to use it if such use infringed on his trademark, "PROFESSIONALGAMBLER.COM™." The district court found that the magistrate judge clearly distinguished between the singer-songwriter’s mark and the website domain name in finding that the complaint did not allege sufficient facts to start a claim for trademark infringement.

The singer-song writer had alleged that he began operating a web-based business known as "ProfessionalGambler.com" in April 2015, that he had registered "PROFESSIONALGAMBLER.COM" as a trademark in July 2017, and that his sister "surreptitiously" had gained access to his website with the intention of stealing it and selling the domain name. However, the sister had been declared the owner of the website and domain name and, therefore, she had no need to "seize" it. Furthermore, allegations of actual trafficking of a domain name were insufficient to give rise to a trademark infringement claim absent facts showing that the sister had been using the website for the sale of any product or service.

ACPA claim. The district court also accepted the magistrate judge’s recommendation to dismiss the ACPA claim because there were no allegations establishing the required element of bad faith. The singer-songwriter’s allegations that his sister’s desire to sell the domain name qualified as "trafficking" in bad faith were not supported by the evidence, which clearly demonstrated that at the time the federal lawsuit was filed, the rights to the domain name were in dispute. In addition, allegations concerning the sister’s bad faith conduct in attempting to hi-jack the domain name occurred prior to the time the singer-songwriter claimed to have registered the mark. Finally, after several years of contentious litigation, the sister was awarded ownership of the domain name—right around the same time the singer-songwriter registered the mark. Thus, the alleged acts could not give rise to a cybersquatting claim because the singer-songwriter did not have a protectible trademark—registered or unregistered—at the time the allegedly bad faith conduct took place. Nor was there any indication from the allegations that the sister had commandeered the domain name for purposes of extorting the singer-songwriter or profiting from the value of his trademark.

Copyright claims. With regard to the singer-songwriter’s copyright infringement claim, the district court found that the complaint did not allege any facts concerning copyright registration of the domain name or website content, nor did the complaint allege the unlawful copying of content in which he owned a copyright. The complaint did state that the website was an original creation, but the singer-songwriter did not refer to the website or the domain name in connection with his copyright infringement claim. Furthermore, even though the magistrate judge did not expressly address the copyright claims relating to the domain name or website, the report and recommendation concluded that all copyright claims were subject to dismissal because the singer-songwriter failed to plead that he had satisfied the Copyright Act’s registration requirements. Even if the district court were to accept the singer-songwriter’s assertion that his father owned a copyright in the domain name and website and that he was a successor to those rights, the complaint lacked any concrete facts showing infringement of any rights conferred by the Act. Thus, the copyright infringement claims were dismissed with prejudice.

This case is No. 3:17-cv-00791.

Attorneys: Jack Victor Miller, pro se. Barry Neil Shrum (Shrum & Associates) for Kenneth Hurst a/k/a Kenny and Lillibeth Music. Amy J. Everhart (Everhart Law Firm PLC) for Tedd Graves, Nita Miller Graves, and Lovingood Publishing Co. Russell Sims, pro se.

Companies: Lillibeth Music; Lovingood Publishing Co.

MainStory: TopStory Copyright TechnologyInternet Trademark TennesseeNews GCNNews

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