California - The Academy of Motion Picture Arts and Sciences took a shot at Google Inc. last week for refusing to pony up documents and depositions for AMPAS's trademark infringement lawsuit against GoDaddy.com Inc. over Oscar-related domain name cybersquatting, saying Google's arguments in opposition to being dragged into the conflict are unavailing.
AMPAS sued GoDaddy in May 2010 in the Central District of California alleging it was registering, monetizing and trafficking in web domain names that are confusingly similar to the Academy's protected trademarks.
GoDaddy and the domain name registrants achieve monetary gain by using the trademarks to knowingly divert internet traffic away from legitimate Oscar-related websites to infringing domains that are merely "parked pages," according to the Academy's most recent amended complaint, filed last October. Parked domains serve no real business purpose or substantive content, existing solely for the display of revenue-generating ads.
Both AMPAS and GoDaddy are now asking a judge in the Northern District of California to compel Google to provide evidence about the role of its "AdSense for Domains" advertising program in the alleged trademark infringement.
Google is wrong to argue that AMPAS's motion is untimely, especially because a closer look at the timeline reveals that AMPAS spent the 12 months from April 2011 to April 2012 trying in good faith to avoid having to depose Google, AMPAS said in its Sept. 17 reply to Google's opposition.
Google is also incorrect in claiming that the deposition topics are not relevant to the Anti-Cybersquatting Protection Act based on the premise that a court can determine whether a domain name violates the ACPA without referring to the content on the associated website, AMPAS said.
Under the "bad faith intent to profit" prong of the ACPA, courts consistently look to the content of the websites associated with the accused domain name, according to AMPAS. For example, if the website in question were merely used to critique the trademark holder's goods or services, then no ACPA violation would follow, regardless of what the domain name was.
"Google's position simply misstates the law," the Academy said. "Burying its head in the sand, Google tries to simply wish away the "bad faith intent to profit" prong of the ACPA."
Google argued that AMPAS's deposition topics are unduly burdensome upon it, but the company also only previously identified 4 witnesses related to the GoDaddy programs at issue, according to the Academy.
"Recognizing this, Google sets up a "straw man" -- unfairly and obviously broadening AMPAS's deposition topics -- while ignoring AMPAS's narrowing of the topics during the parties' meeting and conferring process," AMPAS said.