Meat Loaf Sues Impersonator for Cybersquatting

First and foremost, I must confess that I am a fan of Marvin (now “Michael”) Aday, better known to the world as the singer Meat Loaf.  I have the seven anthems from Bat out of Hell Part I permanently etched on my iPod, and every word of Phil Rizzuto’s monologue from Paradise By the Dashboard Light memorized.  I am also a trademark lawyer who generally represents Plaintiffs in Court against infringers, including having litigated major cases involving “replicas” and “knockoffs.”  So it was with great interest and pro-Meat Loaf bias that I read about the singer's recently filed federal Complaint against U.K.-based impersonator Dean Torkington.

In contrast to the legitimate MeatLoaf.net site, Dean Torkington apparently registered the Internet domain name MeatLoaf.org. MeatLoaf.com was apparently already taken (not by the rocker, but by Rebeccah’s Fine Foods, who registered it in 1995, and who doesn’t seem to have done much with it since then).

Initially, it is worth noting that Torkington’s website and materials identify himself as a “tribute.”  Tribute bands and celebrity impersonators present a challenging (if not amusing) area of intellectual property law.

The Torkington "mini-tour bus."

With most tribute bands, there is not likely to be much evidence of actual confusion at the point when an ordinarily prudent consumer buys a ticket to a tribute show.  (Such a duped consumer would be no true fan of Meat Loaf, as Torkington is at best, a poor-man’s Meat Loaf).  I must confess that if I saw Torkington’s tiny little "tour bus" parked in the lot, I would most certainly NOT suspect that the genuine Meat Loaf was nearby, and would not begin my search for an autograph.

Rather, in such cases, a Plaintiff must rely on more creative applications of trademark law, such as the doctrine of initial interest confusion, otherwise known as the “bait and switch.”  Under this established concept, even ordinarily prudent consumers are initially confused and attracted to the second-comer’s product or service, only to later discover the lack of authenticity.  Such infringement is still legally actionable, as it serves to divert interest and undermine the brand owner’s rights.

Aday references this theory in his Complaint, in which he asserts that true fans are searching for the genuine website on the Internet, only to discover Torkington’s close imitation.  Further, Torkington's use of logos and images is a little too close for comfort, and there is even an allegation that Torkington created a YouTube handle "Michael Aday" to fraudulently impersonate the Plaintiff.

Of course, because the nature of all tribute bands is, in a sense, expressive and therefore potentially constitutionally protected free speech, tribute bands can readily assert the nominative fair use defense, which can be applied where the defendant's use of the trademark refers to something other than the real product.  A federal court in the New Kids on the Block v. News America Publishing Inc. case articulated a three-part test for nominative fair use:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

There are numerous Meat Loaf tribute bands which may satisfy this test, for example:  Dashboard Lights, Anything for Loaf, and my own personal favorite, Peat Loaf.

Finally, and potentially problematically for Mr. Torkington, if his domain name registration of MeatLoaf.org is deemed to have been in bad faith to capitalize on consumer confusion, he would not only lose the domain name, but face up to $100,000 in statutory damages.

In conclusion, Mr. Torkington may have come a little too close for comfort with his imitation of life.  In the words of the true Meat Loaf’s classic song, Torkington’s tributes will be gone when the morning comes.

When is Undercover Recording Legal?

Recording telephone calls and in-person conversations is a common practice of undercover private investigators as well as aggressive investigative journalists. Such recordings can make or break a case or investigation.  In fact, most private investigators view undercover recording as an indispensable tool in their arsenal. However, others don't use recordings because of the complex legal risks that it creates.

However, there are important questions of law that must be fully understood before developing a consistent policy about making and using undercover recordings. Both federal and state statutes govern the use of electronic recording equipment. The unlawful use of such equipment can give rise not only to civil lawsuits brought by the "harmed" parties, but also criminal prosecution is possible.

Accordingly, it is critical that investigators, lawyers and journalists fully understand all the laws that may apply to a given set of circumstances, and appreciate what their rights and responsibilities are when recording and disclosing communications.

Although many of the relevant statutes address wiretapping and eavesdropping (i.e., listening in on conversations of others without their knowledge), these same laws may apply to recording of any conversations, including phone calls and in-person discussions.

Federal law generally allows recording of telephone calls and other electronic communications with the consent of at least one party to the call. A majority of the states and territories have adopted wiretapping statutes based on this federal law, although most also have extended the law to cover in-person conversations.

Thirty-eight states and the District of Columbia permit individuals to record conversations to which they are a party, without expressly informing the other parties that they are doing so. These states are generally referred to as "one-party consent" states, and as long as the investigator (or the person doing the recording) is a party to the conversation, it is legal for him to record it.

Twelve other states require, under most circumstances, the consent of ALL parties to a conversation. Those jurisdictions are California, Connecticut, Florida, Illinois, Maryland, Massachusetts, Michigan, Montana, Nevada, New Hampshire, Pennsylvania and Washington.

Regardless of the specific jurisdiction involved, it is almost always illegal to record a conversation to which you are NOT a party, do not have consent to tape, and could not naturally overhear in a public place.

Additionally, complex legal concerns can arise when interstate telephone calls are recorded by one of the parties to the call. For example, an investigator located in New York State who records a telephone conversation without the consent of a party located in Illinois would not violate New York State law, but could be civilly and even criminally liable under Illinois law.

A court located in New York State may even apply Illinois' laws, depending on its "conflict of laws" rules. Therefore, an aggrieved party may choose to file suit or a criminal complaint in either jurisdiction, depending on which law is ultimately more favorable to the party's claim (and where jurisdiction lies).

Additionally, federal law may apply when the conversation is between parties who are in different states, although it is unsettled whether a court will hold in a given case that federal law preempts state law.

Therefore, in light of the complex laws governing electronic recording of conversations between private parties, private investigators are strongly advised to err on the side of caution when recording or disclosing an interstate telephone call.

Forensic Clues Hidden on the Internet

The following explains some of the terms used in Internet forensics, and suggests where relevant clues about a domain name may be hiding:

"IP Address"

Each and every computer on the Internet has a unique address - just like a telephone number or street address - which is a rather long and complicated string of numbers. It is called its "IP address" (IP stands for "Internet Protocol"). IP Addresses are hard to remember, so the Domain Name System makes using the Internet far easier for humans by allowing words in the form of a "domain name" to be used instead of the arcane, numerical IP address. So instead of typing 64.233.161.104, you can just type that IP address' domain name, and you would then be directed to the website that you are seeking connected to that domain name.

It is possible to "geolocate" an IP address by using a variety of free services available on the Internet. Geolocation is the practice of determining the physical, real world location of a person or computer using digital information processed and collected on the Internet.

Geolocation can offer the city, ZIP code or region from which a person is or has connected to the World Wide Web by using their device's IP Address, or that of a nearby wireless access points, such as those offered by coffeeshops or internet cafes.

Determining the country of an Internet user based on his or her IP address is relatively simple and accurate (95%-99% percent) because a country is required information when an IP range is allocated and IP registrars supply that information.

Determining the specific physical location of an IP Address down to a city or ZIP code, however, is a little more difficult and slightly less accurate because there is no official source for the information. Further, users sometimes share IP addresses and Internet service providers often base IP addresses.

Even when not accurate, though, geolocation can place users in a bordering or nearby city, which may be good enough for the investigation.

Internet Corporation for Assigned Names and Numbers (ICANN)

The Internet Corporation for Assigned Names and Numbers (ICANN) is an internationally organized, non-profit corporation that has the ultimate responsibility for Internet Protocol address space allocation, generic (gTLD) and country code (ccTLD) Top Level Domain name system management, and root server system management functions. As a private-public partnership, ICANN is dedicated to preserving the operational stability of the Internet; to promoting healthy and lawful competition; to achieving broad representation of global Internet communities; and to developing policies to foster these goals.

"Registrant"

Registrants are individuals or entities who register unique domain names through Internet Registrars. The Registrant is required to enter a registration contract with his Registrar, which sets forth the terms under which the registration is accepted and will be maintained. The Registrant's data is ultimately recorded in a number of locations: with the Registry, the Registrar, and, if applicable, with his webhosting provider.

"Registrar"

Domain names are registered by individual Registrants through many different companies known as Internet "Registrars." GoDaddy, for example, is a major ICANN-accredited Registrar. There are currently approximately 430 accredited Internet Registrars. A complete listing of accredited Registrars is in the ICANN Accredited Registrar Directory. A Registrar asks individuals, or "Registrants", various contact and technical information that makes up the official registration record. The Registrar maintains detailed records of the Registrant's contact information and submits the information to a central directory known as the "Registry." The Registry provides other computers on the Internet the information necessary to send the Registrant e-mail or to find the Registrant's Website on the Internet.

"Registry"

The Registry is the authoritative, master database of all domain names registered in each Top Level Domain. The Registry operator keeps the master database and also generates the "Zone File" which allows computers to route Internet traffic to and from Top Level Domains (TLD's) anywhere in the world. Internet users don't interact directly with the Registry; users can register names in TLDs by using an ICANN-Accredited Registrar (see above). Two of the largest Registries are Verisign (with authority over.com and.net TLDs, among others), and the Public Interest Registry ("PIR")(with authority over.org TLD's).

Top Level Domain (TLD)

Top Level Domains (TLDs) are the names at the top of the DNS naming hierarchy. They appear in domain names as the string of letters following the last (rightmost) ".", such as "net" in "http://www.example.net". The administrator for a TLD controls what second-level names are recognized in that TLD. The administrators of the "root domain" or "Root Zone" control what TLDs are recognized by the DNS. Generally speaking, two types of TLDs exist: generic TLDs (such as.com,.net,.edu) and country code TLDs (such as.jp,.de, and.cn).

"Whois"Data

All domain name Registries operate a "Whois" server for the purpose of providing information about all the Internet domain names registered with them. In a Shared Registry System, where most information about a domain name is held by separate individual Registrars, the Registry's Whois server provides a referral to the Registrars own Whois server, which provides more complete information about the domain name. The Whois service contains Registrant, administrative, billing and technical contact information provided by Registrars for domain name registrations.

By collecting and analyzing the Whois data, the Registry data, the Registrar data, and other bits and pieces of data about any websites associated with the domain name(s) you are interested in, a forensic investigator can often reconstruct a Registrant's identity, location and other contact information (e-mail, etc.).

Online Counterfeiting Likely to Escalate

Numerous federal lawsuits have been filed by Intellectual Property owners in recent years to attempt to address the intensifying online threat from "rogue websites."

Additionally, the US Department of Justice and US Department of Immigration and Customs Enforcement have seized millions of dollars in assets, as well as shuttered many such websites by utilizing existing criminal laws in the ongoing Operation In Our Sites.

However, while Internet traffic to these sites has been measured and determined to be substantial, little research has been done to empirically survey the existing body of data related to this phenomenon.

A comprehensive empirical survey of over 3,000 Internet websites that federal courts have ordered shut down because of their sale of counterfeit goods has revealed that online counterfeiters can collect immense profits by generating over $10,000 in sales with a $1,000 initial investment.

An analysis of an online counterfeiters' potential profit margin can be summarized in the sample breakdown of typical revenue and costs as follows: The average cost of registering a single Internet domain name: $10-$20 per domain name, annually. The average cost of hosting multiple e-commerce websites on a shared server: $120 to $160, annually. International shipping is either paid for by the customer, or absorbed by seller if it is a nominal cost (less than $10 per item). Credit Card/online payment processing fees: 3-5% of sale price. Wholesale cost of counterfeit goods varies by brand and product category.

For example, a typical counterfeit coat has a $40-$50 wholesale cost, retails for $230-$300 on a rogue website. A typical counterfeit handbag: $40-$50 wholesale cost, retails for $200-$300 on a rogue website. A typical counterfeit bracelet: $10 wholesale cost, retails for $70-$80 on a rogue website. A typical counterfeit watch: $10 wholesale cost, retails for $160 on a rogue website. 


Therefore, starting with a $1,000 investment, if one sets up a hosted e-commerce website ($160) linked to five domain names ($100), and invests the remaining funds ($700) in selling and shipping wholesale counterfeit goods, one could generate: Up to $11,200 by selling 70 counterfeit watches (11.2x the initial investment); Up to $5,600 by selling 70 counterfeit bracelets (5.6x the initial investment); or Up to $4,200 by selling 14 counterfeit coats or handbags (4.2x the initial investment).

This low-risk business model offers a comparable return on investment (ROI) to trafficking in illegal narcotics.  Because of this dramatic ROI, online counterfeiting networks are exponentially spreading on the Internet like an infection. For example, the ROI from a single successful website selling counterfeit products encourages the creation of many more such websites.

Skilled programmers who have access to sophisticated technology and an extensive supply of counterfeit products are creating and operating these sites. To protect their business model, they are employing a variety of creative tactics to frustrate efforts to monitor them and remove them from the marketplace.

For example, they dynamically redirect their websites across multiple servers located in different countries. Significant server bandwidth is dedicated to hosting such sites, with large blocks of server space and IP addresses dedicated to managing the Internet traffic to them. Counterfeiters' websites are creating significant actual consumer confusion. One reason is that prices for counterfeit goods are designed to be credible to suggest genuine, discounted products rather than low quality counterfeits. Goods received are typically shipped directly from locations throughout China and Hong Kong, and

China is the country most often named as the country of the Registrant. However, Registrants do not usually provide legitimate or consistent contact information when registering new domain names, often using gibberish, nonsensical words and false addresses. Further, some Registrants are using the "Privacy Protection" services offered by Registrars to purchase a cloak of further anonymity. Software applications make it easier for infringers to create, register and warehouse thousands of domain names that contain permutations of trademarked brands. These conclusions make it likely that "rogue websites" selling counterfeit goods will likely continue to proliferate, demanding that legal action be taken by brand owners.