YouTube has moved to dismiss a lawsuit from Universal Tube and Rollform Manufacturing Corporation, arguing that Universal's claims are baseless and the company is simply looking to cash in on YouTube's success, Google Watch has learned.
In a 28-page motion to dismiss filed in Ohio federal court, YouTube argues that Universal's claims are based largely on a trademark ("UTUBE") that has never been used to differentiate its goods or services; that federal courts are only allowed to cancel trademark registrations, not applications, for which Universal pleads; that any claims of trespass against utube.com should be directed at those who mistakenly navigated to that site, not at YouTube; that UTUBE is not a famous trademark and thus can't be diluted; and that YouTube's co-founders are protected by the CDA (Communications Decency Act) and DMCA (Digital Millenium Copyright Act).
In arguing that Universal is simply trying to monetize unwanted traffic to its site, YouTube's counsel related the following in a footnote to its reponse summary:
"In fact, should this lawsuit proceed past pleadings motions, Universal’s actions will form the basis of myriad counterclaims. At the time YouTube was founded and achieved its remarkable success, Universal was a regional seller of machine tools that had never used “utube” as a trademark in any way. YouTube’s success resulted in millions of users visiting its website: unfortunately, through no one’s fault, some small percentage of those users guessed incorrectly at YouTube’s spelling, and mistakenly arrived at Universal Tube’s abbreviated website address, “utube.com.”When YouTube learned of Universal’s existence and problem through newsreports, it immediately contacted Universal and offered to host a “landing page,” at YouTube’s sole cost, that would ask users which company they were seeking and direct them to the correct website. This would have solved, overnight, the only “injury” of which Universal complains.Universal, however, smelled a quick litigation buck and declined YouTube’s offer. It slapped a large “UTUBE” logo on its website, which previously had carried the “Universal Tubing & Rollform Equipment” logo. It rushed a trademark application to the USPTO for the name “UTUBE”—the first time it had ever sought trademark status for that name—and days later filed this lawsuit with as much publicity as it could garner. It then changed its website to include a faux “search engine,” designed to make money by deliberately diverting users seeking YouTube’s site to other websites. These facts are of course beyond the corners of the Complaint, and we recognize that they cannot support dismissal. They are, however, important to consider should Universal seek leave to file a Third Amended Complaint, as they severely constrain any ability to plead cognizable claims."
The rest of the motion goes on to argue why each count -- there are eight, including the RICO violations directed against Hurley and Chen -- should be dismissed.
Now I'm not a lawyer, and I'm not agreeing or disagreeing with the arguments below. But they may be of interest to a tech audience:
- YouTube argues that a domain name is not equivalent to a trademark: To the contrary, “‘[w]hen a domain name is used only to indicate an address on the Internet, the domain name is not functioning as a trademark.’” Bird v. Parsons, 289 F.3d 865, 878 (6th Cir. 2002) (quoting Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 956 (C.D. Cal. 1999)); Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 627 (6th Cir. 1998) (Merritt, J. concurring) (same).
- YouTube argues Universal can't sue to pre-empt the registration of YouTube with the USPTO.
- YouTube argues that Universal can't sue for "trespass against chattels" (utube.com) because utube.com is not chattel. A “chattel” is “[m]ovable or transferable property; personal property; esp. a physical object capable of manual delivery and not the subject matter of real property.” Black’s Law Dictionary 251 (8th ed. 2004). A Web site does not meet this definition; it is not movable, physical, personal property. Instead, utube.com is an address on the World Wide Web—an intangible property right that cannot, by definition, be interfered with physically. It cannot, therefore, be trespassed against.
- YouTube argues that because it complies with the DMCA, the site and its founders are covered under the act's safe harbor provisions. They also argue that YouTube is covered under the CDA, which stipulates that “[n]o provider or user of an interactive computer service shall be
treated as the publisher or speaker of any information provided by another information content
provider. 47 U.S.C. § 230(c)(1). While the CDA does not impair the enforcement of criminal
law, intellectual property law, or state law consistent with the statute, see § 230(e), it otherwise
immunizes service providers from suit. See Zeran v. AOL, Inc., 129 F.3d 327 (4th Cir. 1997)."