Private Property for Public Use: The Federal Trademark Dilution Act and Anticybersquatting Consumer Protection Act as Violations of the Fifth Amendment Takings Clause

Journal of Intellectual Property Law Volume 11 | Issue 1 Article 13 April 2016 Private Property for Public Use: The Federal Trademark Dilution Act and Anticybersquatting Consumer Protection Act as Violations of the Fifth Amendment Takings Clause Brian C. Smith Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Constitutional Law Commons, and the Intellectual Property Law Commons Recommended Citation Brian C. Smith, Private Property for Public Use: The Federal Trademark Dilution Act and Anticybersquatting Consumer Protection Act as Violations of the Fifth Amendment Takings Clause, 11 J. Intell. Prop. L. 191 (2016). Available at: https://digitalcommons.law.uga.edu/jipl/vol11/iss1/13 This Notes is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Smith: Private Property for Public Use: The Federal Trademark Dilution A PRIVATE PROPERTY FOR PUBLIC USE: THE FEDERAL TRADEMARK DILUTION ACT AND ANTICYBERSQUATTING CONSUMER PROTECTION ACT AS VIOLATIONS OF THE FIFTH AMENDMENT TAKINGS CLAUSE I. INTRODUCTION William Dupont has lived in Springfield, USA for all of his life. He has owned and operated his business, which makes high-quality construction boots, for over fifteen years. During this time, the popularity of his products has grown, and twice his store moved to a larger location, expanding to receive phone orders for his shoes. About a year and a half ago, William Dupont decided to expand his business beyond the city. Believing that the future of commerce was in the Internet, William Dupont registered a domain name for his business, the same name that had hung over his storefront for fifteen years: dupontshoes.com.' Soon after the establishment of the website, sales increased substantially, and dupontshoes.com gained a reputation among construction workers as the place to go to get shoes. This changed when DuPont, makers of Teflon®, Lycra®, and Kevlar®, filed suit in federal court against William Dupont under the Federal Trademark Dilution Act of 1995.2 William Dupont lost the case and an injunction was issued ordering the transfer of the domain name to DuPont. DuPont requested this transfer so that it could use the domain name to promote its partnership with the Easy Spirit® shoe division of Nine West, which focuses on footwear with Lycra® elastane.3 William Dupont lost all rights to the domain name, along with a significant amount of money, not only that which he invested, but also the future and potential profits that could have been realized from continued use of the site. This hypothetical situation highlights an actual problem in the area of Internet and trademark law. When a court orders an injunction forcing the transfer of a ' The author chose this name for the hypothetical because in the legislative history of the Federal Trademark Dilution Act of 1995, Congress specifically stated that "the use of DUPONT shoes . . . would be actionable ...... H.R. REP. NO. 104-374, at 3 (1995), reprinted in 1996 U.S.C.C.A.N. 1029, 1030. 2 Lanham Act § 43(c), 15 U.S.C § 1125(c) (2000). 3 The author wishes to note that while an actual partnership exists between DuPont and Easy Spirit® and focuses on footwear with Lycra® elastane, this was included in the hypothetical solely to add a degree of realism and to justify the transfer of the domain name, rather than merely enjoining its commercial use. Published by Digital Commons @ Georgia Law, 2016 1 Journal of Intellectual Property Law, Vol. 11, Iss. 1 [2016], Art. 13 J. INTELL PROP.LV [Vol. 11:191 domain name pursuant to federal statutes, the forced transferor loses the value he had in the domain name. This Note argues that forced transfers of domain names under the Federal Trademark Dilution Act4 (FIDA) and the Anticybersquatting Consumer Protection Act' (ACPA) are uncompensated takings in violation of the Fifth Amendment.6 Part Two of this Note provides background information on the Internet and Domain Name System, trademark law, the FTDA, the ACPA, and the Takings Clause of the Fifth Amendment. Part Three of this Note argues, first, that the rights in a domain name are property rights subject to Takings Clause protection, and second, that forced transfers of domain names without compensation are uncompensated takings in violation of the Constitution. This second argument is based on Supreme Court precedent, which suggests that these transfers are de facto takings, as well as arguments on public policy grounds. II. BACKGROUND A. THE INTERNET AND DOMAIN NAME SYSTEM The Internet is a global, decentralized network of computer networks.7 Developed in the 1960s under the authority of the Department of Defense, the Internet, then called ARPANET, began as a communications link between scientists and research contractors. Researchers adapted the Internet for academic use in the early 1980s and began to appropriate it for civilian use by the late 1980s.8 Each computer on the Internet has an Internet Protocol (IP) address, which takes the form of four decimal numbers separated by periods (e.g., 128.192.124.124)." Because these numbers would be difficult for users to remember, Internet designers introduced alphanumeric domain names, which are used to access Internet sites instead of IP addresses.' Thus, to access the website of the University of Georgia School of Law, a user would type "http://www.law. uga.edu" into her web browser instead of "http://128.192.124.124," though either address accesses the same computer on the Internet. Lanham Act § 43(c), 15 U.S.C. § 1125(c) (2000). Lanham Act § 43(d), 15 U.S.C. § 1125(d) (2000). 6 U.S. CONST. amend. V. 7 ELLEN RONY & PETER RONY, THE DOMAIN NAME HANDBOOK 1 (R&D Books 1998). 'Id at3. 9 Id at 51. 10 A. Michael Froomkin, Wrong Turn in Cberspace: the Constitution,50 DUKE L.J. 17, 38 (2000). https://digitalcommons.law.uga.edu/jipl/vol11/iss1/13 sing ICANN to Route Around the APA and 2 Smith: Private Property for Public Use: The Federal Trademark Dilution A 2003] PRIVATE PROPERTY FOR PUBLIC USE The Domain Name System (DNS) is responsible for translating a domain name into the IP address required to access a website." This system is critical to the operation of the Internet, as domain names remain constant even when the resources, and thus IP addresses, change. 2 The DNS is a hierarchy divided into top-level domains (TLDs), which are divided further into second-level domains (SLDs), then third-level domains, and so on. 3 Each segment is separated by a period, and each segment represents a different level of the hierarchy.' 4 TLDs most commonly consist of either a two-letter country code (e.g., .us, .uk) or an international top-level domain (iTLD) three-letter code: .com, .org, .net, .edu, .mil, (...truncated)