A federal judge ruled that the Academy of Motion Picture Arts & Sciences failed to show that GoDaddy acted in “bad faith” with an intent to profit off of Academy trademarks, including ones for the annual Oscar telecast.
U.S. District Judge Andre Birotte Jr., in a ruling made public on Thursday, wrote that GoDaddy had met its affirmative good faith safe harbor defense in a surprising turn in the five-year-old litigation.
The Academy had sued GoDaddy in 2010, contending that it was liable as it allowed customers to buy Academy- and Oscar-related domain names, and then share in revenue from ads on those pages.
The court had already determined that 237 of 293 domain names are “confusingly similar” to the Academy trademarks, and that GoDaddy used or trafficked in those domains by enrolling them in its parked pages program as the licensee. GoDaddy itself did not register any of the domains in question, Birotte wrote.
He wrote that “unique findings” show that GoDaddy did not have a bad faith intent to profit from the Academy trademarks.
“GoDaddy reasonably relied in good faith on the representations made by the registrants of the Accused Domains stating that the registration of those domains did not violate any third party trademark rights,” he wrote. “As a result, GoDaddy could not have used or trafficked in any of the Accused Domains with a subjective bad faith intent to profit from the AMPAS Marks until such time as GoDaddy received notice by a third party of a potential issue.”
He also wrote that every registrant represents that the domain name does not violate third party rights.
Birotte’s decision came in a 128-page findings of fact and conclusions of law. A trial in the case was held last month.
“The evidence is undisputed that once AMPAS or any other trademark-holder called GoDaddy’s good faith belief into question by filing a takedown request, GoDaddy always responded by immediately (sometimes within a matter of minutes) reassigning the domain to an advertisement-free template,” he wrote.
He also noted that “it is difficult to see how AMPAS could complain or be harmed if a visitor to domains like ‘oscar360.com,’ ‘oscarcomedy.com,’ ‘theoscarteam.com,’ or ‘makingtheroundswithoscar.com’ visited a web page that displayed only GoDaddy banner ads and contained no reference to the AMPAS Marks.”
He did write that some ads appeared that did reference Academy trademarks, but they were third party ads controlled by Google, and that there was no evidence that GoDaddy “subjectively intended” for them to appear.
The Hollywood Reporter first reported on the decision.