Talking Legal with Attorney Marc Randazza
Talking Legal with Attorney Marc Randazza
12/22/2006 - Monte Cahn
Monte talk to Attorney Marc Randazza from First Amendment.com. Mr. Randazza’s practice is focused on First Amendment, Media, Internet, and Gaming Law. Randazza has experience litigating libel defense cases, drafting online agreements, and counseling internet and land-based gambling operations on various nuances of gaming law. Mr. Randazza handles all aspects of intellectual property matters from trademark registrations to complex intellectual property litigation before federal courts, the USPTO, and in international arbitration actions. Mr. Randazza also handles challenges to unconstitutional zoning restrictions and licensing requirements imposed by local municipalities against First Amendment protected businesses.
[Commercials]
M: Hello everyone. This is Monte Cahn. Welcome to Domain Masters. Another live show here from sunny Ft. Lauderdale. Tonight we’re going to go legal issues. I have a great legal guest on tonight, Mark Randazza. Mike’s practice is focused on First Amendment, Media, Internet, and gaming law. As everyone knows, there’s been a lot of stuff going on in the gaming industry and First Amendment rights and we’re going to talk to Mark in a couple minutes. Ah, we’re going to go over some of the things that are going on with the gaming industry and how the United States’ new regulations on United States citizens even participating in online gaming affects things; and how that also relates to domain names and domain name law and some of the reverse hijacking issues that are going on as well.
So we’re going to break for a short commercial, pay some bills and be back on with Mark Randazza. Stay tuned.
[Commercials]
M: Master of my domain. Welcome back to Domain Masters. Again, this is Monte Cahn, your host and my very special guest who I had the pleasure of meeting two weeks ago at the New England-Miami Dolphins game and had . . . just a great guy; invited me to his family’s tailgait party. We had the best sausage in the world and ate like pigs and drank some beer and had a good time – is Mark Randazza. Mark, welcome to Domain Masters.
Ma: Thanks, Monte. Did you have to bring up that painful event of that game? I’m a New England fan; that was brutal for me.
M: [laughs] That’s the only thing I hold against you is that you’re a New England fan. Thank God the Dolphins kicked your ass all over the place that day. [laughs] So, uhm, I know your practice is focused on First Amendment, Media and gaming law. Why don’t you give us a little bit of background even further than that. Give us like a 30,000 foot view of your experience, how you got into the Internet, uhm, when you got into law and what got you targeted or interested in participating in the Internet. And then we’ll go over some details about what’s going on in the industry.
Ma: Well, you know, interestingly enough, I made a prediction back in 1995 that this Internet thing was going to go the way of the CB radio and no one will make any money at it, so, that’s my initial point of departure from it and so, don’t take any stock tips from me.
M: [laughs] Well, hopefully, your legal clients now see a different perspective, though.
Ma: Yes, Yeah. And, I’ve come around finally. But, you know what? My First Amendment studies began while I was University of Massachusetts. I was an undergraduate student studying journalism and I got into a Media Law class and that just immediately set the fire for me. You know, and I decided I wanted to defend free expression from that point forward. So, I worked as a journalist for a little while and then I went to law school at Georgetown University and from there I went on . . . I knew I wanted to get into some IP aspects of law as well as First Amendment laws. So I worked at a Swedish law firm in Stockholm, doing intellectual property work. Then I did a research and teaching fellowship at the University of Florida in Media law . . .
M: Right.
Ma: . . . and since then I’ve been publishing in the area, doing commentary and representing clients. And . . .
M: Now . . .now . .
Ma: . . . I also teach trademark law and copyright law and entertainment law at Barry University School of Law.
M: Oh, great. So, uhm, you know, your areas of interest are on the side that a lot of people sometimes don’t want to talk about or some people don’t understand what’s involved. So not only are you an attorney but you’re an attorney defending in many cases many of the companies and organizations in industries that are looked at as kind of black labeled or the bad guys. So, you focus on defending the rights of adult companies, gaming companies, and a lot of those. Talk a little bit about that and what makes that a little bit more complicated or a little bit more exciting in the area of law and what you guys have been able to learn from that experience.
Ma: Well, you know, my, ah . . . my initial intent was being a journalist I wanted to defend the newspapers. But then, I just started to realize that the truly cutting edge First Amendment issues are always for the (as you describe them) the blacklisted businesses. You know, the businesses that nobody likes. [inaudible]
M: Right. And ironically, they’re the businesses that happen to set a lot of the foundations on how to make money on the Web . . .
Ma: Yes.
M: . . . and it’s their initial foundation and their initial practices that everyone else is using today and making a lot of money on the Internet.
Ma: Well, the innovation, the technological and marketing innovation that’s been driven by the adult entertainment and gaming industries online really have brought the Internet into its current state of technological explosion.
M: Right.
Ma: Without porn and gambling, we’d be in the Internet Stone Age.
M: Right, right.
Ma: [inaudible]
M: That is true. So, in many ways, we have to thank these industries, even though they’re sometimes looked upon badly, as what’s been successful, even in CPA models, that Amazon and Barnes & Noble and a lot of the online retailers are doing today are . . . were created from the adult and gaming industry.
Ma: Yeah. And not only do we owe the adult industry, especially for technological innovations, we owe them a lot of our freedom. And that’s something that, you know, people who are quick to criticize those industries should recognize. You know, I was very, very inspired by the film “The People vs. Larry Flint.” It is required viewing for my entertainment law class. And any new employee that’s at my law firm, I tell them you will really get a lot more out of working here if you watch this movie before your first day at work.
M: It’s a great flick, too. “The People vs. Larry Flint.”
Ma: Yeah, outstanding. And I can remember watching that movie right before law school, sitting in the seats, watching, you know, Larry Flint saying, you know, that if the First Amendment is there (and of course, you have Woody Harrelson playing him) but the First Amendment is there to protect someone like me, it protects everyone. And I look at the adult industry, the gaming industries, these industries that are not politically favored, or not favored in polite conversations, that’s the border of the First Amendment and the First Amendment is the wellspring of all of our freedoms that we have as Americans. And if you can defend that border, all the stuff that we really need, that everybody loves – political speech – really being able to be a free American – that stuff stays nice and far from the border, it’s nice and protected. And you know, the dirty of edge of every battle is the front line.
M: Yeah.
Ma: And that’s really why I jumped into the breach here. I love what I do. You know, it took a little explaining to my mom; you know, I got the so-we-sent-you-to-Georgetown-for-$100,000-so-you-can-represent-the-adult-entertainment-industry-huh?
M: [laughs] They love ya. They love ya, now.
Ma: Now, if we’re at a cocktail party, she says, no, he’s not an adult entertainment lawyer, he’s a Constitutional rights lawyer.
M: [laughs] That’s great. Well, now let’s shift focus a little bit in keeping the gaming industry and adult industry in line and let’s talk about the domain business and how it relates in general. You know, some of the things you’re working on and where you see law and policy today with the domain name business, especially in those particular industries that are looked upon as, you know, not something that everybody participates in or looks to as a model sample.
Ma: Well, you know, domaining is a . . . its interesting because its one of these unintended consequences or unintended results of the creation of the World Wide Web. I don’t think anybody expected that there would be people, you know, running out onto the Internet, staking out their claims, kind of the way people did when they settled the Wild West. These are . . . it is a pure and very admirable form of entrepreneurial capitalism. Why shouldn’t someone stake out some territory that they see as valuable, and then try to farm it to make a living from it.
M: Exactly. Exactly. And there’s a lot of misconception and we’ve covered this in a number of legal shows that we’ve done, but, you know, there’s definitions of what cyber-squatting is and a lot of companies and big organizations and other domain owners (or former domain owners) think that if you have a domain name that’s undeveloped and you’re not using it and that that’s called squatting (and its not). And, then you get into some of the other areas of domain law. What are some of the most interesting domain cases that you’ve been involved in and you know, what are the specific outcomes.
Ma: Well, interesting domain cases that I’ve been involved in, you know, I’ve done a lot of work for companies with (you know, I don’t want to discuss any of my specific clients on the air) but I have had companies with very strong and developed marketing campaigns and these companies will invest a lot of money and a lot of time and a lot of resources into developing a very well-known trademark. And then if you have (kind of the dark side of domaining) someone who will look at that trademark, register a permutation of it, and then try and of course, divert traffic from my clients, who have every right to have that traffic go to their website. That’s . . . you know, that’s clear cyber-squatting. That’s the one that gives the rest of the domain industry a stain.
M: Right.
Ma: On the other hand, you know, I think one of the most interesting cases to recently come out is the LV.com case; I did not work on that case. Where a domainer owned the domain name LV.com, which they had used to advertise issues about Las Vegas and then Louis Vuitton came after them and sought to have that domain canceled and transferred back to Louis Vuitton. Now, I see Louis Vuitton’s point – we own a trademark; that trademark is LV; and this person owns LV.com and they’re really not doing anything with it. Therefore, they’re infringing on our rights. However, the other side is LV could mean any number of things. It doesn’t necessarily have to stand for Louis Vuitton; it doesn’t have to stand for Las Vegas.
M: Exactly.
Ma: And I think what this shows . . . that case shows, what I think, is a very big weakness in the UDRP (which I’m sure all of you that are listening is the Uniform Domain Name Resolution Policy) . . . a trademark owner . . .
M: Just for those that are new listeners – we have about 2,000 listeners each week who download the show and everything – just map through the different forms that people go to . . . you know, just real briefly put together claims to defend their rights.
Ma: Well, you have two options. You can either use the UDRP, or the ACPA, as far as legal remedies. Now, the UDRP . . . well, lets talk about the ACPA first. The ACPA is declaring war; that’s a Federal lawsuit that is a lot of money, a lot of expense, a lot of firepower and it also has a lot of consequences. If you take a domainer to court, or if a domainer is sued under the ACPA, they can be looking at $1,000 to $100,000 in damages for each domain. And, you know, of course, you don’t want to have a Federal lawsuit filed against you; nothing good comes of that.
M: Right.
Ma: The UDRP, on the other, is an arbitration proceeding. It’s not exactly court; it’s a lot more informal and it’s a lot cheaper. You know, an ACPA claim, a Federal lawsuit, I would say that anybody that brings a Federal lawsuit and they don’t have at least some money in reserve, up to $50,000 to spend on the life of that case, shouldn’t be bringing the case.
M: Right, right.
Ma: Under the UDRP, it’s a lot cheaper. Under the UDRP, you can file with the World Intellectual Property Organization, the National Arbitration Forum and there’s also the Asian Domain Name Resolution Center. There’s also another counsel, a resolution service in New York but they’re very rarely used. The two big ones are WIPO and NAS. And whether someone files in one or the other, there, you know, the rules are supposed to be the same. The UDRP has kind of its own growing set of common law rules. But there’s some procedural differences between WIPO and NAS, you know; NAS empowers its case coordinators to make a lot of decisions that, I think, panelists should be making. And I think WIPO is just a little more friendly when it comes to either side making decisions that might not be strictly within the rules.
M: Right, right. Okay, now, talk a little bit about the new phenomenon where domainers need to fly less by the the seat of their pants and treat this as a serious business. What’s you’re take on all that given your particular clients?
Ma: Well, you know, I get a lot of client inquiries constantly, from both sides of the domaining divide. I represent trademark owners in UDRP cases and ACPA and I represent the other side and the problem is, I tend to get phone calls from domainers after they’ve already blown it. If you get a demand letter, that’s the time to call an attorney. Uhm, handling it, uh, I think that domainers being a very entrepreneurial group, being very much a making something from nothing mentality . . .
M: Right.
Ma: You know, when you have the ability and the forward thinking to say I can create wealth and traffic and I can create a business from virtually nothing, you really have a right to an ego. The problem is, it sometimes makes you realize that there are rules that you have to play buy and when you get a demand letter from an attorney, that is the time to call your attorney.
M: Yeah.
Ma: I’ve often gotten calls – two calls in the past week – from people who said, well, we got sued under the ACPA; we didn’t really do anything. We defaulted and now they’re trying to collect this default judgment; can you help us? And, my answer is usually, no. I mean, how am I going to help you? I mean, you got sued; you didn’t do anything about it. Now, you’ve got a lot bigger problems. Whereas, had you defended yourself, yes, you had a good case.
M: Now, uhm, what’s your take in terms of strategy for those that have names that could be questionable? Let’s say somebody has a name that also has another meaning or might have a trademark – what’s the definition of true cyber-squatting in terms of . . . let’s say you have a domain name that also has a trademark for . . .Just walk us through briefly. Do you have rights to the domain name if you registered it prior to the trademark being filed? What happens if you’re confusing customers? If you’re not refusing customers? Where do the rights go? Where do the decisions typically lay on these types of things?
Ma: Well, whether or not there’s a trademark owned by the complainant in a domain name proceeding isn’t just a matter of registeration. Yes, if there’s
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