TROs affect domain registries, other sites used by infringers
Even though the heavily debated Stop Online Piracy Act (SOPA) was stalled in Congress last year, district courts are still utilizing tactics that mimic some of the controversial provisions of this bill in trademark cases.
This year alone, there have been at least 18 orders affecting both alleged infringers and intermediaries throughout the country. These have ranged in severity, with several combining temporary restraining orders with preliminary injunctions. Some have gone ever further, redirecting traffic from a counterfeiter’s domain to a website with information on the lawsuit, requiring domain registries to take down domain names that sell counterfeit goods, or even freezing counterfeiters’ financial accounts.
These actions have created a division within the trademark bar, very similar to the heated debate that surrounded SOPA.
"These are extraordinary remedies," said Andrew Bridges, partner with Fenwick & West.
"When it's not cybersquatting, transferring a domain is like transferring a printing press," Bridges said. "A domain name is a communications facility."
Bridges also said that luxury or sports brands have orchestrated most of the recent domain seizures and rulings against third parties. "In SOPA, the discussion was all about counterfeit pharmaceuticals killing Americans, but the reality is it's [cases about] unauthorized NFL jerseys," he said.