For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

FLEX by Fenwick is the only service created by an AmLaw 100 firm that provides flexible and cost-effective solutions for interim in-house legal needs to high-growth companies.  MORE >

Fenwick & West handles significant cross-border legal and business issues for a wide range of technology and life sciences who operate internationally..  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney


We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041

San Francisco Office
555 California Street
12th Floor
San Francisco, CA 94104

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200

U.S. Court of Appeals for the Ninth Circuit Rules There Is No Cause of Action for “Contributory Cybersquatting”

On December 4, the Ninth Circuit ruled that the 1999 Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d) does not provide a cause of action for contributory cybersquatting. In Petroliam Nasional Berhad (Petronas) v., Inc., No. 12-15584 (Dec. 4, 2013), the Ninth Circuit affirmed the district court’s decision granting summary judgment in favor of the domain registrar GoDaddy against claims by a Malaysian oil company known as Petronas arising from registration of the domains and by a third party.

This case provides one important precedent in the broader landscape of liability rules pertaining to “intermediary” businesses—businesses that provide platforms or technologies to others—relating to alleged misconduct by customers of those businesses. This decision takes its place among Tiffany v. eBay in the Second Circuit and Metro-Goldwyn-Mayer Studios v. Grokster in the Supreme Court as a defining landmark in that landscape. Debates will surely continue about legal rules regulating whose job it is to police the internet to protect rights claimants’ interests, the rights claimants themselves or businesses that provide the public with technology and communication capabilities.

The Petronas v. GoDaddy Decision

Petronas, a Malaysian energy company, discovered that one of GoDaddy’s customers had registered and, which redirected to a porn site. Petronas sued GoDaddy for, among other claims, contributory cybersquatting under the ACPA.

The district court granted GoDaddy summary judgment on all claims raised in the complaint. Petronas appealed only the dismissal of its contributory cybersquatting claim. A panel of the Ninth Circuit Court of Appeals unanimously held for GoDaddy, affirming the district court’s decision.

Analyzing the issues through three common lenses of statutory interpretation, the Ninth Circuit held (1) the plain text of the ACPA did not support a cause of action for contributory liability, (2) it did not appear Congress intended implicitly to incorporate common law doctrines in the ACPA; and (3) contributory liability would not advance the ACPA’s goals. While expanding on the third point, the Ninth Circuit noted that it would be “nearly impossible” for GoDaddy to analyze bad faith, under the ACPA’s nine-factor test, with respect to each of GoDaddy’s 50 million domain names. Slip Op. 14. In contrast, the court was rather unsympathetic to Petronas’s burden of enforcing its domain name rights against serial cybersquatters, briefly mentioning that the ACPA’s direct liability provisions gave mark holders “sufficient remedies.” Slip Op. 15.

In reaching its holding, the Ninth Circuit disapproved several earlier district court cases within the circuit that had accepted contributory liability under the ACPA. See Verizon Cal., Inc. v. Pty Ltd., 881 F. Supp. 2d 1173, 1176–79 (C.D. Cal. 2011); Microsoft Corp. v. Shah, No. 10-0653, 2011 WL 108954, at *1–3 (W.D. Wash. Jan. 12, 2011); Solid Host, NL v. Namecheap, Inc., 652 F. Supp. 2d 1092, 1111–12 (C.D. Cal. 2009). Those cases had thrown the issue into flux, especially those that imposed new limitations on secondary liability, such as an “extraordinary circumstances” test. The Ninth Circuit decided that “[r]ather than attempt to cabin a judicially discovered cause of action for contributory cybersquatting with a limitation created out of whole cloth, we simply decline to recognize such a cause of action in the first place.” Slip Op. 14.

The Larger Secondary Liability Landscape

The Petronas decision highlights the jagged topography of secondary liability in intellectual property law. The Patent Act explicitly recognizes secondary liability. 35 U.S.C. § 271(b). The Supreme Court has further recognized the implicit existence of contributory liability for copyright and trademark infringement. Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 442 (1984) (recognizing existence of contributory liability for copyright infringement, but declining to hold defendant liable for selling copying equipment that was capable of substantial noninfringing use); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982) (recognizing existence of contributory liability for trademark infringement, where defendant intentionally induces infringement or continues to supply a product to someone defendant knows is infringing a mark). Lower courts have elaborated on these standards to establish varying standards for contributory liability in copyright and trademark cases. E.g., Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 494 F.3d 788 (9th Cir. 2007) (copyright contributory liability requires direct control and monitoring of the instrumentality used for infringement; trademark contributory liability requires partnership, authority to bind; or joint ownership or control over the infringing product).

Trade secret statutes generally limit secondary liability to persons who know that the trade secrets they receive were misappropriated. See California Uniform Trade Secrets Act § 1(b)(2)(B)(iii); Restatement (Third) of Unfair Competition § 40(b)(3). Further, courts have been reluctant to impose secondary liability under relatively recently enacted statutes focusing on technological violations. For example, in Freeman v. DirecTV, Inc., 457 F.3d 1001 (9th Cir. 2006), the Ninth Circuit held the Electronic Communications Privacy Act, 18 U.S.C. § 2702, and the Stored Communications Act, 18 U.S.C. § 2707, did not authorize secondary liability. Petronas adopts an analytical framework remarkably similar to the Freeman court, which held that the plain text of the ECPA did not provide for contributory liability and neither the circumstances of the ECPA’s enactment nor the goals of the statute compelled a finding of contributory liability. Similarly, in Flynn v. Liner Grode Stein Yankelevitz Sunshine Regenstreif & Taylor LLP, 3:09-CV-00422-PMP, 2011 WL 2847712 (D. Nev. July 15, 2011), the court held “aiding and abetting civil liability does not exist under [the Computer Fraud and Abuse Act].” With the Petronas decision, the Ninth Circuit continues the trend against aiding and abetting liability in recently enacted statutes focusing on technology issues.

Implications of the Petronas Decision

The Ninth Circuit was straightforward in denying contributory liability for cybersquatting. Petronas not only insulates domain name registrars from bearing the burden of policing domain names but also reaches much farther. The decision may protect persons who provide technologies or services that alleged cybersquatters may take advantage of. Notably the district court in Petronas rejected plaintiff’s claim that merely providing a redirection service from the domain name amounted to contributory infringement.

Trademark owners hoping that litigation leverage over domain registrars would lead to more voluntary action by registrars in curbing allegedly offending domain names will be disappointed by the Petronas decision. They will need, instead, to continue to rely upon domain arbitrations under the Uniform Domain-Name Dispute-Resolution Policy and suits (including in rem, actions) against domain owners or the domains themselves. Those are usually not expensive options. Petronas was successful in its two in rem actions against the accused domains. It stumbled only when it sought to impose damages liability on a registrar even after Petronas had obtained the domains. This decision means that trademark owners may not use the prospect of domain registrar damages liability as leverage for obtaining informal remedies from a registrar.