Project IV (2017): cease-and-desist, UDRP complaint, memo

MEMORANDUM

THOMAS, THOMAS, AND THOMAS
A Pretend Limited Liability Partnership

From: Ira Steven Nathenson, “Managing Partner, T3 PLLP
To: Spring 2017 T-Cubed “Associates”
Re: Trademark enforcement
Date: April 3, 2017

Assignment.

Background. Once again, your client is Acme, Inc. of Dania Beach, which is complaining that a third party is cybersquatting on a domain name that infringes its trademark rights. [corrected 4/25 upon further investigation] Its website has been hacked and one of its domain names has been stolen. You will need to investigate the matter, document the wrongdoing, and build a case file. You will determine the contact information for the defendant and draft a cease-and-desist letter. You will transmit that cease-and-desist letter to the alleged infringer when I give you the go-ahead. You will draft a domain name arbitration complaint with the World Intellectual Property Organization (WIPO) under the Uniform Domain Name Dispute Resolution Policy (UDRP). You will also draft a memo advising me and the client of our likelihood of success. Finally, you will assemble all of these materials into a realistic and organized casefile.

Educational goals. In the real world, you will do more than legal research and analysis: you will also utilize and develop a broad spectrum of legal skills, such as factual investigation, communication, and counseling. You will soon recognize that professional values—those embodied in ethics codes as well as broader societal concerns—also play a huge role in the actions you take as a lawyer. As noted in proposals for reforms for legal education, it is vital that law schools find ways to treat students as apprentices, with a holistic approach that pulls together analysis, skills, and values. In 1992, the MacCrate Report provided a detailed taxonomy of lawyering skills and recommended that those skills be better incorporated into legal education. In 2007, two additional significant documents, the Carnegie Report and Best Practices in Legal Education, further advocated for curricular reform. Therefore, in this assignment, you will apply the legal doctrine that we have studied in a practical way.

Details of assignment.

For additional information on the assignment and its components, also see “scoring” and “further details” below.

  1. Client and trademarks. Our client is Acme, Inc. in Dania Beach, FL. The same address and phone number/email information given out previously applies. Acme owns a number of trademark registrations and applications which will be provided to you. [Added 4/9: there is now a firm intranet which has confidential and privileged information. Password sent via email.]
  2. Client domain names and websites. [Updated 4/9.] Information provided via email and further information through firm intranet. [Further updated in class 4/11:] Your assigned domain/pages were determined in 4/11 class, sent via 4/11 email, and posted to intranet 4/12.
  3. Investigation and Documentation. As a lawyer, you will need to investigate to build your case and your case file. Use the live internet. Conduct WHOIS searches and document the relevant websites, including site appearance and source code. Check the sites regularly for any changed content. Keep in mind that anything that is on the live internet today may be changed or removed by tomorrow, so document materials. You may not make any contact (email, phone, or in person) with anyone without my prior written approval. Moreover, you are solely responsible for your own documentation and you may not obtain documentation from a classmate. This is a crucial part of your assignment, and the quality of your efforts here will help to ensure good scores in every aspect of the scoring, such as documentation, organization, writing, and analysis.
  4. Draft a cease-and-desist letter. Below you will find links to sample cease-and-desist letters, along with my guide on drafting C&D letters. Draft a cease-and-desist letter to your assigned opponent. When and only when I give you an express written go-ahead, transmit your C&D letter to the defendant. Do not transmit any correspondence to anyone prior to my express written approval, and you may only transmit your C&D to approved email address(es).
  5. Draft a UDRP complaint. Draft a persuasive complaint pursuant to the UDRP. Use as your template the WIPO model UDRP complaint. Your complaint should comply with the UDRP, UDRP rules, and Supplemental WIPO UDRP Rules. The UDRP procedure does not allow for witnesses or hearings. Therefore, a UDRP complaint is akin to a one-shot combination court complaint/motion for summary judgment, with evidence attached as exhibits. It’s like a “one-shot” litigation document. Accordingly, you must include all your relevant factual allegations, all of your legal arguments, your preemptive responses to any anticipated respondent counter-arguments, and attach exhibits from your investigation that support your complaint. The complaint should also include citations in the text to your attached exhibits. Note that thorough documentation will help you to compile persuasive evidence to use as exhibits to your complaint.
  6. Draft an objective memorandum. Draft an objective memorandum that: 1) assesses the effectiveness of your enforcement (C&D) efforts; and 2) assesses the client’s likelihood of succeeding in a UDRP proceeding. The memo should be addressed to the senior partner only and should be frank and objective. Do not hide the ball and do not sugar-coat things.
  7. Complete the attribution and certification form. Fill out the form completely with full disclosure. Attach copies of any forms used for your own work product such as pre-existing cease-and-desist letters and UDRP complaints.

Case file format: hard-copy only.

Turn in a well-organized paper file including:

  1. Documentation of your investigation.
  2. C&D letter and subsequent correspondence between you and your opponent.
  3. Draft UDRP complaint with exhibits.
  4. Memorandum on enforcement efforts and UDRP merits.
  5. Attribution/certification form along with copies of any model C&Ds, UDRP complaints, or any other documents you use.
  6. Any other information you would like to include.

Formatting of written work product.

Your written work product for this project will include: cease-and-desist notice, UDRP complaint, and memo. Each of these documents must use:

  • 12-point Times New Roman
  • 1″ margins
  • Page numbering
  • Single-spacing within paragraphs
  • Space between paragraphs, and between headings and other information
  • Regarding length:
    • The memo may not exceed ten (10) pages. Do not violate this rule, and do not violate the requirements above to stay within the ten (10) pages.
    • A good cease-and-desist letter can be written in one to three pages. Two is probably the average.
    • Regarding the UDRP complaint, there is no page limitation.

C&D letter due date [put on assignments page week of 4/2, reminded in class 4/11].

Be sure to send your C&D email out prior to your meeting with me. So if you’re meeting April 19, then send it out by April 18. If you’re meeting April 20, then no later than April 19. Ideally, you should try to get it out by next Monday or Tuesday so we have time to engage in communications. 

Case file due date.

The case file, in paper form only, is due at the beginning of class (our final class) on Thursday, April 27, at 2PM EST. Please deliver it to me personally in class. If you will not be in class, then please deliver it to me personally beforehand or personally hand it to one of the faculty secretaries: Ms. Mariela Torres, Ms. Diana Barrosso, or Ms. Suzanne Gelin. Do not leave it sitting around, so make sure it is served personally to me, Mariela, Diana, or Suzie.

Attribution/Certification form.

Please sign and submit a hard copy of the Certification of Originality and Attribution. To receive a score in any project, a certification form must be filled out and signed. Cf. FRCP 11(a). You must attach to the certification form any and all pre-existing forms or templates you used, such as: cease-and-desist letters, UDRP complaints, or anything else. You need not, however, attach the WIPO model UDRP complaint as I assigned that to you previously and am aware of it (indeed, I require you to use it).

Scoring criteria.

Scoring for each component will be done on a 4.0 scale. See “Further Guidance” for additional explanation.

C&D letter and correspondence (27.5%) Cease and desist letter 10%
Subsequent correspondence 10%
Completeness & organization of correspondence 7.5%
UDRP (30%) UDRP: writing & formatting 10%
UDRP: analysis & argumentation 10%
UDRP: use of exhibits 10%
Memo (25%) Memo: writing & formatting 10%
Memo: analysis 15%
Documentation & organization (17.5%) Documentation 10%
Casefile organization 7.5%
Certification form filled out fully and signed (unscored but required to obtain a score) 0%
Total 100%

Further guidance on each of the items listed above:

C&D letter and correspondence (27.5%)

Cease and desist letter (10%). This category looks to the quality of your writing, your argumentation, your persuasive and accurate use of facts, and your professionalism. It also looks to how wisely and well you have chosen and revised pre-existing C&D letters.

TIP [noted in 4/11 class and email]Be sure to send your C&D email out prior to your meeting with me. So if you’re meeting April 19, then send it out by April 18. If you’re meeting April 20, then no later than April 19. Ideally, you should try to get it out by next Monday or Tuesday so we have time to engage in communications. 

TIP [noted in 4/11 class and email]Where to send them. See intranet for the one and only email address you may use.

Subsequent correspondence (10%). This category looks to your performance as you interact further with the alleged infringer. This again considers the quality of your writing, argumentation, use of facts, and professionalism.

Completeness & organization of correspondence (7.5%). This looks to whether you organized your correspondence in a clean, meaningful way, and whether you included copies of any model letters you relief upon.

TIP: You must: 1) put correspondence in chronological order from first to last; 2) include any and all attachments with the corresponding email; 3) fully print out every email including prior history in the email (even if that makes the printouts long); 4) make sure your printouts show all relevant info (such as TO:, FROM:, DATE:, SUBJECT, etc.).

TIP: Your certification form must list and include copies of any pre-existing letters or C&Ds you worked from.

TIP: Make sure your correspondence is complete, and that you do not “pull” anything from correspondence for the exhibits. You may need several copies to make sure you have copies for correspondence and for any exhibits you want to use.

UDRP (30%)

Writing & formatting of UDRP (10%). This refers to the quality of your grammar and writing in the UDRP complaint. It also includes your compliance in formatting (See formatting of work product above).

TIP: Note that the WIPO model UDRP complaint does not comply with formatting requirements, so you will need to fix the formatting such as by cleaning up margins. I also recommend that in paragraph VI.A, VI.B, and VI.C, you use normal paragraphs (single-spaced with lines between each paragraph) rather than bullets. PS: Yes, cleaning up yucky formatting is an important lawyering skill and it is one you need to develop.

Analysis & argumentation of UDRP (10%). This refers to the quality of analysis, argumentation, and use of facts (particularly in paragraph VI).

TIP: This includes your ability to anticipate your opponent’s expected counterarguments and to provide your preemptive responses. It also includes your compliance with the UDRP, UDRP rules, and Supplemental WIPO UDRP rules.

TIP: UDRP arbitrators often use United States Trademark law as persuasive authority. Therefore, in your UDRP draft complaint, feel free to cite and discuss U.S. Trademark law to the extent that it provides guidance in analyzing the elements of the UDRP.

Use of exhibits in UDRP (10%). The UDRP complaint calls these “Annexes,” but lawyers more commonly call them exhibits. See Page 12 of the WIPO model UDRP complaint. You need to provide a listing of the exhibits/annexes and to include copies of those exhibits as attachment. The exhibits should be labeled to correspond to your listing of exhibits. You should also cite to relevant exhibits in the text of your complaint, and provide citations to them in your complaint.

TIP: Remember that you still need separate and complete documentation and correspondence files, so if there is anything in your documentation or correspondence files that should also be a UDRP exhibit, then you will need to print out an extra copy. Put differently, never pull something from your correspondence/documentation and use it as an exhibit. Instead, you’ll need an extra copy. That way, each part of your file (documentation, correspondence, and UDRP exhibits) will be complete, and the partner will not have to scratch his or her head wondering where things disappeared to.

TIP (added 4/9): You should NEVER use confidential, privileged, or work-product documentation as part of your UDRP exhibits. Keep in mind that such information is provided publicly to WIPO as well as to your opponent. Such conduct is very likely to waive any privilege or work-product protection and would be a gross violation of your ethical responsibilities. If you need to use information from such documents, then figure out a way to include or use the facts without waiving protection.

Memo (25%)

Memo writing & formatting (10%). This refers to the quality of your grammar, spelling, and writing in your memo. It includes the neatness of formatting, pagination, and numbering. As noted above in the “formatting” section, page limitations do apply to the memo.

Memo analysis (15%). Whereas your UDRP complaint is persuasive, your memo should be objective. This is to be addressed to the senior partner (me), and to give an objective and honest assessment. At a minimum, you must address:

FIRST, the effectiveness of your enforcement (C&D) efforts. Address: a) the accuracy of the facts & law in your C&D; b) the tactics & strategy you used in the C&D enforcement and communications; and c) your self-reflection on your enforcement, namely, what went well, what didn’t, and how you might improve in the future. The self-reflection should take the form of an object and honest self-assessment. Consider it to be akin to reflective journaling. So please be honest: if things went well, tell me what and why. And if you took a misstep, tell me what and why. Do not sugar-coat events. I am a big believer in the power of learning by doing, and doing includes making missteps and mistakes. Most every one of you — likely all! — will make one or more errors in your C&D efforts. What I want to know is what you learned through those efforts, both successful and otherwise.

SECOND, assess the client’s likelihood of succeeding in a UDRP proceeding. This requires you to do an analysis of your assigned case using the Uniform Domain Name Dispute Resolution Policy (UDRP), particularly par. IV.a, as well as any relevant factors from IV.b and IV.c. United States Trademark law may also be persuasive and useful here, so feel free to use it as persuasive authority.

Documentation & casefile organization

Documentation (10%). This looks to the quality and thoroughness of your investigation as evidenced by documentation you include in the file.

TIP: This should be a separate section of your case file.

TIP: Make sure that your documentation is complete. (See tips above regarding exhibits to the UDRP complaint.)

TIP: This scoring category does not include the your correspondence (which is graded separately). It does, however, include documentation relevant to other parts of your investigation, including WHOIS printouts, traceroutes, trademarks, website documentation (printouts, screencaps, HTML printouts), and more. You are solely responsible for your own documentation and you may not obtain documentation from a classmate.

TIP [from 4/11 email]Be sure to document your assigned site. Consider printouts and screen caps. For screen caps, capture the time and date, but do not include any confidential information (such as privileged or work product).

TIP [from 4/11 email]Don’t forget to review and document your site’s underlying HTML source code, as that might provide insights into the defendant, as well as facts relating to possible infringement or bad faith. With Windows, right click and view source. With Mac, see instructions at https://www.thoughtco.com/view-html-source-in-safari-3469315.

TIP [from 4/11 email]Be sure to obtain your own documentation; do not rely on others.

TIP [from 4/11 email]Be sure to document when you see the site has changed; do not wait or the site might change before you have a chance to document it.

Casefile organization (7.5%). This refers to the organization of your case file as a whole as well as the organization of your documentation.

TIP: Your goal should be to make the casefile easy for the partner to navigate. (Or in the real world, possibly other lawyers from your firm who follow up on your work, or for your client.) Ways to organize may include: binder/tabs, large folder with subfolders, three-part folder. You might use a combination of tabs and clips to organize things.

TIP: Each separate document should be stapled together. Please do not hand in a big pile of documents clipped together. Consider what would happen if I dropped the file without the clip? I’d have no way to know what papers go with others! Make sure your file can survive the “52-pickup” event!

TIP: The organization of your correspondence is scored separately.

Certification form. Not scored but an absolute necessity to obtain a score, as noted above. Make sure to fill it out fully and disclose broadly regarding anyone you assisted or who assisted you. Also be sure to attach copies of any templates you use, such as cease-and-desist letters or UDRP complaints. As noted, you need not attach or disclose the WIPO UDRP form as I  assigned it to you and require you to use it. As such I am already aware that you are using it as a template.

Caveats & warnings.

  • This project is cumulative. This project uses the cumulative knowledge and skills you have gained so far, including the Abercrombie spectrum, the Lanham Act’s section 2 bars, Sections 32 and 43 infringement (and for famous marks, dilution), and trademark defenses.
  • Give me questions for our client. For this project, you will not be getting additional information from one of your classmates/CEO. Instead, you should pose “client” questions to the senior partner, who will “ask” the client for information. I will “pass on” any questions you might have for Acme and will give back to you any information I “get” in response.
  • Your own work.
    • You may seek advice and feedback from, and provide advice and feedback to, your colleagues who are enrolled in this semester’s class.
    • However, your work must be your own. Do not give me work product that reflects a collaborative or shared effort. So although you can give and get feedback on your drafts, you may not collaborate or share work product.
    • You may not:
      • Seek the advice or feedback from anyone who is not registered in this class this semester.
      • Email, contact, or call anyone outside this classroom. Examples of prohibited contact would include, without limitation, the USPTO, any domain-name registrars, any internet hosts, any attorneys, or any former members of this class.

Project resources:

Revised Apr. 12, 2017 (adding information from 4/11 class and email regarding page assignments, email, C&D, and more)

Correction Apr. 25, 2017 (corrected reference to hacking and stealing)