For the third consecutive year, the Daily Journal included WilmerHale to its annual list of Top Verdicts, recognizing California's most impactful verdicts within the past 12 months. The firm was chosen for its successful representation of GoDaddy.com, Inc. against a $29.3 million claim brought by the Academy of Motion Picture Arts and Sciences under the Anticybersquatting Consumer Protection Act (ACPA). The Academy claimed that GoDaddy profited millions from advertisements on websites containing allegedly infringed domain names including the words “Academy Awards” or “Oscar.”
Following a four-day bench trial in the US District Court for the Central District of California, the court issued an opinion in GoDaddy's favor concluding that the Academy failed to prove that GoDaddy acted with a bad faith intent to profit. The ruling also found that GoDaddy had met its burden of proof in establishing an affirmative defense that it acted with a good faith belief that its use of the challenged domain names was a fair use or otherwise lawful.
Partner Robert Galvin, lead on the case, relied on the testimony from witnesses to explain the technical challenges GoDaddy faced and the extensive efforts it undertook to protect trademark owners' rights. GoDaddy also presented testimony from two of its customers, one of whom registered a domain in question—oscarcomedy.com. As Galvin shared with the Daily Journal, “By giving examples like that, we showed, “What is GoDaddy supposed to do? Is that guy trying to play on the Academy's Oscar mark or is he a guy named Oscar who's a comedian and wants a website?”
The ruling in GoDaddy's favor helps set a precedent for future cases since it establishes limits on ACPA's reach. According to Galvin, “That will hopefully prevent others who are in the Academy's shoes from trying to twist the statute and apply it much more broadly than it was ever intended.”