Does Re-Registering a Domain Name Constitute "Registering" a Domain Name for Anticybersquatting Purposes?

Yes.

Jysk Bed'N Linen operates furniture stores in Georgia, New Jersey, and North Carolina.  In early 1999, it had a website developed for it and hosted that website at http://www.bydesignfurniture.com.  It had asked the website developer to register the domain name and assign the domain to Jsyk.  The domain name was registered, but it was never listed in the name of Jsyk.

In 2012, the domain name registration expired, and the website went down.  Jsyk asked the web developer to re-register the domain name and transfer it to Jsyk.  The web developer did re-register the domain, but did not transfer it.  Instead, the web developer registered a handful of other domains (bydesignfurniture.org, bydesignfurnitures.com, etc...) and demanded that he be compensated for his thousands of hours of work.  Jsyk sued, claiming violation of the Anticybersquatting Consumer Protection Act.

ACPA

The ACPA makes it unlawful to register, traffic in, or use a domain name that uses another's distinctive mark (where the accused cybersquatter has a bad faith intent to profit off of this usage).  Here, the web developer argued that "re-registration" does not constitute "registration" and thus did not violate the ACPA.  The Eleventh Circuit was not persuaded:

Including re-registrations under the registration hook comports with the purpose of Congress in enacting the ACPA—to prevent cybersquatting. See S. Grouts & Mortars, Inc., 575 F.3d 1235, 1246–47 (11th Cir. 2009) (“Registering a famous trademark as a domain name and then offering it for sale to the trademark owner is exactly the wrong Congress intended to remedy when it passed the ACPA.”(quotation marks omitted) (quoting Ford Motor Co. v. Catalanotte, 342 F.3d 543, 549 (6th Cir.2003))). It would be nonsensical to exempt the bad-faith re-registration of a domain name simply because the bad-faith behavior occurred during a noninitial registration, thereby allowing the exact behavior that Congress sought to prevent. We accordingly will not read additional words into the statute such as initial or creation. The plain meaning of register includes a re-registration. 

Thus, here in the Eleventh Circuit, re-registration constitutes registration for purposes of the ACPA.  This comports with the Third Circuit.  See Schmidheiny v. Weber, 319 F.3d 581 (3d Cir.2003).  Notably, the Ninth Circuit has reached a different conclusion.  See GoPets Ltd. .v. Hise, 657 F.3d 1024 (9thCir.2011) (determining that "re-registration" was not "registration" for concern that it would limit the transferability of rights associated with domain names).

The Court went on to confirm the web developer's activities demonstrated a bad faith intent to profit off of Jsyk's trademark rights.

Issuance of preliminary injunction, affirmed.
Jysk Bed'N Linen v. Dutta-Roy, Case No. 13-15309, (11th Cir. Dec. 16, 2015)

Is Using an Unflattering Candid Photo in Blog Posts To Criticize the Subject of the Photo Fair Use?

Yes.

Irina Chevaldina was a tenant in commercial property owned by one of Raanan Katz's corporate entitles.  Chevaldina was unhappy with Katz and posted a number of blog entries criticizing him.  Some of those posts included a candid photo of Katz that Katz deemed unflattering:

Katz acquired the copyright to the photo from the photographer, and then sued Chevaldina (and Google) for infringement.  Katz apparently dropped his vicarious infringement claim against Google but pursued the direct infringement claim against Chevaldina.  Chevaldina argued that fair use protected her usage.  The district court agreed, granting summary judgment in her favor.  Katz appealed.

The Eleventh Circuit explained the test for fair use:

In deciding whether a defendant's use of a work constitutes fair use, courts must weigh the following four factors: (1) the purpose and character of the allegedly infringing use; (2) the nature of the copyrighted work; (3) the amount of the copyrighted work used; (4) and the effect of the use on the potential market or value of the copyrighted work. Id. These four statutory factors are not to be treated in isolation from one another. See Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 578, 114 S.Ct.1164, 1170–71, 127 L.Ed.2d 500 (1994)

Purpose and Character
Katz argue that the purpose and character of usage was commercial in nature because one of the blog posts indicated a desire to write a book in the future about the experience.  The Court was not persuaded:

Chevaldina's reference to her intention to write a book about her experiences with Katz does not alone, however, transform the blog post into a commercial venture. Overall, the blog post retains her educational purpose of lambasting Katz and deterring others from conducting business with him. See March 4, 2012 Blog Post (“I hope my book will help ambitious people in their dream to be successful without selling the[ir] soul to the [d]evil.”). Moreover, the link between Chevaldina's commercial gain and her copying of the Photo was attenuated given that Chevaldina never wrote a book nor made any profits whatsoever. See Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756F.3d 73, 83 (2d Cir.2014) (discounting commercial nature of use where “the link between the defendant's commercial gain and its copying is attenuated such that it would be misleading to characterize the use as commercial exploitation” (quotations and alterations omitted)).

The Court also explained that, even though the photo was not altered, the usage was still transformative:

Chevaldina's use of the Photo was also transformative. A use is transformative when it “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” See Campbell, 510 U.S. at 579, 114 S.Ct. at 1171. Chevaldina's use of the Photo was transformative because, in the context of the blog post's surrounding commentary, she used Katz's purportedly “ugly” and “compromising” appearance to ridicule and satirize his character. See Swatch,756 F.3d at 84 (“Courts often find such uses [of faithfully reproduced works] transformative by emphasizing the altered purpose or context of the work, as evidenced by the surrounding commentary or criticism.”); A.V. ex el Vanderhyev. iParadigms, LLC, 562 F.3d 630, 639 (4th Cir.2009) (“The use of a copyrighted work need not alter or augment the work to be transformative in nature.”); Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1270 (11th Cir.2001) (finding transformative use where work was “principally and purposefully a critical statement”).

Nature of the Copyrighted Work
The Court stated that the law recognized a greater need to disseminate factual works than works of fantasy or fiction and went on to find this work to be factual as it was a mere candid photo.

Amount of Work Used
This factor garnered little attention as it is less relevant in analyzing alleged infringements of photographs.

Effect of the Use on the Potential Market for the Work
By Katz's own activities, it appears there is no market for the work, thus no market to destroy:

The district court did not err in finding Chevaldina's use of the Photo would not materially impair Katz's incentive to publish the work. Katz took the highly unusual step of obtaining the copyright to the Photo and initiating this lawsuit specifically to prevent its publication. Katz profoundly distastes the Photo and seeks to extinguish, for all time, the dissemination of his “embarrassing” countenance. Due to Katz's attempt to utilize copyright as an instrument of censorship against unwanted criticism, there is no potential market for his work. While we recognize that even an author who disavows any intention to publish his work “has the right to change his mind,” see Monge v. Maya Magazines, Inc., 688 F.3d 1164, 1181 (9thCir.2012) (quotation omitted), the likelihood of Katz changing his mind about the Photo is, based on the undisputed evidence in the record, incredibly remote.

Summary judgment decision affirmed.
Katz v. Google, Inc., Case No. 14-14525 (11th Cir. Sept. 17, 2015)

The Infringer Sourced The Infringing Goods in China, So Infringement Was Willful, Right?

No.

Washington Shoe Company ("WSC") has sold certain shoes in Target.  (There is debate through the opinion discussed below whether WSC sold its shoes through Target "for years," but I will not get into that factual dispute.)  WSC sent an initial demand letter to Olem Shoe Corp. concerning the below boots:

Olem responded that it was investigating the claim, but WSC had not identified any copyright registrations.  WSC responded with registration information, but the Copyright Office was unable to locate the deposit copies corresponding to the boots.  WSC then filed supplementary registrations to address certain issues.

WSC obtained summary judgment that Olem had infringed, but the district court refused to find the infringement willful.  WSC appealed.  Olem cross-appealed the infringement finding.

Willfulness

Concerning willfulness, WSC argued that it was entitled to a jury determination as to whether or not Olem's infringement was willful.  WSC argued the following facts inferred willfulness:

• Cease and desist letters;
• "Striking similarity" of the infringing boots
• Olem's sourcing of the boots from China because "it is ... well known that China is a source of infringing goods"
• Olem's inability to point to any other works on which its shoes were based

Neither the district court nor the Eleventh Circuit were convinced.  As to the letters, the Court noted that Olem undertook a serious investigation, and identified issues with WSC's copyright registrations, which required WSC to file supplementary registrations.  As to the similarity of the boots, the court noted that "striking similarity" is a standard for finding infringement, but that did not mean Olem had the necessary state of mind to support a finding of willfulness:

[WSC]'s asserting that the similarity of Olem's boot designs to those of [WSC] "makes it more likely that the work was copied" is, of course true.  [WSC] has indicated no authority, however, that supports its argument that the similarity of the designs is evidence that the copying was willful.  Generally, establishing a reckless state of mind in a copyright case requires a showing that the infringer possessed particular knowledge from which willfulness could be inferred, such as evidence demonstrating that the infringer was given samples of the copyrighted work prior to producing the infringing work.  See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 112, 113 (2d Cir. 2001) [parenthetical omitted]

As to sourcing the infringing boots in China, the Eleventh Circuit appeared hesitant to follow such an approach:

Although [WSC] notes that Olem did not design its boots and purchased them from China, it does not point to any record evidence to substantiate its claim that these facts "increase[] the probability of infringement" such that a jury could infer that Olem acted recklessly.  This argument, if effective, would impute reckless disregard to any company purchasing and selling products from China that it did not design itself that turned out to be copyrighted by another.  Thus, it is unpersuasive.

The Court was also not persuaded by WSC's argument attempting to attribute a reckless state of mind to Olem for its inability to point to other works on which the boots were based.

Cross-Appeal - Finding of Infringement

Olem's cross appeal attempted to negate the infringement finding based in part on challenging WSC's evidence suggesting broader access to WSC's boots based on purported misrepresentations.  The Court analyzed the WSC boots and Olem boots and concluded the Olem boots were "strikingly similar" to WSC's.  As such, the infringement finding stands.

Olem Shoe Corp. v. Washington Shoe Corp., Case Nos. 12-11227, 12-11356 (11th Cir. Jan. 12, 2015)

Attorney Fees Upheld For Prevailing Defendant

InDyne, Inc. sued Abacus Technology Corp. for copyright infringement relating to Abacus's setting up of a NASA website.  InDyne's allegations were that Abacus used InDyne's software for setting up the NASA website and such usage infringed InDyne's copyright.

The trial court granted summary judgment of non-infringement to Abacus, finding that InDyne did not have sufficient evidence to show that the copied elements of software were original, and thus worthy of copyright protection.  Abacus sought and was awarded its fees as a prevailing party under 17 U.S.C. § 505.  InDyne appealed this fee award.

InDyne argued on appeal that Abacus was "a bad actor" and had essentially gotten away with copyright infringement.  The Eleventh Circuit was not persuaded.  InDyne had failed to put forth adequate evidence of copyright infringement (a decision the Eleventh Circuit had previously upheld), thus, by definition, Abacus was not a copyright infringer (and therefore didn't "get away with it.")

InDyne also argued that it had sufficient witness testimony to support its claim (thus militating against a finding that its claim was objectively unreasonable).  Again, the Eleventh Circuit was not persuaded.  InDyne failed to the court the revision history for its "chameleon-like" "constantly morphing" software.

Fee award upheld.

InDyne, Inc. v. Abacus Technology Corp, Case No. 14-11058 (11th Cir. Sept. 24, 2014)