Date: 06-15-2001

Case Style: Shields v. Zuccarini

Case Number: 00-2236

Judge: Aldisert

Court: United States Court of Appeals for the Third Circuit

Plaintiff's Attorney: Howard M. Nue, Pembroke Pines, Florida

Defendant's Attorney: Michael P. Coughlin and William J. Levant of Kaplin, Steward, Meloff, Reiter & Stein, P.C., Blue Bell, Pennsylvania

Description: John Zuccarini appeals from the district court's grant of summary judgment and award of statutory damages and attorneys' fees in favor of Joseph Shields under the new Anticybersquatting Consumer Protection Act ("ACPA" or "Act"). In this case of first impression in this court interpreting the ACPA, we must decide whether the district court erred in determining that registering domain names that are intentional misspellings of distinctive or famous names constitutes unlawful conduct under the Act. We must decide also whether the district court abused its discretion by assessing statutory damages of $10,000 per domain name. Finally, we must decide whether the court erred in awarding attorneys' fees in favor of Shields based on its determination that this case qualified as an "exceptional" case under the ACPA.

Shields, a graphic artist from Alto, Michigan, creates, exhibits and markets cartoons under the names "Joe Cartoon" and "The Joe Cartoon Co." His cr eations include the popular "Frog Blender," "Micro-Gerbil" and "Live and Let Dive" animations. Shields licenses his cartoons to others for display on T-shirts, coffee mugs and other items, many of which are sold at gift stores acr oss the country. He has marketed his cartoons under the "Joe Cartoon" label for the past fifteen years.

On June 12, 1997, Shields registered the domain name joecartoon.com, and he has operated it as a web site ever since. Visitors to the site can download his animations and purchase Joe Cartoon merchandise. Since April 1998, when it won "shock site of the day" from Macr omedia, Joe Cartoon's web traffic has increased exponentially, now averaging over 700,000 visits per month.

In November 1999, Zuccarini, an Andalusia, Pennsylvania "wholesaler" of Internet domain names,1 registered five world wide web variations on Shields's site: joescartoon.com, joecarton.com, joescartons.com, joescartoons.com and cartoonjoe.com. Zuccarini's sites featured advertisements for other sites and for credit card companies. Visitors were trapped or"mousetrapped" in the sites, which, in the jargon of the computer world, means that they were unable to exit without clicking on a succession of advertisements. Zuccarini received between ten and twenty-five cents from the advertisers for every click.

In December 1999, Shields sent "cease and desist" letters to Zuccarini regarding the infringing domain names.

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Click the case caption above for the full text of the court's opinion.

Outcome: Affirmed.

Plaintiff's Experts: Unknown

Defendant's Experts: Unknown

Comments: This case is an example of the rapidly developing law relating to the Internet.