The Internet can be an unpredictable place for intellectual property lawyers, particularly as it relates to "soft" IP such as trademarks and copyrights. Trademark and copyright protections evolved to address tangible objects: the words on a page, the music embodied in a recording, or the branding printed on a product. Decades of jurisprudence have drawn fairly bright lines around what can be protected, and those lines tend to conform to the edges of the physical world. In the copyright context, the focus is on when a work is "created" or "fixed" in physical form; in trademark (and unfair competition) the focus is on "use in commerce."

Transposing those distinctions into the digital world is not always straightforward. There is little difference (for copyright purposes) between the words written in a book and the words written on a website, but an entire new section of the copyright law had to be enacted to deal with the difference between a vinyl record and a digital music stream. Trademark law might not seem to present that same complexity: It should not matter if a mark is used digitally on a website or physically on a box of soap. But in fact, the Internet presents a number of challenges to traditional trademark analysis and the related issues of customer confusion and unfair competition. One developing area in that jurisprudence is the issue of Internet domain names. Are they protectible as marks? What uses does trademark protect in that context? A recent case in the Southern District of New York, Soter Technologies v. IP Video Corporation, 2021 WL 744511 (S.D.N.Y. Feb. 26, 2021), provides some useful analysis.

Background

Soter Technologies manufactures and sells the "Flysense," a device that senses vape smoke, which it primarily sells to school systems for installation in bathrooms and other locations where individuals might engage in prohibited vaping. In connection with that activity, Soter obtained the FLYSENSE trademark. Soter owns all rights in and to that mark, which is filed with the U.S. Patent and Trademark Office (US PTO) in connection with the following goods: "Environmental sensor for detecting vape, vapor, smoke, sound, motion, gas, and total volatile organic compounds. Soter owns the domain name "www.flysense.net" through which it advertises the Flysense device. Soter filed its trademark with the US PTO on Oct. 9, 2019 and it was issued on May 19, 2020, claiming a date of first use at least as early as November 2017.