Devinn Lane Files Suit Against Vivid, Digital Playground, Others

[gonzo]

LOS ANGELES — Former adult star Devinn Lane filed suit last week against numerous blue-chip adult entertainment and digital media companies, alleging the companies used and profited from domain names similar to her performer name.


The suit, filed at U.S. District Court in Los Angeles, charges that Vivid Entertainment Group, Digital Playground, Domains by Proxy, Dotster and Moniker Online Services, among others, made use of her performer name in domain names such as DevinnLaneXXX.com, Devinn-Lane.com and DevinnLaneCash.com, among others, without compensation.

Lane, whose real name is Cherilyn McCarver, alleges that in some of the cases, the companies conspired with each other to divert traffic to adult websites that they own.

Lane said that Arizona-based Domains by Proxy registered DevinnLaneXXX.com more than three years ago without Lane’s consent. Two years later, Lane said she discovered that the site redirected to www.kim1.vivid.com, a website owned by Vivid.

In January, the suit claims, the site stopped redirecting to that site and became a parked page that is owned by Delaware-based Dotster. A month later, the parked page started redirecting to DigitalPlayground.com, which lasted only one month, after which it became a parked page, which it continues today.

The complaint also targets the owner of DevinnLaneCash.com, which allegedly is owned by Privacy Protect, and Devinn-Lane.org and DevinnLane.org, which allegedly are owned by Florida-based Moniker. It also targets Pixel, a Hawaii company, which allegedly owns Devinn-Lane.com.

“Plaintiffs are informed and believe that defendants are using [Lane’s trademark] deliberately and intentionally in order to drive consumers to the infringing sites and other websites and to capture and trade on the goodwill and notoriety of the [trademark],” the suit said.
Michael Fattorosi, who represents Lane, would not disclose to XBIZ additional details of the suit; however, the filing said that Lane filed and was awarded a trademark to her name in 2002.

Lane has performed in more than 70 films since her debut in 1999. She also has directed about 17 videos, including five volumes of adult-themed “The Devinn Lane Show,” and has produced two adult films.

In addition, Lane was a Wicked contract star and has hosted shows on Playboy TV and has been featured in softcore adult films for Cinemax, as well as a mainstream movie, “The Girl Next Door.”

XBIZ was unable to receive comment on the complaint from Vivid officials at post time; Digital Playground officials were out of the country and unavailable for comment.
With the trademark infringement and cybersquatting charges, Lane is asking for injunctions over the use of the domain names and actual damages that include potential treble damages, as well as attorneys fees.

http://www.xbiz.com/news/100702

[RawAlex]

Yawn.

The girl is a name star, and the use of a domain name to market her isn't exactly big news, no different from a store putting up a sign saying "Get your Devinn Lane Videos here".

I also have to wonder about the idea of work for hire. I am sure that this girl did work on a contract basis, standard model release "got paid X to appear in the movie" routine. She doesn't control that, nor would she have direct control of the marketing or sales of that material. If she did 70 movies and someone gets the online rights to all of them, should they be banned from using her name in the domain name that markets those movies?

The guys redirecting the traffic to other sites might have an issue, although even then, they might only have to show their original intent (did it originally point to a site that contained her content) to show that they were not doing anything particularly misleading.

Porn girls think that they have some sort of magical control of their name long past the point of signing that model release. I just don't think that is really the case.

[TheEnforcer]

All depends on the contract/release signed.

If it's a standard one she's SOL.

[DannyCox]

It also depends on whether she trademarked her name. We trademarked "Carol Cox" in both the US and Canada, which does give us a little extra power over misuse.

The funny thing is Devinn would use other Porn Stars as keywords on her page to get search engine traffic. She started doing stuff in the Swinging community, and began using Carol's name all over the place

[RawAlex]

Danny, that information makes me think this is more of a "ran out of money, gotta sue somebody" deal than any great harm being caused.

[pornlaw]

Since I am the attorney on this one, I can assure you that all of the replies have been wrong so far.... Devinn was a contract star for Wicked. There are no signed releases for DP or Vivid. She has her name trademarked and it is now a famous mark.

You guys are really missing the bigger story here.

As for the keyword issue, this issue has been litigated by Google and they won. I can get the cite if you guys want.

This is going to be an interesting case as it unfolds. However, I am not going to comment further at this point in time.

Michael

www.AdultBizLaw.com

[TheEnforcer]

Good luck with the case Michael. Appreciate the response.

[RawAlex]

Michael, my only two comments: 1) She did work before wicked, including penthouse and others, and 2) does a Wicked exclusive contact mean that Wicked does not have resale or reuse rights on the content produced, including rights like resale for net use?

IMHO, she will win some with the guys who just registered her name, although there would be some debate that she didn't jealously protect her trademark (one of the domains is more than 3 years old... a jealous protector a trademark would take issue almost immediately, as she was aware of the domain and didn't do anything).

[JFK]

Originally Posted by DannyCox

It also depends on whether she trademarked her name. We trademarked "Carol Cox" in both the US and Canada, which does give us a little extra power over misuse.

The funny thing is Devinn would use other Porn Stars as keywords on her page to get search engine traffic. She started doing stuff in the Swinging community, and began using Carol's name all over the place

Danny, how do you go about trademarking a name in Canada ?

[pornlaw]

Michael, my only two comments: 1) She did work before wicked, including penthouse and others, and 2) does a Wicked exclusive contact mean that Wicked does not have resale or reuse rights on the content produced, including rights like resale for net use?

Okay -- one comment

Here's what most people need to understand -- just because you guys shoot a girl does not give you unfettered rights to her name... this is a rather common misperception. There are literally hundreds of names being squatted on, or best case scenerio for me -- infringed upon. With a MR, you can use her name - trademarked or not - after the top level domain name. ie., devinnlanexxx.com - not legal www.pornstars.com/devinnlane.htm -- perfectly acceptable. Even if Wicked did resell content to Vivid or DP, which I cant imagine they would do -- those rights will not include trademark rights. She owns her trademark.

Michael

www.AdultBizLaw.com

[DannyCox]

Originally Posted by JFK

Danny, how do you go about trademarking a name in Canada ?

http://www.cipo.ic.gc.ca/epic/site/c..._wr00002e.html


Here is an example of the Canadian Trade Mark for "Carol Cox"

[JFK]

Originally Posted by DannyCox

http://www.cipo.ic.gc.ca/epic/site/c..._wr00002e.html


Here is an example of the Canadian Trade Mark for "Carol Cox"

Thanks

[RawAlex]

I have to add this, a quote from AVN today:

'The Devinn Lane case illustrates a developing trend in our industry,' attorney says.

Yeah, what he doesn't say is that now that too many fuckers have come into the business and killed the low hanging fruit and fatally damaged the rest of the tree, now people are down to suing each other in an attempt to make a living.

Cannibalism at it's finest.

[pornlaw]

Originally Posted by RawAlex

Yeah, what he doesn't say is that now that too many fuckers have come into the business and killed the low hanging fruit and fatally damaged the rest of the tree, now people are down to suing each other in an attempt to make a living.

Cannibalism at it's finest.

Actually its the maturation of any industry. Consolidation, cannibalism or survival of the fittest ? Only the strong survive in a shrinking economy.

And if you meant that grabbing the domains of pornstars to drive traffic, then yes, the low hanging fruit is gone.

It use to be that pornstars were told that it would be $500 - $1000 - $1500 to buy back their name from someone who was enterprising enough to grab it before someone else did.

Now its going to be pay and give it back, or pay to defend an IP suit.

This industry is no different than the music industry. The record labels no longer have the power they once did. Tower is gone, Virgin doesnt sell that much music and MTV doesnt show videos. Illegal or legal downloads have given power back to the musicians to control distribution of their content. Clip4Sale.com is not that much different.

Times are a changing....

Michael

www.AdultBizLaw.com

[gonzo]

Welcome to those of you joining the thread from the Xbiz news article.

Please add your comments.

[RawAlex]

Originally Posted by pornlaw

Actually its the maturation of any industry. Consolidation, cannibalism or survival of the fittest ? Only the strong survive in a shrinking economy.

And if you meant that grabbing the domains of pornstars to drive traffic, then yes, the low hanging fruit is gone.

It use to be that pornstars were told that it would be $500 - $1000 - $1500 to buy back their name from someone who was enterprising enough to grab it before someone else did.

Now its going to be pay and give it back, or pay to defend an IP suit.

This industry is no different than the music industry. The record labels no longer have the power they once did. Tower is gone, Virgin doesnt sell that much music and MTV doesnt show videos. Illegal or legal downloads have given power back to the musicians to control distribution of their content. Clip4Sale.com is not that much different.

Times are a changing....

Michael

www.AdultBizLaw.com

The question will be about things like fair use, etc. I don't for a moment support people who buy domains just to ransom them to people, but at the same time, I also think that some of these broader swipes she is taking should fail. It is particularly key that she has almost certainly performed "work for hire" that would include her image and her name as a result. At some point, her "star" name isn't hers alone anymore, but is something that has been sold off in pieces to others, who in turn resell it to others.

Imagine someone who picks up 50 DVDs and makes a membership / fan site. What domain should he use? sexydevinnlane.com or somepornstarsite.com?

Let's say he runs sexydevinnlane.com for 2 years, and then decides to shut it down. The domain is paid for 5 years. Should he just turn it off? A parking page? Perhaps redirect the traffic to a DVD site that might have some of Ms Lane's DVDs for sale?

Should she have entire and total control of all uses of her name at all times in all ways, without restriction? Does this mean that a work for hire contract with a pornstar doesn't grant any rights at all to use their name? Does it mean that content with a particular star legally licensed and collected together cannot be identified by a domain name?

Further, while she was aware of the domain registrations three years ago, why would she wait this long to take action to protect her trademark name? Did she jealously protect her trademark, or is there a sudden outside influence that has her showing up with lawyers in tow?

Any ideas?

There is much here

[pornlaw]

Since it appears that XBiz is hungry for a comment I will not fully respond to RawAlex but I can tell you that you are incorrect in your analysis of trademark law.

Copyright is a much different animal. Fair use does not apply to trademark. Licensed content does not equate to rights to use her name in a top level domain name.

If your post is indicative of your business practices when it comes to owning and profiting from the names of performers, I strongly suggest that you seek an opinion from an attorney experienced in trademark law.

Michael

www.AdultBizLaw.com

[buggerlugs]

Originally Posted by gonzo

Welcome to those of you joining the thread from the Xbiz news article.

Please add your comments.

Hi and greetings from The UK
I am very interested in this case because I have tried to set up numerous domains over the years for european performers only to find all conotations of their names already registered.

Even asking to buy the domains was often replied with "FU" or "I'm making great affiliate cash from it, so no" similar.

One thing people should understand is that for most performers, their time in the industry is short lived and they shouldn't have to put up with other people making cash off their backs like this.

I see this as encouraging professionalism which this industry needs.

[RawAlex]

Originally Posted by pornlaw

Since it appears that XBiz is hungry for a comment I will not fully respond to RawAlex but I can tell you that you are incorrect in your analysis of trademark law.

Copyright is a much different animal. Fair use does not apply to trademark. Licensed content does not equate to rights to use her name in a top level domain name.

If your post is indicative of your business practices when it comes to owning and profiting from the names of performers, I strongly suggest that you seek an opinion from an attorney experienced in trademark law.

Michael

www.AdultBizLaw.com

I have dealt with trademark and copyright lawyers on this sort of subject in the past, and their opinions are split all over the place on the subject. You may want to look under things like "fair use in retail", or "trademark nominative fair use". That last one is very specific to this sort of case, otherwise domain names with pornstar names in them used to promote those pornstars would be a problem.

My feeling is that if some of the defendants in this case have a bit of money and are using the domains for appropriate uses, they can very likely defend themselves well. The guys just redirecting traffic generically or jacking it around likely will run for the hills (like the guy with every-model-name-in-the-world.org that spams google (something to do with dollars and speed).

You will win some and lose some, there is plenty of space to argue here that a domain name isn't any different from a sign in a store window, or a name on a DVD box.

[miz_wright]

Originally Posted by pornlaw

Actually its the maturation of any industry. Consolidation, cannibalism or survival of the fittest ? Only the strong survive in a shrinking economy.

And if you meant that grabbing the domains of pornstars to drive traffic, then yes, the low hanging fruit is gone.

It use to be that pornstars were told that it would be $500 - $1000 - $1500 to buy back their name from someone who was enterprising enough to grab it before someone else did.

Now its going to be pay and give it back, or pay to defend an IP suit.

This industry is no different than the music industry. The record labels no longer have the power they once did. Tower is gone, Virgin doesnt sell that much music and MTV doesnt show videos. Illegal or legal downloads have given power back to the musicians to control distribution of their content. Clip4Sale.com is not that much different.

Times are a changing....

Michael

www.AdultBizLaw.com

Frankly, I'm surprised it's taken this long to come to this point - personality brands in the mainstream have prosecuted against domain squatting effecitvely for quite some time [for the sake of arguement, let's use Madonna's case, here for more]. There are a few other pieces I've wondered about with regards to performer rights, but in this case, it seems there's a pretty clear precendent - unless I am missing something glaringly obvious.

[RawAlex]

Liz, the key in the Madonna case is here:

The panel said Parisi, who is a Web site developer, had no trademark right to the name Madonna and failed to prove legitimate interest in the Internet domain name that he had registered in bad faith.

Is it bad faith to register pornstarname-xxx.com and direct traffic to a program that promotes this star?

Most of the cases (including the Madonna one) are specific for cybersquatters using the traffic for other purposes than promoting the star / product / etc. In many cases they offer to sell the domain to the trademark / copyright holder, which is a clear indication of bad faith.

Some of the domains in this lawsuit have been used in bad faith, other may not have. I think that this will be very telling about the future of domain names as a whole. Perhaps we should all just use IP addresses instead?

[pornlaw]

Do not confuse nominative use with fair use in copyright. Nominative use of trademark is so that I can compare my product with the product of a competitor. Not so that I can steal clients or visitors and confuse the public as to the association of the mark with what is being sold.

A great example of nominative use -- the popular Apple vs. Microsoft commercials with the two actors, one hip and young and the other old and stodgy wherein Apple compares itself to Microsoft and uses its name and trademarks. Apple can certainly claim nominative use in that regard. If Apple registered a domain name with Microsoft in it with the intent to sell Apple computers by diverting traffic, this goes beyond nominative use. Nominative use is very narrowly tailored to protect commerical free speech rights.

And I never said you could not use a pornstar's name to promote her. As I said, anything after the .com is fine. That is your sign in the window. However, a domain name is tangible property. That is equivalent naming the store after her.

Michael

www.AdultBizLaw.com

[RawAlex]

Micheal, the question isn't there: If Apple registers a domain name with Microsoft in it and sells microsoft products, where is the harm?

[pornlaw]

You are still failing to see the issue -- you need permission from the owner of the trademark to use it commercially, with a few very limited exceptions.

In regards to a domain name - the harm could be (1) what if I dont want YOU using it; (2) or I wanted to use it myself; or (3) I would have made more money using it than you; or finally (3) I wanted someone else to use.

Michael

www.AdultBizLaw.com

[RawAlex]

Michael, my answer would be "what, model released mean nothing?" Most model releases do specifically include use of name.

Go after the squatters, that's fine - but going after people who have purchased rights to her content and run a business based on it would be horrible. Stars doing that sort of move might find themselves in the cold, as it were, as programs won't want to touch them with a 10 foot pole for fear of getting sued.

[miz_wright]

Originally Posted by RawAlex

Michael, my answer would be "what, model released mean nothing?" Most model releases do specifically include use of name.

Go after the squatters, that's fine - but going after people who have purchased rights to her content and run a business based on it would be horrible. Stars doing that sort of move might find themselves in the cold, as it were, as programs won't want to touch them with a 10 foot pole for fear of getting sued.

I think this still goes back to nominative vs. fair use though - the studios have the right, based on a typical release, to use her name for promotional purposes. This does not preclude her right to use her trademarked name in a proprietary versus marginal way.

There's a marked difference in saying "Buy movies featuring StarName here" and "This is StarName's Site."

[RawAlex]

Originally Posted by LizAEBN

I think this still goes back to nominative vs. fair use though - the studios have the right, based on a typical release, to use her name for promotional purposes. This does not preclude her right to use her trademarked name in a proprietary versus marginal way.

There's a marked difference in saying "Buy movies featuring StarName here" and "This is StarName's Site."

It begs the question - is a domain name an absolute indication of "the is star names site"?

Further, if you have a pornstar fan site, (say pornstarnamexxx.com) and you run a webmaster affiliate program, pornstarnamecash.com, and clearly state that this is NOT the official pornstar site just a fan site / cash program) at what point have you limited that star's rights to her name? After all, she signed away in the model releases the use of her name, image, likeness, etc for pretty much all purposes.

I can understand going after squatters, but somewhere along the line it conflicts with the rights she has granted to others (which may include the rights to transfer or re-grant those rights to others). It's not as easy as the lawyer types would like us to think.

[miz_wright]

Originally Posted by RawAlex

I can understand going after squatters, but somewhere along the line it conflicts with the rights she has granted to others (which may include the rights to transfer or re-grant those rights to others). It's not as easy as the lawyer types would like us to think.

This is very true - but I suppose at this point, all we can do is wait and see what precedent is set.