Bad faith does not need to be alleged or proved in an in rem ACPA case under 15 U.S.C. § 1125(d)(2) in the Fourth Circuit. See Jack in the Box, Inc. v. Jackinthebox.org, 143 F. Supp. 2d 590, 592 (E.D. Va. 2001). Jack in the Box was the first in its jurisdiction to construe whether the ACPA statutory language required a “bad faith” analysis under section 1125(d)(2), the in rem prong. On the bad faith issue the court held:
[t]here is no need for the Court to address the ‘bad faith’ factors in the in personam provision of the statute because this action is one in rem . . . . The plain terms of the statute clearly state that the ‘bad faith’ analysis applies only to 15 U.S.C. § 1125(d)(1), the in personam prong, not 15 U.S.C. § 1125(d)(2), the in rem prong.”
Id. Six months after
Jack in the Box, another judge in the United States District Court for the Eastern District of Virginia held just the opposite—that because “bad faith is an element of an
in personam cybersquatting action, so too should it be an element of an
in rem cybersquatting action.”
Cable News Network L.P., v. CNNews.com, 177 F.Supp.2d 506, 523 (E.D. Va. 2001). However, the District Court’s decision as to bad faith in
Cable News Network was specifically overruled and that portion of its holding vacated by the United States Court of Appeals for the Fourth Circuit. The Fourth Circuit noted that the district court decided the bad faith issue prior to its holding “that a plaintiff may prevail in an in rem
trademark infringement and dilution action without alleging and proving bad faith.”
Cable News Network, LP, v. CNNews.com, 56 Fed. Appx. 599, 603, 66 U.S.P.Q.2d 1057 (4th Cir. 2003) (citing
Harrods Ltd. v. Sixty Internet Domain Names, 302 F.3d 214, 225 (4th Cir. 2002)). Accordingly, the court vacated the “portions of the district court’s summary judgment opinion dealing with the bad faith issue.”
Id.
In conclusion, Jack in the Box remains good law in light of the Fourth Circuit’s holding in Cable News Network, LP that bad faith does not need to be alleged or proved in an in rem ACPA case under 15 U.S.C. § 1125(d)(2) in the Fourth Circuit.
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