Shift4 Payments, LLC v. JaredIsaacmanCourtCase.com

Background

Shift4 Payments, LLC and Jared Isaacman sued Cloudflare, Inc., JaredIsaacmanCourtCase.com, John Does 1-10, and ABC Corporations 1-10. The complaint alleged cybersquatting under the Anticybersquatting Consumer Protection Act (ACPA), defamation, false light, and business disparagement. The plaintiffs alleged that three websites presented a fictitious federal case and included fabricated exhibits and statements attributed to Isaacman and Shift4 employees.

The plaintiffs moved for a preliminary injunction seeking to stop the defendants from operating, using, or transferring the three websites. They also sought orders requiring Cloudflare and Hostinger to disable the domain names and stop providing services. The motion was unopposed. The court had previously issued a temporary restraining order concerning JaredIsaacmanCourtCase.com and permitted limited discovery to identify the website owners.

Legal Standard

A preliminary injunction is an extraordinary remedy. The plaintiffs had to make a threshold showing that they were likely to succeed on the merits, likely to suffer irreparable harm without relief, that the balance of hardships favored them, and that an injunction would serve the public interest. The court used the Ninth Circuit’s sliding-scale approach, under which serious questions on the merits may sometimes suffice when the other requirements are met.

Analysis

The court considered the plaintiffs’ ACPA theory concerning the domain JaredIsaacmanCourtCase.com. The ACPA can protect a personal name when the name qualifies as a protected mark under the Lanham Act. The court explained that personal names are generally descriptive and receive trademark protection only when they acquire “secondary meaning”—meaning that the public primarily understands the name to identify the source of goods or services rather than the person.

The court held that the plaintiffs had not shown at this stage that “Jared Isaacman” had acquired secondary meaning identifying Shift4 or its services. The evidence described Isaacman as known for being an astronaut, pilot, and potential National Aeronautics and Space Administration nominee, which suggested that the name primarily identified Isaacman himself. The court found that the plaintiffs offered only conclusory assertions that Isaacman’s name was synonymous with Shift4 and provided no evidence sufficient to establish secondary meaning.

The plaintiffs alternatively argued that Isaacman’s fame made his name a protected mark. The court rejected that argument, explaining that fame alone did not provide ACPA protection when the name had not acquired secondary meaning. The court also found that, even if fame could establish protection, the plaintiffs had not provided evidence showing that Isaacman’s name was a “famous mark” under the Lanham Act, including evidence of widespread publicity, goods or services sold under the name, or the extent of public recognition.

Because the plaintiffs had not shown that they owned a protected mark being exploited, the court found that they had not shown a likelihood of success on the ACPA claim. The court therefore did not examine the remaining preliminary-injunction factors. The opinion noted that the plaintiffs might be able to establish bad-faith intent to profit from Isaacman’s name, but that such a showing would not overcome the requirement that the plaintiffs first establish ownership of a protected mark.

The opinion also stated that the motion addressed the ACPA claim concerning the Isaacman Website but did not address the ACPA’s application to the other two domains. It likewise did not address whether the defamation, false-light, or business-disparagement claims supported injunctive relief.

Disposition

Judge Tigar denied the plaintiffs’ motion for a preliminary injunction and dissolved the previously issued temporary restraining order.