I hope everyone is enjoying their apples and honey on Rosh Hashanah. At this time of the year, I like to spend some time thinking about what I am thankful for. In particular, I am thankful to have supportive friends and family, good health, and independence. Quite a few professional basketball players should be thankful that Chris Bosh and his legal team at Winston & Strawn LLP fought a battle against a cybersquatter who had no right to own several NBA players’ domain names. The cybersquatter had used the names as part of a scheme to generate revenue, but had no actual association to Bosh or any of the other cybersquatted names.
Even though Bosh won the rights to those domain names and promised to distribute them to any player who wished to “own his name” on-line, many domain names have just been sitting around with no claimants. As of yesterday, the NBPA agreed to assume management of hundreds of domains awarded to Bosh that had not yet been delivered to those who deserve to own them. “I want to thank the NBPA for agreeing to continue what I started – the return of domains without cost or obligation to those whose names were cybersquatted,” said Bosh.
And I want to thank Brian Heidelberger, the Winston & Strawn partner representing Bosh in this matter, for taking the time to answer a few questions that I had following the NBPA assuming management of the domains.
Darren Heitner: Tell us a little bit about the day-to-day activities involved in spending 11 months administering Bosh’s offer to return the approximately 600 domains that were transferred.
Brian Heidelberger: We were contacted by a wide number of athletes, teams, agents and business representatives (we were even contacted by some high school players’ moms and dads), all of which were extremely appreciative of Chris’ offer. In administering the return of the domains, it was very important to both protect our client in this undertaking, as well as treat the domain portfolio and all those who contacted us, with the great respect the matter deserved.
Heitner: Has such a widespread cybersquatting case like this ever been litigated in the past? Is it likely that there will be similar types of cases like this with athletes in the future?
Heidelberger: While there have certainly been a number of cases of athletes and celebrities successfully retrieving their domain names via the federal law or UDRP proceedings, we believe that this was the first case to ever award the transfer of a large portfolio of domains directly to a plaintiff in lieu of damages. I find it somewhat unlikely that there will be another case of this nature in the future, as it takes a unique individual such as Chris to want to take on the responsibility and expense of a case like this without asking anything in return.
Heitner: What other areas of internet/cyberspace law do you think will come into play with athletes in the future?
Heidelberger: Social media is at the forefront of the new media issues faced by athletes, teams and leagues today. We’ve seen major successes and failures in this regard, but a large part of a successful social media strategy is understanding the law behind what you are planning from a legal and practical perspective. We’ve been lucky enough to be able to advise a wide variety of athletes, teams as well as major advertisers, on the important legal issues surrounding social media.
Heitner: How did you form your original relationship with Chris Bosh?
Heidelberger: As you likely know, Chris Bosh’s agent is Henry Thomas of CAA Sports. We have been lucky enough that Henry has sought our legal counsel when needed over the years with respect to a variety of players that he represents. Our practice is unique in that we not only represent athletes, entertainers and their agents for their endorsement/IP, social media, litigation, foundation, corporate and tax matters, but we also represent major corporations like Motorola, PepsiCo and Pizza Hut for their advertising, marketing and entertainment needs. With experience on both sides of the sports and advertising world, we provide a unique perspective for clients looking for practical, quick and cost effective answers.
Heitner: Now that Chris is in Miami playing for the Heat, does he need a friend to go to dinner with him?
Heidelberger: Chris asked if you were available tonight, but I understand that you are busy with the Jewish holidays. Are you free Yom Kippur?