How to Understand the Frustration
of the Trademark Owner Over
Domain Names
And What You Can Do About It
© 2000 Philip Green, Green & Green All Rights
Reserved
The Internet Factor
Trademark Owners & Famous People
Several Key Cases
1. Hasbro vs. Clue
2. Cybersell Case
3. The Porsche In
Rem Case
4. Toeppen Case
Aimed at Panavision
MovieBuff Case - A URL is not a TM
Avery Dennison - what is "Famous"
A URL is Not a TM
Congressional Action
Anticybersquatting Act
In Rem Actions
Domain Name Trafficking
Personal Names
New ICANN Rules for ADR
Cases Since the Act
Conclusion
Introduction
Several cases show the many pitfalls a trademark owner can fall into
when trying to stop a diluting domain name. Clue, Porsche, Cybersell, Avery, MovieBuff,
Panavision and more add up to Congressional action and a regulatory and definitive result.
The sum total of these and other like experiences led to Congressional action that winds
up in a cooperative and understanding attempt to come to the aid of private rights with
government action.
Why couldn't Hasbro, owner of the board game "Clue" stop a computer service from
having the URL Clue.com? How did it come about that the owner of the famous name
"Porsche" had its case dismissed after successfully and brilliantly reaching
settlement with many of its "in rem" action URL infringers? Why does a Florida
corporation that offers very similar services with an identical name as one in Arizona not
get to protect its "Cybersell" name? When one person named Toeppen uses the
famous Hollywood name "Panavision," why does the Ninth circuit court bury the
defendant and lay the foundation for new law?
The how is the way the Anti dilution Act, (15 U.S.C. 1125 (c )) has been interpreted by
many courts and the lack of clear standards especially on what is and is not
"famous." The answers to many of these questions in the cyberspace law of the
future are contained in the U.S. Anti Cybersquatting Consumer Protection Act (S. 1948
Sections 3000 et seq.), amending 15 U.S.C. 1125. Case law has provided some inconsistent
guidance on how a trademark owner can stop another's URL (Uniform Resource Locator) from
infringing and diluting the goodwill and name associated with their goods or services. The
reason that trademark and domain names will collide often is due to the nature of the
Internet.
The Internet introduces a factor into trademark law that did not
exist in a big way before. Prior to the Internet there were labels, boxes, signs and other
trademark use on goods and ads that served to point out the source of those goods and
services. One could use "Clue" for a game that is sold in toy stores along with
another who sold computer services under the same name. They could also both be registered
trademarks because they were used on and in different classes of goods and in very
different places so that the pubic was unlikely to confuse them. Along comes the ability
for source names to be registered by the tens of thousands for the tens of millions of
Internet users to identify web sites on the Internet. There are only a few usual classes
of goods and services on the Internet that would qualify for a trademark use, classes 9 (e
goods), 35 (business services), 41 (entertainment) and 42 (misc. services). Because of
this in mainly advertising uses, the marks that once were in different markets, classes
and channels of trade are now more likely to appear in the same ones. Now Porsche cars and
porschgirls.com do not mix well and a web search brings up 100's of Clues.
For some trademark owners it has been really difficult and expensive
to register a new domain name. Clue, Porsche, Cybersell, Avery, MovieBuff and Panavision
to name a few, found that the URL they wanted was taken by another or that there were
already so many others using the name that their original trademark had become clouded and
diluted. Depending on who that other is or was, where they are, whether the public would
be confused, how famous a trademark is, what the claimant had rights to or what
illegitimate uses a URL has, trademark owners and famous people could face success or
disaster in court. Panavision, an early case, fared well and set the course for the future
legislation and standards because of the egregious nature of the defendant.
Surely the intent of the laws of trademark, dilution, trade dress and the many doctrines
of the evolving law of Internet domain names is to protect the owner of the goodwill in a
valuable enterprise. Surely the Internet is not going to be allowed to dilute many famous
names or distinctive marks and the identity of the source of many unique goods and
services. This matter concerns all; the large multinational manufacturer of famous sports
cars as well as the small startup and retail web site; it involves the banking world and
the small Internet entrepreneur. It concerns the public who may become confused and
experience confusion lured by a URL to a similar mark ill used in a web site.
Four key cases and several others on the law
of dilution and trademark infringement and what has come to be called "cyber
squatting" are intertwined. This is because the law of cyber squatting has until now
been founded mainly on decisions dealing mainly with famous trademarks and because the
fact patterns that have been held to be real cyber squatting have been limited and
haltingly applied. The following several cases, are critical in assessing the impact of
U.S. trademark law on web sites.
1. Hasbro, Inc. vs. Clue
Computing, Inc.
The first case I consider shows that many of the same rules used traditionally really can
apply to trademarks used in cyberspace as in the real business world. In the case of the
Clue game vs. Clue computing, the court perhaps did provide a clue what to do when faced
with two legitimate users of a mark that would not collide in the real world. When would a
consumer buying a game toy confuse it with another company's Internet computer consulting
service? Not in the real world! The court concluded that the law of dilution did not apply
because FTDA, 15 U.S.C. 1125(c) was not retroactive and the defendant had begun to
use its web site "Clue.com" before the enactment of that act. The court held in
Hasbro, Inc. vs. Clue Computing, Inc. (1999) 52 U.S.P.Q.2d 1402 that the strength of a
trademark is not decisive in an infringement inquiry. "[T]he muscularity of a mark,
in and of itself, does not relieve the mark holder of the burden to prove a realistic
likelihood of confusion." So what if the public might get confused when doing an
Internet search for the game and come up with consulting? So what if consumers give up
because the game is not available on the Internet? As held, "Hasbro has produced
evidence proving similarity of the marks and strength of its mark, but it has failed to
produce any adequate evidence indicating intent to confuse..." Yet this very famous
old mark, used in the title of a major film about the game, surely was due some form of
dilution remedy without having to prove confusion? Not so; the court went on,
"...[Hasbro] has failed to produce any adequate evidence indicating... common
channels of trade and advertising, common prospective purchasers, and the crucial
categories of similarity of the products and actual confusion. Overall, Hasbro has failed
to demonstrate, as a matter of law, that there is a likelihood that consumers will confuse
Clue Computing's computer consulting web site with Hasbro's game. Thus, Hasbro has failed
to show ... its federal trademark infringement claim, and Clue Computing is entitled to
summary judgment on that claim." Use ClueGame.com and try again.
One wonders whether the channel of trade, ie the Internet, really is the same. Both marks
having been in use in their respective realms for some time caused this court to not apply
dilution law since the act was not effective. Yet but for this fact, the court would have
had to juggle which was most "famous." It would have had no statutory authority
to go further. It could not for example, say that under common law or state theories of
passing off and the like, or because of the distinctiveness of the mark, it would enjoin
another legitimate user. The admixture of Internet and real time could boggle any judicial
calendar.
2. Cybersell Inc. vs. Cybersell,
Inc.
The next case is also uses very traditional notions to kill another trademark used in
cyberspace. A mark will not overcome lack of jurisdiction either. In Cybersell Inc. vs.
Cybersell, Inc. 130 F.3d 414 (9th Cir.1997), the Ninth Circuit court summed up its
holding, "applying our normal 'minimum contacts' analysis, we conclude that it would
not comport with traditional notions of fair play and substantial justice, for Arizona to
exercise personal jurisdiction over an allegedly infringing Florida web site advertiser
who has no contacts with Arizona other than maintaining a home page that is accessible to
Arizonans, and everyone else, over the Internet (citing Core-Vent Corp. v. Nobel Indus.
AB, 11 F.3d 1482, 1485 (9th Cir. 1993) and quoting International Shoe Co. v. Washington,
326 U.S. 310, 316 (1945)). Thus because of lack of the type of minimum contacts with the
forum, Cybersell, Inc., an Arizona corporation that "merely" advertises its
commercial services over the Internet, could not stop Cybersell, Inc., a Florida
corporation that offers web page construction services over the Internet. The web page had
the word "Cybersell" at the top and the phrase, "Welcome to
Cybersell!" Cybersell Arizona claimed that Cybersell FL infringed its registered
trademark and brought an action in the district court in Arizona. They held the Arizona
court could not exercise personal jurisdiction over Cybersell FL, because it had no
contacts with Arizona other than maintaining a web page accessible to anyone over the
Internet. The rule developed in Zippo says that to obtain long arm jurisdiction, the
contacts needed to be more than "mere advertising" and include activities like
offering things for sale, making "e-tail" sales, gathering data and shipping
into the forum. See Zippo Manufacturing Company vs. Zippo Dot Com, Inc. (W.D.
Pennsylvania, 1997) , 65 USLW 2551, 42 U.S.P.Q.2d 1062.
The Jurisdictional Conundrum
When an identical infringing mark is used as a URL to show or advertise the source of
different goods or services that a consumer would not for an instant confuse, there may be
no remedy. If the consumer's experience amounts to what is termed "initial interest
confusion," there may be a closer case. This can be established when a consumer may
not be confused when they first "hit" on a web site, but after a while
experiencing the site, come to realize their error. The effects can be many but can affect
the hits a web site receives. If the infringing site is in the same business as the
searched for one the consumer may stay and shop at the infringing site, come back to the
wrong site thus causing loss of business for the desired site. Consumers who do not like
what they see from the hit site may never attempt to return to the one they were looking
for thus tarnishing the mark of the desired site. Imagine how you would feel looking
online for information on Porsches and instead find a web site with totally different
subject matter. Other likely behaviors could include the consumer looking for the right
site if it is not buried under 100's of hits in a web search. The consumer may give up,
not bother, or assume there is no "Zippo lighter site" available. The Zippo case
presents a now more often used analysis to cyber jurisdiction, where the issue is whether
or not the web site does more than passively advertise in another (the forum) state. If
the site tends to not only advertise but encourage response and purchase of goods and
services, it is more likely to fall within the usual "minimum contacts" analysis
and can be called into that forum.
3. Porsche
Cars North America, Inc., vs. Porsch.Com...URLs
The third case that looked very promising but went awry is Porsche Cars North America,
Inc., vs. Porsch.Com...(dozens of defendant URLs) The casket was sealed in January, 1999
when this case was dismissed. This case was important; it was about not one Internet
domain name, not two of them but dozens of diluting and infringing URLs. The USDC, E.
Dist. Of Virginia Alexandria Division Civil (Action No. 99-0006-A (filed 1/6/99)) was the
hope of many and the bane of others. It was supposed to allow in rem jurisdiction over the
"situs" of domain names i.e., where they were registered. Similar to the
argument used to venue litigation in the county where real property is located, this would
have provided a common forum for many lawsuits over trademark domain name disputes. The
theory is that the name is a piece of property that is registered in the situs of Virginia
at the InterNIC facility and thus can be sued there.
Porsche really had a problem since there were many dozens of defendants who owned web
cites with such names as: porschecar.com, porschagirls.com, 928porsche.com and
winaporsche.com. Some of these were adult oriented (putting it mildly) and others were
"fan" sites lauding the car and the products that site owner sold through the
site that would enhance the user's car experience and, by the way, use the Porsche name to
falsely endorse those goods. It had to stop; rather than having to sue hundreds of
defendants worldwide, a formidable expense, this in rem theory was attempted. Ultimately
it was held to not apply. What are we to do? Are we not in cyber space? Maybe it's the
twilight zone where a trademark owner of a famous mark cannot seem to get justice. There
are many different rulings and reasons why a domain name and trademark may or may not
coexist. Your guidebook for now is the Anti Cybersquatting Consumer Protection Act.
Imagine, Avery Dennison, with its decades old marks held not famous enough to stop or
obtain injunctive orders over Avery.net and Dennison.net. See Avery Dennison vs. Sumpton 51 U.S.P.Q.2d 1801 (9th
Cir. 1999).
This incongruent state of the law
that stems from cases using and defining differently the undefined terms
"famous," "diluted" and "distinctive" along with the
undefined term "cyber squatting" has evolved from what it was into the Anti
Cybersquatting Consumer Protection Act (the "Act"). Thanks in major part to the
Toeppen line of cases, what a cybersquatter is has been defined as a person who reserves
and owns Internet domain names that are similar or identical to another's trademark or
famous name and who "traffics" in them. This analysis focuses on only the second
level or part to the left of the "dot" (not the ".com" or
".org" gTLD (generic top level domain name) part). We have an enhanced factor of
intent because of the Toeppen cases. Where the domain name is not connected to a purported
legitimate use on a web site there is a tendency for courts to consider this as an intent
to usurp another's trademark. Where there is a URL using the trademark in a domain name
only, especially if it has been there a while, and it is not being used for e-mail, but us
up for sale, courts have considered this as illegitimate use and are more likely to enjoin
it. Where the cyber squatter is attempting to sell the domain name to the trademark owner
for a great price there is a presumption of bad faith. Where the price is reasonable it is
not as strong a factor. This is the analysis to success in cases like this.
4. Panavision
International, L.P. vs. Dennis Toeppen
The final case discussed in this article in depth buries any notion that someone can use a
trademark with impunity. Along came Dennis Toeppen, a modern day Intellectual Property
pirate par excellence. We owe the case of Panavision International, L.P. vs. Dennis
Toeppen (9th Circuit, 1997) 46 U.S.P.Q.2d 1511 for many the rules that have become enacted
as the law of this land in Section 3002 of the Act. The main facts of this notorious case
include that Toeppen elected to register a domain name of a very famous film making
service. Mr. Toeppen is an Illinois resident who registered the "Panavision"
trademark as a URL and then held it up for sale. The owner, a large prominent and
internationally famous movie company with its principal place of business in California
has used its mark for many decades in movie theaters and equipment, lenses and film. You
could never convince the court that Mr. Toeppen did not know it. He used this "wide
screen" name as a domain name for his Illinois based Internet web site and by this
thread was subject to personal jurisdiction in California. This is because the out of
state resident could not get away with engaging in a tort-like scheme to register
Panavision's trademarks as domain names in order to extort money from the company The
court stated he then "the defendant purposefully (albeit electronically) directed his
activity in a substantial way to the forum state." In other words, he directed that
conduct toward California, the injury would be felt in California, the company's trademark
dilution claims arose out of that conduct, and exercise of jurisdiction was reasonable.
California Const. Amend. 14; Cal. C.C.P. Sec. 410.10."
The Court used the 3-part test of Omeluk v. Langsten Slip & Batbyggeri 52 F.3d 267,
270 (9th Cir.1995): (1) The nonresident defendant must do some act or consummate some
transaction with the forum or perform some act by which he purposefully avails himself of
the privilege of conducting activities in the forum, thereby invoking the benefits and
protections of its laws; (2) the claim must be one which arises out of or results from the
defendant's forum-related activities; and (3) exercise of jurisdiction must be reasonable.
The first prong is satisfied because Toeppen purposely
availed himself of California by advertising his site there and offering the URL for
sale there. He "has taken deliberate action" toward the forum state. Citing
Ballard v. Savage, 65 F.3d 1495, 1498 (9th Cir.1995), the Court held where personal
jurisdiction was exercised, there had been "something more" to "indicate
that the defendant purposefully (albeit electronically) directed his activity in a
substantial way to the forum state." Citing Cybersell, Inc. v. Cybersell, Inc., 130
F.3d 414 (9th Cir.1997), the Arizona court could not exercise personal jurisdiction over
Cybersell FL, because it had no contacts with Arizona other than maintaining a web page
accessible to anyone over the Internet. Here, in contrast, this defendant not only took
the one and only unique URL but then actually held the owner hostage; he trafficked in the
URL. Either they buy the URL from him or, he might even sell it to another. He,
"demanded $13,000 from Panavision to release the domain names to it. His acts were aimed at Panavision in California, and caused it to suffer injury there."
A URL Is Not A Trademark
In Brookfield Communications, Inc., vs. West Coast Entertainment Corporation, USC Ninth
Circuit. (April 22, 1999.) 174 F.3d 1036, 50 U.S.P.Q.2d 1545 another "Hollywood"
case allowed for the opportunity to clear up the law, holding that the mere registration
of a domain name "Moviebuff.com" does not provide
any trademark priority as against a prior trademark user. This case also solidifies that
an action for infringement may be based on use of meta text (invisible use of a text or
phrase that cannot be seen by users but search engines can find them). Thus the elements
were laid bare to see and Congress saw the confusion in the cases on one hand and thought
it was time for clearer definition in this international legal arena.
How to
use a brand or mark on the Internet as a trademark is almost the same as any
advertisement use. The mark needs to be emblazoned on buses, TV ads using the "dot
com" not as an address but as a source indicator. There are many uses a mark can have
on a web site. These can include assembling pieces that fall into the mark, animations,
sounds, and just the big mark, branded atop the web site's home page and on many other
places in the web site.
Legislative Action
The latest Congressional measures have just been passed. Signed by President Clinton on
Nov 29, 1999, the "Anticybersquatting Consumer Protection Act," S. 1948 will
define tomorrow's cases. This Act is an attempt to end the uncertainty and lessen the
pitfalls and the trademark and famous name funerals. The law essentially allows civil
statutory damages, civil causes of action and in rem actions against the owners of URLs.
In some ways the Act is inconsistent with the approach in the international community and
ADR. The law of dilution generally, outside of purely the Internet, will remain for a
short time more a case of guesswork. I refer the reader to the excellent update article on
the topic of the FTDA and what has become of dilution law that goes beyond this article
dealing with cyber squatters (see: The Federal Trademark Dilution Act Becomes the
"Greatest Show on Earth"? by Doris Estelle Long, 17 IPL Newsletter (ABA
Intellectual Property Sec) 4, Summer, 1999).
Forget that overused joke about Governments not keeping pace with technology. In 1999 the
Congress passed the new Anticybersquatting
Consumer Protection Act (the "Act") amending 15 U.S.C. 1125. The
Act addresses the rift regarding trademark, URLs and dilution and ads to U.S. trademark
law a "right of publicity" to give teeth and consistency to cyber squatting
cases for trademark owners and famous persons. Four major funerals (and many more not
reported here) are enough. The Act could be a godsend, but it may lead to more litigation
than ever before on this matter. No matter what the cases like Ringling Bros. show as the
grayness of dilution law generally, the law on the cyber side of trademark infringement
seems to be clearer. There are certain practices that we will have zero tolerance for and,
the trademark owners of the world could have a U.S. forum to assert their claims.
The Act states that "Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is
amended by inserting at the end the following; this is brand new stuff we all need to know
it. The Act amends, "Section1125(d)(1)(A): A person shall be liable in a civil action
by the owner of a mark, including a personal name which is protected as a mark under this
section, if, without regard to the goods or services of the parties, that person- `(i) has
a bad faith intent to profit from that mark, including a personal name which is protected
as a mark under this section; and `(ii) registers, traffics in, or uses a domain name
that-- `(I) in the case of a mark that is distinctive at the time of registration of the
domain name, is identical or confusingly similar to that mark; `(II) in the case of a
famous mark that is famous at the time of registration of the domain name, is identical or
confusingly similar to or dilutive of that mark; or `(III) is a trademark, word, or name
protected by reason of section 706 of title 18, (Red Cross or any insignia colored in
imitation thereof ) United States Code, or section 220506 of title 36, United States Code
(Exclusive right of "United States Olympic Committee")."
The phrase "without regard to the goods and services of the parties" adds to
trademark law a new and unknown dimension. Traditionally, as stated above if the marks
were used for different goods or services, they could avoid collision. Not so in URL
trafficking. The section also applies to names of persons. This really can mean a lot to
entertainers whose names are usurped for fake "fan clubs" that offer
merchandise, advertising, endorsement or off color images that famous people may not like
and need or want to stop.
In Rem Actions
The Section offers solace to Porsche and its kin. 3002 Sub Section (E)(2)(A) provides that
"the owner of a mark may file an in rem civil action against a domain name in the
judicial district in which the domain name registrar, domain name registry, or other
domain name authority that registered or assigned the domain name is located..."
There are some not so clear conditions and new procedures that allow for a court outside
Virginia to assume jurisdiction if "(i) the domain name violates any right of the
owner of a mark registered in the Patent and Trademark Office, or protected under
subsection (a) or (c)" and "(ii) the court finds that the owner-- `(I) is not
able to obtain in personam jurisdiction over a person who would have been a defendant in a
civil action under paragraph (1); or `(II) through due diligence was not able to find a
would - be defendant in a civil action by the publication and other methods of service one
can usually avail themselves of when a defendant is not found or is out of the
jurisdiction. There is a provision to obtain an order allowing the court of any District
to exercise jurisdiction under some circumstances. The law is not the end all however, as
the "remedies in an in rem action under this paragraph shall be limited to a court
order for the forfeiture or cancellation of the domain name or the transfer of the domain
name to the owner of the mark." No money damages in rem. But what is one to do when
the "registered contact" for a mark lives in a remote Asian country and they
ignore cease and desist letters and all the email threats one can in good faith muster?
Anti Domain Name Trafficking
That the cyber squatter Act follows case law, especially in making it clearer that the
type of activity that Toeppen engaged in includes the following factors: "(I) the
trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a
name that is otherwise commonly used to identify that person; (III) the person's prior
use, if any, of the domain name in connection with the bona fide offering of any goods or
services; (IV) the person's bona fide noncommercial or fair use of the mark in a site
accessible under the domain name; (V) the person's intent to divert consumers from the
mark owner's online location to a site accessible under the domain name that could harm
the goodwill represented by the mark, either for commercial gain or with the intent to
tarnish or disparage the mark, by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of the site; (VI) the person's offer to transfer,
sell, or otherwise assign the domain name to the mark owner or any third party for
financial gain without having used, or having an intent to use, the domain name in the
bona fide offering of any goods or services, or the person's prior conduct indicating a
pattern of such conduct; (VII) the person's provision of material and misleading false
contact information when applying for the registration of the domain name, the person's
intentional failure to maintain accurate contact information, or the person's prior
conduct indicating a pattern of such conduct; (VIII) the person's registration or
acquisition of multiple domain names which the person knows are identical or confusingly
similar to marks of others that are distinctive at the time of registration of such domain
names, or dilutive of famous marks of others that are famous at the time of registration
of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person's domain name registration is
or is not distinctive and famous within the meaning of subsection (c)(1) of section
43." Note the distinctive; not famous.
Retroactivity of
the act. The act applies to
domain names that were registered before the law's enactment, however:
injunctive relief and transfer of the domain name is the only available remedy
if the domain name was registered before the law's enactment.
Damages (whether actual or statutory) are available only if the domain
name was registered after the law's enactment.
Section 3010 provides
some limitations on actions that seek to attack domain names registered before
the Act. These sections of the Act apply
to all domain names registered before, on, or after the date of the enactment
of the Act (November 29, 1999): “…Sections 3002(a) [Cyberpiracy
Prevention, Civil Action and In Rem Action], 3003 [Damages and Remedies], 3004
[Limitations on Liability of Domain Name Registrars,
Domain Name Registries, or Other Domain Name Registration Authorities],
3005 [Definitions of “Domain Name” and ”Internet”], and 3008 [a
“Constitutionality Savings Clause”].”
Section 3302 (b)
Cyberpiracy Protections For Individuals, has its own effective date “This
subsection shall apply to domain names registered on or after the date of the
enactment of this Act.”
Note that damages under
subsection (a) or (d) of section 35 of the Trademark Act of 1946 (15 U.S.C.
1117), as amended by section 3003 of the Act, “shall not be available with
respect to the registration, trafficking, or use of a domain name that occurs
before the date of the enactment of this Act.”
That date is November 29, 1999.
ADR
Methods
Enabled
New ADR methods, such as
the new WIPO – ICANN “uniform” Domain Name Dispute Resolution Rules that
enable international ADR providers and short limits of time for appeal.
ADR – long used in Europe to settle disputes where law differs, these
International Arbitration Alternative Uniform Rules apply as a real solution.
See www.icann.org
These are a trend to
more easily allow resolution of disputes across not only seas, borders and
boundaries, but even in cyberspace itself. The ICANN rules are outside of the
scope of this article. Suffice it
to say they call for a 50 day ADR process after which a claimant may quickly
appeal.
WIPO is at the
forefront providing ADR services. Their
cases are reported on their web site and thus form a line of published
Arbitrations that tend to prove out the rights of registered trademark owners.
Start Case by
“submitting a complaint in
accordance with the Policy.” The website provides detailed rules and
instructions, a Form complaint and published fees.
It supplies the names and contact for ADR providers worldwide. The
basic procedure can be paper or electronic.
Submittal of a Complaint (based on a form and detailed instructions) is
sent to a Provider. There it gets
examined and served on the defendant. The
defendant then has a short time to file a response and a decision is made,
according to strict rules that have undergone many iterations.
You only get Equity, no damages.
Rules for
Personal Names New 15 U.S.C. 1129
CIVIL ACTION:
Persons have rights of
publicity and a right to privacy. They
will be able to assert claims akin to California Civil Code’s Sec. 3344, 1/
use
of name, voice, signature, photograph or likeness to pass off or endorse a
product or service, worldwide against cyber squatters who use those names for
potentially defamatory or diluting web sites without authorization.
So too will not so famous trademark owners be able to make claims in
the court where a domain name is registered, rather than the country of
residence of the “pirate” on proof of a distinctive trademark rather than
an outright famous one. The law
on this topic will evolve rapidly but at the turn of the new millennium in
e-business, I-business and global communication, the world is not yet in its
honeymoon on the long marriage of e-commerce and the law.
Section 1129 says,
“Any person who registers a domain name that consists of the name
of another living person substantially
and confusingly similar thereto, without that person's consent with the specific
intent to profit from such name by selling the domain name for financial
gain to that person or any third party.”
There is no doubt that
this Act applies to protect any personal name, but it especially easily
applies to famous names, stars, royalty 2/, well known creative people and
artists.
The Julia Roberts
Cases:
Ms. Roberts took an infringer of her name to WIPO and won an
arbitration award under the Uniform ADR Rules,
against “juliaroberts.com.” The
“DotCom” then sued Julia for trying to stop him from operating his web
site and to quash the WIPO order. An
argument is that the site is a parody, and contains news and comment.
This case might be the
first to look at the Big Exception: in subsection 1129 (B), the law
provides, “if such name is used in, affiliated with, or related to a work
of authorship protected under Title 17, including a work made for hire as
defined in section 101 of Title 17, and if the person registering the domain
name is the copyright owner or licensee of the work, the person intends to
sell the domain name in conjunction with the lawful exploitation of the
work.” Tile 17 is the Copyright
Act. Works of Visual, Text,
software, Sound Recordings, Performing Arts and much more are contained in
this. Thus if the contents in the
juliaroberts.com web site is a valid Copyright Act work it may be this
exception that undoes this section. This is one to follow.
Remedies:
a court may award injunctive relief, including the forfeiture or cancellation
of the domain name or the transfer of the domain name to the plaintiff. The
court may also, in its discretion, award costs and attorneys fees to the
prevailing party. The effective date is not retroactive: “This
section shall apply to domain names registered on or after November 29,
1999.”
Cases
Since
the Act
Sporty's Farm L.L.C.,
V. Sportsman's Market, Inc, Omega Engineering,
Inc., Docket Nos. 98-7452(L), 98-7538(XAP) United States Court of Appeals,
Second Circuit, Feb. 02, 2000, 2000 WL 124389.
This case was an appeal from a finding that Sporty's Farm violated the
Federal Trademark Dilution Act, 15 U.S.C. § 1125(c), and enjoining Sporty's
Farm from using the Internet domain name "sportys.com."
Since the 1960s,
Sportsman's an aviators enthusiasts catalog, began using a "Sporty "
Logo to identify its catalogs and products. In 1985, Sportsman's registered
the trademark Sporty'sŪ . The
“Sporty's” mark identifies all Sportsman's catalogs; Sportsman's
international toll free number is 1-800-Sportys. Sportsman's spends about $10
million per year advertising its sporty's logo.
Omega is a mail order catalog company that sells mainly scientific
instruments. In late 1994 or early 1995, the owners of Omega, the Hollanders,
entered the aviation catalog business and formed a wholly owned subsidiary
called Pilot's Depot, LLC for that purpose.
Omega then registered the domain name sportys.com with NSI.
Arthur Hollander was a pilot who received Sportsman's catalogs and was aware
of the Sporty's trademark. Omega
formed another wholly owned subsidiary called Sporty's Farm and sold it the
rights to sportys.com for $16,200. When
asked he had a very strange story about how he came up with his sportys.com,
that it was his dog “spotty’s” name and that he recalled how the dog
liked his uncle’s farm. The
Court below clearly found this to be a strange and unbelievable story and held
under ACPA Omega was liable.
Between the original
case and the Appeal, the ACPA was passed and that it applies to this case.
Second Circuit judges stated, “The Internet phenomenon known as
"Cybersquatting" has become increasingly common in recent years. …Cybersquatting
involves the registration as domain names of well-known trademarks by
non-trademark holders who then try to sell the names back to the trademark
owners. Since domain name registrars do not check to see whether a domain
name request is related to existing trademarks, it has been simple and
inexpensive for any person to register as domain names the marks of
established companies. This prevents use of the domain name by the mark
owners, who not infrequently have been willing to pay "ransom" in
order to get "their names" back.[3]
There was a finding that the ACPA was passed to remedy the perceived
shortcomings of applying the FTDA in Cybersquatting cases such as this one.
Sporty’s was found to be “famous” enough under FTDA however, and
since no public confusion was needed under the Act, and the mark is
“distinctive” there Plaintiff won under either law.
This case was first:
The opinion was the first interpretation of the ACPA at the appellate
level. The court was asked to “undertake the interpretation of this new
statute even though the district court made its ruling based on the FTDA.”
The case presented a factual situation that, as far as the Court “can tell,
is rare if not unique: A Competitor X of Company Y has registered Y's
trademark as a domain name and then transferred that name to Subsidiary Z,
which operates a business wholly unrelated to Y. These unusual features
counsel that we decide no more than is absolutely necessary to resolve the
case before us.” Thus the
decision may not be relied on for all circumstances.
Joe’s Cartoons.
Joseph C. Shields,
Individually And T/A The Joe Cartoon Co.,
John Zuccarini 54
U.S.P.Q.2d 1166 No. CIV. A. 00-494. United
States District Court, E.D. Pa,
March 27, 2000. This was
one of the first motions for a preliminary injunction under the new Act.
Plaintiff Shields is a graphic artist from Alto, Michigan, creates,
exhibits, and markets cartoons under the names "Joe Cartoon" and
"The Joe Cartoon Co." His creations include the popular "Frog
Blender", "Micro-Gerbil", and "Live and Let Dive"
animations. Shields licenses his cartoons to others
for display on T-shirts, coffee mugs, and other items, many of which
are sold at gift stores across the country. He has marketed his cartoons under
the "Joe Cartoon" label for the fifteen years prior to the case.
Plaintiff's "Joe Cartoon" mark was held to be a distinctive and
famous mark, “and thus entitled to protection under Anticybersquatting
Consumer Protection Act (ACPA). Lanham Trade-Mark Act, § 43(d)(1)(A)(ii)(I,
II), 15 U.S.C.A. § 1125(d)(1)(A)(ii)(I, II).”
The facts included that Defendant is a "wholesaler" of
Internet domain names, and as such registered domain names, "joescartoon.com,"
"joecarton.com," "joescartoons.com," "joescartoons.com,"
and "cartoonjoe.com." All
these were found to be confusingly similar to plaintiff's "joecartoon.com"
mark, within meaning of the Act. The Defendant, pending the case, posted on is
web site a “Page of Political Protest” against “Joe” and his cartoons,
alleging they are violent to animals.
The Court set
forth clearly the main factors 3/ under the Act: “The first criterion under §
1125(c) is "the degree of inherent or acquired distinctiveness of the
mark.” (2) "The duration
and extent of use of the mark … (3) "The duration and extent of
advertising and publicity of the mark."
Was found to have been short but extensive and international.
(4) "The geographical
extent of the trading area in which the mark is used." This was also
international and popular. (5) "The channels of trade for the goods and
services with which the mark is used." (6) "the degree of
recognition of the mark in the trading areas and channels of trade used by the
marks' owner and the person against whom the injunction is sought." It
was found that the Defendant overused the Joe’s mark. (7) "The nature
and extent of use of the same or similar marks by third parties."
The Joe’s use
was fairly unique for cartoons. Under
all factors, Shields cartoons were distinctive since the 1990s, widely
licensed worldwide, in many channels of trade including prints, clothes, and
other media with a proven high degree of recognition.
In contrast, “Zuccarini's very business existence depends upon his parasitic
use of others' names…” and it got worse for him from there. For all
practical purposes identical to "joecartoon.com" and because of his
intent and collection of such names, the court had little trouble attaching
liability.
Conclusion: As in any cooperative venture there
are bound to be errors, fights and conflicts in the law. We are going into a more
confusing era as each of the 50 U.S. states and most countries will enact laws to allow
e-signatures (UETA) and the easier licensing of software
(UCITA) and making agreements in cyberspace. There is the GBDe (Global Business Dialogue
on E Commerce) comprised of very high profile successful high tech companies who provide
input to governments about what they would like to see and what they believe will work.
There are WIPO and other international agencies, providing ADR and there is enforcement
the like of the CIA, INTERPOL Customs and other international enforcement mechanisms.
For an
on this topic and part 2 of this series on Domain Names an TM issues see
"Guide for the Perplexed - 2001"
1. Note that California civil code 3344 creates a Right of
Publicity and that 3344.1 this extends to deceased personalities.
2. This author was asked for
clarity on this by BBC reporter Susan O’Keefe, whether the Act applies to
protect such as Her Majesty’s rights to her many names and designations.
3. See H.R.Rep. No. 106-412, at 5-7; S.Rep. No. 106-140, at 4-7
(1999).
Philip Green of Law Offices of Green & Green practices in the San Francisco Bay area,
with offices in Marin County and the City (S.F.). This web site contains lots of information about and
links to entertainment and the Internet, Intellectual Property, government agencies and
ADR. Visit all areas of the Site www.greenandgreen.com Phil email: phil@iplegal.com, Tel.: (415)
457-8300.
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