Hettinga's Best of the Month

Date:         Mon, 1 Sep 1997 12:45:15 -0400
Reply-To:     Law & Policy of Computer Communications
              
Sender:       Law & Policy of Computer Communications
              
From:         "Dan L. Burk" 
Subject:      Re: Domain names and trademark -Reply
To:           CYBERIA-L@LISTSERV.AOL.COM

>>> Mikki Barry   9/1/97, 11:40am >>>

>> Well -- you also can't label 1% of net traffic "commercial" in
>> an accounting survey and then decide that means the same thing
>> as "commerce" does in the Lanham Act or the constitution.  C'mon
>>Mikki. You know better than that.
>
>The Lanham Act, and the commerce clause are, in my humble opinion,
>overreaching in many areas.  The Internet is just one of those
>areas.  What "I know better than" is irrelevant to this discussion.

Okay -- so is this your argument?  That we need to amend the statute?
(And, I guess, the constitution?)

>> I presume that parody is allowed on the net, too.  I don't think
>> that addresses the question of reserving marks for "little guys."
>
>Parody is allowed on the net?  Is that why peta.org is "on hold"
>from NSI?

In the first place, NSI is not a court or a legislature or an
administrative agency.  I think we all know full well, and have all
repeatedly said here, that NSI's policies are not the law, nor do
they even accurately reflect the law.

In the second place, I doubt that a trademark parody defense would
extend to the use of "peta.org" as a domain name.  I can't package my
detergent substitute, which turns your clothes blue, as "TIDE" and
then claim after you bought it by mistake that I was engaging in
parody.

>> Allowed where?  In the face of federal registration, common law
>>and state trademarks can continue only if they have priority, and
>>then only in the geographic area of actual usage.  *Registration*
>>(and not necessarily use) in other classes is certainly permitted.
>>I have no doubt that the same principles apply on-line to the
>>extent that they can apply, given that the net is national in scope
>>and most net usage will be in the same class.
>
>And because there is no provision whatsoever for those types of
>geographical area coverage, the Lanham Act is NOT the appropriate
>vehicle for use of domain names.

The Lanham Act *does* provide for geographic carve outs.  It is the
Internet that doesn't.  But this is no different than nationally and
internationally distributed paper and broadcast media.  Nor should it
be.  If your market and name recognition are national/international,
so should your protection be.

>The net is INTERNATIONAL in scope.  The Lanham Act doesn't fit.  We
>need something new, and it needs to be approved internationally.

Although I agree that an international agreement is indicated (such
as the international registratin treaty that the U.S. has never
signed) this is, again, no different than any other international
trademark problem.  If I'm Disney, right now I have to go register in
Spain, Nigeria, Bolivia, wherever.  Usually some local "squatter" has
already registered the name -- just like Mr. Toeppen -- and I have to
either pay them off or litigate to get the name back.  Same old
story.  How is the net different?

>> But none of this answers my earlier query: where, if ever, do we
>>tell a corporation with a valid prior registration, "Sorry, that
>> registration doesn't extend to this medium -- this other
>> unregistered junior user has done so much good that we're
>>reserving it for him"?
>
>Let's try this again.  The Lanham Act doesn't fit this medium.
>There can be 20 iterations of a trademark across classes, or even
>within the same class if those uses are not infringing.  There can
>be only ONE "genesis.com."  Who decides who gets it?

Okay, I take it you are not going to answer the question.  So let's
talk about your comment instead.  This problem is, once again, no
different than any other trademark question involving an "address."
There's only one telephone number corresponding to "1-800-Flowers,"
too (although now there might be two, with 888).  It goes to whoever
has priority and recognition.  That's the law.  It's that simple
(assuming you think proving priority and strenght is simple).

>First come first served?  Gee.  Why didn't we think of
>that before? :-)

You have two different issues there.  The first is, to whom should it
be initially assigned.  The second is with whom will it end up.

If the assigning authority has any brains, they will make the
assignment on a strict first come first served basis, and then get
out of the picture.  As I have noted before, the FCC, as the
assigning authority for call letters used to adjudicate trademark
disputes between broadcasters who believed that newly assigned call
letter were confusingly similar.  After a while, the FCC got smart
and figured out that we have COURTS to decide whether things are
confusingly similar.  Now call letters are assignied first come,
first served, and if you think that infringes your mark, you can go
to court.  The FCC doesnt want to hear about it.

Has NSI figured this out yet?  No.  Unlike the FCC, they started with
first come first served, and then moved to arbiting priority and
confusion.  They should have left it to the courts.

>The Lanham Act would need to be amended, or a new body of law would
>have to be created in order to properly deal with these issues.

"Properly deal" in this instance simply means "get an outcome that I
like."  Federal and/or state trademark law clearly cover all the
instances you raise.  It is a fairly simple exercise to run through
the various permutations of "Who wins if I develop common law rights
in a mark on the net and then someone else registers the same mark
federally?  Who wins if I develop common law rights in a mark on the
net and someone else develops common law rights in the mark off the
net?" and so on.  I've been doing it at conferences for a couple of
years now.  You might not like the results you get, but that is a
different question entirely.

>You can say "this is
>what the law is" until you're blue in the face.  Fact is, in this
>medium, if we even assume that the Lanham Act governs domain names,
>it just doesn't address these issues in THIS country, not to mention
>the international factors.

As I just mentioned, current trademark law is perfectly capable of
dealing with the all the territorial permutations you raise -- state
and common law marks, descriptive and generic marks, and the rest.
It can deal with some of the international factors, at least for U.S.
companies.  At some point the international questions go beyond
current law, but as I have pointed out that is true 1) for all
international trademark disputes, not just net-based disputes, and 2)
is also to some extent true of all Internet IP issues.

>Actually, I've dealt with a number of companies on the net who have
>been driven out of business or had to change their domain names they
>have developed years of goodwill in, solely because they couldn't
>afford to fight large companies who wished to reverse hijack their
>names.

Yes, but as I keep pointing out, that is equally true in real space.
Do you have a suggestion for the corner drugstore that was just put
out of business by Drug Emporium?

>> Now this could be the beginnings of a legal argument.  Is there a
>>basis
>> in the statute for differentiating the Internet from the rest of
>> the market?  It seems to me that the same folks who use the net
>> walk around in supermarkets, watch TV ads, etc.
>
>You know, that's rather condescending of you, Dan.

I'm sorry.  If it offends you, in the future I won't mention it if I
think you're making a good point.

>In fact, that's
>been your tone on a number of occasions during this discussion.  I
>find it mildly offensive.  Let's try some mutual respect, shall we?

I promise I respect you deeply.  I'll respect you even more if you
give me a credible argument as to why we should treat the net as a
separate market.  I'd also still like to hear why we should give
on-line rights to unregistered junior users when we don't do that
off-line.  How about it?

-----------------------
Dan L. Burk
Seton Hall University
burkdanl@shu.edu
-----------------------