Re: Panavision, domain names and trademarks

[Kent Crispin <kent@songbird.com>]

Robert Frank allegedly said:

> On November 1, 1996 an opinion was issued on the case of Panavision
> International v.  Dennis Toeppen.  I realize that these > comments
> will probably fall on deaf ears for Carl Oppedahl, myself and others
> have been trying for years to explain > some of these principles to no
> avail.  (It sorta reminds me of a guy I used to work for who often
> used the statement, "Don't > confuse me with the facts.  I have
> already made up my mind.") 

Not sure what you were trying to get at there.

> Nonetheless, here it goes.  (case was at a Federal Court)

[snip]

> Conclusions:
> 
> "(1) Dennis Toeppen and his agents, servants (etc. deleted by me) who
> receive actual notice of this Order are hereby enjoined
> and restrained immediately:
> 
> 	(a) from using, attempting to use, or causing to be used, including
> 	but not limited to, registering, attempting to
> 	register, or causing to be registered, either directly or
>	through agents (etc., again), the "Panavision" and "Panaflex"
>	names and marks (the "Panavision names and marks") or any
>	variations thereof, or any other mark confusingly similar 
>	thereto, likely to cause dilution of the Panavision names and
>	marks or injury to Panavision's business reputation, in connection
>	with any commercial activity on the Internet or any other medium."

This is what one would expect in a rational legal system.  However, a 
question, and an observation:

The question is, were damages/court costs awarded to Panavision?  If 
not, then Panavision, in my opinion, suffered a Pyrrhic victory that 
won't do much to dissuade name speculators.

The observation: The ruling mentioned that Panavision would have no
cause for action against the town of Pana using the domain panavision,
if they were using it for a web site devoted to civic matters.

This demonstrates one of the central problems with the 60-day wait -- it
gives preference to trademark holders, in the following way:

If Panavision sent the town of Pana a cease and desist letter during
the 60 days, the town of Pana would probably drop it rather than
resist or hire lawyers to tell them that Panavision didn't have a leg
to stand on.  So trademark owners or whoever are given a lever by 
which to intimidate unsuspecting people who have every right to use a 
name for their private purposes. 

On the other hand, the town of Pana had been using the name panavision
for 60 days, and had a little more invested in it, they would be more 
inclined to check with their lawyer, who would tell them about the 
Panavision case, and that they didn't have a thing to worry about.  

The 60 day wait, contrary to claims made here, is *not* neutral.  It
actually does stack things in the direction of the challenger.
,
-- 
Kent Crispin				"No reason to get excited",
kent@songbird.com,kc@llnl.gov		the thief he kindly spoke...
PGP fingerprint:   5A 16 DA 04 31 33 40 1E  87 DA 29 02 97 A3 46 2F