Re: Re[2]: Trademark Disputes

[Kent Crispin <kent@songbird.com>]

On Tue, Sep 30, 1997 at 01:27:26PM -0700, andi payn wrote:
[...]> 
> Actually, you're both right. The MoU and the ACP guidelines completely
> change the rules; the new rules are in some ways more in favor of trademark
> interests, in other ways less. I have a feeling that the overall bias will
> be more pro-trademark under the new rules, but that will really depend on
> how the ACPs interpret the guidelines. The biggest problem here isn't really
> the fact that the bias will be different, it's that the entire system is
> different. Uses that were not previously infringement will be considered
> infringement, and defenses that were previously meaningless will be
> considered valid defenses. Why do we want to radically revise the trademark
> system just for domain names? Is there any good reason to do so?
> 
> For those who don't get it, here's how the new rules increase the strength
> of the trademark holder:
> 
> The guidelines consider any use of a domain name which is alphanumerically
> similar to a mark as an infringement. Under existing laws, rules, precedent,
> common law principles, etc. in most  jurisdictions, it is--as Kent pointed
> out--the usage of a name, not the existence of that name, that leads to
> infringement.
> 
> Furthermore, under existing systems, a usage is not infringement unless it
> conflicts with a mark used in the same line of business within the same
> region; under the MoU and ACP guidelines, this is not true. In essence, the
> MoU treats all trademarks are strong trademarks and provides them all with
> dilution protection. Strong trademarks are supposed to be rare cases; the
> idea is that some special trademarks, which are widely-known, well
> established, and usually coined names or otherwise unique marks, have a
> special value due to their uniqueness and their exceptional recognition, and
> this value can be diluted when others use the mark in almost any way. Under
> the MoU, any name trademarked in any jurisdiction for any line of business
> is treated as a strong trademark.

This is plainly false, and a really egregious misrepresentation --
only "internationally known" names with "demonstrable IP interests". 
"Internationally known" means registered in *35* countries in 3
different regions, as I recall.  Your interpretation is seriously
mistaken in another area as well: other usage of a name is clearly
handled under "sufficient rights" clause.

> This is especially ridiculous when you consider the cases that Paul brought
> up, such as "Apple." There are many companies in many jurisdictions that are
> named Apple or use the name Apple as a designation for their products.
> Companies that deal with fruits and juices, such as Apple Time Juices,
> aren't allowed to trademark the name Apple, and they can all use it freely
> in their names, advertising, etc. However, companies that deal with, e.g.,
> music (Apple Records) or computers (Apple Computers) or employment services
> (Apple One) can trademark the name. Does this mean that only Apple Records
> or Apple Computers or Apple One can have apple.firm? Apple Time Juices may
> have been using their name for 80 years, in dozens of countries, but nobody
> will let them trademark Apple. Therefore, under the MoU's principles and the
> ACP guidelines, they have no right to the domain apple.firm--or possible
> even to AppleTime.firm.

False.  Once again, Andi, you completely misrepresent the guidelines
-- "Appropriate consideration shall be given to possible use of such a
second-level domain name by a third party that, for the purposes of
this policy, is deemed to have sufficient rights." The determination
of whether "apple" was acceptable would depend entirely on the actual
details -- there is nothing in the guidelines that prima facie 
establishes a claim one way or another.

> Furthermore, if I wanted to start a new company using the name Apple that
> didn't overlap any of these existing trademark holders in line of business
> and region, I could do so. However, even if none of the existing companies
> were using apple.firm, it would be very unwise for me to do so because they
> could challenge me and take it away at will. This could easily have a
> stifling effect on new Internet business and on new Internet commerce by
> existing small businesses.

Depends entirely on what "sufficient rights" you may have.

> On top of that, existing defenses--fair/satirical/reporting use, misuse by
> the owner of the mark, prior use--are not mentioned at all in the MoU and
> the ACP guidelines, which implies that they may no longer be valid defenses.
> This could be an even more important tilt in favor of trademark holders than
> the radical extension of dilution protection.

They are not mentioned explicitly, but obviously the guidelines can't 
mention every possible defense.  Instead there is a general clause 
about "other rights that may exist".

> On the other hand, in some ways the defense is strengthened:
> 
> Normally, a "prior use" defense has to show use of the trademark in the line
> of business and jurisdiction in question before the trademark. Under the ACP
> guidelines, two years without a challenge is considered sufficient use,
> whether it's prior to the trademark or not, and no matter how the name has
> been used for two years. This is a completely new defense, and it has strong
> consequences.

It only applies to domain names, not trademarks; and a trademark 
holder still has recourse to the courts.

> Furthermore, in many cases, a large trademark holder can essentially extort
> a compromise out of an alleged infringer because of the expense of defending
> a long, drawn-out case. In domain name cases, the trademark holder could
> just as easily file multiple cases in multiple countries all around the
> world, making it nearly impossible for the domain name holder to pay for
> defense. The ACP system allows a defense in a single setting, and may even
> be conducted partially or completely via email. This is a beneficial change
> for domain name holders, only slightly negative for trademark holders, and
> very negative for trademark lawyers.

True.  But it doesn't apply to trademarks, only domain names, and a 
trademark holder can still sue.

> Overall, the policy in the MoU and the ACP guidelines represents a complete
> change to the trademark system in nearly every way. 

They do not represent any change whatsoever to the trademark system.  
They only apply to domain names.  If the system works well there 
might be some feedback on trademark law over time.

> In some ways, the
> changes are more harmful to trademark holders; in other ways, to domain name
> holders. In some cases, the results may be better than under the existing
> system; in some cases, the results may be worse. The bias will probably be
> toward the trademark holders, but it's impossible to be sure at this point.
> However, the system is a radical departure that entirely changes the meaning
> of what a trademark is, what a domain name is, and what an infringement of
> intellectual property is, and there's no good reason for such a change.

Nonesense.  There is no change whatsoever in the meaning of a 
trademark -- it has exactly the same legal status.  Given that domain 
names are defacto intellectual property now, there is very little 
change in the status of domain names.  And finally, since there is 
*no* change to intellectual property law at all, there is *no* change 
to the legalities of infringement.

All the ACPs do is provide an *optional* standard forum for dispute
resolution, and a series of uniform international rules for that
forum. 

-- 
Kent Crispin				"No reason to get excited",
kent@songbird.com			the thief he kindly spoke...
PGP fingerprint:   B1 8B 72 ED 55 21 5E 44  61 F4 58 0F 72 10 65 55
http://songbird.com/kent/pgp_key.html