Re: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Decision

[Michael Froomkin <froomkin@law.miami.edu>]

Yes, yes, no.  See below.

Marc Schneiders wrote:

>This is more interesting than I thought at first. Does it mean that if
>barcelona.com was registered with a Spanish registrar, the outcome might
>have been different? 
>
Yes. 

>Appeal against a UDRP decision has to take place
>where the registrar is, isn't that so?
>  
>
Yes, except that the UDRP complainant could have picked the registrant's 
jurisdiction.  And the registrant is of course always free to pick any 
place with jurisdiction over the TM owner, since this isn't a true 
"appeal" but is technically a sort of collageral attack.

>Is there a country somewhere in the world that hates trademarks? 
>
Not really.  Every economy worth mentioning is a member of the Paris 
Convention, which substantially harmonizes basic trademark law.  Most 
major economies are also members of the Madrid Protocol, which adds 
additional protections, and many of those also belong to TRIPS, which 
really goes over the top.   The Paris convention is nearly universal.  
But I think North Korea is not a member...

>I might
>set up a registrar business there then. If there are several countries
>that think more lightly about trademark rights, I'd like to know one where
>court cases are reasonably priced.
>
Fuggadaboutit.

>
>On Tue, 3 Jun 2003, at 12:02 [=GMT+0200], richard.hill@itu.int wrote:
>
>  
>
>>Under US law, says the US court.
>>
>>But what about Spanish law?  Not applicable in US court, because of ACPA and
>>the general principle of territoriality of trademark law, says the US court.
>>
>>However, I suppose, the City Council of Barcelona could bring an action in
>>Spanish courts, under Spanish law, if it felt that the activities exercised
>>under the disputed domain name were violating Spanish law in Spain.
>>
>>If such an action suceeded in Spain, then the question of whether or not the
>>Spanish court's decision could be enforced in the US is probably a
>>complicated question.
>>
>>Best,
>>Richard Hill
>>
>>
>>
>>    
>>
>>>-----Original Message-----
>>>From: John Berryhill Ph.D. J.D. [mailto:john@johnberryhill.com]
>>>Sent: Monday, 02 June 2003 22:43
>>>To: [GA]
>>>Subject: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
>>>Decision
>>>
>>>
>>>
>>>As if anyone needed to know, "Barcelona" is not a trademark
>>>of the City of
>>>Barcelona:
>>>
>>>http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf
>>>
>>>
>>>It looks like an update will be needed here to avoid false
>>>advertising:
>>>http://www.oblon.com/barcelona/
>>>
>>>
>>>      
>>>


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