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

["Michael Froomkin - U.Miami School of Law" <froomkin@law.miami.edu>]

Well, only a little complicated, maybe?  trademark is territorial and
always has been.  The Spanish court

1. might not have personal jurisdiction over a US firm marketing to US
clients

2. even if it did, wisely might not exercise it under forum non conveniens

3. even if exercised jurisidiction, would rule about the use of the name
*in spain*

4. injunctive relief would risk hitting the first amendment (cf. Yahoo
case....); damages would fall under well established principles of
enforcement.

5.  Note, however, that any claim in Spain would be a traditional
infringement claim -- NOT a claim for ownership of the domain name.  And
that's exactly as it should be.

On Tue, 3 Jun 2003 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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