RE: [wg-b] Re: Nature of answer to question B

[martys@interport.net]

A corner case with at least three sides.

First, there isn't complete sovereign immunity for government actors in IP
cases, but that's not the most important aspect to your hypo.

Second, as I understand your question, you are discussing EBAY as a TLD
suffix, not as a SLD.  So you get into the whole "can a TLD suffix function
as a Trademark - can a TLD suffix infringe a trademark" morass most
recently discussed on the GA list.  my advice is to let IOD and CORE and
.PER develop the law for us on that point (although it seems that there
cannot be a third party .kodak.

Third, you picked EBAY as an example which, it can be argued, is on its way
to becoming, to use Peter Weiss' term, an AUFM, or Absolutely Unique Famous
Mark, a mark so inehrently distinctive that use in virtually any context
invokes an association with the trademark owner.  If you are aware of
third-party use of EBAY now, I would be interested in hearing of it (and
EBAY's lawyers would be more interested).

Lastly, you refer to chartering.  I would be prepared to suggest to this
list that we formulate a question and then vote on a "agree/disagree"
manner that:

"The need for trademark protection mechanisms in general and famous
trademark protection in particular varies inversely with the degree of
charter requirements of the TLD and the distinctive nature of the TLD
suffix itself."

In other words - .sux (where it is understood that [mark].sux is not owned
by the TM owner, and .anon - are less in need of special famous mark
protection mechanisms than .firm (where there is no chartering).

Similarly, a TLD named .gmbh where the register required that the
registrant was a gmbh with that name, would rarely create naming conflicts.



>Hello Martin,
>
>What if the counties of "Contra Costa" and "Alameda" wanted to start a TLD
>registry with the EBAY TLD? Chartered, according to my WG-C proposal, to
>register organizations headquartered in the East SF Bay Area? Is that an
>infringement? Further, even if it was, would it be actionable under US law?
>I believe that copyrights, patents, and other marks, are not binding for
>governmental entities (USG can violate copyright/patent anytime it wants to,
>with impunity)?
>
>I realize that this may be a corner case, but it's not that unlikely a
>corner.
>
>> -----Original Message-----
>> From: owner-wg-b@dnso.org [mailto:owner-wg-b@dnso.org]On Behalf Of
>> Martin B. Schwimmer
>> Sent: Friday, October 22, 1999 12:38 PM
>> To: wg-b@dnso.org
>> Subject: [wg-b] Re: Nature of answer to question B
>>
>>
>> >- All suggested mechanisms that ICANN could implement to
>> protect famous marks
>> >   are either ineffective or harmful to the development of
>> commercial and
>> >   non-commercial use of the Internet
>>
>>
>> Why would the exclusion of third-party registration of
>> kodak.firm from the
>> .firm TLD be ineffective in protecting the KODAK mark?
>>
>> Why would the prohibition of third-party registration of ebay.firm be
>> harmful to the development of commercial use of the Internet?
>>  It seems as
>> if the ability of the consumer to trust the fact that ebay.firm or
>> kodak.biz were associated with the owners of those famous
>> trademarks would
>> aid, not hinder commercial use of the Internet.
>>
>> >- UDRP will significantly reduce the cost to the "famous
>> mark" holders of
>> >   protecting their marks against clear cases of cyberpiracy
>> compared to
>> >   the curent situation
>>
>> Is your goal to increase the cost?
>>
>> >- A few more years of discussion in non-Internet fora about
>> how to decide
>> >   what marks are internationally famous or not is likely to lead to
>> >   conclusions, and ICANN should not attempt to guess at
>> these conclusions
>> >   at the present time; doing so might even harm, delay or bias the
>> >   non-Internet process for reaching conclusions in this matter.
>>
>> Red herring.
>>
>>
>>
>>
>>
>>
>>
>>
>> @ @ @ @ @ @ @ @ @
>>