Re: [wg-b] Noncommercial protections for words

[KathrynKL@aol.com]

[discussion stream retitled from [wg-b] US Statutorily Protected Marks

Mike:  
The question that you raise is, I believe, the central issue of what we are 
working on.  I also believe you are fatally wrong in your analysis -- and 
that in the error lies a true problem for free speech (US) and open 
communication (a protected right under the United Nations' Universal 
Declaration of Human Rights and the European Human Rights Convention).  

As one example, Article 19 of the Univ. Declaration of Human Rights states:   
  
     "Everyone has the right to freedom of opinion and expression; this right 
includes   
      freedom to hold opinions without interference and to seek, receive and 
impart 
      information and ideas through any media and regardless of frontiers."  
That includes webpages; that includes the domain names under which people 
will find those webpages.

[My comments continue underneath Mike's message excerpt below]

On Nov 26, mpalage@infonetworks.com wrote:
> 
>  I am a little confused by your comments Kathryn.  Although I 100% agree 
> with
>  you that it is our task to "reflect law" and "not make it", I do not know
>  where the distinction between commercial and non-commercial exists. I
>  believe our mandate is to protect famous marks - period, no distinction
>  between famous or commercial. I could be wrong. If you could provide me the
>  basis for your position I would greatly appreciate it.

The distinction between commercial "marks" (trademarks and service marks) and 
"non-commercial" uses of words is the essence of trademark law.   Trademark 
is not an exclusive right (like, say, a patent), it is a limited right to use 
a word to protect a specific category of goods and services.  It is not a 
mandate to create a "monopoly" over words -- or to take them out of the 
language. 

The trademark statute and its definitions speaks on this clearly:

Definition of Trademark:
15 USC (United States Code) Sec. 1127:  ""The term ''trademark'' includes any 
word, name, symbol, or device, or any combination thereof - 
(1) used by a person, or 
(2) which a person has a bona fide intention to use in commerce 
and applies to register on the principal register established by 
this chapter, to identify and distinguish his or her goods, including a 
unique product, from those manufactured or sold by others and to indicate the 
source of the goods, even if that source is unknown."

==>  a trademark is a right to identify commercial goods and services

15 USC 1114 (edited -- full version at 
http://www4.law.cornell.edu/uscode/15/1114.html)
(1) Any person who shall, without the consent of the registrant - 
(a) use ** in commerce ** any reproduction, counterfeit, copy, or 
colorable imitation of a registered mark ** in connection with the 
sale, offering for sale, distribution, or advertising of any 
goods or services **  on or in connection with which such use is 
likely to cause confusion, or to cause mistake, or to deceive; or 
****
shall be liable in a civil action by the registrant for the remedies 
hereinafter provided. 

==>  Infringement requires a "use in commerce" in "connection with sale" or 
other form of commercial offering of products or services. 

Now, the big one, dilution of a famous mark:
15 USC 1125 
(c) Remedies for dilution of famous marks 
(1) The owner of a famous mark shall be entitled, subject to the principles 
of equity and upon such terms as the court deems reasonable, to an injunction 
against another person's **commercial use ** ** in commerce of a mark ** or 
trade name, if such use begins after the mark has become famous and causes 
dilution of the distinctive quality of the mark, and to obtain such other 
relief as is provided in this subsection. 

Further, same section 15 USC 1125
"(4) The following shall not be actionable under this section: 
(A) Fair use of a famous mark by another person in comparative 
commercial advertising or promotion to identify the competing 
goods or services of the owner of the famous mark. 
(B) ** Noncommercial use of a mark. **
(C) All forms of news reporting and news commentary. "

===>  even famous marks can only be used to prosecute commercial uses, and 
further, there are clear protections, limits and exemptions for Noncommercial 
speech and other forms of open communication to prevent abuses.

Mike, as shown above the distinction between commercial and noncommercial is 
built into every level of the trademark code, and is a distinction maintained 
at the level of international treaties.  Merely because a company which 
becomes large chooses to use an ordinary word like PONY, or BELL or CAMPBELL 
does not take that word out of the language.  

Even famous mark protections (and I have not even raised the tremendous 
hurdles necessary to prove to a court that you have a famous mark -- and the 
many billion dollar companies now being surprised when US federal courts find 
that they don't)  cannot under current law be used to block others from using 
these words for noncommercial purposes, **even in domain names** such as the 
Pony Lover's Clubs, Bells at Christmas time and the Campbell Clan Reunion.  

I am glad you raised the issue so we could discuss it.  If we don't 
differentiate between commercial vs. noncommercial use and limits of 
commercial protection -- at each of the current and future phases of work on 
this WG--  then (going back to my original message and your comment) we will 
be making new law, not reflecting existing law and we will not be protecting 
the Internet as a communications medium for everyone. 

regards, 
kathy kleiman