RE: [wg-b] Noncommercial protections for words

["Michael D. Palage" <mpalage@infonetworks.com>]

Yes, I am well aware of the COMMERCIAL USE requirement.  Although the USE
requirement is well established in US trademark law, the legal principle
that states that "mere" registration of a domain name is not USE can be
attributed to the recent efforts of Phil Sbarbaro and his client NSI.
However, I believe you missed the point I was trying to raise. In your
original e-mail you stated:

I am surprised to find this Working Group moving forward with researching
protection for NONCOMMERCIAL ORGANIZATIONS such as Federal Parks and Veteran
Associations, etc.

The intention of my original reply is that all famous marks, whether owned
by a for-profit or non-profit organization are entitled to protection under
our Working Group mandate. As I have been reminded, non-profit, does not
mean for free. I would argue that a great number of non-profit organizations
rely heavily upon the value of the their trademark in sponsorship and fund
raising activities. I believe it could be argued that these organizations
should be entitled to greater protection because they do not have the deep
pockets to fund expensive litigation. Every dollar that a non-profit spends
in legal fees is one less dollar that is available to the non-profit's
cause.

I agree that trademark protection is fundamentally different than protection
for copyrights and patents. First, patents and copyrights are expressly
provided for in the US Constitution, trademarks are not. The basis for
federal trademark legislation resides in the power of Congress to regulate
interstate commerce - therefore giving rise to the "use in commerce"
requirement. Trademarks actually serve a dual role of protecting the public
from confusion and maintaining the value of the mark for its owner. Unlike
copyright and patents that have finite periods of protection, trademarks can
last indefinitely. Moreover, I suggest you read the case law where the
courts have held that trademark protection can exist even after a design
patent term has expired.

I agree that the Univ. Declaration of Human Rights is important and most not
be excluded from our analysis, however, I do not believe these rights are
absolute. Are you stating this Univ. Declaration of Human Right would
protect a group of refugees that attempted to register the mark
redcross.newgTLD for purpose of non-profit fund raising, even if they had no
affiliation with the Red Cross?

Finally, I agree with you that any safeguards that would have the end result
of granting monopolistic rights in common ordinary words would be
unacceptable.

Mike

-----Original Message-----
From:	KathrynKL@aol.com [mailto:KathrynKL@aol.com]
Sent:	Tuesday, November 30, 1999 1:42 PM
To:	mpalage@infonetworks.com; wg-b@dnso.org
Subject:	Re: [wg-b] Noncommercial protections for words

[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