[wg-b] FW: Some Comments from Michael Froomkin

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

Listed below are Michael Froomkin's comments on ***MY PERSONAL*** position
paper. However, I believe they are relevant to the general issues that we
are discussing.

Mike

-----Original Message-----
From:	Michael Froomkin - U.Miami School of Law
[mailto:froomkin@law.miami.edu]
Sent:	Thursday, December 09, 1999 10:28 AM
To:	mpalage@infonetworks.com
Cc:	wg-b@dnso.org; Amadeu Abril i Abril; Louis Touton; Kenyon T. Stubbs;
Esther Dyson; Chris Gibson
Subject:	Re: Working Group B - Position Paper

I have not been following the workings of WG B at all (and I'm not a
member), so I apologize if what follows is retreading ground covered
elsewhere.  Mike Palage was kind enough to cc me on this post, so I thought
I'd better respond.
I think the focus on a two-step procedure - objective then subjective, has
potential.  But there are a lot of other things in here that are potentially
troubling unless they are engineered just right.
First, by proposing a global exclusion and/or priority right for a famous
mark, the proposal vastly expands the rights of a famous mark.  In the US at
least, famous marks are protected ONLY against COMMERCIAL uses.  The
expanded right proposed will, however, work against ALL uses, including
non-commercial ones.  Thus, it represents a break with current law, and a
major expansion of the preclusive effect of trademarks.  Even WIPO admits
that "Domain names, of course, are not the same thing as marks and are used
for many purposes other than the identification of a producer or seller of
goods or services." Final Report para 258.
Thus, unless it is proposed to set the objective bar at a very high level, I
cannot see how this proposal as it currently stands can fairly be called
"equitable."  There's nothing in this proposal for critics of large
corporations, for example, except perhaps the absence of something even
worse. They are significantly worse off than if the proposal were not in
place, and they get nothing in exchange.  This is equity?
If noncommercial uses are to be blocked by famous marks, then what's being
proposed appears to be a massive expansion of the trademark rights over the
language.  Note, however, that the force of my argument shrinks if the
objective criteria are very very high - at that point the pool of
potentially qualifying marks becomes small, and the number of non-commercial
users inequitably injured becomes smaller too.  In other words, instead of
being a "massive" expansion of TM rights, the expansion of TM reights
becomes "significant" or even "small", though still real.  Thus, one way to
satisfy part of my concerns would be to set the objective bar very high
indeed and provide some sort of assurance that it will not be lowered or
eroded later, but rather will evolve with inflation, population growth, etc.
_Devils in the Details_
I provide a lengthy explanation of my views of the flaws in the WIPO
criteria for the definition of famous marks in my Commentary on WIPO's final
report, http://personal.law.miami.edu/~amf/commentary.htm#_1_22 I will not
repeat it all here.  But one can surely do better.
There are many problems, but let me cite just one as an example: as far as I
can tell, the Seventh WIPO factor was invented by the WIPO staff out of
whole cloth (it was not passed by the relevant expert committee, the WIPO
Standing Committee on Trademarks, Industrial Designs and Geographical
Indications), and is completely prejudicial.  WIPO offered no justification
for this seventh factor in the Final Report other than that it would serve
"to accommodate the specificities of the protection of famous and well-known
marks in relation to domain names" (whatever that means). Why a mark should
be more likely to be considered globally famous because it happens to
attract the attention of a single enthusiastic domain name speculator,
numerous parody sites, or nettlesome critics, is unclear. Indeed, if a firm
is attracting the attention of many critics who register names similar to it
as a form of protest, this seems to be the weakest case for special
protection.
I am not opposed to panels making subjective judgments in principle, but
they need to be based on fair criteria, decided on by balanced panels,
ideally administered by a neutral body, and-most important-have some
structural incentive to select only the most deserving trademarks as
globally famous.  It seems to me that unless there is an agreed upper bound
to the number of marks that can be designated famous, and panelists will
therefore tread cautiously since they are deploying a limited resource,
there is little incentive for the panel to reject an application that meets
the objective criteria.  [In its interim report, WIPO suggested that the
number of qualifying marks would number in the hundreds; it made no estimate
in the Final Report.] And if the panel is dominated by trademark lawyers,
whose professional socialization is towards expansive trademark rights, this
must be considered a real danger even with the most honest participants.
Properly incentivized by scarcity, however, I'd be perfectly comfortable
with a WIPO-run panel full of trademark lawyers.  Absent the right
incentives, I'd be uncomfortable even if the panels had more "Internet
people" and fewer trademark lawyers.  And a super-majority of TM lawyers is
far from "equitable".  Indeed, since the second-round decision is
fundamentally subjective, it's not clear to me that lawyers are necessarily
to be preferred to, say, the kind of lay people who sit on juries.  Lawyers
are not obviously better at gauging "fame" than others.
Finally, I would caution readers not expert in trademark law to keep in mind
two critical distinctions too often lost in these debates. First, just
because a trademark is famous in nation A does not mean it is entitled to
any rights in nation B.  A trademark owner has no rights where the mark is
not used. Hence, being designated famous in one or even many nations does
not inevitably mean one is famous elsewhere.  Indeed, two different firms
can achieve famousness for the same name in different countries.  In order
to be allowed to claim rights over domain names, which are worldwide,
therefore, something more than ordinary famousness will be needed. Whatever
rights over domain names are granted to famous marks needs to be limited to
"globally famous" marks-a small subset of nationally famous marks.  If I
read it right, and there are some ambiguities, the report below reflects
this understanding, and that's a good thing.
Second, famous marks have a lot of rights under national law. It follows
that for the ordinary case, the holder of a famous name may not need any
additional protection beyond what is already provided in the UDP or in
court.  The report below sensibly focuses on the special case where this
general principle applies least well: the early seconds/days of a new gTLD.
I agree that if there is a place where a globally famous mark may require
some additional protection, this is it.  I don't agree, however, that a
proposal which effectively eliminates the existing rights of non-commercial
users of a name is "equitable."  (I say this because I presume the
non-commercial critic of a big firm would fail- and should fail- the
objective criteria.) The harm can be minimized, hoewver, by putting a very
tight upper limit on the number of names that could be removed from the
namespace.  Although inevitably arbitrary, and thus understandably
distasteful, some such limit (500? 1000? more?) might be the best we can do.