Re: [wg-b] Reality checks [the grateful dead(hits)]

[Greg Phillips <gdp@HPALAW.com>]

Even in the free speech context, one should not be able to use a trademark to
indicate the source of the criticism:  one cannot use a trademark to identify
the source of
the criticism.  Planned Parenthood, 1997 WL 133313, *11  (“‘When another’s
trademark . . . is used without permission for the purpose of source
identification, the trademark law generally prevails over First Amendment.  Free
speech rights do not extend to labelling [sic] or advertising products in a
manner that conflicts with the trademark rights of others.’”) (quoting Yankee
Publishing, Inc. v. News America Publishing, Inc., 809 F.Supp. 267 (S.D.N.Y.
1992)).  In short,
registrants may disparage and criticize famous trademark holders, but they do
not have the right to use the famous trademarks to identify their potential web
sites.  See Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d
200 (2d Cir. 1979) (the right to convey a message does not entitle defendant to
appropriate plaintiff’s trademark in conveying that message); Walt Disney Prod.
v. The Air Pirates, 581 F.2d 751, 758 (9th Cir. 1978) (“Because the defendants
here could have expressed their theme without copying Disney’s protected
expression, Sid & Marty Krofft requires that their First Amendment challenge be
dismissed.”); San Francisco Arts & Athletics v. United States Olympic Committee,
483 U.S. 522 (1987) (the First Amendment does not give defendant the right to
appropriate plaintiff’s statutorily granted “Olympic” designation in the name
“Gay Olympics” for an event not sponsored by plaintiff).

Why shouldn't the same rules that exist in the real world apply to the
Internet?  With an endless supply of domain names for every free speech person
in the world, why should a free speech person be allowed to use a famous
trademark as the source of his or her speech.

In short, famous trademark holders are not saying that independent repair shops
or free speech people can't advertise their services or criticize the famous
trademark holder.  The famous trademark holders simply don't want their famous
trademark to be used as the source of the advertisement or free speech.

 Hartman, Steve wrote:

> I don't believe that a rule that excludes all use of a famous mark from a
> domain name other than one owned by the famous mark holder is not workable.
> Such a rule would exclude too many domain names that raise, I believe,
> legitimate free speech issues; and, in any event, is not a position that
> could command political force, whatever its merits. An ICANN rule that
> allows john doe to register johndoe-porche-repairs.com does not mean that
> such a domain name is not a trademark violation, and it should not prejudice
> Porche's right to sue john doe for a trademark violation and prove its case.
>
> Steve Hartman
> Nabisco, Inc.
>
> > -----Original Message-----
> > From: Greg Phillips [SMTP:gdp@hpalaw.com]
> > Sent: Tuesday, December 14, 1999 4:48 PM
> > To:   KathrynKL@aol.com
> > Cc:   Hartman, Steve; erony@marin.k12.ca.us; wg-b@dnso.org
> > Subject:      Re: [wg-b] Reality checks [the grateful dead(hits)]
> >
> > Independent Porsche repair shops may certainly advertise on their website
> > that
> > they repair Porsche automobiles, but they should not be allowed to use the
> > trademark "Porsche" in their Internet address as a source of their
> > services.  If
> > one accepts the ruling of the Eastern District of Virginia that "a domain
> > name is
> > more than a mere internet address.  It also identifies the internet site
> > to those
> > who reach it, much like . . . a company's name identifies a specific
> > company."
> > Cardservice International, Inc. v. McGee, 960 F.Supp. 737, 741 (E.D.Va.
> > 1997),
> > aff'd, 129 F.3d 1258 (4th Cir. 1997) (enjoining use of trademark
> > "cardservice,"
> > "or any variation thereof, including but not limited to 'csi' or
> > 'csimall'"), one
> > must also accept the proposition that it is not fair use to use a
> > trademark or
> > variation of a trademark in a company name.  Manny's Porshop, 972 F.Supp.
> > at 1131
> > (N.D.Ill. 1997) (enjoining use of "Manny's Porshop" as a business name).
> > Accord
> > Volkswagenwerk Aktiengesellschaft v. Brewer,  170 U.S.P.Q. 560 (D.  Ariz.
> > 1971)
> > (use of "VOLKCITY SERVICE CENTER" enjoined); Volkswagenwerk
> > Aktiengesellschaft v.
> > Karadizian,  170 U.S.P.Q.  565  (C.D. Cal. 1971) (use of "VOLKSWAGEN
> > VILLAGE" in
> > name enjoined; usage not vitiated by use  of the phrase "Used cars only;
> > not  a
> > franchised Volkswagen dealer). The FTDA "prohibits even innocuous use" of
> > a
> > famous trademark.  Manny's Porshop, 972 F.Supp. at 1132 (citing
> > Intermatic, Inc.
> > v. Toeppen, 947 F.Supp. 1227, 1240 (N.D.Ill. 1996)).  In short, it is not
> > "fair
> > use" to use a trademark in a domain name.  Brookfield Communications, Inc.
> > v.
> > West Coast Entertainment Corp., 1999 WL 232014, * 26 (9th Cir. 1999).
> >
> > In the real world we don't allow independent repair shops to use the
> > trademark
> > "Porsche" in their business names or on signs, and we don't allow the
> > independent
> > repair shops to list themselves under Porsche in the telephone
> > directories.  The
> > same rules should apply to the Internet.  Thus, an independent repair shop
> > may
> > advertise in an advertisement or on a website that "We repair Porsche
> > automobiles," but shouldn't use one of the world's most famous trademarks
> > to
> > indicate the source for its services.
> >
> >
> > KathrynKL@aol.com wrote:
> >
> > > HartmanS@Nabisco.com writes:
> > > >  For the sake of completeness, I would add that I can find nothing
> > improper
> > > >  on the face of it with Porsche objecting to porschebank.com or
> > > >  porschelynn.com, or the Academy objecting to theoscars.com. Nothing
> > in
> > > these
> > > >  domain name is a clear message.
> > >
> > > Based on your message, I fear you are setting an new standard for
> > protection
> > > of marks.  Rather than requiring the trademark owner to show
> > infringement
> > > (with the shorthand version being proof of "likelihood of confusion") or
> > > rather than having the famous mark owner show dilution under by the
> > Paris
> > > Convention (shorthand version:  that the diluter is using the mark on
> > > "identical or similar goods"), you would like the trademark owner to
> > show
> > > only that someone is using "their word" and leave the burden of proof to
> > the
> > > domain name holder to prove their innocence e.g,  not infringing or
> > diluting.
> > >
> > > Such an approach is clean and easy, but it will create tremendous
> > problems
> > > with all the independent Porsche Repair Garages and with independent
> > Oreo
> > > distributors.  Under law, they have rights to use even famous marks and
> > even
> > > in commercial settings.   Needless to say, it creates tremendous
> > problems for
> > > free speech by making someone the monitor upfront for what is a
> > legitimate
> > > communicative message using the word "oreo" or "porsche" in it.
> > >
> > > Also, the approach is not consistent with the equities built into
> > current
> > > law. The burden of proof, and the showings, under both sovereign laws
> > and
> > > treaties, rests with the trademark owner.
> > >
> > > Kathy Kleiman
> > >
> > > >
> >
> >