Re: [wg-b] Second Circuit on First Amendment Analysis of Domain Names

["Martin B. Schwimmer" <martys@interport.net>]

In the context of our discussion of exclusion of the form [famous
mark].[tld] (and not [any other mateiral plus][famous mark].[tld]), the
following language, in my opinion, suggests that there is virtually no
scenario where [famous mark].[tld] would not be treated as a source
identifier (and therefore an exclusion would be appropriate). 

"We do not view Planned Parenthood Federation of America v. Bucci as holding
to the contrary. See No. 97 Civ. 0629, 1997 WL 133313, at *10-11 (S.D.N.Y.
Mar. 24, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (unpublished table
decision). In Bucci, a trademark infringement case, the court held that the
defendant's particular use of the domain name "plannedparenthood.com" was
as a "source identifier" rather than a "communicative message," while
leaving open the possibility that a domain name could constitute such a
message under other circumstances. See id. In reaching this conclusion, the
Bucci court conducted precisely the kind of particularistic,
context-sensitive analysis that is appropriate here, including analyses of
the domain name itself, the way the domain name is being used, the
motivations of the author of the website in question, the contents of the
website, and so on. See id. Domain names and gTLDs per se are neither
automatically entitled to nor excluded from the protections of the First
Amendment, and the appropriate inquiry is one that fully addresses
particular circumstances presented with respect to each domain name."



At 12:37 AM 1/27/00 -0500, you wrote:
>
>----- Original Message -----
>From: "Martin B. Schwimmer" <martys@interport.net>
>
>
>> Of special interest to this group is the discussion of the interplay
>> between the First amendment and domain names.  In this particular case, it
>> was held that a TLD suffix would not rise to the level of protectable
>> speech
>
>The court held that the specific TLDs "com" "net" and "org" do not raise
>first amendment issues because they are not expressive of anything, but it
>went out of its way to note that some TLDs could indeed possess enough
>content to be protected as political speech or parody. See below:
>
>> In short, while we hold that the existing gTLDs do not constitute
>protected
>> speech under the First Amendment, we do not preclude the possibility that
>> certain domain names, including new gTLDs, could indeed amount to
>protected
>> speech. The time may come when new gTLDs could be used for "an expressive
>> purpose such as commentary, parody, news reporting or criticism,"
>> comprising communicative messages by the author and/or operator of the
>> website in order to influence the public's decision to visit that website,
>> or even to disseminate a particular point of view. United We Stand Am.,
>> Inc. v. United We Stand Am. N. Y., Inc., 128 F.3d 86, 93 (2d Cir. 1997)
>> (citation omitted).
>
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>
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