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

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

Sumption is not part of the calss of cases we are talking about because it
is not a fmaous marks case. Sumption registered avery.net, not
plannedparenthood.net or chanel.net.  Avery Dennison is distinguished from
Planned Parenthood by the holding that (1) neither AVERY or DENNISON are
famous marks and (2) Sumpton was not using the names in their sense as
trademarks but as surnames.  The court's holding suggested that if someone
encountered AVERY.NET, there is no presumption that they are looking for a
site originating with Avery-Dennison.  There was no presumption that
Sumpton had targeted Avery or Dennison (and I am sure that he didn't target
Charles Schwab when he registered schwab.net either).  An inherent aspect
of the Absolutely Unique Famous Mark is that there is a presumption that
the third party knew that the AUFM was owned by someone else.

If some one uses [famous mark].tld for a site about [famous mark], even if
the home page says "This is not a cite originating with famous mark" then
such a site would likely be held infringing under the initial interest
cases (MOVIE BUFF and EPIX) and the free speech cases (Jewsforjesus,
papalvisit, plannedparenthood).

I want to add one thing.  A client of mine received an email from someone
saying "I have registered such and such a domain name (which included the
trademark of my client).  If you don't pay me $12,000, I will put up a web
site saying bad things about the product."  I attribute this threat to
misimpressions in the user community as to some type of magic bullet free
speech defense.



At 04:01 PM 1/29/00 EST, you wrote:
>martys@interport.net wrote 
>>  In the class of situations we are talking about here - where the SLD is
>>  identical to the mark, even in the most political context, where defendant
>>  was commenting on the politics of the mark owner, the court held that
there
>>  was an infringement.  That creates the presumption that that entire class
>>  of cases should come out the same way and that's why you can apply a
>>  mechanistic rule to that class of cases thereafter (with the ability of
>>  challenging the famous mark designation as the safety valve).
>
>I think we have to remember that in this case, the website was completely 
>misleading as well.  For those in the international arena, there is nothing 
>more controversial in the US political arena than a woman's right to choose 
>abortion.  Planned Parenthood is an organization that offers birth control 
>and abortion counseling.  It is the target of many attacks and anti-abortion 
>groups from time to time masquerade as Planned Parenthood to get young women 
>in their door (virtual or physical) and give them anti-abortion information. 
>
>In the physical and virtual worlds, Planned Parenthood has won against these 
>anti-abortion groups. Just as masquerading of a Microsoft website should be 
>shut down, so too should masquerading of a Planned Parenthood website.  But 
>in both cases, it is more than the domain name that poses the problem, it is 
>the entirely misleading nature of the website.  Trademark analysis is always 
>context based -- and the website has given the court the context it needs to 
>find confusion. 
>
>However, federal courts are Also finding that similar or even identical 
>domain names -- alone -- are not enough to find confusion or dilution, if
the 
>website indicates an entirely reasonable commercial or non-commercial use of 
>the word.  
>
>As an example,  please see AVERY DENNISON V SUMPTON , U.S. Court of Appeals 
>for the Ninth Circuit, posted at http://www.iplawyers.com/, where the court 
>declines to revoke avery.net from Sumption and declines entirely Avery 
>Dennison's demand to get it (Avery Dennison holds avery.com).
>
>Regards, 
>Kathy Kleiman 
>
>

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