Re: [wg-b] RE: opportunity to pre-empt, or license to infringe?

["John Berryhill Ph.D. J.D." <john@johnberryhill.com>]

>Steve Hartman's comment about free speech
>was pretty much guaranteed to inflame a goodly
>portion of this list.

The only thing there that raised my eyebrow was that I tend to AGREE that
"free speech" claims in domain names are flimsy.

Of course, I agree that they are dubious claims for precisely the same
reason that I agree that mere registration of a domain name is indeterminate
as to trademark infringement.  There has to be a commercial injury of some
kind for there to be trademark infringement - i.e. genuine commercial
activity likely to cause confusion of the relevant class of consumers.

Now, Nabisco Brands is sitting on a sizeable pile of unused domain names in
which they don't have trademarks, so I think we can put the issue of whether
it is worthwhile to collect non-trademarked domain names to rest.  And
presumably, Nabisco's license from the estate of Dinah Shore also covers the
domain name registration that incorporates her name (one hopes, anyway).
Now there is a Dinah Shore golf tournament sponsored by Nabisco, but the
domain name nabiscodinahshore.com  does not resolve to a web page about golf
or anything else, and thus the registration tends to convey the impression
that Nabisco has some sort of general endorsement or association with Dinah
Shore for all intents and purposes, because the domain name does not refer
to golf or golf tournaments.

...but that would be if domain names corresponded to speech, which of course
they do not.  Similarly, a domain names do not correspond to trademarks in
the absence of use AS a trademark, as per the position of the USPTO.

Now, there is legal support for the proposition that there can be
non-trademark uses of even arbitrary or fanciful trademarks.  For example,
more people know of the Strategic Defense Initiative by the name "star
wars", and the use of the term "star wars" to refer to SDI is something that
Lucasfilms had to learn to live with in precisely the same manner that
Nabisco has had to learn to live with the derogatory use of the term "oreo"
in the African-American community.

So, let's say that an African-American wanted to devote a website to a
discussion of issues relating to cultural identity, and his personal view
that African-Americans who have assimilated into middle-class American
culture have sold-out, or become "oreos" (black on the outside, but white on
the inside).  In fact, let's say that this individual has a list of people
whom he deems to have become such, and he wants to address his site as
oreo.african in the new ".african" tld.

Question 1 - is that a problem?  Yes or No?

Now, instead, let's say that the sunrise proposal is adopted, and Nabisco
registers oreo.african during the sunrise period for the purpose of
preventing the use of the term Oreo in this non-trademark sense of the term
that has, like it or not, become part of the vocabulary.

Question 2 - is that a problem?  Yes or No?

Now please don't think for one nanosecond that I would suggest that Oreo is
not distinctive and solely the property of Nabisco as applied to cookies and
any other commercial product - it is surely a famous mark.  But, as used in
a non-commercial context among African-Americans, that is hardly something
that belongs to Nabisco (and I'm sure is something that they wish hadn't
happened).

John
(who is more often accused of being a Nilla wafer)