Domain names and fair use

Gerald M. Levine

Domain Man

The continuum of defenses to claims sounding in trademark that runs from free speech, through fair use to nominative fair use is a longtime topic of interest around here, from the beginning of this humble endeavor through right about still.  Luckily, when it comes to domain names, Gerald Levine continues to give it away for free.  Now the author of the gospel for domain name law, Domain Name Arbitration, hasposted a great piece on his blog called, “Noncommercial and Fair Use in Rebutting Claims for Abusive Registration of Domain Names.

I dropped “noncommercial use,” as distinct from fair use, from the title of this post for snappiness purposes only [Update:] — and because I will be dealing with the protected speech part in a subsequent post, please God.

As Gerry points out, this piece extends an earlier treatment of his on the same topic but focusing on judicial, not UDRP arbitration decisions.  You need both.  From the introductory section:

The UDRP lists three nonexclusive circumstances for rebutting lack of rights or legitimate interests in domain names, which if successful also concludes the issue of abusive registration in respondent’s favor. The third circumstance is “you are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Noticeably, 1) what is legitimate is expressed in the disjunctive (it is either one or the other); and 2) the “without intent” clause is not “without intent for commercial gain” but “without intent for commercial gain to misleadingly divert consumers.”  In other words, there can be commercial gain as long as there is no intent “to misleadingly divert consumers.”  The term “fair use” is generally associated with protected speech; the right to express opinions in the form of commentary or criticism, but nominative fair use which fails under “noncommercial” (because it is definitely not that) qualifies under “fair use.”

How panelists construe these very different “fair use” circumstances open a window into the assessment process and of the determining factors for proving or rebutting legitimacy. In both nominative use and protected speech legitimacy rests on answering the “why?” question. Incorporating trademarks is intended to achieve particular and lawful ends which in either instance is beneficial to consumers even if intolerable to owners.

Why can't UDRP parties just get along like these cute Swarovski bunnies?

Why can’t UDRP adversaries just get along like these cute Swarovski bunnies?

Or perhaps, even if it seems intolerable to owners.  It’s really almost always quite tolerable.  I particularly appreciate Gerry’s formulation:  “In both nominative use and protected speech legitimacy rests on answering the ‘why?’ question.”  Why, that is, are you using that particular trademark?  Good excerpt here that provides great “takeaway” on nominative fair use in the UDRP context:

Over time the right has expanded from dealing in owners’ products (authorized in the case of Okidata but now including unauthorized resellers, service providers, and distributors) to include what is now also permitted under U.S. law, namely using domain names descriptively for goods or services identifiable to consumers from the trademarks but not in competition with the owner. . . .

While Respondents in Oki Data and Jaguar Land Rover passed their tests (authorized dealer of OKIDATA products and offering a service different from and noncompetitive with trademark owner) the Respondent in Swarovski Aktiengesellschaft v. Registration Private, Domains By Proxy, LLC, / Steve Hosie, CJ, LLC, D2015-2351 (WIPO March 7, 2016) () did not. The Respondent contended that “(i) the disputed domain name was purchased legally and within the legal fair use laws concerning domain names, and is being used by the Respondent under ‘Nominative Fair Use.’” The Respondent continued with a list of other reasons the registration was lawful.  However, the three-member Panel in Swarovski was not impressed: Read More…

Petition for certiorari in the FLANAX case

Who Owns First?


Not even warming the bench

There is no end to the number of jokes one might make in a post about a decision concerning the classic Abbott & Costello comedy routine “Who’s on First”—and indeed I’m champing at the bit to make ’em—but the import of the ruling is just too great to be flip about, in this copyright comic’s opinion. Because if I’m reading the Second Circuit correctly, and I think I am, then the court thinks that the beloved shtick is no longer protected by copyright. In other words—although the court did not say so explicitly in 62 pages—the routine is in the public domain.

In TCA Television Corp. v. McCollum, decided October 11, 2016, the United States Court of Appeals for the Second Circuit found that the trial court—the U.S. District Court for the Southern District of New York—had gotten the right answer, but for exactly the wrong reason. The trial court had rejected the argument that “Who’s on First” isn’t protected by copyright (or, more accurately, that the plaintiffs had failed to plead a valid copyright interest) but was persuaded by the argument that the defendants’ use of a portion of the routine verbatim is fair use. It’s exactly the opposite, wrote the Second Circuit. (Indeed, the Second Circuit showed admirable restraint itself under the circumstances. This is perhaps the principal reason why your humble commentator is not a federal appellate judge.)

So let’s meet the players, some of whose numbers have been “retired”: Read More…

Patent trolls (NB: this is not about patent lawyers)

Originally posted 2010-04-13 09:52:45. Republished by Blog Post Promoter

Dean Esmay has a link, and then some, on patent trolling, including an ethnic angle of interest.

Parlous times for trademark dilution

Indeed.  If you’ve been following the action at all here, I’ve been watching with barely restrained glee as specious trademark dilution claims have gotten hammered by the courts recently.

The recent dings I linked to above have been based on core deficiencies of the respective complaints, and constitute classic IP overreaching or, as they used to say (you’ll notice the term has more or less disappeared), trademark bullying — that is, a very big company makes a claim sounding in infringement against a must smaller one, merits be damned.

bl-marksIn contrast, the infringement claim tweeted and linked to by Eric Ball a couple of days ago in the embedded tweet above, Bentley v. NBC Universal (CV 16-03693 TJH (KSx), C.D. Cal., Sept. 28, 2016), reported in popular media when the case was filed in articles such as this one, fell victim to a different flaw:

In 2006, Congress revised 15 U.S.C. § 1125(c), the trademark dilution statute, to specifically exclude dilution protection for marks whose fame extended only to niche markets. Dan-Foam A/S v. Brand Named Beds, LLC, 500 F. Supp. 2d 296, 307 n. (S.D.N.Y. 2007). The 2006 revision defined famous trademarks as those that are “widely recognized by the general consuming public of the United States.” 15 U.S.C. § 1125(c)(2)(A). “One of the major purposes of the . . . [revision] was to restrict dilution causes of action to those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie Dolls, and the like.” Bd. of Regents, Univ. of Tex. Sys. ex. rel. Univ. of Tex. at Austin v. KST Elec., Ltd., 550 F. Supp. 2d 657, 679 (W.D. Tex. 2008) (citations omitted). The revision formally matched the statutory language to the limitations previously imposed by courts in cases such as the Ninth Circuit’s Thane Int’l.[, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002).] . . .

Here, Bentley and O-Line failed to sufficiently allege facts to demonstrate that their marks are famous. Bentley and O-Line allege that their LB marks are recognized by people interested in football, sports performance, and fitness training. However, recognition in a niche market or among a limited segment of individuals does not satisfy the “widely recognized by the general consuming public of the United States” requirement of 15 U.S.C. § 1125(c)(2)(A). Moreover, Bentley and O-Line did not allege any supplemental facts regarding the extent of their marks’ advertising, publicity or sales. Thus, the allegations are not sufficient to conclude or infer that the LB marks are famous. Accordingly, O-Line and Bentley do not allege “enough facts to state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 570.

Good; fine.  What’s notable here, perhaps, is that the court construed “people interested in football, sports performance, and fitness training” as a niche market.  That’s somewhat surprising to me, and contains a warning to those drafting dilution complaints:  If your market is big enough not to be construed as niche, avoid limiting language such as that used here if you can under Rule 11 or, alternatively, add facts that can, in good faith, bootstrap the description of the market in which your mark is recognized out of the niche.

If you must, that is.

Stevens Yes! Stevens No!

Originally posted 2012-10-25 14:01:12. Republished by Blog Post Promoter

Whose Court Is It Really? asks the Atlantic Monthly, and its answer is: John Paul Stevens’s court! (Subscription required.)

Oh, really? Wonkette sees it quite differently, in unquotable language reported here that suggests that the last great Northwestern U. Law School justice has one foot out the door.

Jobs and copyright

Originally posted 2007-02-07 18:55:44. Republished by Blog Post Promoter

You must have heard about this already?

Apple’s demand that record companies do away with copyright protection for songs they sell online has set up a bitter battle between the two camps as they prepare for broad-ranging contract negotiations.

Steve Jobs, Apple’s chief executive, published an open letter on Tuesday arguing that selling music online without such protections – known as digital rights management – would make it easier for consumers to listen to music on different devices, boosting the overall market.

You can’t really rely on LIKELIHOOD OF CONFUSION for this sort of thing. It’s all over the Internet. But I did have to make sure you knew that. What Jobs has done is significant because despite being a quasi-counterculture icon, he’s now very much a resident in the corporate suite. I’m not aware of anyone else of his stature in the corporate world coming out this way on copyright. That’s the news part of it.

Land grab

Originally posted 2014-01-17 10:17:26. Republished by Blog Post Promoter

Michael Atkins Seattle Trademark AttorneyGeneral practitioners and even civilians can file their own trademarks if they want to, and it frequently works out okay.  It usually is not the, how do you say?, rocket science.  Yes, there’s good, better and best, but sometimes good is good enough.

But don’t be a dumb-dumb about it. Michael Atkins writes about a preposterously expansive trademark application, listing a gazillion “goods and services,” and explains why it’s usually a mistake to file something like that.  Excerpt:

This kitchen-sink approach raises several issues. First, a U.S. trademark owner does not gain legal real estate simply by grabbing as many categories as the Patent and Trademark Office will allow. Trademark ownership here arises through use, not registration.

Second, a trademark owner need not specify every last category used in connection with the mark. After an owner establishes its rights, it is protected against junior uses that create a likelihood of confusion. . . .

Third, a kitchen-sink applicant sets itself up for having its registration cancelled on grounds of fraud.  In the future, if a competitor determines that the registrant is not making actual use of even one of the hundred-plus categories of goods or services listed, the competitor may be able to have the entire registration canceled. . . .

Just good advice. Read the whole thing and bookmark it if trademark prosecution isn’t something you do all that often.

In re Tam – Simon Tam’s Response to the PTO’s Petition for a Writ of Certiorari and grant of cert news

The Supreme Court granted the PTO’s request for cert in In re Tam (the “Slants case”).  Here’s a good summary of the case and our position by our co-counsel, Eugene Volokh.  Below is the Supreme Court brief his team at the UCLA Supreme Court Clinic helped us write, which I had neglected to share here.

Google a utility? Not the way we thought

Originally posted 2013-09-18 11:43:39. Republished by Blog Post Promoter

Exhaust system, Port Authority Parking GarageI asked the following question more than a little while back in connection with the Kinderstart lawsuit against Google, which asserted a supposed right to a certain “objective” Google ranking (I’ve made slight non-substantive touchups):

Is Google a Utility?

[O]nce a company becomes a sort of common carrier — I am pushing this here — is there really no point at which all purchasers of its services should be treated equally? …  Avoiding a ruling that in any way characterizes Google search results as commodities is also evidently on the mind of the Google attorney who’s insisting, despite the obvious risk of doing so, that Google results, in some cases, are subjective, not objective.

And what is that risk? A ruling, or a suggestion (I don’t know enough about the case to know if this is a claim) that, far from a commodity like potatoes, electric power or fake Vuitton bags, Google results are commodities’ evil twin, a service so unique to Google, and so very, very central to the “market” (definition of which is the heart and sould of the matter) that Google has a — dare we say it? A monopoly! For let’s not kid ourselves: If it were 1966, not 2006, this search advertising business — with both Google and Yahoo at the table — would already be negotiating a consent decree with the government, and not the kind Google is looking for. . . .

But we digress. Add this to the story from last week involving an advertiser’s complaint that Yahoo! buying search terms on Google to redirect users searching for a third website that competes with Yahoo!, and what do you have? New dimensions, or at least invitations by lawyers to open new ones, in unfair competition, antitrust, tortious interference and other traditional areas of law.

Will judges build on the existing doctrines of law and merely apply them to new industries and new technologies? Or will they do as they have done in trademark, and invent new bases for recovery to “fix up” perceived injustices that those pokey legislatures haven’t gotten to? We’ll keep watching.

Turns out there was nothing to watch; no there there — it was a dumb idea, it was recognized as dumb early on, and Google, so far, is not a utility.

Except that Google is a utility, after all!  Not quite the way I meant when I raised the issue in 2006, however, according to the website Quartz: Read More…