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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…

Oy, Tenenbaum

Originally posted 2011-10-04 18:43:04. Republished by Blog Post Promoter

A while ago I wrote a little piece linking to Doug Lichtman’s exploration of the Tenenbaum copyright case, which Harvard law professor Charles Nesson said would be a “a public referendum not only on the music industry’s efforts to enforce copyright through these direct-infringer suits, but also on the copyright rules that make the industry litigation possible.”

Well, I hope he wasn’t counting the judge, or the jury, as part of the “public.” Now it’s over, or at least the not-such-a-referendum part.  It didn’t go such a good way, though, for Tenenbaum.  This came down on Friday:

Judge Nancy Gertner has ruled against alleged unauthorized file sharer Joel Tenenbaum today, ruling that he is liable for copyright infringement.
Just yesterday, Tenenbaum confessed to illegally sharing 30 tracks through Limewire and other P2P clients . . .
“Notwithstanding the protestations of Tenenbaum’s counsel, Tenenbaum’s statement plainly admits liability on both downloading and distributing, does so in the very language of the statute (no ‘making available’ ambiguity) and does so with respect to each and every sound recording at issue here,” wrote Judge Gertner . . .

Well, that would be a tough formula to beat.  Which makes the following even less surprising:

After just three hours of deliberations, a jury has ruled that convicted pirate Joel Tenenbaum has willfully infringed on copyrights, and has awarded the RIAA and the media companies $675,000 USD, $22,500 for each of the 30 songs he admitted to sharing.
In some ways, Tenenbaum should be grateful, as the jury could have awarded up to $150,000 in penalties per track. In the recent ruling against Jammie Thomas-Rasset, the jury awarded the RIAA $1.92 million USD, on only 24 tracks.
Tenenbaum’s Harvard Law professor Charles Nesson added of the decision: “It’s a bankrupting award.”

I know the feeling, only when I hit the wall I didn’t think I was driving head-first into a statutory brick wall as Tenenbaum was here.  My client actually had the law on its side, plus humble old LIKELIHOOD OF CONFUSION®. Whereas Tenenbaum seemed to have, well, Professor Nesson, fighting fiercely.

I’m still trying to figure out exactly what the secret stragety was, or is, here.

On the other hand, the RIAA was ecstatic with the jury’s decision.

Yeah, they’ll do that every time!

Okay, does the referendum begin now?  And if so, does that stay execution of the judgment?  I sure hope so.  But I wouldn’t rely on your voting on it.

Petition for certiorari in the FLANAX case

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.

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…

Lanham Act attorneys’ fees: Good to know

Originally posted 2013-06-27 11:41:52. Republished by Blog Post Promoter

The situation with attorneys’ fees in “exceptional cases” under the Lanham Act is, to put it mildly, not clear.   I’ve written about it from time to time here, including, in December, in connection with the important Second Circuit decision in Louis Vuitton v. Ly USA Inc., which held that a prevailing plaintiff in a trademark counterfeiting case may collect both statutory damages and attorneys’ fees.

Well, I say “collect” — I really mean “be awarded.”  In the vast majority of “big” counterfeiting cases, of course, these awards aren’t collected, or collectible, at all (there are exceptions).  Rather, they are “symbolic” victories meant to “send a message” to counterfeiters around the world and make them repent.

Having sent one of those messages myself … back in, oh, 2002 … I must admit I am curious why it hasn’t been received yet, evidently…
Window and statue, Appellate Division First Department Courthouse

Anyway, it always comes down to this:  No one really knows what an exceptional case is, because it’s obviously an entirely subjective test pretty much left to the sound discretion of the District Court. That “standard” is amorphous enough that, outside of big counterfeiting cases, clients should not only never be told that they can get Lanham Act attorneys fees:  They should never even be left with the impression that it’s a creditable probability, and certainly not to the extent that they should include collection of those fees in their budgeting choices for infringement litigation.

All this is by way of linking to Michael Atkins’s recent post on the latest statement on the topic of that elusive “exceptional case,” this one on the other side of the continent, in a Ninth Circuit case called Haas Automation, Inc. v. Denny, No. 11-56991, 2013 WL 2303528 (9th Cir. May 28, 2013):

Courts don’t award attorney’s fees that often in trademark cases.

That’s because the statute only authorizes fees awards in “exceptional” cases.

So what’s that mean?

The Ninth Circuit recently reviewed the standard. . . .

The court didn’t offer much analysis in upholding the district court’s award to the prevailing plaintiff. It just said that “[c]onsidering all of the circumstances of this case, including the jury’s verdict, we agree with the district court that the threshold standard for awarding fees has been met, and further that the district court did not abuse its discretion in awarding attorneys’ fees.”

A little more explanation would have been nice. However, trademark owners still have an important take-away from the decision: it’s important to know the court’s standards when seeking or defending against a claim for attorney’s fees. Most claims won’t cut it, but the cases with egregious facts can.

Just to be a little clearer:  The decision doesn’t say a damned thing about what the facts were that were so egregious.  Moreover, the case is one of those “nothing to look at here, move along” specials, with a footnote that says, “This disposition is not appropriate for publication and is not precedent except as provided by 9th Cir. R. 36-3.”

Well, I’ll tell you some facts.   Read More…

Defamation and Bloggers, Once and For All

Originally posted 2013-03-21 13:15:22. Republished by Blog Post Promoter

Question I seem to get every week: What’s with blogs and defamation? Coleman, are you pro? Con? Here’s [There was once] what appears[ed} to be a very well done article, originally published in the [now-defunct] New Communications Blogzine, that is[was] far more information than I’m going to give anyone for free.

Free “legal” advice — pro bono, that is

PayWhat do you know?  No one can own “pro bono” — regardless of how it’s spelled.  John Welch:

The USPTO refused registration of the mark PROBOKNOW, in standard character form, deeming it merely descriptive of “Operating an online marketplace for providers and consumers of free and affordable legal services.” The PTO maintained that the mark is the phonetic equivalent of “pro bono.”Applicant argued that PROBOKNOW will not be recognized as “pro bono,” but rather as a merely suggestive portmanteau of the terms “pro bono” and “knowledge.” Moreover, said applicant, the mark is a double entendre. How do you think this came out? In re Proboknow, LLC., Serial No. 86790769 (September 14, 2016) [not precedential].

John’s post, of course, gives you what you need to know about this decision.  The only real novelty here was the argument based on the “Pro bono” and “knowledge” melding, which the applicant argued amounted to a clever double-entendre entitled to protection.  Nope:

[A]pplicant’s argument that PROBOKNOW would be perceived as a melding of “pro bono” and “knowledge,” [but] there was no evidence to support that theory, nor is such an interpretation evident from applicant’s manner of use of the mark. Moreover, even if consumers perceive the mark as applicant asserts, the mark would still be descriptive of applicant’s services.

That part is a bit of shame, because it may be that the applicant could have or could develop such evidence.  On the other hand, if it does, it can apply and try its luck again.

On a more general note, however, the opinion sets out a couple of fundamental points of trademark law that are frequently overlooked by non-specialists.

  • Unusual or funny spelling has its place in trademarks, but neither of them can make a silk purse out of a sow’s ear.  The sow here is descriptiveness. “The novel spelling of a mark that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.”
  • Similarly, neither originality nor even exclusivity will make a flawed trademark better than it is.  “[E]ven if applicant is the first and only user of the term PROBOKNOW, it is still merely descriptive of the services, because it immediately describes an essential function, feature or characteristic of the identified services.”

loc-disclaimerHope that was useful to you.  And yes, it was no charge.  But as it says at right (or above this paragraph on your mobile), it wasn’t legal advice.