Trademark Law Meets The Internet A. Michael Froomkin U.Miami School of Law http://www.law.tm INET 2002

TM Rights Are Part of a Trend: The IP ‘Grab’ Scope and reach of TM rights were growing before the Internet Net provides a threat to TMs; reaction is to create even greater rights online Internet rules have feedback to Trademark law generally. 11/24/2018 INET 2002 - Froomkin

Basic (Traditional) Principles of TM Law Closely allied to punishment of “unfair competition” & “passing off” Protect the consumer’s expectation Protect the manufacturer’s “goodwill” in the mark Encourage quality, disscourage deception TMs reduce transactions costs TM violators are free riders, fraudsters 11/24/2018 INET 2002 - Froomkin

Nature of Trademark Right Trademarks are GEOGRAPHIC Trademarks are SECTORAL Apple Computer, Apple Records, no problem 1,000 Bob’s Pizza’s, no problem (subject to issues of registration) Basic test is commercial confusion 11/24/2018 INET 2002 - Froomkin

Where Do Trademmarks Come From? Registration in the trademark office® National or state Harmonized by treaties In common law countries - by usage™ Complex rules for sorting priority First user (senior user) has superior rights -- where it has actually been used Registered user gets monopoly rights in all places in jurisdiction name isn’t yet used 11/24/2018 INET 2002 - Froomkin

But, Note Well Mere registration gives no rights without use. Plus, ‘don’t use it: you lose it’ Trademark law protects source identifiers of goods, not words “in gross” Generic words can’t be trademarked -- for their generic meanings Traditionally it’s a limited right 11/24/2018 INET 2002 - Froomkin

Growth of the Mega-Mark Crosses sectoral categories - and borders Transferable reputation of quality? What good does Batman stand as source identifier of? Growth of the information economy The brand IS the product (think “swoosh”) 11/24/2018 INET 2002 - Froomkin

Dilution Protects mark from people trading on its renown with unrelated goods Mostly a product of last 50 years Federal law 1995 protects only “famous” marks; treaty speaks of ‘well known’ too Narrow? Broad? Broader? ‘In Gross’? TeleTech? WaWa? Wedgewood (for homes) 11/24/2018 INET 2002 - Froomkin

Domain Names-- TM Nightmare Can register without prior use Don’t use it, no problem Are not geographic -- DN is everywhere And it’s not sectoral either It was free, is still cheap Cybersquatters Typosquatters “Wrong” uses 11/24/2018 INET 2002 - Froomkin

Special Cybersquatting Remedies ACPA Makes cybersquatting an offense Applies to gTLDs & (some?) ccTLDs First statutory damages in trademark law: $100,000 UDRP Double contract of adhesion Incentive to ‘try it on’ P. picks the arbitration provider causes unhappy incentives for arbitration service providers 11/24/2018 INET 2002 - Froomkin

Misuses of TM Law Quieting critics ISPs exposed to users’ actions “Sucks” cases Fair use that gets sued anyway What’s “commercial” anyway? ISPs exposed to users’ actions CDA § 230 protections do not apply DMCA ‘takedown’ protections? No. Confusion test highly factual Uncertainty about what’s commercial 11/24/2018 INET 2002 - Froomkin

UDRP-Elements DN ‘identical or confusingly similar’ to TM Common law marks in Spain? Names? “Madonna”? No ‘rights or legitimate interests’ First Amendment? DN registered and being used in “bad faith” 11/24/2018 INET 2002 - Froomkin

UDRP-Defenses Prior use (or plan) for bona-fide offering of goods or services You are commonly known by the name Legitimate non-commercial or fair use “without intent for commercial gain or to misleadingly divert consumers or to tarnish the mark”. 11/24/2018 INET 2002 - Froomkin

UDRP-Problems RDNH Procedural provisions really really suck It’s cheap, and encourages ‘try-ons’ Arbitrator quality is variable Strategic behavior by plaintiffs Notorious cases: names, geographic identifiers, tatas, Guinness beer Procedural provisions really really suck See “Causes and Cures” http://personal.law.miami.edu/~froomkin/articles/udrp.pdf 11/24/2018 INET 2002 - Froomkin

The Feedback Loop? “Someone’s got MY name” Tail that wags the ICANN dog? Increasing ‘propertization’ of TM rights If a DN is property (is it?) does that encourage courts and businesses to think of TM as classic property? 11/24/2018 INET 2002 - Froomkin

Thank you http://www.law.tm froomkin@law.tm 11/24/2018 INET 2002 - Froomkin