Trademarks IV Domain Names & Trademarks Class Notes: April 9, 2003 Law 507 | Intellectual Property | Spring 2003 Professor Wagner

4/9/032Law 507 | Spring 2003 Today’s Agenda 1.Brief Cleanup: Dilution Analysis 2.Defenses: Parody and Nominative Use 3.Domain Names & Trademarks a)The ACPA b)The UDRP c)Marks & ‘Net Governance

4/9/033Law 507 | Spring 2003 Dilution Distinction b/w Likelihood of Confusion & Dilution Likelihood of Confusion Dilution Key Analysis consumer confusion diminishment of distinctive quality of mark Types of Marks Eligible distinctive, or … descriptive w/ secondary meaning “famous” and distinctive Type of infringing use required Use in commerce ‘commercial use in commerce’ Competing uses or goods required? YesNo Actual harm required No Yes (circumstantial evidence okay)

4/9/034Law 507 | Spring 2003 Defenses Parody and Nominative Use Mattel v MCA Records (9th Cir. 2002) Why does the court quickly set aside the likelihood of confusion analysis? (Isn’t MCA using the mark?) Why does the court suggest that First Amendment concerns are more significant in the dilution context? How does the court reconcile the two statutory references to ‘commercial’ use of the mark? oWhat does the court find the ‘noncommercial use’ exception means? (Is this what MCA is doing?) Note also the New Kids On the Block Case (p ): Why is this use of the mark noninfringing? What does the court mean by the term ‘nominative use’?

4/9/035Law 507 | Spring 2003 Domain Names & Trademarks Quick overview of Domain Names 1.Domain Names are an overlay to the internet network a)They correspond to an “IP Address” = b)They are not necessary to use the ‘net; typing the ip address works just fine c)When you type a domain name, your computer seeks to ‘resolve’ the name by querying ‘DNS servers’

4/9/036Law 507 | Spring 2003 Domain Names Disputes 1.Why are there disputes over domain names? Lack of namespace? (more than 96-characters allowed) Inability to find desired web sites? Inability to determine desired from undesired web sites? Desire for short, easily-remembered name (for marketing purposes)? Control over references to your goods/services? 2.What is cybersquatting? Should there be anything wrong with it?

4/9/037Law 507 | Spring 2003 Domain Names Disputes Three Basic Approaches 1.Federal trademark lawsuit (typically dilution claim) Con: Required a series of awkward ‘stretches’ 2.The ACPA (15 USC § 1125) 1.Allows claims for ‘bad faith registration’ 2.Cons: Jurisdictional problems Federal litigation is expensive, time consuming Federal courts are sensitive to 1st Amendment issues 3.The UDRP Allows transfer when ‘bad faith’ exists Cheaper and quicker than ACPA No jurisdictional problems

4/9/038Law 507 | Spring 2003 The ACPA Shields v Zuccarini (3rd Cir. 2001) What is it that Zuccarini did? (Is that really so bad?) What happened when someone visited Z’s sites? What are the requirements for an ACPA claim? Do you agree with the court that joecartoon.com is famous? Are misspellings ‘identical or confusingly similar’? Why is Z found to be acting in ‘bad faith’? Do you agree? (Should a commercially-motivated use of the domain name really be an element of bad faith?)

4/9/039Law 507 | Spring 2003 The ACPA PETA v Doughney (4th Cir. 2001) Note the peta.org tagline: “A resource for those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research (and more!).” How did Doughney act in ‘bad faith’? Any practice tips (both for trademark holders and domain name holders) here?

4/9/0310Law 507 | Spring 2003 The UDRP 1.How does the UDRP become effective against all domain names? 2.Overview of the UDRP process: Trademark owner files a ‘complaint’ with an approved dispute resolution provider, alleging ‘bad faith’ in registering the mark The respondent has a short period of time to respond (a majority do not) One (or sometimes three) ‘panelists; decide the case on the basis of the submissions

4/9/0311Law 507 | Spring 2003 The UDRP Elements of a UDRP claim: 1.Identical/confusingly similarity between mark and domain name 2.No ‘legitimate rights’ in the domain name 3.Registration and use in bad faith Bad faith: 1.Primary purpose of reselling domain name to the complainant or a competitor of complainant 2.Registration to prevent mark-holder from using the name 3.Registration to disrupt the business of a competitor 4.Attempts to attract ‘net users, for commercial gain, by creating a likelihood of confusion Legitimate rights 1.Use of domain name in bona fide business 2.You have been known by the domain name 3.Legitimate noncommercial fair use

4/9/0312Law 507 | Spring 2003 Marks and ‘Net Governance 1.How does the dispute over trademarks and domain names implicate ‘net governance? 2.Are there other ways to deal with the issue, aside from establishing a complex dispute- resolution process? Domain name inalienability Repetitive domain name auctions Massive reallocation of domain names Domain name ‘reservation’ processes Do nothing

4/9/0313Law 507 | Spring 2003 Next Class Intellectual Property & the Constitution I Structural Limitations