1. Trademark Law Meets The Internet
A. Michael Froomkin
U.Miami School of Law
INET 2002

2. 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 Froomkin

3. 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 Froomkin

4. 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 Froomkin

5. 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 Froomkin

6. 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 Froomkin

7. 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 Froomkin

8. 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 Froomkin

9. 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 Froomkin

10. 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 Froomkin

11. 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 Froomkin

12. 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 Froomkin

13. 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 Froomkin

14. 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”
11/24/2018
INET Froomkin

15. 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 Froomkin

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