[12326] in Commercialization & Privatization of the Internet
Name Reg. Time for Policy Change
daemon@ATHENA.MIT.EDU (Barry Shein)
Mon May 16 06:07:49 1994
Date: Sun, 15 May 1994 19:44:34 -0400
From: bzs@world.std.com (Barry Shein)
To: nelson@crynwr.com
Cc: nettech@crl.com, bruce@phantom.com, com-priv@psi.com
In-Reply-To: Russell Nelson's message of Sun, 15 May 94 15:41 EDT <m0q2m4U-000I7iC@crynwr>
>From: nelson@crynwr.com (Russell Nelson) [responding to me]
> Since MTV withdrew his permission to use the mark when Curry left
> MTV it seems to me that this is a fairly open and shut case. I
> don't see any subtlety here.
>
>Sure there's subtlety here. 1) Adam registered MTV.COM in his own
>name, 2) he paid for the connection himself, and 3) he managed the
>site on his own.
Well, that doesn't raise any new or subtle points of trademark law.
I mean, so? So say you were a VJ for MTV and went and made up a bunch
of T-shirts with the MTV logo at your own expense and handed them out
at some random event. How is that any different? Either you violated
the MTV mark, or you were performing something you believed to be
within the purview of your job function, most likely the latter. That
you had some left over after you quit and handed those out also
doesn't make much difference, maybe you were in violation of the mark.
If you printed some more (w/o permission) you're in violation of the
mark.
That you paid for it or took initiative only proves the guilt.
>I would say that the question is "Should US trademark law apply to the
>DNS just because the Internet is (now) largely a US thing and the NIC
>is in the US?"
Most countries have trademark laws. You can register your mark in
those countries, as a general rule.
>We don't presume to apply US trademark law (e.g. where
>yellow pages is a generic term) to the UK (where Yellow Pages is a
>trademark).
I don't understand, did Curry do this in some country other than the
USA? Is MTV not a US mark?
Or is your point that because the the media involved is international
that you believe that therefore US Trademark law (w/in the US), or
other nations' trademark laws as applicable, are somehow null and
void?
You can get CNN transmissions in almost every country in the world.
Do you think because of this that CNN is above US (or other
countries') Trademark law?
I think you're going to have to be a bit more clear about your point.
>If the answer is yes, then how do we deal with things like Adam
>Curry's company called "On Ramp Incorporated" (onramp.com already
>belongs to someone else)?
Hey, first in time, first in right, basically.
Assuming they're both in a similar business or feel the marks conflict
then they settle it in the usual way. I don't see where DNS introduces
anything into this.
I can certainly imagine contentious examples but I don't see how
that's any different than the usual trademark law fare. It's
frequently contentious.
>Because, the NIC has acted as if the DNS is
>independent of US Trademark law.
The NIC is not responsible for enforcing US Trademark Law. Any more
than the guy who printed the MTV T-shirts in my example above.
What has the NIC got to do with this? Try to use PEPSI.COM and you
will likely find yourself ceased+desisted and possibly sued under
trademark law.
The NIC shouldn't have anything to say regarding the potential for
trademark violation, they're not a governmental or legal body.
Sure, most of us can spot the problem with Russ Nelson registering
PEPSI.COM.
But many, many trademark violations are much more subtle or
contentious or less obvious than that. How can the NIC pretend to give
such advice? Why should they? Except *maybe* in the most egregious
examples in which case about all I'd suggest is alerting the folks
they believe to be the trademark holder. Even that is going kind of
far, I doubt they'd want to get in the middle of such things. And I
suspect they wouldn't want to, tho a phone call can be made discreetly
and then they can stay out of it.
One of the claims in USL v. BSDI involved BSDI's using as their
corporate phone number 1-800-ITS-UNIX. That is, using the UNIX mark in
this way. Do you think the phone company should have pre-emptorially
intervened?
No, I think that was between USL and BSDI (that particular matter was
basically settled by BSDI agreeing quickly to cease+desist.)
The medium of expression is probably one of the *least* interesting
aspects of a mark violation. Who cares much if it appeared in ink or
carved into stone or in a magazine or on TV or as a DNS domain or
whatever? Unless the issue is one of geographical distribution (but
it's still independent of the specific medium, even if use of the
medium is relevant.)
Right now the mechanisms for projecting a trademark violation into
another country via DNS is not awfully smooth. But other than some
enforcement details I don't think a company would have much trouble
ordering you to cease+desist or else if you projected a mark into a
nation where it's a violation. Hey, you can complain that it's a
nuisance to obey the order, and you can pay thru the nose in
court-ordered damages, and then decide which is the bigger nuisance.
>If the answer is no, the NIC should be prepared to get thousands and
>thousands of new DNS registrations in a short period of time. And
>then it'll have to deal with gold diggers who register Pepsi.com,
>Coke.com, Leggs.com, etc.
The NIC doesn't have to deal with this much at all, except perhaps
obeying requests to change these either from the person or entity who
registered it (when they agree to cease+desist) or as per court order.
If I were the NIC and worried about this all I'd do is institute some
charge for such changes to cover the nuisance.
The "gold diggers" you allude to will be digging themselves into a big
legal hole when pepsi, coke, legss, etc sue their butts. They haven't
a l'egg to stand on. They'd have no leverage as near as I can tell.
Trademark rights don't evaporate just because you express them into a
new or different medium.
There was a weird case around a year or so ago involving Disney v.
some guy who full-body tatooed disney characters onto his skin (or had
them done tho I think he was a tatoo artist.) Not sure what resulted
but I remember he lost. Maybe the guy told his friends it was his skin
so his business but apparently the courts disagreed tho obviously
there was some potential problem with implementation of a cease+desist
order in that case. But that it was tatoos didn't suddenly make this
all a new frontier of trademark law.
-Barry Shein
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