[12328] in Commercialization & Privatization of the Internet
Name Reg. Time for Policy Change
daemon@ATHENA.MIT.EDU (Barry Shein)
Mon May 16 06:13:01 1994
Date: Sun, 15 May 1994 16:10:43 -0400
From: bzs@world.std.com (Barry Shein)
To: jim@tadpole.com
Cc: bruce@phantom.com, com-priv@psi.com, nettech@crl.com
In-Reply-To: Jim Thompson's message of Sun, 15 May 94 13:06:24 CDT <9405151806.AA26584@tadpole>
>From: jim@Tadpole.COM (Jim Thompson)
>Actually, in a conversation with several lawyers over the weekend, this
>very situation (Adam Curry .vs MTV) came up. If the facts are as Mr.
>Curry states, (he asked, used the domain name on his show on MTV, etc)
>then it was felt that MTV would loose.
Well, can we be more specific about "lose" right now because I've lost
some context here. What's at issue exactly? Curry's continued use of
the mark? Curry paying damages for using it after they said stop?
Curry being able to sell the domain name to MTV?
My impression was that Curry is being sued for damages for abusing the
mark. I could believe MTV would lose on that specific point because he
started using it as an employee, never really caused any particular
harm or, I dunno, tried to sell something under the MTV mark. It (the
usage) just went on a bit after his employment which might be
technically litigable but I'll guess gets dropped unless there's more
here than we're being told.
>You have to 'vigorously defend' a trademark, or you can loose it.
Or "lose" it. Yes indeed. But it seems MTV has done exactly this and
that's what is troubling Mr Curry (he is being sued.) I think any
claim of abusing the trademark without challenge while Mr Curry was in
the full-time employ of MTV as a VJ (i.e. not the janitor or
bookkeeper or some such) is very, very thin. He was an employee in a
position to fool around with such things, publicize MTV's name etc. I
doubt any court would go along with the idea that MTV failed to defend
their trademark against use by an employee. For all intents and
purposes he *was* MTV during that period, he had full legal access to
the mark in the way he was using it (i.e. he was essentially promoting
MTV's corporate mission, as opposed to starting up an unrelated
WMTV-radio or some other uncontrolled and potentially confusing
activity.)
There is an issue of controlling quality of use of the mark. But
again, I suspect Mr Curry's position was such that he could do that
himself, i.e., *he* was the product in this case. This wouldn't fit
very well under the typical franchise loss of mark case law (e.g. you
sell use of a mark to different and fairly independent locations and
the product being sold under it varies so widely that the courts
decide the mark has become meaningless so you lose it.)
I really don't see any grounds for MTV losing their mark over this.
They allowed an employee to promote their corporate mission with it
and when he ceased being an employee they ordered him to cease using
it within a reasonable amount of time. That is, they defended it
vigorously. Anyone who doubts that vigor can volunteer to pay Mr
Curry's legal bills.
-Barry Shein
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