[12353] in Commercialization & Privatization of the Internet
Name Reg. Time for Policy Change
daemon@ATHENA.MIT.EDU (Barry Shein)
Mon May 16 18:30:36 1994
Date: Mon, 16 May 1994 15:20:04 -0400
From: bzs@world.std.com (Barry Shein)
To: nelson@crynwr.com
Cc: com-priv@psi.com
In-Reply-To: Russell Nelson's message of Mon, 16 May 94 00:36 EDT <m0q2uPW-000I7iC@crynwr>
>From: nelson@crynwr.com (Russell Nelson) [responding to me]
>Apple Records registers Apple as a trademark for music in the UK.
>Apple Computers registers Apple as a trademark for computers in the
>US. They want to register the trademark in the UK. Apple Records,
>being first, says Ok, so long as you stay out of the music field.
>
>Now, who gets apple.com? Apple Records or Apple Computers?
Obviously Apple Computers, as we've noticed.
In such a case so long as the trade activity doesn't conflict then
first in time is first in right (oversimplifying but it seems to cover
the reality of the situation.)
Should Apple Computers start using apple.com to send out music then
it's possible that Apple Records would bring this to court. They've
done this before over similar issues (Apple Computers venturing into
the multi-media business) tho I think it's been settled amicably. At
least in part because, at this point, Apple Records is kind of on the
skids financially. At least that's how I understand it. So it may not
be a great precedent.
> 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?
>
>Well, yes. The DNS is essentially a newly-created country as far as
>trademark law is concerned.
Really???
Does anyone but you claim this?
Did international satellite broadcast TV create a new country?
>This country (cyberspace) follows a
>reasonable rule -- first come, first owned. But there is a problem.
>Cyberspace trademark law is independent of any country's trademark
>laws, yet it applies to every country's trademarks.
This is science fiction, right?
The particular medium of expression doesn't cause trademark laws to be
thrown out.
>Perhaps there is no conflict with MTV.COM because they have the
>trademark registered everywhere.
That's not necessary. They can pursue in any country they are
registered in. That would seem to be enough to make their point.
A domain name you can legally use in Rwanda but not the US, Europe or
most of the Pacific Rim probably has limited value. But I guess you
could do that if you wanted. People do do this. I remember in Israel
there was no McDonald's but there was a (kosher) hamburger chain
called McDavid's which was quite blatantly meant to be a local clone
of McDonald's (it was all kind of humorous actually, more like satire
than cloning.)
McDonald's has now begun doing business in Israel so I assume the
situation has been resolved, but at the time I didn't get the
impression anyone was intefering with McDavid's usage. They sure as
hell couldn't branch out into the US with that, tho. Or dozens of
other countries. Geography has always been a limiting factor in
trademark. But in a balkanized way, not as a matter of universality
(i.e. all or none as you seem to be suggesting.)
> 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.
>
>What if I register yellow-pages.com? In the UK, it's a trademark.
>How do I desist *in the UK* when the DNS must apply everywhere?
Hey, if a court orders you to desist you DESIST or you pay the
penalties.
It's not the court (or British Telecom's) responsibility to make it
all easy or sensible for you to comply.
Look at the very relevant example of Sun Microsystem's use of "yellow
pages" for their operating system's network information service. They
had to stop doing it and rename it all NIS when BT protested.
Why do you think this all has to fit some model that makes it all
sensible and smooth for the violator? The policeman hits you over the
head hard and, unless you want to get hit on the head again and again,
you stop doing whatever you are doing. Period.
I don't even see what you are defending as morally defensible, it's
not compelling. Whoever does this is ripping the other guy off. The
only possible sympathy being generated here perhaps generates from the
david vs goliath imagery being used.
> Sure, most of us can spot the problem with Russ Nelson registering
> PEPSI.COM.
>
>Okay, what if I go to a country where Pepsico hasn't registered the
>trademark, and register pepsi.com from that country? It's not a
>trademark *there*. I'm not in the US. My customers aren't in the US.
You can do this. You just can't project that mark into the US or other
countries where Pepsi owns that mark. How to do this is your problem.
The other choice is to pay big damages to Pepsi.
>Why should I have to choose a different domain name just because Pepsi
>is a trademark in a different country? Remember, the NIC doesn't
>enforce trademark law. And how is Pepsico going to issue a
>cease-and-desist order against me from a foreign country?
The NIC doesn't have to enforce trademark laws. You just have to pay
all the court ordered damages. A court of authority can also order the
NIC to delete your domain entry as the result of a decision against
you.
> Trademark rights don't evaporate just because you express them into a
> new or different medium.
>
>No, it's the fact that the medium is international in scope but must
>deal with laws that are merely national.
But Russ there's nothing new or unusual about that. The net is not the
only international medium.
Maybe call the International Herald Tribune and ask them if this
occurs with advertising copy they ever receive and how it has turned
out.
My impression, based on closed cases like the Sun/BT yellow pages
thing, is that you project your trademark into a country where it is
protected and you lose.
-Barry Shein
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