Trademark Law Meets The Internet

1
Trademark Law Meets The Internet

• A. Michael Froomkin
• U.Miami School of Law
• http//www.law.tm
• 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.

3
Basic (Traditional) Principles of TM Law

• Closely allied to punishment of unfair
  competition passing off
• Protect the consumers expectation
• Protect the manufacturers goodwill in the mark
• Encourage quality, disscourage deception
• TMs reduce transactions costs
• TM violators are free riders, fraudsters

4
Nature of Trademark Right

• Trademarks are GEOGRAPHIC
• Trademarks are SECTORAL
• Apple Computer, Apple Records, no problem
• 1,000 Bobs Pizzas, no problem (subject to
  issues of registration)
• Basic test is commercial confusion

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 isnt yet used

6
But, Note Well

• Mere registration gives no rights without use.
  Plus, dont use it you lose it
• Trademark law protects source identifiers of
  goods, not words in gross
• Generic words cant be trademarked -- for their
  generic meanings
• Traditionally its a limited right

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)

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)

9
Domain Names--TM Nightmare

• Can register without prior use
• Dont use it, no problem
• Are not geographic -- DN is everywhere
• And its not sectoral either
• It was free, is still cheap
• Cybersquatters
• Typosquatters
• Wrong uses

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
Misuses of TM Law

• Quieting critics
• Sucks cases
• Fair use that gets sued anyway
• Whats commercial anyway?
• ISPs exposed to users actions
• CDA 230 protections do not apply
• DMCA takedown protections? No.
• Confusion test highly factual
• Uncertainty about whats commercial

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

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.

14
UDRP-Problems

• RDNH
• Its 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
• http//personal.law.miami.edu/froomkin/articles/u
  drp.pdf

15
The Feedback Loop?

• Someones 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?

16
Thank you

• http//www.law.tm
• froomkin_at_law.tm