Transcript Of Goverments and Goverance

Trademark Law
Meets The Internet
A. Michael Froomkin
U.Miami School of Law
http://www.law.tm
INET 2002
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.
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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
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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
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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
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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
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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”)
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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)
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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
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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
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Misuses of TM Law
Quieting critics
“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
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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”
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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”.
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UDRP-Problems
RDNH
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”
 http://personal.law.miami.edu/~froomkin/articles/udrp.pdf
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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?
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Thank you
http://www.law.tm
[email protected]
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