Re: Non-commercial speech on the Internet

["Martin B. Schwimmer" <martys@interport.net>]

I think that we are probably in agreement on many important issues
regarding the DNS - and I think neither of us want an unfair Dispute
Resolution Policy (i.e. NSI) or to have a New IANA which does not take into
account the rights of users (commercial or non-commercial) of the Internet.


At 11:56 AM 8/17/98 EDT, you wrote:
>Martin:
>
>Price Waterhouse conducted a study last year which it entitled "Top
>Web/Internet Activities."  It listed activities and time spent and found:
>
>research   43%
>email       34%
>games     9%
>online mag/news  5%
>online banking    2%
>two way voice    1%
>shopping   1%.
>
>At the time, the reference to this study was at Cyberatlas,
>www.cyberatlas.com/usage_patterns.html. 

>
>I think we have to separate the user's activities from other activities.  For
>an offline example, reading the Washington Post (a commercial venture) is not
>a commercial activity.  Similarly, if I choose to conduct my private research
>on LEXIS/NEXIS  (paid service) or at my public library, I am not engaged in a
>commercial activity.

But purchasing the Washington Post is a commercial activity.  And
subscribing to LEXIS is the commercial activities that are crucial for
trademark analysis were the WASHINGTON POST and LEXIS to acquire and
protect rights.  The problems with trademarks and domain names does not
arise from the manner in which you utilize these services.

Thank you for the citation of the study.  I don't necessarily agree with
you that most activity on the Internet is non-comercial (for example in
this study - research, email, banking and even telephony can be commercial
or non-commercial) but I don't think that is the important point.

The point is this - trademark law has two major purposes - protection of
the public from confusion and protection of a property right in the
trademark owner.  How the user uses the service is irrelvant to whether the
provider is engaging in commercial activity, and the scope of trademark
protection.  Analogously, the millions of people who go to a movie are
engaging in a leisure time activity, but that doesn't change the fact that
exhibiting movies is a commercial activity, and the people who show movies
are entitled to protection under law (and are subject to regulation).

However, I think we agree that users have to be taken into consideration
during domain name disputes - in the juno.com case, juno had a million-plus
users whose access to email was threatened by Juno Lighting's attempts to
utilize NSI procedure (and then the courts). 

The effect on users will be taken into consideration by a  court when
determining whether an injunction will cause more harm then good - and I
note that a court did grant Juno Online's request to give a declaratory
judgment that it was not an infringer.

 The fact that perhaps all of juno online's users were utilizing the
service for non-commercial purposes is irrelevant to whether juno online is
itself a commercial venture.

Assuming that Juno Online provides "non-commercial" email service becomes
relevant to a likelihood of confusion analysis - does it provide its
service to similar customers in a similar channel of trade to Juno
Lighting's use of the mark.  The test is flexible to take the nature of the
user's activities into account - unlike NSI analysis.



>
>The problem that exists lies in the traditional divisions of commercial and
>noncommercial speech and trademark law.  Commercial interests on the Internet
>have claimed superior rights to basic dictionary words like PONY.   That
>creates a problem because all sorts of organizations, individuals and
>companies use and would like to use PONY in their titles and domain names.



Whether a word is a dictionary word is one of several factors in
determining whether a mark is Strong, and therefore can prevent a broad
range of uses.  APPLE is a dictionary word and is an exceptionally strong
mark that will be granted protection far beyond its actual use.  This is
not because APPLE is a big company that is greedy - it is because the
consumer will assume that Apple Computer is the source of, for example,
most of types of computer software and hardware under the mark APPLE -
regardless of whether Apple in fact sells that product.

In a normal litigation, the owners of the PONY mark would be subject to the
same test as anyone else.  I don't suggest that they get a break.


 
>
>The real world recognizes overlap without any need for the noncommercial
users
>to prove any "legal right" to the word other than that they liked it; the NSI
>Domain Name Dispute Policy did not.  We need to find a way to protect
>everyone's access to basic words, and a company's right to identify its goods
>and services in such a way that the can be reasonably distinguished on the
>Internet.  I, for one, do not believe this means giving McDonald's
Corporation
>the right to pre-empt the word McDonald in all categories of new TLDs,
>including personal ones.  An entire extended clan of people shares that word.
>For hamburgers -- yes, for everything else -- no. 

The law has been struggling with the proper scope of protection of marks
since there have marks.  McDonalds is a famous mark and poeple do expect
that the mark extends somewhat beyond hamburgers.  Simultaneously,
trademark laws around the world have long ago acknoweldged that the fact
that a word is a surname will weaken a mark and usually will not allow its
registration unless the owner has established that it has acquired
secondary meaning in the name as its mark - something which McDonalds can
certainly do as least as far as food services are concerned.

This is an example where trademark law has already resolved some of the
issues that confront the fair allocation and enforcement of domain names.






>
>The domain name of the Domain Name Rights Coalition is domain-name.org.  Our
>website is www.domain-name.org.  the fact that you reached Dogbert's New
>Ruling Class indicates that you were trying to use the URL as a directory
>service.  It is not robust enough to be one.  And that is a part of the
>problem.  When I go to the hardcopy White Pages or Yellow Pages, I do not
>start a lawsuit just because the first "Kleiman" or "Law Firm" I arrive it is
>not mine.  Rather, we assume redundancies of last names, descriptive words,
>common words and just about everything else and look for additional
>information such as city, street, first name, type of business,etc.  


I absolutely don't have any problem with our focusing our efforts on
technical efforts to create a DNS that allows PONY sportswear and PONY ball
bearings and William G. Pony and Commercio e Industria de PONY Ltda of
Brazil to utilize the Internet without confusing the public.  I don't think
that a single .com will do it, I'm skeptical that adding any number of
undifferentiated commercial sounding gTLDs will do it (.firm), I think that
personal TLDs are certainly needed (perhaps .nom was a good starting point
for discussion).  But I think we need specific proposals about new gTLDs to
determine how best to achieve this goal.

>
>The goal of my organization is simple:  to apply standard trademark law with
>all of its exceptions and defenses and limits to the Internet. That will keep
>all forms of speech protected until the time (soon, I hope) when good
>directories are wide-spread.
>



Bearing in mind that trademark law varies from country to country.






>Kathryn Kleiman
>General Counsel and Co-Founder, A-TCPIP/Domain Name Rights Coalition
>-------------------------
>previous exchange below
>-------------------------
>
><< 
> KathyrnKL@aol.com wrote:
> 
> "according to all studies conducting of the
> Internet, the vast majority of use is for noncommercial purposes -- email,
> chat rooms, research, education.  The vast majority of domain names are also
> for noncommercial purposes:  personal websites, political websites,
community
> organization websites, email, FTP sites, etc. In the real world, these
> noncommercial users of words do not have to preclear their use of any terms
>or
> titles with a central Trademark office anywhere. For such a requirement to
> exist in cyberspace would be a great burden on speech worldwide."
> 
> 
> Could you please provide citations to "all studies"  Maybe it is a
> semantical difference but if you look at the measure of activity - hits -
> it seems that the most popular sites - yahoo.com, the various search
> engines, cnn.com, amazon.com - are all commercial enterprises.  If you use
> altavista to do educational research, your personal use is educational but
> altavista's use of the domain name is very very commercial, and someone who
> adopts a mis-spelling of altavista (do a whois search of the names owned by
> Data Arts, which specializes in mis-spellings) would appear to be
> benefitting from DEC's goodwill in the ALTAVISTA mark and domain name.
> 
> While it is not readily apparent why harmonizing the DNS with trademark law
> is an unnecessary burden on speech - after all, in this discussion group
> you were not prevented from making political speech using the aol.com
> domain name - perhaps clearly labeled "personal" or "non-commercial" gTLDs
> that did not require pre-clearing, while commercial gTLDs would be subject
> to pre-clearing - would represent the accomodation of non-commercial use
> and the pre-existing trademark rights of the world's businesses?  If
> non-commercial use is in fact responsible for the vast majority of domain
> names, then the for-profit registries would back this proposal.  If their
> interest is in accomodating name speculators, then they might not.
> 
> P.S.  I wanted to access the domain names rights coalition web site at
> dnrc.org and instead got the Dogbert New Ruling Class web site.
>  >>
>
>