RE: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy

["Mike Rodenbaugh" <mxr@xxxxxxxxxxxxx>]

None of those cases are on point, all involve 2d or higher-level
domains.  I do not dispute that there are many non-commercial uses of
trademarks that are legit.  On the other hand, operating a TLD that
corresponds to a well-known trademark, without consent of trademark
holder, would be an inherently commercial activity likely to cause
confusion and enable criminal conduct.  Such commercial activity would
not be protected by any of the precedents you cite, or any other
principal of law that I am aware of.

Mike Rodenbaugh

Sr. Legal Director

Yahoo! Inc.

 

NOTICE:  This communication is confidential and may be protected by
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-----Original Message-----
From: Robin Gross [mailto:robin@xxxxxxxxxxxxx] 
Sent: Monday, June 04, 2007 4:08 PM
To: Mike Rodenbaugh
Cc: gtld-council@xxxxxxxxxxxxxx; gnso-rn-wg@xxxxxxxxx
Subject: Re: [gtld-council] NCUC proposals to amend gnso recommendations
on new gtld policy

Hi Mike,

Well US courts have consistently disagreed with your view and ruled that

there are numerous lawful uses of a trademark in a domain name by 
someone other than a trademark holder.  Trademark law has never granted 
a monopoly on language.  It only regulates specific uses of words or 
symbols, and only commercial uses.  Non-commercial expression is not 
regulated by trademark rules under the law.

One of the most cited US legal precedents to examine the boundary of 
free expression rights and trademark rights is Taubman v. Webfeats 319 
F.3d 770 (6th Circuit 2003), an early "cyber-gripe case".   The court 
explained, "we will first explain the interrelation between the First 
Amendment and the Lanham Act. ... The Lanham Act is constitutional 
because it only regulates commercial speech, which is entitled to 
reduced protections under the First Amendment."   In Taubman the 
appellate court held that many expressions of a mark were not a 
'trademark use' and not likely to cause confusion and  therefore 
"outside the jurisdiction of the Lanham Act and necessarily protected by

the First Amendment." 

The 6th Circuit spoke directly to our issue, "The rooftops of our past 
have evolved into the Internet domain names of our present.  We find 
that the domain name is a type of public expression, no different in 
scope than a billboard or a pulpit, and [defendant] has a First 
Amendment right to express his opinion about [plaintiff], as long as his

speech is not commercially misleading, the Lanham Act cannot be summoned

to prevent it."  Taubman explicitly held there First Amendment 
protection to use a trademark in a domain name to criticize a business.

See:
  http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06

Another US circuit, the 9th, has also set similar precedent in Bosley 
Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005) over a non-commercial

gripe-site using a trademark in its domain name.  Again the court agreed

that the non-commercial expression of opinion was not a "trademark use" 
subject to regulation by the mark holder. "[Defendant] is not 
[plaintiff's] competitor; he is their critic.  His use of [plaintiff's] 
mark is not in connection with a sale of goods or service - it is in 
connection with the expression of his opinion about [plaintiff's] goods 
and services.  [Plaintiff] cannot use the Lanham Act either as a shield 
from ... criticism, or as a sword to shut [defendant] up."
See:
 
http://www.ca9.uscourts.gov/ca9/newopinions.nsf/3B0C93358B88F28D88256FD9
0056994B/$file/0455962.pdf?openelement

The US 2nd Circuit has also provided strong protection for noncommercial

speech and recognized that words and phrases are used in many different 
ways in a digital environment, to serve differing goals, and that not 
all of these uses are controlled by trademark law.  In 1-800 Contacts v.

WhenU.com 414 F3d 400 (2d Cir. 2005), the 2nd Circuit ruled that the 
vast majority of such uses were outside the scope of trademark law and 
only those specific uses visually associated with the sale of 
goods/services could be regulated by trademark. 
See:
www.eff.org/legal/cases/1800*contacts*_v_whenu/decision.pdf
 
So the US law is clear in permitting numerous non-commercial uses of a 
trademark in a domain name, to discuss, criticize, compare, provide 
general information about a company or  product.  Freedom of expression 
is a legally recognized value that trademark rights do not supersede.   
The current gnso draft recommendations diverge significantly from the 
law on this point.

Robin

Mike Rodenbaugh wrote:

>I disagree with the NCUC's suggested change to Reco #3.  There are
ample
>numbers of 2d and higher lever domains that can be used for freedom of
>expression, with exponentially more to come.  NCUC seems to suggest
that
>some prospective TLD operator would want to run an entire TLD full of
>gripe sites as to one trademark.  Such a business would not be
protected
>under the guise of 'freedom of expression' under any nation's law that
I
>am aware of.  
>
>The current Reco is tied to a core ICANN value of protecting security
>and stability.  If a TLD corresponding to a well-known trademark were
>awarded to any entity other than the trademark owner, it is highly
>likely that many users would be confused and placed at higher risk of
>crime through activity at that TLD.  This is the same security and
>stability concern that underlies the UDRP, as to 2d level and higher
>domains.
>
>
>Mike Rodenbaugh
>
>Sr. Legal Director
>
>Yahoo! Inc.
>
> 
>
>NOTICE:  This communication is confidential and may be protected by
>attorney-client and/or work product privilege.  If you are not the
>intended recipient, please notify me by reply, and delete this
>communication and any attachments.
>
>
>-----Original Message-----
>From: owner-gtld-council@xxxxxxxxxxxxxx
>[mailto:owner-gtld-council@xxxxxxxxxxxxxx] On Behalf Of Robin Gross
>Sent: Saturday, June 02, 2007 10:23 AM
>To: gtld-council@xxxxxxxxxxxxxx
>Subject: [gtld-council] NCUC proposals to amend gnso recommendations on
>new gtld policy
>
>NCUC has developed 5 new proposals to amend the draft gnso 
>recommendations on new gtld policy.  
>
>These proposals are meant to give some recognition to freedom of 
>expression values in our recommendations.  The proposals also address 
>concerns about ICANN becoming enmeshed in national policy debates and 
>would keep the Internet core neutral of such conflicts. 
>
>The 5 proposals are not meant to be accepted only as a package, but 
>should be considered individually also.
>
>NCUC proposals to amend draft GNSO recommendations:
>  http://www.ipjustice.org/ICANN/062007.html
>
>I welcome an opportunity to discuss the amendments at greater length
and
>
>will try to answer any questions you may have on them.
>
>Thank you for considering them.
>
>Best,
>Robin
>
>
>
>  
>