Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy
There are at least 2 faulty assumptions in your statement. You assume that all tlds will be businesses, but surely nonprofits will want to apply for tlds and there are countless other non-commercial possibilities. A consumer watch-dog group that monitors irresponsible corporate behavior may want to register a tld such as ".enron" to provide the public with information about Enron, Inc. The NGO would not violate any trademark rules as the case law makes clear since people have a free expression right to use a trademark to discuss a company or its products.
The other faulty assumption is that the law would treat a top-level domain differently from other domains and grant a lower level of protection for free expression at the top-level. There is no legal precedent to support that argument.
Robin Mike Rodenbaugh wrote:
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 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: Robin Gross [mailto:robin@xxxxxxxxxxxxx] Sent: Monday, June 04, 2007 4:08 PMTo: 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 thatthere 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 bythe 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 hisspeech is not commercially misleading, the Lanham Act cannot be summonedto prevent it." Taubman explicitly held there First Amendment protection to use a trademark in a domain name to criticize a business.gripe-site using a trademark in its domain name. Again the court agreedthat 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 noncommercialspeech 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.pdfSo 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 areamplenumbers of 2d and higher lever domains that can be used for freedom of expression, with exponentially more to come. NCUC seems to suggestthatsome prospective TLD operator would want to run an entire TLD full of gripe sites as to one trademark. Such a business would not beprotectedunder the guise of 'freedom of expression' under any nation's law thatIam 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 policyNCUC 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 lengthandwill try to answer any questions you may have on them. Thank you for considering them. Best, Robin