Domain Name Rights Coalition

Trademark Owners Can't Control Your Desktop: "

Decision in Internet Ads Case Protects Consumers

New York - The Second Circuit Court of Appeals issued a decision this week that promises to prevent trademark owners from asserting control over the computers of consumers who visit the trademark owners' websites. The case, 1-800 Contacts v. WhenU, questioned whether it was a trademark violation for Internet 'adware' company WhenU to provide users with software that gives them advertisements related to keywords found in their online searches. The Second Circuit found that the use of a trademark in software used to generate ads is not a 'use in commerce' under trademark law.

The Electronic Frontier Foundation (EFF) filed an amicus brief in the case with the assistance of Professor Eric Goldman of Marquette University Law School. In it, EFF argued that consumers should not be prohibited by trademark law from installing software that allows them, when typing '1-800-Contacts' into a search engine, to see information (including advertisements) from the company's competitors as well as from the company.

'A trademark owner is not entitled to control your desktop just because you happen to be visiting its website,' said Fred von Lohmann, EFF senior staff attorney. 'This decision is good news for consumers who want the freedom to install tools that help them customize their web-surfing.'

Online contact lens distributor 1-800 Contacts, Inc., won an initial preliminary injunction against WhenU.com, Inc., in October 2002, claiming that WhenU.com's SaveNow software confused potential customers by generating ads related to the words and web addresses users entered into online search engines and web browsers. WhenU.com appealed the lower court's ruling in December 2003, and the Second Circuit overturned the lower court's ruling.

Contacts:

Wendy Seltzer
Staff Attorney
Electronic Frontier Foundation
wendy@eff.org

Fred von Lohmann
Senior Intellectual Property Attorney
Electronic Frontier Foundation
fred@eff.org

(Via EFF: Press.)

Posted by mikki at 11:29 AM | Permalink

Rip, Mix, Burn: Grokster Sets 'Affirmative Steps To Induce' Standard: "

S Ct. reverses 9th Cir. 9 - 0, articulating an 'affiramtive steps to foster infringement' standard. Text of Grokster decision.

Important language:

. . . one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties. We are of course mindful of the need to keep from trenching on regular commerce or discouraging the development of technolgoies with lawful or unalwful potential. Accordingly, just as Sony did not find intentional inducement despite the knowledge of the VCR manufacturer that its device could be used to infringe . . . mere knowledge of infringing pontential or of actual infringing uses would not be enough here to subject a distributor to liability. Nor would ordinary acts incident to product distribution, such as offerring customers technical support or product updates, support liability in themselves. The inducement rule, instead, premises liability on purposeful, culpable epxression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise.

(Via The Trademark Blog.)

Posted by mikki at 12:18 PM | Permalink

Domain Name Dispute Puts Dot-Ca in the Spotlight: "My weekly Law Bytes column (freely available hyperlinked version, Toronto Star version) focuses on the recent Canadian parliamentary discussion on domain name disputes. As discussed about ten days ago, the impetus for governmental interest in domain name disputes and Internet governance is the registration of several..."

(Via CircleID.)

Posted by mikki at 07:06 AM | Permalink

But why are there NO provisions to protect small businesses and/or speech interests in new gTLDs? Why indeed.

New domains must protect trade marks, says WIPO | The Register: "A uniform intellectual property protection mechanism should be established to protect trade marks whenever new generic top-level domains (gTLDs) are introduced, according to the World Intellectual Property Organisation (WIPO). The recommendation has been made in a report submitted to ICANN, the body that manages the internet’s domain name system, which asked WIPO for expert advice on IP issues involved in the introduction of gTLDs last year."

(Via The Register.)

Posted by mikki at 03:59 PM | Permalink | Comments (0)

WIPO Recommends Uniform Registration for New gTLDs: "The World Intellectual Property Organization (WIPO) has recommended the introduction of a uniform intellectual property (IP) protection mechanism designed to further curb unauthorized registration of domain names in all new generic Top-Level Domains (gTLDs). The report, 'New Generic Top-Level Domains: Intellectual Property Considerations', which is available at WIPO Arbitration and Mediation Center, says that such a preventive mechanism would complement the curative relief provided..."

(Via CircleID.)

Posted by mikki at 03:44 PM | Permalink

.XXX: "

ICANN approves new top level domains (TLDs) for the internet at a rate that makes glaciers seem fast. So when ICANN does approve one it is a big deal.

ICANN's most recent contribution to the internet is: .XXX - a top level domain for pornography.

Wow.

Is this progress? Is this a contribution to human values? Isn't the internet already enough of a sewer and a home for the worst that humanity has to offer? Do we have to honor that kind of depravity with an official home? Why should .xxx get precedence over schools, churches, civic groups, aboriginal communities, labor organizations, and artistic groups?

Why .xxx when there were, and remain, so many other people who had so many better ideas that actually would contribute to the value of the internet? But in year 2000 ICANN took $2,000,000 from them and stabbed them in the back. And then ICANN threw them into the limbo of ICANN's never-approved but never-denied purgatory. And for what? For .xxx?!

.xxx is a tribute the lack of vision and the complete idiocy of ICANN's approach to the internet's domain name system, .xxx is a tribute to ICANN's ex-president and to several of ICANN's vision-less past and still present board members. To them we owe .xxx.

Justice Potter Stewart, of the US Supreme Court, wrote in 1964 - 'I shall not today attempt further to define the kinds of material I understand to be embraced [as hard-core pornography]. . . [b]ut I know it when I see it . . .' (Jacobellis v. Ohio, 378 U.S. 184, 197 (1964))

If a Supreme Court justice couldn't define pornography then one can only wonder how ICANN, a body never noted for legal, or any other form, of inventiveness will do it in the contract with the company it selected to run .xxx.

ICANN's policy on TLDs is bankrupt. The internet can support millions of top level domains. So even an extremely conservative approach that granted one TLD per week - 52 new TLDs per year - wouldn't even begin to bother domain name technology for about 20,000 years. If ICANN were to allow this, then perhaps we could then make room for a .xxx.

But instead ICANN has created an artificial scarcity of top level domains. And it is insulting to the community of internet users when ICANN hands one of those few resources to a group that intends to use it to to promote the worst that humanity has to offer.

To this I say - let ICANN change its own name from ICANN.org to ICANN.xxx. The pornography is the ICANN policy that led to .xxx while denying so many more worthy uses.

(Via CaveBear Blog.)

Posted by mikki at 03:41 PM | Permalink | Comments (0)

Yet another important Domain Name as Speech case is playing itself out in Richmond, VA. We are, of course, hoping that the 4th US Circuit Court of Appeals overturns the previous ruling. Again, this is a case of criticism that should be allowed to stand as such, and its non commercial status should be ruled as completely outside of trademark law.

Trademark law was carved out of the First Amendment to protect the CONSUMER (not the maker of a product or holder of a trademark) from confusion as to the source of a product or service. Few consumers could possibly be stupid enough to figure that a criticism site was written by the target of the criticism.

USATODAY.com - Court hears Falwell Web domain arguments: " RICHMOND, Va. — A Web site critical of the Rev. Jerry Falwell's views on gays contains constitutionally protected, noncommercial speech and should be allowed to keep its name — a common misspelling for the conservative evangelist, a lawyer for the site owner argued Thursday. Christopher Lamparello of New York City, who operates fallwell.com, took his case to the 4th U.S. Circuit Court of Appeals seeking to reverse a federal judge's ruling that he violated federal trademark law. A lawyer for Falwell maintained Lamparello's use of a variation of the preacher's name bordered on theft. "It's been wrong to steal since Moses came down from the mountain," attorney John H. Midlen Jr. said.

(Via USA Today.)

Posted by mikki at 10:21 AM | Permalink | Comments (0)

CDT Opposes "Write Your Own Subpoena" Power for FBI: "CDT will testify Tuesday, May 24, before the Senate Intelligence Committee in opposition to a proposal to expand the PATRIOT Act by granting the FBI power to issue so-called 'administrative subpoenas,' which would allow the FBI to demand disclosure of records without judicial approval. CDT will urge the Committee to focus on adding checks and balances to the PATRIOT Act rather than creating new, unchecked powers. CDT's analysis shows that administrative subpoena power for the FBI is unprecedented."

(Via Center for Democracy and Technology.)

Posted by mikki at 09:03 AM | Permalink | Comments (0)