RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com Deci sion

[richard.hill@itu.int]

Michael,

Your comments make sense to me.

Re 1, I presume that the Spanish court would have jurisdiction over a US
firm if the US firm markets in Spain to residents of Spain?  Which then
raises another complicated question: "When can it be deemed that an Internet
site is marketing to the citizens of country X?"  That is, what sorts (if
any) of country-specific actions are required?

Best,
Richard


> -----Original Message-----
> From: Michael Froomkin - U.Miami School of Law
> [mailto:froomkin@law.miami.edu]
> Sent: Tuesday, 03 June 2003 14:24
> To: richard.hill@itu.int
> Cc: john@johnberryhill.com; ga@dnso.org
> Subject: RE: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> Deci sion
> 
> 
> Well, only a little complicated, maybe?  trademark is territorial and
> always has been.  The Spanish court
> 
> 1. might not have personal jurisdiction over a US firm marketing to US
> clients
> 
> 2. even if it did, wisely might not exercise it under forum 
> non conveniens
> 
> 3. even if exercised jurisidiction, would rule about the use 
> of the name
> *in spain*
> 
> 4. injunctive relief would risk hitting the first amendment (cf. Yahoo
> case....); damages would fall under well established principles of
> enforcement.
> 
> 5.  Note, however, that any claim in Spain would be a traditional
> infringement claim -- NOT a claim for ownership of the domain 
> name.  And
> that's exactly as it should be.
> 
> On Tue, 3 Jun 2003 richard.hill@itu.int wrote:
> 
> > Under US law, says the US court.
> > 
> > But what about Spanish law?  Not applicable in US court, 
> because of ACPA and
> > the general principle of territoriality of trademark law, 
> says the US court.
> > 
> > However, I suppose, the City Council of Barcelona could 
> bring an action in
> > Spanish courts, under Spanish law, if it felt that the 
> activities exercised
> > under the disputed domain name were violating Spanish law in Spain.
> > 
> > If such an action suceeded in Spain, then the question of 
> whether or not the
> > Spanish court's decision could be enforced in the US is probably a
> > complicated question.
> > 
> > Best,
> > Richard Hill
> > 
> > 
> > 
> > > -----Original Message-----
> > > From: John Berryhill Ph.D. J.D. [mailto:john@johnberryhill.com]
> > > Sent: Monday, 02 June 2003 22:43
> > > To: [GA]
> > > Subject: [ga] 4th Circuit Court of Appeals Reverses Barcelona.com
> > > Decision
> > > 
> > > 
> > > 
> > > As if anyone needed to know, "Barcelona" is not a trademark 
> > > of the City of
> > > Barcelona:
> > > 
> > > http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf
> > > 
> > > 
> > > It looks like an update will be needed here to avoid false 
> > > advertising:
> > > http://www.oblon.com/barcelona/
> > > 
> > > 
> > > 
> > > 
> > > 
> > > 
> > > --
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> 
> -- 
> 		Please visit http://www.icannwatch.org
> A. Michael Froomkin   |    Professor of Law    |   froomkin@law.tm
> U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
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