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Re[2]: [wg-b] Famous Trademarks

Dennis: I have already complimented you in an earlier e-mail on your insistence that domain names are not trademarks, with which I agree. On the other hand, speaking as a Vice President and cooperating attorney of the Center for Constitutional Rights and a staunch defender of the First Amendment, I cannot agree with you that every domain name constitutes per se protected speech. Alexander Meiklejohn, one of our great First Amendments scholars, once explained to me why shouting fire in a crowded theater is not protected while calling for revolution should be. The First Amendment, he said, is intended to provide absolute protection for the democratic dialogue, in which all citizens have a right and duty to participate. The theater thing has nothing to do with that, the revolution thing has everything to do with it. Similarly for domain names. To the extent that they are purely commercial speech, they may be prohibited if they constitute unfairly competive or fraudulent speech. To the extent that they say something about governance, they should be protected. Isn't that pretty much the position that courts everywhere, including the US, have taken so far, even if not in those precise terms?

______________________________ Reply Separator _________________________________
Subject: Re: [wg-b] Famous Trademarks
Author:  d3nnis@mciworld.com at INTERNET
Date:    9/24/99 6:23 PM

Peter -- this is fascinating and informative.  Thank you.

Here is my problem with 'any' form of exclusion.   A domain name is not a trademark in law.
Creating an exclusion for famous marks contained in domain names thereby freezes a
form of constitutionally-protected speech

If the world wants to make domain names trademarks, then the Paris Convention and TRIPS
should be modified.  I as a US citizen do not want to be required to waive a constitutional
right as a condition of speaking on the Internet.

It isn't just that I'm a cranky constitutionalist.  I confess!  I think this is also just  bad policy.  Eventually
a US court is going to wipe such an exclusion out on any number of First Amendment grounds,
and their decision is going to cite the the reasoning of the WIPO group, and maybe even
this working group.  This is a potential problem for ICANN's reputation.

I'm sure you disagree, and I will be most interested in hearing what will be an articulate and
thought-provoking  reply.

>Dennis Schaefer

> As my first contribution to this stimulating debate, let me say that defining
> what constitutes a famous trademark is neither the easiest nor the most
> difficult task in the world. I believe with Fred Mostert that "a common set of
> principles, in effect a ius gentium, has developed around famous and
> well-known marks, which can serve as a basis for a harmonized global approach
> in conformity
> with the needs of contemporary commerce." Anyone wanting to know what that

> common set of principles is needs only to do a quick run through the 700 pages
> of Fred's encyclopaedic work. (Mostert, Famous and Well-Known Marks,
> Butterworths, 1997).
> I am not particularly intrigued by the difference between famous and
> well-known marks or, for that matter, marks of high repute, but I suggest
> that, for our purposes, we might look at a fourth category, i.e. absolutely
> unique famous marks (AUFMs). Here's a quick and totally non-exhaustive list:
> TEXACO, THENEWYORKTIMES. All of you will instantly have recognized what these
> marks have
> in common: The fact that no one could possible have a valid good faith claim
> against any of them. Oh sure, somebody could legitimately claim COLA or
> (a woman's surname and a town in Uruguay) or PERRIER (a different product),
> exclusionary policy does not seem to me to be either unfair or unworkable with
> respect to AUFMs. Individual Registrars, of course, should not be saddled with
> the problem of deciding what is and what isn't an AUFM; that could be done by
> a group of experts appointed by WIPO, who shouldn't have to spend more than a
> day and half coming up with a preliminary list, including one reception and
> two lunches.
> This, of course, does not mean that other famous marks which lack the quality
> of
> absolute uniqueness should not be entitled to protection. We all know about
> MCDONALDS, TIME, FORD, WARNER, MOBIL and other famous marks with multiple
> meanings. Those, I would suggest, should benefit from UDR, notification and
> whatever else we or the ultimate decision makers may come up with. In the
> meantime, the lives of present and future Registrars could be made a little
> easier by the adoption of an AUFM approach.
> Do I have any thoughts on how to reach consensus? Not today, thank you. That's
> a
> really difficult problem. Peter Weiss
> ______________________________ Reply Separator
> _________________________________
> Subject: [wg-b] Famous Trademarks Author:  mpalage@infonetworks.com at
> Date:    9/24/99 2:40 PM
> I will be the first to admit that defining what constitutes a famous
> trademark is not an easy task. But I do not believe that it is impossible.
> I encourage people to look at Section 1205 of the Trademark Manual of
> Examining Procedure -Refusal on Basis of Matter Protected by Statute or
> Convention (available at http://www.uspto.gov). This sections contains a
> list of marks that have been protected under US Federal Statutes and those
> already the subject of international agreements in force, (e.g., "Red Cross"
> and emblems protected by the Geneva Convention of August 12, 1949).
> In addition, the Japanese government has recently enacted legislation
> recognizing "famous marks." If you go to the Japanese web site they provide
> a web enabled search engine to look through all 700+ famous trademarks. Yes
> I was surprised that there were this many famous marks in Japan. And yes
> there were several marks in the first few that I paged through that I did
> not recognize. But then again I have only been to Japan once.
> I just thought that this was some additional useful information to be
> considered by all participants involved.
> Has anyone been able to follow up with the Brazilian NIC concerning their
> policy on protecting famous marks. I believe the information provided by
> Judith on the 800 number was beneficial, and I would like to continue the
> investigative process to make sure that we leave no stone unturned.
> Thanks again,
> Mike