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RE: [wg-b] Re: Nature of answer to question B

You are obviously not aware that Jay folded up the Iperdome tent and went
home. PER is no longer a player.

> -----Original Message-----
> martys@interport.net
> Sent: Saturday, October 23, 1999 3:16 PM
> A corner case with at least three sides.

You noticed <grin>.

> First, there isn't complete sovereign immunity for government
> actors in IP
> cases, but that's not the most important aspect to your hypo.

It is and it isn't. However, where does the sovriegn immunity stop? My
impression was that it is absolute. Have you heard of the wackenhut (sp?)
case? DOJ commissioned some software then defaulted on the payment, claiming
it didn't meet requirements. Then DOJ turned around and started selling that
same defective software to other courts around the country. Since it wasn't
paid for, it isn't work-for-hire and the original company still owned the
copyrights, except for the fact that DOJ is a branch of the USG and claimed
soveriegn immunity (This was late '80's ... early 90's). The company (whose
name I forget, sorry ...  senility's a bitch) proceeded to sue the DOJ on
ground of contract breach and theft of IP (if the software was that bad then
why was DOJ selling it?). They lost both the breach-of-contract suit and the
IP theft. DOJ basically stole the software and put that company out of
business. Wackenhut Corp was involved ... I forget how. I just remember the
main lesson ... don't sign development contracts with USG agencies,
especially ones run by lawyers. The second-tier lesson was the one about
sovriegn immunity. (It was the third lesson in contract law that the USG
taught me; the first one was my enlistment contract with the US Army; The
second, was when Congress canceled the GI Bill, in 1980, I was in my third
year of school).

> Second, as I understand your question, you are discussing
> EBAY as a TLD suffix, not as a SLD.  So you get into the whole "can a TLD
> suffix function as a Trademark - can a TLD suffix infringe a trademark"
> morass most recently discussed on the GA list.  my advice is to let IOD
> and CORE and .PER develop the law for us on that point (although it seems
> that there cannot be a third party .kodak.

Does it matter that EBAY is a TLD? I don't think so, as long as they aren't
EBAY.COM. They could be EBAY.NET, but the TLD scenario is more interesting.
It is also more likely, given that my case included county governments and
supposing that there was a root-registry, as per my WG-C proposal.

> Third, you picked EBAY as an example which, it can be argued,
> is on its way
> to becoming, to use Peter Weiss' term, an AUFM, or Absolutely
> Unique Famous
> Mark, a mark so inehrently distinctive that use in virtually
> any context
> invokes an association with the trademark owner.  If you are aware of
> third-party use of EBAY now, I would be interested in hearing
> of it (and EBAY's lawyers would be more interested).

Off-hand, I don't, but I'll look around. There are plenty of "East Bay <so
and so>" companies here. What about an E-BAY? Actually, I only picked on
them becasue it was used in the prior example. But since you mentioned it,
the example has more interest.

> Lastly, you refer to chartering.  I would be prepared to
> suggest to this
> list that we formulate a question and then vote on a "agree/disagree"
> manner that:
> "The need for trademark protection mechanisms in general and famous
> trademark protection in particular varies inversely with the degree of
> charter requirements of the TLD and the distinctive nature of the TLD
> suffix itself."
> In other words - .sux (where it is understood that [mark].sux
> is not owned
> by the TM owner, and .anon - are less in need of special famous mark
> protection mechanisms than .firm (where there is no chartering).
> Similarly, a TLD named .gmbh where the register required that the
> registrant was a gmbh with that name, would rarely create
> naming conflicts.

Now we get to the heart of the matter. You are saying that the whole
conflict issue is context-dependent. I agree. I don't think that any of us
will disagree with the view that only a case-by-case analysis will be
sufficiently fair. If each proposed TLD/SLD/3LD/nLD had to go through  the
research required by some of the proposals here then all the registries
might as well close their doors right now, because it is definitely too

Is this what you intend to say?

> >Hello Martin,
> >
> >What if the counties of "Contra Costa" and "Alameda" wanted
> to start a TLD
> >registry with the EBAY TLD? Chartered, according to my WG-C
> proposal, to
> >register organizations headquartered in the East SF Bay
> Area? Is that an
> >infringement? Further, even if it was, would it be
> actionable under US law?
> >I believe that copyrights, patents, and other marks, are not
> binding for
> >governmental entities (USG can violate copyright/patent
> anytime it wants to,
> >with impunity)?
> >
> >I realize that this may be a corner case, but it's not that
> unlikely a
> >corner.
> >
> >> -----Original Message-----
> >> From: owner-wg-b@dnso.org [mailto:owner-wg-b@dnso.org]On Behalf Of
> >> Martin B. Schwimmer
> >> Sent: Friday, October 22, 1999 12:38 PM
> >> To: wg-b@dnso.org
> >> Subject: [wg-b] Re: Nature of answer to question B
> >>
> >>
> >> >- All suggested mechanisms that ICANN could implement to
> >> protect famous marks
> >> >   are either ineffective or harmful to the development of
> >> commercial and
> >> >   non-commercial use of the Internet
> >>
> >>
> >> Why would the exclusion of third-party registration of
> >> kodak.firm from the
> >> .firm TLD be ineffective in protecting the KODAK mark?
> >>
> >> Why would the prohibition of third-party registration of
> ebay.firm be
> >> harmful to the development of commercial use of the Internet?
> >>  It seems as
> >> if the ability of the consumer to trust the fact that ebay.firm or
> >> kodak.biz were associated with the owners of those famous
> >> trademarks would
> >> aid, not hinder commercial use of the Internet.
> >>
> >> >- UDRP will significantly reduce the cost to the "famous
> >> mark" holders of
> >> >   protecting their marks against clear cases of cyberpiracy
> >> compared to
> >> >   the curent situation
> >>
> >> Is your goal to increase the cost?
> >>
> >> >- A few more years of discussion in non-Internet fora about
> >> how to decide
> >> >   what marks are internationally famous or not is likely
> to lead to
> >> >   conclusions, and ICANN should not attempt to guess at
> >> these conclusions
> >> >   at the present time; doing so might even harm, delay
> or bias the
> >> >   non-Internet process for reaching conclusions in this matter.
> >>
> >> Red herring.
> >>
> >>
> >>
> >>
> >>
> >>
> >>
> >>
> >> @ @ @ @ @ @ @ @ @
> >>