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Re: [wg-b] Noncommercial protections for words

ok, under existing law such as the jewsforjesus, plannedparenthood.com and
papalvisit.com cases, free speech was not a defense against a DN which
consists of the trademark without more, nor were those uses found to be
non-commercial.  As Peter Weiss stated, bye-bye-aol.com is different from

You seem to suggest that an exclusion for [example] shouldn't automatically
block [example]loversClub.com, but it is not clear as to why example.com
shouldn't be excluded if [example] is deemed to be a famous mark for our
purposes.  It seems that an exact exclusion of a famous mark would be
within exisitng law.

You also suggest that PONY, CAMPBELL and BELL may not be famous marks for
this list's purposes, but that is a separate discussion as to what is a
famous mark.

At 01:42 PM 11/30/99 EST, you wrote:
>[discussion stream retitled from [wg-b] US Statutorily Protected Marks
>The question that you raise is, I believe, the central issue of what we are 
>working on.  I also believe you are fatally wrong in your analysis -- and 
>that in the error lies a true problem for free speech (US) and open 
>communication (a protected right under the United Nations' Universal 
>Declaration of Human Rights and the European Human Rights Convention).  
>As one example, Article 19 of the Univ. Declaration of Human Rights
>     "Everyone has the right to freedom of opinion and expression; this
>      freedom to hold opinions without interference and to seek, receive and 
>      information and ideas through any media and regardless of frontiers."  
>That includes webpages; that includes the domain names under which people 
>will find those webpages.
>[My comments continue underneath Mike's message excerpt below]
>On Nov 26, mpalage@infonetworks.com wrote:
>>  I am a little confused by your comments Kathryn.  Although I 100% agree 
>> with
>>  you that it is our task to "reflect law" and "not make it", I do not know
>>  where the distinction between commercial and non-commercial exists. I
>>  believe our mandate is to protect famous marks - period, no distinction
>>  between famous or commercial. I could be wrong. If you could provide me
>>  basis for your position I would greatly appreciate it.
>The distinction between commercial "marks" (trademarks and service marks)
>"non-commercial" uses of words is the essence of trademark law.   Trademark 
>is not an exclusive right (like, say, a patent), it is a limited right to
>a word to protect a specific category of goods and services.  It is not a 
>mandate to create a "monopoly" over words -- or to take them out of the 
>The trademark statute and its definitions speaks on this clearly:
>Definition of Trademark:
>15 USC (United States Code) Sec. 1127:  ""The term ''trademark'' includes
>word, name, symbol, or device, or any combination thereof - 
>(1) used by a person, or 
>(2) which a person has a bona fide intention to use in commerce 
>and applies to register on the principal register established by 
>this chapter, to identify and distinguish his or her goods, including a 
>unique product, from those manufactured or sold by others and to indicate
>source of the goods, even if that source is unknown."
>==>  a trademark is a right to identify commercial goods and services
>15 USC 1114 (edited -- full version at 
>(1) Any person who shall, without the consent of the registrant - 
>(a) use ** in commerce ** any reproduction, counterfeit, copy, or 
>colorable imitation of a registered mark ** in connection with the 
>sale, offering for sale, distribution, or advertising of any 
>goods or services **  on or in connection with which such use is 
>likely to cause confusion, or to cause mistake, or to deceive; or 
>shall be liable in a civil action by the registrant for the remedies 
>hereinafter provided. 
>==>  Infringement requires a "use in commerce" in "connection with sale" or 
>other form of commercial offering of products or services. 
>Now, the big one, dilution of a famous mark:
>15 USC 1125 
>(c) Remedies for dilution of famous marks 
>(1) The owner of a famous mark shall be entitled, subject to the principles 
>of equity and upon such terms as the court deems reasonable, to an
>against another person's **commercial use ** ** in commerce of a mark ** or 
>trade name, if such use begins after the mark has become famous and causes 
>dilution of the distinctive quality of the mark, and to obtain such other 
>relief as is provided in this subsection. 
>Further, same section 15 USC 1125
>"(4) The following shall not be actionable under this section: 
>(A) Fair use of a famous mark by another person in comparative 
>commercial advertising or promotion to identify the competing 
>goods or services of the owner of the famous mark. 
>(B) ** Noncommercial use of a mark. **
>(C) All forms of news reporting and news commentary. "
>===>  even famous marks can only be used to prosecute commercial uses, and 
>further, there are clear protections, limits and exemptions for
>speech and other forms of open communication to prevent abuses.
>Mike, as shown above the distinction between commercial and noncommercial is 
>built into every level of the trademark code, and is a distinction
>at the level of international treaties.  Merely because a company which 
>becomes large chooses to use an ordinary word like PONY, or BELL or CAMPBELL 
>does not take that word out of the language.  
>Even famous mark protections (and I have not even raised the tremendous 
>hurdles necessary to prove to a court that you have a famous mark -- and the 
>many billion dollar companies now being surprised when US federal courts
>that they don't)  cannot under current law be used to block others from
>these words for noncommercial purposes, **even in domain names** such as the 
>Pony Lover's Clubs, Bells at Christmas time and the Campbell Clan Reunion.  
>I am glad you raised the issue so we could discuss it.  If we don't 
>differentiate between commercial vs. noncommercial use and limits of 
>commercial protection -- at each of the current and future phases of work on 
>this WG--  then (going back to my original message and your comment) we will 
>be making new law, not reflecting existing law and we will not be protecting 
>the Internet as a communications medium for everyone. 
>kathy kleiman 

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