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RE: [wg-b] Reality checks [the grateful dead(hits)]
Is it your position that (1) the principle that famous marks (and their
non-material variants) should be excluded is sound; but (2) the problem is
with creating an algorithm that "fits"?
> -----Original Message-----
> From: Milton Mueller [SMTP:firstname.lastname@example.org]
> Sent: Tuesday, December 14, 1999 5:14 PM
> To: Hartman, Steve
> Cc: email@example.com
> Subject: Re: [wg-b] Reality checks [the grateful dead(hits)]
> Even you seem to have understated the significance of an exclusion,
> when it involves substrings. Consider:
> KathrynKL@aol.com wrote:
> > you would like the trademark owner to show
> > only that someone is using "their word" and leave the burden of proof to
> > domain name holder to prove their innocence e.g, not infringing or
> In fact, with exclusions, there is not even an opportunity to prove
> The domain name just isn't there.
> > in commercial settings. Needless to say, it creates tremendous
> problems for
> > free speech by making someone the monitor upfront for what is a
> > communicative message using the word "oreo" or "porsche" in it.
> No one monitors anything with exclusions. Someone has to devise -- in
> advance --
> an entirely mechanical algorithm that determines what can be registered
> and what
> can't be. For example, [name] + s.[tld], common misspellings of [name],
> with the number 1, 2 or 3 after it, and so on.
> This is why the whole idea of exclusions is bad. The only feasible case
> that can
> be made for them is when they exclude only [famousname].[anytld]. But in
> most cybersquatting --by about a 100 to 1 ratio -- involves [famousname]
> as a
> substring, misspelling, and so on. Exclusions, as one person (a trademark
> pointed out on this list a long time ago, are under-inclusive and
> at the same time. Any mechanical algorithm is bound to include *many*
> names that
> should be legal, but it will also fail to exclude many names that could in
> be confusing if used in certain ways.
> The basic fallacy here is the idea that trademark protection can be
> reduced to a
> computer program that matches character strings. It can't. We learned this
> four years of experience with the NSI drp. It was unfair to many innocent
> registrants and unsatisfying to the trademark owners. Why are we trying to
> this failure on a much larger scale?
> Confusion and dilution are subjective phenomena that pertain to the
> between marks, human perception and goods and services. Character string
> cannot capture that, under any circumstances. To enact it on a global
> across all TLDs is nothing short of a crime -- against trademark concepts
> as well
> as freedom of expression.
> An experiment.
> I may be wrong, but I think Mr. Hartman of Nabisco doesn't yet fully
> that when we talk about exclusions, we are talking about a mechanical
> string-matching algorithm, not about common-sense judgments based on how a
> "looks" to a human. Therefore, let him propose such a mechanical algorithm
> determining how the mark "oreo" should be protected. Remember, you are
> with computers so it has to be based on rules, not on any individual
> If he does this, it will be easy to come up with hundreds of examples of
> overinclusion, and probably just as many examples of uses that could still
> infringe. But that is only half of the problem. The other half is that the
> set of
> algorithms he would come up with for protecting "oreo" would almost
> certainly not
> work with any other mark. Try to apply the same rules to "exxon" or "ford"
> the results will be totally different.
> So where does that leave us? do we come up with a new algorithm for every
> mark? That puts us right back where we ought to remain -- which is, at a
> case-specific evaluation under the UDRP.
> The existence of a .fame TLD helps this process by giving WIPO an arena in
> to annoint certain marks with famosity. That's all this working group can