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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"?

Steve Hartman
Nabisco, Inc. 

> -----Original Message-----
> From:	Milton Mueller [SMTP:mueller@syr.edu]
> Sent:	Tuesday, December 14, 1999 5:14 PM
> To:	Hartman, Steve
> Cc:	wg-b@dnso.org
> Subject:	Re: [wg-b] Reality checks [the grateful dead(hits)]
> Kathy:
> Even you seem to have understated the significance of an exclusion,
> especially
> 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
> the
> > domain name holder to prove their innocence e.g,  not infringing or
> diluting.
> In fact, with exclusions, there is not even an opportunity to prove
> innocence.
> 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
> legitimate
> > 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],
> [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
> fact
> most cybersquatting --by about a 100 to 1 ratio -- involves [famousname]
> as a
> substring, misspelling, and so on. Exclusions, as one person (a trademark
> lawyer)
> pointed out on this list a long time ago, are  under-inclusive and
> over-inclusive
> 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
> fact
> 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
> with
> 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
> repeat
> this failure on a much larger scale?
> Confusion and dilution are subjective phenomena that pertain to the
> relationships
> between marks, human perception and goods and services. Character string
> matching
> cannot capture that, under any circumstances. To enact it on a global
> basis
> 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
> understand
> that when we talk about exclusions, we are talking about a mechanical
> string-matching algorithm, not about common-sense judgments based on how a
> string
> "looks" to a human. Therefore, let him propose such a mechanical algorithm
> for
> determining how the mark "oreo" should be protected. Remember, you are
> dealing
> with computers so it has to be based on rules, not on any individual
> judgments.
> 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"
> and
> the results will be totally different.
> So where does that leave us? do we come up with a new algorithm for every
> famous
> 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
> which
> to annoint certain marks with famosity. That's all this working group can
> do.