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[wg-b] Having no opinion is better than having one
Here is yet another instance of trademark vs. URL that illustrates how the
little guy is getting smacked around by the big guy when no malice or
abusive behavior is intended whatsoever. And while I realize that many of
you in the legal and corporate community will roll your eyes at this, I
feel it's important to reiterate the following:
I think we will all benefit in the end by revisiting our thinking now on
trying to help trademark holders gain access to URLs all in the name of
propriety. It's my opinion that in trying to "define" trademarks and famous
names, we should construct language to reflect the notion that URLs are NOT
trademarks until a court decides they are, and any squabbles to the
contrary should be handled by courts and the parties involved.
Registrars, registries and ICANN should adopt the opinion of NOT HAVING an
opinion on this and take ourselves out of the loop completely. We're trying
to protect everyone on every issue when the real issue, in my view, is
between two parties who we have nothing to do with. We register the URLs,
let civil litigation sort out the disputes. This is going to be especially
important as more TLDs come online.
from Businessweek.com 1/6/00
The Lemonade Stand Circa 2000: A Boy, a Site, a $10 Million Lawsuit
A New Jersey teenager sues Black Entertainment Television over a URL
Aaron Doades, of Millburn, N.J., is a devoted and precocious rap fan. In
1996, at age 10, he used his allowance money to create a Web site about his
favorite stars. It featured photos, links to record companies, and lyrics.
Now Doades — with the help of his father — is embroiled in a very adult
lawsuit with a big company that shut his site down over alleged trademark
violations, and he's seeking $10 million in damages. He's also delving into
one of the most nettlesome legal issues on the Net — whether one party can
turn another's trademark into a URL.
Doades' story shows how treacherous trademark issues can be on the Web —
for entrepreneurs of any age. It also reveals a particular danger of the
medium for kids. It's easier for computer-savvy youngsters to start Web
businesses than lemonade stands, with no one the wiser about their age. But
their lack of sophistication can get them into adult legal trouble.
Doades' problems started in early 1998, when he moved his fledgling site
from America Online to the Web. He registered his baby as Rapcity.com with
the domain-name registry, Network Solutions Inc. Two months later, Doades
saw an ad for Rap City, an afternoon music show on the cable channel of
Washington (D.C.)-based Black Entertainment Television Inc. Doades, then
12, knew that companies own brand names. So, he e-mailed BET, asking if he
could use Rap City. BET officials refused. Then Doades asked if he could
keep the Rapcity.com URL if he called the site "Tha Hood." Doades says BET
never responded, so he deleted references to Rap City but kept the address.
By 1999, Doades' site was taking off. It was on several search engines.
CDNow, Rolling Stone, and AskJeeves.com ran ads on the site, and some
independent record companies asked Doades to sell their CDs for a commission.
Then last May, he ran into grown-up trouble. BET's attorneys sent him a
cease-and-desist letter, warning that he was violating a trademark the
multibillion-dollar entertainment company had held since the early 1990s.
In August, the domain name registry NSI shut Rapcity.com down, following
its procedures in cases of disputed URLs. After BET showed documentation of
its trademark, NSI told Doades he could transfer rapcity.com to BET or
register a new URL while he disputed BET's claim. If he did neither, NSI
would shut his site down, which it did in August. (NSI refuses to comment
because of the pending litigation.) Soon after, Doades and his father,
Ronald sued BET and NSI.
BET makes no apologies for its aggressive stance — even toward an
eighth-grade adversary. "What we are doing is what anyone with multimedia
properties is doing. We are protecting our intellectual property from being
infringed online," says Byron Marchant, executive vice-president and
general counsel for BET. Marchant says BET didn't know Doades' age until he
sued. (The court papers call him an "infant," a legal term for minor.)
"There are formal ways to deal with the use of trademarks, and that is to
get a license from a company and negotiate it," says Marchant. Sending a
letter instead of "engaging in a formal negotiation to find out if a name
can be licensed is not the proper avenue for moving forward," he adds.
It's hard to imagine someone Doades' age negotiating a licensing deal with
a major company — minors can't sign legally binding contracts. That raises
a troubling question: Was anyone supervising the boy's
hobby-turned-business? His father says neither he nor his wife monitored
Aaron's Web activities closely. "This was his thing, and I wasn't
involved," says Ronald. Nor did they know of his correspondence with BET
until last January, a few months before the cease-and-desist letter
arrived. Aaron confided then in a cousin — an ex-lawyer — at his bar
mitzvah, his father says. After the cousin advised him to do nothing, he
told his mother about his predicament, all according to Dad.
Actually, Doades fell into a trap that catches plenty of adult Web
entrepreneurs. They fail to check with the U.S. Patent & Trademark Office
to see if a name has been trademarked before they turn it into a Web
handle. Domain name registries, such as NSI, will only confirm that no one
else has registered a given URL. They don't say if it's trademarked.
Big companies are increasingly aggressive about challenging domain names
that they believe encroach on their trademarks. And Congress recently gave
them fresh clout to protect their interests. A provision in the most recent
federal spending bill imposes up to $100,000 in penalties for
"cybersquatters" who register Web addresses for trademarked names, then
force companies to pay high sums to get them back.
Why are Doades and his family taking on BET in court? It's partly the
principle — a big company shouldn't elbow a little guy aside like that,
says the elder Doades.
"We have no interest in the money whatsoever." He says they chose the $10
million figure to get attention, though Aaron deserves compensation for
losing his site, he adds. Aaron estimates he made a few thousand dollars a
year until last summer when his revenues got as high as $800 dollars a
month. Aaron says they told BET they'd give up the URL for $100,000 two
months ago. BET counteroffered $4,000, which they rejected. A BET spokesman
said the company has no comment.
Doades' lawyer, Mitchell J. Kassoff, insists that the law is in the boy's
favor. "[BET's] trademark record from the U.S. Patent & Trademark Office
says it is for television programming," not the Web, he says. BET counters
that for the past five years, it has used the name on its own Web site,
which is part of the Microsoft Network, MSBET.com.
It's hard to say how a judge will rule in the Doades case, assuming it goes
forward. (BET and NSI are trying to have it dismissed.) "Courts are clear
that just getting a URL doesn't give you a trademark right," says Curtis
Karnow, an intellectual-property expert and partner at Sonnenschein, Nath &
Rosenthal in San Francisco. Yet, he adds, if a trademark holder fails to
act quickly enough to stop someone from using the trademark as a Web
handle, courts may rule against it. BET claims it asserted its rights to
the name Rap City in a timely fashion. The case is expected to be heard
this winter in the U.S. District Court for the Southern District of New York.
None of this has quenched Aaron Doades' ardor for Internet endeavors or rap
music. He's building a new site named World Wide Rap (www.wwrap.com). Only
this time, he's checking the Patent Office site to see if the name is
trademarked — and he's consulting a lawyer. "I want to keep going and make
a new Web site. I want to get this behind me," he says. Spoken like a
battle-scarred Web veteran.
By Jeremy Quittner in New York