[wg-b] Second Circuit on First Amendment Analysis of Domain Names

["Martin B. Schwimmer" <martys@interport.net>]

As discussed on other lists here, the Second Circuit Court of Appeals in
the US has rendered a decision in Name.space vs. NSI.  The text is at:

http://www.law.pace.edu/lawlib/legal/us-legal/judiciary/second-circuit/test3
/99-6080.opn.html

Of special interest to this group is the discussion of the interplay
between the First amendment and domain names.  In this particular case, it
was held that a TLD suffix would not rise to the level of protectable
speech (NSi was not violated name.space's free speech rights by refusing to
add new TLDs to the root.  Of importance to our discussion of famous marks
exclusion was the Court's re-affirmance of the Plannedparenthood.com case.
I refer you to the entire 1st amendment discussion which is too long to be
reproduced here in its entirety:

. . . 

Further, the functionality of domain names does not automatically place
them beyond the reach of the First Amendment. Although domain names do have
a functional purpose, whether the mix of functionality and expression is
"sufficiently imbued with the elements of communication" depends on the
domain name in question, the intentions of the registrant, the contents of
the website, and the technical protocols that govern the DNS.(14) Spence v.
Washington, 418 U.S. 405, 409-10 (1974) ("[T]he context in which a symbol
is used for purposes of expression is important, for the context may give
meaning to the symbol." (citation omitted)). Functionality and expression
are therefore not mutually exclusive: for example, automobile license
plates have a functional purpose, but that function can be served as well
by vanity plates, which in a small way can also be expressive. Similarly,
domain names may be employed for a variety of communicative purposes with
both functional and expressive elements, ranging from the truly mundane
street address or telephone number-like identification of the specific
business that is operating the website, to commercial speech and even core
political speech squarely implicating First Amendment concerns. 

In short, while we hold that the existing gTLDs do not constitute protected
speech under the First Amendment, we do not preclude the possibility that
certain domain names, including new gTLDs, could indeed amount to protected
speech. The time may come when new gTLDs could be used for "an expressive
purpose such as commentary, parody, news reporting or criticism,"
comprising communicative messages by the author and/or operator of the
website in order to influence the public's decision to visit that website,
or even to disseminate a particular point of view. United We Stand Am.,
Inc. v. United We Stand Am. N. Y., Inc., 128 F.3d 86, 93 (2d Cir. 1997)
(citation omitted). 

We do not view Planned Parenthood Federation of America v. Bucci as holding
to the contrary. See No. 97 Civ. 0629, 1997 WL 133313, at *10-11 (S.D.N.Y.
Mar. 24, 1997), aff'd, 152 F.3d 920 (2d Cir. 1998) (unpublished table
decision). In Bucci, a trademark infringement case, the court held that the
defendant's particular use of the domain name "plannedparenthood.com" was
as a "source identifier" rather than a "communicative message," while
leaving open the possibility that a domain name could constitute such a
message under other circumstances. See id. In reaching this conclusion, the
Bucci court conducted precisely the kind of particularistic,
context-sensitive analysis that is appropriate here, including analyses of
the domain name itself, the way the domain name is being used, the
motivations of the author of the website in question, the contents of the
website, and so on. See id. Domain names and gTLDs per se are neither
automatically entitled to nor excluded from the protections of the First
Amendment, and the appropriate inquiry is one that fully addresses
particular circumstances presented with respect to each domain name. 

footnotes omitted

. . . 



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