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Re: [wg-b] Protections for Noncommercial gTLDs.

From: Martin B. Schwimmer <martys@interport.net>
To: <wg-b@dnso.org>
Sent: Monday, April 17, 2000 3:12 PM
Subject: Re: [wg-b] Protections for Noncommercial gTLDs.

> Thank for actually reading a case. Now we can discuss law.  The Brachs
> illustrates the limitation of fair use in that the defendant may not use
> more than what is reasonably needed to describe the plaintiff or
> plaintiff's goods or services.  In this case, the use of the logo was not
> necessary and was found to be infringing.
> Similarly use of an employer's name as part of a domain name is more than
> is necessary to fairly describe the employer.

...and the Brach's case specifically permitted the union to use the name.
With that "similarly", you are extending the implication of the case beyond
its holding, which was limited to expressly allow what you are arguing it

The Brach's case provides an example of a union being allowed to use the
name of the company with which the union had concerns.  That case supports
Jamie's position more than it supports your position.

I'm still looking for any basis in law for the overall proposition, however,
that uses of trademarked terms are presumptively infringing in the absence
of any judicial determination that they are infringing.  I haven't seen the
case yet in which a court decided such a thing, but that is the effect of
the sunrise proposal.

> teamsters-vs.gm.com or even organize-gm.union.  And that's why the Brachs
> case suggests that gm.union will likely to be infringing.

The case suggests no such thing.  The union was expressly allowed to use the
name "Brach's".

And "likely to be infringing" is one thing.  Pre-emptively forbidden from
use is quite another.

It could well be that if the USPTO grant of a trademark registration were
known to later have the consequence of allowing a global exclusionary
right-in-gross, that the examination standards would have been different for
trademark registration applications.  The sunrise proposal tacks a new right
onto a trademark registration, which such registration had heretofore never
accorded to a registered trademark holder.

> I'm not the one saying .union is non-commercial and should be exempt from
> trademark protection.  It's not my burden to distinguish my cases on your
> behalf.

I'm not saying that either.  Personally, I think the .union proposal will
lead to the same kinds of authority problems that delta.com has for faucets
and airlines.

> And I don't feel particularly guilty about asking lawyers who make legal
> conclusions to support those conclusions.  I'm not keeping them from
> researching the cases.  In fact, if they are lawyers and were hired by
> non-commercial organizations to represent them in this debate, they are
> kind of obligated to do their homework.

How much legal research does it take to support the proposition that
ownership of a trademark provides the holder with the right to seek legal
remedies in the event of infringement of that mark?  But that is a far cry
from building an automatic pre-emptive mechanism into the architecture
global computer network.

We can debate whether or not I understand "fair use" until we are both
exhausted.  But preventing "any use" is not an acceptable filter for
separating fair use from unfair use.  And that is what the sunrise proposal
does.  Prior to any use of the term in question, how is anyone to know
whether it was going to be used fairly or not.  What you are advocating is a
system that prevents fair use, unfair use, or any use at all.  That is a
broadening of the trademark right beyond any recognized boundary.

Words like "pledge" "tide" and "vanish" are all well-known trademarks when
applied to certain goods.  They are also common words when used in
connection with other things.  Fraternities use Pledge furniture polish when
they are cleaning the tables, but they also engage in conducting "pledge"
activities when they are enrolling new members. In order to figure out
whether the use is fair or unfair, there has to be use of some kind.  This
determination can only be made retrospectively, not prospectively.