Is there any input from outside the US regarding case law on the boundary between free expression and trademark rights in domain names? Thanks, Robin -------- Original Message -------- Subject: Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy Date: Tue, 5 Jun 2007 01:15:20 +0200 From: Liz Williams <[log in to unmask]> To: [log in to unmask] CC: [log in to unmask] References: <[log in to unmask]> <[log in to unmask]> <[log in to unmask]> Hi Robin Thanks for this ongoing debate. Do you have any other examples that would help the discussion outside the US? Not all countries have any First Amendment-like rights and it would be useful to have this discussion on a broader basis. Liz ..................................................... Liz Williams Senior Policy Counselor ICANN - Brussels +32 2 234 7874 tel +32 2 234 7848 fax +32 497 07 4243 mob On 05 Jun 2007, at 01:08, Robin Gross wrote: > Hi Mike, > > Well US courts have consistently disagreed with your view and ruled > that there are numerous lawful uses of a trademark in a domain name > by someone other than a trademark holder. Trademark law has never > granted a monopoly on language. It only regulates specific uses of > words or symbols, and only commercial uses. Non-commercial > expression is not regulated by trademark rules under the law. > > One of the most cited US legal precedents to examine the boundary > of free expression rights and trademark rights is Taubman v. > Webfeats 319 F.3d 770 (6th Circuit 2003), an early "cyber-gripe > case". The court explained, "we will first explain the > interrelation between the First Amendment and the Lanham Act. ... > The Lanham Act is constitutional because it only regulates > commercial speech, which is entitled to reduced protections under > the First Amendment." In Taubman the appellate court held that > many expressions of a mark were not a 'trademark use' and not > likely to cause confusion and therefore "outside the jurisdiction > of the Lanham Act and necessarily protected by the First Amendment." > The 6th Circuit spoke directly to our issue, "The rooftops of our > past have evolved into the Internet domain names of our present. > We find that the domain name is a type of public expression, no > different in scope than a billboard or a pulpit, and [defendant] > has a First Amendment right to express his opinion about > [plaintiff], as long as his speech is not commercially misleading, > the Lanham Act cannot be summoned to prevent it." Taubman > explicitly held there First Amendment protection to use a trademark > in a domain name to criticize a business. See: > http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06 > > Another US circuit, the 9th, has also set similar precedent in > Bosley Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005) over a > non-commercial gripe-site using a trademark in its domain name. > Again the court agreed that the non-commercial expression of > opinion was not a "trademark use" subject to regulation by the mark > holder. "[Defendant] is not [plaintiff's] competitor; he is their > critic. His use of [plaintiff's] mark is not in connection with a > sale of goods or service - it is in connection with the expression > of his opinion about [plaintiff's] goods and services. [Plaintiff] > cannot use the Lanham Act either as a shield from ... criticism, or > as a sword to shut [defendant] up." > See: > http://www.ca9.uscourts.gov/ca9/newopinions.nsf/ > 3B0C93358B88F28D88256FD90056994B/$file/0455962.pdf?openelement > > The US 2nd Circuit has also provided strong protection for > noncommercial speech and recognized that words and phrases are used > in many different ways in a digital environment, to serve differing > goals, and that not all of these uses are controlled by trademark > law. In 1-800 Contacts v. WhenU.com 414 F3d 400 (2d Cir. 2005), > the 2nd Circuit ruled that the vast majority of such uses were > outside the scope of trademark law and only those specific uses > visually associated with the sale of goods/services could be > regulated by trademark. See: > www.eff.org/legal/cases/1800*contacts*_v_whenu/decision.pdf > So the US law is clear in permitting numerous non-commercial uses > of a trademark in a domain name, to discuss, criticize, compare, > provide general information about a company or product. Freedom > of expression is a legally recognized value that trademark rights > do not supersede. The current gnso draft recommendations diverge > significantly from the law on this point. > > Robin > > Mike Rodenbaugh wrote: > >> I disagree with the NCUC's suggested change to Reco #3. There are >> ample >> numbers of 2d and higher lever domains that can be used for >> freedom of >> expression, with exponentially more to come. NCUC seems to >> suggest that >> some prospective TLD operator would want to run an entire TLD full of >> gripe sites as to one trademark. Such a business would not be >> protected >> under the guise of 'freedom of expression' under any nation's law >> that I >> am aware of. >> The current Reco is tied to a core ICANN value of protecting security >> and stability. If a TLD corresponding to a well-known trademark were >> awarded to any entity other than the trademark owner, it is highly >> likely that many users would be confused and placed at higher risk of >> crime through activity at that TLD. This is the same security and >> stability concern that underlies the UDRP, as to 2d level and higher >> domains. >> >> >> Mike Rodenbaugh >> >> Sr. Legal Director >> >> Yahoo! Inc. >> >> >> NOTICE: This communication is confidential and may be protected by >> attorney-client and/or work product privilege. If you are not the >> intended recipient, please notify me by reply, and delete this >> communication and any attachments. >> >> >> -----Original Message----- >> From: [log in to unmask] >> [mailto:[log in to unmask]] On Behalf Of Robin Gross >> Sent: Saturday, June 02, 2007 10:23 AM >> To: [log in to unmask] >> Subject: [gtld-council] NCUC proposals to amend gnso >> recommendations on >> new gtld policy >> >> NCUC has developed 5 new proposals to amend the draft gnso >> recommendations on new gtld policy. >> These proposals are meant to give some recognition to freedom of >> expression values in our recommendations. The proposals also >> address concerns about ICANN becoming enmeshed in national policy >> debates and would keep the Internet core neutral of such conflicts. >> The 5 proposals are not meant to be accepted only as a package, >> but should be considered individually also. >> >> NCUC proposals to amend draft GNSO recommendations: >> http://www.ipjustice.org/ICANN/062007.html >> >> I welcome an opportunity to discuss the amendments at greater >> length and >> >> will try to answer any questions you may have on them. >> >> Thank you for considering them. >> >> Best, >> Robin >> >> >> >>