Consumer protection of basic trademarks is in the public interest, but
over excessive protection of trademarks to the exclusion of other types of
speech and communication is not.
I just saw Lori's note and will respond briefly here, and at length this
evening or tomorrow. By way of introduction, I served as co-chair for
ICANN's Working Group on Domain Names and Famous Marks which wrapped up its work
around 2000 and decided against asking for famous mark protection. (and for
those who don't know me, I was co-founder of this constituency on behalf of
ACM's Internet Governance Project).
Part of the Working Group's reasoning is simply lack of international
agreement on the issue of famous marks: there are no international treaties for
the protection of famous marks and no international directory. When push
comes to shove, basic principals prevail and a Spanish court found in favor of a
small company marketing its products under "Nike" despite protests from a
certain large sneaker company. We also found famous marks to be a very US
concept.
I should note that not once in a dozen years of trademark work have I ever
a met a large trademark owner who did not think they had a famous mark.
Whether their word is a "coined or fanciful" term (a made up word) like Xerox or
Haagen Daz, or just an ordinary word like Apple or Sun, every trademark owner
thinks its trademark is famous and that no one has the right to use "their
word."
But "their word" it is not. Trademark law is not an unlimited license
to use a word or term, it is a limited right to prevent its use in the
commercial context to prevent customers from going to Company A when they were
really looking for Company B. Trademark law is not intended to stop
people from using their words in ordinary ways -- for free speech, noncommercial
use, criticism, completely different types of uses (e.g., sun for a website on
sun spots). So, no, I do not think that a .SUN or a .APPLE belong to
trademark owners.
More to come,
Kathy
p.s.
Here are my new coordinates:
Kathryn
A. Kleiman, Esq.
Partner,
Dozier Internet Law, P.C.
301
Concourse Blvd.
West
Shore III, Suite 300
Glen
Allen, VA 23059
Phone:
(804) 346-9770 ext. 303
Fax:
(804) 346-0800
<<Pardon the typos in my posting of this morning. I am my own
worst proof
reader. Along with my grammar errors, I noticed that
I typed ISOC
instead of IOC. Must have been a Freudian slip.
My
long winded point is that we should at least consider that there may
be some
trademarks that have such a high degree of global recognition
that it may be
in the public's interest to ensure that any gTLD's that
employ those marks
are controlled by the rights holder. Otherwise, the
public may be
misled. Consumer protection is in the public interest.
Lori
Schulman