[Fwd: Re: [dnsproc-en] Ninth Circuit: Mere Registration of DN doesn't create TM rights]

[Ed Gerck <egerck@mcg.org.br>]

-------- Original Message --------
Subject: Re: [dnsproc-en] Ninth Circuit: Mere Registration of DN
doesn't create TM rights
Date: Fri, 23 Apr 1999 14:16:58 -0700
From: Ed Gerck <egerck@mcg.org.br>
To: "Martin B. Schwimmer" <martys@interport.net>
CC: list@ifwp.org, dnsproc-en@wipo2.wipo.int


"Martin B. Schwimmer" wrote:

> Ninth Circuit Rules on Net Trademarks
>
> Registering domain name doesn't establish priority
> ...
> Acquiring a domain name registration does not give someone priority in
> obtaining a trademark on the name, the Ninth Circuit U.S. Court of Appeals
> ruled Thursday.
>
> Use of the DN as a TM is required to obtain protectable TM rights.
>
> www.lawnewsnetwork.com/practice/techlaw/news/apr/e042399a.html

The article says:

                 This case shows that "trademark law takes
                  precedence over Internet customs and practices,"
                  said Brookfield's attorney, Richard Stone, a
                  partner at Los Angeles' Sheppard, Mullin, Richter
                  & Hampton.

Well, of course -- some may say. The Internet is not above the law,
for any law.  However, the statement above is not a useless
self-evident declaration. It is not a tautology.

It expresses the concept that law and law's jusrisdiction are
objective concepts while a domain name on the Internet and its use
are intersubjective [1].  Thus, even though Internet DNS names are
effective in a jurisdiction which  knows no objective boundaries and
no objective categories, they can be constrained by objective rules
when they point to an objective business.

To exemplify, if I see the DNS name  FORD.COM -- will this name
connect me to the car manufacturer, the model agency, the consulting
group or to anything else with that acronym?  Will the website be in
the US, Japan, Italy or elsewhere? These questions are all
intersubjective by Internet  protocol -- a DNS name is simply an
association between that name and an Internet resource which can be
anything or anywhere [1].  Thus,  any of the above given answers are
possible on the Internet and no user can tell ahead of time what will
be found when FORD.COM is used. The same answers happen to be also
all legally possible -- so no user can legally rely upon what will be
found, ahead of time.

However, even though the DNS name FORD.COM knows no objective
boundaries and no objective categories, it can  yet can be
constrained by legal objective rules based on *where* that name is
registered. 

Which is what the reported case is all about -- it has nothing to do
with "Internet customs and practices". Which saves that phrase from
being a tautology and begs our attention. The case is about an
objective rule (trademark law) being effectively applied where it is
valid, not about an intersubjective rule (Internet DNS) being denied
or even conflicting with the objective rule -- neither of which is
possible.  Here, Brookfield  had a trademark right over "MovieBuff",
not a DNS right, which effectively allowed Brookfield to prohibit
West Coast to use that DNS in commerce terms.

Which further supports the conclusions in [1], to the effect that
there is no conflict between tradermarks and DNS names -- they are
simply designations in different name spaces. Since DNS names are
intersubjective and never objective, while trademarks are objective
and may also be intersubjective, all objective conflicts such as
those in the legal trademark domain can be solved in that domain with
the existing laws. There is no need to further legislate and then run
the risk of vacating otherwise valid laws -- so, this ruling adds
weight to my arguments (and others, as cited) to recall WIPO's RFC3
in totum.

Quite on the contrary, if DNS names were objective then we would have
a real conflict -- as it exists in international commerce between
equally objective legal provisions, valid though in each other's
jursidictions.

Failure to understand the necessary and unquestionable local
subservience of Internet DNS names to objective rules such as
trademark law is IMO at the base of this "War of the Worlds" -- which
however, plays out entirely in people's minds.

The article further says:

                  The Internet folklore has been that if
                  you reserve a domain name you're safe from
                  trademark infringement, he said. Now "that's
                  changing."

which is more of a "cybersquatting folklore" than an Internet
folklore (Internet folklore is the e-mail virus, for example) but
also reflects positively on Bell Atlantic's (as the co-holder of the
famous mark "BELL")  pledge that cybersquatting be curbed -- the same
call supported in [1] with several arguments and tools, but without
the privacy burden that Bell Atlantic believed necessary to enforce
it.

Comments?

Cheers,

Ed Gerck

[1] http://www.firstmonday.org/issues/issue4_4/gerck/index.html