[Comment-Ip] Copyright, and Re: Status: Trademarks, TLDs, and the domain name system.

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

[I am resending this message, correcting some typos and e-mail line
formatting errors.  Thanks for the private comments and sorry for
the double-posting]

"Roeland M.J. Meyer" wrote:

>  I have, this week, been made aware of information that non-commercial names
> are, under some cases, ALSO eligable for trademark protection equivalent to
> commercial marks, I think we have found a mechanism to ALSO protect
> non-profit TLDs. However, it appears to be not quite as straight-forward as the
> commercial use and further research is required, regarding the detailed
> mechanisms involved.

[snip]

Roeland and all:

Non-profit companies can register a trademark name for any product or service they
provide, irrespective of the price asked for them or the ensuing profit.  This does not
depend on the Internet and supports your findings.  The price can even be zero, not
only the profit. Trademark law does not inquire if the product/service is being sold
at a loss, break-even or profit.  That is for the IRS to decide ;-)

However, any trademark name is granted only for a specific jurisdiction, class and time,
while a DNS name is valid worldwide, for any content and for indeterminate time.
Obviously, there is a tension between these two naming systems when seen from the
trademark reference frame  -- but *not* when seen from the DNS reference frame.
In other words, a DNS *always* resolves to a unique site and owner worldwide but a
trademark does not always resolve to a unique product and owner worldwide or even
in the same country [1].

Thus, how can non-profit companies protect their name in a DNS for any TLD? In the
same *two* manners that they can protect their name elsewhere  -- either by proving
first *use* in commerce  (where neither profit nor price nor claiming it is the metric,
but providing it) or by showing a valid trademark for that jurisdiction and class.

Which manner is "better"?

This depends on several factors, including cost, but one thing is certain. Where the first
manner is denied by facts the second cannot prevail --  since it is a fundamental tenet
of  trademark law that ownership of an inherently distinctive mark, such as in a TLD,
is  governed by priority of use.

Therefore, "priority of use"  is the issue here -- to protect a service or product name.
Thus, reversing the table on the trademark/DNS tension, a DNS name that is
registered  at an Internet Registry and is operational for a purpose is a strong
*timestamped* proof  of *first use* of that very association between  purpose and
name which would be  required in a trademark dispute over that name in that
jurisdiction (where the Internet  Registry is). In other words, DNS name registration
and use has legal trademark  precedence to designate the services/products provided
under that DNS in that  jurisdiction of DNS registration, even over a latter trademark
in the same class and  jurisdiction. Note also that no duplicate second-level names are
possible in a TLD, so DNS registration is also an unambiguous registration for that
name in that TLD --  contrary to trademarks [1]. In this, the gTLDs are not floating in
jurisdiction vacuum -- as the UMBRO case showed, the  COM/ORG/NET  TLDs
are in the US jurisdiction.

Thus, any DNS second-level name in COM/ORG/NET can be used as part of a
timestamped proof of  "priority of use" in the US, in a potential trademark dispute and
even without any trademark,  when supported by proof of actual use (e.g., public
delivery of service).

As a side issue, "reverse domain name hijacking" [2] -- where a trademark owner
would abusively trademark a DNS name *after* that name is used in commerce (for
profit or not) and then challenge that DNS in a dispute in order to "hijack" it -- is not a
serious threat though it may appear troublesome for an Internet user that suddenly
receives a "cease and desist" letter in legalese, from an attacker.  Unless, of course,
unproven claims of trademark collision could have the power to put legally defined
DNS domains "on hold" and force the defender to pay an advance fee of some US $
6,000 dollars just to defend his rights *per attack*  -- as WIPO suggests to ICANN
for the gTLDs [3].  However, by denying to relinquish one's rights when *choosing*
a DNS TLD Registry/Registrar (attention to the word "choosing"), one should be able
to effectively use the fact that DNS names can be by themselves part of a
timestamped  proof of priority of use in that TLD jurisdiction -- no trademark required.

In summary, I argue that name protection for a second-level DNS in a TLD is *easier*
without a trademark when compared to name usage in media other than the Internet,
since DNS names are unambiguous and timestamped for each TLD. Thus, trademark
protection may be *less* necessary on the Internet in general (even for non-profit
companies), contrary to some current opinions.

Additionally but not least, I suggest that Internet users could rely on copyright
protection in order to declare their worldwide rights over their DNS, special
designations, original text or even original  compilations -- without cost and jurisdiction
limitations. For copyright, the basic tenet is originality and no one can deny that for a
DNS name in a TLD -- it is original  by definition [1].  Please see [*] for the example
of a copyright declaration that could well apply to DNS names. I note that similar
declarations are already used throughout the Internet, for websites for example and for
open source software, together with other variants such as "copyleft".  I also note that
some companies such as IBM have chosen to copyright the names of several of their
products and not trademark them -- so the same can be applied to DNS names that
may represent a particular product (as usual on the Internet) and not only to the DNS
name of the company itself.


Cheers,

Ed Gerck

* (c) Copyright Ed Gerck, 1999, all rights reserved. Permission granted to copy
with author and copyright citation. E-mail: egerck@mcg.org.br

[1] A trademark name is not unambiguous, neither for a produt/service nor for its
owner, even in one jurisdiction. It does not have to be original, either. For example,
FORD is not original and can legally designate several different businesses and
products/services in the US, such as a car manufacturer, a model agency, a consulting
group, an acronym  for something else -- or any number of persons and entities
worldwide, legally, as defined in Intellectual Property laws and agreements.  However,
there can be only one FORD.COM on the Internet *and* only one owner for it --
further, the first use of a DNS name must be and must remain original in that TLD,
worldwide.

[2]  http://wipo2.wipo.int/dns_attachments/rfc3/attach921884283.doc

[3]  http://www.icann.org/comments-mail/comment-ip/msg00003.html

______________________________________________________________________
Dr.rer.nat. E. Gerck                                  gerck@mcg.org.br
  ---  Meta-Certificate Group member -- http://www.mcg.org.br  ---