Trademark Protection and the Internet from Ancient Times to the Present Day
By John Norwood · July 16, 2013 · 2013 Ark. L. Notes
In categories: Intellectual Property, Snapshot
One of a business’s most valuable assets is its intellectual property, with trademark rights often being the primary form of intellectual property that a business owns. A trademark is a word or design used by a merchant to identify its goods and distinguish them from others.1 Trademarks associated with Arkansas companies include company names such as Wal-Mart and Tyson along with designs or expressions which help to market a particular business.2 Most colleges and universities own words and marks which are associated with their athletic teams and are of great value to the school, with “Arkansas Razorbacks” being a noteworthy example.3 This paper will focus on the use of trademarks on the internet, particularly as a component of a domain name. This history of trademark law and the internet is traced from ancient times (defined as pre 21st century) to the present day.
Obtaining a trademark
A trademark can have a perpetual life, giving it the longest life of any of the forms of intellectual property.4 It can be obtained in three ways: federal registration, state registration, and under common law (no registration). Federal registration is with the United States Patent and Trademark Office (USPTO).5 The initial registration is valid for ten years and can be renewed indefinitely.6 State registration is an option but will give protection only within the state of registration.7 The effect of registration is to give constructive notice to all businesses that the mark is being claimed by the registrant. It should be noted that there are limits to protection, even if the mark is registered with the USPTO. For example, registration of a business name does not prevent a prior user from continuing to use that name.8 Also a registered mark can be challenged in court on various grounds, such as was the case with the challenge made to the use of the name “Redskins” for the professional football team in Washington, D.C.9 In order to be recognized as a valid trademark the mark, word, or expression should be unique. Marks which are “generic” are not subject to protection because they do not sufficiently distinguish the business’ product or service.10 The Miller Brewing Company was unable to obtain a trademark on the expression “Lite Beer” for this reason.11 Words and marks which are “fanciful” (such as Nike and the famous Swoosh design) are favored.
Federal Statutory Protection
The basic federal law providing protection to trademark owners is the Lanham Act of 1946.12 This act provides protection to trademark owners from competitors whose misappropriation of a mark results in a likelihood of consumer confusion. In 1996 Congress amended the Lanham Act by adopting the Trademark Dilution Act which protects the owners of famous and distinctive marks from acts of others which lessen the capacity of a mark to identify and distinguish goods or service regardless of whether the offending party is a competitor and even if there is no consumer confusion.13 By this law the owner of a famous mark is given protection over and above that to which the owner of a non famous mark would be entitled. Remedies available to a trademark owner include both monetary damages and injunctive relief.
A good example of a trademark owner successfully defending its famous mark is Board of Trustees of the University of Arkansas v. Professional Therapy Services, Inc., d/b/a Razorback Sports and Physical Therapy Clinic.14 In this case a health clinic in Fayetteville adopted the name “Razorback Sports and Physical Therapy Clinic.” The University of Arkansas claimed that this infringed upon its trademark rights in the use of the name “Razorback.” The court agreed with the university’s claim and ordered the defendant to cease and desist the use of the word “Razorback.” The court noted that the Razorback symbols are strong and distinctively identify the university in the public mind. It was also stated that the services provided by the clinic are similar to those provided by the university and hence could result in consumer confusion.15
Domain Name Trademark Protection – Common Law
In ancient times (pre 21st century) trademark owners were often victimized by the misappropriation of their trademarked name by a villain who used the name as part or all of a domain name. In such cases a trademark owner would generally seek relief under the general federal trademark law as stated in the Lanham Act (possibly as amended by the 1996 Dilution Act). A good example of such a case is Hasbro, Inc. v. The Internet Entertainment Group.16 In this case the Hasbro Corporation, makers of the famous children’s board game “Candyland,” filed suit against the defendant for using the name Candyland as their domain name.17 The site was pornographic in its entirety. The court agreed with the Hasbro Corporation’s claim that the defendant’s use of its famous Candyland name for a pornographic site constituted dilution by tarnishment and enjoined the defendant from using the name.18
Another interesting case from ancient times is one involving the animal rights group “People for the Ethical Treatment of Animals,” known as PETA. In PETA v. Doughney19 the defendant registered and used the domain name “PETA.org” but used it to represent the words “People Eating Tasty Animals.” When sued by the “real” PETA for trademark infringement under the Lanham Act the “false” PETA argued parody, claiming that the first amendment protected this kind of speech. The court rejected the argument and found in favor of the “real” PETA. The reason stated by the court was that one could not know that a parody was intended simply by looking at the domain name itself. Essentially, the domain name merely copied PETA’s mark, reaping an undeserved benefit due to the fame of the PETA name.20
The cases decided in these ancient times generally resulted in outcomes favorable to the trademark owner, but not without the time and expense of litigation. For this reason in 1999 Congress adopted the Anticybersquatting Consumer Protection Act to give trademark owners (and others) specific statutory protection from this kind of internet trademark thievery.
The Anticybersquatting Consumer Protection Act21
The Anticybersquatting law of 1999 stated that a “cybersquatter” could be held liable to a trademark owner if the cybersquatter, with a bad faith intent to profit thereby, registered a domain name that was either identical to or confusingly similar to a distinctive or famous mark. The act also made it illegal to register as a domain name the name of a living person without the person’s consent if there was specific intent to profit by selling the same for financial gain. Damages for a bad faith intent to profit from the registration of a famous mark could amount to as much as $100,000. The statute stated that the following would be indications of “bad faith:
- The domain name holder offered to sell the name to the trademark owner for financial gain.
- The holder applied for the domain name using false information.
- The holder applied for multiple domain names that were known to be confusingly similar.
A recent search revealed that there have been only a few trial court decisions in which a court had occasion to apply the cybersquatting law.22 However, there are occasional news reports of celebrities suing under the cybersquatting law.23 There do not appear to be any reported appellate opinions involving application of the cybersquatting law.
Arbitration Under ICAAN’S Uniform Domain Name Dispute Resolution Policy
The Internet Corporation for Assigned Names and Numbers (ICAAN) has been registering domain names since 1992 under an agreement with the National Science Foundation and the Department of Commerce. Its accredited registrars (service providers) must agree to rules developed by ICAAN, including the Uniform Domain Name Dispute Resolution Policy. The World Intellectual Property Organization (WIPO) is the primary dispute resolution service provider.24 Arbitration under WIPO is much faster and cheaper than civil litigation, and it also has the benefit of not having jurisdictional issues when potential defendants either reside in foreign countries or cannot be found at all. However, the only remedy available to a successful claimant is to have the domain name turned over to him or her; monetary remedies are not available. An interesting example of such a proceeding is Julia Fiona Roberts v. Russell Boyd.25 The domain name which was the subject of dispute was juliaroberts.com. The Complainant was the famous actress Julia Roberts. The Respondent had registered the domain name in November of 1998, and as of March of 2000 (the year of the arbitration hearing) the website featured a picture of a woman named “Sari Locker” and little or nothing about Julia Roberts. The Respondent had placed the domain name up for auction on eBay.26 The Respondent had also registered over 50 other domain names, including names incorporating movie star names such as Al Pacino and Madeline Stowe. The Respondent’s E-mail address was listed as email@example.com.
The arbitration panel written decision began by finding that the name “Julia Roberts” had a sufficient secondary association with the Complainant to create a common law trademark right under United States law. The panel then noted that the Respondent had no relationship with Ms. Roberts or permission to use her name, and that the original content on the web site had little to do with Ms. Roberts. The Respondent stated in his response that he was a great admirer of Ms. Roberts.27 He also stated that if Ms. Roberts had just picked up the phone and called him, she would own the domain name by now.
In resolving the case in favor of Julia Roberts, the panel found that the Complainant had established a prima facie case that the Respondent had no legitimate interest in the domain name. The panel also found that the Respondent acted in bad faith. His registration of the domain name was intended to prevent Ms. Roberts from using her own name in a corresponding domain name, and the fact that he had registered other domain names using the names of famous movie and sports stars indicated bad faith. The panel ordered that the domain name be transferred to the Complainant, Julia Fiona Roberts.
As indicated in this case, the Domain Name Dispute Resolution Policy requires that the Complainant prove each of the following:
- The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- The Respondent has no legitimate interest in respect of the domain name; and
- The domain name has been registered in bad faith.
Detailed information regarding the Domain Name Dispute Resolution Policy is available on the WIPO website.28 All of the panel decisions are reported, going all the way back to the first case in 1999 involving the World Wrestling Federation.29 Included among the well known celebrities who have prevailed via WIPO proceedings are Jennifer Lopez, Jay Leno, Carmen Electra, and Bill Cosby.30 Turning to the wide world of sports, the United States Olympic Committee, having the exclusive right to use that name, was successful in a WIPO proceeding regarding the domain name “usolympicstore.com.” Most recently the London Organizing Committee for the Olympic Games was successful in an action to obtain the transfer of the domain name “mylondon2012.com”.31
In 2004 the University of Arkansas was involved in a WIPO case involving the domain name “universityofarkansas.com”.32 The Respondent, known as “Freedom Domains” with an address in New York City, did not file a response. The web site contained graphic pictures of aborted fetuses. The single panelist hearing the “no response” case found that the Respondent’s domain name was identical or confusingly similar to the Complainant’s mark, that the Respondent had no right or legitimate interest in the domain name, and that the Respondent registered and used the domain name in bad faith. The panel stated that the Respondent’s use of the domain name was clearly intended to attract visitors to the site who had actually been searching for the university’s true site. It was also noted that the Respondent was thought to be the same entity that was seeking to sell “high traffic pro-life domains” for only $999. Having satisfied its burden of proof with regards to the three policy requirements, the University of Arkansas was awarded ownership of the site.33
In 2009 the University of Arkansas brought a WIPO action in an effort to obtain ownership of the domain name “razorbacks.com,” which had been registered by “FanMail.com, LLC” of Huntsville, Alabama.34 The domain name was first registered in August of 1995. The Respondent had registered similar names such as “aggies.com” and “wolverines.com.” One of the products sold was a “vanity E mail service,” such as JohnDoe@razorbacks.com. The University of Arkansas made its initial contact with Respondent more than seven years after the domain name was first registered by sending a cease and desist letter. Five years later (2008) the university again contacted Respondent and demanded transfer of the domain name. At this point Respondent’s attorney replied with a letter in which he refused to comply with the university’s request, arguing that all claims to the domain name were lost to the university as a result of laches, waiver, and estoppel. The WIPO complaint was filed in 2009.
The panel ruled in favor of the Respondent and dismissed the University’s claim. Although the panel was not prepared to accept the argument that the doctrine of “laches” provided an absolute defense, it felt that the considerable delay in bringing the case did color the merits of the dispute. The panel also indicated that in a number of decisions prior panels had recognized that vanity E-mail services could be a bona fide offering of goods. It was also noted that the Respondent’s E-mail service never competed with the University and that the web site contained a disclaimer disavowing the reader from drawing such a conclusion. The panel then stated that these factors, when combined with the Complainant’s delay in bringing the complaint, prevented the panel from concluding as a positive fact that the Respondent had no rights or legitimate interest in the domain name. The panel also stated that there was insufficient evidence to show that the Respondent acted in bad faith. It was not enough, in the panel’s view, for there to be a constructive notice of the Complainant’s claiming of the mark – instead, only actual notice would suffice. The panel indicated that the word razorback might be associated with something other than a university’s athletic teams.35 The panel’s concluding remark was as follows: “Complainant clearly has rights in its strong trademark RAZORBACKS, and simply fell short of meeting all three elements for a transfer order under the Policy.”36
Another WIPO case involving an Arkansas entity is Wal-Mart Stores, Inc. v. Mighty LLC,37 a company with an address in Charlestown, Nevis. In this proceeding Wal-Mart was attempting to obtain ownership of the domain name “walmartsucks.com.” The proceeding was “terminated” without a decision. Currently the domain name is inactive but is within the control of Melbourne IT in Australia, described in its web site as “a world leader in the supply of domain name registration.”38 Wal-Mart was also involved in a lawsuit filed in U.S. District Court in Georgia by Charles Smith, owner of the site “walocaust.com.”39 The plaintiff was seeking a declaratory judgment upholding his right to use this domain name along with similar named sites (such as walqaeda.com). The District Court entered a declaratory judgment in Smith’s favor, finding that Smith’s activities (including the domain name and the site itself) did not violate any of Wal-Mart’s trademark rights, and that the sale of novelty merchandise such as coffee mugs which bore such expressions as Walocaust, Wal-Qaeda, Freedom Hater Mart, and Benton*Villebullies Always was protected under the first amendment as a parody.”40
Even in ancient times trademark law has protected businesses from unfair uses of its words and marks over the internet. This protection exists under general common law as well as long standing statutory law on both the state and federal level. Both the Lanham Act (1946) and the and the Trademark Dilution Act (1996) have been applied in cases involving internet activities, and may continue to be applied in the present day. These laws have been buttressed by the Anticybersquatting Law of 1999 as well as by arbitration proceedings under the Uniform Domain Name Dispute Resolution Policy. All of these laws, both ancient and modern, have proven to be effective in providing relief to trademark owners from bad faith registration of domain names.
Other forms of intellectual property include a “patent,” which is associated with inventions, and a “copyright,” which is associated with creative works such as books, movies or songs. Patents and copyrights are not covered by this article. ↩
For example, Wal-Mart’s current expression: “Save money. Live better.” ↩
The University of Arkansas has registered with the U.S. Patent and Trademark office such expressions as: Arkansas Razorbacks, Arkansas, Razorback, Razorbacks, along with other words and designs. In the fall of 2011 the university registered the expression “We didn’t come to paint.” The statement was made by former coach Bobby Petrino after the 2010 LSU game, and appeared on T-shirts. These shirts are not currently being sold by the university bookstore.
A copyright is good for the life of the author plus 70 years; a patent’s maximum duration is 20 years. ↩
There is a fee both for the initial registration as well as the renewal, making this the most expensive way to obtain a trademark. The use of an attorney is not required. ↩
A notable example in Arkansas is Whataburger in Russellville, which is allowed to continue using that name despite the registration with the USPTO of the name “Whataburger” by the national chain of that name. See http://www.whataburger.com. ↩
The challengers to the “Redskin” name argued that the word was salacious and hence not subject to being registered. Although the challengers prevailed at the trial court level the appellate court stated that the name had been in use for so long the challengers’ claim was probably barred, and for that determination the case was remanded. In the end the Washington Redskins came out victorious. Pro-Football v. Harjo, 415 F.3d 44 (D.C. Cir. 2005). ↩
For example, the expression “you have mail” cannot be trademarked. ↩
Miller Brewing Co. v. Heileman, 561 F.2d 75 (7th Cir. 1977). ↩
15 U.S.C. Sec. 1051. ↩
15 U.S.C. Sec. 1125. ↩
873 F. Supp. 1280 (W.D. Ark. 1995). ↩
It should be noted that this case was decided prior to the passage of the Trademark Dilution Act. Under the 1996 law the owner of a “famous” mark is entitled to relief even in the absence of competition or consumer confusion. It is also worth noting that under the University of Arkansas Trademark Licensing policy a business which has been using the name “Razorback” prior to the time that the university’s licensing policy was developed (1989) may continue to do so. See the policy at http://www.ArkansasRazorbacks.com (Trademark and Licensing Guidelines). ↩
1996 Lexis 11626 (D.C. Wash. 1996). ↩
263 F.3d 359 (4th Cir. 2001). ↩
See http://www.PETA.org. ↩
15 U.S.C. 1125(d) and 15 U.S.C. 8131. ↩
See Schmidheiny v. Weber, 285 F. Supp.2d 613 (E.D. PA. 2003). The cybersquatter was ordered to turn over the domain name to the plaintiff and pay attorney’s fees and court costs, but no monetary damages were awarded. ↩
It was reported that Kathy Griffin brought suit under the law in a 2009 case. ↩
WIPO Case No. D2000-0210. ↩
The panel indicated that the posting elicited a high bid of $2,550 for the domain name. ↩
He stated that he thought that Ms. Roberts was “nifty, crazy wacko cool.” ↩
The Respondent had registered the domain name “worldwrestlingfederation.com” with Melbourne IT, a provider based in Australia. Three days after registering the name the Respondent contacted the WWF via E mail offering to sell the domain name to WWF for $1,000. The WWF refused to pay and brought a WIPO action. The panel held that the evidence clearly showed that the domain name registered by the Respondent was identical or confusingly similar to the WWF’s trademark, that the respondent had no rights or legitimate interest in respect to the domain name, and that the registration was in bad faith. Registration of the domain name was transferred to the WWF. Not long thereafter however the WWF lost out in an effort to obtain the rights to the domain name “WWF.org,” owned then and now by the World Wildlife Federation. The World Wrestling Federation is “WWF.com” ↩
Jennifer Lopez was given ownership of the domain names “jenniferlopez.org and jenniferlopez.net” WIPO Case No. D2009-0057; Jay Leno obtained ownership of the domain name “the jaylenoshow.com,” WIPO Case No. D2009-0569, D2009:0570; D2009:0571; Carmen Electra (aka: Tara Leigh Patrick) was awarded the domain name “carmenelectra.com,” WIPO Case. No. D2003:0852; and Bill Cosby was awarded the domain name “FatAlbert.org,” WIPO Case. No. D2005: 0756. ↩
U.S. Olympic Committee case: WIPO Case No: D2000-0189; London Organizing Committee case: WIPO Case No: D2010-0145. ↩
WIPO Case No. D2004-1030. ↩
WIPO Case No. D2009-1139. ↩
“…for some, a razorback is just a hog (or some other place or thing unrelated to Complainant’s sports teams)” at page 8. Author’s editorial comment: “Ouch!” ↩
at p. 9. The web site http://www.razorbacks.com is still operational, and has links to sites for the Razorback Sucker fish (endangered), Razorback Sports Fishing Charters (Delaware), and Australian Razorbacks. The University of Arkansas controls the site: http://arkansasrazorbacks.com. ↩
WIPO Case No: D2006-0277. ↩
537 F. Supp.2d 1302 (D.C. GA. 2008). ↩