At 04:07 PM 2/2/99 -0500, Martin B. Schwimmer wrote:
>MBS:
>>>So, for example, lots of Europeans can be buying and selling on ebay.com.
>>>If ebay has not filed for TM protection in Germany, I can go to Germany,
>>>file for ebay.com covering electronic auction services, get a registration,
>>>and, theoretically, enjoin ebay.com from doing business in Germany under
>>>that mark.
>RM:
>>There are a number of issues here, some of them technical. It is a fact
>>that ebay.com, is in the SF Bay Area. Whether trade marked or not, it is
>>registered in COM. Because of the Internet, it is visible world-wide. Such
>>an injunction, from Germany, has no standing in California or US courts.
>>Especially true if ebay.com is registered with USG PTO. Were I ebay.com, I
>>would simply ignore such an injunction (make them go through the expense of
>>bringing it into my jurisdiction, where they'd lose). But IANAL so don't
>>take my advice.
>>What's Germany going to do, filter at the borders? I don't think so.
>MBS:
>Ok, as to the enforceability of a German injunction in a US federal court,
>you are probably right in most cases. As for NSI honoring a court order,
>its FAQs state that it would honor an order from a court of competent
>jurisdiction anywhere in the world. Whether they have done so already we
>would have to ask NSI. And ebay.com would have options in the US.
RM:
If you actually read the dispute policy, they *require* a trademark that
_pre-dates_ the first use of the domain. Such a German trademark, made
after the fact, would fail that test. In this case ebay.com doesn't even
have to register and post-date, with US PTO, as I suggested. They simply
have to do nothing other than remind NSI of NSI's own policy document.
Under US law, I believe, NSI is prohibited from honoring such a German
injunction, against a US company. (IANAL applies) This is especially true
when, in fact, ebay.com complies with US law, and has a contract under US
jurisdiction, with another US company, that is valid (does not breach US
law). Such an injunction would have to comply with US trademark law. I am
confident that such injunctive relief would not be granted, prime facie.
Granted, were I ebay, I'd either already have a registered US trademark, or
file one as soon as I was notified of the German case, just to hedge the
bet. Even a pending trademark would strengthen the case. (There are times
when I do believe in over-kill, this would be one of them). Again, IANAL.
Let's sever the rest of your points;
>MBS:
>However, suppose ebay was interested in the german market and the
>second-comer did get an injunction against ebay in Germany.
RM:
Okay, and right about that time of the initial filing, ebay is headed
straight to the US PTO to register and back-date their trademark, to the
proper date.
>MBS:
>First, ebay would likely to be enjoined from advertising in Germany - that's
>enforceable.
RM:
Only in German media. Germany still has access to International media.
There is also the WEB, which is the newer advertising media. Many Internet
companies do not advertise in broadcast media anyway. It's a small loss.
However, right about this time, the US PTO should have finished my brand
new back-dated trademark filing and ebay should challenge the German
injunction, were I ebay.
>MBS:
>Ebay could be enjoined from shipping goods into Germany (i
>know, ebay doesn't ship - it's clients do - so suppose we are talking about
>amazon.com or some other e-commerce company). So the German injunction
>could stop shipments with German customs.
RM:
Only insofar as the package carries the enjoined trademark. The plain brown
wrapper always gets through. In the case of a book-seller, only an invoice
would indicate the source. That could be mailed separately.
>MBS:
>And as for actually blocking the transmission of ebay.com into Germany - a
>server-based filter would not be completely effective but what if it
>reduced hits from Germany by 50% - that would hurt.
RM:
That was tried during the CoS fracas and also with that anonymous re-mailer
in Sweden. It was a 100% failure in both cases. Also that Bavarian official
that tried to censure AOL and CompuServe, that failed too. It would fail in
this case as well. That concept has a pretty good record of failure. It
turn out that the only way it could be stopped is to cut all Internet
traffic. That is not going to happen.
>MBS:
>The point is that the theoretical TM pirate from Germany would have
>leverage over ebay and that the US web-oriented company may be in for rude
>surprises abroad (Yahoo has already experienced unpleasantness in Israel
>and China).
RM:
No leverage at all, I'm afraid. But, I'd like to hear more about Yahoo's case.
>RM:
> Note that NSI's dispute resolution policy acknowledges prior use
>>because NSI is a US jurisdiction company and has to abide by US law.
>
>MBS:
>Actually that's part of the problem - NSI policy does not acknowledge prior
>use - the DN owner may have been co-existing with the TM complainant for a
>100 years but if it doesn't have a federal registration, the TM owner wins.
RM:
See above: "they *require* a trademark that _pre-dates_ the first use of
the domain"
>MBS:
>I also note that the ability to
>recognize what is and is not common law use has been much hashed out in US
>law and is complex - I do not believe someone in the registry/registrar
>should be forced into having to make what is in essence a finding of fact
>and law.
RM:
Here we are in complete agreement. Let the contestants go to court, fight
it out, and bring the results to the registry, via court order, in
competent jurisdiction.
>MBS:
>>The problem, as Vint Cerf has recently highlighted, is that DNS and
>>trademark law are fundamentally incompatible. One simply can not have
>>multiple references for the same name, unlike in trademark law, because
>>geo-political proximity issues, a compromise which much trademark law is
>>based on, are eliminated by the Internet itself. The only solution possible
>>is that trademark law can not apply to DNS entries a priori. They must be
>>adjudicated ad hoc.
>
>there was a headline in today's New York Times - "TheGlobe.com buys
>azzazz.com from factorymall.com" In certain respects a DN registry is a
>trading name registry (non-commercial use disclaimer, etc. etc.). Up until
>now, trading name registries have been run by government entities pursuant
>to statutes, particularly trade mark statutes. So with due respect to Mr.
>Cerf, we should work to make the systems compatible (or at least mitigate
>the incompatability).
There is no way, short of completely re-designing either/both systems. It
is certain that trademark law, short of world-wide legislative action,
would NOT be re-written. Replacing DNS resolvers, on 250 MILLION machines,
is equally non-trivial. We are discussing inherent traits with plenty of
inertia behind them. When I said "incompatible", and what Vint Cerf clearly
meant, was that the two weren't even in the same dimension, there is no
commonality, no basis for congruence. A trademark is nothing more than a
string of characters that don't have to have any further meaning. A DNS
name is an other form of address. It has inherent meaning that trademarks
do not have to have, but DNS names have by definition. A DNS name will
always be associated with the address of a host on the network.
___________________________________________________
Roeland M.J. Meyer -
e-mail: mailto:[EMAIL PROTECTED]
Internet phone: hawk.lvrmr.mhsc.com
Personal web pages: http://staff.mhsc.com/~rmeyer
Company web-site: http://www.mhsc.com
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