Why are these messages being reposted to the list again?
On 12-Feb-99 Roeland M.J. Meyer wrote:
> [re-threaded]
>
> At 06:12 PM 2/11/99 -0500, Harold Feld wrote:
> >A federal district court in California has recently opined on a "
> ><famousmarks>sucks.com" cite.
> >Bally Total Fitness Holding Corp. v. Faber, C.D. Cal., No. CV 98-1278 DDP
> >(MANx), 12/21/98 ). (sorry, the only URL I have is a BNA subscription site,
> >but I think the fed courts in CA have their decisions online).
> >
> >The court awarded summary judgment to the nameholder.
> >The court concluded that the use was clearly not commercial, noting
> >in passing that the Internet is a communications medium and not merely
> >a medium of commerce. Assuming that the the eight factor test for
> >likelihood of confusion applied, the court found that the goods were
> >substantially
> >different (physical fitness v. consumer commentary), that the marketing
> >channels
> >were *not* identical (mere use of the Internet did not establish identical
> >marketing channels, an important point IMO), and, most importantly, no
> >reasonably consumer could conclude that "ballysucks.com" was the
> >officialBally's site, given (a) that the site contained a prominent
> >disclaimer
> >and (b) that the word "sucks" is clearly pejorative.
> >
> >The court also found against the plaintiff on dillution and tarnishment
> >counts, noting that the name-holder's first-amendment right and
> >non-commercial use defeat the plaintiff's claims.
> >
> >The only downside, IMO, was that the court noted the lack of a link
> >between the ballysucks.com page and the nameholder's commercial
> >page devoted to web design. Lamentably, this continues to give credence
> >to the expansive adoption of speech principle ennunciated by the
> >District Court of N.J. in Jews for Jesus v. Brodsky (DNRC's amicus
> >brief in support of Brodsky's appeal may be found at www.domain-name.org).
> >
> >This seems to me to be an utterly right result. The court looked not merely
> >to a famous element in the name, but to the whole string and the
> >content of the page.
> >
> >This case also provides a splendid example of how the WIPO process could
> >muck things up. Consider-
> >
> >a) There is no assurance whatsoever that the WIPO process would have engaged
> >in an identical analysis.
> >
> >b) The WIPO process would add a layer of expense to the process easily
> >borne by the TM holder but burdensome to the name holder.
> >
> >c) If the TM holder lost before WIPO, it remained in the identical position
> >as before the WIPO adjudication (and apparently need not pay the
> >nameholder's
> >costs) and may now file in court.
> >
> >d) By contrast, if the TM holder won, the nameholder would be shut out
> >from its site and forced to sue to regain the name.
> >
> >e) The court's analysis would be clouded by the need to interpret the WIPO
> >adjudication.
> >
> >f) Valuable and publicized precedent would be lost.
> >
> >
> >Harold
>
>
> ___________________________________________________
> 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
> ___________________________________________________
> KISS ... gotta love it!
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E-Mail: William X. Walsh <[EMAIL PROTECTED]>
Date: 12-Feb-99
Time: 16:00:43
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