"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
