Monday, February 13, 2012

Complainants often go for the "weakest link" to harass speakers -- that's the domain registration system

I need to continue the discussion from last week’s post. 

At about the one hour mark on the video below (from 2009, at Case Western Reserve in Cleveland), Corynne McSherry from Electronic Frontier Foundation talks about the recent tendency for complaining parties now to go to domain name registrars and make up phony trademark complaints, even when they know they won’t work, to harass speakers.

She calls the domain name registration system the “weakest link” in the armor protecting speech.  (Other writers have spoken of the way domain names are stolen about the time of renewal.)  

She gives several examples.  Someone created a parody site called “nytimes-se” (special edition), and one of the companies with spoof ads, De Beers, went to the site’s domain name registrar to get the site knocked down. (Here’s another account).   There are some examples, such as one involving a developer around Union Square, NYC (near where I lived in the 1970s), and another involving the State of Kentucky trying to shut down what it called illegal gaming sites, some of which had no connection with the state. 

The Lanham Act (source) would be the governing US Code for courts.  Common defenses include non-commercial use.  Legally, parody in mash-ups shouldn’t cause trademark infringement, because it’s not intended to confuse consumers with competitors.  McSherry recommends using an ISP with a “backbone”, and preferably and ISP that is also your registrar, or has good relations with a major registrar.  We’ll not the location for the UDRP, or Uniform Domain Name Resolution Policy at ICANN, here.

On Part 2 (the YouTube video in last week’s post), Boston University Law Professor Stacy Dogan talks about the liability claims against search engine providers, when domain names or wordmarks occur as keywords for searches, which then generate paid ads, which might be from competitors.   This sounds more like a business model problem for search engine companies than usual “small fry” speakers, although any business model issue could eventually affect “barrier to entry”.  Stacy talks about the unsettled controversy over whether the opportunity for legal use trumps infringement, or whether a business model could be predicated on infringement (as with copyright), and when there is cause for action.   One problem is that a mark registered by one site would turn up competing entries, probably unrelated, from other sites using domain names with similar verbage.

Trademark, however, is still different from copyright.  Calling attention to competition, or giving air to it, is not a violation unless it actually creates the likelihood of confusion.  Informative use is permissible, and resellers can use marks to generate more sales (not the case with copyright).

 No one discussed whether the 2006 law concerning prospective infringement has significantly affected litigation.

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