Thursday, April 23, 2009

Wikipedia challenges (noncom) artists group using a domain name to parody theirs

Corynne McSherry of Electronic Frontier Foundation has an important discussion on a "trademark parody" case.

It seems that the Wikipedia Foundation is going after the domain name of a noncommercial site that discusses “Wikipedia Art” after some parties had an entity with such art removed from Wikipedia because it was not sufficiently “encyclopediac”.

Wikipedia is trying to stop the group from using the name. But it would not violate trademark law, because it is non-commercial, amounts to commentary or parody, and does not use a Wikipedia trade dress or logo. It is possible that Wikipedia could enter a dispute with ICANN and force administrative resolution with ICANN’s Uniform Dispute Resolution Policy (UDRP). They might prevail, but that would not be binding in US courts. Even the "prospective" nature of the 2006 Trademark law would not make a difference here.

The EFF story is here.

The Wikipedia art site is, “a collaborative performance and public intervention.”

Wednesday, April 15, 2009

Company, organizations, people, and domain names can "mashup" all too easily

The world is such a small place (compared to Jupiter, anyway), that it’s getting harder and harder for companies, organizations, movie and book titles, and domain names to stay out of each other’s way.

Perhaps this is just part of the inevitable “mashup” talked about in Joshua Cooper Ramo’s new book “The Age of the Unthinkable” (Little Brown, 2009), but I tried to find out a little about “Kissinger Associates.” A site called “Biblio Tec Play” has a long discussion of the cabal (they include Geithner and support the idea that there are more Democrats in high finance on Wall Street than Republicans), link here.

Wikipedia gives some discussion of the past period as Kissinger McClarty, and Biblio gives a domain name reflecting that ( that gives a 403 Forbidden error – very strange. The descendants of Frost / Nixon and Henry Kissinger really don’t want to be too transparent. But “Domain Tools” says they own about 24 other domains.

And then there is another company, in Pennsylvania, called Kissinger Associates, that appears to be totally separate. It’s domain is this and appears to be a more “conventional” consulting firm for corporations. It claims to have trademarked several phrases, which I could not confirm at – although, as a matter of law, it’s possible to create a trademark right without registering it, although registration is generally necessary to make it stand up in court. (There is a nice PDF from West Virginia University by William W. Aylor, Trademark Attorney, that explains the basics, here.

Of course, this sort of situation will occur when people start their own businesses using their own names, as names tend to appear with a great deal of multiplicity in our society.

Even non-profits run into this. There is an “Environmental Leadership Program” site which has nothing to do with the paid “Environmental Leadership” section in The Washington Post today (April 15).

Saturday, April 04, 2009

2nd Circuit rules that plaintiff's can sue over "misleading" Internet ads for trademark infringement; overall impact very unclear

Electronic Frontier Foundation is reporting a potentially damaging ruling from the Second Circuit in trademark law on April 3.

Friday, The Second Circuit reversed a lower court ruling and maintained that a lawsuit against Google by Rescuecom can go forward. EFF’s copy of the Opinion is here. The complaint alleges tradermark infringement, dilution under the Lanham Act, and false presentation of origin.

At issue were programs called Adwords and Keyword Suggestion. The court opinion (here), around page 6, describes how this process works. Rescuecom alleges that the appearance of an ad purchased by a competitor may cause the visitor to believe “trademark confusion as to affiliation, origin, sponsorhip, or approval of service.”

The Second Circuit had previously ruled, in 2002, in the case of “1-800-Contacts v. When-U” that “he use of trademarks to launch ads does not, by itself, trigger trademark liability” (EFF) and that led many observers to believe that the Second Circuit would throw this new case out, following its own precedent. It would seem to me that the passage of the Trademark Dilution Revision Act late in 2006 may have contributed to its partial reversal, because the Revision Act allows for the idea of "prospective" dilution.

However, there at least seems to be a question now as to the practice of letting a company buy and ad based on a keyword based on a competitor. Does this cause “confusion”? To me, no, as long as I understand that I have to actually read the advertisement in context. But ads are not “literary” they way web content like this posting purports to be. The are designed to sell things. Trademark law has to deal with one of the sharpest divides in our free market culture: the practical need to manipulate people to buy things from you, versus the need to educate them to think for themselves. Trademark is designed to make the former efficient enough that people can make a living selling. Copyright law is the tool much more related to the latter social aim.

The ruling does not mean that Rusecom will win at trial. It still has to prove that consumers are really confused. But there is a problem with the “average consumer”. And there are real problems in that consumer mentality varies so much as you go from one area to another. Non-profit organizations (like SLDN, with which I network) have to “sell” an idea, but to an audience that is generally much more educated than one which is out to buy cheeseburgers. What I wonder is how courts can establish any concrete tests for likelihood of confusion in so many contexts. I wonder if the Second Circuit really understood this – a surprise given its 2002 ruling.

Corynne McSherry wrote the legal analysis on Electronic Frontier Foundation’s website yesterday, “Second Circuit Expands Trademark Rights, Restricts Consumer Search Options”, link here. Her analysis indicates the practical effect on sellers of ad space: they cannot easily dismiss litigation on legal grounds, and potential “plaintiff’s bars” can find them easy targets. Again, to me, this sounds like an area where we ought to have a “loser pays” system (an idea advocated by ABC’s John Stossel) to discourage frivolous litigation in volatile areas where it is difficult to articulate clear legal divides, like this one.

On the surface, the litigation doesn’t seem to threaten holders of domain names, or publishers or distributors of book or movie titles with frivolous infringement claims. But the whole infrastructure for Internet self-publishing depends on an effective advertising mechanism, even for publishers who don’t use it, and even for writers or publishers who don’t themselves purchase adwords, because they depend on the mechanism funded by others who do. This is a good example of collective legal “karma”

There is still a trial on merits to follow. I hope that this case, however, will first be appealed to the Supreme Court. This ruling makes for an alarming development.

(Please see also an earlier posting about this case June 10, 2008 on this blog.)