by Timothy J. Walton
Trademarking is a method of building brand recognition. Most suits over trademark violation involve consideration of whether the infringing conduct resulted in confusion in the marketplace. 1 Confusion can be over origin (such as appropriating the name of a competitor) or misrepresentations regarding nature or quality (like claiming that orange juice is “freshly squeezed”). To prevent dilution of famous marks, however, a suit need not involve confusion. Mere usage of a trademark may be a violation if unauthorized. 2
In the online context, trademark violation generally occurs in one of two ways: within the URL 3 or within a link. 4 A great deal of litigation has revolved around whether attempts to register domain names that contain a protected trademark are violations. 5 The short answer is that such attempts are violations. Domain name owners who have usurped trademarked names have been forced to surrender the registered name. 6 In the early days of the Internet, many enterprising ‘netizens registered domain names of famous companies to sell a profit when the company decided it need a Website.
InterNIC, the company that grants domain names in the United States, 7 has been forced 8 to institute a policy 9 regarding trademarks because of the intense vitriol surrounding the issue. 10 Domain name applicants must now affirm that the requested name does not infringe upon the rights of any third party and that use of the name will not involve any unlawful purpose. If a dispute arises, the domain name holder is given thirty days to show that it has the right to use the trademark. If the proof is not satisfactory, the domain name will be placed on hold until the dispute is resolved through litigation or arbitration. 11
Trademarks can appear in portions of the URL other than the domain name. A subdirectory name can use a trademark, or a specific file name can contain a trademark. For example, the fictional URL http://www.sflegal.net/attorney/pepsi/pizzahut.html would seem to violate two trademarks. But a federal judge in California has ruled that such usage is entitled to less protection than domain names because it is merely descriptive and does not entail the likelihood of confusion that domain name usage does. 12 As long as the content of the page does not lead to confusion about source, then there is no violation when a server uses a trademark as a descriptive indicator.
As in other areas of law,
freedom of speech may be a defense to suit for violation of trademark,
particularly when satire or parody is involved. 14
The defense is limited, however, and will generally not avail when there
is commercial intent 15 or alternative
avenues of communication. 16
4 Another possible violation of trademark could occur through the use of false headers in email. See e.g., Deidl v. Greentree Mortgage Co. (D.C.Col. 1997) (complaint alleges defendant used plaintiff’s domain name in return path of spam email) and Typhoon, Inc. v. Kentech Enterprises, et al. (C.D.Cal.) (complaint filed August 20, 1997).
6 See e.g., Planned Parenthood v. Bucci, 97 Civ. 0629 (KMW) (S.D.N.Y. 1997) (finding that use of trademark created likelihood of confusion with regard to source);but see Desknet Systems, Inc. v. Desknet, Inc., 42 U.S.P.Q.2d (BNA) 1954 (S.D.N.Y. 1997) (denying request for preliminary injunction for lack of diligence).
7 Network Solutions, Inc., as agent of the National Science Foundation, granted the contract for registering U.S. domain names to InterNIC. A class action lawsuit against both Network Solutions and the National Science Foundation alleges that both are without authority to exclusively run the domain name registry and that the fee amounts to an unconstitutional tax. Thomas et al. v. Network Solutions, Inc., and National Science Foundation, 97 Civ. 2412 (D.C.DC.) (complaint filed November 1997).
8 After being named co-defendant in several actions: see e.g., Knowledgenet, Inc. v. Boone, No. 94-7195 (N.D.Ill.) (settled in 1995). The new policy has not kept Network Solutions Inc. from being named as defendant in trademark disputes, however. See e.g., Academy of Motion Picture Arts and Sciences v. Network Solutions, Inc. (C.D.Cal.) (complaint filed August 26, 1997).
9 http://rs.internic.net/domain-info/internic-domain-6.html . The policy seems designed more for the purpose of protecting Network Solutions, Inc. from liability than for the benefit of protected marks.
10 Available at ftp://rs.internic.net/policy/internic/internic.domain.policy .
11 This policy of placing names on hold is being questioned in a number of pending suits. See, e.g., Giacalone v. Network Solutions, Inc. and Ty, Inc., No. C-96-20434 (N.D.Cal. filed June 20, 1996). One such suit has resulted in a preliminary injunction preventing InterNIC from placing the domain name on hold. Clue Computing, Inc. v. Network Solutions, Inc., (preliminary injunction ordered June 25, 1996). InterNIC has since agreed in several cases not to place the domain name on hold. See e.g., Juno Online Services v. Juno Lighting, Inc. (E.D.Ill. 1997).
13 Rogers v. Grimaldi, 695 F. Supp. 112, 120-21 (S.D.N.Y. 1988), aff’d 875 F.2d 994 (2d Cir. 1989) (finding that biographical movie was artistic expression and not “primarily intended to serve a commercial purpose”).
14 L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987), cert. denied 483 U.S. 1013 (1987); but see Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972) (finding tarnishment of soft drink’s mark with substitution of word “cocaine”).