|Trademarking is a method of Protecting 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|
ICANN, 7 has instituted an arbitration procedure for determining whether a trademark owner has the right to take away a domain name.8 Whether U.S. courts will demur to the decisions of ICANN remains to be seen.
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.netatty.com/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. 9 The court found that 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. 11
The defense is limited, however, and will generally not avail when there
is commercial intent 12 or alternative
avenues of communication. 13
1 15 U.S.C. §§ 1114(l) and 1125(a).
2 15 U.S.C. § 1125(c).
3 Uniform Resource Locator.
4 Another possible violation of trademark could occur through the use of false headers in email. See e.g., Hotmail Corp. v. Van$ Money Pie Inc., 47 U.S.P.Q.2d 1020 (N.D. Cal. 1998).
5 See, e.g., Maritz, Inc. v. CyberGold, Inc., 947 F.Supp. 1338 (E.D.Mo. 1996); Computer Currents Publishing Corp. v. Jaye Communications, Inc., 968 F.Supp. 684 (N.D.Ga. 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 ICANN is the International Coalition of Assigned Names and Numbers.
8 See http://www.icann.org/udrp/udrp.htm
9 Patmont Motor Werks Inc. v. Gateway Marine Inc., C-96-2703 (N.D.Cal. 1997). Judge Thelton Henderson found that the use of the trademark in the URL constituted “nominative fair use.” Id.
10 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”).
11 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”).
12 Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994).
13 Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 206 (2d Cir. 1979).