[Fwd: Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy]

[Robin Gross]

NCUC'ers,

The next few days is a good time to reach out to colleagues in other
constituencies to request support for the NCUC amendments on new gtld
policy.   The council will discuss the draft gnso recommendations this
Thursday, so we really need your help to garner support in other
constituencies to protect free expression in new gtld policy at ICANN.

Thanks,
Robin


-------- Original Message --------
Subject: 	Re: [gtld-council] NCUC proposals to amend gnso
recommendations on new gtld policy
Date: 	Mon, 04 Jun 2007 16:08:22 -0700
From: 	Robin Gross <robin at ipjustice.org>
Reply-To: 	robin at ipjustice.org
Organization: 	IP Justice
To: 	Mike Rodenbaugh <mxr at yahoo-inc.com>
CC: 	gtld-council at gnso.icann.org, gnso-rn-wg at icann.org
References: 	<4661A776.1050206 at ipjustice.org>
<9B5C12743D26C94CB3CB22524DC98D4E0434B009 at SNV-XCHMAIL2.xch.corp.yahoo.com>



Hi Mike,

Well US courts have consistently disagreed with your view and ruled that
there are numerous lawful uses of a trademark in a domain name by
someone other than a trademark holder.  Trademark law has never granted
a monopoly on language.  It only regulates specific uses of words or
symbols, and only commercial uses.  Non-commercial expression is not
regulated by trademark rules under the law.

One of the most cited US legal precedents to examine the boundary of
free expression rights and trademark rights is Taubman v. Webfeats 319
F.3d 770 (6th Circuit 2003), an early "cyber-gripe case".   The court
explained, "we will first explain the interrelation between the First
Amendment and the Lanham Act. ... The Lanham Act is constitutional
because it only regulates commercial speech, which is entitled to
reduced protections under the First Amendment."   In Taubman the
appellate court held that many expressions of a mark were not a
'trademark use' and not likely to cause confusion and  therefore
"outside the jurisdiction of the Lanham Act and necessarily protected by
the First Amendment."

The 6th Circuit spoke directly to our issue, "The rooftops of our past
have evolved into the Internet domain names of our present.  We find
that the domain name is a type of public expression, no different in
scope than a billboard or a pulpit, and [defendant] has a First
Amendment right to express his opinion about [plaintiff], as long as his
speech is not commercially misleading, the Lanham Act cannot be summoned
to prevent it."  Taubman explicitly held there First Amendment
protection to use a trademark in a domain name to criticize a business.
See:
 http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06

Another US circuit, the 9th, has also set similar precedent in Bosley
Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005) over a non-commercial
gripe-site using a trademark in its domain name.  Again the court agreed
that the non-commercial expression of opinion was not a "trademark use"
subject to regulation by the mark holder. "[Defendant] is not
[plaintiff's] competitor; he is their critic.  His use of [plaintiff's]
mark is not in connection with a sale of goods or service - it is in
connection with the expression of his opinion about [plaintiff's] goods
and services.  [Plaintiff] cannot use the Lanham Act either as a shield
from ... criticism, or as a sword to shut [defendant] up."
See:
http://www.ca9.uscourts.gov/ca9/newopinions.nsf/3B0C93358B88F28D88256FD90056994B/$file/0455962.pdf?openelement

The US 2nd Circuit has also provided strong protection for noncommercial
speech and recognized that words and phrases are used in many different
ways in a digital environment, to serve differing goals, and that not
all of these uses are controlled by trademark law.  In 1-800 Contacts v.
WhenU.com 414 F3d 400 (2d Cir. 2005), the 2nd Circuit ruled that the
vast majority of such uses were outside the scope of trademark law and
only those specific uses visually associated with the sale of
goods/services could be regulated by trademark.
See:
www.eff.org/legal/cases/1800*contacts*_v_whenu/decision.pdf

So the US law is clear in permitting numerous non-commercial uses of a
trademark in a domain name, to discuss, criticize, compare, provide
general information about a company or  product.  Freedom of expression
is a legally recognized value that trademark rights do not supersede.
The current gnso draft recommendations diverge significantly from the
law on this point.

Robin

Mike Rodenbaugh wrote:

>I disagree with the NCUC's suggested change to Reco #3.  There are ample
>numbers of 2d and higher lever domains that can be used for freedom of
>expression, with exponentially more to come.  NCUC seems to suggest that
>some prospective TLD operator would want to run an entire TLD full of
>gripe sites as to one trademark.  Such a business would not be protected
>under the guise of 'freedom of expression' under any nation's law that I
>am aware of.
>
>The current Reco is tied to a core ICANN value of protecting security
>and stability.  If a TLD corresponding to a well-known trademark were
>awarded to any entity other than the trademark owner, it is highly
>likely that many users would be confused and placed at higher risk of
>crime through activity at that TLD.  This is the same security and
>stability concern that underlies the UDRP, as to 2d level and higher
>domains.
>
>
>Mike Rodenbaugh
>
>Sr. Legal Director
>
>Yahoo! Inc.
>
>
>
>NOTICE:  This communication is confidential and may be protected by
>attorney-client and/or work product privilege.  If you are not the
>intended recipient, please notify me by reply, and delete this
>communication and any attachments.
>
>
>-----Original Message-----
>From: owner-gtld-council at gnso.icann.org
>[mailto:owner-gtld-council at gnso.icann.org] On Behalf Of Robin Gross
>Sent: Saturday, June 02, 2007 10:23 AM
>To: gtld-council at gnso.icann.org
>Subject: [gtld-council] NCUC proposals to amend gnso recommendations on
>new gtld policy
>
>NCUC has developed 5 new proposals to amend the draft gnso
>recommendations on new gtld policy.
>
>These proposals are meant to give some recognition to freedom of
>expression values in our recommendations.  The proposals also address
>concerns about ICANN becoming enmeshed in national policy debates and
>would keep the Internet core neutral of such conflicts.
>
>The 5 proposals are not meant to be accepted only as a package, but
>should be considered individually also.
>
>NCUC proposals to amend draft GNSO recommendations:
>  http://www.ipjustice.org/ICANN/062007.html
>
>I welcome an opportunity to discuss the amendments at greater length and
>
>will try to answer any questions you may have on them.
>
>Thank you for considering them.
>
>Best,
>Robin
>
>
>
>
>