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

[Robin Gross]

Is there any input from outside the US regarding case law on the
boundary between free expression and trademark rights in domain names?

Thanks,
Robin

-------- Original Message --------
Subject: 	Re: [gtld-council] NCUC proposals to amend gnso
recommendations on new gtld policy
Date: 	Tue, 5 Jun 2007 01:15:20 +0200
From: 	Liz Williams <liz.williams at icann.org>
To: 	robin at ipjustice.org
CC: 	gtld-council at gnso.icann.org
References: 	<4661A776.1050206 at ipjustice.org>
<9B5C12743D26C94CB3CB22524DC98D4E0434B009 at SNV-XCHMAIL2.xch.corp.yahoo.com>
<46649B66.8090301 at ipjustice.org>



Hi Robin

Thanks for this ongoing debate.  Do you have any other examples that
would help the discussion outside the US?  Not all countries have any
First Amendment-like rights and it would be useful to have this
discussion on a broader basis.

Liz


.....................................................

Liz Williams
Senior Policy Counselor
ICANN - Brussels
+32 2 234 7874 tel
+32 2 234 7848 fax
+32 497 07 4243 mob




On 05 Jun 2007, at 01:08, Robin Gross wrote:

> 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
>>
>>
>>
>>