This illustration for Tim O’Reilly’s article “What Is Web 2.0?” suggests the challenge that CMP created for itself in maintaining WEB 2.0 as a trademark (as opposed to a meme). Forget for the moment whether lawyers are necessary, or whether it was bad PR for CMP to send a demand letter, or if O’Reilly, as a champion of open-source ideas, should be held to different standards, or whether somebody was rude to somebody in an email.
There is a branding and trademark protection point here.
When the ITU was filed for WEB 2.0 in 2003, WEB 2.0 was, imho, an inherently registrable mark. I base this on one fact and one assumption. The fact is that the PTO (correctly) didn’t give the mark a descriptiveness objection and the assumption is that the term was not widely used in 2003 (although some dispute this). So CMP had the potential for a strong exclusive trademark.
But O’Reilly took another (understandable) tact. It promulgated the term to have universal meaning other than as an indicator of a CMP/O’Reilly product. When O’Reilly, for example, talks about WEB 2.0 principles and WEB 2.0 applications and WEB 2.0 companies, he breaks the link of meaning between the trademark and his company’s services.
So, despite what Mr. O’Reilly states in paragraph of his post today, this may indeed be that rare trademark creature, genericide, but self-incurred genericide.
This can be a totally acceptable branding strategy. But the trademark lawyer has to advise the client that adopts this ‘brand as buzzword’ strategy that its likely result is razor-thin trademark protection, and backlash when those thin rights are asserted.
Lousiana has statutes that seek to prevent misleading usages of the terms CATFISH and CAJUN. An importer of what it viewed as Chinese catfish (clearly labeled as orginating in China) sold under the CAJUN BOY trademark, ran afoul of the law. Fifth Circuit struck down the Catfish Statute as unconstitutional and held that the Cajun statute had been erroneously applied to plaintiff.
Piazza’s Seafood World v. Odom, 05-30098 (May 4, 2006).
UPDATE: 43(B)log analysis here.
Foley & Lardner: “Flea Market’s Theory of Secondary Liability Doesn’t Fit, So Court Doesn’t Buy” discussing Arista Records v. Flea World (DNJ 03-2670 3/31/06 (Flea market held to be contributory infringer based on vendor’s sale of infringing CDs).
According to my web software, which cannot be trusted, the Trademark Blog had one million hits this month.
This is all the more notable given that there were no decisions involving Perfect 10 this month.
Respondent in UDRP alleges that it is a cat, which is not an affirmative defense, and possibly casts doubt on the rest of the allegations.
Must read opinion for that dry British wit:
Morgan Stanley v. Meow, NAF 671304 (May 22, 2006).
Practice pointer: If you are cat, use one of those domain name proxy services.
Web 2.0 t-shirt here.
Wikipedia on Web 2.0 here.
Blog of IT@Cork, organzation that received demand letter from CMP (parent of O’reilly) re use of WEB 2.0 to describe its IT@Cork Web 2.0 conference, here.
O’Reilly essay: What is Web 2.0
Most recent post from O’Reilly.
Cory Doctorow on the controversy.
IMHO, the 2005 O’Reilly piece begins and ends the discussion. If you coin and promulgate a term, you can sell it as a buzzword or you can sell it as a brand, but under trademark law, it’s virtually impossible to do both. (And if I want to promote the Trademark Blog Web 2.0 Conference about protecting trademarks in the Web 2.0 space, then I will cite the O’Reilly essay as Exhibit A as to how I am using the term to describe a quality of my offering.
p.s. CMP is a trade publication specialist. It owns trademarks like VIDEOGRAPHY and CALL CENTER. Its lawyers are familiar with Section 2(f) of the Lanham Act.
Wikipedia on the term “Drinking the Kool-Aid” here.
The new .MOBI top level domain name is going live. There is a sunrise period this week until the 29th for entities that can establish that they are part of the ‘mobile industry’ (established by membership in one of several mobile industry organizations).
A second sunrise begins June 12 for holders of trademark registrations (any industry) that were granted prior to July 2005.
Then, on August 28, it’s every registrant for themselves.
.MOBI Sunrise FAQs here.
List of eligible mobile industry organizations:
AMTA, CTIA, CWTA,GSMA, MEF, MMA, NZ Wireless Forum and the RCA.
The language of S2306 follows:
Introduced by Sens. LITTLE, ALESI, BRUNO, DeFRANCISCO, FARLEY, FUSCHIL-LO, HANNON, LARKIN, LEIBELL, LIBOUS, MALTESE, MARCELLINO, MARCHI, MAZIARZ, MEIER, MORAHAN, PADAVAN, RATH, SALAND, SKELOS, VOLKER, WINNER – read twice and ordered printed, and when printed to be committed to the Committee on Consumer Protection
AN ACT to amend the general business law, in relation to cyber piracy protections and the unlawful registration of domain names
The People of the State of New York, represented in Senate and Assembly, do enact as follows:
1 Section 1. The general business law is amended by adding a new article
2 9-C to read as follows:
3 ARTICLE 9-C
4 CYBER PIRACY PROTECTIONS; DOMAIN NAMES
5 Section 146. Short title.
6 147. Definitions.
7 148. Unlawful registration of domain name.
8 149. Civil remedies.
9 Section 146. Short title. This article shall be known and may be cited as
10 the “domain names cyber piracy protections act.”
11 Section 147. Definitions. For the purposes of this article, the following
12 terms shall have the following meanings:
13 1. “Domain name” means any alphanumeric designation that is registered
14 with or assigned by any domain name registrar, domain name registry, or
15 other domain name registration authority as part of an electronic
16 address on the internet.
17 2. “Internet” means the international computer network of both federal
18 and non-federal interoperable packet switched data networks.
19 3. “Traffic in” refers to transactions that include, but are not
20 limited to, sales, purchases, loans, pledges, licenses, exchanges of
1 currency, or any other transfer for consideration or receipt in exchange
2 for consideration.
3 Section 148. Unlawful registration of domain name. 1. No person shall regis-
4 ter a domain name that consists of the name of another living person, or
5 a name substantially and confusingly similar thereto, without that
6 person’s consent, with the specific intent to profit from such name by
7 selling the domain name for financial gain to that person or any third
9 2. A person who in good faith registers a domain name consisting of
10 the name of another living person, or a name substantially and confus-
11 ingly similar thereto, shall not be liable under this section if such
12 name is used in, affiliated with, or related to a work of authorship
13 protected under title 17 USC, including a work made for hire as defined
14 in 17 USC 101, and if the person registering the domain name is the
15 copyright owner or licensee of the work, the person intends to sell the
16 domain name in conjunction with the lawful exploitation of the work, and
17 such registration in not prohibited by a contract between the registrant
18 and the named person.
19 Section 149. Civil remedies. 1. Upon the commission of a violation of this
20 article, an application may be made by the public service commission to
21 a court having jurisdiction to issue an injunction against the regist-
22 rar, domain name registry, or other domain name registration authority,
23 and upon notice to the respondent of not less than five days, the court
24 may award injunctive relief, including the forfeiture or cancellation of
25 the domain name. If it shall appear to the satisfaction of the court
26 that the respondent has committed a violation of this article, the court
27 shall enjoin and restrain any further violation without requiring proof
28 that any person has, in fact, been injured or damaged thereby.
29 2. In addition to injunctive relief, the court may fine the registrar,
30 domain name registry, or other domain name registration authority, one
31 thousand dollars for each day the violation occurs. The court may also
32 order the transfer of the domain name as part of the relief awarded.
33 3. In a civil action commenced under this section, a domain name shall
34 be deemed to have its situs within the state if the domain name regist-
35 rar, registry, or other domain name authority that registered or
36 assigned the domain name is located within the state.
37 Section 2. This act shall take effect on the one hundred twentieth day after
38 it shall have become a law; provided, however, that any rules and regu-
39 lations necessary for the implementation of this act may be promulgated
40 on or before its effective date.