Interesting aside re the SiteFinder rhubarb via ICANNWatch: Apparently there is a National Aeronautics and Space Act of 1958, which prohibits the use of the NASA name in association with any business.  ICANNWatch asks whether the fact that SiteFinder directs traffic resulting in typing in SHUTTLE-NASA.COM, for example, to a Versisign-controlled page, violates the Act.  If so, this would concern AOL and MSN as well. ICANNWatch then answers its own question pointing out that while the fact pattern possibly satisfies the ‘use in connection with’ element of the statute, such use doesn’t convey endorsement of SiteFinder by NASA.  I only note this to point out that there are several special statutes that provide ‘anti-dilution’ like protection to special marks such as NASA and OLYMPICS and RED CROSS.  I dimly recall that the Daughters of the American Revolution had or have special IP protection as well.  Please write in if you can provide the info without going to too much trouble.

Thanks to Patrick Jones for background info on the Olympics and the Red Cross.

UPDATE:  Gretchen at Cooley writes to point us to Appendix A2 of McCarthys – “Statutes Relating to the Protection of Specific of Names, Characters and Designs.”  I counted up to 55 organizations which receive special forms of IP protection, usually for their “name, emblems, seals and badges.” (Badges?  Who needs badges?).   To give you an idea, the American Ex-Prisoners of War, American Legion and the American National Theater and Academy being the first three names on the list.

ICANN has issued an “Advisory Concerning Demand to Remove Verisign’s Wildcard.”

In pertinent part:

“As set forth in today’s letter to VeriSign, ICANN’s preliminary conclusion is that the changes to .com and .net implemented by VeriSign on 15 September have had a substantial adverse effect on the core operation of the DNS, on the stability of the Internet and the .com and .net top-level domains, and may have additional adverse effects in the future. Further, VeriSign’s actions are not consistent with its contractual obligations under the .com and .net registry agreements. The contractual inconsistencies include, violation of the Code of Conduct and equal access obligations agreed to by VeriSign, failure to comply with the obligation to act as a neutral registry service provider, failure to comply with the Registry-Registrar Protocol, failure to comply with domain registration limitations, and provision of an unauthorized Registry Service.

For all these reasons, ICANN has today insisted that VeriSign suspend the SiteFinder service, and restore the .com and .net top-level domains to the way they were operated prior to 15 September 2003. If VeriSign does not comply with this demand by 6:00 PM PDT on 4 October 2003, ICANN will be forced to take the steps necessary to enforce VeriSign’s contractual obligations.”

Crown Pontiac Nissan didn’t have anymore cars with facotry-installed sunroofs so they installed a sunroof for a customer, Thomas Ballock, and now you’re reading this.  There were problems with the installation and there was a dispute, arbitration, etc.  The customer obtained the domain name CROWNPONTIACNISSAN.COM and put up a site entitled “Why I Won’t Recommend Crown Nissan.”  Crown Nissan obtained a preliminary injunction.  Customer had the injunction reversed, and has now received damages.  Decision here.

This decision is somewhat in contrast to those such as the Jews for Jesus, Planned Parenthood and Peta.org decisions, in which use of the per se version of a trademark tends to be actionable.  However, as Thomas Ballock has correctly pointed out to me, in Jews for Jesus and Planned Parenthood, the courts strained to find some form of commercial activity on the part of defendant, usually focusing on defendant’s own agenda.  Here, Ballock’s actions in venting his dispute was seen as non-commercial. 

There are certain UDRPs that have articulated the principle that defendant’s actions will not be deemed to be commercial even if there is a pre-existing commercial dispute between plaintiff and defendant, apart from the domain name dispute.  For example there have been UDRPs involved disgruntled pensioners and disgruntled customers who have set up protest sites.  I’m not sure that it is logically sound that in a commercial dispute, one party can make non-commercial speech about it’s own role in a commercial dispute.  Nevertheless, I’m more comfortable with that analysis in a [trademark]sucks fact pattern, because there is less of a chance of diversion arising.  I think the reality is that in some of these disputes, grabbing a domain name that is identical to that of the trademark owner in order to put up non-flattering information, is clearly intended to be a coercive measure to influence the original commercial dispute.  I’m not sure that is pure non-commercial speech. 

See Band and Schruers, “Toward a Bright-Line Approach to [Trademark]sucks.com,” 20 The Computer & Internet Lawyer 1 (July 2003).

Interesting piece from Dave Winer entitled “The Rule of Links.”  I think that he uses ‘must’ when I would use ‘should,’ but I agree with one of his central tenets, which is that if you are discussing a source that is available on the Web, it is disrespectful to your reader not to link to it (and what about those who sell access to sources that are freely available on the web? I know of one law site that does).

To tie this (link this?) to trademark law, I note that I have written a short piece on the trademark theory of Initial Interest Confusion, in which I suggest that we are seeing an emerging tort of ‘deceptive diversion of traffic’ (embracing cyber-squatting but other activities as well).  In order to establish diversion, one would likely need to establish that users were not meandering but had a specific destination from which they were diverted.  A potential plaintiff may need to inferentially prove destination by showing what were the reasonable user expectations arising from a specific navigational device, such as a URL, search engine result, banner ad, or link.  For example, in the Panavision case, the Court accepted the ‘dot com assumption,’ namely that someone typing in [example].com, ‘expected’ to land on the page of the owner of the [example] trademark.

So that’s where the thought of a comprehensive rules of links come in.  I hope someone complies them.

Verisign has been sued by a domain name registrant for $3 million in damages allegedly resulting from Verisign’s ‘dropping’ of the domain name. This is the first suit against Verisign since the Ninth Circuit held in the sex.com case that  the negligent handling of a domain name registration was a colorable claim.

The owners of several buildings in Times Square had sued Sony Picutres because the movie SPIDER-MAN had contained digital renderings of those buildings altered to show different ads on the billboards than those found in real-life (presumably depriving the building owner and those advertisers of additional revenue).  The district court dismissed the trademark claim on the ground that no purchaisng decision was affected by the change; the trade dress claim was dismissed because the advertisements were changed so often that there could be no protectable trade dress; and the trespass claim was dismissed because taking the digital photograph of the buildings was not deemed to be the sort of actionable contact with physical property recognized as trespass.

On appeal, the Second Circuit has affirmed the dismissal of the federal claims.  However, it has reversed the dismissai WITH prejudice, instead remanding the case to the District Court to enter a dismissal WITHOUT prejudice, because the District Court should not have exercised supplemental jurisdiction over the state trespass claim.  A NY State Court has not yet ruled on the question as to whether physical damage is an element of trespass – the same issue raised by the Intel v. Hamidi case – and thus dismissal with prejudice was not proper.  Plaintiff can now re-file in state court should it choose to do so. 

Sherwood 48 v. Sony, 02-9100 (Sept 29, 2003) (click on decisions in frame).