Other Icann-watchers are targeting Esther Dyson’s column in yesterday’s Wall Street Journal for various quotes such as “ICANN is weak and powerless” (this from ICANN’s first chairman).  I’m puzzled by this one: “ICANN can control not so much freedom of speech as freedom of presence of the Internet.”

I don’t know what Ms. Dyson is referring to as “freedom of presence” but it seems to me that affordable and unfettered availability of Internet access is a lot more critical to “presence” than domain names and until people can access the Internet without bolting the door, then we’re focusing on the wrong aspect of the issue.

 

Strange blurb in the National Law Journal.  Givenchy (a sub of LVMH) owns US registrations for GIVENCHY for perfumes and watches.  Time Products alleges it has the rights to import and distribute GIVENCHY waches in the US (presumably from Givenchy’s European watch manufacturer).  Givenchy distributed watches in the US as a giveaway with a purchase of GIVENCHY perfume.  Time Products has now brought suit in Florida alleging that LVMH has distributed “imitation and/or counterfeit” products.  I see how a trademark owner could in theory breach a sole and exclusive license.  I don’t see how a trademark owner can sell imitations or counterfeits of its own product.  If I’m missing something, write me.

The use of sports teams’ logos on merchandise is another perceived David v. Goliath trademark issue, pitting the greedy team owners against the small businessman who merely wants to provide the fan with the opportunity to express his/her allegiance to his/her favorite team, with logo merchandise at popular prices.

Arsenal, not quite in the same league (fame-wise, not soccer-wise) as ManUtd, sued some guy who hung out near the stadium selling scarves which said ARSENAL on them.  He made it clear that these were unauthorized.  

The British High Court (Laddie, J) had said: The logos on the stuff were for the fans to demonstrate their allegiance to the team, and not to designate the origin of the goods.  The use was descriptive, and not infringing.  Arsenal appealed to the European Court of Justice.

The Advocate General for the ECJ issued his opinion this week: it doesn’t matter how the fan will use the goods, they bought it the merchandise because it has the trademark on it.  If the reproduction is unauthorized, then its trademark infringement.  Note: the Advocate General’s opinion can be affirmed or ignored by the Court itself (although it’s predicted it will affirm).

Special bonus to those who read the opinion: the Advocate General is obviously a soccer fan, and drafted a little economic history of soccer.  In fact, one almost gets the sense that he came down on the owners’ side because soccer teams tend to be broke.  Use “Arsenal” as a search term after clicking here.

 

I have been leaving the reporting of the drama over the re-delegation of the .za TLD (South Africa’s country-code) to Bret Fausett’s ICANN Blog.  However I couldn’t resist mentioning this story that, to prevent a government take-over, the former administrator has hidden the “key” to the domain abroad.  This is shaping up to be the first domain re-delegation to end in a chase scene.

This is the kind of story that gets anti-IP folk riled up about those who “highjack” common terms, but remember, Pat Riley can only enforce the trademark THREEPEAT against people who use it as a trademark, not people like you and me who use THREEPEAT all the time to describe situations where we have won our third consecutive championship.

Also, author uses “patented term” when he means “registered trademark.”

 

This STOP decision transferring paint.biz to complainant is another argument for appellate review of UDRPs and other domain name resolution proceedings.  Complainant’s ITU trademark application for PAINT.BIZ was filed after the November ’00 announcement of the .biz TLD was announced.  It apparently does use PAINT.BIZ as a trademark on the real world.  We don’t know if it began use of the mark prior to Nov. ’00.  Such use would dispel the (plausible) notion that complainant set this whole thing up.

p.s. The panelist’s observation that registration of a U.S. trademark provides constructive notice to defendant is both correct and irrelevant, as because this was a STOP proceeding, respondent was on ACTUAL notice that complainant DIDN’T have a U.S. registration.

 

The brand owner’s dream is that if  your brand is ACME, then the consumer can find you at ACME.COM. In otherwords, the brand is the navigator.  In practice, the “dot com assumption” works effectively for only a small number of the world’s brands, but it raises the hopes of any business.

How can navigational systems help the Internet mirror the ability of the real world to allow coexistence of identical marks in different geographic locations and different goods or services?  Unrestricted gTLDs provide no context when used as a search tool, and therefore cause consumer confusion and create the potential for cybersquatting.  Keyword functionality (common name resolution) should probably be an Internet standard built into browsers, and not something MSFT or Keith Teare or a private company should own.  Pay-per-view search engines are not really navigational aids . 

Google on the other hand, if it can develop functionality like this geographic-based search, may be a contender in the holy grail of brand navigation, where what you search for is what you get.