April 1, 2008

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New Laws for New Technology

The World Wide Web Makes Trademark Law More Complex

Gretta Spendlove

April 1, 2008

Richard Bucchi, doing business as Catholic Radio, obtained the domain name, “Plannedparenthood.com.” On the Website, Bucchi advocated his anti-abortion booklet, “The Cost of Abortion.” The court granted Planned Parenthood Federation of America, Inc. an injunction to prevent Bucchi from infringing its trademark through use of a similar domain name. The Bucchi case, decided in 1997, was one of the first cases in which the courts struggled with applying trademark law to the Internet. The law on trademarks and the Internet has evolved nearly as fast as the Internet itself. Here are just a few of the legal questions (and hopefully some answers) that are often raised when trademarks and the Internet intersect: Is my domain name a trademark? It can be. Trademarks are words used to identify goods or services. If a domain name is merely a direction to a company’s Website, unrelated to words used to describe its business, the domain name probably does not qualify as a trademark. For instance, Planned Parenthood’s domain name, at the time of the Bucchi suit, was “ppfa.org.” Most businesses, however, want to use their domain name to strengthen their brand. By matching the domain name to other company marks, or using the domain name on advertising, on the Website or on the product itself, the company creates a name which can be trademarked. Does Internet use of a trademark change the determination of “likelihood of confusion”? The case law is evolving on this point. In determining whether there is likelihood of confusion, courts look at whether the two companies are in the same “market.” In the Bucchi case, the court determined that because both Planned Parenthood and Bucchi were selling goods and services on the Internet, they were competing in the same market. “The degree of competitive proximity increases the likelihood of confusion among Internet users,” the court wrote. More recent cases have not adopted that reasoning. However, the courts are still deciding how to analyze trademark infringement cases involving the Internet. Will establishing a Website help me get a federal trademark? Obtaining a United States trademark gives powerful protection to a company’s trademark, not only in the places where the company is presently doing businesses, but in areas of the country into which it plans to expand. However, in order to get a U.S. trademark, businesses have to prove they are doing business in “interstate commerce.” New businesses may start in one state and only later expand into other states. Restaurants, retail shops and hotels may be physically located in only one state. It is easier now than it used to be for those sorts of businesses to get U.S. trademarks. By establishing a Website as soon as the company opens and offering goods and services to consumers all over the country, local businesses have a strong argument that they are participating in interstate commerce. If I do business over the Internet, do I need trademarks in foreign countries? Simply by offering products through their Websites, U.S. companies compete in world markets. A U.S. trademark only protects sales in U.S. markets. International trademarks are expensive, costing a couple of thousand dollars for a single country. However, companies that do a significant portion of their sales to foreign buyers should protect their trademarks with foreign filings. What do I do if someone uses my trademark as a domain name? The Anti-Cybersquatting Consumer Protection Act (ACPA), adopted in 1999, makes it illegal to register, “traffic in” or use a domain name that is identical or confusingly similar to a distinctive or famous mark. If the Bucchi suit were brought today, it would probably be resolved under ACPA. Some domain name registries have also set up dispute resolution procedures which can provide cancellation of domain names or transfer domain names to the party having superior rights. Can metatagging or linking constitute infringement of a trademark? Websurfers looking for “MovieBuff” products were taken by a search engine to westcoastvideo.com, where they found a database similar enough to MovieBuff that a number of consumers bought from westcoastvideo.com instead. The court found that “metatagging,” or embedding a competitor’s name in one’s own Website, could, in some instances, constitute trademark infringement. This is another area in which the law of trademarks and the Internet is evolving. Back to Bucchi There was an awesome boldness and naiveté in Bucchi’s act of commandeering Planned Parenthood’s patrons by pirating its domain name. Today, Bucchi would be quickly enjoined as a cybersquatter. However, a decade later, the courts are still untangling the more complicated questions suggested by the Bucchi case, the pioneer litigation of trademarks and the Internet. Gretta Spendlove is a shareholder with the law firm Durham Jones & Pinegar. Comments can be sent to gspendlove@djplaw.com.
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