Congress passed the Anti-Cybersquatting Consumer Protection Act (ACCP) in 1999, giving companies some recourse against misuse of their trademarks in domain names, but questions still remain. What exactly can be claimed as a trademark? How do you define "misuse?" And, hey, celebrities are big business, are they covered too?
Cyberlaw vs. Traditional Trademark Law
In non-cyberworld cases, the courts have been the answer for trademark disputes. Traditionally, trademarks have been protected by the Lanham Act, enacted in 1946, and, most recently, the Federal Trademark Dilution Act of 1995, but these new cyber star wars over cyber star wares are creating new questions as to how trademark law will evolve and effectively govern in this new era.
The Dilution Act protects marks from "the lessening of the capacity of a famous mark to identify and distinguish goods or services," although the courts have disagreed as to how to interpret the law. In one case, Ringling Bros., the 4th Circuit Court of Appeals held the holder of the more famous mark must prove actual damages, while in the Pepperidge Farm Goldfish case, the 2nd Circuit Court of Appeals said no damage was necessary. Most recently, in the Victoria’s Secret case which is now before the U.S. Supreme Court, the 6th Circuit again found that proof of damages was not necessary.
Disputes are handled differently in the online world. Here, when holders of a famous mark or a celebrity name want that mark or name from a cybersquatter, they most often bring the dispute to an arbitration service, usually the Internet Corporation for Assigned Names and Numbers (ICANN) or the World Property Organization (WIPO).
Although the standards used in these cases are similar to traditional trademark cases, they are still unique. Basically, anyone bringing a suit must prove that the contested domain name is 1) confusingly similar or identical to the plaintiff’s own trademark; 2) that the current domain holder has no right to or legitimate interest in the domain name; and 3) that the name was registered in "bad faith."
These international "People’s Courts" of domain name management are effective but limited. Their decisions are not enforceable under U.S. law so, if mark holders or alleged cybersquatters are unhappy with the decision, they can still bring the case to court to maintain ownership of the domain name.
But, perhaps most seriously, some critics say these panels are creating a new global trademark law with entirely new definitions and standards. One common concern is that these panels have overwhelmingly protected people’s (most commonly celebrity’s) names even when these names have not been trademarked. In traditional trademark cases, complainants usually have, quite obviously, a registered trademark. In domain name battles, it is often not so.
Under ICANN’S Uniform Domain-Name Dispute-Resolution Policy (UDRP), a registered trademark is not required. The complaining party can also just have "rights in trademark." This is often integral to a celebrity’s case. Celebrities argue that their names have acquired "secondary meaning" and, thus, have established rights as a common law trademark – and they have been extremely successful.
"Most surprising is the strength of protection given to personal names under the UDRP," Dr. Milton Mueller of Syracuse University’s Convergence Center has said. "Personal names that are not registered as trademarks have been protected as strongly as registered marks, if not more strongly…overall the win rate for complainants in personal name cases is practically identical to registered marks."
Critics of arbitration have freedom of speech concerns as well. Many sites, such as the JuliaRoberts.com, contained what many considered to be parody of a public figure, which has traditionally been protected, but, still, the site was taken from the holder after it was judged to be registered in "bad faith."
Celebrity Cyberlaw Case Studies
In the non-cyberworld it’s not unusual for different companies to own rights to the same trademark. As attorney and author Mark Radcliffe has pointed out, more than 15 companies have registered "Apple" as their trademark but, with domain names, this simply can’t work. There can be thousands of Apples in the world, but only one Apple.com. Similarly, there may be thousands of people named Julia Roberts in the world, but there can only be one JuliaRoberts.com–and take a guess which one is most likely to get it.
In one of the most notorious celebrity cyber squabbles, actress Julia Roberts filed suit against Russell Boyd, a New Jersey man who had purchased the domain name, JuliaRoberts.com. Boyd then created a site filled with cartoons, wacky poems and message boards, all poking fun at the "Pretty Woman" star. Roberts brought the dispute to WIPO for arbitration and won, the panel finding that Boyd had no rights or legitimate interest in the domain name and that he had registered it in bad faith.
The case left many domain name owners wondering if Roberts’ celebrity had unfairly influenced the decision. After all, what made Julia Roberts the actress more deserving of the domain name than the countless other Julias in the world? Wayne Huang, who owns a domain name of actress Katie Holmes said: "There was an interesting post on a website from a woman named Julia Roberts who is a housewife, and she asked, ‘My name is Julia Roberts too, can I sue you for this site?’"
Similar concerns were raised in the Madonna.com case. Here, the singer sued for the domain name and won – the decision heralded by her publicist Liz Rosenberg who told the Associated Press that the decision was just because the Material Girl was "the most famous Madonna in the world." The site’s owner, Dan Parisi, disagreed, as did Catholics around the globe presumably. "She was named after the Virgin Mary as was her mother and hundreds of thousands of other people throughout the world over the past 2000 years," Parisi has said. "We do not believe that because Ms. Ciccone named her act after the Virgin Mary that gives her the right to stop any party from using the word ‘madonna’ as a title of their website."
Although celebrities are often victorious, it is not always the case. Singer Bruce Springsteen brought suit against the owner of BruceSpringsteen.com, a fan who was running a club on the site, however, the panel did not side with the singer, finding that running a fan club on the site was not a demonstration of bad faith.
And recording artist Sting (real name: Gordon Sumner) got stung when he brought suit against Michael Urvan, owner of sting.com back in 2000. Urvan, a software engineer from Marietta, Georgia, who also just so happens to go by the nickname "Sting," won the dispute. The arbitrators ruled that "sting" was a common word that could not be successfully claimed as a trademark even though Sting-the-singer is arguably more well-known than Sting-the-Software-Engineer. (Urvan has since agreed to transfer the name to Sting and Sting.com is now the singer’s official site.)
Singer Alanis Morisette is the latest star to wage a cyber battle, fighting for control of the domain, Alanis.net. This summer her attorneys sent a letter to the owner, Russ Smith, demanding the domain name and claiming he was misappropriating Morisette’s trademark. Smith sent a scathing reply, claiming, among other things, that Alanis Morisette did not have a right to the name "Alanis" separate from her last name. Look for this one to hit the arbitration panels soon.
Cyberlaw – The Next Generation
Although celebrities and holders of famous marks have been quite successful in arbitration, they may soon have new woes to deal with. This year new top level domains (.info, .biz, .name, .pro, .aero, .museum and .coop) are slowly being introduced and holders of existing trademarks don’t like that one bit as new domains mean more cybersquatting battles to come. (Juliaroberts.museum, anyone?)
And, as the Internet continues to expand, so does cyberlaw’s reach. Cases have begun to move beyond the arbitration services and are carving out new definitions of trademark law in the courts as well. Trademark holders have begun bringing suit under the Lanham Act, the ACCP Act and, most recently, state dilution laws.
In April, the 5th Circuit Court of Appeals found that a Texas company had diluted the trademark of wine giant E. & J. Gallo by maintaining a site called "Whiney Winery" on the domain, ernestandjuliogallo.com. Although not a direct celebrity case, it still has implications as this was the first time the 5th Circuit applied the ACCP Act and the first time the Texas dilution act was applied to cybersquatting. "Many laypeople think that the regular laws don’t apply to the Internet. The courts are confirming what I’ve always believed, that the trademark and copyright laws apply to the Internet just like they apply to everything else," E. & J. Gallo attorney Craig Weinlein has said.
And, if celebrities have anything to say about it, these laws will apply to them too. Can’t we all just get along? Sure, as soon as there’s enough JuliaRoberts.coms to go around. Until then, let’s get ready to rumble.
