Trademark Attorneys Discover Cyberspace.

Copyright 1995 by David Loundy

Several current incidents are showing that trademarks are another area of concern for companies and for attorneys practicing in the era of global communication networks.

I have a running joke going with my Internet Service Provider. He tries to scam free legal advice from me, and I try to scam free services from him. Specifically, I am after a personalized domain-name. A domain is part of an address, analogous to your street, town, and country. Computers on the Internet all have an address. My e-mail address is david@interaccess.com. What this means is that mail sent to the user "david" at the domain "interaccess.com" will reach me. These addresses have become the vanity plates of the Information Superhighway. An e-mail address alone, for instance, is often used to stereotype the person using the address. Some Internet veterans are often quick to mock people who send messages from domains such as prodigy.com or aol.com (America On-Line). The stereotype is that these are "small town" computer users just stepping out into the big wide world of the Global Information Infrastructure. Conversely, an address can give more credibility in some cases-- like hypothetical comments on the recent problems with the Pentium posted by someone with an address at "intel.com." As companies expand onto the Internet they, naturally, would like to be able to use their own names for identification purposes. Thus my crusade to get the domain-name "loundy.com." Princeton Review, the test preparation company, thought it would be neat to get the domain-name "kaplan.com" as well as "review.com" Here is the hitch--kaplan.com comes from the name of its arch-rival--Kaplan Education Centers.

Setting up your firm or your clients with a personalized domain-name is a simple process. The first step is to register the name with the Internet Network Information Center, or InterNIC. This organization assigns domain-names to people who request them on a first-come, first-served basis. Like registering a corporate name with the state, the only check performed is that the name has not already been taken. The second step is to plug your computer into the Internet, and do some programming so people know where to find you (thus the reason for bothering my Internet provider to set me up with a personalized domain name).

This simple process is stirring up quite a bit of controversy, and it is one of the issues bringing the Internet into the sphere of concern for trademark and other attorneys.

According to a Newsbytes (an on-line press service) interview with John Hein, director of marketing for the Princeton Review, Princeton registered its competitor's domain-name as a "playful prank" because it "wanted to annoy" its competitor. Cynthia Hickman, director of Kaplan Interactive did not see it as a playful prank, especially since Kaplan was working at setting up its own service on the World Wide Web to let Internet users find out about Kaplan's services, as well as to get information from universities across the country. Hickman believed that the Princeton Review's use of Kaplan's name was misleading. When taken to formal arbitration, an independent arbitration board agreed that Princeton Review was engaging in an unfair practice and must hand over the domain name.

While this may sound like an esoteric issue, it is one that is of growing concern. In an October, 1994 article, Wired magazine noted that the domain-names suitable for 14% of the Fortune 500 companies had already had their company names registered by someone else, and a sizable chunk of the Fortune 500's domain-names were still unclaimed as well. Sprint had briefly registered for itself the domain mci.com (since the registration was an obvious attempt to get someone else's domain-name, and since MCI also had an application for the address pending, InterNIC canceled Sprint's registration and registered the domain to MCI). The Wired article relayed Joshua Quittner's attempts to explain domain-name registration to McDonalds. Quittner called McDonalds several times to discuss the matter, but when McDonalds could not supply anyone who seemed to either know or care about the use of mcdonalds.com, Quittner registered the domain in his own name. He invited readers to send their suggestions for using the address to him at ronald@mcdonalds.com. Since this article was published, McDonalds has decided that it does care about its address after all.

MTV also seems to care about mtv.com-- ever since Adam Curry's domain on the Internet started to generate some real publicity. Originally started up as a hobby, Curry set up mtv.com on the World Wide Web, and was soon getting thousands of people trying to get information from his computer at mtv.com every day. He claims that MTV's owners "gave [him] their blessing and supported [his] efforts." He used the address to distribute articles that he wrote, for audience response to various MTV shows, and to distribute some press releases supposedly given to him by MTV Networks. Once Curry quit his job in order to start his own Internet access company, MTV sued him for copyright infringement, violating MTV's trademark, and having MTV Network property on-line. MTV wants its address. Curry says (in a Wired article) that since he registered it, the address belongs to him, and he "will fight this all the way" saying the case will be the "Roe v. Wade of the information superhighway." Until this is resolved, looking at the address www.mtv.com (the address of mtv.com accessible over the World Wide Web) produces nothing but a disclaimer saying that Adam Curry's Internet site has been moved pending resolution over ownership of mtv.com.

Recently, trademark issues concerning Internet addresses have branched out beyond domain-names. Civil libertarians on the Internet have been in a tizzy over the Church of Scientology's attempts crack down on "net.blasphemers." Specifically, the Church is upset over two UseNet News groups devoted to Scientology. The "alt.religion.scientology" newsgroup is estimated to be carried on 141,579 sites on the Internet worldwide. Even though this newsgroup is available on such a large number of machines world-wide, the Church's attorneys have still started sending out e-mail to various sites' system administrators requesting that the newsgroups be removed. The Church's attorney, Helena Kobrin, in a letter sent to system administrators, claims that the newsgroup "alt.religion.scientology" was improperly started, infringes the "scientology" trademark in the newsgroups title, is misleading due to the groups being mainly used to attack the religion, and the newsgroup "continues to be heavily abused with copyright and trade secret violations and serves no purpose other than condoning these illegal practices." The Church, in a letter sent to "remailer operators" (anonymous remailers are services which forward e-mail and Usenet News posts after stripping off the information identifying the actual message sender), sites recent cases such as the Bulletin Board System (BBS) in Florida busted for carrying scanned pictures out of Playboy (Playboy Enterprises, Inc. v. Frena, 839 F. Supp. 1552 (M.D. Fla. 1993)) and a BBS operator caught distributing pirated Sega games over his BBS (Sega Enterprises v. Maphia, _F. Supp. _ (N.D. Cal. 1994) (March 28, 1994) 1994 U.S. Dist. LEXIS 5266).

Free speech activists have responded to the Church's legal threats by starting an on-line petition to send to the Church. The Electronic Frontier Foundation has also widely distributed "An Open Letter to the Church of Scientology and the Net," calling for mediation or arbitration and advocating that the Church respond by suing the people who post copyrighted materials or trade secrets, counter anti-church speech with speech of their own, and above all else, leave an "innocent sysadmin [system administrator] who did no more than forward a message" out of the picture.

My last example is the "new" Project Gutenberg Encyclopedia. Project Gutenberg consists of a group of people devoted to converting old literary works which have passed into the public domain into computer-readable form for free mass distribution. The goal is to make the books we had to buy for high school and college English classes freely available to anyone anywhere. Project Gutenberg went through the labor of scanning and converting all of the 1910-1911 edition of the Encyclopedia Britannica for Internet distribution, consisting of eight and a half megabytes of public domain information in all. Unfortunately for Project Gutenberg, though the copyright on the encyclopedia may have lapsed, the title is still a valid trademark belonging to Britannica. It seems that Encyclopedia Britannica has put the new 1995 edition on the Internet for a fee, and doesn't want the competition. Project Gutenberg was forced to use a different name for their encyclopedia in order to avoid legal problems. The result: both encyclopedias are on the Internet, both were written by Britannica, but one is called the Gutenberg Project Encyclopedia.

Whether the issue is a domain-name, a company or its products being discussed in (or the subject of) a newsgroup, or even trademarked software or information being distributed on a Bulletin Board System, intellectual property attorneys need to be on the lookout for infringement of their clients' trademarks. New opportunities are being discovered for dilution, misattribution, and other improper uses of trademarks on BBSs and the Internet. Trademark owners must remember, however, that protecting these rights can generate a lot of bad press-- MTV, Encyclopedia Britannica, and the Church of Scientology may be protecting their rights, but all have been publicly dragged over the coals for their efforts.

And please, no one register loundy.com before I get my chance.