FYI: trademark names in URLs, URNs, and email

Larry Masinter (masinter@parc.xerox.com)
Mon, 13 May 1996 03:10:55 PDT


To: uri@bunyip.com
Subject: FYI: trademark names in URLs, URNs, and email
From: Larry Masinter <masinter@parc.xerox.com>
Message-Id: <96May13.031102pdt.2733@golden.parc.xerox.com>
Date: Mon, 13 May 1996 03:10:55 PDT


Date: Mon, 06 May 1996 11:58:00 -0700
From: Susan Evoy <evoy@pcd.stanford.edu>
To: nobody@pcd.stanford.edu
Subject: Legislative Alert

California CPSR Members,

A bill that is rapidly making its way through the California 
Legislature would impose fines and legal fees on Internet users whose 
USER-ID, domain name or email address happens to be a registered 
trade name or trademark.

Senate Bill 1533 by Charles Calderon (D-Whittier) has already passed
the California Senate and is now before the Assembly. CPSR member
and online activist Jim Warren is urging the online community to
oppose this legislation. Please phone your state Assembly
representative about this bill right away.

You can obtain the telephone number for your state Assembly or Senate 
representative by phone (916) 322-9900.  If you do not know the name 
of your state representatives, contact the Registrar of Voter for your 
county through the listing in your local telephone director.

The complete bill text and other information is available at:
www.sen.ca.gov.  A brief digest and analysis is included below,along 
with Jim Warren's statement of concern.


ABOUT SB 1533:

DIGEST:    This bill would create a statutory right to an
immediate injunction and monetary damages to enable owners
of a registered trademark or trade name as a domain name to
more readily remove and prevent the unauthorized use of
their trademark or trade name as an electronic mail address
or user identification on the "Internet".

ANALYSIS:    Existing law provides for the registration and
protection of trademarks and trade names.

This bill would provide that the unauthorized use of
another's registered trade name or trademark as a domain
name, user identification, or electronic mail address on
any computer bulletin board, information network, or
information system which accepts and relays electronic mail
into computers situated in this state constitutes an act of
unfair competition.  The bill provides that the failure of
a person using another's registered trade name or trademark
as a domain name, user identification or electronic mail
address to release the use of that name or trademark on any
computer bulletin board, information network or information
system upon demand from the owner would constitute grounds
for the issuance of an immediate injunction, an award of
monetary damages of not less than $1,000, as well as an
award of costs and attorney's fees.  The bill provides that
the notice and demand must be sent by certified mail to the user.

The bill would further provide when a domain name user
identification or electronic mail address on a computer
bulletin board, electronic information network or
electronic information system is a registered trade name or
trademark, an Internet service provider is not subject to
civil or criminal liability for the removal of that domain
name user identification or electronic mail address from
its services if that action was made in good faith.

The bill provides that the provisions of this bill do not
apply to the use of a person's own legal name as a domain
name user identification or electronic mail address on any
computer bulletin board, information network or system such
as the Internet or World Wide Web, and nothing in this bill
may be construed to prohibit that use.

Finally, the bill provides that the above provisions do not
apply to the registration of a domain name, user
identification, or electronic mail address on any computer
bulletin board, information network, or information system,
such as the Internet or the World Wide Web which predates
the registration date or copyright date of a registered
trade name or trademark.


REASONS TO BE CONCERNED (FROM JIM WARREN)

First of all, tradename infringement *is* a legitimate problem.  
But --

(1) This California bill is much more draconian than simply
protecting tradenames against real abuse;

(2) This problem is a national -- and international -- and should
NOT be legislated by any one state; and,

(3) Most of all, there are already ample legal mechanisms in place
and long-established to allow tradename owners to defend their name
- -- IF alleged infringement would create confusion in the marketplace
... which *should* be the criteria for defining infringement.

Please note that millions of onliners have user-id's other than
their own names.  The bill -- that *does* attempt to address a
*legitimate* problem -- should not threaten users with massive
financial costs simply because they fail to check the trade-mark
registries of all fifty states, plus the US Trademark Office, plus
all the other nations' registeries -- before they dare to use an
ASCII character-sequence that *might* be trademarked by someone,
somewhere, for protection in some possibly obscure market, someplace.

My problem is that the bill is wildly overbroad in failing to
account for the principle that tradeNAMES (that is, alphabetic text
without logotype) have traditionally been defensible ONLY when their
use could create confusion in a claimed market area -- to say nothing
of bill-author Calderon's failing to allow for *innocent*
"infringement."





- --
Audrie Krause   *  *  *  CPSR Executive Director
P.O. Box 717   *   Palo Alto   *   CA  *   94302
Phone: (415) 322-3778    *   Fax: (415) 322-4748
  *    *     Email: akrause@cpsr.org    *    *   
     *   Web: http://cpsr.org/home.html    *



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