Trademark And Domain Names… Two Very Different Rulings From One Judge
from the what's-up-kozinski? dept
If you’re looking for one of the most entertaining judges on the bench today, Alex Kozinski may be your judge. He’s famous for being both clear and entertaining in his rulings, and for pulling such stunts as nominating himself for a contest on “Judicial Hotties” with an email to the organizers stating: “While I think the list of female candidates is excellent, the list of male candidates is, frankly, lacking. And what it’s lacking is me.” So I’m always partial to reading opinions by Kozinski, even if I find I disagree with him more often than I would like. Yet, here we have two recent decisions by Kozinski that seem to effectively disagree with each other on an issue dealing with trademark and domain names.
The first, noted by Eric Goldman, involves Kozinski’s determination that that the domain eVisa.com represents trademark infringement over Visa’s trademark even though eVisa is not in competition with Visa at all, and is focused on language tutoring. Kozinski says that there is infringement, citing trademark dilution. The whole theory of “dilution” in trademark law is problematic enough already, in that it goes way beyond the purpose of trademark law to act as a method of consumer protection against confusion. When you add in “dilution” then suddenly trademark becomes something very different and allows companies to stifle totally unrelated uses of a domain name. As Goldman notes this ruling seems to suggest that Visa (the company) can block out any use of “visa” in a domain name, even if it is accurately used as the dictionary definition of visa (i.e., to travel to another country):
the word “Visa” already has several dictionary definitions. This poses a problem for the blurring analysis. Visa the trademark can’t co-opt the existing dictionary meanings. So does dilution-by-blurring mean that Visa the trademark can preempt every non-dictionary commercial use of the word? That seems to be a logical implication of this opinion.
And while (as per usual) Kozinski’s ruling is entertaining in its opening:
She sells sea shells by the sea shore. That’s swell, but how about Shell espresso, Tide motor oil, Apple bicycles and Playboy computers? We consider the application of anti-dilution law to trademarks that are also common English words.
it runs into trouble pretty quickly. Historically trademark is only supposed to apply to the areas where you use the mark in commerce. This expansion of dilution changes it into something totally different, and something that seems to run into some serious First Amendment issues.
In the age of FIOS, cable modems, DSL and T1 lines, reasonable, prudent and experienced internet consumers are accustomed to such exploration by trial and error. … They skip from site to site, ready to hit the back button whenever they’re not satisfied with a site’s contents. They fully expect to find some sites that aren’t what they imagine based on a glance at the domain name or search engine summary…. [Consumers] don’t form any firm expectations about the sponsorship of a website until they’ve seen the landing page –if then. This is sensible agnosticism, not consumer confusion. So long as the site as a whole does not suggest sponsorship or endorsement by the trademark holder, such momentary uncertainty does not preclude a finding of nominative fair use.
Of course, the difference here is that he’s using the “consumer confusion” view of trademark law, which makes sense, rather than the dilution by blurring standard, which opens up all sorts of problems. But it really does seem difficult to see how a judge could rule against eVisa one week, and then write the paragraph above the very next week. In fact, while we note that the dilution claims raise serious First Amendment issues, those aren’t mentioned in that ruling. Yet, here in the Toyota ruling, Kozinski quickly points out how ruling in favor of Toyota would raise First Amendment issues:
It is the wholesale prohibition of nominative use in domain names that would be unfair. It would be unfair to merchants seeking to communicate the nature of the service or product offered at their sites. And it would be unfair to consumers, who would be deprived of an increasingly important means of receiving such information. As noted, this would have serious First Amendment implications. The only winners would be companies like Toyota….
It’s really too bad that the Alex Kozinski, who wrote this later ruling, couldn’t go talk to the Alex Kozinski who wrote the first ruling.
Filed Under: alex kozinski, domain names, trademark
Comments on “Trademark And Domain Names… Two Very Different Rulings From One Judge”
Apple bicycles?
Would that cause a problem for Apple Inc. or Apple Records? Which one?
I think I understand the logic in some sense
Namely, the term e-anything, generically means the internet version of something, so eVisa could be confused as the internet’s Visa. Or, I believe that confusion could be considered likely. The term eVisa seems to imply direct relation to the brand, in terms of how the prefix e is used in the parlance of our times. As for other uses of the word visa, almost any person looking to obtain a visa will be looking for a government website, so the use in commerce is not associated with the visa brand.
In the framing of buy-a-lexus, the trademark seems to be used as an identification of a real brand that could be resold. buy-a-blank could apply equally to a firsthand or second hand seller of a good.
Re: I think I understand the logic in some sense
Or, I believe that confusion could be considered likely.
Apparently, Kozinski disagrees with you. He ruled against eVisa on the grounds of dilution, not confusion.
it would appear that each ruling could be used in an appeal against the other. nothing like a judge who doesnt know which hat to put on in the morning.
domains names are often not the complete name or a complete trademark. visa is a rare one that is actually the product name. however, considering a visa is also a permission to enter a country, and you might get one electronically, an evisa might be possible, and reflect a different product entirely.
http://www.qantasvacations.com/australian-visas.htm
the ruling would appear to ignore all of the other uses for the word visa, and allows only the single trademarked term visa to exist in cyber space. that is not only disappointing, but a very likely line of attack for an appeal.
I see no inconsistency between the two rulings (although I agree that “dilution” is problematic).
In the buy-a-lexus.com case, there isn’t the same sort of alleged dilution (another company’s use of Toyota’s trademark vs another company with a very similar trademark). Toyota didn’t dispute the fact that the Lexus one might buy from the site will be a genuine Lexus from an authorized dealer; the question was just whether customers would think that the site was an official Toyota site, and the court found there was no confusion.
(As for the eVisa case, I don’t understand how they could have gotten that mark in the first place, given that the term is used by many governments for electronic visas and calling a company offering other travel-related services by that name seems likely to cause confusion.)
I don’t really see a conflict here. Judge Kosinski’s ruling in the Lexus case clearly states that sites like eTrademark.com will generally suggest sponsorship or endorsement by the trademark holder. He specifically states that “the addition of ‘e’ merely indicates the electronic version of the brand.”
In my opinion, the anti-dilution statute is not trademark law at its best, but Orr does not seem to have presented much of a defense beyond “I did not intend to dilute the Visa trademark.” Intent isn’t an issue in the context of dilution, actual dilution isn’t even required – the likelihood of dilution is enough (intentional or not).
It seems to me that if Orr had qualified the characters comprising the Visa trademark with anything in addition to the simple “e,” he would have prevailed.
Judge Kosinski seems to be open to fair use in the trademark context – which is great. But, you have to give him something to work with. Now we know that “trademark-USA.com” and “eTrademark.com” are not going to be considered fair use in his court.
I do question Judge Kosinski’s inclusion of “trademark-of-glendale.com” as being of the type that does not pass muster for nominal fair use. It seems to me that if a business has the right to use a nationally protected mark within a certain geographic location, which happens relatively often, then that business should be able to register a domain name exactly like trademark-of-specific geographiclocation.com.”
Re: Re:
I meant to say – a domain name exactly like “trademark-of-specificgeographiclocation.com”
etravelVisa.com would have avoided the issue most likely.
Re: Re:
Exactly. Anything along the lines of “eVisa[insert other term here].com” would most likely have prevailed.
Re: Re:
etravelVisa.com would have avoided the issue most likely.
I think most likely not.
In France, we don’t have that problem as the law clearly states that a domain name can only be claimed a trademark infringement and can be reclaimed, only if the website is about the same subject as the claimer’s activity, and if there is a risk of confusion.
So if your domain was like hud-keyboard.com and is about kittens, and some company called hud keyboard, wants to claim it, they wouldn’t be able to as the activity is not the same.
Re: Re:
except that any .com domain name is subject to the Uniform Domain Name Dispute Resolution Policy, whether the registrant is in France, Borneo, Ecuador, or anywhere else.
Inconsistancy...
…is a sign of a poor jurist.