Trademark And Domain Names... Two Very Different Rulings From One Judge
from the what's-up-kozinski? dept
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.