Barbie Demands A Domain

localman writes: "In an ongoing legacy of tormenting Web site owners, Mattel Inc. is threatening legal action against my wife and I for planning to make a non-business all-girl video game clan site entitled thebarbies.com. Apparently they have a long history of censoring people. I've put up a page about the dispute, but what else can an individual do against a corporation?" Write a story? Seriously -- this is a standard trademark domain dispute, it's happened many times and will continue to happen -- maybe someone should write an FAQ for legitimate domain holders who get The Letter.

Comments

Bad choice of domain name on your part

[Masem]

I'm not saying that you choose a bad name for the clan; outside of web space, it's very hard to connect names and the like to trademarks (and I'd love to see anyone try to inforce that).

However, nowadays, with trademarks entering the domain frey, a bit of research should have been done to find out what problems might have come from using that domain name. Your research would probably have pointed to the various mattle legal battles that you spotted already, and you may have wanted to change the name or done something different.

Secondly, and more of my nit, why are you polluting the TLD .com with a non-commerical entity? An .org name would be better here, and would probably have taken mattle's site off from you.

While I'm not sure that your joke content caused teh problem, you should also have a bit more on your page as it stands now as to avoid issues with cybersquatting. Explain that this will be a clan page for "Tribes", and also state that in no way the page is connected with the Barbie trademark or MAttle. That might have also calmed the lawyers and made your case stronger when ICANN reviews it.

Re:Bad choice of domain name on your part

[Masem]

Regarding trademarks and webspace: Go to an IRC network. Go to a Q3/UT/HL game browser. Go to ICQ or any other instant messaging thing. If I was really anal I could go along and find thousands if not more 'abuses' of trademark, but it could be very hard to proof such was intended. First, the names are dynamic -- they only exist for hours at a time. Secondly, someone might use a name like "Sun", which one might argue as a trademark violation of Sun Systems, but without further examples of the use of the name "Sun", there's no intent for trademark infringement, especially since it's an english word. However, with webspace, there are generally pages attached to the trademark name in question, and intent can be conveyed easily (particularly in this case; the guy had posted joke pages on selling the domain). There's a big difference in these two areas.

As for the TLD issue; /. *was* an .org to start, but as they moved on, they've become more of a .com (though they sell no product; there needs to be another TLD for this type of service). As /. was established, I would not ask them to change their name. But someone registering a domain in this day and age should try avoid polluting the namespace mess further.

IIRC, trademark law defines 17 or so different types of businesses; within a given judisidiction, you can have one business of each type using the same name, since it's hard to compare "Mike's Hardware" with "Mike's Flowers" and "Mike's Food Store". The internet makes this part harder as the judistiction is the entire nation; so far, I've not seen any strong cases dealing with such issues and if anything, we're mostly talking small businesses and first come, first served in their domain names. I had a friend with a domain name, which for purposes of anomyosity, I'll call "XYZ Multimedia" - which was exactly how you read; he was into video editing, audio editing, and web page design. Another company, "XYZ Networks" came along and asked him to *NOT* give up the name, but to instead at least place a link predominately on the main page to indicate that his page was not associated with XYZ Networks. Those two companies are in different businesses, so the two businesses could theorhetically interact without trademakr confliction. However, this was about 4 years ago; in today's world of trademark names, I would how the second company would have acted.

We need a major legal ruling on trademarks; not out of ICANN's, but from something like the Supreme Court. Trademarks are important, but they should not be as predominate on the net, and loosen the control that copyright owners have. As it stands, the cybersquatting law has yet to be used unfairly but the wording is vague enough that something will be coming soon that will challenge it, at least terms like "in good faith" and such.

This angers me greatly

[Shaheen]

Okay, Slashdot has found a way to piss me off. The following domain name disputes have been covered on Slashdot (big idjut corporation vs. little community based site):

eToys vs. eToys
Digital Diva vs. Digital Divas
Mattel vs. The Barbies

However, the following domain dispute wasn't (even though to my knowledge, it was submitted many times to the Slashdot submission queue):

Chunky Monkey vs. ChunkyMunky

ChunkyMunky gave up because a legal defense would have been way too expensive. But I have to wonder if a Slashdot editor had taken the 10 minutes it takes to post that story, the outcome might have been different.

Re:This angers me greatly

[jamiemccarthy]

I wasn't aware of that domain dispute; its submission(s) presumably were rejected by someone else. (Readers often don't realize that Slashdot has something like a half-dozen editors and that any of us can reject a submission...so randomness does play a large factor.)

I ran this Barbie story partly because Sunday is a slow news day and partly because I'm hoping someone really will have started an FAQ on domain-name disputes, or will be motivated to start one. The net could use one.

For each of the disputes you name, there are many others we haven't run a story on. They're too numerous to list, which is part of the problem: the degree to which corporate trademark infringes on personal expression is being decided at this very moment by dozens of separate cases, and we nonlawyers are too disorganized to make a difference.

Jamie McCarthy

Re:Ever hear of "Trademark Dilution"?

[BlueUnderwear]

You mean, the original barbie dolls are NOT made in some third world country sweatshop?

Access Logs...

[Insanik]

From http://tribesarena.com/thebarbies/:

To give you an idea of how ridiculous their claim of "trademark dilusion" is, I have included our entire access log from April 16 2000 to May 31 2000. That's right, 4 unique visitors in 46 days, and that includes friends, family, and lawyers. Even if Mattel "wins", they will be getting a truly useless domain for which I can only imagine they are paying thousands of dollars in lawyer fees.

I wonder what the logs are like now :) I they did not just make it a 'valuable' name now that it's on /.

Re:Ever hear of "Trademark Dilution"?

[localman]

15 U.S.C. Section 1125(C)(4) states the following about cases of dilution: "The following shall not be actionable under this section: (b) Noncommercial use of a mark."

Furthermore, trademarks (as I understand it IANAL) only apply in cases where I am causing customer confusion by either offering a similar product, or using their trademarked name as a common noun. We are doing neither of these things.

Mattel Censorware gets a new addition?

[dclydew]

So who thinks that this site just might end up on the "Adult" list in Mattel's censorware product?

Here's the solution.

[CAIMLAS]

"Our corporation can beat up your corporation!"

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CAIMLAS

What bull!

[www.sorehands.com]

You mean that everyone that does not bend over to be screwed by a large corporation is just a loser trying to get attention?

Ever hear of principals?

You lose rights inches at a time. If you don't fight for your rights you lose them?

In my case when a judge asked Mattel what was libelous, Mattel asked to dismiss their countersuit.

Trademark dilution law is COMPLEX

[Seth Finkelstein]

I'm not a lawyer, but the topic of dilution is complex. In the end, a case like this is going to turn on the ability to fight. Look at: Trademark Dilution Summary:

The Federal Trademark Dilution Act of 1995 expanded the scope of rights granted to famous and distinctive trademarks under the Lanham Act. Dilution differs from normal trademark infringement in that there is no need to prove a likelihood of confusion to protect a mark. Instead, all that is required is that use of a "famous" mark by a third party causes the dilution of the "distinctive quality" of the mark. Further clarification of the federal dilution cause of action is found in the following subsections:

BUT

However, the Act makes clear that certain actions will not be subject to the provisions of the Act. Specifically, the Act states that fair use (such as comparative advertising), noncommercial use (such as noncommercial web pages), and all forms of news reporting and news commentary (which would apparently include reporting and commentary appearing on the Internet) would not constitute dilution under the Act.

(emphasis added)

Mattel being abusive?

[www.sorehands.com]

Mattel file an abusive lawsuit? Say it ain't so.

Watch out, if you say anything negative about Mattel, they may sue you too.

Explain this one...

[Rilke]

Let's see if I've got the SlashDot view on trademark correct.

The DigitalDivas should be able to stop Microsoft from using the term Digital Diva, even though their usage is very different, it's a fairly generic term, and virtually nobody thought that 'Digital Diva' was a reference to the prior group.

But Mattel is evil for objecting to the use of "TheBarbies" to refer to an online group for young girls, even though the reference to the doll is obvious to everybody.

C'mon, get real. It's simple theft of trademark. This guy's using the popularity of the Barbie doll to push his own .com site, nobody here seriously thinks the name was just accidental, do they?

Had TheBarbies.com been a site about barbecuing, then he'd have a point, but this is simple trademark theft. The nature of the original trademark has a direct connection to the new business.

If I bought www.quake.com to create a site about earthquakes, that's my right. But if I put up a gaming site, id software has every right to object to the theft of their trademarked name. And that's the way it should be.

Re:Ever hear of "Trademark Dilution"?

[BJH]

Who moderated this drivel up? A few facts for your edification:

1) Trademarks are valid only within certain well-defined areas - in other words, to conflict, the use of a trademark has to refer to something in the same or similar line of business.

2) The guy in this case is using it non-commercially. That exempts him from any claims upon his use of that trademark. In other words, if I'm not making any money out of it, I can call my webpage "Microsoft" or "IBM" or "Apple" and nobody can touch me.

3) Who says that the Barbie dolls on the market at the moment weren't made in Mexico? (Actually, they probably weren't - they're almost certainly made in China.)

A little refresher on trademark law

[localman]

It amazes me how few rights people think they have. IANAL, but the following seems obvious when reading trademark law.

It actually legal for you to start a company whose name included the word "barbie" as long as:

1. the goods and services involved are not similar
2. there is no evidence of actual confusion by consumers
3. the intent in adopting its mark is not detrimental to the company

There are other issues too, but those three are enough to make it clear that Mattel owning a trademark does _NOT_ remove a pre-existing word from the language.

Furthermore, in this case: dilution does not apply to non-commercial use. The law seems to support that you have the right to use the word "barbie" (or other trademarked words) for your own non-commercial reasons.

Hopefully this goes before a court of law - instead of the corporation getting what they want because most people won't or can't make it there.

Resource for domain defenders

[Sebbo]

...maybe someone should write an FAQ...

Dunno about a FAQ, but there's a mailing list/lobbying group at Ajax.org. Good luck.

It's all how you look at it.

[CAIMLAS]

See, it is our corp, in a round-about sort of way. We view slashdot in large numbers, and generally in mass quantities. This produces a croud which produces an advertising market for Andover/Slashdot (And whatever company baught Andover - wasn't there one? - I forget). They then have advertisers place adds on their site. (Basically) Andover gets money for having the ads on their site, which woudln't be there without us - the customers. A corporation isn't a corporation without customers.

Or something like that. If we ceased to exist, so would Slashdot. (Andover even? Who knows.) My point was, anyway, that the /. community could possibly do something about it.

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CAIMLAS

Abuse of the "Trademark Dilution" argument

[Felinoid]

Barbie is a girls name.
Matels clame to the name should be restricted to Matels action figure type doll.

This dilution would effect Matels ability to create a Barbie first person shoter... Something that isn't likely to happen any time soon.

If Matels doll was named "Lora" then the group might be included to call themselfs "The Loras" or they may stuble accrost the name at random.

Or if Matel had named the doll "Sue" there are a number of soungs they could be suing. "A guy named sue" is one song that comes to mind.

The dilution exists becouse the name predates Matels product as the name of a person. Not in incredably commen name however that may be a matter of parents not wanting there children to be confused with a plastic toy.

Again... Matel should own the names rights compared to the product they allready make.

Also Trademark dose not give them ownership of the name like copyrights and patents.
The trademark only grants controll.
I can not use the name "Barbie" to produce my own action figures (in the United States, Mexico or the Moon.. it makes no diffrence.. I can not call it Barbie anyplace that recognises the trademark).

But "TheBarbies" are refering to the doll.. This is allowed... or they are refering to the fact that it's a girls name... also allowed due to pre-existing delusion.

Trade Mark dose not grant the right to control the context the name is used. Only what the name refers to. That is allready weak due to the fact that it is a girls name....

It is true they must fight dilution as they can not turn back the clock and undo the damage once it is done.
However... the damage was done... and turnning back the clock is exactly what they are trying to do.
The use of the name in this way dose not violate the trademark. It may strigthen it..... But the trademark holder would rather build up to a day when they can sue parents for naming there kids Barbie...