Company Name in URL Not Copyright Infringement

Christoph writes "CNN reports that a man's website, http://www.bosleymedical.com, criticizing the Bosely Medical Institute does not infringe the institute's copyright on its name. The man's attorney is quoted as saying that the court's decision 'is an important victory for free speech on the Internet. It makes clear that consumers can use a trade name for a company they want to criticize.' The appeals court, however, reinstated part of the lawsuit in which Bosley alleged that Kremer is violating a so-called cybersquatting law by allegedly attempting to sell the site to Bosley in exchange for removing the disparaging material."

Comments

WIPO handles these cases all the time.

[bigtallmofo]

This has been addressed by WIPO in their FAQ. They have specific examples of when a trademark owner can take a domain over.

Re:WIPO handles these cases all the time.

[nguyenhm]

WIPO's decisions are pseudo-law, but are not the law (they are not a governmental body). Furthermore they are an international body. This decision by a US appellate court actually goes against the trend in WIPO case law, which had tended to favor the corporations without much recourse or chance of appeal. WIPO actually just published a casebook; seems like it may already be obsolete.

Uh copyright?

[oGMo]

Copyright... on a name? You mean Trademark?

Yes, yes you do. A quick glance at the article shows they have it right. Trademark is significantly different than copyright; and this seems to me to be a significant decision, but then I'm not a lawyer or anything.

Re:They should have waited

[Macadamizer]

Offering to sell a domain name that includes someone else's trademarked name in it to that someone for $$$ is what gets you in trouble under the anticybersquatting rules. Here's the (long_ relevant part of the Anticybersquatting Consumer Protection Act of 1999:

(d)(l)(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person --

(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and

(ii) registers, traffics in, or uses a domain name that --

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or

(III) is a-trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code.

(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to --

(I) the trademark or other intellectual property rights of the person, if any, in the domain name;

(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

(III) the person's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;

(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name;

(V) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

(VI) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct;

(VII) the person's provision of material and misleading false contact information when applying for the registration of the domain name, the person's intentional failure to maintain accurate contact information, or the person's prior conduct indicating a pattern of such conduct;

(VIII) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and

(IX) the extent to which the mark incorporated in the person's domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43.

(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

(C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.

(D) A person shall be liable for using a domain name under subparagraph (A) only if that person is the domain name registrant or that regi

Re:tbh

[Macadamizer]

We are not allowed to do something that might confuse someone?

Well, generally not -- that's the whole point of trademark law in the U.S. The test for infringement under trademark law is always "likelihood of confusion."

In the case of "sucks" sites, though, the courts in the U.S. have generally held that the free speech rights of a consumer outweigh the rights of the trademark holder to prevent the use of "confusingly similar" domain names.