Works in progress: Jacqueline Lipton

Jacqueline Lipton, Gripe Sites and Parodies in Cyberspace: Framing a Domain Name Policy to Facilitate Free Speech: This paper is part of a larger project on domain name policy. We ended up with the UDRP protecting TM owners and no one else. There are multiple kinds of domain name disputes, from celebrities to geographical indications to political fraud. ACPA does a really good job of what it was intended to do for the most part, as does the UDRP, but many disputes that arise don’t really fall within that sphere, and we need new ways to approach them.

Today’s topic: Parody sites and gripe sites, whether the registrant uses a TM as the domain name or in the domain name. Margareth Barrett has a similar paper; both take a more extreme view than many in the field would. Where the papers differ is Barrett’s belief that the courts can balance the TM factors; Lipton likes legislation and guidelines, even if that’s not all that realistic in the US.

Lipton uses a hypothetical, set forth fully in the paper, about law students who start a gripe site about a local restaurant after a bad meal there. Various tweaks – someone leaves a comment on the site recommending a rival steak house; the student rejects an offer of $500 but says “It would take a lot more than that”; etc. – raise interesting questions of commercial use, the applicability of ACPA, the UDRP, infringement, and dilution causes of action.

Courts and commentators have struggled with First Amendment implications. Lipton points out that the only real First Amendment protection in dilution is the “commercial speech” limitation – but many courts have found commercial speech more broadly than Kozinski did in Mattel. There’s nothing specific in the UDRP about protecting values other than TM values. Some arbitrators think free speech must be a legitimate use, but limit that to anything other than “trademark.com” – with no real explanation of why that should be. Is there something special about trademark.com as opposed to trademark.net or trademarksucks.com? Should we presume that’s reserved to a legitimate TM owner? Denicola thinks that’s right, Lipton is not so sure.

We should have a series of presumptions – if they have to be judicially constructed, that’s okay – that would be a sort of free speech zone. If someone other than the TM owner uses trademarksucks.com or a new critical TLD like .sux, we should presume they have the right to do so. Current law evolved without sufficient thought given to the critical and parodic sites.

Bruce Boyden: How significant is the problem? Since PETA, the gripe site people have been doing pretty well. Am I wrong about the trend?

A: There is a trend, but there are still cases, and arbitrations in particular are still finding against gripe and parody sites.

Q: Under recent UDRP decisions, is there more of a tendency to favor the TM owner against the gripe site compared to in recent federal cases, and if so why?

A: Her concern about the UDRP is that it has effectively global reach, and arbitrators defer to traditional TM law. Arbitrations are more deferential to TM owners, and the reasoning is murkier. There is more of a mess in the cheap, inexpensive system, which is probably only to be expected.

Mike Madison: Other areas outside of domain names where law has come up with a good guidelines or standards based way of accounting for First Amendment interests. We end up using case-by-case balancing in copyright, defamation, media regulation, and similar cases.

A: What we need is a TM-protective zone and anything outside it will be presumptively not TM infringement.

Eddan Katz: What about multilingual domain name issues? Coca Cola in Arabic or Chinese characters – should the TM owner have that right? Where are the boundaries?

A: That’s a great addition to the project. There’s a new .eu domain that needs policies worked out for it. The boundary has to exist to have clear rules and guidelines. The alternative is to have courts do it case by case, which has costs of its own. .com was intended to be a commercial space, but it became a default and now lots of people have .com who aren’t businesses (comment: like me), so Denicola’s proposed rule takes .com back to its foundations.

Q: What about political candidates doing strategic registration of opponents’ names?

A: They’re generally not TM cases, which is why TM doesn’t work. Has a piece on this in Wake Forest. She likes the California cyberfraud statute about misleading in an election campaign context.