[gnso-rpm-wg] Action Items, Slides and Notes from the Working Group call held earlier today

[George Kirikos]

Hi folks,

On Thu, Apr 6, 2017 at 8:49 AM, J. Scott Evans <jsevans at adobe.com> wrote:
> The law is clear: an exact match isn't free speech. It is trademark infringement. A domain that coveys a message (e.g., hotels suck.com) is free speech and protected accordingly. Also, "free speech" is a US constitutional concept adopted by some countries, but it is not a universal legal concept. Perhaps universal free speech is aspirational, but it is not reality.

Perhaps you should refrain from giving out legal analysis, since it's
obvious that the law isn't clear at at all that "an exact match isn't
free speech" or that "exact match" equates to "trademark
infringement". There are concepts such as "fair use", or use in
entirely different contexts ("Apple" for the fruit we eat, etc.).

And to provide a very pointed example of fair use, I will link to a
case that J. Scott should be familiar with, namely Adobe Systems v.
Christenson:

http://fairuse.stanford.edu/case/adobe-systems-inc-v-christenson/

"This appeal arose from a copyright dispute between Adobe and
defendant and his software company, SSI. The court affirmed the
district court’s dismissal of both Adobe’s copyright and trademark
claims....... Finally, the court concluded that the district court
properly analyzed the trademark claim under the nominative fair use
defense to a trademark infringement claim instead of under the unfair
competition rubric. "

http://tushnet.blogspot.ca/2012/09/adobe-crumbles-litigation-mistakes.html

(from one of our fellow working group members) "Adobe crumbles:
litigation mistakes allow reseller to prevail"

"Unsurprisingly, the trademark claims proceeded similarly.  The
multifactor test doesn’t apply in nominative fair use cases.  When the
defendant shows that it was using the mark to refer to the trademarked
good, the burden shifts to the plaintiff to show that the use wasn’t
nominative fair use.  This Adobe could not do. "

So, the last folks I think we should be taking advice from is Adobe,
when their arguments have been losers in real court.

There have been other examples of "nominative fair use" in the UDRP
jurisprudence, as well.

http://www.adrforum.com/domaindecisions/1675141.htm

"Respondent (citing Toyota Motor Sales U.S.A., Inc. v. Tabari, 610
F.3d 1171 (9th Cir. 2010)) argues that it is making a nominative fair
use of the YETI trademark to indicate to consumers that it sells
accessories for use with YETI brand cups and tumblers.  As noted
above, in the context of the UDRP, an oft-cited standard for assessing
nominative fair use is the standard articulated in Oki Data Americas,
Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (Nov. 6, 2001).  Although
that decision does not reference the trademark law principle of
“nominative fair use,” the standards are functionally equivalent, and
the four part test articulated in Oki Data is shaped by the same
underlying policy concerns."

"Free speech" is enshrined in the "Universal Declaration of Human Rights":

http://www.un.org/en/universal-declaration-human-rights/index.html

(Article 19) so to suggest that it's just a US concept or that of a
minority is incorrect. Here's the Canadian Charter of Rights and
Freedoms:

http://laws-lois.justice.gc.ca/eng/Const/page-15.html

"2. Everyone has the following fundamental freedoms:

(a) freedom of conscience and religion;

(b) freedom of thought, belief, opinion and expression, including
freedom of the press and other media of communication;

(c) freedom of peaceful assembly; and

(d) freedom of association."

I think what we have seen too often in this working group are bold
legal assertions that are simply unsupported by law. They might have
gotten away with that in the past, when few people were participating
in the working groups, or where self-selected secret groups were
tasked to work on policy. But, given the broad participation in this
working group with its transparency, that's not going to happen any
longer.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/