ICANN San Juan 2007 The Tuesday ICANN extravaganza continued with the ritualized slaughter of individual privacy rights in the holiest of holies for American trademark attorneys: ICANN's Intellectual Property Constituency (IPC) triannual meeting, wherein they flog their misrepresentations of American trademark law on an unsuspecting, powerless and almost entirely ignorant internet community.
These overpaid mouthpieces for American corporate dominion over the internet get a new rallying cry with every extension of the internet, and the current expansion of top level domains (TLDs) is no exception. The dispute is never about whether the corporations they represent have some rights in a certain trademark - they always do. The question is where those rights are to be honored and to what extent the trademark in which they do have rights becomes subject to consumer confusion. Whether or not the mark has suffered any actual diminution of value, and what actual damages are suffered, is an extension of this seemingly simple concept.
The basic premise of American trademark law is that a violating mark be confusingly similar to an existing mark, but the analysis runs deeper than that. The resolution of whether or not a potentially violating mark is "confusing" involves a contextual analysis of both geography and the nature of the market. The recently resolved dispute between Apple, Inc. (nee Apple Computer) and Beatles' label Apple Records is a good example of the market-based analysis - once Apple started making a lot of money off of music, Apple Records had a strong enough trademark case to force a settlement.
Simple geography can be problematic as well - a famous brand in America, such as farm equipment manufacturer Caterpillar, may be considerably less famous, even unknown, in India, China or Kazahkstan. For such a brand, they may have no trademark rights whatsoever in remote locations where the brand is either not famous or almost unknown. So why should they have rights there over an unrelated internet brand? Why in the world should the scorched earth tactics of a particular American lobby in any way impact some small business in a region where they would otherwise have potentially no rights whatsoever?
In other words, is .apple at the TLD level really a potentially analogous situation to the Apple Records situation outlined above?
It's true that there are many legitimate cases of infringement out there, but extending those rights to TLDs - essentially creating universal trademark rights where none existed before - is a gross hand-out to companies not in need of any such sort of corporate welfare.
American corporations have been extremely aggressive in protecting perceived snubs of their trademarks, but the internet is an international medium of communication, and it is not at all clear that many American trademarks have much value beyond American borders. The main concern of the attorneys, of course, is money: any proposed system that requires them to do any additional work to determine who owns a potentially offending website provokes endless howling and gnashing of teeth. The refrain heard at their meetings is not the wail of the morally wronged; it's always, why should the trademark community bear the cost of this?
Never mind that the relative cost to the individual registrant defending such a suit is typically absurdly higher than the relative cost would be to a major American corporation.
So how is it that American trademark attorneys wield such power with the de facto government of the internet, ICANN?
Well, the IPC, which should represent the entire IP community of providers - and potentially even consumers, though they don't even merit a mention at the meetings - has been co-opted by a relatively narrow interest group, namely the one doing everything it can to extend lucrative American trademark protections around the globe, whether merited or not.
The privacy battles over personal information in the "whois" database are legendary and longstanding, but the idea that a common dictionary term used as a TLD could infringe a trademark took front seat at this event. I defy anyone to find an internet user so unsophisticated as to assume that a TLD is the sole domain of one company. The standard for infringement is "likely to lead to confusion", and it's ludicrous, for example, to claim that a hypothetical internet user will assume that .cat refers to the Caterpillar company, when a) the vast majority of world inhabitants have never heard of the company, and b) absolutely none of those consumers have experienced a TLD used in that fashion.
Ultimately, restricting trademarks to a very narrow group of current rights holders is bad for the entire economy, inasmuch as it restricts both competition and innovation. It also is, cynically, bad business for the trademark lobby, because they eventually will have fewer potential clients and defendants.
It's a lobby that should be very careful what it asks for - it just might get it.
Burke Hansen, attorney at large, heads a San Francisco law office