BRUCE AND JULIA: A Domain Name Case Study
IVAN HOFFMAN, B.A., J.D.
The law is continuing to evolve in this arena and often there are different outcomes to cases with similar facts which make them seem to be irreconcilable and sometimes they are in fact irreconcilable.
I wrote about several cases dealing with domains using the names of famous people in the article “Julia, Jimi and Cybersquatting.” That article dealt with, among other domains, juliaroberts.com. The outcome: Ms. Roberts won over the registrant of that domain.
However, recently the equally famous recording artist, song writer and performer, Bruce Springsteen, lost when he sought return of brucespringsteen.com. Is there a way to distinguish the outcomes in what, on first glance, appear to be headed in the same direction?
The Similarities and Differences
There was no question in the Springsteen case, as with the Roberts case, that the complainants were famous throughout the world. There was no question in each case that any person hearing the respective name would associate that name with that of the respective famous person, as opposed to someone else bearing the respective name. Thus, as to each name, the name had acquired what the law refers to as a “secondary meaning.” This is an essential component to establish rights in what is also known as “common law trademark.” Let me explain. Trademark rights occur through usage. The more a party uses a mark, assuming it otherwise qualifies, the more the party can claim a right to register the mark. (It is a bit more complicated than that since there are registrations on both the principal and secondary registers. The latter is for less distinctive marks as well as marks that have developed protectability through a secondary meaning. But let’s keep this somewhat simple.)
However, there are marks that are protected even without federal registration and those marks are “common law trademarks.” They extend to only the geographical and marketing areas in which the party is known by that mark i.e. the area of secondary meaning. In the instance of both Ms. Roberts and Mr. Springsteen, that area of course is the entire world including the Internet.
Thus, on first glance, both parties would have an equal right to claim “common law trademark” rights on a worldwide scale. Neither name was registered (or perhaps even registerable) as a federal trademark.
Under the Uniform Domain Dispute Resolution Policy (UDRP), having a registered trademark or rights in trademark is essential if a party is to be able to claim that a domain registrant is violating that party’s rights by having a particular domain. There are other issues that must be proven including that the registrant reserved it and is using it in “bad faith” and that the registrant has no “legitimate interests” in the domain. There are a number of articles on my site under the above link dealing with domain disputes in general and “legitimate interests” in particular that you should read for a further explanation.
In the Julia Roberts case, the domain name registrant had registered the indicated domain but was not operating any site in connection with any real business other than to reserve and in turn sell domains.
In the Springsteen case, however, the owner claimed to be running a site bearing the disputed domain as a fan club for the singer, although the operator of the club had also reserved something around 1,500 other domains belonging to famous parties.
The arbitration Panel ruled as follows:
It appears to be an established principle from cases such as Jeanette Winterson, Julia Roberts, and Sade that in the case of very well known celebrities, their names can acquire a distinctive secondary meaning giving rise to rights equating to unregistered trade marks, notwithstanding the non-registerability of the name itself. It should be noted that no evidence has been given of the name "Bruce Springsteen" having acquired a secondary meaning; in other words a recognition that the name should be associated with activities beyond the primary activities of Mr. Springsteen as a composer, performer and recorder of popular music.What the foregoing means in non-legal language is that this particular Panel disagreed with the indicated other decisions on fundamental grounds i.e. that the UDRP policy should not protect domains using proper names, no matter how distinctive those names might be. While the Panel decided the case on other bases, discussed below, their position is a stopping point for some consideration. If in fact the name has “trademark” value in that the public associates the name with a particular person (as the public associates a mark, brand, with a particular company etc.), for what possible reason would such names not be protected? Many states as well as federal law prohibit the unauthorized use of a celebrity’s name (and likeness) in a commercial context. This is equivalent to giving a celebrity rights in and to his or her name. How different is the domain registration issue? It would thus seem that such “beside the point” comment of the Panel would not be keeping with generally accepted principles of trademark and right of publicity law.
In the view of this Panel, it is by no means clear from the UDRP that it was intended to protect proper names of this nature. As it is possible to decide the case on other grounds, however, the Panel will proceed on the assumption that the name Bruce Springsteen is protected under the policy; it then follows that the domain name at issue is identical to that name. [emphasis added]
However, the Panel went on to evaluate the elements of a UDRP action (see the above articles) in fairly summary form until it got to the question of whether the domain name holder was “making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.” In this regard, the Panel found that there were thousands of sites that used the name of the artist within their content and thus, the Panel found, that the domain in question could not likely “divert customers…” The Panel found that there was no overt attempt at misleading visitors to the site that it was somehow endorsed by or was any sort of “official” site of Bruce Springsteen.
As to the issues about “bad faith,” the Panel pointed out that the registrant could have, at the time he registered the domain in question also have registered the .net and .org versions but did not (indeed, the “official” Springsteen site is brucespringsteen.net, registered by the performer’s record company). This, the Panel concluded, demonstrated that the registrant did not act with the requisite bad faith. That the registrant knew that the .com version was the one with most value and in so registering the .com version the registrant prevented the claimant from doing so apparently did not carry much weight with the Panel.
The Panel stated:
“This Panel believes that previous Panels have all too readily concluded that the mere registration of the mark, and indeed other marks of a similar nature, is evidence of an attempt to prevent the legitimate owner of registered or common law trade mark rights from obtaining a “corresponding domain name”. This is an issue which should be looked at more closely, and for the purposes of this complaint, the Panel finds that the “circumstance” in paragraph 4(b)(ii) does not arise for the purpose of demonstrating bad faith on the part of the Registrant.”But it seems to me that the key difference between the 2 cases is found in the following language of the decision.
The Panel stated, with regard to the site in issue:
“The relevance of this is that it is relatively unlikely that any user would seek to go straight to the internet and open the site <brucespringsteen.com> in the optimistic hope of reaching the official Bruce Springsteen website. If anyone sufficiently sophisticated in the use of the internet were to do that, they would very soon realise [it was a British Panel] that the site they reached was not the official site, and consequently would move on, probably to conduct a fuller search.”It strikes me that just the opposite conclusion could, and indeed should, be drawn. The site with the name of the artist as the domain followed by the .com is almost always viewed as the “official” site, thus leading to confusion.
In sum, the Panel concluded with this philosophical comment that explains fully, it seems to me, the basis for their decision:
“The internet is an instrument for purveying information, comment, and opinion on a wide range of issues and topics. It is a valuable source of information in many fields, and any attempt to curtail its use should be strongly discouraged.”What is or is not the underlying construct of free market capitalism as it applies to the Internet in particular and in the market generally goes a long way toward explaining where the Panel, where you, where anyone, comes out on a given issue. It is “The Internet Wants to be Free?” or is it that this is the most current example of marketplace economics that have to be subject to the rules regarding property rights including rights in trademarks.
The Internet and the underlying legal system in regard to the same continue to evolve. More to come.
© 2001 Ivan Hoffman