DOMAIN NAMES-CALIFORNIA LAW

IVAN HOFFMAN, B.A., J.D.



        California has a law (Business and Professions Code sections 17525-17528) regulating one aspect of domain name law.  I have previously written about another California statute dealing with the Internet that you should read: “The California Long-Arm Statute.”   The California statute that is the subject of this article deals with the rights of both individuals and famous personalities embodied in other statutes, both state and federal, such as I wrote about in “Rights of Privacy: An Overview,”  which you should also read.  Finally, you should also read the several other articles dealing with trademarks and domain names on the link with that title including but not limited to “Julia and Jimi and Cybersquatting: An Update,” and “Bruce and Julia: A Domain Name Case Study.”

The Statute

        The statute provides in part as follows:

        (a) It is unlawful for a person, with a bad faith intent to register, traffic in, or use a domain name, that is identical or confusingly similar to the  personal name of another living person or deceased personality, without regard to the goods or services of the parties.

   (b) This section shall not apply if the name registered as a domain name is connected to a work of authorship, including, but not
limited to, fictional or nonfictional entertainment, and dramatic, literary, audiovisual, or musical works.

The statute goes on to define “bad faith intent” in terms that are similar to the language in the federal AntiCybersquatting Consumer Protection Act (ACPA).  The statute gives several factors that may be considered by a court in determining such “bad faith.”  These factors include:

(a) The trademark or other intellectual property rights of the person alleged to be in violation of this article, if any, in the domain name.
(b) The extent to which the domain name consists of the legal name of the person alleged to be in violation of this article or a name that is otherwise commonly used to identify that person.
(c) The prior use, if any, by the person alleged to be in violation of this article of the domain name in connection with the bona fide offering of any goods or services.
(d) The legitimate noncommercial or fair use of the person’s or deceased personality’s name in an Internet web site accessible under the domain name by the person alleged to be in violation of this article.
(e) The intent of a person alleged to be in violation of this article to divert consumers from the person’s or deceased personality’s name online location to a site accessible under the domain name that could harm the goodwill represented by the person’s or deceased personality’s name either for commercial gain or with the intent to tarnish or disparage the person’s or deceased personality’s name by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.
(f) The offer by a person alleged to be in violation of this article to transfer, sell, or otherwise assign the domain name to the rightful owner or any third party for substantial consideration without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services.
(g) The intentional provision by the person alleged to be in violation of this article of material and misleading false contact information when applying for the registration of the domain name.
(h) The registration or acquisition by the person alleged to be in violation of this article of multiple domain names that are identical or confusingly similar to names of other living persons or deceased personalities.
(i) Whether the person alleged to be in violation of this article sought or obtained consent from the rightful owner to register, traffic in, or use the domain name.
          In sum, these provisions seek a balance between the rights of a domain name owner who is operating a legitimate business online under that domain and the rights of an individual or a personality to protect his or her rights of both privacy as well as publicity.  As discussed in the above article dealing with rights of privacy and publicity, dead persons generally have no such rights.  However, the law in many states as well as federal law recognize the value in the rights of celebrities or personalities and this new California statute continues this protection.

        The statute adopts the definition of a “deceased personality” from another section of California law and it states:

 (h) As used in this section, “deceased personality” means any natural person whose name, voice, signature, photograph, or likeness has commercial value at the time of his or her death, whether or not during the lifetime of that natural person the person used his or her name, voice, signature, photograph, or likeness on or in products, merchandise or goods, or for purposes of advertising or selling, or solicitation of purchase of, products, merchandise, goods, or services.  A “deceased personality” shall include, without limitation, any such natural person who has died within 70 years prior to January 1, 1985.
Open Questions

        This section, focused as it is on domain names that use the names of living persons or deceased personalities runs into some legal issues.  Initially, the question of overlap with federal laws in the same area of law has to be decided.  In such instances, a state law often is preempted by the federal law.  In this regard, the issue of the rights in trademark under the ACPA and the corresponding Uniform Domain Name Resolution Policy (UDRP) as well as the general federal trademark and unfair competition law (The Lanham Act) must be faced since there appears to be significant overlap.

        Moreover, the cases dealing with the rights of personalities in domain name arbitrations is less than clear.  As you can see by reading the articles dealing with the Julia Roberts and Bruce Springsteen cases, the decisions are by no means unanimous in protecting the rights of personalities in these areas.

        Further, the law appears to create a state right of action against domain name violators but there is nothing in the 4 corners of the statute that expresses whether or not it applies to such violators who reside in California or anywhere nor does it limit its application to claims arising in the state in any other manner.  Thus, much like the statute discussed in “The California Long Arm Statute” article, the jurisdictional validity of this statute is somewhat unclear as well.

Conclusion

Notwithstanding the vagaries of the statute and its applicability, it is an attempt to bring some order to the ever-changing world of Internet law as it relates to domain names.  As with most issues in law, each case has to be evaluated on its own merits, according to the facts presented in those cases.    What may seem like a clear “winner” or “loser” may turn the other way.

© 2001 Ivan Hoffman

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This article is not intended as a substitute for legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  You should consult with an attorney familiar with the issues and the laws.
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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

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