Trademark

A trademark is any sign that can distinguish the goods and services of one trader from those of another. So a trademark is different from

• a copyright that protects a work;

• a patent that protects an invention.

Trademarks are distinctive words, phrases, logos, symbols, slogans or other things that identify the source of a good or service and make it distinctive.

Whereas the copyright is implicit (established by the very existence of the work) patents require filing a patent application in a patent office that checks whether this application conforms to some rules and is useful, novel and not obvious in an examination process. In that respect a trademark is closer to a patent than to copyright.

You can establish rights* in a mark based on legitimate use of this mark but registering a mark provides several advantages:

• the mark is recorded in an office;

• because the office checked that the registration request was valid there is a legal presumption of the registrant's ownership of the mark and of the registrant's exclusive right to use the mark;

• you can bring an action concerning the mark in court;

• you can license your trademark.

* These are exclusive rights. The mark owner is entitled to prevent all third parties not having his consent from using the mark.

An illustration of this sentence is the story of the Linux trademark. Linus Torvalds wrote an operating system and called it Linux. Then another person registered a Linux trademark in USA and sent threatening letters to people making Linux distributions. As a result of litigation brought by a group of five Linux companies and individuals against the registrant (1) the matter was settled by the assignment of the mark to Linus Torvalds, on behalf of all Petitioners and Linux users, and the dismissal with prejudice of the pending PTO Cancellation Proceeding; and (2) that Respondent was reimbursed for his trademark filing fees and costs by Petitioners.

So:

1. because they could demonstrate an earlier use of the Linux name plaintiffs could ask the cancellation of a trademark to the U.S. Trademark Trial and Appeals Board; but

2. they had to hire an intellectual Property firm; and

3. they eventually preferred a settlement in which they had to pay respondent costs by petitioners and their firm in addition to the trademark filing fees.

Therefore it is preferable to register marks even, sadly enough, for Open Source products. Registering a mark is simpler, faster and cheaper than getting a patent but is not necessarily worth the expense. A good trademark to which the law affords a significant protection:

• is inherently distinctive;

• gained distinctive recognition through long use and marketing.

In particular a trademark that is not used cannot be protected *.

* In some countries trademark owners have five years to start using their trademark.

Trademark law is almost the same everywhere in the world, notably because of early treaties:

• The Paris Convention for the Protection of Industrial Property (1883).

• The Madrid agreement (1891). Do not confuse the Madrid agreement whose full name is "Madrid Agreement Concerning the International Registration of Marks" with the Madrid protocol (1989) composed by the World Intellectual Property Organization (WIPO) and whose full name is "Protocol Relating to the Madrid Agreement Concerning The International Registration of Marks". You can find both in http://www.wipo.int/madrid/en/legal_texts/

• The Nice agreement (1957) whose full name is "Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks".

However every country has a different case law history, notably regarding the legitimate use / use requirement aspect. Article 5 C of the Paris Convention left some freedom and space for interpretation:

1. If, in any country, use of the registered mark is compulsory, the registration may be cancelled only after a reasonable period, and then only if the person concerned does not justify his inaction.

2. Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark.

3. Concurrent use of the same mark on identical or similar goods by industrial or commercial establishments considered as co–proprietors of the mark according to the provisions of the domestic law of the country where protection is claimed shall not prevent registration or diminish in any way the protection granted to the said mark in any country of the Union, provided that such use does not result in misleading the public and is not contrary to the public interest.

As Linus Torvalds wrote in a Slashdot story the trademark owner must "police the use of the trademark (unlike, for example, copyright law, where the copyright owner is the copyright owner, always is, and always will be unless he willingly relinquishes ownership, and even THEN he ends up having rights)." In that respect trademark law is also different from patent law, in which the patentee has the discretionary right to bring action against an infringer and ignoring another equally infringing entity.

Linus Torvalds added "a trademark owner has to be shown as caring about even small infringements, because otherwise the really bad guys can use as their defense that 'hey, we may have misused it, but look at those other cases that they didn't go after, they obviously don't care...'"

This relates to the doctrine of laches. Laches is a legal term that means negligence. Neglect to assert a right or claim, together with lapse of time and other circumstances, prejudices an adverse party in equity. There is a defense of laches, which is based upon plaintiff's inexcusable delay in asserting or attempting to enforce trademark rights.

Mark law is primarily designed to protect the marks of companies that spent sizable amounts of money, for instance in advertising, to establish the mark and are ready to also spend money to police the mark. This is definitely worth the expense for instance for the candy and liquor companies, in which the marks are usually the biggest asset.

The process for registering a trademark is similar to a patent prosecution. When you apply to register a trademark, an examiner checks your trademark application and sends you an examination report in which they can object to your trademark. You can overcome such objection by modifying the application or by persuading the examiner that the objection is not justified. Then the application is published and other parties can oppose to the application during a certain period. Then, if there were no oppositions or if you overcame them, the trademark is registered.

For instance Art 8 of the community trademark regulation explains that a trade mark shall not be registered:

• if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

• if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

A trademark belongs to one or several class. There are 45 classes listed in http://www.uspto.gov/web/offices/tac/tmfaq.htm. A trademark is further associated with goods or services which have a commercial name. The best on USPTO is to search the appropriate commercial name and the corresponding class name on http://tess2.uspto.gov/netahtml/tidm.html. For instance if you want to apply for a trademark related to financial transaction select "All Fields" in the "Choose Field" list box and transaction in the "Enter Search Terms" text area.

Classes and commercial names define the domain in which the mark is protected. Another applicant may register an identical or similar mark in a different domain if the public cannot confuse the marks, which may happen or not depending on;

• the distinctiveness of the marks (a family name is hardly distinctive whereas a picture with well defined colors is distinctive);

• the domain similarities.

For illustration purpose we can take the example of Jack Daniel. This is not a very distinctive mark. Many people are named Jack Daniel and therefore entitled to some extend to name their business Jack Daniel.

Because Jack Daniel is not distinctive a Jack Daniel Company specialized "in complex systems applications including in-building and underground RF distributions systems (BDA, coax and fiber optic), specials, field engineering, noise mitigation and other unique wireless system challenges" can co-exist with the distillery. This company owns http://www.jackdaniel.com whereas the distillery owns http://www.jackdaniels.com. The distillery cannot make RF systems and the Jack Daniel Company cannot make whiskey, bourbon and other liquors under their brand names.

We can look at Jack Daniel trademarks using TESS. On March 9, 2005 108 marks were registered:

• 59 also include old no 7 to add distinctiveness and belong to the distiller (Jack Daniel's Properties, Inc.);

• the distillery also registered trademarks for telephone accessories, audio equipment and accessories, computer accessories, entertainment services in the field of concert promotions, barbecue and steak sauce, cigars, cigarettes, chewing tobacco, restaurant and bar services, wood chips for smoking and flavoring foods, pellet fuel made of charcoal and wood, cigarette lighters, caps, jackets, aprons, sweaters, belts, shirts, T-shirts, overalls, and jeans;

• a Canadian company registered Jack Daniel’s for alcohol-free beverage [the distillery could not prevent this and its own mark for spring water was cancelled].

Article 1209.01(c)(i) of the Trademark Manual of Examination Procedures (TMEP) reads: "Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services."

Generic terms cannot be used as marks.

Article 1209.01(c)(i) defines a two-part test "to determine whether a designation is generic:

1. What is the class of goods or services at issue? And

2. Does the relevant public understand the designation primarily to refer to that class of goods or services?"

"When a term is a compound word, the examining attorney may establish that a term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has a meaning identical to the meaning common usage would ascribe to those words as a compound." This can be the case of words like etravel, etrade...

Terms that were deemed “so highly descriptive as to be incapable of exclusive appropriation as a trademark" cannot be used as marks.

Article 6.5B of the Paris Convention reads:

• "Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: [...]

• (2) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed."

The TMEP explains:

"With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. [...] At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary [like Apple] or fanciful [like Kodak]. Next on the continuum are suggestive marks, followed by merely descriptive matter. [...] Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought or perception to reach a conclusion as to the nature of those goods or services."

Domain names are managed by registrars that register domain names on a "first-come, first-served" basis. In 1994 there was a legal vacuum that allowed individuals to register for instance corporate names as their own internet address. The vacuum was coming from the dual nature of domain names:

1. the technical function of a domain name is to uniquely identify a server like a post mail address uniquely identifies a building; but

2. unlike a post mail address, the domain name is chosen by the requestor.

In 1994 individuals and firms registered domain names containing the trademarks of prominent companies in the hope that these latecomers would be forced to pay a ransom to use their own trademarks in their domain names. This practice was called cyber-squatting.

Then it was not clear whether there would be kinds of yellow pages to identify domains related to a certain activity. Such services never got popular acceptance. Domain names were used to distinguish providers and actually served as trademarks. So in the 1995-1996 trademark disputes over internet domain names courts recognized that domain names could be used in a trademark manner.

There is however a difference between a mark and a domain name, which is that a (domain name, TLD) is unique (TLD=.com being the most desirable) whereas this is the association (mark, commercial name of the goods or services associated with the mark) that has to be unique. Because of the "first-come, first-served" rule the domain name is granted to a person or company with rights on this name and not necessarily to the company that has the most famous mark.

The ICANN put in place a Uniform Domain Name Dispute Resolution Policy (UDRP). ICANN stands for Internet Corporation for Assigned Names and Numbers. ICANN is an internationally organized, non-profit corporation that has responsibility for Internet Protocol (IP) address space allocation, protocol identifier assignment, generic (gTLD) and country code (ccTLD) Top-Level Domain name system management, and root server system management functions. So the UDRP applies first to global top level domains that the ICANN controls, namely .biz, .com, .info, .name, .net, and .org as well as .aero, .coop, and .museum. The UDRP does not apply to

• historical domain names (.edu, .gov, .int, .mil) for which there are registration restrictions;

• country-code top-level domains (ccTLD), except in a few cases where the local administrator has decided to adopt it. Note that the World Intellectual Property Organization (WIPO) published ccTLD Best Practices for the Prevention and Resolution of Intellectual Property Disputes that serve the same purpose as the UDRP.

The UDRP says that "by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."

You have to submit to a mandatory administrative proceeding and can lose your domain name if a complainant can prove that:

1. "your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

2. you have no rights or legitimate interests in respect of the domain name; and

3. your domain name has been registered and is being used in bad faith."

Registrars obviously implement court decisions and many trademark disputes are related today to the use of a domain name (see the Nissan case below).

Note:

Examples of confusingly similar domain names are:

• domain names within a different top level domain. See for instance http://www.whitehouse.org or http://www.whitehouse.com.

• Typo-squatters domains. Typo-squatters register intentionally misspelled domain name variations of the actual company's trademark. See for instance http://www.micorsoft.com or http://wwwwhitehouse.com/.

The very fact that such sites still exist shows that a domain owner has to police its domain name and does not necessarily wins (whitehouse is not distinctive; there is the first amendment...) in case of dispute. An inappropriate threat can also cause bad publicity. See for instance the Mike Rowe story in http://www.ctv.ca/servlet/ArticleNews/story/CTVNews/1074634208546_70043408/?hub=SciTech and http://www.geek.com/news/geeknews/2004Jan/gee20040120023504.htm.

In USA trademarks are managed like patents by the United States Patent and Trademark Office (USPTO).

The USPTO distinguishes service marks from trademarks*:

• A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.

* The Paris Convention (1883) already read [Art 6.6]:

"The countries of the Union [countries that signed the Paris Convention] undertake to protect service marks. They shall not be required to provide for the registration of such marks."

The Trademark Law Treaty (TLT) adopted in 1994 reads [Art 16]:

"Any Contracting Party shall register service marks and apply to such marks the provisions of the Paris Convention which concern trademarks."

The USPTO explains the registration / policy issue in the following way:

"The United States Patent and Trademark Office (USPTO) reviews trademark applications for federal registration and determines whether an applicant meets the requirements for federal registration. We do not decide whether you have the right to use a mark (which differs from the right to register). Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a registration issues, it is up to the owner of a mark to enforce its rights in the mark based on ownership of a federal registration."

Mere use of a mark is enough to create a common law mark if the mark is distinctive and has created a "secondary meaning." Rights of create a common law mark are limited to the geographic area in which the mark is used. The TM (trademark) and the SM (service mark) symbols notify the world of the owner's intent to protect his or her mark rights in a particular common law mark. This is the R symbol with a circle around that notifies the world that the mark owner has registered his or her mark in the USPTO.

The manual of mark examinations is the Trademark Manual of Examination Procedures (TMEP). The law governing registered marks is the Lanham trademark act of 1946. The applicable code of Federal regulations is 37 CFR Part 2.

The modus operandi to file a trademark application is explained in the USPTO site. The preferred means is the Trademark Electronic Application System (TEAS). TEAS allows making filings online. To search registered marks you can use the Trademark Electronic Search System (TESS).

Each European country has its own trademark registration authority. For instance:

• In United Kingdom the authority is the patent office (http://www.patent.gov.uk). To learn how to apply for a UK trademark visit http://www.patent.gov.uk/tm/howtoapply/ and read the "Applying to register a Trade Mark" booklet. Trademarks are published in a Trade Marks Journal.

• In France the authority is also the patent office, called the Institut National de la Propriete Intellectuelle (INPI). The site is in French. To learn how to apply for a French trademark visit http://www.inpi.fr/front/show_rub.php?rub_id=5. Trademarks are published in a Bulletin Officiel de la Propriete Industrielle (BOPI).

A community trademark was established by the European Union to provide a unified trademark for the entire European Community. Once acquired, a mark covers all European Union countries and allows enforcing trademark rights in the entire region. The community trademark registration authority is the Office for Harmonization of the Internal Market (OHIM). To learn how to apply for a community trademark you can read:

• the FAQs;

• the guidelines and notably the introduction;

• a note about evidence of use;

• a good though a bit old introduction entitled "European Community Trademark Basics" by Paul D. Supnik.

The applicable regulation is here. You can file a community trademark application online with E-FILING. To search community trademarks you can use CTM-ONLINE.

After the expiration of the opposition period a third party can still apply for revocation of rights or for a declaration of invalidity of a registered trademark to a Cancellation division.

An applicant can appeal a decision from the OHIM (examiners, Opposition Divisions, Administration of Trade Marks and Legal Devision and Cancellation Divisions) to a board of appeal.

In the same way as there is a Patent Cooperation Treaty (PCT) for patents there is a Trademark Law Treaty (TLT) for trademarks.

The most important regulation is the Madrid protocol (1989) composed by the World Intellectual Property Organization (WIPO) and whose full name is "Protocol Relating to the Madrid Agreement Concerning The International Registration of Marks" that you can find at http://www.wipo.int/madrid/en/legal_texts/.

The Madrid protocol leverages on:

• the Paris Convention for the Protection of Industrial Property;

• the Nice agreement (1957) whose full name is "Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks".

You can find documents of interest about the use of the Madrid protocol at http://www.uspto.gov/web/trademarks/madrid/madridindex.htm. The Madrid protocol works the same as the PCT for patents:

• "To apply for an international registration under the Madrid Protocol, an applicant must be a national of, be domiciled in, or have a real and effective business or commercial establishment in one of the countries that are members of the Madrid Protocol (Contracting Parties).

• An international application must be based on a trademark application or registration in one of the Contracting Parties (basic application or basic registration).

• The international application must be for the same mark and include a list of goods and/or services identical to or narrower than the list of goods and/or services in the basic application or registration [like subject matter for patents].

• The international application must designate one or more Contracting Parties in which an extension of protection of the international registration is sought.

• The international application must be submitted through the trademark office of the Contracting Party in which the basic application is pending or basic registration is held (office of origin).

• The office of origin must certify that the information in the international application corresponds with the information in the basic application or registration, and transmit the international application to the IB [Office to the International Bureau of the World Intellectual Property Organization (WIPO) – priority]."

The IB publishes the application in a WIPO Gazette of International Marks. The registration authorities of the designated countries examine the request for extension of protection as a national application under their laws, and if it complies with the requirements for registration, grant protection of the mark in their country.

Governments also signed the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) whose Article 16 entitled "Standards concerning the availability, scope and use of Intellectual Property Rights | COPYRIGHT AND RELATED RIGHTS | TRADEMARK | Right conferred" reads:

1. "The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use."

Paragraphs 16(1) and 16(2) define the rights conferred by a mark in a way consistent with previous treaties (notably the Paris Convention) and national laws. Paragraph 16(3) relates to dilution like 15 U.S.C. § 1125. For famous marks it explicitly extends the protection to misuses of a trademark or service mark on dissimilar goods. As we see below in the Google and Nissan cases these articles are too imprecise to be implemented in a consistent way by national laws. This issue may even arise with the state laws of a Federal country.

The House Report 104-374 - FEDERAL TRADEMARK DILUTION ACT OF 1995 reads: "A federal dilution statute is necessary because famous marks ordinarily are used on a nationwide basis and dilution protection is currently only available on a patch-quilt system of protection . . . . Further, court decisions have been inconsistent and some courts are reluctant to grant nationwide injunctions for violation of state law . . . . This simply encourages forum-shopping and increases the amount of litigation."

Forum shopping is what happens today. With Internet business and alleged infringements are global but the applicable law is still local. The interest of trademark owners is to file suits in countries whose law better supports their interests. As a consequence the strictest law tends to apply everywhere. Harmonization is difficult because national courts rule cases in a way consistent with their national law and national laws are deeply different. We are left with two solutions:

• applying national laws, which implies an inconsistent global marketplace;

• defining global courts with global case laws that would apply everywhere and would presumably be inconsistent with national laws to allow a consistent global marketplace.

Internet facilitates infringement search:

1. an infringer will try to register a mark or to acquire a domain name close to the registered mark;

2. an infringer will describe her infringing offer on her web site;

3. an infringer may issue press releases, answer interviews...

4. a customer of the infringer’s product will talk about her experience with this product on a web site, mailing list or news group.

You can use regular search engines like:

• http://www.google.com

• http://www.ask.com

• http://www.msn.com

• http://www.yahoo.com

There are other free tools of interest:

• News search engines like http://news.google.com/, http://news.search.yahoo.com/ and the news tab of http://www.msn.com/;

• http://groups.google.com/ that includes Google groups and "offers the Web's most comprehensive archive of Usenet postings (more than a billion messages)";

• http://www.archive.org/, "a digital library of Internet sites and other cultural artifacts in digital form" including the Internet wayback machine service that allows people to visit archived versions of Web sites. The Internet wayback machine allows finding when the potential infringer started to use the mark.

• http://www.networksolutions.com/en_US/whois/index.jhtml, a whois engine (there are many others) to check when a given domain was created.

The two latter tools are especially useful to determine who the first user of a mark was.

You can try the following web sites:

• http://www.nameprotect.com/

• http://www.micropat.com/static/search_tm.htm

Google has an AdWord advertising program allowing creating ads, choosing keywords to help Google to match these ads to a target audience and paying when someone clicks on these ads' links.

Google considers that they provide space for advertisements and that they do not have to forbid keywords and ad content that could infringe the trademark law. They explain in http://www.google.com/tm_complaint.html that:

• they "cannot arbitrate trademark disputes between advertisers and trademark owners;"

• "the advertisers themselves are responsible for the keywords and ad content that they choose to use;"

• "they encourage trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar advertisements on other sites;"

• when they receive a complaint from a trademark owner, Google investigates whether the advertisements at issue are using terms corresponding to the trademarked term in the advertisement's content and, outside USA and Canada, in keywords. If trademark terms are used, Google requires the advertiser to remove the trademarked term from the content [and keyword list outside USA and Canada] of the ad and prevents the advertiser from using the trademarked term in the future.

In a way Google implements the current legal practices:

• Google implements a Content Policy that forbids advertising for things like drug, weapons, counterfeit goods which are forbidden by law.

• trademark owners being responsible for policing the use of their trademarks, upon and only upon request from said trademark owners Google requires advertisers to remove trademarked terms.

I summarize the different aspects of this issue in the following way:

• If advertisers can use trademarks in their keywords and ads Google makes more money with AdWord while AdWord facilitates trademark violation and requires more policy work from trademark owners.

• Law generally ignores how feasible is a function; AdWord and similar programs could ask the advertisers to declare the commercial name associated with their advertising and use trademark databases to ensure that trademarked terms are not used in ads and keywords. But if AdWord and similar programs were found liable for trademark violation, search engines could also be found liable for trademark violation. Search engines provide index space for content. When a user makes a search with a keyword list the search engine looks for pages containing this keyword list. A search engine cannot make the difference between the legitimate (and expected) use of a trademark in a press release or in an article and an illegitimate use of a trademark in a competitor page.

• A Google VP said that "by letting people restrict certain words, you're not getting the results that people expect from Google." People can use trademarked terms as an easy way to find providers of the type of goods or services provided by the trademark owner. When they click on an advertised link people usually know that they are not going to the site of the trademark owner and there is no confusion. People use trademarked terms precisely because of their distinctive quality. If this distinctive quality is diluted trademarked terms are no more good keywords. People use trademarked terms, and therefore leverage on the goodwill of the trademark owner, because of the lack of well-known commercial names much in the same way they would use words like plumber in yellow pages. Only unrestricted keywords allow Google to display sponsored links (right side) consistent with search results (left side).

As reported in an arstechnica story entitled “Gecko, Geico, all is fair in web search triggers", in 2004 "the insurance company Geico filed suit against Google and Overture over what they deemed were trademark violations in search related advertising. According to Geico, protected keywords that triggered ads for rival companies diluted their trademark and created customer confusion." The district court found that "as a matter of law it is not trademark infringement to use trademarks as keywords to trigger advertising."

This dispute may have been triggered by a change in the Google policy. In April 2004 Google allowed "U.S. and Canadian advertisers to bid on any keyword, including trademarked terms, sold as part of its sponsored listings service." "Previously, Google had granted requests from advertisers, [...], to bar competitors from bidding on their trademarked names [in the same way Google still does today the outside USA and Canada]."

French courts ruled AdWord disputes in a different way, first when Luis Vuiton sued Google and its French subsidiary in 2004 and next in 2005 when the Meridien resort chain sued the French subsidiary of Google in 2005. Here is the ruling of the latter case.

Le Meridien filed a suit for counterfeiting. The court ordered Google:

• to not display ads for providers of services or goods belonging to the class of Hotel Meridien services and goods when users entered a term trademarked by Hotel Meridien;

• to pay the trial expenses;

• to pay 3000 euros to Hotel Meridien (not a lot even by a French standard);

Google notably said that:

• meridien was not distinctive (meridien meaning meridian);

• when notified by Le Meridien, they enforced their policy (require the advertiser to remove the trademarked term from the keyword list and prevent the advertiser from using the trademarked term in the keyword list in the future), which was acknowledged by the court. However in some cases ads for Le Meridien competitors were still displayed.

The court found that:

• in its documentation Google incited advertisers to replace generic keywords by specific keywords to improve the ad relevance and therefore had a responsibility in the advertiser choice of keywords;

• because a search request with meridien was a request to find services provided by Le Meridien, commercial links to similar offers from other providers was causing confusion.

This example shows that:

• National laws are different. For instance in France it is very difficult to not be found responsible for something though French courts acknowledge that there are degrees of responsibility.

• The question here is whether people can use a trademarked term to find services of the type of the goods and services provided by the trademark owner or only the goods and services of the trademark owner. If there is trademark violation the first infringer is the user who uses trademarked terms. The French ruling aims to bar users from getting relevant ads with trademarked terms.

Nissan Motor sued Nissan Computer (named after its founder and current President, Mr. Uzi Nissan) for Trademark Infringement, Trademark Dilution and Cyber-squatting. In http://www.nissan.com (the domain still belongs to Nissan Computer) you can find this:

"In a series of summary judgments, the district court [state court] ruled as follows:

1) CyberSquatting claim, in favor of Nissan Computer.

2) Infringement on non-auto-related claim, in favor of Nissan Computer.

3) Infringement on auto-related claim, in favor of Nissan Motor.

4) Dilution, in favor of Nissan Motor.

5) And issued a Permanent Injunction, allowing Nissan Computer to keep operating nissan.com and nissan.net domain names, but prohibited us from:

• Posting Commercial content at nissan.com and nissan.net.

• Posting advertising (and permitting advertising to be posted by third parties) at nissan.com and nissan.net.

• Posting disparaging remarks or negative commentary regarding Nissan Motor Co., Ltd. or Nissan North America, Inc. at nissan.com and nissan.net.

• Placing, on nissan.com or nissan.net, links to other websites containing commercial content, including advertising.

• Placing, on nissan.com or nissan.net, links to other websites containing disparaging remarks or negative commentary regarding Nissan Motor Co., Ltd. or Nissan North America, Inc."

In a Published Opinion the Circuit Court of Appeals [Federal court] rejected Nissan Motor's cross appeal and reversed the District Court's ruling against Nissan Computer on Dilution and the broad scope of the Final Injunction.

Nissan Motor filed an action in 1999 "complaining that nissan.com diluted the NISSAN mark under the Federal Trademark Dilution Act (FTDA), 15 U.S.C. § 1125(c), as well as the California analogue, Cal. Bus. & Prof. Code § 14330, and infringed it under the Lanham Act, 15 U.S.C. § 1114".

15 U.S.C. § 1125 is entitled "False designations of origin and false descriptions forbidden" and 15 U.S.C. § 1125(c) is entitled "Remedies for dilution of famous marks". The relevant part of 15 U.S.C. § 1125(c) for this discussion is:

"The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to:

1. the degree of inherent or acquired distinctiveness of the mark;

2. the duration and extent of use of the mark in connection with the goods or services with which the mark is used;

3. the duration and extent of advertising and publicity of the mark;

4. the geographical extent of the trading area in which the mark is used;

5. the channels of trade for the goods or services with which the mark is used;

6. the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the person against whom the injunction is sought;

7. the nature and extent of use of the same or similar marks by third parties."

I already quoted 15 U.S.C. § 1125(c) in the discussion about Jack Daniel.

Uzi Nissan started using his name in 1991 as part of the name of a North Carolina computer store he owned - Nissan Computer Corp. – and he registered a nissan.com domain in 1994. He advertised various products including automobile-related products and services, for a period in 1999. This can be confirmed using the wayback machine (archive.org). Up to October 1999 the nissan.com web site is a basic web site of computer shop. On October 13, 1999 nissan.com becomes a state of the art web site with Car Tracker advertisement. On November 22, 1999 the site changed and contained three car-related links. Note that this was the time Internet advertising paid the most and that nissan.com was also selling golf towels and advertising AOL. On the other hand the fact that Nissan was a car maker certainly boosted the traffic and increased the advertising revenue. The wayback analysis suggests that this was not planned and happened by chance. The published opinion teaches us that:

• "In July 1995 Nissan Motor sent Nissan Computer a letter expressing 'great concern' about use of the word 'Nissan' in Nissan Computer’s domain name; Nissan Computer made no response and nothing further happened until Nissan Motor contacted Uzi Nissan in October 1999. [Nissan computer knew about the Nissan Motor concern when they added car-related advertising.]"

• Nissan Motor filed this action in December 1999 and was granted a preliminary injunction ordering "Nissan Computer to post prominent captions on the first web page of the nissan.com and nissan.net websites identifying them as affiliated with Nissan Computer Corporation and disclaiming affiliation with Nissan Motor, and to refrain from displaying automobile related information, advertisements, and links".

• "In March 2000, Nissan Computer posted a link on nissan.com and nissan.net that stated 'Nissan Motor’s Lawsuit Against Nissan Computer.' Clicking this link transferred the user to ncchelp.org. A banner at ncchelp.org stated 'We Are Being Sued!!!'; and included links entitled (1) 'story,' which contained Uzi Nissan’s description of this litigation, (2) 'FAQ,' (3) 'news,' which contained links to media reports, (4) 'people’s opinions,' which contained emails received by Uzi Nissan, and (5) 'how you can help,' which contained links via banner advertising, including a link to a site operated by The Internet Center (TIC), which had auto-related advertising. TIC was owned and operated by Uzi Nissan, and was added as a defendant in Nissan Motor’s First Amended Complaint."

ncchelp.org still exists and people’s opinions total 10,000. [Because I have a Nissan, I have to give my opinion. The preliminary injunction mentioned above is logical [note that this is only an injunction – The appeal court wrote "a determination that the district court did not abuse its discretion in granting preliminary relief is not binding on appeal from a final judgment."] From the case history I deduce that Nissan Computer did not agree in fall 1999 that they could not make automobile related business with the Nissan mark, maybe because the first business of the owner of Nissan Computer, Uzi Nissan, was "Nissan Foreign Car Mobile Repair Service" [1980]. Nissan Motor possibly had no choice in December 1999 but to sue. Once Nissan Motor was granted the preliminary injunction and the court declined to preclude Uzi Nissan from using nissan.com and nissan.net, the two parties should have sought a settlement.] You can find more documents at http://ncchelp.org/The_Story/the_story.htm.

The published opinion further teaches us that the district court permanently enjoined Nissan Computer from posting "disparaging remarks or negative commentary regarding Nissan Motor on nissan.com or nissan.net" because "the coupling of disparaging remarks with visitors’ expectations of finding Nissan Motor [...] makes the enjoined conduct commercial" and "the First Amendment is not implicated because the domain names are source identifiers and not part of the communicative message."

Nissan North America, Inc., began using that name, rather than “DATSUN,” to identify and market their vehicles in the United States in 1983.

15 U.S.C. § 1125 forbids the commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous. Therefore a key issue was to determine the date of first use:

• when Nissan Computer was incorporated [the defendant’s actual first use of the mark - 1991]; or

• when Nissan Computer registered the “nissan.com” domain name [the use that Nissan Motor disputes - 1994].

To the opposite of the district court the appeal court found that because "the commercial use of 'Nissan' for computers in Nissan Computer was a use of the NISSAN mark in commerce that was arguably diluting [Nissan Motor.] 'Such use' [see 15 U.S.C. § 1125(c)] occurred in 1991. Therefore, fame of the NISSAN mark must be measured as of 1991. [...] To be capable of being diluted, a mark must have a degree of distinctiveness and ‘strength’ beyond that needed to serve as a trademark."

The appeal court could not "say as a matter of law, on this record, that the survey, expert, and advertising evidence permit only the conclusion that the NISSAN mark was famous as of 1991." It also found that 'the word “Nissan” and its third-party use, “Nissan” is a common Jewish/Israeli last name, a Biblical term originally identifying the first month in the calendar, the contemporary name of the seventh month in the Jewish calendar, the Arabic word for April, and is part of the trademark or trade name of more than 190 unaffiliated businesses in the United States including “Nissan Thermos,” “Nissan Chemical,” and “Nissan Fire and Marine Insurance Company.”' [I could add to the list a village close to Bezier in France.] The appeal court also noted that "after the district court’s final decision in this case, the Supreme Court held [...], that actual dilution must be shown for a dilution claim to succeed." Therefore the appeal court reversed and remanded the partial summary judgment on dilution of the district court.

The appeal court concluded that "the permanent injunction violates the First Amendment to the extent that it enjoins the placing of links on nissan.com to sites with disparaging comments about Nissan Motor" because:

1. the question to answer was "whether linking to sites that contain disparaging comments about Nissan Motor on the nissan.com website is commercial;"

2. a case law reads "Although the boundary between commercial and noncommercial speech has yet to be clearly delineated, the core notion of commercial speech is that it does no more than propose a commercial transaction;"

3. "negative commentary about Nissan Motor [see notably ncchelp.org] does more than propose a commercial transaction and is, therefore, non-commercial."

I reproduce this fairly long quote from the Published Opinion because it nicely explains what can be done and why on Internet:

'Nissan Computer’s use of nissan.com to sell non automobile-related goods does not infringe because Nissan is a last name, a month in the Hebrew and Arabic calendars, a name used by many companies, and “the goods offered by these two companies differ significantly.” [...]. However, Nissan Computer traded on the goodwill of Nissan Motor by offering links to automobile-related websites.

Although Nissan Computer was not directly selling automobiles, it was offering information about automobiles and this capitalized on consumers’ initial interest. An internet user interested in purchasing, or gaining information about Nissan automobiles would be likely to enter nissan.com. When the item on that website was computers, the auto-seeking consumer “would realize in one hot second that she was in the wrong place and either guess again or resort to a search engine to locate” Nissan Motor’s site. [...]. A consumer might initially be incorrect about the website, but Nissan Computer would not capitalize on the misdirected consumer. However, once nissan.com offered links to auto-related websites, then the auto-seeking consumer might logically be expected to follow those links to obtain information about automobiles. Nissan Computer financially benefited because it received money for every click. Although nissan.com itself did not provide the information about automobiles, it provided direct links to such information. Due to the ease of clicking on a link, the required extra click does not rebut the conclusion that Nissan Computer traded on the goodwill of Nissan Motor’s mark.'

The appeal court used the so-called Sleekcraft factors [after AMF Inc. v. Sleekcraft Boats] to evaluate the likelihood of confusion, including initial interest confusion:

1. "the similarity of the marks;

2. the relatedness or proximity of the two companies’ products or services;

3. the strength of the registered mark;

4. the marketing channels used;

5. the degree of care likely to be exercised by the purchaser in selecting goods;

6. the accused infringers’ intent in selecting its mark;

7. evidence of actual confusion; and

8. the likelihood of expansion in product lines."

The appeal court also considered that “in the context of the internet, the three most important factors are the similarity of the marks, the relatedness of the goods or services, and the parties’ simultaneous use of the internet in marketing" from a GoTo case law to "agree with the district court that Nissan

Motor is entitled to summary judgment on trademark infringement as to automobile-related advertisements, and that Nissan Computer is entitled to summary judgment as to non auto-related advertisements."

The outcome of the Nissan dispute could have been different in other countries.

In France the equivalent of the First Amendment is the "liberté d’expression" [freedom of expression], which is limited by the law about defamation, notably the "Loi sur la liberté de la presse" [Freedom of the press - 1881] that defines what are a libel and an insult and the corresponding fines.

An online sale web site, http://www.pere-noel.fr sued a http://www.defense-consommateur.org site, that hosted a non moderated* forum in which users complained about http://www.pere-noel.fr. The French court found that the representatives of http://www.defense-consommateur.org were publishers and therefore liable for the libels and insults published on their site.

* A moderated forum is a discussion forum in which all entries are hidden from other users until a moderator marks them for public viewing. In this way, a group of people can review all comments made before other users see them.

There are differences between what was published by http://www.defense-consommateur.org and what can be found in http://ncchelp.org/Page_1/page_1.shtml probably because http://ncchelp.org/Page_1/page_1.shtml is equivalent to a moderated forum [Nissan Computer checks the content.] For instance several posts of http://www.defense-consommateur.org talk about robbery whereas the closest sentence in http://ncchelp.org/Page_1/page_1.shtml is "a company that has little to nothing to lose, files a groundless suit to bankrupt someone who has something they want [conjecture]." The main difference is that posts of http://ncchelp.org/Page_1/page_1.shtml relate to the undisputed fact that Nissan Motor filed an action against Nissan Computer for mark dilution whereas http://www.defense-consommateur.org relate to several transactions that were not proven to be criminal, giving to these posts a defamatory nature.

We can now turn our attention to another example from http://ncchelp.org/Page_1/page_1.shtml:

"Dear Nissan Motor co.,

Shame on you! You should post an apology to Nissan Computer on YOUR website, Nissandriven.com.

I have spoken to everyone I know in New England and several other states and none of them will purchase your vehicles now. They are spreading the word.

Encourage those you know to email, call and write:

Nissan Motor phone number: (1-800-647-7261).

Address: Nissan Motor Corporation - P.O.Box 47060 - Gardena, CA 90248

Please pass this on: BOYCOTT, email, call and write until nissan motor apologizes and pays Nissan Computer for damages."

In the Père Noel ruling the French court wrote: "Attendu que certains écrits tels que " N'achetez pas chez eux !" ou " si çà continue, je les délationner [sic] au fisc... ! " sont de nature à caractériser une attitude fautive des défendeurs au sens de l'article 1382 du code civil;" finding unlawful a similar call for boycott.

Article 1382 does not relate to defamation. It simply says that the one who harms has to provide a remedy. Article 1383 says that the one whose negligence or carelessness caused harm is responsible for said harm. The application of these articles is bounded. For instance a court found that a satiric show can make fun of a person or a company. A key element in the decision was that the public could not confuse a satiric show with information, which means that French and American courts use different tests:

• in USA the question to answer is "whether linking to sites that contain disparaging comments" is commercial, commercial speech being defined as proposing a commercial transaction,

• in France the question to answer is whether the public can confuse the content with information.

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