Hi folks, On Thu, Apr 6, 2017 at 8:49 AM, J. Scott Evans <jsevans@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/