From September 22 – 23, 2003, INTA hosted the Trademarks in Cyberspace Forum in Arlington, Virginia,
USA. At this year’s forum, 171 trademark practitioners from around the world heard from experts on trademark law and the Internet, who shared the latest developments in the field, along with practical tips for protecting and promoting brands online.
Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. and Dinah Nissen of Freshfields Bruckhaus Deringer served as co-chairs for the meeting. Linda E. Roesch of Dinsmore & Shohl LLP led a panel on the latest developments in the area of domain name disputes. Lisa Dunner of Dunner Law and Raymond A. Kurtz of Hogan & Hartson LLP reviewed the most recent cases involving the use of personal and descriptive names in domain names, the fair use doctrine in relation to domain name disputes, “criticism sites” and appeals of UDRP proceedings in the United States.
Jane Mutimear of Bird & Bird moderated a session on “Brands as Navigational Tools,” aimed at offering a practical guide to the law relating to use of trademarks on the Internet. The panel, featuring private practitioner Martin Schwimmer and Daniel C. Glazer of Shearman & Sterling, examined how the doctrine of initial interest confusion is applied online, particular in relation to domain names, metatags and keywords.
The discussion began with Schwimmer’s review of the case history relating to initial interest confusion on the Internet. Later, Glazer explained how the initial interest confusion doctrine, which originally offered trademark owners a method of recovery when no likelihood of confusion was present at the point of sale, was later extended to the unauthorized use of domain names that incorporated trademarks. The session highlighted how courts have applied the initial interest confusion doctrine in varying ways in relation to domain name-related trademark disputes. Some courts have treated it as a cause of action distinct from traditional trademark infringement, while others have included it as one of the factors for a traditional likelihood of confusion analysis.
The panel also examined other uses of trademarks online, such as metatags and keywords. Schwimmer argued that the distinction normally drawn between use of trademarks in domain names and other uses of trademarks online, specifically the idea that domain names are used to navigate the Internet, while metatags and keywords are used to search the Internet, is no longer persuasive. In particular, search engines have rapidly become the leading means by which users navigate the Web, making the use of trademarks in metatags and keywords even more troublesome, in some cases, than when incorporated within domain names. Schwimmer and Glazer also examined the fair use considerations that must be balanced against a trademark owner’s rights in its mark.
Ellen Shankman of Ellen Shankman & Associates moderated a panel on evaluating website content. With the participation of Rose Hagan of Google, Kenneth M. Kwartler of Nike, Inc. and Lucy Nichols of Nokia, the session offered attendees a checklist for dealing with content issues on the Web, including proper trademark usage, trademark and domain name licensing, co-branding and privacy issues. Hagan offered practical advice on what search engines pick up, as well as how to make sure a website gets listed (or unlisted). Kwartler emphasized the importance of prominently claiming ownership of marks on the Web, and how this is an extremely important aspect of building brand recognition and deterring third parties from adopting similar marks.
Co-Chair Dinah Nissen of Freshfields Bruckhaus & Deringer moderated a panel with Sarah Deutsch of Verizon Communications, Nick Rose of Field Fisher Waterhouse, and Mitchell H. Stabbe of Dow, Lohnes & Alberston PLLC on jurisdictional issues surrounding activity on the Internet. Stabbe addressed how the issue has been treated under U.S. law and summarized the three different tests that have been applied by U.S. courts, while Rose addressed the European approach and Deutsch summarized proposed treaties that could require treatment.
One of the most interesting and lively session was a panel discussion between Sarah Deutsch of Verizon and Matt Oppenheim of RIAA. Coming only days after the oral argument before the Court of Appeals, they debated the legality, as well as the wisdom, of RIAA’s ongoing efforts to obtain from ISPs the names of persons who download copyrighted music.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.