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Guiding Rights
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GUIDING RIGHTS: Trademarks, Copyright and the Internet, by Mark V.B. Partridge, explains the trademark and copyright principles guiding rights on the Internet in clear and accessible terms.
$24.95 hard cover; $14.95 paperback
ISBN: 0-595-65957-8
"This collection of short articles on a wide range of issues of copyright and trademark law, by one of the nation's most prominent trademark lawyers, manages to convey the nuance of the subject in language that is clear and immensely readable. This is a hugely versatile book. For scholars, the book contains valuable insights; law students will come to rely on it to explain difficult concepts in easy-to-understand terms; and practioners will be scanning it for help with some of the knottiest problems around."
Graeme Dinwoodie, Professor, Associate Dean and Director of the Program in Intellectual Property Law, Chicago-Kent, College of Law
ORDER BOOK HERE
"Guiding Rights is a unique presentation of information covering key concepts relating to the protection, enforcement and licensing of trademarks and copyrights. Mr. Partridge presents a well organized compilation of lessons that provide practical insight for understanding and handling many trademark and copyright issues that arise for companies in everyday life. Also the book discusses in a concise and effective manner the effect of significant cases from both the distant and recent past which helped shape important trademark and copyright principles."
Harrie Samaras, Attorney, Chair, Committee on Intellectual Property Organizations, AIPLA
ORDER BOOK HERE
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Friday, September 16
Marlon Brando Estate Recovers Domain Name
by
Mark VB Partridge
on Fri 16 Sep 2005 09:00 AM EST
The Nation Arbitration Forum has released this decision:
The Estate of Marlon Brando v. thewordbank twb, Claim Number: FA0506000505502,
http://www.arb-forum.com/domains/decisions/505502.htm
Panelist Hugh Putnam decides in favor of the Complainant, stating:
Respondent registered the <marlonbrando.net> domain name to prevent Complainant from reflecting its MARLON BRANDO mark in a corresponding domain name. Furthermore, based on an article published in Artnet Magazine, Respondent has engaged in a pattern of such conduct by registering several domain names with the proper names of artists and celebrities. These circumstances are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). ... more »
Wednesday, September 7
Good Faith Registration of missarizonausa.com Trumps Bad Faith Use
by
Mark VB Partridge
on Wed 07 Sep 2005 10:04 AM EST
Miss Universe L.P. LLLP challenged former licensee's continued use of the domain name www.missarizonausa.com based on its rights in the marks MISS ARIZONA and MISS USA.
Miss Universe L.P., LLLP v. A Visual Group, Case No. D2005-0738
Panelist Dennis Foster denied relief, stating:
The Policy at paragraph 4(a)(iii) calls on Complainant to show bad faith in both registration and use. By Complainant’s own admission, when Respondent registered the disputed domain name in 1998, it did so with Complainant’s consent and thereafter used it to help Complainant carry on its business of organizing MISS ARIZONA beauty pageants until the license expired ... more »
Thursday, September 1
Supplemental Registration Fails To Establish Rights Under ICANN UDRP
by
Mark VB Partridge
on Thu 01 Sep 2005 09:00 AM EST
Oil Changer, Inc. challenged registration of www.oilchanger.com based on alleged marks appearing on the U.S. Supplemental Trademark Register.
Oil Changer, Inc. v. Name Administration, Inc., Case No. D2005-0530
Panelist Richard Page denied relief, stating:
Prior WIPO panels have noted that the presumptions which arise from registration in the Principal Register are not available to registrations on the Supplemental Register.
The Panel further agrees that such registrations are an admission that the OIL CHANGER and OIL CHANGERS Marks were not inherently distinctive at the time of application for registration of the Marks and that they had not yet acquired secondary meaning. ... more »
Tuesday, August 30
ICANN UDRP: Failure to Prove Bad Faith Registration
by
Mark VB Partridge
on Tue 30 Aug 2005 09:00 AM EST
A Swiss company, Outils Rubis Ltd., challenged the domain name www.rubis.com based on its rights in RUBIS for tweezers.
Outils Rubis Ltd. v. NETPLUS Communication, Case No. D2005-0645
Panelist Geert Glas denied relief, stating:
The use of the word “and” implies that the Policy requires the Complainant to prove bad faith in both (i) the use and (ii) the registration of the disputed domain name (see amongst others WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows and WIPO Case No. D2003-0453, Paule Ka v. Paula Korenek).
In its Complaint dated June 21, 2005, the Complainant only asserts that ... more »
Thursday, August 25
Descriptive Use of "Historic Hotels" for Travel Services Deemed Legitimate Interest Under ICANN UDRP
by
Mark VB Partridge
on Thu 25 Aug 2005 09:00 AM EST
Complainant, National Trust for Historic Preservation, owns rights in the mark HISTORIC HOTELS OF AMERICA. Respondent offers travel services at www.historichotels.com.
National Trust for Historic Preservation v. Barry Preston, Case No. D2005-0424
A three-member Panel denies relief, stating:
It is clear that the Respondent’s website is in the nature of a general online travel site, and that the reservation services offered there are by no means restricted to establishments identified or recognized as historic hotels. Nevertheless, the Respondent claims to have adopted the domain name without awareness of the Complainant or its HISTORIC HOTELS OF AMERICA mark, the Respondent commenced ... more »
Wednesday, August 24
Criticism of Trademark Owner Deemed Legitimate Interest under ICANN UDRP
by
Mark VB Partridge
on Wed 24 Aug 2005 09:00 AM EST
BioCryst Pharmaceuticals, Inc., of Birmingham, Alabama, challenged registration of domain name www.biocrystpharmaceuticals.com. Respondent used domain name to criticize the Complainant's business.
Panelist Daniel Gervais denied relief, stating:
The use of the domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to exercise his free speech rights and express his opinion in this way, subject to other laws of course (copyright, fraud, libel, etc.). However, by reflecting the exact trade name and trademark of the Complainant, the Complainant argues that Respondent’s intent is to tarnish the mark. The Panel acknowledges ... more »
Tuesday, August 23
Early Learning Centre Loses ICANN UDRP Case
by
Mark VB Partridge
on Tue 23 Aug 2005 09:00 AM EST
Early Learning Centre in the UK challenged registration of the domain name www.earlylearningcentre.com by a respondent located in Viet Nam. The respondent defaulted.
Panelist Warwick Smith denied relief, stating:
In summary, the Panel finds that the Complainant has failed to prove this part of the Complaint, for a combination of the following reasons:
1. The Respondent appears to be domiciled in Vietnam. There is no evidence of the Complainant’s mark being registered in that country, and insufficient evidence of its advertising or general reputation extending to that country.
2. The Panel is not prepared to apply any doctrine of “constructive ... more »
Friday, July 29
Orange Bowl ICANN UDRP Case Explores Fair Use
by
Mark VB Partridge
on Fri 29 Jul 2005 01:00 AM EST
The resale of genuine products presents particular difficulties in domain name disputes, testing the application of fair use doctrine. Several domain name disputes involving the resale of event tickets illustrate the point.
I served as a panelist in one such case The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc., D2004-0947 (WIPO 2005). The decision, which issued with a dissent, explored fair use in the domain name context and addressed several related ticket resale disputes.
The complainant owned rights in the ORANGE BOWL name and operated a site at www.orangebowl.org.
The respondent was an online ticket broker, and ... more »
Monday, April 11
Wal-Mart Recovers Sam Walton Name
by
Mark VB Partridge
on Mon 11 Apr 2005 09:39 AM EST
Panelist Scott Donahey awards Wal-Mart the domain name www.samwalton.com in this recent decision: Wal-Mart Stores, Inc. and Mrs. Helen Walton v. Bestinfo/David Webb, Case No. D2005-0086 (WIPO March 25, 2005).
A key issue in UDRP actions involving personal names is the finding that the name is protectable as a common law mark, the the Policy does not provide protection for personal names per se.
The Panel finds as follows on that point:
. . . Complainant Wal-Mart Stores, Inc. has common law rights in the trademark SAM WALTON by virtue of its prominent and continuous use in conjunction with ... more »
Monday, March 21
Hillary Rodham Clinton Recovers Domain Name in ICANN UDRP Action
by
Mark VB Partridge
on Mon 21 Mar 2005 10:08 PM EST
Readers of this blog will recall that we have followed various cases involving the personal names of polictial figures.
A new decision noteworthy for the high profile of the Complainant has been issued by NAF Panelist Tyrus R. Atkinson Jr.
The decision is available here: Hillary Rodham Clinton v. Michele Dinola (NAF March 18, 2005). more »
Friday, February 11
Orangebowl Prevails in ICANN UDRP Dispute
by
Mark VB Partridge
on Fri 11 Feb 2005 12:01 PM EST
Monday, December 13
Licensee Knocks Out George Foreman ICANN UDRP Claim
by
Mark VB Partridge
on Mon 13 Dec 2004 09:37 AM EST
Salton, Inc. v. George Foreman Foods, Inc., Case No. D2004-0777 (WIPO Dec. 3, 2004), demonstrates the difficulty of fighting contract disputes in the wrong forum.
Denying the Complainant's challenge to the registration and use of the domain name www.georgeforeman.com by the licensee of the name for food products, the Panel states:
Complainant acknowledged that Respondent had obtained a license from George Foreman granting Respondent the right to use the <georgeforeman.com> domain name. Indeed, Complainant attached a copy of that license agreement to its own Complaint. The license agreement grants to Respondent the right to use, among other things, “GeorgeForeman.com and all ... more »
Saturday, December 11
ICANN UDRP Claimant Lacks Common Law Rights in UTAH WEDDINGS
by
Mark VB Partridge
on Sat 11 Dec 2004 03:29 PM EST
Keystone Publishing Inc., alleging common law trademark rights in UtahWeddings.Com, sought transfer of the domain name www.utahwedding.com owned by a competitor for wedding services in the Salt Lake area.
Although the Complainant's name had been in use since 2001, the Panel found that it lacked common law rights, stating:
In selecting the quintessentially descriptive name UtahWeddings.com for its wedding business in the State of Utah, the Complainant apparently was more interested in attracting Internet traffic than in coming up with a distinctive name. Thus, while the Complainant has a descriptive mark that attracts a large volume of casual search engine ... more »
Monday, December 6
Robert Downey Jr. Recovers Name in ICANN UDRP Action
by
Mark VB Partridge
on Mon 06 Dec 2004 09:15 AM EST
Well-known actor Robert Downey Jr. recovered the domain name www.robertdowneyjr.com used to redirect Internet user to clubpink.com, a site with pornographic content.
The decision, Robert Downey Jr. v. Mercedita Kyamko, WIPO D2004-0895 (Dec. 2. 2004), by Panelist John Swinson, based relief on Downey's common law rights in his name, stating:
Famous people using their name in trade and commerce can have a common law trade mark in their public name. See Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Van Morrison and Exile Productions Limited v. Unofficial Club de Van Morrison, WIPO Case No. D2002-0417 and Nicole Kidman ... more »
Wednesday, October 27
ICANN UDRP Panel Addresses Rights in Geographic Name
by
Mark VB Partridge
on Wed 27 Oct 2004 07:11 AM EST
Aberdeen Airport Limited, which operates the airport facility near Aberdeen Scotland, sought transfer of the domain name <aberdeenairport.com> from a respondent located in the United Arab Emirates.
The thorough decision by Panelist Warwick Smith considers the requirements under UK law for establishing common law trademark rights in a place name. BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, Case No. D2004-0717 (WIPO October 21, 2004).
The case is a good example of the well-reasoned cases that require Complainants to prove common law rights to obtain relief, as opposed to merely accepting a claim of rights because the domain name ... more »
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Mark VB Partridge
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CONTACT INFORMATION
Mark V.B. Partridge
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
311 S. Wacker Drive Suite 5000
Chicago, Illinois 60606
312-554-8000
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