Nonprofit Domain Names: Prelude to a Precedent Portions of the following information are drawn from previous postings on the NPTalk discussion list. The following material is provided merely for background and reference information, and should not be considered or substituted for legal advice. Please consult with your organization's legal counsel for more information. During 1998, the animal-rights advocacy group People for the Ethical Treatment of Animals (PETA) was locked in an domain name battle with circus entertainment corporation Ringling Brothers and Barnum & Bailey Circus. According to Beth Lipton's 4/24/98 CNET News account, PETA had registered the domain "ringlingbrothers.com" for the purpose of creating a website protesting the use of animals in circuses. The site featured news items; documents of government complaints against the circus and the circus' touring schedule. There were also calls to action to stage protests at circus venues, and to circulate correspondence to the U.S. Department of Agriculture and department store chain Sears, one of the circus sponsors. It's safe to say the circus didn't appreciate that kind of publicity. Ringling Brothers filed a lawsuit against PETA, claiming deceptive trademark actions and dilution of trademark. As Lipton points out, under a 1995 addition to the 1946 Trademark Act (also known as the Lanham Act), trademark protections are extended to the Internet's system of domain names, such that trademark holders are given preference when others register domains in question that dilute their mark. In other words, registering domain names before an entity that holds a trademark closely identifiable to that domain name doesn't erode trademark protections enjoyed by the entity at issue. By May 1998, Ringling Brothers and PETA reached a settlement, under which PETA turned over the ringlingbrothers.com domain to the circus, and promised not to conduct advocacy under names associated with Ringling Brothers. Three Years Later... PETA found itself in the role of plaintiff against People Eating Tasty Animals, a purported web parody of the organization, according to the 8/24/01 edition of Technology Law Journal. Back in 1995, Michael Doughney registered the peta.org domain name with Network Solutions, for his website. The site both parodied PETA and (somewhat seriously) promoted a set of links for "those who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research (and more!)." The current site is registered under a different domain. The U.S. Court of Appeals for the 4th Circuit, in late August 2001, upheld a federal district court decision in the matter of PETA v. Doughney, ruling that the People Eating Tasty Animals website domain had to be turned over to PETA. In order to understand the rational behind the decision, we'll attempt to present some of the basic concepts involved in intellectual property with respect to names, both on and offline. Resources People for the Ethical Treatment of Animals (PETA) http://www.peta.org 4/24/98 CNET News article Beth Lipton http://news.cnet.com/news/0-1005-200-328701.html 1946 Trademark Act (also called the Lanham Act) http://www.bitlaw.com/source/15usc Technology Law Journal (8/24/01) http://www.techlawjournal.com/alert/2001/08/24.asp People Eating Tasty Animals http://www.mtd.com/tasty PETA v. Doughney (August 2001) U.S. Court of Appeals for the 4th Circuit http://pacer.ca4.uscourts.gov/cgi-bin/getopn.pl?OPINION=001918.P Nonprofit Domain Names: Copyrights, Patents, Trademarks, Cybersquatting, Name Dilution Copyrights A copyright is basically is a protection against another party passing off your creation as theirs, and it's symbolized by a "� ". It applies to an original literary or artistic work-- such as a publication, recordings, software code, designs, pictures, you name it-- tied to an accessible medium or forum. The work itself doesn't have to be the highest quality item around, and the ideas conveyed don't have to be brilliant, novel, or original. Copyrights are not, however, protections on ideas, facts, news, or suggestions made in response to something, but they are protections on things like wording, a guitar lick, or lines of dialogue. A copyright holder enjoys the exclusive legal privilege of copying (or allowing others to copy) the work, and is automatically available to an original creation, regardless of whether it is ever articulated, and/or is actually registered with the U.S. Copyright Office. Registering the copyright, however, grants a legal recognition of a creator's interest in protecting their creations, and it prevents an offending party from claiming ignorance about the copyright. Copyrights generally lasts for the life of the author plus fifty years, unless the work was done anonymously, under another identity, or for someone else, in which case it lasts 75-100 years. People who create copyrighted works actually hold the copyrights as well unless they sell them, are employees of a copyright-holding firm, or are commissioned/contracted by another party that holds the copyright. There are two other important aspects of copyrights of particular importance to nonprofits, libraries, educational entities, and the public at large. The first is the notion of "fair use." One other key point about copyrights is the notion of fair use. In general, this covers things like commentary, criticism, investigative research and reporting, scholarly inquiry, nonprofit and classroom usage of copyrighted work, so long as it is not a competitive or commercial use, incorporates a relatively small portion of the copyrighted content, and benefits the public in some way. The second is the concept of "public domain." When a copyright expires, or when an author announces she will not seek claims to assert ownership, works become available for public use without requiring the author's prior permission. Any works that did not carry a particular copyright wording prior to 1989 (which has since not been required to perpetuate the copyright) are also automatically in the public domain-- or were published before 1964 but whose copyrights were not correctly renewed under existing law-- are also public domain. Public domain also covers items ranging from information uncovered by researchers (regardless of the time and effort spent) to comments made in an online forum (because others are contributing to the content of that forum). Works placed in public domain can later be copyrighted at any time by the original author. Patents Patents are protections on inventions such that the patent holder is the "owner", and has the exclusive right to prevent others from creating, applying, or marketing a process or product. Again, it's not a protection on an idea or a suggestion; it has to apply to a complete description of an actual invention. Patents are registered with the U.S. Patent and Trademark Office. There are three types of patents: utility patents, design patens, and plant patents.

• Utility patents last 20 years from the date they are granted, and cover the functions of things like devices, process, manufactured goods, medical procedures, and chemical products. Utility patents require specific documentation of how to make and use the product, as well as the exact thing for which a patent is sought. The right to exclude others doesn't come into effect until after you actually get the patent.
• Design patents last 14 years from the date they are granted, and cover the exterior aspects of an item, and not the actual item itself—even if the ornamental feature has a functional aspect to it. Savvy patent holders will apply for both utility and design patents on an item, and will also file a copyright for the actual design on an item.
• Plant patents last 20 years from the date they are granted, and apply to, well, new types of plants or vegetation that have been created or discovered and reproduced asexually..

Trademarks and Other Marks Another type of protection offered to goods and services fall under the category of marks, which can incorporate an alphanumeric character, word, phrase, symbol, design, sound, smell, color, product configuration, (or any combination thereof). Marks help to set apart goods and services produced by one entity from others, and are one important means through which those items establish their reputation to the public. The mark you've probably heard about most is the trademark, which both identifies and sets apart the source of one entity's products from those of others. The trademark designation usually appears on packaging for a product (it's the little "TM" you see). A service mark is basically a trademark that is applied to a service's source instead of a product's source. You'll find a service mark indicated as the little "SM" in advertisements for a particular service. Both can last indefinitely, in terms of 10-year renewal intervals, as long as the mark is actually used by the owner to identify goods and services. The first entity to either use the mark for commercial activity, or to file the application to register the mark, has the ultimate right to register the mark. A registered mark (designated by the "�" symbol) can only be used after it is registered with the U.S. Patent and Trademark Office. Rights associated with trademarks stem from their use or registration of the intent to use such a mark. The actual right to use the mark is a different matter, especially if multiple parties use the same mark, at the same time, without knowledge of anyone else using it, and no one has registered it with the federal government. This is why registering the mark is important, as it gives parties an entitlement to use the mark nationally, and to be recognized as the presumptive owner (versus simply the user) of the mark in legal proceedings. There are also special provisions for those outside the U.S. to register marks, but U.S. mark holders must follow the rules of other countries to protect their marks abroad. Trade names are the popular names under which entities conduct business, versus the corporate names by which they are formally registered. They differ from trademarks in that they identify a firm or organization, rather than the specific product, good, or service covered by a mark. Trade names are given the same weight as a mark when that name is incorporated into the brand name of a specific product or set of products. If an entity uses a trade name closely resembling another entity's trademark, some potential for confusion may arise, thereby hampering effective use of the mark, so names in this instance may also have legal protections under federal and state laws. Certification marks allow their owners to grant their use by other entities for goods and services-- but not by the owners themselves, in order to guarantee or verify things like the origin or quality of a product. The registrant entity has to exert control over how the mark is used, guarantee that it will screen all potential users of the mark, and provide details to the public on the standards necessary to receive permission to use the mark. Registrants who deny use of the mark to qualified parties, or who use the mark for their own purposes, run the risk of losing the registration. Two of the most familiar examples of a certification mark are the Good Housekeeping Seal of Approval and that of the Underwriters Laboratory, the not-for-profit product safety testing organization which certifies products and components. Members of an association, guild, organization, union, or other entity, use what are known as collective marks to distinguish their products, services, or respective memberships. Only members of the collective entity that actually owns the mark, and not the collective entity itself, are allowed to use it. The collective entity must actually register its own trademark or service mark in order to apply it to its own products and services. One last important type of mark protection is called trade dress, which helps to prevent other parties from copying the look and feel of another entity's products. Trade dress applies to the image, presentation, or other non-functional aspects of a product (size, shape, color, etc.)-- which do not affect the ability to the product to be produced. These elements cannot violate the rules under patent law, and must be distinctive, or have assumed a meaning to others that conveys instant identification with the product's source only. Trade dress, in essence, comes about after a product and its packaging have been marketed so heavily, that both become indelibly linked with one another in the mind of the public. For those interested in a discussion of how intellectual property protections intersect with-- and can be applied to-- the work of nonprofits (particular those concerned with environmental protection issues) should review the materials from an April 1994 international conference, "The Greening of Technology Transfer: Protection of the Environment and of Intellectual Property,", convened by the Franklin Pierce Law Center and the Center for International Environmental Law.] There are ongoing debates about which protections are most effective in the technology arena, particularly around software. Trade dress, for example, is sometimes touted as a more reliable protection than copyright, because it is rooted in a common law assumption that competitors who adopt the look and feel of a product to a significant degree (if not wholesale) are engaging in unfair competition. When the trade dress is registered, it removes any doubt about what is protected, whereas copyright law only protects a specific manifestation of an expression, and must be extended to other forms on a case-by-case basis. Cybersquatting Intellectual property protections, as they apply to the Internet, present tricky issues. Internet domains, for example, can be (and are) used as trademarks or service marks tied to websites that provide online products or services to the public. There is, however, a set of practices that fall under the banner of speculative domain name registrations or cybersquatting. These are activities or efforts to register domain names which mimic or approximate trademarked or protected names, in part or in total, in an attempt to confuse the public or an intended audience, or to hold a domain name hostage in order to fetch a profit from the trademark holder. In an effort to curtail cybersquatting, President Clinton signed the Anticybersquatting Consumer Protection Act (ACPA) into law on 11/29/99. Under ACPA, trademark owners can institute legal proceedings against cybersquatters, and if the offending party cannot be located after a reasonable amount of effort, an injunction can be issued to transfer, drop, or hold the domain name in question. Trademark holders can receive the domain name, profits from the sale of the offending name, damages and costs, but only from the domain name registrant. Mark holders can also receive awards ranging from $1,000 to $100,000 per domain name for domains registered, transferred, or used after ACPA was enacted. For individual names wrapped in offending domain names, courts can only grant an injunction to transfer, cancel, on freeze domain names, but can also award attorney fees and other costs to the winning side. Courts, through ACPA, have the power to hold, cancel, or transfer domain names in dispute, including trademarked names registered before enactment of the law. Names of individuals registered before ACPA do not fall under the law. ACPA, however, weighs a few factors before determining whether persons have committed a civil offense Bad faith, under ACPA, is determined by weighing the degree to which the domain name registrant can be shown to have:

1. no claim any intellectual property rights on the name;
2. no identification between their legal or common nickname with the domain name;
3. prior use of the domain name for non-bona fide delivery of goods and services;
4. content connected with the domain name not covered by noncommercial and/or fair use provisions (which protect things like criticism or parodies);
5. attempted to draw visitors away from the site of the trademark owner towards one that intentionally causes confusion as to the ownership of the site, harms the reputation of the mark, and/ or steals customers;
6. made an offer to sell, transfer, or grant the domain name-- which was not used (or intended to be used) in good faith to deliver goods and services-- to the trademark holder or another entity for profit;
7. provided fake or misleading contact information regarding the domain name at the time of registration;
8. accumulated multiple domain names that are identical or similar to the trademarks of other entities
9. knowingly incorporated a mark into the domain name that was not distinctive and famous, under the terms of the Trademark Act

In addition to the bad faith gauges, courts also can determine whether there was any bad faith in the registrant's belief that the domain name in question constituted lawful, if not fair, use. Thus, domain registered in good faith by a party holding a copyright on a work, with which an individual's name and the purpose of the website is affiliated, would not be held liable. As we've pointed out, trademarked names enjoy a good deal of legal protection, especially once they are registered. Trademark names are noteworthy because they are "distinctive," as regards goods and services (and are also considered "famous" as well when names of individuals are concerned). We should add, however, that there are limits on what can be a trademark. Marks on last names don't enjoy special legal protections, unless, over time, they have a secondary meaning with respect to the public (because otherwise, it would prevent the use of that surname by everyone else with that same last name). Names that are common words which are descriptive, and not suggestive, of a product or service are considered generic marks. Trademarked names can run the risk of turning into generic names when the mark and the product become inextricably ingrained in public perception, especially when it is used as a noun or verb, instead of a proper adjective (for all of you grammarians). Terms like granola, aspirin, and zipper, for example, used to be trademarked names that are now generic marks. Xerox, Kleenex, Dumpster, and Styrofoam are still active trademarked names. (Nylon, now considered a generic mark, was never trademarked!). Though we listed the range of factors presuming bad faith on the part of domain name registrants, ACPA does contain a "safe harbor" for alleged cybersquatters, in that courts can determine whether, "the person believed and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful.” Given the wording, it's not hard to imagine that the provision is potentially more beneficial to domain name registrars, rather than individual users. But this does, however, allow protections of fair use akin to those under copyright protections, like critique and commentary. It's not impossible to establish (if not persuade the court towards) bad faith on the part of a registrant before a court, because it's usually a safe bet that the registrant in question has no claim any intellectual property rights on the name in dispute. Additionally, if the domain name at issue is egregious in terms of appearing to smear a trademarked name, it's not too difficult to argue that the registrant was not using the name to deliver goods and services to the public in good faith without diverting eyeballs away from the site of the trademarked name holder. And if, on top of those items, the entity tries to sell or transfer the domain name in question to the trademark holder, well, you've already met four of the nine elements of bad faith under ACPA. If domain name registrants simply turn over control of the domain name in question to the court with which a civil complain has been filed, that registrant can avoid the attendant civil action, which can range from forfeiture, cancellation, or transfer of the name, as well as compensating the trademark holder attorney fees and costs of preparation for trial. Resources Cited U.S. Copyright Office http://www.loc.gov/copyright U.S. Patent and Trademark Office http://www.uspto.gov Good Housekeeping Seal of Approval http://goodhousekeeping.women.com/gh/misc/institute/ghinstr2.htm [no spaces] Underwriters Laboratory http://www.ul.com "The Greening of Technology Transfer: Protection of the Environment and of Intellectual Property," April 1994 http://www.fplc.edu/green/contents.htm Nonprofit Domain Names: Domain Name vs. Trademarks PETA Pockets a Domain Name Win Michael Doughney registered the peta.org domain name back in 1995, for a website called People Eating Tasty Animals. This was a self-described parody of the group People for the Ethical Treatment of Animals, containing web links of interest to carnivores, fur and leather fashion, hunting, and scientific and medical research-- all opposed by PETA. Upon registering the site with Network Solutions, Doughney claimed that it was being registered under the banner of a nonprofit educational group, People Eating Tasty Animals, which would not face any form of interference from the domain name. (We should add that the group did not exist). It didn't take long for PETA, which registered its service mark three years before Michael Doughney's People Eating Tasty Animals parody site, to take action. The site was up for six months until, in February 1996, PETA filed a domain name dispute with Network Solutions, asking Doughney to transfer the domain name to it.. Doughney balked at the request, and PETA complained to Network Solutions. The dispute resolution procedure required the domain to be placed on hold, and Doughney moved the site to its current location (http://www.mtd.com/tasty). Doughney then went on to taunt PETA, stating, in no uncertain terms, that if the group wanted the domain name badly enough, then it could make a financial offer for him to consider. In late 1999, shortly after the Anticybersquatting Consumer Protection Act (ACPA) went into effect, PETA filed suit against Doughney in U.S. District Court, claiming infringement of its service mark, unfair competition, dilution of its mark, and cybersquatting. It didn't seek compensation for damages under the claims, but it did want to stop Doughney's use of the domain name and have the domain transferred. Doughney argued, however, that his parody enjoyed First Amendment protections. PETA won all the claims on summary judgment (meaning the court made a decision based on the basis of statements and evidence presented for the record without the need for a trial. This is done when there is no dispute as to the facts of the case, and one party is entitled to judgment as a matter of law.) On 6/12/00, the district court granted summary judgment in favor of PETA (this is done when statements and evidence are presented without need for a trial, the facts of a case are not in dispute, and one party can receive judgment as a matter of law), largely based upon ACPA, which extended trademark (not copyright) protections against entities who register domain names that infringe upon (or come close to resembling) trademarked names, in an effort to sell that name back to the trademark holder or to another party for profit, or to create confusion in the public's mind as to the source behind any activity conducted under the banner of that domain name. The district court ruling rejected the idea that the site was a parody, because it failed to effectively communicate that it was a parody, instead encouraging confusion on the part of a site visitor. PETA also filed for Doughney to pay its costs for the trial, in the neighborhood of US$300,000-- including photocopies (notice we didn't say Xeroxes), faxes, travel, postage, long-distance, and a number of miscellaneous expenses. The district court denied the motion, PETA filed it again, and on 9/12/00, the court denied the request. Why? Because it determined that Doughney's actions did not rise to the level of exceptional in terms of being "malicious, fraudulent, willful or deliberate" conduct. Moreover, the costs were treated as tied to trial preparation, and not part of the actual trial itself. Doughney appealed the district court decision, arguing that the ACPA should not retroactively apply to his activities in 1995, especially because he did not seek monetary reward nor acted in bad faith, and because PETA did not explictly invoke the then-new law. He also argued that there was no infringement of the service mark, because his use of PETA's mark was not tied to a product or delivery of service, his site was not likely to confuse anyone because it was clearly a parody. For its part, PETA appealed the denial of attorney fees and costs. On 8/23/01, the U.S. Court of Appeals for the 4th Circuit issued its decision, rejecting all of Doughney's arguments. Not only did it find that ACPA applied retroactively, it found that Doughney's efforts to seek a financial settlement for his registration constituted some form of financial gain, and that his efforts did not pass the nine item test of good faith in the ACPA, so he acted in bad faith. The Appeals Court did not address the dilution claims. It did, however, find that Doughney did prevent users from obtaining PETA's goods and services without actually providing goods or services in good faith on his peta.org site. The court decided to look only at the domain name, and not the content of the actual site. While it did agree that it would be hard not to recognize it as unaffiliated with PETA, the three-judge appeals panel went on to say the domain is copy of PETA's mark, implying a relationship that doesn't exist. The Court also noted that an important distinguishing mark of a parody site, an explicit statement that the domain was parody unrelated to PETA, was missing from the site at the time. [The current site does have such a statement]. Ultimately, the appeals panel held that PETA could only receive some US$29,000 in court costs, because, while Doughney did violate ACPA, his actions were not found to be exceptional, given the aforementioned definition. Strangely enough, there's another recently-settled legal battle, involving a wildlife-oriented nonprofit and a website it considered antagonistic to its name and reputation, similar for the issues it raises. WWF.org vs. WWF.com One of the most interesting ongoing Internet legal rumbles finally came to a head during August 2001, according to an 8/13/01 Associated Press item (http://news.cnet.com/news/0-1005-200-6860366.html?tag=cd_mh) covered a decision in a case pitting World Wildlife Fund (http://www.wwf.org) against the World Wrestling Federation (http://www.wwf.com). In 1960, Sir Julian Huxley, a British biologist, traveled to eastern Africa, where he noted the horrible state of the wildlife. Upon his return home, he described what he witnessed in a series of newspaper articles, warning of same fate for the rest of the world. One of them men who read the articles was Victor Stolen, an international businessman, who prodded Huxley to develop an organization that could receive funding to support wildlife conservation efforts. By 1961, Huxley, Stolen, and Max Nicholson, ornithologist and then-director of the Nature Conservancy in Britain, had managed to convene scientist and public relations experts to create an organization, based in Switzerland in proximity to it's soon-to-be partner organization, the IUCN/World Conservation Union. On 9/11/61, the World Wildlife Fund, with panda logo in tow, became a full-fledged charity, creating a international network of offices over the course of the next decade. By the 1970s, WWF had established individual funds to protect rainforests, tigers, and marine life. It was in the 1980s that the conservation and broader sustainability efforts associated with the Fund today were incorporated into the overall activities of the organization. The name was changed in 1986 to WWF For Nature, though the American affiliate continues to be called the World Wildlife Fund. Throughout the 1970s continuing until present, the Fund has established communication channels with governments, businesses, media, citizens groups, and faith-based efforts to partner on conservation policies and practices. It is now active in over 100 nations, with a base of some five million supporters. The early 1960s were also an important time for professional wrestling in America. Back then, there was no national entity promoting wrestling matchers. Regional federations of promoters, each with set geographic territories, set up their own rules and prize schemes. The World Wrestling Federation as we know it today actually used to be called the World Wide Wrestling Federation, owned by Vince McMahon Sr., which competed with other regional federations such as Verne Gagne's American Wrestling Association and Jim Crockett's National Wrestling Alliance. From the 1950s until the early 1980s, there was, simply, a hodgepodge of live professional bouts (depending upon your use of the term), some televised, offering either the visceral thrill of seeing "wrasslin'" (a term of art used in the South), or simply reinforcing intimations of a violent American ethos. The world was introduced to personalities with odd names and semi-manufactured personality traits—like Gorgeous George, Andre the Giant, "Rowdy" Roddy Piper, "Nature Boy" Ric Flair, Dusty Rhodes, George "The Animal" Steele (and, yes, future Minnesota governor Jesse "The Body" Ventura)-- without the cast of characters, soap operatic back stories, and glitzy acrobatic maneuvers familiar to today's audiences. Vince McMahon Jr. purchased the WWWF from his father in 1983. He promptly shortened it the World Wrestling Federation, and utilized videotape technology to capture, store, and distribute live matches to local and regional television broadcasters, giving them the ability to provide cheaper (and more dramatic, even controversial) content without having to rely on individual arrangements with promoters. Syndication and pay-per-view arrangements and heavy marketing to an international audience helped established brand loyalty. Eventually its popularity was such that saying World Wrestling Federation became cumbersome, so it started using WWF as a shortcut. That's when the legal headaches began... Back in 1994, both WWFs agreed to call a truce over the use of the initials. The Federation had not, at the time, established a huge global presence, so it agreed in writing, to not to incorporate them into any printed business material, and not to utter the term in any of its marketing pitches except in the U.S. to help build its fan base. The Fund, however, argued that the registration and use of a similar .com domain name (which it had not registered), along with the Federation's television programming and marketing efforts, made it inevitable that the initials would be associated with wrestling, thereby raising the flag of trademark infringement. The Fund also argued that, as a nonprofit, its ability to raise funds for its mission rests in large part upon its name, reputation, and how its initials are associated, and that the Federation would place a potential stranglehold on fundraising. The Federation's lawyers argued that its inability to use the initials would cause more confusion than just allowing both groups use them, because it's fan base has grown accustomed to wwf.com as a source of information about wrestling. The judge in the case, Justice Robin Jacob of the High Court of England and Wales (in London), held that Federation violated the agreement as far back as 1997. The 8/10/01 written decision ordered the World Wrestling Federation to give up its claim to the domain wwf.com, the initials WWF in its printed materials, and utterances of "WWF" outside the borders of the United States. Reports are that the Federation will appeal the ruling, in the face of an estimated US$50 million required to retool its image and logo. Quite a raw smackdown, indeed, tough enough to take some of the excess heat out of the company. A further ruling regarding the actual penalties the Federation owes the Fund is expected in October 2001. Resources Cited Anticybersquatting Consumer Protection Act (ACPA) of 1999 http://www.gigalaw.com/library/anticybersquattingact-1999-11-29-p1.html PETA v. Doughney (August 2001) U.S. Court of Appeals for the 4th Circuit http://pacer.ca4.uscourts.gov/cgi-bin/getopn.pl?OPINION=001918.P 8/13/01 Associated Press item http://news.cnet.com/news/0-1005-200-6860366.html?tag=cd_mh World Wildlife Fund http://www.wwf.org World Wrestling Federation http://www.wwf.com