By now you probably know that over the Thanksgiving Holiday, Homeland Security wasn't just feeling up your grandmother and staring at your naked daughter at the TSA, but ICE (Immigration and Customs Enforcement) went way beyond its mandate to seize a whole bunch of domain names. This is not the first time it has done this, of course. Back in June, we noted a very similar, if somewhat smaller, raid. That one was equally questionable, as not only did it involve seizing domains without an adversarial trial, but also the announcement was made at Disney headquarters, which should make you wonder when Homeland Security started working for private corporations to shut down websites it does't like without a trial.
The latest set of seizures is no less troubling. These domain seizures come even without the COICA law being in place, and despite assurances from COICA supporters that no such domain seizures would ever possibly come without a full trial first, many of the operators of the domain names seized in this round state they hadn't received any notification of complaints, let alone demands to be taken down.
And it gets even more ridiculous, as some of the sites taken down appear to be nothing more than search engines, which did not host any content and did not host any trackers, but simply acted as perfectly normal search engines. For anyone who actually understands how the internet works (i.e., clearly not Homeland Security) this is a massively troubling move, suggesting that if Homeland Security doesn't like how your search engine works, it can simply seize your domain and put up a really scary looking graphic, claiming it has taken over your website:
Even the search engine folks are quite worried about this -- and they're not the sorts who usually pay too much attention to questions about copyright.
And, of course, none of this is actually stopping these sites from working. Within hours, many had popped back up elsewhere. The whole thing seems highly questionable. Seizing domain names without a trial, and taking down sites that appear to be nothing more than search engines, rather than actually hosting infringing material, is a huge, dangerous step, which appears to have absolutely nothing to do with Homeland Security's mandate.
The Dallas Cowboys are notoriously bad this year. As such, I'm sure they've got plenty of stuff to focus on, but it seems pretty bad that the team would forget to renew its domain name. It seems that DallasCowboys.com expired last Tuesday, and Network Solutions put it up for sale on Sunday. The team did eventually figure it out and got the domain back. While I have no idea what the team can do to fix its awful performance on the field, for its domain troubles, I might suggest it figure out how to "auto renew" domain registrations.
In covering all of the Righthaven lawsuits, we've noted that the company sues everyone for $75,000 and, bizarrely, that it also demands they hand over their domain name. To date, no one has actually done that. Every settlement that's been revealed has been for $5,000 or less, and hasn't included anything about a domain name. But, some are pointing out just how ridiculous it is to demand the domain name transfer on a copyright claim. As lawyer Evan Brown notes at that link:
This is a copyright lawsuit, not one for trademark infringement or cybersquatting. Nothing in the Copyright Act provides the transfer of a domain name as a remedy. Such an order would be tantamount to handing the whole website over to Righthaven just because there may have been a couple of infringing items.
The Copyright Act does provide for the impounding and disposition of infringing articles (See 17 USC 503). So it's plausible that a court would award the deletion of the actual alleged infringing articles. Or if it wanted to be weirdly and anachronistically quaint about it, could order that the infringing files on the server be removed and somehow destroyed in a way additional to just being deleted. In any event, there's no basis for a court to order the transfer of a domain name as a result of copyright infringement.
Of course, the real reason probably has more to do with the typical lawyer's concept of "scare them into settling," and adding a demand for the domain is just a part of that, hoping that the recipients of the lawsuits will be more willing to roll over and settle if they think their entire website is at risk.
I remember, when first learning about trademark law, thinking how bizarre it was that having your name be considered "generic" was a bad thing. After all, when your brand became synonymous with the product you were selling (think Kleenex, Xerox, Band-Aid etc.) it meant that you had really dominated the product category. Except... if you're a lawyer. Because the fear, of course, is that if your brand becomes generic, you lose the trademark, and then suddenly others can make use of that brand that you worked so hard to build up. I'm still not convinced that's really a problem if you're a savvy business person, but it's the way things are.
However, as something of "natural" proof of this, just look at how much of a gold rush there was in the early dot com era for "generic" dot com domain names. Everyone involved in those businesses just knew why this was important. They believed that by having those key generic terms, "books.com," "pets.com," and even "sex.com" that you would be one of the first places people would go, even if they didn't know who you, as a company, were. Of course, it actually didn't turn out that way for many players who ended up with those domains. A lot of the early companies who had "great" domains faded pretty quickly. Execution matters more than just a good name.
And, of course, this whole generic business really gets in the way of that backwards trademark view, where having your name be generic is "bad." For example, in a recent lawsuit, AOL learned that its advertising.com domain name isn't really valid as a trademark because of its generic nature. In fact, the court notes that if people are asked about a company, it's perfectly reasonable to describe it as "an advertising dot com." I also like how the court smacked down AOL's claim that without getting a trademark on advertising.com it would take business away from the company:
this is the peril of attempting to build a brand around a generic term.
Exactly. If you want the advantages of building around a generic term, you also have to realize there are some trade-offs, and one is that you don't get to trademark it. However, as we noted when a similar ruling came down last year against hotels.com, it's not clear how much this really matters. It only matters if you overvalue the trademark. The domain itself is still unique and the brand is still unique. So does the trademark really even matter?
Michael Scott points us to the news that the University of Texas, who has a bit of a history about claiming ridiculously overbroad intellectual property rights, has been knocked down in its attempt to take over the domain texassports.org. Apparently, UT already has texassports.com, and claimed that whoever registered the .org violated UT trademarks and registered the name in "bad faith." Thankfully, the UDRP panel reviewing the claim found this to be ridiculous, pointing out that you can't have a trademark on a descriptive term, and "Texas sports" seems pretty damn descriptive:
"Texas sports" is geographically descriptive and not protected by trademark. The University does not have the exclusive rights to "Texas" and "Sports." The University does not have a registered trademark for "Texas Sports." There is no likelihood of consumer confusion.
The University did not prove "bad faith." Again, common, geographic terms are not typically going to rise to the level of a bad faith acquisition.
If you're looking for one of the most entertaining judges on the bench today, Alex Kozinski may be your judge. He's famous for being both clear and entertaining in his rulings, and for pulling such stunts as nominating himself for a contest on "Judicial Hotties" with an email to the organizers stating: "While I think the list of female candidates is excellent, the list of male candidates is, frankly, lacking. And what it's lacking is me." So I'm always partial to reading opinions by Kozinski, even if I find I disagree with him more often than I would like. Yet, here we have two recent decisions by Kozinski that seem to effectively disagree with each other on an issue dealing with trademark and domain names.
The first, noted by Eric Goldman, involves Kozinski's determination that that the domain eVisa.com represents trademark infringement over Visa's trademark even though eVisa is not in competition with Visa at all, and is focused on language tutoring. Kozinski says that there is infringement, citing trademark dilution. The whole theory of "dilution" in trademark law is problematic enough already, in that it goes way beyond the purpose of trademark law to act as a method of consumer protection against confusion. When you add in "dilution" then suddenly trademark becomes something very different and allows companies to stifle totally unrelated uses of a domain name. As Goldman notes this ruling seems to suggest that Visa (the company) can block out any use of "visa" in a domain name, even if it is accurately used as the dictionary definition of visa (i.e., to travel to another country):
the word "Visa" already has several dictionary definitions. This poses a problem for the blurring analysis. Visa the trademark can't co-opt the existing dictionary meanings. So does dilution-by-blurring mean that Visa the trademark can preempt every non-dictionary commercial use of the word? That seems to be a logical implication of this opinion.
And while (as per usual) Kozinski's ruling is entertaining in its opening:
She sells sea shells by the sea shore. That's swell, but how
about Shell espresso, Tide motor oil, Apple bicycles and Playboy
computers? We consider the application of anti-dilution
law to trademarks that are also common English words.
it runs into trouble pretty quickly. Historically trademark is only supposed to apply to the areas where you use the mark in commerce. This expansion of dilution changes it into something totally different, and something that seems to run into some serious First Amendment issues.
Yet, just a week later, Kozinski penned another ruling having to do with trademarks and domain names, brought to our attention by Thomas O'Toole's analysis, where Kozinski seems to smack down Toyota for trying to claim infringement by the holders of the domain buy-a-lexus.com. In this ruling, Kozinski makes plenty of sense, and amusingly mocks those who think that there's some sort of confusion in just a domain name alone:
In the age
of FIOS, cable modems, DSL and T1 lines, reasonable, prudent
and experienced internet consumers are accustomed to
such exploration by trial and error. ... They skip from site to site, ready to hit the
back button whenever they're not satisfied with a site's contents.
They fully expect to find some sites that aren't what
they imagine based on a glance at the domain name or search
engine summary.... [Consumers] don't form any firm expectations about the
sponsorship of a website until they've seen the landing page
--if then. This is sensible agnosticism, not consumer confusion. So long as the site as a
whole does not suggest sponsorship or endorsement by the
trademark holder, such momentary uncertainty does not preclude
a finding of nominative fair use.
Of course, the difference here is that he's using the "consumer confusion" view of trademark law, which makes sense, rather than the dilution by blurring standard, which opens up all sorts of problems. But it really does seem difficult to see how a judge could rule against eVisa one week, and then write the paragraph above the very next week. In fact, while we note that the dilution claims raise serious First Amendment issues, those aren't mentioned in that ruling. Yet, here in the Toyota ruling, Kozinski quickly points out how ruling in favor of Toyota would raise First Amendment issues:
It is the wholesale prohibition of nominative use in domain
names that would be unfair. It would be unfair to merchants
seeking to communicate the nature of the service or product
offered at their sites. And it would be unfair to consumers,
who would be deprived of an increasingly important means of
receiving such information. As noted, this would have serious
First Amendment implications. The only winners would be
companies like Toyota....
It's really too bad that the Alex Kozinski, who wrote this later ruling, couldn't go talk to the Alex Kozinski who wrote the first ruling.
There was a lot of attention paid last week to Homeland Security's ICE (Immigration and Customs Enforcement) decision to shut down a bunch of movie file sharing sites. There were lots of questions about the action. We focused on the incredibly troubling fact that the whole thing appeared to be coordinated by Disney, a private corporation. Others, quite reasonably questioned how this is a Homeland Security (or ICE) issue at all. But, lost in much of the discussion was another important point. Beyond just raiding the operators of many of these sites, Homeland Security also seized the domains of the sites, though it's not at all clear under what legal authority they did so, and there was no due process involved at all:
The report did not cite under what law the domain names were seized. As far as I know there is no federal law that allows the seizure of domain names. That of course is the troubling part. Although I have no love for sites that allow the distribution of protected works for free, when the federal government starts making up their own remedies for violation of laws, its a problem. Moreover all that happened here was a claim by the government of improper conduct by the site. There does not appear to been a hearing where any of the domain owners got notice or what you would call due process, which is an opportunity to defend themselves prior to the domain seizure
This reminds many folks of the still ongoing legal dispute in Kentucky over whether or not the governor there can just seize the domains of certain gambling-related websites.
TorrentFreak has an anonymously-sourced (so, take that for what it's worth...) story, suggesting that ICANN was involved in the domain name seizure of these websites, using technicalities in how those sites were registered to take back the domains and hand them over to the US government.
As TorrentFreak notes, this seems to open a huge Pandora's box of potential problems, in terms of what the US government and Homeland Security (at the behest of Disney) might seize next, without any due process. What about some more well-known sites, like The Pirate Bay's domain or MegaUpload? According to the (again, anonymously sourced...) report on TorrentFreak, US officials looked into seizing both of those as well, but realized doing so would likely create other diplomatic and PR-related issues:
Shockingly, TorrentFreak was informed that wheels were also set in motion to seize The Pirate Bay domain. But for reasons that remain unclear that didn't come to pass. Our source believes that the US authorities would've had to contact the Swedish authorities on the matter first, but that since there is already an unfinished criminal process against the site, the time was not considered right. There is an implication, however, that patience won't last forever and may run out after the founders' upcoming court appeal.
Another site in the cross hairs appears to be MegaUpload. Although a domain seizure was suggested, it now seems that another route has been taken, at least for now. We have also been informed by other sources that further sites are being watched although it proved impossible to discover their names.
Given the anonymous sourcing, it's worth taking the reports with a grain of salt, though I wouldn't be surprised to find out that the possibility of seizing the domains was at least explored. If I had to guess, the possibility of a PR nightmare was probably what kept those plans on the drawing board. It was easy to step in and seize the relatively little known domains that they did. In fact, very few of the stories focused on the seizure of the domains themselves. If it had been a major site, much more attention and legal scrutiny would have been quickly applied to the question of what legal authority does Homeland Security have to seize domains.
However, now that the dust is settling on the Disney-directed bust, it does seem like an important question for Homeland Security officials to answer. On what basis can they seize domains and what role did ICANN play in those seizures?
This isn't much of a surprise given the convoluted history of the .xxx domain -- including meddling by the US government -- but it appears that after all of these years, the domain is set to be approved. It doesn't seem like anyone's happy about this -- for conflicting reasons -- which was why there was so much controversy over it in the first place. Some religious groups fear that this is "legitimizing" porn, while some porn sites fear that they're going to be required to operate in the .xxx domain. Of course, porn is already legitimized and it would be nearly impossible to require porn sites to operate in that domain, so it seems like both sides have little to fear. As Wired notes in the link above, the reality will probably be that the domain -- like so many modern top-level domains will mostly be ignored or become home to more shady operators that most people know to avoid.
It seems that with Google now taking a stand on Chinese policies, other companies are at least stepping up a bit as well. GoDaddy, who I believe is the largest domain registrar around, is going to stop offering .cn domains, after China put in place new rules, requiring registering with the government and providing all sorts of personal info, including a photograph and identity cards. GoDaddy says it sees these new rules as a "threat to the security of individuals," though it almost certainly has noticed the good publicity Google has received for its stance, combined with the political winds suggesting new laws to punish American companies that help censorship abroad.
It's been a while now since ICANN announced plans to open up the top level domain space. While we've questioned for many years the utility of still requiring limited TLDs, ICANN's plan to open up top level domains appeared to be more of a moneygrab than any real attempt at openness. That's because to get your own vanity TLD, it was going to cost somewhere between $100,000 and $500,000. Who would pay that? Apparently consumer electronics firm Canon.
Dark Helmet alerts us to the news that Canon is the first company to get its own TLD, appropriately: .canon. And, no, this doesn't mean that you'll now need to go to http://canon.canon -- but just to http://canon (that is, once it's launched, which won't be until at least late 2011). Oh, and apparently the cost has now solidified at $185,000. This really does seem like a pure vanity play. It's not like anyone was having any trouble finding Canon before, and most browsers (the vast majority of those that are actually used) will often automatically add the .com if you leave it off anyway.
There might be an argument for some sites, such as social networking sites to go down this road, so that you can set up profile pages like YourName.Facebook or whatever -- but it's hard to see the value for companies like Canon.
