By Cynthia Clarke Weber

The Internet is, without question, an extraordinary and unprecedented means of communicating and obtaining information. From an intellectual property law standpoint, however, it is important to remember the Internet is just another medium. Trademark and copyright laws have existed for hundreds of years. The law has adapted and been applied to many technology advances along the way, for example, printing presses, photography, sound recordings, photocopying, movies, television and computer software and data bases. It is possible that the Internet is not as revolutionary as, say, the printing press was in its day. Be that as it may, basic trademark and copyright principles have remained the same through past dramatic technology changes. While domain names have thrown some new twists into the trademark area which may require new legislation, The Lanham Act does not otherwise appear to need amending to adapt to the Internet. And although Congress frequently enacts new copyright law provisions to specifically address new technology or regulatory issues, these amendments do not change basic copyright principles, which are being applied in the Internet context.

It is the federal judiciary, rather than Congress, which has the task of applying trademark and copyright law to Internet factual scenarios, and it is the courts which are creating the intellectual property guidelines for the Internet. To date, the courts have consistently recognized that the Internet does not change settled trademark and copyright principles.

A copyright owner has the exclusive right to reproduce, distribute, publicly display and perform and create derivative works from the protected work. 17 U.S.C.§106. These rights must be recognized on the Internet. The following specific activities have been addressed: inputting a work into a computer, including scanning it into a computer for posting on the Internet, is making a copy. Printing a copy of something off the Internet is also clearly copying, and therefore infringement. See, e.g., Religious Technology Center ("RCT") v. Netcom On-Line Communication Service, Inc., 37 USPQ 2d 1545 (N.D. Cal. 1995). "Uploading" and "downloading" are making copies. Sega Enterprises Ltd. v. MAPHIA, 857 F.Supp. 679 (N.D. Cal. 1994). Posting copies on the Internet is infringement. RCT v. Lerma, 40 USPQ 2d 1569, 1574 (E.D. Va. 1996); RCT v. Netcom. Even loading data from a storage device into a RAM (random access memory) is copying because the data stays there long enough to be perceived. MAI v. Peak Computer Inc., 991 F.2d 511, 518 (9th Cir. 1993). Displaying a copyrighted work on the Internet is infringement of the exclusive right of display and distribution. RCT v. Netcom; Playboy v. Frena, 839 F.Supp 1552 (M.D. Fla. 1993) (display of copyrighted Playboy photographs on Internet was violation of display and distribution rights). An operator of a computer bulletin board service (BBS) and the Internet access provider which allows the BBS onto the Internet could be liable for contributory infringement. RCT v. Netcom.

The courts have consistently rejected arguments that because the Internet¹ is involved the law does not apply, or is different. A series of copyright decisions involving the Church of Scientology ("Church") illustrate this. A Church dissenter, Lerma, obtained excerpts from the Church's Operating Thetan ("OT") documents, which are supposed to be kept secret. Lerma posted the excerpts on the Internet. The Washington Post downloaded the excerpts from the Internet and quoted from them in an article about the Church.

The Church sued everyone involved, starting with Lerma, whom it sued for copyright infringement in the Eastern District of Virginia. Lerma argued that his defense of fair use should receive special treatment because it involved the Internet. Judge Brinkema disagreed:

RCT v. Lerma, 40 USPQ 2d at 1574. Applying a traditional fair use analysis, the Court rejected that defense, and held that Lerma's act of posting the copyrighted material on the Internet was copyright infringement.

The Washington Post, however, prevailed on its fair use defense, again under a traditional analysis. The fact that the Post had downloaded the Church's text from the Internet made no difference to the decision, and but for the fact that the use was "fair" it would have been copyright infringement. RCT v. Lerma, 37 USPQ 1258 (E.D. Va. 1995).

In a case involving another dissenter and his use of the Internet, the Church sued the operator of the bulletin board service (BBS) and Netcom On-Line Communication Services Inc., the Internet access provider, for copyright infringement as participants in the publication of copyrighted works on the Internet. RCT v. Netcom, 37 USPQ 2d 1545. The court held that BBS and access providers could be contributorily liable for copyright infringement under the right set of facts and denied the defendants' motions for summary judgment.

In the copyright area, it appears that courts will have little difficulty applying traditional copyright principles. The real problem lies not in the law, but in the practical difficulty in detecting infringement. That issue will be left for another day.

The Internet raises several interesting issues in the trademark area.

First -- leaving aside domain names for the moment -- the rules governing use of one's own or another's trademark in advertising and at websites on the Internet are no different than the rules governing trademark use in print or other advertising media. The same principles of infringement, dilution, false advertising, comparative advertising, fair use (the trademark variety) and other types of unfair competition which apply in other media also apply to trademarks on the Internet. If a use would be infringing in a magazine or on television, it will be infringing on the Internet.

Domain names add a new twist. Network Solutions Inc. ("NSI") is the entity in the United States which is in charge of registering domain names, which are simply Internet addresses. A domain name registration confers no substantive or other trademark rights on the registrant. NSI awards domain names on a first come first served basis. Unless the identical domain name is already registered, NSI will issue a domain name registration to an applicant provided the other requirements for registration are met. NSI makes no warranties of any kind when they confer a domain name, and ownership of a domain name is no defense to infringement.

NSI does have a dispute procedure. If someone else has registered your domain name, you must write to the registrant and accuse them of violating your trademark rights and demand that they assign the domain name to you. You must also write to NSI and send them a copy of your letter to the registrant and a certified copy of a trademark registration, U.S. or foreign, which shows rights which antedate the domain name registration. Common law rights and pending applications will not suffice, you must have a registration.

The trademark registration must match the domain name exactly. That usually means the registration must be in block letters, as even a slight stylization may render the trademark nonidentical. ".COM" is of course disregarded in assessing identity. If you can establish to NSI's satisfaction that you have superior trademark rights they will send a letter to the domain name registrant giving it thirty days to assign the domain name to the challenger, do nothing, file suit against the challenger or provide a trademark registration which shows rights superior to the challenger's. If the domain name registrant does nothing, or advises NSI that it will not give up the domain name registration, NSI will put the domain name on hold, and no one can use it. If the domain name registrant files suit against the challenger in court before the thirty days have expired, it can continue to use the domain name until the case is over and thereafter if it wins in court. NSI will not assign a domain name to the challenger if the registrant refuses to cooperate.

In order to force an uncooperative domain name registrant into assigning a domain name, a challenger must file a court action for trademark infringement and/or dilution. If the mark is not yet on hold, at that point NSI will place the domain name in the court's registry, and it remains there, unused by anyone, until a court issues an order conferring ownership on one of the parties.

If the domain name registrant is cooperative, NSI will assist in assigning the domain name to the challenger. The assignment must be done via computer.

As noted above, a domain name registration confers no trademark or other substantive rights. It is just an address. However, use of a domain name can constitute trademark or service mark use in the right circumstances, giving rise to common law rights and possibly registrable rights, if the nature of the use meets registration requirements.

The U.S. Patent and Trademark Office will issue trademark and service mark registrations for entire domain names, e.g., http://www.sughrue.com . Everything but "sughrue" should be disclaimed as descriptive and in the public domain. The problems lie in properly defining and describing the services, and in providing acceptable specimens. Simply selling goods via the Internet is not a separate service just because the solicitations are on the Internet, but if something more is added there may be service mark use for providing information in a particular field.

Since a domain name is just an address, it is generally used on the Internet like a trade name, which is not service mark use. However, a domain name prominently displayed in an advertisement for a service, for example in a newspaper, might qualify as service mark use. Because of the technical affixation requirements for trademark registration, registering a domain name as a trademark (for goods, as opposed to services) would be difficult. It may be possible to satisfy PTO specimen requirements, for example, in order materials showing the domain name prominently displayed with a photograph of the goods and all information necessary to order the products. See, e.g., Lands' End Inc. v. Manbeck, 779 F.Supp. 311 (E.D. Va. 1992).

For obvious reasons, most companies want to use their trademark, especially a house mark, as their domain name. Several entrepreneurs realized early on that money could be made by registering the trademarks of others as domain names. These people have come to be called "cyber-squatters". A Mr. Toeppen registered over 200 well known trademarks as domain names in the hopes of selling them back to the rightful owners. Two trademark owners refused to be blackmailed, and sued Toeppen instead of paying him to get the domain names containing their marks. The plaintiffs owned the PANAVISION and INTERMATIC marks. In both cases, the courts found dilution, issued immediate injunctions, and ordered the domain name awarded to the true trademark owner. Panavision International L.P. v. Toeppen, 40 USPQ 2d 1908 (C.D. Cal. 1996); Intermatic Inc. v. Toeppen, 40 USPQ 2d 1412 (N.D. Ill. 1996). The court in Panavision noted that Toeppen's registration of PANAVISION.com went beyond standard dilution theories, because his registration did not merely "lessen ... the capacity of a famous mark to identify and distinguish" its owner's goods and services. Rather, the registration eliminated the mark's ability to identify and distinguish on the Internet, because Panavision could not use its own house mark as its name in that important medium. 40 USPQ 2d at 1914.

Toeppen claimed he was not using the domain names he had registered, and argued that he could neither dilute nor infringe the trademark owner's rights if he was not using the domain name. The courts disagreed. The Panavision court held that the mere act of registering the domain name for the commercial purpose of blackmailing the trademark owner was "use in commerce", and actionable under The Lanham Act. 40 USPQ 2d at 1913.

It is worth noting that Toeppen appealed the Magistrate's decision in Intermatic to the Judge in part on grounds that the Internet is a new medium of communication. The court said, in affirming, that although the Internet is a new medium, "courts must still apply traditional trademark law, while also considering the policy considerations." Intermatic Inc. v. Toeppen, 41 USPQ 2d 1223 (N.D. Ill. 1996).

Using another's trademark as a domain name may also constitute infringement or dilution in more traditional ways. To establish infringement (or unfair competition), a likelihood of confusion must be established through consideration of a number of factors, including the relationship of the parties' goods and services. While in some cases it may be possible to show likelihood of confusion, where the goods/services are entirely different that could be difficult.

If a trademark is famous, the dilution laws may come to the rescue. There are both state dilution statutes and a federal dilution act which came into effect on January 16, 1996 as Section 43(c) of The Lanham Act, (15 U.S.C.§1125(c)). The federal dilution statute protects only "famous" marks; state statutes generally also protect only strong, well known marks. See, e.g., Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y. 2d 538 (1978). Assuming a mark qualifies for protection from dilution, its use as a domain name, even on entirely different goods or services, may be enjoinable under the dilution statutes.

There are two broad categories of dilution: blurring and tarnishment. Dilution in the blurring sense is a whittling away of the distinctive quality of a unique and famous mark. KODAK, for example, is a famous mark. If someone started selling KODAK trucks, it is unlikely that people would believe that the camera company had moved into the truck business. But they would come to think that the KODAK mark no longer stands for one and only one source. The mark would no longer be unique. That would diminish the intrinsic value of the mark per se. That is dilution in the blurring sense, and that was the type of dilution found in the Intermatic.com and Panavision.com cases discussed above.

The tarnishment branch of dilution also comes into play on the Internet. CANDY LAND is a well known trademark for children's games. The defendant registered Candyland.com as a domain name for a sexually explicit website, and was sued by Hasbro, the owner of the CANDY LAND mark. The court issued a temporary restraining order and a preliminary injunction on tarnishment dilution grounds. Hasbro Inc. v. Internet Entertainment Group Ltd., 40 USPQ 2d 1479 (W.D. Wash. 1996).

Similarly, someone registered Adultsrus.com as a domain name and used it for and as a website for marketing sexual products on the Internet. Toys "R" Us Inc. sued, and this defendant too was promptly enjoined on dilution grounds. Toys "R" Us Inc. v. Akkaoui, 40 USPQ 2d 1836 (N.D. Cal. 1996).

An interesting issue of personal jurisdiction arises where the defendant's only use of the allegedly infringing or diluting name in the forum is as a domain name on the Internet. Is that commission of a tort within the state for purposes of the long arm statute? There are decisions going both ways. For example, personal jurisdiction was found in Missouri against a California based website when the site was accessed by Missourians 130 times and the plaintiff, who was located in Missouri, was being harmed there. Maritz Inc. v. CyberGold, 40 USPQ 2d 1729 (E.D. Mo. 1996). The defendant's service, which was providing Internet mailboxes and maintaining a mailing list, was not operational at the time of the suit, but it would have been available to any Internet user without charge, including those in Missouri. 40 USPQ 2d at 1732. See also Inset Systems, Inc. v. Instruction Set, Inc., 937 F.Supp. 161 (D. Conn. 1996), finding jurisdiction based in part on advertising solicitations in Connecticut via the Internet.

In contrast, in Hearst Corp. v. Goldberger, No. 96 Civ. 3620 (S.D.N.Y. February 26, 1997), the court found no personal jurisdiction in a suit for infringement of the ESQUIRE mark for magazines. The defendant's website at Esquire.com had been accessed by New Yorkers, but no information was yet being provided at the time of the suit. Therefore the magistrate thought no tort was being committed in the state of New York. The court said the website was like a national advertisement, available to all, but not targeted to a particular state. The court transferred the case to New Jersey, where the defendant resided. See also Bensusan Restaurant Corp. v. King, 40 USPQ 2d 1519 (S.D.N.Y. 1996), finding no personal jurisdiction where the only contact was maintenance of a site on the World Wide Web accessible by New Yorkers.

Until the law becomes settled on this issue, the safe place to sue is in the defendant's home state, but it would seem that state long arm statutes which reach those committing a tort in the forum from outside the state would probably reach defendants, particularly if they do something more active than simply maintaining a site on the Internet.

The jurisdictional issue has yet to be decided in the international context, to our knowledge. The issue should come before the courts, however, because website/domain name owners are often located in a foreign country, but the allegedly infringing or diluting mark is accessible and/or promoted to U.S. citizens in the United States.

While we are not aware of any cases on trade dress on the Internet to date, trade dress infringement seems a possibility for websites. Traditional trade dress claims could come into play, for example, where a website uses the well known trade dress (e.g., a color combination) of another company. This would be similar to using others' word trademarks at a site, and would raise the same infringement and dilution questions. Protection for the "look and feel" of website designs is another possibility, particularly for those in the business of designing websites for others.

A brief word about trade secrets on the Internet is also in order. In the Church of Scientology cases discussed above in the copyright context, the Church also accused The Post and Lerma of trade secret misappropriation, claiming that its text was a trade secret. In rejecting that claim against the Post, Judge Brinkema stated the obvious:

RCT v. Lerma, 37 USPQ 2d at 1263. Thus The Post was not liable for trade secret misappropriation by downloading from the Internet because there was no misconduct involved in interacting with the Internet. While the Church's trade secret claim against Lerma was also dismissed, theoretically the person who acquired the trade secret in the first place and put it on the Internet could be liable if he obtained the secret in breach of a contract or other duty or by unlawful means. Id.

In sum, the Internet does not require changes in basic trademark, copyright or unfair competition laws with the possible exception of regulating disputes about domain name registrations. The Internet is simply another medium. The challenge is to apply settled law to new and often complex factual situations. To date, the courts seem quite capable of the task.