The “right of publicity” is a legal doctrine used to prevent unauthorized use of a person’s name, image, or likeness for commercial purposes.
There are two major reasons to register an individual’s name as a trademark:
1. Provides access to speedy and less costly remedies afforded to trademark owners whose marks are contained in unauthorized domain names
2. Creates a “poison pill” against competitors purchasing marks as search terms and who use marks in metadata.
Access to remedies for such violations is still limited to traditional, more expensive court proceedings. Moreover, the U.S. anti cyber squatting statute provides for relief for theft of unregistered individual names only upon proof the registration was made with an intent to sell the name for a profit, and does not protect against competitive uses, which are much more common.
A registration allows clients and counsel to act quickly to prevent unauthorized use of individual names for marketing of competitive goods and services, a practice which is exploding on the Internet.
How Does a Federal Trademark Benefit the Individual?
What happens when an individual’s name ends up in the URL of a domain owned and used by a third party? There are two possible remedies.
The arbitration may be filed before the World Intellectual Property Organization (“WIPO”) or one of several other approved ICANN dispute forums. A decision is made within two months of appointment of the arbitrator and costs are substantially less than a court proceeding.
One must prove three elements to secure return of the domain:
• The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right; and
• The registrant has no legitimate rights in the mark; and
• Registration was made in bad faith.
The Anti Cyber Squatting Statute
The U.S. Trademark statute, Lanham Act § 43(d)(2) provides that the U.S. District court for the Eastern District of Virginia is available to file against offenders worldwide holding domains with a U.S. registry. This remedy is based upon in rem jurisdiction, a doctrine that allows a court to exercise jurisdiction based upon the location of the property, and hails from settling property boundary and ownership issues, including notice to lost or unknown heirs. In the case of domain names, use of the § 43(d) anti-cyber squatting provisions is available only if the plaintiff’s mark is federally registered with the U.S. Trademark Office.
Search engines now auction search terms to the highest bidders, including:
• Generic search terms
• Individual names
The first use is clearly not objectionable, but as more people bid on the descriptive term, the price goes up making its use cost prohibitive. Competitors start to look for less expensive ways to get their message out using other terms, including the trademarks and individual’s names associated with related products or services.
Courts have already ruled that a competitor purchasing the mark, or placing a mark in metadata to secure search engine ranking, is liable for infringement under the concept of “initial interest confusion.” The controversial topic practice by Google of auctioning trademarks to competitors for sponsored listings is the subjection of pending lawsuits.
Next time you perform a Google search, note rankings for products or services which pop up in the rankings other than for the one you keyed in. Some competitors are routinely including better known competitor’s marks in their metadata to gain ranking when the trademarked term is searched. This is an example of infringement by way of initial interest confusion and is illegal.