The Cleveland Plain Dealer, 11 February 2009, reports the settlement of a claim brought by law firm Jones Day against a small internet site.
The clain sought to stop the site from including links to lawyers in Jones Day to follow up their real estate purchases,which was the activity in which the internet site engaged.
The court action had brought criticism on the grounds that it was a regular practice of the internet to contain links to other websites and that this was inportant from the dissemination of information and for free specch.
The case has now been settled and the internet site will be allowed to continue to have links to the Jones Day lawyers, but must do so by using the firm's web address as, for example, in www.jonesday.com/dpmalone.
The Cleveland Plain Dealer report is, in part , as follows :
" BlockShopper posts information from public records on residential sales in 11 U.S. markets. It adds to that brief articles about transactions involving lawyers, doctors and other buyers and sellers whose names show up in Google searches.
Jones Day sued BlockShopper in August after it posted articles about Dan Malone Jr. and Jacob Tiedt, lawyers at its Chicago office who had recently bought condos. The articles linked to the lawyers' profile pages on the firm's 2,300-attorney site.
Jones Day asserted that the links could give viewers the mistaken impression that it endorsed BlockShopper or was affiliated with it.
Critics scoffed, saying that Jones Day's position was an attack on Blockshopper's First Amendment rights and jeopardized the common practice of linking from one Internet site to another.
...BlockShopper ... offered to "make the link more literal" by including the law firm's Web address -- the terms agreed to this week, ( BlockShopper) said.
...Under the settlement,... BlockShopper can publish links to Jones Day but they can't be "embedded links." Those are defined as hyperlinks that are placed on a word or name.
Instead, BlockShopper will have to place the Web address next to references to the firm. In other words, instead of writing Daniel P. Malone Jr. is an associate in the Chicago office of Jones Day," BlockShopper must write "Malone (www.jonesday.com/dpmalone) is an associate . . ."
BlockShopper is permitted to use "deep links" to any Jones Day site. Those are links that directly access a specific page beyond the home page, such as attorneys' biographical pages.
While the settlement may seem like a fig leaf, it still rankles digital rights proponents who say BlockShopper did nothing illegal.
...Paul Levy, a lawyer with the consumer group Public Citizen, encouraged people to "replicate the lesson to Jones Day" by posting hyperlinks to the firm "as a way of daring, 'Big boy, try it again.'"
While the case was pending, BlockShopper agreed to remove links to the condo-buying associates in Chicago.
Now those postings will go back up, along with listings of property transactions by other Jones Day lawyers, (BlockShopper) said. "
With acknowledgement to The Cleveland Plain Dealer.
Wednesday, February 18, 2009
Tuesday, February 17, 2009
Need for evidence to show service mark in a personal name
Need for evidence to show service mark in a personal name:
A recent WIPO decision underlines what some practitioners and parties in UDRP proceedings forget- that to win these cases, you need evidence; assertions are not enough.
The decision is also another decision ( although there are cases to the opposite effect) that registration of a trademark in a State registry, rather than the Federal USPTO, at least in the USA, may not be enough to succeed in UDRP procededings.
The decision is Yost Properties LLC v. Viralt-shirts.com, WIPO Case No. D2008-1776.
Read the whole decision, but note the following two important aspects, both dealt with under Identical or Confusingly Similar.
1. The Complainant showed only a service mark registration in the State of Oregan and there was nothing to show that this carried a presumption of validity and no evidence that it had been used in commerce.
2. Moreover, the Complainant had not satisfied the test for cases where the claim is for a service mark in a personal name.
As the panellist said :
" This panelist, either as sole panelist or as part of a three-member panel, has addressed in a number of administrative proceedings under the Policy the hurdles that must be overcome for an individual to establish service mark rights in a personal name. See, e.g., Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Diamond, WIPO Case No. D2001-1327; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510; Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718. ...Complainant has not presented any documentary evidence of use in commerce of the personal name argued to constitute a service mark. There is no persuasive basis in the provided record upon which the Panel might reasonably determine that Complainant has established service mark rights in ROGER YOST in the present proceeding."
Accordingly, the Complaint failed.
Lesson to be learned : make sure the evidence is there to establish all elements of the Policy that must be proved.
A recent WIPO decision underlines what some practitioners and parties in UDRP proceedings forget- that to win these cases, you need evidence; assertions are not enough.
The decision is also another decision ( although there are cases to the opposite effect) that registration of a trademark in a State registry, rather than the Federal USPTO, at least in the USA, may not be enough to succeed in UDRP procededings.
The decision is Yost Properties LLC v. Viralt-shirts.com, WIPO Case No. D2008-1776.
Read the whole decision, but note the following two important aspects, both dealt with under Identical or Confusingly Similar.
1. The Complainant showed only a service mark registration in the State of Oregan and there was nothing to show that this carried a presumption of validity and no evidence that it had been used in commerce.
2. Moreover, the Complainant had not satisfied the test for cases where the claim is for a service mark in a personal name.
As the panellist said :
" This panelist, either as sole panelist or as part of a three-member panel, has addressed in a number of administrative proceedings under the Policy the hurdles that must be overcome for an individual to establish service mark rights in a personal name. See, e.g., Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Diamond, WIPO Case No. D2001-1327; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510; Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718. ...Complainant has not presented any documentary evidence of use in commerce of the personal name argued to constitute a service mark. There is no persuasive basis in the provided record upon which the Panel might reasonably determine that Complainant has established service mark rights in ROGER YOST in the present proceeding."
Accordingly, the Complaint failed.
Lesson to be learned : make sure the evidence is there to establish all elements of the Policy that must be proved.
What's in a name ? Domain Names are not 'gambling devices', says Court.
Kentucky court blocks move to seize gambling domains
With Acknowledgement to The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
With Acknowledgement to The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
Monday, February 9, 2009
WHAT'S IN A NAME ? DOMAIN NAMES ARE NOT GAMBLING DEVICES
Kentucky court blocks move to seize gambling domains
The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
The Associated Press
Wednesday, January 21, 2009
Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."
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