The emergence of the Internet has resulted in many companies appearing
almost fanatical about protecting their trademarks. But there's good reason
for such zealousness, corporate attorneys argue.
DaimlerChrysler AG earlier this year discovered that a pornographer had created a Web site with an address of 4adodge.com. The address was suspiciously similar to one of the auto manufacturer's official sites: foradodge.com.
The "cybersquatter'' withdrew the pornography site after DaimlerChrysler filed a lawsuit in federal court in Detroit.
The DaimlerChrysler case does not surprise Joseph R. Dreitler, a trademarks specialist for Vorys, Sater, Seymour & Pease, Columbus' largest law firm.
"A failure to vigilantly guard trademarks will result in companies losing them,'' Dreitler said.
Aspirin and escalator once were registered trademarks, Dreitler said, but the companies failed to aggressively protect them by issuing written warnings to anyone who misused the names or by suing violators. The result is that aspirin and escalator have become public domain and can be used as generic labels by anyone.
More and more lawsuits involving trademark infringement in cyberspace are being filed nationwide:
* Last month, the U.S. and International Olympic committees and the Salt Lake City Organizing Committee for the 2000 Winter Games sued 1,800 Internet sites they contend illegally use the name Olympics.
* Also last month, a Canadian man canceled a Web site he had created with the address bigbrotherfanclub.com. He closed the site after attorneys for CBS complained that it illegally used the name of its reality television show.
* In February, Ford Motor Co. won a temporary restraining order against a Cleveland man who attempted to sell 52 addresses, including ford-quality.com, on eBay's auction Web site.
* Also in February, the sponsor of the Australian Open won a preliminary injunction against a Scottsdale, Ariz., sports-promotion company that created the address australianopen.com.
Some trademark-infringement lawsuits have hit closer to home.
* This month, the Vorys law firm reached a settlement in U.S. District Court with Brian Wick, a self-employed computer-systems programmer from Denver. Wick admitted he violated the firm's trademark by registering the address voryssaterseymourpease.com.
* Also this month, Stanley Steemer International, the Dublin-based carpet- and upholstery-cleaning company, won a judgment in federal court against a Tallahassee, Fla., man who registered the company's name as an address and tried to sell it back to the company.
* In January, the Ricart auto dealership in Columbus filed a similar federal suit against Robert F. Dalton, a Delaware County computer user who became irked at the company because of a dispute over a leased car.
* In October, Wendy's International, the Dublin-based fast-food chain, won a trademark-violation case in federal court against a Dallas businessman who registered variations of "Wendy's'' domain names and tried to sell them back to the company.
The national debate over trademark infringement in cyberspace prompted Congress to enact the so-called anti-cyberpiracy law Nov. 29. The statute is aimed at protecting companies from people who register businesses' trademarks as domain names on the Internet. Domain names are cyberspace addresses that allow computer users to access Web sites.
"Famous-trademark companies have spent decades and billions of dollars building up their names,'' said Gregory D. Phillips, a trademarks attorney in Salt Lake City. "And now you have these people who think they can steal those names by spending $35 to register a domain name.
"Companies have to police these things, hire attorneys and make sure some guy out there isn't using their name to put up a porn site or make a quick buck in some other way.''
Courts have almost universally found in favor of famous-trademark owners, Steven Winkleman, an attorney for the Australian Open, told the Arizona Business Gazette this year.
"They are simple, cut-and-dried cases,'' he said.
The Vorys case capsulizes many of the arguments raised in other cases.
Before he settled with Vorys, Wick contended he wanted to use voryssaterseymourpease.com to create a parody Web site that would satirize the law firm. Portraying himself as a David fighting Goliaths, Wick said the Vorys suit and similar actions filed against him by other law firms threatened his free-speech rights.
Dreitler argued that First Amendment freedoms do not give people the right to violate companies' trademark rights. Trademark laws, countless court opinions and the new anti-cyberpiracy statute support Vorys' position, he said.
Wick's address used Vorys' entire name and gave no hint of parody, he said.
Wick originally argued that Vorys was at fault for failing to register voryssaterseymourpease.com as a domain name. This failure left the door open to him, Wick said.
The law firm, Dreitler said, has registered two domain names: vssp.com and vorys.com. It would be impossible for Vorys to register all the possible variations of its name, including the domain name used by Wick, he said.
Benson Wolman, a Columbus attorney who specializes in constitutional law, said the debate over cyberpiracy often pits free-speech rights against trademark rights.
Although he is a died-in-the-wool First Amendment advocate, Wolman warned that even the Constitution limits free speech.
"You can't reprint copyrighted material, and you can't use someone else's trademark,'' he said.
Ricart's suit against Dalton has a free-speech component.
Dalton contends he registered the Internet addresses ricartauto.com and ricartautoripoffs.com as "gripe sites.'' The sites listed consumer complaints against the auto dealer that had been filed with the Ohio attorney general's office. "Gripe sites'' are protected by the First Amendment, Eric Willison, Dalton's attorney, has argued.
In a deal brokered by U.S. District Judge George E. Smith, Dalton agreed to drop Ricart's name from his sites' addresses until the case -- which is still pending -- is resolved.
Phillips predicted cybersquatters will keep cropping up because judges rarely impose damages, even though federal law provides for judgments of up to $100,000.
"Until the courts start awarding these damages and holding people responsible, these people will go right on registering names,'' he said.