Domain Names, Trademarks, and the First Amendment: Searching for Meaningful Boundaries by Margreth Barrett

Domain Names, Trademarks, and the First Amendment: Searching for Meaningful Boundaries by Margreth Barrett (University of California, Hastings College of the Law)
This article argues that domain names for forum web sites are comparable to the titles of expressive works, and points out how existing principles defining and governing the regulation of non-commercial speech should apply when mark owners challenge incorporation of their marks into domain names for gripe sites and other forum sites that target the mark owner. Unfortunately, courts have generally ignored the Supreme Court’s definition of noncommercial speech in this context, and the First Amendment implications of prohibiting the defendants’ use. In particular, courts are equating commercial speech with the Lanham Act’s recently expanded commercial use requirement. While the commercial use requirement has served in the past to ensure that Lanham Act protection is consistent with First Amendment principles, its recent expansion has seriously undermined its effectiveness to do so.
The article also examines the interface of First Amendment protection with the Anticybersquatter Consumer Protection Act, focusing particularly on how the courts are construing and applying the forth and fifth factors that the Act lays out for determining whether a defendant has the requisite bad faith intent to profit from the plaintiff’s mark. The article notes several concerns, including a tendency of courts to undermine the purpose of the fourth factor’s safe harbor for noncommercial fair use by: 1) relying on recent expansion of the Lanham Act’s commercial use requirement in infringement and dilution cases to find that the defendant’s forum site use was commercial; 2) focusing on the defendant’s intent to harm the plaintiff, rather than his intent to profit; and 3) defining profit to include non-financial interests, such as the defendant’s personal satisfaction from airing his criticism of the plaintiff. The article also points out pitfalls in the courts’ construction of the fifth factor, and suggests alternative constructions that are more consistent with First Amendment precedent.
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=928261

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