Joe Merante's Blog

On March 13, the deadline for filing objections to applications in ICANN's initial rollout phase of new gTLD's passed. Currently, there are 22 generic top-level domains, such as .com or .net, and 280 ccTLD's, or country code top level-domain names like .uk, in the top-level namespace. Now any entity with the money and demonstrated technical expertise can apply for .anything-you-want. As of today, 1,410 new TLDs strings have been applied for by 1,930 applicants ( data ). Some have been withdrawn . They've come in for everything from .blog to .book, so get ready for url's like "http://www.indianajones.movie".  Since its announcement, the new gTLD program has raised speech-related concerns for governments, competition claims by book publishers  and both phantom and real nightmares for trademark owners, among others. The objection and dispute resolution procedures for challenging the introduction of new gTLDs can be found here . ICANN " intends to ...

This recent decision from the National Arbitration Forum (NAF) 1 seemed like a good opportunity for a refresher on the UDRP. 2   Former lobbyist and ex-convict Jack Abramoff lost in his attempt to recover jackabramoff.com from the Democratic Congressional Campaign Committee (DCCC).  The domain redirects to a page on the DCCC site asking visitors to sign a petition reminding "Abramoff that [they] remember his role in the Republican Culture of Corruption and will work to defeat ethically-challenged Republicans in 2012."  Also that he shouldn't attempt "to re-write history with a new book and media tour." The decision came down to Abramoff's inability to establish trademark rights in his name as required by the first of three prongs in section 4(a) of the policy. 3   In summary, Complainant has provided no evidence of actual use of JACK ABRAMOFF as a trademark in connection with particular goods or services prior to the time Respondent registered t...

Each day I receive an email from the WIPO arbitration center listing decisions under the Uniform Domain Name Dispute Resolution Policy, or UDRP.  The UDRP is the policy a domain name registrant agrees to upon registration of a domain name which binds them to arbitration for trademark-type disputes.  WIPO's arbitration center hears the most of these disputes, though a few other venues also handle them.  WIPO hosts an extensive resource center for viewing past decisions, notice about policy changes, statistics and substantive discussion and summary of trends in UDRP panel* decisions. Over the past two years, I've been amazed (though not surprised) at how often Lego disputes come up.  The company is well known as an aggressive protector of their trademark rights.  A huge blow came in 2010 when the European Court of Justice (Europe's highest court) held that there are no trademark rights in the shape of interconnected toy bricks since the shape is necessar...

Update July 2012: Although the agency later reversed its decision, Flying Dog still pursued the case and has now lost in Michigan District Court. The brewery plans to appeal . I'll post the decision if I come across a copy. According to a complaint filed by the Flying Dog Brewery against the Michigan Liquor Control Commission, the Commission has prevented the brewery from selling their popular Raging Bitch Twentieth Anniversary Belgian-Style India Pale Ale in Michigan, now the company's top selling beer.  The complaint details the history of the brewery and how its founder's relationship with artist Ralph Steadman has contributed the creative naming and label designs in the "Gonzo" spirit.  Even if the beer weren't so delicious, I'd still feel the same way about the case. In late 2009 and affirmed in the summer of 2010, the Commission refused to approve the brewery's Raging Bitch label: The Commission finds that the proposed label which inclu...

S. 3804: Combating Online Infringements and Counterfeits Act ("COICA") is on its way to the full Senate after breezing through Committee 19-0.  It provides procedures for the U.S. Attorney General ("AG") to shut down a web site that is "primarily designed, has no demonstrable, commercially significant purpose or use other than, or is marketed by its operator, or by a person acting in concert with the operator..." to violate copyright or trademark rights.  The provisions are slightly more detailed in terms of what the AG must show in order to temporarily or permanently shut down a site (not much!), jurisdictional (in rem proceedings) and appeal issues, and other fun stuff found in a piece of legislation (except this one's got a distinct "guilty until proven innocent" ring to it), but that's the gist of it.  See here for a rundown of the threats to free speech, innovation and internet architecture contained in the bill as currently writte...

Litigation against alleged wrongdoers online, particularly p2p web sites, has repeatedly been characterized as a game of Whac-A-Mole.  So has the war in Iraq , political campaigning , cybersquatting ,  and more.  Speaking of the classic game, what is taking so long for a version of the game on the Wii?!  There is a live trademark on the term for computer and video games.  Like the other registered marks on the term, that one is owned by Bob’s Space Racers, Inc., the manufacturer of the arcade game and assignee of the "Whac-A-Mole" mark(s).  After reading another article about the RIAA's Whac-A-Mole litigation campaign against filesharing sites, I began to wonder whether it should start being referred to as a game of whac-a-mole.  In lawyer terms, I'm beginning to think that the trademark for Whac-A-Mole brand (video games, entertainment, etc.) has become generic and now serves as a reference to any evasive, repeated behavior by the same or similar e...