Tuesday, February 22, 2011

Recommended Reading: Mostert and Schwimmer, "Notice and Takedown for Trademarks"

The 100th Anniversary Issue of The Trademark Reporter includes a thought-provoking article by Frederick W. Mostert and Martin B .Schwimmer, entitled "Notice and Takedown for Trademarks," 101 TMR 249 (January-February 2011). [pdf here].

The authors begin by noting that "[t]rademark fraud on the Internet is rife." They assert that there is an urgent need for development of a legal scheme that addresses this problem.

In some other areas of IP law, such as copyright and domain name disputes, quite successful strides have been made in developing clear guidelines and remedies with which to tackle online deception. The Digital Millennium Copyright Act (DMCA) and the Internet Corporation for Assigned Names and Numbers’ (ICANN)’s Uniform Domain Name Dispute Resolution Policy (UDRP) are good examples. Woefully left behind in the fray are measures to combat deceptive trademark abuse online.

After reviewing the workings and effectiveness of the DMCA, VeRO, and UDRP processes, the authors propose an expedited dispute resolution proceeding (EDRP).

We suggest the exploration of multinational legislative adoption of a two-phase expedited dispute resolution proceeding (EDRP) that can channel disputes into the first three categories [i.e., default, negotiated settlement, arbitration] wherever possible. The first phase is a mandatory notice and takedown/safe harbor procedure resembling the DMCA and VeRO. The second phase is a voluntary inter partes arbitration reminiscent of the UDRP. The purpose of phase one is to provide intermediaries with a legislative motivation to take down the easy cases (primarily the defaults); the purpose of phase two is to motivate the parties to first negotiate and then arbitrate, where feasible.

The authors recognize that their proposed EDRP system will have to be universal, and they posit that "WIPO is in an ideal position to develop country guidelines on notice and takedown for trademarks."

Text Copyright John L. Welch 2011.


At 10:13 AM, Anonymous Joe Dreitler said...

I have the highest respect for both Fred and Martin. They are indeed experts in the field. However, my personal experience has been that the UDRP system has been a noble experiment that has failed to stop pirates and crooks for making money off of someone else's property. The early days of UDRP were fairly successful, although a client having to hire a lawyer, draft a complaint and pay a minimum $1500 filing fee was often spending more than $5000 to "recover" s misspelling of its domain that the thief had spent $6.95 to obtain. Then it deteriorated with domain tasting and privacy services making it more time consuming and expensive to get back a single mis-spelled domain that was clearly a money making click through. And then there were a few registrars that had their own business registering misspelled domains for a profit. And to top it off, there are a number of non-US UDRP arbitrators who (I have experienced) have created their own body of law or adopted minority positions on things like "fair use" to domain name proceedings. So, I don't view the UDRP process as a success. Actually, in circumstances where the pirate is subject to jurisdiction in the US, I have come to the conclusion and often encourage my clients to have us file a civil suit in US District Court, since the judges are going to apply US law, and there is a chance to get a financial award, even though it is probably not collectable. So, I must respectfully dissent from my esteemed colleagues suggestion that WIPO try to develop another quasi judicial system that has no body of law to interpret- but is free to adopt whatever countries laws (whether a minority view or not) to deal with this issue. I wish that I had a better suggestion to make on HOW to deal with this problem which they have clearly identified, but alas, I'm just an old US trademark lawyer.


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