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Netscapesucks.com ordered to cease and desist
Netscape has fired a salvo at one of the Net's most
infamous rabble-rousers, ordering him to take the name "Netscape" out
of his Netscapesucks.com Web site.
In a case that raises issues as old as the Web itself, Netscape Communications wrote a letter to Dan
Parisi, the administrator of Netscapesucks.com, ordering him to cease
all use of the Netscape trademark in his site's domain name.
The question central to this case--and others like it--is whether sites like
Parisi's are legitimate criticism or trademark infringement. Netscape, for its
part, argues that Parisi's site diminishes the value of its trademark, while
Parisi, who also operates the infamous Whitehouse.com pornography site,
maintains that his site contains speech protected by the First Amendment.
The November 25 letter from Netscape--which came in the midst of an earlier
fight between the two sides--told Parisi that the use of the Netscape trademark
was not only "offensive and injurious," but "belies [Parisi's]
respect for trademark rights."
Netscape maintained that the domain inappropriately used its corporate
trademark without prior consent, and demanded that Parisi remove it at once.
"The Netscape trademark is globally famous, and we want to protect our
property rights," said Peter Harter, global public policy counsel at
Netscape. "It's trademark infringement."
The letter further alleged that Parisi violated federal trademark law, which
prohibits the use of someone else's trademark if it causes a "likelihood of
confusion" among consumers. The law is intended to prohibit the use of
another trademark as a way to promote one's own business, according to legal
experts.
However, while using someone else's trademark to attract customers is
illegal, using it to criticize or satirize the company is not, according to
Michael Overly, an attorney for law firm Foley & Lardner.
Overly said he sides with Parisi and others like him in such cases.
"Taking someone's trademark, registering it, and not offering the same
products is trademark infringement," Overly said. "In this case,
there's no likelihood of consumer confusion."
He added that using a trademark as a means of parody or satire, or as a way
to express one's opinions about a company, are protected under the First
Amendment in rulings that have been vigorously upheld by the Supreme Court.
"Given
the decision by the Supreme Court over the Communications Decency Act, the
Supreme Court said it would give speech on the Internet the highest level of
protection in the Constitution," Overly said. "Judges will be very
reticent until absolutely certain that [such sites violate] plaintiffs'
rights."
Although Netscape has not initiated formal legal action against Parisi, the
warning letter likely is a tactic aimed at scaring him away from engaging
Netscape in a lengthy, costly legal battle, Overly added.
"To merely file an answer to a federal trademark complaint can cause a
defendant to spend so much in legal fees that the individual would just give
up," he said. "This is not the first time a large business has used
heavy-handed tactics to coerce an individual defendant into essentially
capitulating."
In fact, large companies frequently send cease-and-desist letters in an
effort to stop people from using their names, or to persuade them to hand over a
particular domain name.
Just a few weeks ago, for instance, Chase
Manhattan sent a letter to Scott Harrison, the administrator of complaint
site Chasemanhattansucks.com,
threatening legal action on the grounds that the site diluted Chase's trademark,
according to Harrison.
Chase since has backed down from pursuing legal action, Harrison said.
In addition, Bally Total Fitness
last month was denied a motion for trademark infringement against the owner of Ballysucks.com, according to Harrison.
"It is a bully tactic," said Michael Calvey of law firm Armon &
Sabatini. "They're really off-base in terms of trademark law. In this
instance, it's ridiculous that our use of the mark 'Netscapesucks' will be taken
by a consumer as leading to Netscape."
Netscape's Harter would not comment on the consumer confusion argument,
denied that the company was employing threatening tactics, and emphasized that
the letter was only a response to one Parisi sent in the beginning of November.
Parisi and Calvey have alleged that Netscape violated Parisi's registered
trademark rights for Whitehouse.com, according to their letter to Netscape dated
November 3. Parisi charged that Netscape's new Communicator 4.5 Web browser
illegally violated the Whitehouse.com trademark by deferring to the official White House site in its "smart
browser" feature. Before version 4.5, Communicator browsers automatically
would lead to Parisi's site whenever the word "whitehouse" was entered
into the Web address bar.
"Our concern has to do with your unilateral choice of a Web site to
which you refer someone when that person enters a 'keyword' such as 'whitehouse'
without a primary and distinguishing domain name such as '.com,'" read
Calvey's letter. "One of your sites has recently stated that, 'If you have
trademarks that are registered domains, they will be included in the Internet
keywords system.' However, from what we have seen thus far, this professed
intention has been applied only sporadically, and without a consistent rationale
that we have been able to discern."
Said Harter: "If there is a bully here, it's them."
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