by Pamela G. Browne
The Internet was the brainchild of a small group of scientists who created the Advanced Research Projects Agency Network (ARPNET) in 1969. This was an Internet network designed primarily for governmental use. With the proliferation of personal computers and software in the 80s the U.S. government formed the Internet assigned Numbers Authority (IANA) to manage Internet domain names, addresses and protocol. A domain name has been compared to a street address, because it serves as a translation vehicle for Internet users to look up an Internet address allocated to a site by an Internal Service provider (e.g.,, AOL, Edgenet, etc.) (Thompson, 1998). The domain name consists of: 1) a generic top-level domain name e.g., mil. for military, gov. for government, com. for commercial entities and even country codes such as fr. to designate France. 2) subsequent level identifiers that exist underneath each of the top level-domains (Progroff and Cristal, 1997.) In 1993 IANA, which is based at the University of Southern California and managed by the National Sciences Foundation, awarded the exclusive rights to manage the system of domain name registration to Network Solutions Inc. (NSI.) (Deck, 1998). Initially web registration was a small business, with approximately 200 new sites a month. Recently NSI has reported that these registrations are exceeding 125,000 sites a month. NSI charges $100 per site and a $50 annual maintenance fee. Due to the proliferation of web site registrations, President Clinton ordered Congress to conduct hearings examining the system for domain name registration and specifically to consider the role of NSI as sole administrator of the system( Semilof and Rogers, 1998). The hearings resulted in the U.S’s formation of a non-profit organization, Internet Corporation for Assigned Names and Numbers (ICANN). Beginning in March, 1999, ICANN began to oversee all new registrations on the Internet and to implement an equitable plan for creating and distributing top-level domain names to various companies (Clausing, 1998). NSI will continue to register domain sites linked to .com, .org, .edu, .gov, .edu, and, .net (Essick, 1998.)
Additionally WIPO (World Intellectual Property Organization,) which issues recommended policies for the international protection of intellectual property rights, has created the Internet Domain Name Process. At the request of the U.S. Department of Commerce, WIPO will develop procedures for resolving Internet domain name disputes and for the protection of trademarks on the Internet. This will be done through the use of the Internet Domain Name Process.
In the case described earlier, defendant Salmon paid a $100 fee to register the names of 27 country music artists with NSI, thus acquiring the rights to their domain names on the Internet. When Internet users typed in the names of the artists, they were linked to several World Wide Web sites, including a site (www.whitehouse.com) featuring Hilary Rodham Clinton as a dominatrix tugging her husband’s leash. There were also photos of nude models described as “Interns of the Month” (Anonymous, 1998).
In this case, Salmon linked the plaintiffs’ domain names to several sites, known as “parasites.” He alleged that the links were an attempt to create public outrage and awareness of the porn site, not to embarrass the artists. Para-sites are Internet sites designed to confuse the consumer into believing that they are linking to a site with a similar name. Examples of several parasites that link consumers to pornographic sites include whitehouse.com (the official Whitehouse site is white-house.org), and latime.com (the official site of the Los Angeles Times is latimes.com. (Flippo, 1998). In April, 1998, the artists, including Tim McGraw, Trish Yearwood, Vince Gill, Faith Hill, Alan Jackson and Reba McEntire, filed a lawsuit against the defendant, alleging that the registration of their names as Internet domain names constituted a violation of their rights of publicity, trademark infringement, and unfair competition. This lawsuit is considered the first Internet litigation case involving so-called “cybersquatting,” or the use of celebrities’ names without prior authorization, as domain names on the Internet (Flippo, 1998.) Publicity rights, trademarks and unfair competition are intellectual property rights affected by the use of cybersquatting. The right of publicity gives a person control over commercial use of his or her identity, and is governed by state law. Trademarks permit consumers to identify the goods or services of one from the goods or services of another, and are protected by both state and federal law. Unfair competition is governed by state law and addresses several important issues, most notably improper behavior that injures the business reputation and goodwill of another (Barrett, 1997). Infringement or violation of these property rights may have serious economic impact on artists whose reputations are considered valuable intangible assets.
The right of publicity grants to an individual exclusive control over commercial use of his or her identity, including names, roles, and voice or style. It developed as a state law doctrine, and as a branch of the tort invasion of privacy, or the appropriation of one’s name and likeness for commercial benefit (Barrett, 1997). Infringement of this right consists of the commercial use of some element of a person’s identity without authorization. The remedy for this infringement is the granting of an injunction prohibiting the unauthorized use of one’s name or likeness (Chisum and Jacobs, 1992). Some of the questions considered by courts in determining infringement of this right, are 1) could the use of the person’s identity be construed as an endorsement or sponsorship of a product or service and 2) could the unauthorized use of the information be offensive to the person (Chisum and Jacobs, 1998). In the present case, both questions are answered in the affirmative. By linking the artists’ names to the white-house.com site, their fans could construe the link as the artists’ endorsement of the website. Additionally, because the linked site contained pornographic images of Bill and Hilary Clinton, and becausethe country artists upheld and promoted a wholesome image, the site was offensive to both the artists and their fans.
If the use of an artist’s name confuses consumers as to the endorsement opf goods or services, there may also be a claim of unfair competition (Chisum and Jacobs, 1992). The oldest theory of unfair competition is “passing off.” Passing off occurs when one makes some form of false representation about products or services, thereby confusing consumers as to their origin. The artists in this lawsuit argued that the use of their names constituted “passing off,” and that Salmon intended to confuse their fans into believing they endorsed, or had a connection with, his other web sitee (Barrett, 1997). A more recent basis for unfair competition is known as “dilution,” which has close ties to trademark infringement. Dilution provides redress in situations not covered by the passing off doctrine (Barrett, 1991). There are three grounds that form the basis of recovery for dilution. They are: 1) diminution in uniqueness of the mark or trade name, 2) tarnishment, and 3) devaluation of the mark through confusion (Chisum and Jacobs, 1992). The most applicable of the three is tarnishment, defined as the use of one’s name in a bad light and causing a likelihood of injury to the person’s business reputation. Tranishment has been found to occur when a name is used in a context that is unwholesome or out of keeping with one’s high-quality image (Barrett, 1991). The facts support a finding of “tarnishment,” because of the direct linkage of the artists’ names to the para-site. The artists were concerned about their names being associated with the site, as well as the potential injury to their professional reputations.
Domain names were intended to offer a user-friendly means to identify and locate particular Internet sites (Oram, 1997). There has been continued debate as to whether domain names serve the trademark function of identifying the source of particular products or services. A trademark is a word, name, symbol or device or any combination thereof, which is used to identify and distinguish the goods or services of one peson from the goods or services of another, and to indicate the source of the goods or services (Barrett, 1997). Trademark law is applicable in situations where a registered trademark is appropriated, on the Internet, without the owner’s permission. This case, however, involved the appropriation of artists’ names as Internet domain names. This situation is not covered under prior trademark law. Artists’ names have traditionally have not been afforded trademark protection because they were treated as “surnames.” Surnames were not eligible for federal trademark protection or state common law protection unless the artist could demonstate that his or her name had acquired a “secondary, meaning,” (Barrett, 1991). Without the establishment of a secondary meaning, the only redress for infringement of an artist’s name was “passing off,” based on the theory of unfair competition. In 1996 Congress passed the Trademark Dilution Act, in part due to the difficulties in applying traditional trademark infringement law to Internet domain disputes (Oram, 1997). Specifically, the Trademark Dilution Act was enacted to help stem the use of deceptive Internet addreesses that associated these addresses with the products and reputation of others. Because of the popularity of the Internet, and the increasing competititon between trademark owners and domain name registrants, it has been suggested that a new federal cause of action should be created to specifically address domain name disputes (Posch, 1998). Tradmark law and dilution law fail to adequately resolve domain name controversies because these laws were enacted before the widespread accceptance and use of the Internet. Clearly, in this instance an argument could be made that trademark dilution occurred because Salmon’s unauthorized use of the artists’ names as Internet domain names was a deceptive method that associated his para-site with the wholesome reputation of the artists’ names (Oram, 1997).
The protection of intellectual property rights on the Internet is a challenging proposition for artists, trademark owners and others whose rights are routinely infringed by para-sites or cybersquatters. The three ways to challenge the unauthorized use of one’s name or trademark are suits based on the right of publicity, unfair competition and trademark infringement. In the case of cybersquatting, the Salmon case set a precedent for the recognition of the right of publicity and trademark dilution where one’s professional name is used without authorization as the basis for an Internet domain name. Because the trademark and dilution laws do not specifially address the resolution of Internet domain name conflicts, new laws are needed to resolve these issues.
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Pam G. Browne is a graduate of Syracuse University and Vanderbilt University School of Law (JD). After law school, she began her legal career with First American Corporation (recently acquired by AmSouth Bank) in its Management Training Program, and held various positions, including Assistant Vice President and Associate Legal Counsel. Browne later opened her own law firm where she represented well known R&B and pop artists, songwriters and producers. She also practices sports law and is an agent with the NFL. Prior to joining the music business faculty at Belmont University, Browne managed and guided the career of multi-platinum selling artist Tag Team, whose single, “Whoomp, There It Is!” sold over six million units, was one of the best selling records of all time and was included in Billboard Magazine’s Top 50 songs of the ‘90s.
During her association with Tag Team, Ms. Browne worked with major studios to include Tag Team songs on five movie soundtracks, negotiated a deal with the Walt Disney Company that included a parody of “Whoomp” on the Disney LP, “Mickey Unwrapped” (that also featured Whoopi Goldberg). Browne joined the faculty of the Mike Curb Music Business Program in 1994 as Assistant Professor of Copyright Law and was promoted to Associate Professor in 1999. In addition to her duties as Associate Dean, she continues to teach Intellectual Property Law, Artist Management, Legal Issues of the Music Industry, and Business Law.