LloydLaw LLP

Myspace.co.uk appeal decision and domain names generally

The recent "myspace.co.uk" appeal decision highlights a number of the issues involved in both the trading of domain names in the Uk, and the process of dealing with who should own them.

By way of brief background, "myspace.co.uk" was originally registered by an English company, Total Web Solutions Limited ("Total"), back in August 1997. Myspace was founded in the United States in 2003 and launched in the UK in May 2006.

Myspace tried to buy the domain name in January 2006 but baulked at paying Total's asking prices which reportedly varied from USD 100,000 to USD 430,000. Myspace also wrote a "cease and desist" letter in May 2007, demanding, amongst other things, that the domain name be transferred to Myspace. Total stood their ground, and replied stating "we are still open to accepting the original agreed offer of £220,000 plus VAT".

Clearly, Myspace were not keen to do a deal and opted instead for the  standard Nominet Dispute Resolution Service in the UK hoping they could get the domain name transferred to them.

The adjudicator took the view that there had been some abuse of the domain name by Total who had changed its use by "parking" it on a Sedo site from 2005 at around the time News International acquired Myspace - and thus using it to generate income. On that basis, he decided the name should be transferred to Myspace Inc.

Total appealed. Appeals are very rare (apparently less than 0.1% of all decisions are appealed) but in this case it was worth it for Total, because the panel overturned the adjudicator's decision and allowed the appeal by giving the name back to Total and restoring the status quo.

It remains to be seen whether either of the parties will end up in court, but the signs are there. Total argued that there was a contractual dispute arising out the Myspace's approach to buy the domain (denied by Myspace incidentally), and Myspace appear to want to enforce their trade mark for "myspace" which they registed in the US in 2006. Neither of these matters can be dealt with by Nominet's Dispute Resolution Service and the Appeals panel concluded that the "just result is to leave it to the Complainant (Myspace) to litigate the issues if it so wishes".

So what issues did these decisions highlight?

1. Well, it reinforced the proposition that it isn't an abuse to ask for a "high price" for a domain name provided it isn't an abusive registration. Putting a value on that domain name, though, remains as difficult as ever.

2. There's also the issue that if you can't do a deal, you may well end up with nothing. Total may now own the "myspace.co.uk" domain, but if Myspace are not prepared to pay for it, it's unlikely to find any other willing purchasers.

3. Nominet's Appeal process, whilst rarely invoked, appears to work - up to a point. The panel were fairly straightforward in setting out what they could and couldn't do. The panel is not a court and they do not have the powers of a court.

4. "Parking" a domain name may not necessarily be "exploiting it". It all depends on the circumstances.

5. It confirms that the registration of domain names is still a first-come first served system and no registrant who innocently acquires a domain name should be liable if that domain name subsequently acquires value or notoriety through no fault of the original registrant, provided that he does nothing actively to exploit his position.

6. I assume that both parties incurred relatively substantial legal costs in taking this matter through the Nominet procedures and it reinforces the fact that there's no way either party, winner or loser, can recover any of those costs. They won't be as high as the costs of going to court, but they are not to be underestimated.

Links:

Adjudicator's Decision is available as a PDF here.

The Decision of the Appeal Panel is available here.

Note: An "abusive registration means a Domain Name which either:

was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's rights; OR

has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".

Louis Vuitton and the Danish Artist

Legal disputes are increasingly being fought online, and any brand owner seeking to enforce its rights will find both the issues and the correspondence firmly placed in the public domain. Not that this should be a major problem, of course, and I don't think it's a bad thing.  But clients and their lawyers should be in no doubt, that whatever they might say ("please do not post this letter on the internet/your blog etc"), anything they write will find their way online.

One recent example is luxury brand, Louis Vuitton's claim against the Danish artist Nadia Plesner. Ms Plesner designed a T-shirt and a poster featuring a Darfur victim holding a Vuitton handbag which she was selling as part of her Simple Living Campaign to raise funds for Darfur. According to LV, both the bag, and the design on the bag, resembled their own bandbags, and one of their idiosyncratic designs.

LV started by writing to Ms Plesner by email and "express mail", a letter which the artist has posted on her website.  In pre-internet days, you would only get to see these sorts of  letters when they were written to your own clients. Nowadays though, you get these classic cases of legal voyeurism as you find out what LV were saying before they got serious:

Although we applaud your efforts to raise awareness and funds to help Darfur, a most worthy cause, we cannot help noticing that the design of the Simply Living Products includes the reproduction of a bag infringing on Louis Vuitton' Intellectual Property Rights, in particular the Louis Vuitton Monogram Multiecolore Trademark to which it is confusingly similar. We are surprised of such a promotion of a counterfeit bag.

Except of course, it's not an actual bag. It's just a picture of one and according to Ms Plesner, it's different as she points out in her response, which she's also posted online. Not  that it had much effect on LV who were clearly not impressed and they have now issued proceedings against her.

Who knows who will win, and whether LV will be bothered that some supporters of Ms Plesner take a dim view of their actions? We will see. Having made the case so public though, Ms Plesner now has the help of a couple of Dutch lawyers and a Danish one although how they are all going to agree, is probably more of a challenge than fighting off Louis Vuitton's claim.

Professor Larry Lessig in London

I went along to see Larry Lessig give the SCL (Society for Computers and Law) Annual Lecture in London this week. I was wondering what to expect given his apparent change of direction away from pure intellectual property issues, to corruption, but he'd clearly considered his audience and there was probably more of the "old" Lessig than the new. 

I won't try to report the speech in any detail, but he made the point that we were sleepwalking (my word, not his) into a world where policy makers who fundamentally fail to understand how the internet works, could  bring it all to a grinding halt by using ill-considered legislation to bring an end to the so-called ills of the internet. It wasn't entirely clear what we were supposed to do about it ("Leadership"?) but I tend to take the view that Lessig excels at pulling these ideas together and it's not for him to tell his audience what they should be doing.

The full talk is available as a download here. Plus there's some more detailed comment on the SCL website.

Interesting to see Alex's comments over on Freeth Cartwright's blog, Impact, but I'm with Geeklawyer on this one. And I didn't really think the talk had anything to do with corruption.

NB Larry Lessig is clearly impressed (because he referenced a couple of times) by Professor Jonathan Zittrain's new book, The Future of the Internet and How to Stop It, which came out this week and would appear to be essential reading for those of us interested in the internet and its future.

Who Owns Outlook Contacts?

A recent High Court judgment on the ownership of an Outlook list of “Contacts” highlighted the critical question of who owns such a list when it has been created in a business. Is it the employer or the employee?

In PennWell Publishing v Ornstein [2007] EWHC 1570 Mr Justice Fenwick came down on the side of PennWell, the employer, regardless of the fact that the employee had incorporated his own “personal” contact information into the database as well as information he had brought with him at the time he started the job.

The judgment makes interesting reading for anyone who has been or may be involved in a situation where employees (often at a relatively senior level) leave a business to set up in direct competition. It is the sort of thing that happens all the time, whether or not the parties end up in court.

Anyone who has worked in any business will be familiar with employees either taking home or sending themselves contact lists, precedents, or presentations in digital form. It is now so easy to do, that employers find it very difficult to protect what they perceive to be “confidential” and proprietary information.

Essentially, this case was about employees leaving PennWell Publishing, the UK arm of a US business to business media publishing  group, to set up themselves up in competition. It involved an injunction which was initially granted on PennWell’s behalf, allegations of dishonesty and even court orders providing for forensic examination of a personal computer which belonged to Mr Junior Isles, who was one of the employees and a defendant in the case.

Mr Isles had taken a copy of his Outlook database with him, albeit in the form of an Excel spreadsheet just before he left PennWell’s employment on the basis that the information in his contacts database belonged to him. PennWell claimed amongst other things that the information in that contacts database actually belonged to them.

PennWell claimed they had an email policy which stated that “employees may only use the email system for business use”. Unfortunately, PennWell were unable to prove that Mr Isles was aware of the policy or that it had been incorporated into his contract of employment. Although they could show he had been sent an email about it, PennWell were unable to prove that the relevant “”Network Access Policy” and “E-mail Policy” had been attached to that email.

As the Judge said:

“In my judgment, had that email policy been effectively communicated to Mr Isles, it would have been clear to him that the email system provided to him was to be used only for business purposes and therefore, that in adding to or maintaining contact details on that system, he was doing so exclusively for the employer’s benefit and not his own.”

In the absence of the effective communication of that policy (and all employers need to take note of the importance of effective communication) the Judge felt that the status of such address lists was a “difficult issue”.

“On one view, these lists plainly consist of confidential information of the employer. They include details of the individuals with whom the employee is expected to and will have made contact during his employment for his employer's purposes. They are backed up, generally, on a system maintained or at least paid for by the employer.”

“On the other hand, in the new electronic age, electronic address books, whether on mobile telephones, communicators or e-mail systems, are inevitably used by individuals, whether employees or executives, for the convenient storage of those that they wish to contact. In the absence of a declared e-mail policy, it may well be that such employees will use such systems, including on mobile telephones provided for their use, for retaining the records of all sorts of contacts, from personal friends and family, through friendships that they have developed in work and journalistic contacts of the kind I have referred to above, through to the normal business contacts of their employer".

For all these preceived difficulties the Judge did not appear to find too hard to come down on the side of the employer in this case and concluded that the database “has at all material times been with PennWell since it was created in the Outlook system of PennWell and that Mr Isles is not entitled either to exclusive or shared use of it.”

Internet Regulation - A Debate

Tom Guarriello at the excellent TrueTalk blog points to a fascinating dialogue about internet regulation between Andrew Keen the author of The Cult of the Amateur:  How Today's Internet is Killing our Culture and Assaulting Our Economy and Kevin Kelly, a founder editor of Wired magazine headed: "Can We Save the Internet".

Andrew Keen's book, which was published this month (June 2007) and which I haven't read, appears to be an attack on the internet and the online world. According to his publisher's website:

Our most valued cultural institutions—our professional newspapers, magazines, music, and movies—are being overtaken by an avalanche of amateur, user-generated free content.

Our “cut-and-paste” online culture—in which intellectual property is freely swapped, downloaded, remashed, and aggregated—threatens over 200 years of copyright protection and intellectual property rights, robbing artists, authors, journalists, musicians, editors, and producers of the fruits of their creative labours. Further, advertising revenue is being siphoned off by free classified ads on sites like Craigslist; television networks are under attack from free user-generated programming on YouTube and the like; file-sharing and digital piracy have devastated the multibillion-dollar music business and threaten to undermine our movie industry.

Not surprisingly, therefore, Andrew Keen calls for new laws "to save the Internet".

So can the Internet be saved?

Yes, I think it can. But we need laws, a series of social contracts, to constructively regulate our behavior on the Internet.

Kevin Kelly takes a different view:

I am no anarchist. I think we need “some laws” as you put it. My problem with national laws for fixing Internet problems, at least in America in 2007, is that this is a very slow, overly broad hammer for problems that can be addressed faster and more effectively by rewriting, reinventing, and re-imagining the technological matrix that holds them. I think the laws that regulate our moral compass should be as few, concise, and minimal as possible. Like the Ten Commandments.

Lawrence Lessig Changes Focus

No one who has been involved in the legal issues surrounding intellectual property law over the last ten years could have failed to come across Lawrence Lessig. A US lawyer and academic, he has been at the forefront of thinking on intellectual property issues through his books and blog, and the Creative Commons campaign amongst other things.

Surprisingly, he's just announced on his blog that he's going to change direction and the focus of his attention will now move to what he calls "corruption in the political process". He's still going to act as the CEO of Creative Commons and head of the Stanford  Center for Internet and Society, but he describes the move, as a "decision to change channels".

This new set of issues is, in my view, critically important. Indeed, I'm convinced we will not solve the IP related issues until these "corruption" related issues are resolved. So I hope at least some of you will follow to this new set of questions. For I expect this forum will be central to working out just what I believe, just as it has in the past.

There's clearly elements of both the professional and personal in his typically open explanation, but it will be fascinating to watch where this new journey takes him.

Ryanair Domain Name Disputes

Michael Coulston has clearly been a thorn in the side of Ryanair for some time but although the airline was successful in its claim to recover the domain name ryanair.org.uk, it has failed in its bid to stop Mr Coulston, an aggrieved passenger, from using the domain name ryanaircampaign.com.

From a consumer's perspective, the WIPO decision opens the way to anyone with a grievance creating what has become known as a "- sucks" site (or a "bitch" site as The Register puts it)  and to be able to publicise its claims provided they are lawful. And its a warning for any business that falls out with a customer as to what might happen.

Legally, the two cases are interesting. By way of background, Michael Coulston once had a bad experience travelling with Ryanair when his luggage was lost and his holiday ruined. According to the decision of the independent expert in the Nominet Dispute Resolution process  Mr Coulston has since "devoted considerable time and energy to publicising what he preceives as deficiencies in the way in which Ryanair deals with problems and complaints by its customers."

Ryanair has used the name since 1985 and it is undoubtedly well known in the UK and Europe. The company actually owns several registered trade marks consisting of or containing the name Ryanair and it has registered various ryanair domain names, although not, it must be said, ryanair.org.uk.

That was registered by Mr Coulston in September 2003 and he used it to promote his "Ryanair Refund Campaign". Nominet, the domain name registrar for all UK domains, received a complaint from Ryanair in May 2006 and the matter was dealt with by Anna Carboni, one of Nominet's "independent experts". She found that the registration of the domain name was an "abusive registration" taking the view that Mr Coulston had registered the domain ryanair.org.uk "in manner which took unfair advantage of and was unfairly detrimental to Ryanair's rights" and ordered the domain name to be transferred back to Ryanair.

The decision appears to be fair one although I would question her assertion that "someone who types in the address ryanair.org.uk (into a search engine) is likely to expect to be taken to a website operated by Ryanair". I would be surprised if any major airline, or any commercial business operated using a .org domain name. 

Mr Coulston was not deterred by the Nominet decision and on 29 July 2006 he registered the domain ryanaircampaign.org. Ryanair then took its complain to WIPO (the World Intellectual Property Organisation) and its lawyers, Howrey LLP invoked the arbitration procedure claiming the name was either "confusingly similar" to Ryanair's trade marks or alternatively, that Mr Coulston's website did not amount to "fair and honest criticism" and that the domain name had been registed in bad faith.

Clearly the critical difference between the two adjudications was the use of the word "campaign" which David Bernstein, the Sole Adjudicator in the WIPO process, felt distinguished the domain name.

"If a domain name used for a criticism site combines the trade mark with appropriate other elements (as contrasted with a domain name that is indentical to the trademark) a legitimate interest may be found if the respondent (i.e. Mr Coulston) has used the domain name in ways designed to avoid deception and undue confusion. That is the case here".

Mr Bernstein took the view tha the domain name had not been registered in bad faith and Ryanair's complaint was denied. His decision, in full, can be found here.

Mr Coulston's campaign which is to be found at www.ryanaircampaign.org continues.

Google and YouTube - the legal issues

Obviously, there's been a huge amount of comment on the announcement that Google will be acquiring YouTube for something over $1.65 billion in stock. From the legal perspective, there are suggestions that Google will be acquiring huge potential liabilities given the amount of pirated content on YouTube.

I suspect that Google's lawyers will be all over these potential liabilities like a rash, and that if there are any liabilities, then Google has deep enough pockets both to litigate and settle any potential claims as quickly and effectively as possible.

If you want more detail on the potential risks that Google might be facing, there's been a fascinating debate over on the Washington Street Journal website this week between John Palfrey, a law professor at Harvard University and director of the Berkman Center for Internet & Society and Stan Liebowitz an economics professor at the University of Texas at Dallas and director of the Center for the Analysis of Property Rights and Innovation.

For what it's worth, I tend to agree with John Palfrey:

There is no doubt that Google will see lawsuits coming their way as a result of buying YouTube. And there's no doubt that some YouTube users will hear directly from the holders of copyrights. But I'm not too worried for Google's shareholders.

There more on the Info/Law blog and John Palfrey has more with plenty of links on his blog. It'll be interesting to see how this one plays out....

"English Law is Very Odd"

The quote comes from Professor Eric Barendt, Goodman Professor of Media Law at UCL talking about privacy laws in England - as compared to other jurisdictions.

Prurience or privilege:                 are politicians entitled to a private life? (MP3, 59 minutes, 23MB) is a interesting  discussion in the British Library Conference Centre with Mark Oaten MP for Winchester; Professor Eric Barendt, Goodman Professor of Media Law at UCL; Michael White, Assistant Editor of the Guardian; and Alastair Brett, Legal Manager of Times Newspapers. The event was chaired by David Sherborne, a barrister at 5 Raymond Buildings.

Incidentally, I have only just come across it and there's no precise indication either on the British Libary website, or in the podcast itself, when it was actually recorded. It's obviously the summer of 2006, but that's as close as I can get. A point worth bearing in mind, for anyone producing podcasts.

The New .Mobi Domains Go On Sale

The new .Mobi domains went on general sale this week (26 September to be precise) following a short sunshine period in which the owners of registered trademarks have been entitled to register their domains . The Register gives details of where you can go to buy the domain, and confirms that it will be used exclusively for use on mobile phones and mobile devices.

dotMobi Ltd, the Irish company appointed by ICANN to administer the newest top level domain, is supported by all the big names in the mobile industry, and its investors include:

Ericsson, Google, GSM Association, Hutchison, Microsoft, Nokia, Orascom Telecom, Samsung Electronics, Syniverse, T-Mobile, Telefónica Móviles, TIM and Vodafone.

There's loads of background information on the dotMobi website and the blog.

I am minded to agree with with Techcrunch UK that " It’s clear that the launch of dotMobi is creating a lot of buzz about using the Web on your mobile, which is a “good thing.”

How that will manifest itself in reality, is another thing entirely, but content providers and anyone with a trade mark, should seriously be thinking about whether they should add the domain to their brand portfolio.