Domain names at the intersection of free speech and trade-mark law on the Internet.

AuthorBurshtein, Sheldon
PositionForum: Democracy & the Internet

This article discusses the intersection of trade-mark law and the freedom of speech in the context of Internet domain names. A domain name is a more easily identifiable reference for a long numerical Internet Protocol address (which is used to identify a particular website). The relevance of a domain name in the context of free speech arises where someone chooses a domain name which comprises the trade-mark or trade name of another for a website which criticizes or otherwise comments on the owner of the trade-mark or trade name. The most frequently encountered examples of such activity are cybergriping, the identification of a website by the domain name of the type , and cybercriticizing, the identification of a website by the domain name , where, in each case, the website operator has no permission to use the trade-mark or trade name and criticizes the trade-mark or trade name owner. A more recent development is the use of such a domain name to identify a blog site. The issue is whether one can adopt such a domain name for a website that criticizes the owner of the trade-mark or trade name without violating rights in the trade-mark or trade name comprised within the domain name.

The article considers decisions of United States courts as well as those in Canada. The article also considers relevant decisions under the World Intellectual Property Organization's Uniform Dispute Resolution Policy (UDRP) and the approach likely to be adopted under the Canadian Internet Registration Authority's CIRA Dispute Resolution Policy (CDRP) for .ca domain names. (1)

  1. FREEDOM OF EXPRESSION

    The constitutions of both Canada and the United States expressly provide for the freedom of expression.

    (A) Canada

    The Canadian Charter of Rights and Freedoms provides that everyone has the "freedom of thought, belief, opinion and expression, including freedom of the press and other media of communication". (2) The Charter only applies to government action and does not apply to private litigation completely divorced from any connection with government. (3) Private litigants may only invoke the Charter to attack legislation on the basis that the legislation relied on is contrary to the freedom of expression. However, where legislation or the common law creates private commercial rights, these rights must be interpreted consistently with charter values, including the right of freedom of expression. (4)

    The Supreme Court of Canada has broadly interpreted the Charter's freedom of expression provisions. Freedom of expression protects any activity that conveys a meaning and includes the right to send and receive that information. (5) The provision extends protection to all types of content and to its many different forms of expression. (6) Commercial expression is protected and has substantial value and social importance. Freedom of expression protects the right to express dissatisfaction with commercial enterprises, including counter-advertising, provided the expression is not defamatory. Consumers may express frustration or disappointment with goods or services and may share their concerns with other consumers and try to warn them against the practices of a business. (7)

    However, the Charter recognizes that values conflict and that the government must place some limits on fundamental rights. (8) The extent to which commercial expression is protected depends on: (i) the purpose of the legislation restricting the expression and whether it is pressing and substantial; (ii) the extent to which it is rationally connected to achieving its objective; (iii) whether it minimally impairs commercial expression; and (iv) whether the deleterious effects of the restriction outweigh the benefits. (9) It is more difficult to justify infringing expression that is not related to the core values of the Charter right, including truth, participation in the political process and individual self-fulfillment. (10)

    In the context of trade-mark issues, the Trade-marks Act (11) and the common law tort of passing off should not be interpreted so as to violate an individual's right to freedom of expression. (12) Passing off is based on a misrepresentation by a person resulting in damage to another person who has goodwill or reputation symbolized by a trade-mark or trade name. However, the Charter does not confer the rights to use private property in the service of freedom of expression. (13) For example, expression in the form of a political spoof or parody is not a defence to an action for depreciation of the value of goodwill in a registered trade-mark. (14)

    (B) United States

    In the United States, freedom of speech is guaranteed by the First Amendment to the Constitution and is extended to both individuals and other entities such as corporations. (15) The First Amendment supersedes all federal and state laws and is binding on the courts. (16) Protection is extended to all forms of speech including ideas, expressive conduct, artistic speech, and commercial speech. (17) Commercial speech, however, does not receive the same level of protection. (18) Not surprisingly, there are a significant number of decisions in the United States relating to the relationship between the unauthorized use of trade-marks and the freedom of speech.

    Any factual, philosophical, political, ideological or other criticism of a business' practice is constitutionally protected, provided some factual basis underlies the criticism. (19) However, a person has no First Amendment right to make a misleading use of a trade-mark of another person to criticize the latter. (20) While, in trade-mark infringement claims, courts attempt to balance the competing values of freedom of speech and preventing consumer confusion, the First Amendment protects speech critical of a business or its practices from tarnishment claims which arise under dilution law. (21) Dilution is the tarnishing or blurring of a trade-mark through a use which does not necessarily confuse the public as to source. Therefore, classifying speech as commercial or non-commercial may be crucial in a trade-mark claim since non-commercial speech and mixed commercial/non-commercial speech are expressly exempted from liability for dilution. (22) The mere fact that there is a commercial aspect to expression does not mean that the expression is commercial speech. (23) However, there is no broad protection for advertising which links a product to a current public debate. (24)

    Political speech may be protected under the First Amendment. If no likelihood of confusion results, even a prominent appropriation of a trade-mark does not result in trade-mark liability. (25) However, if the use of a trade-mark of another gives rise to a substantial likelihood of confusion, trade-mark infringement liability attaches regardless of the political context. (26)

    Parody implicates free speech interests. (27) A parody must convey two simultaneous and contradictory messages, that it is the original but that, at the same time, it is not the original and is instead a parody. (28) To the extent that it does only the former but not the latter, it is not only a poor parody but is also vulnerable under trade-mark law since the user will be confused. (29) Therefore, the courts tend to insist on a strict application of the likelihood of confusion requirement in trade-mark disputes involving parodies. If a person's parody reference to the trade-marks of another creates no more than a moderate likelihood of confusion, trade-mark liability may be avoided. (30) However, where a parody of a trade-mark is so similar to the original mark that consumers may easily be confused because they cannot tell it is a parody, liability is found. (31) A parody that is merely a pretext for commercial exploitation of another's trade-mark is not protected. (32) Similarly, if the use of another person's trade-mark is irrelevant to the point of the parody, and the parody could have been made just as effectively without using the mark, the parody is not protected. (33)

  2. CYBERGRIPING

    Cybergriping is the act of registering and using a domain name in the form of or for a website that criticizes the owner of the trade-mark or name or its goods, services or business. While the right to fairly criticize a trade-mark owner is entrenched, an issue arises regarding the right of the registrant to do so by attracting attention to its website by using a domain name which includes the trade-mark or trade name of the owner without permission. There has not yet been any Canadian decision on cybergriping, but there have been a number of United States decisions.

    (A) United States Decisions

    In the United States, cybergriping may be free speech protected by the First Amendment. Cybergriping has been held not to incur liability for a trade-mark cause of action provided that the activity is not commercial. (34) For example, an action about a forum for complaints against a business which used a particular trade-mark at a website with the domain name was dismissed because there was no likelihood of confusion, and there was no dilution because the registrant's activity was not commercial. The court said that the word "sucks" has entered the vernacular as a word loaded with criticism. (35) If the activity is commercial, a court then assesses whether there is likely to be confusion as to the source of the site. (36) In another decision, the use of for a website offering pornographic services was not restrained, because the court said that a domain name comprising the word "sucks" together with a trade-mark neither attempts to confuse the consumer nor dilute the trade-mark. (37) The domain name was held not confusingly similar to the trade-mark because confusion was said to be inconceivable. (38)

    However, not every "-sucks" domain name is protected. (39) Some decisions adopt the view that a "-sucks" domain name is not necessarily privileged as free speech, holding that the use of another person's trade-mark in...

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