Subject: [NEXTEL-1] NextelSuck.org

From: [email-masked]
Date: Tue, 02 Sep 2003 02:40:38 -0400

Dear Mr. Hiither,

Your problem has been forwarded to me from the Electronic Frontier Foundation.  We
are an Intellectual Property clinic at the University of San Francisco School of
Law.  Because the clinic is made up of students, we are unable to give you legal
advice, however, we are able to provide you with the law in the appropriate areas.

In the instance of your "nextelsucks.org" web site, Nextel is claiming, among
other things, trademark infringement.  First and
foremost, the Lanham Act (the grouping of laws pertaining to trademarks) requires
a use in commerce.  Therefore, if your site is a legitimate protest site, without
anything for sale on it, links to any sites that sell anything,  or any
compensated advertising (such as a "powered by ___" notice that you receive any
compensation whatsoever for) you would not likely be found to be using Nextel's
mark in commerce. This is generally considered a "fair use" of a trademark.  The
anti-dilution laws, as well as the unfair competition laws similarly require a use
in commerce, as they are all part of the same group of laws.  While the
Anti-cybersquatting provisions are also part of the Lanham Act, they do not appear
to have any "use in commerce" requirements.  However, they do require that, in
order to be liable for cybersquatting, a person has a bad faith intent to profit
from the mark AND registers, or uses a domain name that is identical or
confusingly similar to the mark.   Arguably, "Nextel Sucks" is not confusingly
similar to "Nextel."  Consumers wouldn't expect content on a "Nextel Sucks" page
to originate from Nextel itself.  Additionally, you need to call a product or
service what it is ("nominative fair use") and therefore, if there is no
commercial use of the marks, and no profit is derived in any way from your web
site, it seems likely that a fair use is being made of the Nextel mark.

Furthermore, the cease and desist letter you received from Nextel's counsel
appears to be a generic letter that they send to everyone.  This is because they
included the language about Nextel Authorized Representatives.
We would recommend responding to Nextel's counsel by pointing out, in a fair,
friendly, and reasonable tone, that you are making a fair use of Nextel's
trademark, and using that as a means of opening a dialogue in order to resolve the
situation without resort to litigation.

For your reference, I have pasted the cited code sections (15 U.S.C. 1125) below.
I will look at your site further, but in the meantime, please do not hesitate to
contact me directly if you have any questions or concerns.  Please let us know
what Nextel's response is, and if you would like any assistance in drafting
correspondence to them, again, we would be happy to assist with that as well.

Sincerely,
Jennifer R. Dupre

Sec. 1125. - False designations of origin, false descriptions, and dilution
forbidden

(a) Civil action

(1)

Any person who, on or in connection with any goods or services, or any container
for goods, uses in commerce any word, term,
name, symbol, or device, or any combination thereof, or any false designation of
origin, false or misleading description of fact, or
false or misleading representation of fact, which -

(A)

is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another
person, or

(B)

in commercial advertising or promotion, misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or
another person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she is or
is likely to be damaged by such act.

(2)

As used in this subsection, the term ''any person'' includes any State,
instrumentality of a State or employee of a State or
instrumentality of a State acting in his or her official capacity. Any State, and
any such instrumentality, officer, or employee, shall be
subject to the provisions of this chapter in the same manner and to the same
extent as any nongovernmental entity.

(3)

In a civil action for trade dress infringement under this chapter for trade dress
not registered on the principal register, the person who
asserts trade dress protection has the burden of proving that the matter sought to
be protected is not functional.

(b) Importation

Any goods marked or labeled in contravention of the provisions of this section
shall not be imported into the United States or admitted to entry at any
customhouse of the United States. The owner, importer, or consignee of goods
refused entry at any customhouse under this section may have any recourse by
protest or appeal that is given under the customs revenue laws or may have the
remedy given by this chapter in cases involving goods refused entry or seized.

(c) Remedies for dilution of famous marks

(1)

The owner of a famous mark shall be entitled, subject to the principles of equity
and upon such terms as the court deems
reasonable, to an injunction against another person's commercial use in commerce
of a mark or trade name, if such use begins after
the mark has become famous and causes dilution of the distinctive quality of the
mark, and to obtain such other relief as is provided
in this subsection. In determining whether a mark is distinctive and famous, a
court may consider factors such as, but not limited to
-

(A)

the degree of inherent or acquired distinctiveness of the mark;

(B)

the duration and extent of use of the mark in connection with the goods or
services with which the mark is used;

(C)

the duration and extent of advertising and publicity of the mark;

(D)

the geographical extent of the trading area in which the mark is used;

(E)

the channels of trade for the goods or services with which the mark is used;

(F)

the degree of recognition of the mark in the trading areas and channels of trade
used by the marks' owner and the person against whom the injunction is sought;

(G)

the nature and extent of use of the same or similar marks by third parties; and

(H)

whether the mark was registered under the Act of March 3, 1881, or the Act of
February 20, 1905, or on the principal register.

(2)

In an action brought under this subsection, the owner of the famous mark shall be
entitled only to injunctive relief as set forth in
section 1116 of this title unless the person against whom the injunction is sought
willfully intended to trade on the owner's reputation
or to cause dilution of the famous mark. If such willful intent is proven, the
owner of the famous mark shall also be entitled to the
remedies set forth in sections 1117(a) and 1118 of this title, subject to the
discretion of the court and the principles of equity.

(3)

The ownership by a person of a valid registration under the Act of March 3, 1881,
or the Act of February 20, 1905, or on the principal
register shall be a complete bar to an action against that person, with respect to
that mark, that is brought by another person under
the common law or a statute of a State and that seeks to prevent dilution of the
distinctiveness of a mark, label, or form of advertisement.

(4)

The following shall not be actionable under this section:

(A)

Fair use of a famous mark by another person in comparative commercial advertising
or promotion to identify the competing goods or
services of the owner of the famous mark.

(B)

Noncommercial use of a mark.

(C)

All forms of news reporting and news commentary.

(d) Cyberpiracy prevention

(1)

(A)

A person shall be liable in a civil action by the owner of a mark, including a
personal name which is protected as a mark under this
section, if, without regard to the goods or services of the parties, that person -

(i)

has a bad faith intent to profit from that mark, including a personal name which
is protected as a mark under this section; and

(ii)

registers, traffics in, or uses a domain name that -

(I)

in the case of a mark that is distinctive at the time of registration of the
domain name, is identical or confusingly similar to that mark;

(II)

in the case of a famous mark that is famous at the time of registration of the
domain name, is identical or confusingly similar to or
dilutive of that mark; or

(III)

is a trademark, word, or name protected by reason of section 706 of title 18 or
section 220506 of title 36.

(B)

(i)

In determining whether a person has a bad faith intent described under
subparagraph (A), a court may consider factors such as, but
not limited to -

(I)

the trademark or other intellectual property rights of the person, if any, in the
domain name;

(II)

the extent to which the domain name consists of the legal name of the person or a
name that is otherwise commonly used to identify that person;

(III)

the person's prior use, if any, of the domain name in connection with the bona
fide offering of any goods or services;

(IV)

the person's bona fide noncommercial or fair use of the mark in a site accessible
under the domain name;

(V)

the person's intent to divert consumers from the mark owner's online location to a
site accessible under the domain name that could
harm the goodwill represented by the mark, either for commercial gain or with the
intent to tarnish or disparage the mark, by creating
a likelihood of confusion as to the source, sponsorship, affiliation, or
endorsement of the site;

(VI)

the person's offer to transfer, sell, or otherwise assign the domain name to the
mark owner or any third party for financial gain without
having used, or having an intent to use, the domain name in the bona fide offering
of any goods or services, or the person's prior conduct indicating a pattern of
such conduct;

(VII)

the person's provision of material and misleading false contact information when
applying for the registration of the domain name, the
person's intentional failure to maintain accurate contact information, or the
person's prior conduct indicating a pattern of such conduct;

(VIII)

the person's registration or acquisition of multiple domain names which the person
knows are identical or confusingly similar to
marks of others that are distinctive at the time of registration of such domain
names, or dilutive of famous marks of others that are
famous at the time of registration of such domain names, without regard to the
goods or services of the parties; and

(IX)

the extent to which the mark incorporated in the person's domain name registration
is or is not distinctive and famous within the meaning of subsection (c)(1) of
this section.

(ii)

Bad faith intent described under subparagraph (A) shall not be found in any case
in which the court determines that the person believed and had reasonable grounds
to believe that the use of the domain name was a fair use or otherwise lawful.

(C)

In any civil action involving the registration, trafficking, or use of a domain
name under this paragraph, a court may order the forfeiture
or cancellation of the domain name or the transfer of the domain name to the owner
of the mark.

(D)

A person shall be liable for using a domain name under subparagraph (A) only if
that person is the domain name registrant or that
registrant's authorized licensee.

(E)

As used in this paragraph, the term ''traffics in'' refers to transactions that
include, but are not limited to, sales, purchases, loans, pledges, licenses,
exchanges of currency, and any other transfer for consideration or receipt in
exchange for consideration.

(2)

(A)

The owner of a mark may file an in rem civil action against a domain name in the
judicial district in which the domain name registrar,
domain name registry, or other domain name authority that registered or assigned
the domain name is located if -

(i)

the domain name violates any right of the owner of a mark registered in the Patent
and Trademark Office, or protected under
subsection (a) or (c) of this section; and

(ii)

the court finds that the owner -

(I)

is not able to obtain in personam jurisdiction over a person who would have been a
defendant in a civil action under paragraph (1); or

(II)

through due diligence was not able to find a person who would have been a
defendant in a civil action under paragraph (1) by -

(aa)

sending a notice of the alleged violation and intent to proceed under this
paragraph to the registrant of the domain name at the postal
and e-mail address provided by the registrant to the registrar; and

(bb)

publishing notice of the action as the court may direct promptly after filing the
action.

(B)

The actions under subparagraph (A)(ii) shall constitute service of process.

(C)

In an in rem action under this paragraph, a domain name shall be deemed to have
its situs in the judicial district in which -

(i)

the domain name registrar, registry, or other domain name authority that
registered or assigned the domain name is located; or

(ii)

documents sufficient to establish control and authority regarding the disposition
of the registration and use of the domain name are
deposited with the court.

(D)

(i)

The remedies in an in rem action under this paragraph shall be limited to a court
order for the forfeiture or cancellation of the domain
name or the transfer of the domain name to the owner of the mark. Upon receipt of
written notification of a filed, stamped copy of a
complaint filed by the owner of a mark in a United States district court under
this paragraph, the domain name registrar, domain
name registry, or other domain name authority shall -

(I)

expeditiously deposit with the court documents sufficient to establish the court's
control and authority regarding the disposition of
the registration and use of the domain name to the court; and

(II)

not transfer, suspend, or otherwise modify the domain name during the pendency of
the action, except upon order of the court.

(ii)

The domain name registrar or registry or other domain name authority shall not be
liable for injunctive or monetary relief under this
paragraph except in the case of bad faith or reckless disregard, which includes a
willful failure to comply with any such court order.

(3)

The civil action established under paragraph (1) and the in rem action established
under paragraph (2), and any remedy available under either such action, shall be
in addition to any other civil action or remedy otherwise applicable.

(4)

The in rem jurisdiction established under paragraph (2) shall be in addition to
any other jurisdiction that otherwise exists, whether in
rem or in personam

http://www.nextelsucks.org/uofsanfranlawclinic.htm

------------------------ Yahoo! Groups Sponsor ---------------------~-->
Buy Ink Cartridges or Refill Kits for Your HP, Epson, Canon or Lexmark
Printer at Myinks.com. Free s/h on orders $50 or more to the US & Canada. http://www.c1tracking.com/l.asp?cid=5511
http://us.click.yahoo.com/l.m7sD/LIdGAA/qnsNAA/61FxlB/TM
---------------------------------------------------------------------~->

Your use of Yahoo! Groups is subject to http://docs.yahoo.com/info/terms/ 

From
[email-masked] Tue Jul 15 16:55:15 2003

Dear Mr.
Hiither,

Your problem has been forwarded to me from the Electronic Frontier
Foundation.  We are an Intellectual Property clinic at the University of
San Francisco School of Law.  Because the clinic is made up of students,
we are unable to give you legal advice, however, we are able to provide you
with the law in the appropriate areas.

In the instance of your "nextelsucks.org" web site, Nextel is
claiming, among other things, trademark infringement.  First and
foremost, the Lanham Act (the grouping of laws pertaining to trademarks)
requires a use in commerce.  Therefore, if your site is a legitimate
protest site, without anything for sale on it, links to any sites that sell
anything,  or any compensated advertising (such as a "powered by
___" notice that you receive any compensation whatsoever for) you would
not likely be found to be using Nextel's mark in commerce. This is generally
considered a "fair use" of a trademark.  The anti-dilution
laws, as well as the unfair competition laws similarly require a use in
commerce, as they are all part of the same group of laws.  While the
Anti-cybersquatting provisions are also part of the Lanham Act, they do not
appear to have any "use in commerce" requirements.  However,
they do require that, in order to be liable for cybersquatting, a person has
a bad faith intent to profit from the mark AND registers, or uses a domain
name that is identical or confusingly similar to the mark.
Arguably, "Nextel Sucks" is not confusingly similar to
"Nextel."  Consumers wouldn't expect content on a "Nextel
Sucks" page to originate from Nextel itself.  Additionally, you
need to call a product or service what it is ("nominative fair use")
and therefore, if there is no commercial use of the marks, and no profit is
derived in any way from your web site, it seems likely that a fair use is
being made of the Nextel mark.

Furthermore, the cease and desist letter you received from Nextel's counsel
appears to be a generic letter that they send to everyone.  This is
because they included the language about Nextel Authorized Representatives.

We would recommend responding to Nextel's counsel by pointing out, in a fair,
friendly, and reasonable tone, that you are making a fair use of Nextel's
trademark, and using that as a means of opening a dialogue in order to
resolve the situation without resort to litigation.

For your reference, I have pasted the cited code sections (15 U.S.C. 1125)
below.

I will look at your site further, but in the meantime, please do not hesitate
to contact me directly if you have any questions or concerns.  Please
let us know what Nextel's response is, and if you would like any assistance
in drafting correspondence to them, again, we would be happy to assist with that
as well.

Sincerely,

Jennifer R. Dupre

Sec. 1125. - False designations of origin, false descriptions, and dilution
forbidden

(a) Civil action

(1)

Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false designation of origin, false
or misleading description of fact, or false or misleading representation of
fact, which -

(A)

is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person,
or as to the origin, sponsorship, or approval of his or her goods, services,
or commercial activities by another person, or

(B)

in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities,

shall be liable in a civil action by any person who believes that he or she
is or is likely to be damaged by such act.

(2)

As used in this subsection, the term ''any person'' includes any State,
instrumentality of a State or employee of a State or instrumentality of a
State acting in his or her official capacity. Any State, and any such
instrumentality, officer, or employee, shall be subject to the provisions of
this chapter in the same manner and to the same extent as any nongovernmental
entity.

(3)

In a civil action for trade dress infringement under this chapter for trade
dress not registered on the principal register, the person who asserts trade
dress protection has the burden of proving that the matter sought to be
protected is not functional.

(b) Importation

Any goods marked or labeled in contravention of the provisions of this
section shall not be imported into the United States or admitted to entry at
any customhouse of the United States. The owner, importer, or consignee of
goods refused entry at any customhouse under this section may have any
recourse by protest or appeal that is given under the customs revenue laws or
may have the remedy given by this chapter in cases involving goods refused
entry or seized.

(c) Remedies for dilution of famous marks

(1)

The owner of a famous mark shall be entitled, subject to the principles of
equity and upon such terms as the court deems reasonable, to an injunction
against another person's commercial use in commerce of a mark or trade name,
if such use begins after the mark has become famous and causes dilution of
the distinctive quality of the mark, and to obtain such other relief as is
provided in this subsection. In determining whether a mark is distinctive and
famous, a court may consider factors such as, but not limited to -

(A)

the degree of inherent or acquired distinctiveness of the mark;

(B)

the duration and extent of use of the mark in connection with the goods or
services with which the mark is used;

(C)

the duration and extent of advertising and publicity of the mark;

(D)

the geographical extent of the trading area in which the mark is used;

(E)

the channels of trade for the goods or services with which the mark is used;

(F)

the degree of recognition of the mark in the trading areas and channels of
trade used by the marks' owner and the person against whom the injunction is
sought;

(G)

the nature and extent of use of the same or similar marks by third parties;
and

(H)

whether the mark was registered under the Act of March 3, 1881, or the Act of
February 20, 1905, or on the principal register.

(2)

In an action brought under this subsection, the owner of the famous mark
shall be entitled only to injunctive relief as set forth in section 1116
of this title unless the person against whom the injunction is sought
willfully intended to trade on the owner's reputation or to cause dilution of
the famous mark. If such willful intent is proven, the owner of the famous
mark shall also be entitled to the remedies set forth in sections 1117(a)
and 1118
of this title, subject to the discretion of the court and the principles of
equity.

(3)

The ownership by a person of a valid registration under the Act of March 3,
1881, or the Act of February 20, 1905, or on the principal register shall be
a complete bar to an action against that person, with respect to that mark,
that is brought by another person under the common law or a statute of a
State and that seeks to prevent dilution of the distinctiveness of a mark,
label, or form of advertisement.

(4)

The following shall not be actionable under this section:

(A)

Fair use of a famous mark by another person in comparative commercial
advertising or promotion to identify the competing goods or services of the
owner of the famous mark.

(B)

Noncommercial use of a mark.

(C)

All forms of news reporting and news commentary.

(d) Cyberpiracy prevention

(1)

(A)

A person shall be liable in a civil action by the owner of a mark, including
a personal name which is protected as a mark under this section, if, without
regard to the goods or services of the parties, that person -

(i)

has a bad faith intent to profit from that mark, including a personal name
which is protected as a mark under this section; and

(ii)

registers, traffics in, or uses a domain name that -

(I)

in the case of a mark that is distinctive at the time of registration of the
domain name, is identical or confusingly similar to that mark;

(II)

in the case of a famous mark that is famous at the time of registration of
the domain name, is identical or confusingly similar to or dilutive of that
mark; or

(III)

is a trademark, word, or name protected by reason of section 706
of title 18 or section 220506 of title 36.

(B)

(i)

In determining whether a person has a bad faith intent described under
subparagraph (A), a court may consider factors such as, but not limited to -

(I)

the trademark or other intellectual property rights of the person, if any, in
the domain name;

(II)

the extent to which the domain name consists of the legal name of the person
or a name that is otherwise commonly used to identify that person;

(III)

the person's prior use, if any, of the domain name in connection with the
bona fide offering of any goods or services;

(IV)

the person's bona fide noncommercial or fair use of the mark in a site
accessible under the domain name;

(V)

the person's intent to divert consumers from the mark owner's online location
to a site accessible under the domain name that could harm the goodwill
represented by the mark, either for commercial gain or with the intent to
tarnish or disparage the mark, by creating a likelihood of confusion as to
the source, sponsorship, affiliation, or endorsement of the site;

(VI)

the person's offer to transfer, sell, or otherwise assign the domain name to
the mark owner or any third party for financial gain without having used, or
having an intent to use, the domain name in the bona fide offering of any
goods or services, or the person's prior conduct indicating a pattern of such
conduct;

(VII)

the person's provision of material and misleading false contact information
when applying for the registration of the domain name, the person's
intentional failure to maintain accurate contact information, or the person's
prior conduct indicating a pattern of such conduct;

(VIII)

the person's registration or acquisition of multiple domain names which the
person knows are identical or confusingly similar to marks of others that are
distinctive at the time of registration of such domain names, or dilutive of
famous marks of others that are famous at the time of registration of such
domain names, without regard to the goods or services of the parties; and

(IX)

the extent to which the mark incorporated in the person's domain name
registration is or is not distinctive and famous within the meaning of
subsection (c)(1) of this section.

(ii)

Bad faith intent described under subparagraph (A) shall not be found in any
case in which the court determines that the person believed and had
reasonable grounds to believe that the use of the domain name was a fair use
or otherwise lawful.

(C)

In any civil action involving the registration, trafficking, or use of a
domain name under this paragraph, a court may order the forfeiture or
cancellation of the domain name or the transfer of the domain name to the
owner of the mark.

(D)

A person shall be liable for using a domain name under subparagraph (A) only
if that person is the domain name registrant or that registrant's authorized
licensee.

(E)

As used in this paragraph, the term ''traffics in'' refers to transactions
that include, but are not limited to, sales, purchases, loans, pledges,
licenses, exchanges of currency, and any other transfer for consideration or
receipt in exchange for consideration.

(2)

(A)

The owner of a mark may file an in rem civil action against a domain name in
the judicial district in which the domain name registrar, domain name
registry, or other domain name authority that registered or assigned the
domain name is located if -

(i)

the domain name violates any right of the owner of a mark registered in the
Patent and Trademark Office, or protected under subsection (a) or (c) of this
section; and

(ii)

the court finds that the owner -

(I)

is not able to obtain in personam jurisdiction over a person who would have
been a defendant in a civil action under paragraph (1); or

(II)

through due diligence was not able to find a person who would have been a
defendant in a civil action under paragraph (1) by -

(aa)

sending a notice of the alleged violation and intent to proceed under this
paragraph to the registrant of the domain name at the postal and e-mail
address provided by the registrant to the registrar; and

(bb)

publishing notice of the action as the court may direct promptly after filing
the action.

(B)

The actions under subparagraph (A)(ii) shall constitute service of process.

(C)

In an in rem action under this paragraph, a domain name shall be deemed to
have its situs in the judicial district in which -

(i)

the domain name registrar, registry, or other domain name authority that
registered or assigned the domain name is located; or

(ii)

documents sufficient to establish control and authority regarding the
disposition of the registration and use of the domain name are deposited with
the court.

(D)

(i)

The remedies in an in rem action under this paragraph shall be limited to a
court order for the forfeiture or cancellation of the domain name or the
transfer of the domain name to the owner of the mark. Upon receipt of written
notification of a filed, stamped copy of a complaint filed by the owner of a
mark in a United States district court under this paragraph, the domain name
registrar, domain name registry, or other domain name authority shall -

(I)

expeditiously deposit with the court documents sufficient to establish the
court's control and authority regarding the disposition of the registration
and use of the domain name to the court; and

(II)

not transfer, suspend, or otherwise modify the domain name during the
pendency of the action, except upon order of the court.

(ii)

The domain name registrar or registry or other domain name authority shall
not be liable for injunctive or monetary relief under this paragraph except
in the case of bad faith or reckless disregard, which includes a willful
failure to comply with any such court order.

(3)

The civil action established under paragraph (1) and the in rem action
established under paragraph (2), and any remedy available under either such
action, shall be in addition to any other civil action or remedy otherwise
applicable.

(4)

The in rem jurisdiction established under paragraph (2) shall be in addition
to any other jurisdiction that otherwise exists, whether in rem or in
personam