Makes you wonder why they call it “intellectual” property – the trouble with D-oh!-main names on the Internet

by Jason SalasTuesday, September 11, 2001

this, the Age of Information, nothing is sacred, and despite the best-attempts of government, trademarks and copyrights still aren't safe...ask me...I know


I'll freely admit...Kevin Mittnick I'm not, and I will go on record as saying I am NOT MafiaBoy. That much I know is true. And yet in my own little insignificant way, I too was once regarded as being guilty of cybercrime. Yes, yes, I know...these days no one pays for anything, and it would be a gross exaggeration of the truth if I said that every single application installed on either here on my workstation in my office or at home is completely and legitimately paid for and registered, so sue me. My point is that if you want to...you'd best get in line.

In 1999, I was investigated for alleged “cybersquatting”, which is the coin termed for illegal use of a domain name that is the implied and/or inherent intellectual property of an existing entity. The general theory is that individuals not associated with an organization should not have the ability to use or obtain ownership in any form of established trademarks, whether their legal owners choose to use them, or not. Any violation of this is an unethical intrusion on an organization's intellectual property and ergo against the law.

However, a major clothing corporation wanted my ass bad a couple years back for something quite trivial, and comical when I think about it now. One of the major manufacturers of clothing who I had idolized in my formative years as a volleyball player was now looking to take me to court over infringement of their copyrighted namesake. Well, I guess if you're gonna get sued, it might as well be by friends, right? My friends and I had formed a volleyball club while attending Simon Sanchez H.S., dubbing ourselves "Sideout". We did this not to rip-off the multimillion dollar clothing and apparel company formed by the legendary volleyball player Sinjin Smith, and most definitely NOT after the lame-ass 80's movie of the same name with C. Thomas Howell and Courtney Thorne-Smith...more a tribute to the volleyball term referring to the regaining of possession.

How fitting that would turn out to be.


A simple project
At any rate, we had formed this club and for at least five years had been entering local tournaments and playing under that moniker, and innocently so. No one complained...yet. So, when I decided to make a career out of this Internet thing, I legitimately and legally paid for and gained ownership of the domain name "SIDEOUT.ORG". At that point in time the Internet's history (circa 1998), you would still have to prove existence as a non-profit organization at the time of registration with the InterNIC to get a .ORG domain name...whereas now any schmo with a credit card can get practically anything...with any classification. As a logical progression, I set up and managed the domain's Web presence - www.sideout.org, with my friends, for a self-gratifying waste of Webspace.... used to plan my high school class' reunion plans, pix of chicks, shareware, coding examples, useless jokes, you know the deal.

Six months after registering the domain name, I was called at work by an attorney representing Sideout Sport, to find out who I was and why I was using the trademark "Sideout" (Sideout Sport being a registered sports clothing company, already owning the domain name SIDEOUT.COM). I mentioned my intent and that we did not have any connections to the established company, and that I had already included a legal statement in an include throughout the site claiming that the content in the site did not intend to harm or intrude Sideout Sport in any capacity. I made sure the attorney understood that I was no threat nor did I intend to become a threat to Sideout Sport. Nonetheless, Sideout wanted its name back...which was funny...considering in the light of domain name ownership...they never had it to begin with.

I proceeded to have a chat with the legal counsel representing Sideout Sport (a trendy LA attorney...a nice guy, actually, if such thing as nice LA lawyer can in fact, exist), who informed me that while he was acting as the harbinger of bad news, he admittedly wasn't too familiar with online law and only had a couple of rough examples from which to draw. I immediately donned my consultant cap and informed him that the reality of the entire situation was that if Sideout Sport was really concerned about the use of their trademark, they should have bought the rights to the domain name SIDEOUT.ORG (and further, SIDEOUT.NET) initially, to avoid such an issue. I coulda/shoulda/woulda have been a real jerk about it and demanded $15,000 for it, eh? I likely would have been able to get away with it, too. Nevertheless, I just put on my Good Samaritan pin and turned it over without a squabble. I had a stable job and decent pay...no need to get involved a sticky legal mess. I still continue to use the company's products (I'm wearing a Sideout Sport shirt right now...really!).

However, it was not even two weeks after my own escapade that the domain name DRUGS.COM was sold by 21-year-old Web Dev Eric MacIver for $823,456 to the co-founder of LinkExchange (which has since become Microsoft’s bCentral). Completely legit...and legal. Argh.


A growing legal concern
As the power of the Internet has now become a critical means to compete, understanding its implications on business and rights and privileges associated with it are key. Then, after more laws are implemented extending copyright protection, a deeper sense of security can be felt. When President Clinton signed the Digital Millenium Copryright Act in 1998, my main interest was the Act's impact on me as an ISP (where I worked at the time). The Act basically stated that I could not be held responsible should a user of mine be found as the originator of illegal content, as I was merely a conduit for the information, and not necessarily an endorser of it. It would be unconscionable, both in terms of cost and system performance, if I was to implement mechanisms that would scan through each packet and bit passing through my network.

Companies have secured protection by buying up in bulk all of the relevant domain names and variations of them, to ensure their complete ownership and control of their namesake. Amazon.com bought over 88 variations of the name AMAZON.COM at its onset, spending in excess of $6,000 on preserving their namesake online from cybersquatters. The Committee to Elect George W. Bush bought several domain names, such as BUSHBLOWS.COM, BUSHSUCKS.COM, BUSHSUX.COM and BUSHBITES.COM, in addition to their formal domain name, to rule out any slanderous attacks by would-be naysayers.
 

And the ball just keeps on rolling...
Another form of intellectual property clause, contributory infringement, exists to check if an errant party in question (such as an organization owning a Web site hyperlinking to an infringing site) actually had pre-existing knowledge about an infringement prior to linking, and whether it deliberately did so while knowing it was in the wrong. This was brought to light (pun intended) by the Church of Scientology in 1999, after becoming involved in a landmark judgment that ruled that any Web document being associated to another document which infringes on copyright violations by means of hyperlinks is also guilty of infringement by association. This marked the first time that hyperlinking had been ruled upon for its relationship with existing copyright violation legislation.

The Church has since been an active player in online copyright law, helping to author a number of new laws involving the Internet, as it has long been aggressive in arguing its case for the protection of its copyrighted materials and the distribution of them.

Dianetics, anyone?

Six months after registering the domain name, I was called at work by an attorney representing Sideout Sport, to find out who I was and why I was using the trademark "Sideout". Oops.
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