WASHINGTON — The House and Senate are both moving toward an agreement that would ensure that so-called cybersquatters could not commandeer their trademarked names for use as domain names on the Internet.
The “Trademark Cyberpiracy Act” makes it clear that legally protected trademarks in the real world are also legally protected in the digital world. The bill would protect, for instance, against an individual or company that is not associated with the Walt Disney Corp. from registering the name Disney.com.
Although the future for the legislation looks bright in both the House and the Senate, there is a controversy boiling over whether the bill should be extended to protect the names of famous people on the Internet. Musician Don Henley has gone so far as to hire Washington representation to lobby for legislation that would protect celebrity names on the Internet.
Margaret Cone, who is lobbying for Henley in Washington, is now accusing Disney of trying to block her effort. “I’m a little at a loss why Disney would not want to help talent,” Cone said, adding, “Disney is getting so much protection in this, I’m surprised it won’t work with us.”
But Disney’s Richard Bates pointed out the current bill deals with trademark issues only. The names of famous people, in most cases, are not trademarked and therefore are not at issue. “The Walt Disney Company cares about its trademarks. The cybersquatting bill deals with trademarks, period,” Bates said.
It is possible to trademark a name, and some celebrities have incurred the legal expenses to legally protect their names.
Not everybody agrees with the views of Boucher and Bates. “The courts have … extended trademark law to include famous names,” said Carol Van Cleef of the law firm Katten, Muchin & Zavis. “What we are asking is not a major leap. It’s not even a small jump.”
But Rep. Rick Boucher (D-Va.) said that the bill deals exclusively with trademark issues. Boucher is concerned that extending the legislation to cover the names of famous people could raise First Amendment issues. “My sense about famous names is that it is a more complex issue,” Boucher said.
For instance, he said, there is nothing that he could do to stop someone from registering a Web page called http://www.rickboucher.com. “I wouldn’t like it but there is not a thing I could do about it,” Boucher said. He added that there are remedies if the person who registers the page claims that it is Boucher’s official Web site. In that case, Boucher said he would file a complaint at the Federal Trade Commission based on misleading advertising.
The fact that just about anybody can register just about anybody’s name was proven this week by Gary Stiffelman, Los Angeles entertainment attorney at Ziffren, Brittenham, Branca & Fischer whose clients include Harrison Ford, Eddie Murphy and Tony Braxton. Stiffelman, on a lark, registered the names “Pat-Leahy.com” and “Orrin-Hatch.com.”
Sen. Orrin Hatch (R-Utah) is chairman of the Senate Judiciary Committee, and Leahy is its highest- ranking Democrat. It cost Stiffelman $70 to register each name. “I could put a recipe for building a bomb at Orrin Hatch.com.” Stiffelman quickly added that it would be irresponsible to do such a thing.
Stiffelman also said that any legislation must be retroactive, since thousands of celebrities have already lost the race to register their own names on the Internet. “The horse has already left the barn.”