John Berryhill, Esq, PHD says that the UDRP panel in the Ron Paul Domain name case got its right.
The decision has garnered a lot of Strong opinions, but Mr. Berryhill who has won more reverse domain name hijacking cases representing domain holders says the panel got it right and says that the UDRP panel that awarded HillaryClinton.com to Hillary Clinton got it wrong:
In a comment left on a post on TheDomains.com to Mr.Berryhill says:
Hillary Clinton was only a wife of the politician…”
IMHO, that case was wrongly decided. But you don’t correct for a wrong decision by continuing to make wrong decisions.
Mike, the difference between Brad Pitt and Ron Paul is that Brad Pitt is a subject of interest for purely commercial reasons. Trademark law exists in tension with the First Amendment. The First Amendment says, “say what you like”. Trademark law says, “you can’t say certain things in the context of commercial speech.”
Given that the First Amendment’s core purpose is to allow, first and foremost, unfettered political speech, the tension comes to the fore in what are almost always “blended” political and commercial contexts. Often, nothing falls clearly on one side or the other of a bright line somewhere.
A good case for exploring the topic involves former California Governor Schwarzenegger. California, as may be expected, has a lot of protections around commercial rights of publicity. But Mr. Schwarzenegger’s career had something of a dual character. On the one hand, his rights in his name as a commercial brand were substantial. On the other hand, as a political figure, he was fair game for commentary.
So, what happened is that someone was selling action figures showing Mr. Schwarzenegger as “The Governator”. The court had a really tough time trying to sort out whether this activity was primarily a political comment playing off the duality of his reputation as a politician and actor, or primarily a commercial enterprise free-riding on the value of the Terminator franchise. The case is a good read, though.
The UDRP is a bad fit for a lot of “right of publicity” claims in personal names as opposed to purely trademark claims. Where the line is drawn depends, in a lot of cases, on the particular evidence and arguments in front of the panel. One way to approach whether a name acts primarily as a “mark” is in the distinction between saying:
1. “I saw a movie directed by Steven Spielberg.”
2. “I saw a Steven Spielberg movie.”
In statement 1, “Steven Spielberg” is used as a proper noun – the name of the person who directed the movie.
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