1. Hereinafter abbreviated as "WWW." Back to text

2. BILLY BOB, BILLY BOB'S BASEBALL BARRACKS and the Billy Bob character are trademarks of Richard J. Greenstone. Stay tuned for "Billy Bob's Barbecue Barracks," a sauce-stained epic on trade dress issues in the restaurant business. Back to text

3. The Billy Bob computer server, Bubba, is located in his home state, somewhere in the Rockies, where to his regret, he never gets to fish for marlin. Billy Bob loves baseball; just about his entire life revolves around it and the BBBB--Billy Bob's Baseball Barracks. His wife, Babe, whom he met at a militia movement meeting and an angel of a woman and brewer of fine beers, has asked him to seek professional help. He consulted a padre but the advice and penance drove him deeper into baseball: Billy Bob wears only red or white socks. He has two children, twins, one of which is a giant (Baby), the other a brave athletic(Bridget). He has several pets and birds: a tiger cub, which constantly dodges the orioles, blue jays and cardinals Billy Bob keeps in the house, and a dog named Astro. Legend has it that Billy Bob is descended from royalty but he knows better: His maternal grandmother was an Indian who married a mariner, his paternal grandfather started out as a ranger and then lost his way and became a pirate. Billy Bob's favorite sandwich: Philly cheese steaks. Back to text

4. WWW links appear as either text or graphics. The link text is usually set off from surrounding text by an underline and color, usually blue. A link graphic may or may not contain some indication that it is a link; sometimes a narrow line circumscribes the graphic in the same color that is used for links throughout that particular WWW page. Back to text

5. I use the word "link" instead of the commonly used word "hyperlink"; I found that too much coffee and too much "hype" while writing make a terrible combination. "Hot links" suffer from the same comparison but for reasons having more to do with barbecue, Billy Bob's favorite! Back to text

6. E.g., the WALL STREET JOURNAL, ESPNET SportsZone, SAN JOSE MERCURY NEWS Web Center. Back to text

7. See also Carl Oppedahl, Internet Domain Names that Infringe Trademarks, NEW YORK L.J., Feb. 14, 1995, at 6; Stephen J. Davidson and Nicole A. Engisch, `Trademark Misuse' in Domain Name Disputes, THE COMPUTER LAWYER, Vol. 13, No. 8, August 1996, at 13. Back to text

8. See also REPORT OF THE WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS, INTELLECTUAL PROPERTY AND THE NATIONAL INFORMATION INFRASTRUCTURE 114 (1995) [hereinafter NII]; Religious Technology Center v. Netcom On-Line Communication Services, No. 95-20091 (N.D. Cal.) (verified first amended complaint filed March 3, 1995). Netcom ultimately settled with the Church of Scientology and Netcom agreed to issue a set of intellectual property guidelines. Back to text

9. Feist Publications, Inc. v. Rural Tele. Serv. Co., 499 U.S. 340 (1991) [hereinafter Feist]. Back to text

10. See also Eric Schlachter, Cache-22, INTELLECTUAL PROPERTY, Summer 1996, at 14, supplement to THE RECORDER. Back to text

11. NII, supra note 8, at 15. Back to text

12. The Electronic Frontier Foundation maintains a comprehensive list with links to current legislation initiatives. Back to text

13. H.B. No. 1630 (1996) (enacted July 1, 1996) Act 1029, GA. CODE ANN. § 16-9-93.1. Back to text

14. Rose Aguilar, Georgia OKs "Net Police" Law, CNET, Apr. 19, 1996. Back to text

15. The act also makes it a an offense to use a "handle" in place of a real name in an electronic mail address. Nearly every person using electronic mail in the United States, including the President of the United States, violates the Georgia Act. Any interested reader can write the President at president@whitehouse.gov. Back to text

16. One must ask, "What are the damages?" outside of the outrage felt during a session of browsing the WWW. Back to text

17. 17 U.S.C.S. § 301(a) (Law. Co-op. 1994 & Supp. 1996). Back to text

18. Nash v. CBS, Inc., 704 F. Supp. 823, 832 (N.D. Ill. 1989), aff'd, 899 F.2d 1537 (7th Cir. 1990). Back to text

19. Allied Artists Pictures Corp. v. Rhodes, 496 F. Supp. 408 (S.D. Ohio 1980), aff'd, 679 F.2d 656 (6th Cir. 1982). Back to text

20. Warner Bros. v. American Broadcasting Cos., 720 F.2d 231, 247 (2d Cir. 1983) (fictional character Ralph Hinkley of The Greatest American Hero dissimilar to Superman). Back to text

21. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 918-19 (2d Cir. 1980). Back to text

22. See infra notes 63 to 66 and accompanying text. Back to text

23. ACLU of Georgia v. Miller, No. __________ (N.D. Ga. filed Sept. 24, 1996). Back to text

24. See Supplement to this article to be distributed at the Eighth Annual Southern Regional Entertainment & Sports Law Seminar, Nov. 12-16, 1996, San Juan, Puerto Rico. Back to text

25. See Borchard, Reverse Passing Off: Commercial Robbery or Permissible Competition?, 67 TRADEMARK REP. 1 (1977), for an explanation of the different types of passing off: Express passing off is X's goods sold with Y's trademark; express reverse passing off is Y's goods resold with X's trademark; implied passing off is X's goods sold using photograph or sample of Y's goods; implied reverse passing off is Y's goods resold with trademark removed. Back to text

26. John Wright, Inc. v. Casper Corp., 419 F. Supp. 292, 191 U.S.P.Q. 369 (E.D. Pa. 1976), aff'd in part and rev'd in part, 587 F.2d 602, 199 U.S.P.Q. 705 (3d Cir. 1978) (Uncle Sam penny banks). Back to text

27. Smith v. Montoro, 648 F.2d 602, 607, 211 U.S.P.Q. 775 (9th Cir. 1981) (removal of actor's name from credits and substitution of another actor's name). Back to text

28. See infra notes 45 to 54 and accompanying text. Back to text

29. Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541 (codified at 17 U.S.C.S. §§ 101-1010 (Law. Co-op. 1994 & Supp. 1996)). Back to text

30. Duff v. The Kansas City Star Co., 299 F.2d 320 (8th Cir. 1962); Becker v. Loew's, Inc., 133 F.2d 889 (7th Cir. 1943); Warner Bros. Pictures, Inc. v. Majestic Pictures Corp., 70 F.2d 310 (2d Cir. 1934); Wilson V. Hecht, 44 D.C. App. Rep. 33 (D.C. Cir. 1915); Arthur Retlaw & Assocs., Inc. v. Travenol Labs., Inc., 582 F. Supp. 1010 (N.D. Ill. 1984); Affiliated Enters., Inc. v. Rock-Ola Mfg. Corp., 23 F. Supp. 3 (N.D. Ill. 1937); Clamage Indus., Ltd. v. Glendinning Cos., Inc., 175 U.S.P.Q. 362 (TTAB. 1972). Back to text

31. See infra notes 25 to 28 and 45 to 71 and accompanying text. Back to text

32. Arica Inst., Inc. v. Palmer, 770 F. Supp. 188, 191-92 (S.D.N.Y. 1991), aff'd, 1992 U.S. APP. LEXIS 16,694 (2d Cir. 1992); Kanover v. Marks, 91 U.S.P.Q. 370 (S.D.N.Y. 1951); Smith v. Muehlebach Brewing Co., 140 F. Supp. 729 (S.D. Mo. 1956). See also 37 C.F.R. § 202.1(a) (1959), Copyright Office Regulations under the 1909 Act, which provided that short phrases such as names, titles and slogans are not subject to copyright protection. The current regulations can be found at http://www.law.cornell.edu/copyright/regulations/regs.overview.html. Back to text

33. Copyright Office Circular No. 46 (Mar. 18, 1941). Subsequent circulars do not provide a definition. Back to text

34. H.R. Rep. No. 1476, 94th Cong., 2d Sess. 65, reprinted in 1976 U.S.C.C.A.N. 5679. Back to text

35. See 1 M. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT § 2.08[G][2] (1994). Back to text

36. 100 U.S. 82, 25 L. Ed. 556 (1879); see also Higgins v. Keuffel, 140 U.S. 428 (1891). Back to text

37. Dow Jones & Co. v. Board of Trade, 546 F. Supp. 113 (S.D.N.Y. 1982). Back to text

38. See Rochelle Asparagus Co. v. Princeville Canning Co., 170 F. Supp. 809 (S.D. Ill. 1959); Barton Candy Corp. v. Tell Chocolate Novelties Corp., 178 F. Supp. 577 (E.D.N.Y. 1959); Forstmann Woolen Co. v. J.W. Mays, Inc., 89 F. Supp. 964 (E.D.N.Y. 1950). But cf. Drop Dead Co. v. S.C. Johnson & Son, Inc., 326 F.2d 87 (9th Cir. 1963); Abli, Inc. v. Standard Brands Paint Co., 323 F. Supp. 1400 (C.D. Cal. 1970) (minimal originality standard applied). Back to text

39. http://www.altavista.digital.com Back to text

40. http://www.yahoo.com Back to text

41. 17 U.S.C.S. § 101 (Law. Co-op. 1994 & Supp. 1996). Back to text

42. E.F. Johnson Co. v. Uniden Corp. of Am., 623 F. Supp. 1485, 1500 (D. Minn. 1985). Back to text

43. Feist, supra note 9, at 347. Back to text

44. Id. at 362. Back to text

45. See infra notes 63 to 66 and accompanying text. Back to text

46. McLean v. Flemming, 96 U.S. 245 (1878); American Steel Foundries v. Robertson, 269 U.S. 372 (1926). Back to text

47. Safeway Stores, Inc. v. Safeway Properties, 307 F.2d 495 (2d Cir. 1962). Back to text

48. Lanham Act § 32, 15 U.S.C.S. § 1114(1)(a) (Law. Co-op. 1991 & Supp. 1996), states "which such use is likely to cause confusion, or to cause mistake, or to deceive;..." Back to text

49. Id. § 43(a), 15 U.S.C.S. § 1125(a) (Law. Co-op. 1991 & Supp. 1996), states which "is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association...." Back to text

50. 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24.01[1] (1993) [hereinafter J. THOMAS MCCARTHY]; see Wendy's International, Inc. v. Big Bite, Inc., 576 F. Supp. 816, (S.D. Ohio 1983). Back to text

51. Standard Oil Co. v. Standard Oil Co., 56 F.2d 973 (10th Cir. 1932). Back to text

52. 839 F. Supp. 1552 (M.D. Fla. 1993); see also Showtime/The Movie Channel, Inc. v. Covered Bridge Condominium Ass'n, 693 F. Supp. 1080 (S.D. Fla. 1988), modified, 881 F.2d 983 (11th Cir. 1989), remanded, 895 F.2d 711 (1990) (interception of cable television programming broadcast via satellite which appropriates trademarks and trade names in a manner likely to cause confusion is unfair competition in violation of 43(a) of the Lanham Act); Pacific & Southern Co. Inc. v. Satellite Broadcast Networks Inc., 694 F. Supp. 1575 (N.D. Ga. 1988); Sega Enterprises Ltd. v. MAPHIA, 857 F. Supp. 679 (N.D. Cal. 1994) (preliminary injunction entered preventing bulletin board operator from uploading and downloading of unauthorized copies of Sega's video games; the transferred games would cause confusion on the part of third parties who may see the copied games after they enter the stream of commerce). Back to text

53. The quality of the BBBB site is irrelevant to the determination of confusion. Back to text

54. See Misha Glouberman, Trademark Wars on the Web, where he cites the example, now removed from the WWW, of the NFL sending a cease and desist letter asking that the web site "cease all further mention if [sic] `NFL' in any context" [hereinafter Glouberman]. Back to text

55. Lanham Act § 45, 15 U.S.C.S. § 1127 (Law. Co-op. 1991 & Supp. 1996). Back to text

56. Id. § 43(c)(1), 15 U.S.C.S. § 1125(c)(1) (Law. Co-op. 1991 & Supp. 1996), states that,

[i]n 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.

58. Id. § 35(a), 15 U.S.C.S. § 1117(a) (Law. Co-op. 1991 & Supp. 1996). Back to text

59. Id. § 36, 15 U.S.C.S. § 1118 (Law. Co-op. 1991 & Supp. 1996). Back to text

60. Id. § 43(c)(2), 15 U.S.C.S. § 1125(c)(2) (Law. Co-op. 1991 & Supp. 1996). Back to text

61. Id. § 43(c)(4), 15 U.S.C.S. § 1125(c)(4) (Law. Co-op. 1991 & Supp. 1996). Back to text

62. No. C96-130WD (W.D. Wash. Feb. 9, 1996) (order granting preliminary injunction). Back to text

63. Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 48 L. Ed. 2d 346, 96 S. Ct. 1817 (1976). Perhaps with some bias, J. Thomas McCarthy, author of MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, writes that "a firm's trademark is the most important element of commercial speech which is communicated to customers. All other elements of advertising revolve around, relate to and are symbolized by the trademark." 3 J. THOMAS MCCARTHY, supra note 50, § 31.37[1] (citation omitted). Back to text

64. Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 231 U.S.P.Q. 963 (D.C. Neb. 1986), aff'd, 836 F.2d 397, 5 U.S.P.Q.2d 1314 (8th Cir. 1987) (use of MUTUAL OF OMAHA parody MUTANT OF OMAHA on coffee mugs and T-shirts protesting nuclear weapons); Reddy Communications, Inc. v. Environmental Action Found., Inc., 199 U.S.P.Q. 630 (D.D.C. 1977) (preliminary injunction denied), final decision denying relief, 477 F. Supp. 936, 203 U.S.P.Q. 144 (D.D.C. 1979) (use of REDDY KILOWATT trademark in booklet criticizing electric utility policies). Back to text

65. See L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 1 U.S.P.Q.2d 1753 (1st Cir.), cert. denied and appeal dismissed, 483 U.S. 1013, 97 L. Ed. 2d 753, 107 S. Ct. 3254 (1987) (no other way to parody plaintiff's product except by use of plaintiff's trademark allowed under First Amendment). Back to text

66. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 U.S.P.Q. 161 (2d Cir. 1979) (DALLAS COWBOYS CHEERLEADERS mark infringed by use in pornographic film; parody and satire defense also rejected). Back to text

67. Glouberman, supra note 54. Back to text

68. See Jonathan Woodward, Acme Page.

"What the heck is `@cme'?" Well, it's a cute way of avoiding using a WB trademark. Eventually, I hope to create my own cartoon-derived universe to write in, and "@cme" may be the title under which I do so. Plans are still vague, however. It's pronounced either "AT-mee" or "AK-mee", depending on how close you're standing to a WB lawyer.

69. These are those sites (with an acknowledgment to Levi Strauss & Co., and the advertisement for their new pant line Slates): Slate and Stale. Back to text

70. Congress made it very clear that the exemption of noncommercial use was included to "address[] legitimate First Amendment concerns espoused by the broadcasting industry and the media...." H.R. No. 104-374 (1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031, 1035. Back to text

71. L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 33, 1 U.S.P.Q.2d 1753 (1st Cir.), cert. denied and appeal dismissed, 483 U.S. 1013, 97 L. Ed. 2d 753, 107 S. Ct. 3254 (1987) Back to text.

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