들레꽃입니다.캄보디아의 노버트씨(ICANN 요코하마 미팅에서 보신 분도 있을 것 같은데)가 보내준 소식입니다.혹시 참고가 될까 하구요.그럼…—– Original Message —–From: “Norbert Klein” To: “della” ; ;Sent: Saturday, September 16, 2000 12:33 PMSubject: [asialink-policy 1129] “non-trademark use of a trademark”Dear Della,sorry to know about the treatment you got for upholdingfreedom of information.I share with you (and others) an interesting ruling of a USjudge on a “non-trademark use of a trademark” – and I do sobecause I think it may be an important precedent also forcases where the critical use of copyrighted words or logos (asin your Pohan Steel case) is an issue.It is interesting that a computer enterprise, Excite, iswinning against Playboy. When social action groups, often withless resources for lawyers, fight in denouncing some company,the results are often not as positive as in this case. But Ithink it is valuable to see the legal arguments here about the”non-trademark use of a mark.”Greetings,Norbert–** Norbert Klein, Open Forum of Cambodia, Web:www.forum.org.kh** FaxPhone: +855 (23) 360345, POBox 177, Phnom Penh, CAMBODIAfrom www.icbtollfree.com:PLAYBOY RULING RECOGNIZES LIMITS TO ONLINE RIGHTS OF TRADEMARKHOLDERSNew York, NY September 15, 2000 (ICB TOLL FREE NEWS) In animportant decision that recognizes limits to intellectualproperty rights online, a federal judge earlier this weekruled that a company’s well-known trademarks may be usedwithout authorization by search engines in some programmingand sales practices.The New York Times reports that the four-page decision,published Tuesday by Judge Alicemarie H. Stotler of the UnitedStates District Court in Santa, Ana, California, dismissed alawsuit brought by Playboy Enterprises against Excite, Inc.and its search engine licensee, Netscape Communications.The summary judgment ruling, if not reversed on appeal, mayserve as a precedent to safeguard a common but controversialInternet advertising practice known as “keying,” said lawyerswho were familiar with the decision. Under the scheme, asearch engine offers advertisers the ability to displayspecific banner ads whenever users enter selected searchterms, including trademarks.Playboy sued Excite and Netscape last year, claiming that thesearch engines displayed banner ads from pornography companieswhenever “playboy” or “playmate” were used as a search term.Both words are trademarks owned by the Bunny Empire.The decision, which has already touched off some disagreementamong intellectual property experts, may also remind companiesthat their rights to capitalize on their trademarks on theInternet are subject to traditional restrictions.Barry G. Felder, Playboy’s lead lawyer in the case, said thathis client plans to appeal. “We’re essentially puzzled by thedecision,” he said. He added that under the reasoningexpressed by Judge Stotler, some sales of trademarks “havebeen essentially legitimized.””We think that is clearly the wrong result,” Felder, a partnerwith the New York-based law firm Brown Raysman MillsteinFelder & Steiner, said. “We think the result will be correctedon appeal.”Jeffrey K. Riffer, a lawyer for Excite, hailed the court’sbrief decision. He said the victory is important not just forExcite but for consumers.”Search engines do engage in selling keyword advertising –it’s an important business model,” he said. Riffer, who worksat Jeffer, Mangels, Butler & Marmaro, a Los Angeles law firm,said search engines can continue to offer their services toconsumers for free only because of robust advertisingrevenues.Excite is one of many search engine portals that, for apremium rate, cause a pre-selected banner ad to pop up whencertain search terms are used. Often a generic search term,such as “car,” will trigger related ads. But sometimes searchengine companies take the more controversial approach ofdisplaying a company’s banner ad whenever a competitor’strademark is used as a search term. Marissa Gluck, an onlineadvertising analyst with Jupiter Communications, estimatedthat portals garner about 20 to 30 percent of their adrevenues from keyword banner ads.In its legal papers, Playboy argued that the use of itstrademarks for the sales scheme amounted to trademarkinfringement and dilution. In the summer of 1999, JudgeStotler denied Playboy’s request for a preliminary injunctionbarring Excite from the practice. Her ruling was affirmed bythe U.S. Court of Appeals for the Ninth Circuit.In her most recent decision dismissing Playboy’s case, JudgeStotler essentially found that in its advertising schemeExcite did not use the trademarks “playboy” and “playmate” inan unlawful manner. She suggested that rather than using thewords to identify its own goods and services — which might beillegal — Excite merely used the terms in an appropriatemanner to refer to Playboy. This “non-trademark use of amark,” she said, is a use to which the infringement laws donot apply.Moreover, said Judge Stotler, even if there were a trademarkuse, there could be no finding of infringement because therewas no evidence that consumers confused Playboy products withthe services of defendants. Elsewhere in the opinion, JudgeStotler said that Playboy’s claim for dilution could not besustained because there was no evidence that either Excite orNetscape “on its products” made use of Playboy’s marks.Jessica Litman, a law professor at Detroit’s Wayne StateUniversity School of Law who specializes in intellectualproperty and the Internet, said that Judge Stotler was”clearly right” on the infringement point.”You can look at this as a form of [lawful] comparativeadvertising,” said Litman. “The people who are buying thekeywords are saying to the consumer, ‘You are a person who isinterested in Playboy. You might therefore be interested inour goods.’ That convention is pretty well known,” she said.A real-world analogy, Litman offered, would be a store thatsells a name-brand perfume but also sells the shelf-space nextto that luxury item to a competing brand.Litman also maintained that it was reasonable for the court tofind that no consumers would be confused whether the keyedbanner ads were affiliated with Playboy.”It’s a short decision and it’s hard to know how far it willextend,” she said. “But given the increasing tendency amongsome courts to grant trademark owners expansive rights overthe use of their marks on the Net, it’s always nice to see acourt applying traditional principles. In that sense it’s asound decision.”Jeffrey R. Kuester, an Internet law expert at Thomas, Kayden,Horstemeyer & Risley, an Atlanta law firm, said in aninterview that he disagreed with the court’s ruling.”I come back to a basic premise,” he said. “Excite is makingmoney using Playboy’s trademarks to send people to Playboy’scompetitors. Doesn’t something sound wrong with that?”Kuester said that if the court’s ruling held sway, then FujiFilm would be able to key its banner ads to the search term”Kodak” and Pepsi to “Coke.” More likely, he said, the searchengines would approach the trademark holders and offer, for afee, to not sell keyword-linked banners to competitors.”You shouldn’t have to pay to keep your own name,” he said.The Playboy case is not the only lawsuit that challenges keyedbanner ads. Last year, three subsidiaries of the Estee LauderCompanies, Inc. filed lawsuits against Excite and an onlinecosmetics company, Fragrance Counter, Inc., in the U.S.,France and Germany. The Lauder Companies claimed, among otherthings, that when a consumer used the Excite search engine andtyped in the search term “Estee Lauder,” a Fragrance Counterbanner ad appeared.Earlier this month, the Estee Lauder Companies and iBeauty, asuccessor to the Fragrance Company, announced a settlementunder which iBeauty voluntarily agreed to refrain from usingthe Estee Lauder trademarks as Internet keywords. But themulti-national lawsuit against Excite is still pending, saidJoshua Paul, a lawyer for the Estee Lauder Companies.첨부 파일과거 URLhttp://www.ipleft.or.kr/bbs/view.php?board=ipleft_5&id=68