Famous People

[fab]

Could someone please summarize the legalities of registering living well known figures!

 

[Theo]

I already have my name registered

 

[fab]

I already have my name registered

Oh really, I'm going to go ahead and register the .net before you do!

 

[Johnn]

If they don't sue you then you are ok - If they do then you are in trouble.

 

[fab]

OK guys, lets get serious. Is a name considered to be a TM?

 

[Johnn]

The question has been asked 2,457 times. It all depends on the situation and there is no right or wrong answer until they (famous people) decided to take action.

 

[Johnn]

FYI,

The intention to register some else name is wrong in the first place unless you plan to change you name.

 

[draggar]

FYI,

The intention to register some else name is wrong in the first place unless you plan to change you name.

Or you have their permission.

 

[domaingenius]

I registered a name of someone around 8 years ago ,not at all famous ,and they managed to get the name via WIPO.

DG

 

[Dave Zan]

http://www.wipo.int/amc/en/domains/search/overview/index.html#16

1.6 Can a complainant show rights in a personal name?

Consensus view: While the UDRP does not specifically protect personal names, in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name. Reference can be made to the test required for the common law action of passing off. Personal names that have been trademarked are protected under the UDRP.

Relevant decisions:
Julia Fiona Roberts v. Russell Boyd D2000-0210, Transfer
Jeanette Winterson v. Mark Hogarth D2000-0235 among others, Transfer
Dr. Michael Crichton v. In Stealth Mode D2002-0874, Transfer

However: The name in question should be actually used in trade or commerce to establish unregistered trademark rights. Merely having a famous name (such as a businessman, or religious leader) is not necessarily sufficient to show unregistered trademark rights.

Relevant decisions:
Israel Harold Asper v. Communication X Inc. D2001-0540 among others, Denied
Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa D2003-0248, Transfer

http://www.law.cornell.edu/uscode/html/uscode15/usc_sec_15_00001125----000-.html

(d) Cyberpiracy prevention
(1)
(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section

http://www.law.cornell.edu/uscode/html/uscode15/usc_sec_15_00001129----000-.html

(A) Civil liability
Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person’s consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.
(B) Exception
A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under title 17, including a work made for hire as defined in section 101 of title 17, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person. The exception under this subparagraph shall apply only to a civil action brought under paragraph (1) and shall in no manner limit the protections afforded under the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) or other provision of Federal or State law.

 

[A D]

That's pretty specific and great info.

-=DCG=-

 

[draggar]

Yes, Dave, very good information. I've passed it along to a friend of mine who can't afford a WIPO case (and has been .com'ed against his wishes and someone is profiting off of his name).

 

[jberryhill]

Is a name considered to be a TM?

Can any word be a TM?

Can any picture be a TM?

Can any phrase be a TM?

If it can be stamped on products or used on or in connection with goods or services, then it can be a TM.

Heard of any of these folks:

Yves St. Laurent

Estee' Lauder

Eddie Bauer

L.L. Bean

J.C. Penney

 

[domain newbie]

if you make "celebrity fan site" you can still get away with it, while if you try to sell it to the name holder- they can sue you for a blackmail

 

[Dale Hubbard]

No, they can't sue you for "a blackmail". Nobody sues for blackmail - it's a criminal offence. See post #10 for the correct answer.

 

[TordB]

So if I buy a domain name called, for instance, "xxshakiraxx," I can be sued for that?

 

[Dale Hubbard]

Depends who "xxshakiraxx" is. E.g. if he/she/it is a high-profile business/celebrity, and you create a site to profit from that, yes you can be sued.

 

[harleyx]

So what are the chances a WIPO would succeed for a non-famous person to get ahold of their full name from a company who's had it parked for a couple years? I've been using my name since 1979, and as an web developer since 1998.

The company also owns approximately 280,000 other domains.

 

[Dale Hubbard]

So what are the chances a WIPO would succeed for a non-famous person to get ahold of their full name from a company who's had it parked for a couple years? I've been using my name since 1979, and as an web developer since 1998.

The company also owns approximately 280,000 other domains.

Very slim indeed unless they were passing themselves off as you or were ripping off one of your products.

 

[fab]

If it can be stamped on products or used on or in connection with goods or services, then it can be a TM.

So, if that's the case, politicians who don't market themselves for any goods, can't be a TM.