Implications of the .xxx Domain Extension on Trademark Owners

Posted on December 16, 2010 by Josh MacFadden

 

The Internet Corporation of Assigned Names and Numbers ("ICANN") announced that it is considering the submissions of the ICM Registry to develop and administer the controversial .xxx domain extension and will defer its decision until February, 2011 after several years of delay on the issue.

The .xxx extension is intended to consolidate pornographic, adult entertainment and related providers within a single domain extension thereby enabling consumers of such content (or those wishing to avoid it for filtering purposes) a simplified means of identifying adult websites. 

Trademark owners operating in trade channels entirely unrelated to the adult entertainment industry are concerned about the potential consequences of opening up the .xxx domain extension on their brands (i.e. is there a risk of a particular trademark being registered as a .xxx domain without the consent or knowledge of the brand owner).

To resolve this concern, the ICM Registry ("ICM") has indicated that the sunrise launch of the .xxx extension will include an opportunity for businesses, organizations and private individuals which do not wish to be associated with the adult industry (via the .xxx domain extension) to protect their trademarks, names, etc. through a blocking program involving a one time fee and registration.  As described by ICM, the process, developed in partnership with Valideus, is intended a departure from the traditional method of protecting brands (i.e. via defensive domain registrations) to enable rights holders to pre-emptively register their protected terms to ensure that they are not associated with the adult content associated with the .xxx domain extension.

Until contract negotiations are finalized between ICANN and ICM brand owners can take no action but would be well advised to monitor the issue via their trademark counsel to obtain any updates on the final .xxx blocking program, process, fee(s), etc.
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ICANN Announcement to "Internationalize" Domain Names

Posted on November 2, 2009 by Josh MacFadden

On October 30, 2009, the Internet Corporation for Assigned Names and Numbers ("ICANN"), the non-profit corporation which administers and sets policies related to the Internet, domain names, etc., announced the roll-out of internationalized domain names (i.e. domain addresses utilizing non-Latin characters or non-ASCII scripts).

The first phase of the process will commence on November 16, 2009 to allow countries to apply to ICANN for country codes (such as ".ca") in a different character set (i.e. Cyrillic) and further roll-outs will follow in subsequent phases.  To monitor developments in this area please consult the web page developed by ICANN to post updates.

While certainly indicative of the global reach and utilization of the Internet, the incorporation of some 100,000 new character sets to the formerly A-Z format may result in challenges for current owners of domain name registrations (i.e. resulting in confusion between Latin and non-Latin domains) and may result in challenges to software programmers or users of software which are presently hard-coded to recognize only Latin domain addresses.  In either case, the phased roll-out is intended to mitigate substantial concerns in this regard, however, users of accented Latin characters may already be aware that certain software still does not support such usage. 

Notwithstanding the potential challenges of internationalized domains, this development presents great opportunities for brand owners to bolster their online presence and to increase brand recognition among all Internet users utilizing non-Latin characters.  At the same time, however, brand owners are cautioned to carefully monitor Internet activity in order to anticipate and/or resolve potential online confusion - particularly where a non-Latin character may effectively mimic Latin characters specifically to cause the re-direct of web traffic (i.e. to utilize the number "0" as opposed to a capital letter "O") to a competing or entirely unrelated website.

 

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Facebook Soliciting User Input On Policies

Posted on February 26, 2009 by Josh MacFadden

In an interesting development to an earlier story, Facebook Inc. has announced that users of the company’s popular social networking site will have what may well be an unprecedented role in determining the Terms of Use policies governing the site. 

In a seemingly direct response to the negative backlash from Facebook users following the company’s recent attempts to revise its website policies and in an effort to promote a democratic and transparent process for developing new terms of use, company founder and CEO Mark Zuckerberg today announced that two Facebook Groups have been created by Facebook Inc. to enable a "town-hall" forum to permit users to offer feedback on two proposed policies:

  1. The Facebook Principles, which define user rights while utilizing the social networking service and which will serve as the underlying policy prior to the implementation of  further applications, policies, etc. by the Company; and
  2. The Statement of Rights and Responsibilities, which will replace the existing Terms of Use

Each of these documents will be posted for a month-long comment period closing at 12:01 am PDT on March 29 within which time Facebook Inc. Subsequent to that date, Facebook has indicated that they will republish the two policies along with revisions and comments in response to user feedback. 

Anyone utilizing the website or simply interested in the issues of privacy, copyright and technology law  in the context of user-generated online social networking sites is encouraged to visit the Facebook blog.


 
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An About Facebook...

Posted on February 25, 2009 by Josh MacFadden

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A recent Internet controversy concerning the successful social networking site Facebook highlights the challenges in amending website Terms and Conditions following changes to the web site's Terms of Service have resulted in numerous challenges, questions, and protest groups users over the ownership of user-generated content. 

In a story which broke on the consumer rights advocacy blog, Consumerist.com , Facebook Inc. attempted to clarify its Terms of of Service resulting in confusion concerning the legal implications for the new provisions, particularly where users elect to close or otherwise inactivate a user account.  Whereas both documents essentially provide for a grant of license from a user to Facebook for the use of user-generated content (i.e. photos, videos, posts, applications, etc.), the new agreement deletes a prior clause which read:

You may remove your User Content from the Site at any time.  If you choose to remove your User Content, the license granted above will automatically expire, however you acknowledge that the Company may retain archived copies of your User Content.  [emphasis added]

Effectively, the changes appeared to suggest that Facebook Inc. intended to assert ownership of user content or, at the very least a non-exclusive, perpetual license to continue to use, post and distribute such content even if a user account is closed. 

In an effort to resolve concerns over the issue, Facebook Inc.'s founder and CEO Mark Zuckerberg announced a re-introduction of the earlier agreement while stating on the corporate blog that  "[o]ur philosophy is that people own their own information and control who they share it with... When people share information on Facebook, they first need to grant Facebook a license to use that information so that we can show it to the other people they've asked us to share it with."

Generally speaking, the ownership of user-generated content will be governed by copyright protections and thus such materials are owned by their originating author unless transferred to a third party by way of assignment.  In Canada and many other countries, such a transfer must also include a waiver of moral rights which refer to rights to attribution and rights to protect the integrity of the work.  

This story certainly serves as a cautionary warning to businesses utilizing customer or user-generated content and the challenges which may result when introducing new contractual terms to an existing relationship - particularly one with a wide and online following.  For users of social networking websites this story highlights the need to closely reviewTerms of Use/Service and Privacy Policies in order to gain a full appreciation for the impact of such provisions on your existing legal rights.

 *Facebook and the Facebook Logo are trademarks of Facebook Inc.

 

 

 

 
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