Perhaps I am dating myself by saying so, but I remember when there were no governing rules or dispute resolution procedures in place to govern domain name registrations. I also recall the passage of the UDRP, which led to my involvement in some of the earliest celebrity-based domain name decisions on record. Some of those decisions are still cited today in current domain name disputes. The latest example of a celebrity domain name recovery involves Jay Leno. See http://www.wipo.int/portal/index.html.en
On June 25, 2009, WIPO decided in favor of Jay Leno in his UDRP action to recover TheJayLenoShow.com from a cybersquatter. The case, entitled Leno v Zambrano (Case D2009-0570), pitted Leno against a Texas real estate agent who had registered the domain name in 2004. Zambrano had used the domain name to redirect visitors to his real estate website.
It is interesting to note that at the time the domain name was registered, Leno’s show was actually called The Tonight Show. In the Fall of 2009, following his departure from The Tonight Show, Leno will be hosting a prime time show called The Jay Leno Show. This name, therefore, directly correlates with the domain name in dispute.
The pleadings on behalf of Jay Leno alleged common law trademark rights in his name. For those who have actually handled personality based domain name disputes, it is well known that the right of publicity is not specifically articulated in the UDRP rules governing owernship of domain names. Thus, a personality must either demonstrate ownership of registered trademarks, or argue in a trademark context that common law trademark interests exist. In a way, this is a round-about way to approximate the right of publicity, and historically it has proven to be effective in front of the domain dispute arbitrators.
One interesting takeaway from the ruling is that the arbitrator dismissed Zambrano’s defense of laches. Zambrano argued that his ownership of the domain name for five years precluded Leno from pursuing recovery. The arbitrator ruled that laches does not apply in UDRP proceedings..
Following the usual criteria that a complainant must meet in a UDRP action, the arbitrator ruled that the domain name in dispute clearly incorporated the entire Jay Leno mark, which was confusingly similar to Leno’s mark. The arbitrator ruled that Zambrano had no rights or interests in the domain. Last, the arbitrator ruled that Zambrano knew of Jay Leno and the value of Leno’s name. Taking all these factors into account, the arbitrator ruled that Zambrano had used the domain name in bad faith to attract web traffic to his site for commercial gain.
It didn’t take long, and it might be because of the merchandise in development for the anticipated Michael Jackson tour, but Michael Jackson merchandise is about to hit shelves. Perhaps the most interesting question is, who will have a claim to the proceeds generated by the Michael Jackson products? Stores slated to carry Michael Jackson goods include Target, JC Penney, Hot Topic, and Spencer’s. As reported by the LA Times, Bravado is licensed via AEG. AEG, in turn, had certain rights to create merchandise for the Michael Jackson concert in London. The LA Times story indicates that it is unclear whether Michael Jackson’s heirs will receive a share of the proceeds generated by the products. As predicted by the first blog posted on this site concerning Michael Jackson’s death, the answer to this question may have to be answered by a Judge. Here is a link to the LA Times article: http://www.latimes.com/business/la-fi-ct-jackson9-2009jul09,0,1433764.story
The New York Times has reported that certain collegiate athletes are now taking their claims to court for the right to control the use of their images in relation to products such as video games. The claimes are being pursued despite a longstanding policy of the NCAA barring its athletes from profiting from their status. One suit was initiated by former collegiate quarterback, Sam Keller, who filed a class action suit against Electronic Arts and the NCAA, claiming that both organizations ”illegally profit from the images of college football and basketball players.” Separately, and even more recently, former quarterback Ryan Hart filed a lawsuit. The NCAA has licensed video game manufacturers to create games but without use of the players’ actual names. The question then becomes whether a user of the video game would still be able to identify the specific athlete without use of the athlete’s actual name.