John Berryhill, Esq, PHD says that the UDRP panel in the Ron Paul Domain name case got its right.

The decision has garnered a lot of Strong opinions, but Mr. Berryhill who has won more reverse domain name hijacking cases representing domain holders says the panel got it right and says that the UDRP panel that awarded HillaryClinton.com to Hillary Clinton got it wrong:

In a comment left on a post on TheDomains.com to Mr.Berryhill says:

Hillary Clinton was only a wife of the politician…”

IMHO, that case was wrongly decided.   But you don’t correct for a wrong decision by continuing to make wrong decisions.

Mike, the difference between Brad Pitt and Ron Paul is that Brad Pitt is a subject of interest for purely commercial reasons.   Trademark law exists in tension with the First Amendment.  The First Amendment says, “say what you like”.  Trademark law says, “you can’t say certain things in the context of commercial speech.”

Given that the First Amendment’s core purpose is to allow, first and foremost, unfettered political speech, the tension comes to the fore in what are almost always “blended” political and commercial contexts.  Often, nothing falls clearly on one side or the other of a bright line somewhere.

A good case for exploring the topic involves former California Governor Schwarzenegger.  California, as may be expected, has a lot of protections around commercial rights of publicity.  But Mr. Schwarzenegger’s career had something of a dual character.  On the one hand, his rights in his name as a commercial brand were substantial.  On the other hand, as a political figure, he was fair game for commentary.

So, what happened is that someone was selling action figures showing Mr. Schwarzenegger as “The Governator”.   The court had a really tough time trying to sort out whether this activity was primarily a political comment playing off the duality of his reputation as a politician and actor, or primarily a commercial enterprise free-riding on the value of the Terminator franchise.  The case is a good read, though.

The UDRP is a bad fit for a lot of “right of publicity” claims in personal names as opposed to purely trademark claims.   Where the line is drawn depends, in a lot of cases, on the particular evidence and arguments in front of the panel.   One way to approach whether a name acts primarily as a “mark” is in the distinction between saying:

1.  “I saw a movie directed by Steven Spielberg.”

2.  “I saw a Steven Spielberg movie.”

In statement 1, “Steven Spielberg” is used as a proper noun – the name of the person who directed the movie.

In statement 2, “Steven Spielberg” is used as an adjective to define a “type” of movie as a “Steven Spielberg” brand movie.

So, as noted above, Ron Paul has written a number of books.   As the decision notes, the question is whether people buy those books as “Ron Paul books”, because “Ron Paul” indicates a certain type or quality of book, or whether they buy them because the books express the political views of Mr. Paul.

That’s a subtle, but important, distinction.   There are people who love “Stephen King novels”, for example, or “a movie based on a Stephen King novel” where, as above, “Stephen King” is known to represent a certain genre and quality of authorship, going well beyond the fact that it is his personal name.  One might even compare a book by someone else by saying, “It’s not as good as a Stephen King novel” or “It’s a lot like a Stephen King novel.”

It’s not a matter of simply saying, “oh they write books with their name on the cover, so it is a trademark for books”.   It’s a question of whether that name has gained secondary meaning as a mark.

That’s where the Hillary Clinton decision, in my opinion, went wrong, and this one got it right.  The UDRP decision explores the function of “Ron Paul” as a designator for books.   Does it say to a person buying books, “this is a type of book – a Ron Paul book” or does it say “this book expresses the views of Ron Paul.”  I don’t know what, specifically, was in front of the panelist, but that is the line of thought the panelist went through.

I know the resident “black helicopter” crew will never wrap their heads around the idea that there are people who try to make the best decisions they can on the papers in front of them, and are not constantly obsessing over a political agenda.  It helps to get out and enjoy some sunshine, go for a walk or a bike ride, call an old friend, do something fun, and otherwise enjoy one’s short time on earth once in a while, instead of being in a state of perpetual outrage in front of cable television and the internet.