IP: etoys.com takes the low road

[Dave Farber <farber () cis upenn edu>]

> Date: Fri, 3 Dec 1999 13:39:38 -0800
> From: Mark Boolootian <booloo () cats ucsc edu>
> To: David Farber <farber () central cis upenn edu>
>
>
> This was posted to Slashdot today:
>
> It's been a long week for etoy.com. On Monday, a judge issued a
> preliminary injuction fining them $10,000 each day that their website
> was hosted at their domain. They shut it down right away, of course.
> They're just internet artists. They don't have six billion dollars like the
> company that filed the suit: eToys.com. It's beginning to look a lot like
> Christmas.
>
> etoy was founded in 1994 by a group of European artists who worked on the
> cutting edge, doing performance art at techno events and raves. Their focus
> has always been on the internet as new medium; this interview gives a feel 
> for
> their perspective.
>
> They picked the name "etoy" literally by consensus and running code. Being 
> from
> Italy, England, and Switzerland, physical collaboration was difficult, so 
> they
> got together on an IRC channel and went through a list of random names
> generated by a perl script. When "etoy" came up, they all knew that was the
> name they wanted; they first used it in October of 1994. In October 1995 they
> put up their website at etoy.com.
>
> Christmas 1995 came and went.
>
> In 1996, etoy won their first artistic award. Their work typically blurs the
> line between real world and art; in this case, they had undertaken to
> demonstrate how important and yet how fragile the system of search engines
> was. By subverting the meta tags of prominent websites like Playboy, they
> pulled inexperienced surfers to their site, where they put in a plug for
> Kevin Mitnick, and had a few laughs at the newbies' expense.  They called it
> the "Digital Hijack."
>
> A curious kind of art. In 1996 it was original enough to win an award from Ars
> Electronica. Nowadays everyone knows the trick, the search engines find it and
> disregard it, and some underhanded websites try to make a fast buck by 
> stealing
> trademarks - but etoy did it first, for fun.
>
> Christmas 1996 came and went.
>
> In June 1997 etoys.com, with an S, began operations. It wasn't until October
> that their website went online. They filed for a U.S. trademark on their
> domain, at which point etoy got a little alarmed and filed for their own
> trademark on their own domain. Maybe because they're based in Europe, or 
> maybe
> for some other reason, etoy says their application is still pending on some
> technicalities.
>
> But it doesn't matter when their trademark is granted. Their website went
> online in October 1995, two full years before etoys', and it's date of first
> use that's important - not the date of filing.
>
> Christmas 1997 came and went.
>
> Christmas 1998 came and went.
>
> But now it's 1999, the year of the e-tailer. Suddenly etoys.com, with an S,
> has gone public and is worth six billion dollars. Meanwhile etoy.com, without
> an S, again putting the spotlight on corporations and society, has raised
> money by "selling shares" of itself. I'm not quite sure how they did it, but
> at an artists' gathering, a half-serious, half-mocking exhibition-slash-
> fundraising they pulled in something over ten thousand dollars. (Which they
> then donated to their friends in the U.S., also working at the boundary of
> society and corporations, RTMark, best-known for their George W.  Bush parody
> site.)
>
> In the year of the e-tailer, what kind of speech scares corporations more than
> anything? Disrespect. Artists who don't play by the rules. People who don't
> understand that business is serious business.
>
> Etoys.com, with an S, wants etoy.com, with no S. They offered money. At one
> point they were offering cash and (mostly) stock that would have been worth
> almost half a million dollars. No sale.
>
> But that should give us an idea of how much they're willing to spend on 
> lawyers.
>
> Finally, in September, eToys filed a lawsuit against etoy, on the grounds 
> that
> a potential customer had mistakenly gone to the wrong site and had seen the
> message that - if they wanted to enjoy etoy.com to its fullest extent - they
> should download "the fucking flash plugin." They also didn't like the pierced
> breasts or etoy's sense of humor.
>
> To be precise, they claim that "the antisocial, obscene, and offensive images
> associated with defendants' use of the mark 'etoy,' both on the Internet and
> elsewhere, have tarnished the ETOYS® mark and the eToys brand name..."
>
> Let this be a lesson to anyone whose domain is coveted by a 
> multi-billion-dollar
> company: careful with the F-word.
>
> In October and November the case was bounced from an L.A. court to U.S. 
> District
> Court, and finally to a California State Court. In late November the judge
> refused a request to let the European artists attend the proceedings by
> teleconference. In those proceedings, the judge was told that the artists had
> engaged in "digital hijacking" (the 1996 project), and had sold shares of
> stock without being properly regulated on an official stock exchange (the 
> 1999
> fundraising exhibition). Worst of all, they were hosting illegal hardcore
> pornography (which was actually just a link to another site).
>
> They claim:
>
>       "Defendants use the mark ETOY indiscriminately and in random
>        association with unrelated concepts. For example, on the etoy web site
>        alone, defendants use the mark ETOY in conjunction with other,
>        randomly selected words to create phrases such as: 'etoy.research,'
>        'etoy.eternity,' 'etoy.timezone,' 'etoy.history,' 'etoy.servers,'
>        'etoy.strategy,' 'etoy.journeys,' 'etoy.universe,' and 'etoy.crew.'
>
>       "By using the mark ETOY in this random, indiscriminate manner,
>        defendants cause both ETOY and the ETOYS® mark to lose any
>        distinctive, signifying meaning."
>
> Serious business.
>
> The lawyers also kindly suggested that, since at least one etoy member is from
> Switzerland, they really would be more suited to a website in the .ch domain:
> etoy.ch.  Never mind the years of work and the reputation that the artists
> have built around etoy.com - we all know that "dot-com" belongs to America!
>
> Faced with a torrent of buzzwords, the judge issued a preliminary injunction
> barring etoy from: operating a website in the etoy.com domain; associating
> their domain name with the "digital hijack"; or selling their "shares" in the
> U.S.
>
> Penalty for disobeying the injuction: $10,000 per day in fines.
>
> On November 30, etoy.com shut down its Apache webserver. Its last access came
> from the eToys law firm (which has been monitoring it closely). They had no
> choice, really. In fact, when I talked with a member of etoy, he was very
> nervous about saying things which might get him in more legal trouble.
> Suddenly, the artists are afraid to speak.
>
> How can this be, when, as the Village Voice wrote in an excellent article,
> this lawsuit doesn't even pass the "giggle test"? It's absurd to think that
> one website can shut down another for having a similar domain name - when the
> second site is not a domain poacher and has been operating two years longer
> than the first.
>
> The date of the next court hearing, at which this preliminary injunction will
> surely be overturned: December 27th. How convenient! Just after the Christmas
> shopping season.
>
> If you'd like to see more about etoy, their domain is down of course, and I
> don't know of any mirrors, but their fans have constructed a site at
> toywar.com that has some information. And etoy may put some or all of its
> site back online at its IP number (not name!): 146.228.204.72:8080.
>
> Good rules have been written to prevent things like this from happening.
> Unfortunately, the rules have not taken effect yet for most domains. Even
> after they do take effect, their legal status will be uncertain until they 
> are
> tested in court.
>
> Those rules are ICANN's Domain Name Dispute Resolution Policy. This policy
> ensures that the conditions under which a domain name can be disputed are
> strictly limited. For such a dispute even to proceed, a complainant must
> assert that each of three things is true:
>
>       your domain name infringes on a trademark;
>
>       you have "no rights or legitimate interests" to your domain;
>
>       and your domain name is being used "in bad faith."
>
> As long as you're operating in good faith, or you have any legitimate 
> interest
> in your domain, there is not even cause to bring up a dispute over a domain.
> Clearly this puts etoy.com on firm ground, because regardless of the 
> trademark
> issue (which should be resolved once their mark registration is granted) they
> win on the other two points. This doesn't stop clueless judges from issuing
> injuctions, of course. But having these rules codified as official policy 
> will
> give the legal system better guidelines to operate by.
>
> These rules went into effect for some domain name registries on Wednesday, 
> but
> will not apply to the most popular registry, Network Solutions, until January.
>
> I can't even complain to eToys.com. I clicked all over their website looking
> for an email contact address and couldn't find one. When I filled in the web
> form to ask that someone get in touch with me for this story, all I got was a
> email form letter:
>
>      It is our goal to respond to all order-related e-mail within 24 
> hours. If
>      your e-mail is not order-related, we will do our best to take care of
>      your questions, concerns and suggestions as soon as possible.
>
> It's 72 hours later, so my email must not have been sufficiently 
> order-related.
>
> In the meantime, I can at least have the satisfaction of taking my order-
> related business elsewhere this holiday season. I'm sure eToys couldn't care
> less, but it will serve me as a small comfort during the remaining 22 holy
> shopping days. In a world run by retailers, e-tailers, and lawyers, I need
> everything I can get to help me make sense of the bizarre orgy of
> spirituality-soaked commerce that serves as the endcap of each year. Ho ho 
> ho.