FC: Replies to MPAA nastygramming RatedNC-17.com over trademark

[Declan McCullagh <declan () well com>]

One actual trademark attorney says:
> I visited www.RatedNC-17.com, and really don't see anything that bears
> on the trademark that is in the  domain name.
> So, I would say your correspondent has a problem, and should consider
> surrendering the name

Previous Politech message:
http://www.politechbot.com/p-04815.html

-Declan

---

Subject: Re: FC: MPAA reportedly nastygrams RatedNC-17.com over trademark
        claim
From: Erick Peirson <erick () anatolius ptgamer org>
Reply-To: erick () anatolius ptgamer org
To: declan () well com
In-Reply-To: <5.2.1.1.0.20030605014419.042d6488 () mail well com>

If he's in the UK, how can the MPAA touch him with a U.S. Civil suit?

Peace.
Erick

---

From: "Powers, Jamie" <JPowers () comscore com>
To: "'declan () well com'" <declan () well com>
Cc: "'nc-17 () ratednc-17 com'" <nc-17 () ratednc-17 com>
Subject: RE: MPAA reportedly nastygrams RatedNC-17.com over trademark clai
        m
Date: Thu, 5 Jun 2003 09:32:18 -0400

Dear Declan and nc-17,

What is really troubling about the MPAA notice is its effective denial of
the existence of the first amendment and the
the concept of fair or non-trademark use of a trademark protected term.

The letter essentially wields the trademark right as if it were a more
absolute form of intellectual property, such as a patent.  In a way,
trademark rights are parasitic and dependent:  They only exist if a 'host'
supports them and should only get their market and legal recognition from
their connection and affiliation with a particular good, service, or here
with MPAA, with a function of certifying that things meet certain moving
ratings criterion.  [Another example of a certification mark is the "WOOL"
mark you see on clothes verifying they use a particular fiber.]
What is also so surprising here is the failure of the MPAA to assert the
actual scope of rights they hold.
They are threatening legal action against use of the term IN ANY FORM.
Equally intriguing is the implicit conclusion that 1) if you adopt a term
already in use by MPAA, and 2) you are not "connected" to MPAA (actually a
great verb choice there), then you must be acting in bad faith.
But what was the impetus to choose the domain?  That's the key inquiry.
And Declan, thanks for Politech, it's excellent.

Jamie Powers

---

From: "NC-17" <nc-17 () ratednc-17 com>
To: "'Powers, Jamie'" <JPowers () comscore com>, <declan () well com>,
   <steev () steev net>
Subject: RE: MPAA reportedly nastygrams RatedNC-17.com over trademark claim
Date: Thu, 5 Jun 2003 15:34:34 +0100

Declan, Steev, Jamie,

        Thank you all for your willingness to help me. Along with
ratedr.com (good faith?), ratedpg.com (bad faith? :), there is also
www.nc17shop.com, www.nc17.de, to name just two interesting links. I
understand my problem is my motivation for the domain choice, and
perhaps the fact that 'rated' is part of the name. If I went under
www.nc-17.com I might be able to get away with it, as the previous links
have, operating businesses under this trademark in a different industry.
(that site is however owned by the evil MPAA haha)

        The rules and policy to do with these domain name disputes are
found here:

http://www.icann.org/dndr/udrp/uniform-rules.htm

http://www.icann.org/dndr/udrp/policy.htm

        I, too, do not agree with their application of bad faith. From
http://www.icann.org/dndr/udrp/policy.htm#4b: I have not registered the
domain primarily for the purpose of selling or renting; nor have I done
it to prevent the owner of the trademark or service mark from reflecting
the mark in a corresponding domain name; nor have I registered the
domain name primarily for the purpose of disrupting the business of a
competitor. Last but not least:

"by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line
location, by creating a likelihood of confusion with the complainant's
mark as to the source, sponsorship, affiliation, or endorsement of your
web site or location or of a product or service on your web site or
location."

My website is not for commercial gain, so the last shouldn't apply
either. Note these 3 things are not the limiting factors to look for bad
faith however.

        In paragraph 4c, I can contest to my right and legitimate claim
in the domain name (http://www.icann.org/dndr/udrp/policy.htm#4c). I
believe I am applicable to all 3 factors, which aren't limiting for
this, notably:

i) before notice of the dispute, I was using the domain for a bona fide
offering of goods or services (blackbox styles, software). Seriously
though, I don't know how a website cannot offer
goods/services/information unless it is indeed a blank page or a "under
construction" sign with absolutely no content whatsoever.

ii) even though I have no trademark rights, I have been commonly known
under the domain name for 3 years now. Searching www.google.com for
'nc-17' or 'ratednc-17' can show this perhaps.

iii) I am indeed making noncommerical use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue.

        Now for my impetus. I admit, I have not been alive before the
registering of said trademark. I'm 19 years old, birthday in July. Now
my problems may arise... In the mid-90s, I was a Quake player (computer
game, how could you not have heard of it?! ;). Players generally give
themselves a 'handle' or name under which they are known and referred
too. I thought I was violent, terribly so, and who doesn't like copious
amounts of sex (bear with me), so I thought NC-17 would be perfectly
appropriate. It's my nickname on any irc (Internet Relay Chat) server or
Instant Messaging network. What's not in my favour is that I actually
used the MPAA's rating system for my moniker. I classed, indeed, rated
myself, as NC-17. The lengthier version of my name is RatedNC-17. Hence,
ratednc-17.com is I guess describing my persona (but not the content of
the site). Those that visit my site are looking for the information it
contains, like software and blackbox themes, not information on film
ratings, as could be shown from my site logging records. (those that
visit my site tend to check it out and download my things, rather than
leave immediately, presuming they have not found what they wanted)

        If I was operating a business at this address where I was
dealing with entertainment media, I would accept myself being in
trouble. As the email to me stated, "NC-17" is the registered trademark,
not "Rated NC-17". Plenty of other sites use the "NC-17" banner.
However, I do seem to implicity reference the MPAA's "rating" system,
which is most likely the most detrimental thing for me. Interesting how
they describe my domain name as "RatedNC-17.com", when domains are
actually all lower-case, hehe. I suppose ratedr.com could get away with
saying they are actually "Rate Dr.". I know little about these
legalities, and I appreciate all of your help. Sorry for the massive
email.

        I would also like to know about their "Please let us hear from
you by _no later than June 18, 2003_." (That within "_" is underlined).
My father said they were just trying to scare me, and I could reply to
say I have received the email, but say I will respond to the actual
enquiry in 30 days or something. I got another tip which was to not
respond as anything I say would give their lawyers something to use
(against me)!

        My gosh, I keep going, am I sorry, but please bear with me some
more... From their letter:

"It has come to our attention that you have registered the domain name
"RatedNC-17.com."  This domain name inherently refers to the MPAA rating
designations.  There appears to be no good faith reason for you to have
registered this domain name, since you have no connection to the MPAA or
its motion picture rating system.

        If you have registered the domain name in bad faith, your
actions may subject you to the loss of your domain name as well as to
civil penalties of up to $100,000 under the recently adopted
Anticybersquatting Consumer Protection Act of 1999, 15 U.S.C. ? 1125(d).
If you actually operate a website which offers any goods, services, or
information, your actions will constitute trademark infringement and/or
dilution under the Trademark Act of 1946, 15 U.S.C. ? 1051 et. seq."

        I still don't see how the first completely sums up my lack of
good faith as explained at the start of this email.
        As for the $100,000 fine, under the Anticybersquatting Consumer
Protection Act of 1999 - I'm not squatting, haha, is that enough?
        And, finally, other websites are operating and offering
goods/services/info under NC-17, www.netc-17.com, for instance. But like
www.nc17shop.com, www.nc-17.de they are not offering anything to do with
films or their ratings, instead skate(board) and bike parts, etc. That's
ok right? Because that's like me... And I'm even non-profit.

        Ok, ok, enough from me for now. Again, thanks!

Laurence

---

From: "L. Gallegos"
To: declan () well com
Date: Thu, 05 Jun 2003 07:31:59 -0400
MIME-Version: 1.0
Subject: OMITEMAIL TRe: FC: MPAA reportedly nastygrams RatedNC-17.com over 
trademark claim

Declan,

This person needs an attorney.  It doesn't take much for the UDRP (WIPO
especially) to order the name transferred simply because it exactly matches 
a TM.  It
doesn't really matter much to them if the use is strictly non-commercial.

It would be pretty hard to get it into  US court, though, IMO if the 
registrant doesn't
reside in the US unless the registrar he used is based in the US.  I'm no 
attorney,
but am I wrong in saying that if the TM is a US federal mark, it would not 
cover this
guy's blog in Europe or come under ACPA?  It's all soooo confusing these 
days.  I
surely don't see how a US TM that is for a US rating system would have any 
effect
on residents of any other country, especially a blog site.  That's just my 
two cents
though.

Leah

---

Date: Thu, 05 Jun 2003 05:26:18 -0500
Subject: Re: FC: MPAA reportedly nastygrams RatedNC-17.com over trademark
        claim
From: jamie rishaw <jamie () arpa com>
To: Declan McCullagh <declan () well com>
Message-ID: <BB0484FA.B3F9%jamie () arpa com>

Declan,

  IANAL but "NC-17" albeit trademarked would be fair use in this guy's case.

  Trademark law would be really close, since the trademark "rated nc-17" was
filed on April 5, 2000, and the domain "ratednc-17.com" was created on June
15, 2000 (but not published until June, 2002).

  Check out www.chillingeffects.org - they have a lot of good info up,
especially about when receiving nastygrams from corps.

~~jamie

---

Date: Thu,  5 Jun 2003 06:33:00 -0500
From: [deleted, from a longtime subscriber]
Subject: CONFIDENTIAL: NC-17
To: declan () well com

Declan:

I have no dog in this fight, but just wanted to fill in some background I
remember.  Please take my name/E-mail off if you distribute this.  It may
be way too long and off-topic anyway.  :)

------

On 6/5/03 at 1:56 AM, Declan McCullagh <declan () well com> wrote:

>     As you may know, the Motion Picture Association of America, Inc.
>     ("MPAA") has administered its well-known system for rating motion
>     pictures for over thirty years.  MPAA owns all trademark rights
>     in the rating symbols and designations with that system.  As you
>     must be aware, one of the rating designations in the system is
>     NC-17.
>
>     MPAA owns Federal certification mark registrations for the NC-17
>     designation.  Specifically, MPAA owns U.S. Trademark Registration
>     No. 1,661,271 for its certification mark NC-17, which
>     registration is in full force and effect and is incontestable.
>     The certification mark NC-17 is widely known and famous
>     throughout the United States as designating motion pictures rated
>     by MPAA.

If memory serves, the trademark was the _entire_ reason for creating the
NC-17 rating.  Siskel and Ebert, in particular, argued for years for an
"A" rating that would allow studios to make and release adult-themed
movies without tainting them with the porn aura of an "X" rating. The MPAA
had neglected to trademark the "X" rating, and so porn producers started
self-labeling all their movies with it to imply they were really really
adult stuff.  That's what bred "XX" and "XXX" ratings, which the MPAA
never used.

<http://www.localmovies.com/mpaa.html>

Siskel & Ebert campaigned for an "A" rating for "Adult", and that became
the more easily-trademarked "NC-17", for "no children under 17."  Alas,
while Siskel & Ebert envisioned a way to get non-bowdlerized adult movies
into American theaters, the result was too predictable: the national
theater chains generally refuse to carry NC-17 movies, the studios refuse
to release them, and some films are even released without ratings to avoid
the killer NC-17 label and to avoid the cuts necessary for the "R" rating.
Viacom's Blockbuster chain will not stock NC-17 movies for sale or rent,
nor will it carry "A"-rated (adult only) video games, but it does stock
unrated films.

<http://www.ukcritic.com/4siskel.html>
<http://ainews.com/Archives/Story1957.phtml>
<http://www.daily-reviews.com/r/tgrequiem.htm>
<http://www.blockbuster.com/bb/article/details/0,7413,ART-480%5ENT-ABT%
5EPV-10252002,00.html>

It should be noted, however, that the National Association of Theatre
Owners, "representing 22 of the largest 25 theatre companies in the United
States," denies that any of the "big theater chains" has "any policy to
ban the exhibition of NC-17 films," and said last year that the group is
working towards greater acceptance of NC-17 ratings in theaters and
advertising.

<http://www.infocusmag.com/.%5C02June%5Cprezdesk.asp>

Still, here in the great heartland, I can't remember ever seeing an NC-17
movie even running at any of the local megaplexes, and independent
theaters are few and far between.  Paramount and Warner Bros. (co-owners
of Comedy Central at the time) repeatedly sent "South Park: Bigger,
Longer, and Uncut" back to the cutting room after the MPAA repeatedly gave
it an NC-17 rating the studios obviously considered unacceptable for a
purely adult cartoon.

<http://www.dallasobserver.com/issues/1999-07-01/film2.html>

So although the rating is still nearly the same commercial poison as an
"X" rating, it is highly protected by the MPAA to keep people from
labeling their own films "NC-17," a mark that many understand to mean
"sophisticated but not smutty."  I would have been shocked had they not
defended this mark.

>     It has come to our attention that you have registered the domain
>     name "RatedNC-17.com."  This domain name inherently refers to the
>     MPAA rating designations.  There appears to be no good faith
>     reason for you to have registered this domain name, since you
>     have no connection to the MPAA or its motion picture rating
>     system.

In fact, the MPAA already has <http://rated-nc17.com/> registered and
running, and apparently has for years (note the placement of the hyphen
compared to the disputed domain, ratednc-17.com). According to NSI, the
domain rated-nc17.com was registered to MPAA on 24-Mar-2000 and hasn't
been updated since 31-Jan-2003.  The disputed domain, ratednc-17.com, was
created three months later, on 15-Jun-2000.

They're not just continuing to defend a trademark; they're going after a
URL very similar to one they've had in use for over three years, that was
created before the disputed one, and that fairly clearly contains the
"NC-17" trademark that the MPAA considers to be a very, very big deal.
It's also well-known that US trademark law requires companies to defend
unlicensed use of trademarks or risk losing the mark, as happened to
one-time-trademarks aspirin, nylon, yo-yo, thermos, and even "milk of
magnesia."  A self-applicable NC-17 rating would defeat the point of
having the thing at all instead of "X".

<http://www.quicken.com/cms/viewers/article/small_business/40191>

I'm not meaning too much to touch on free speech issues, whether using a
trademark in a non-movie context is any kind of infringement, whether
using a trademark in a domain name as parody or commentary is an issue (at
least she didn't register "nc-17sucks.com"), or any of that.  I just
wanted to point out that it's a real trademark, that they defend it
because having it trademarked was the only reason to create it, that
there's no point in the rating if they lose the trademark, and that MPAA
already owned a very similar domain name months before the disputed one
was registered.

Whether the demand is fair or good is beyond my purview right now, but I
think it's certainly understandable.




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