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Copyright

Q: Domain names

Our theatre company registered a domain name to advertise its forthcoming Edinburgh show on the Internet. The name is also the copyright and trademark (but not the registered domain) of a US company. What is our position in law if our rival is not a theatre company?

A: Use of the domain name probably does not infringe any copyright, but could be problematic from the perspective of the American company's trademark rights. Obtaining a domain name registration does not in any way guarantee that your use of the name will be free from challenge pursuant to intellectual property or other laws. The real question is whether the manner in which you use the domain name infringes another person's legal rights. It is irrelevant whether or not that other person has or has not registered a domain name. Simply using a domain name, on its own, almost certainly would not amount to a copyright infringement either under UK law or US law as there is no copyright in a mere name or title. It would be directly relevant if, for example, someone wished to claim that the contents of your Web page contained copyright material (such as a script, graphic logo, sound clip, or photograph) for which you had not cleared appropriate rights.

However, trademark rights must be established separately in each country through actual use of the name in connection with business there, or by filing a trademark registration. Thus, holding rights in a US trademark does not guarantee any right to use the same mark within the UK. This is different from copyright, where a series of treaties generally guarantees protection for a copyright work around the world irrespective of where the work is created. The American company could seek to claim that you are violating a trademark right which it owns in the UK, or that by operating a generally accessible Worldwide Web page you are advertising your services in the US and thus violating its trademark rights in the US.

In similar circumstances, UK courts have been willing to entertain actions with respect to WWW sites outside of the UK. Of course the American company may not wish to mount a court challenge and may instead complain directly to the registrar of your domain name. In the case of the 'uk' top level domain this will be Nominet UK and if you are using a '.com' or '.org' domain address it will be Network Solutions, Inc. of the US. Although Nominet UK has been fairly non-interventionist in domain name disputes, Network Solutions has instituted quite controversial policies in which it threatens to suspend operation of a domain name prior to court action.

Broadly speaking, under either UK or US laws you are only liable for infringing an American company's rights in the circumstances you describe if it can establish that it has some form of prior ownership in a mark which is confusingly similar to your domain name. In assessing this, the courts of either country would take into account a number of factors such as whether or not the American company has registered its trademark rights and whether you are using the name to advertise a business similar to that of the American company's.

If the American company is engaged solely in the business of selling consumer electrical goods, it seems to me there is very little risk of actual trademark infringement. On the other hand, if your domain name is confusingly similar to a mark used in connection with a film production business then you could be on more dangerous ground. It is worth noting that certain extremely well-known marks, such as Coca-Cola, should be avoided at all costs as their owners tend to use such marks in many different lines of business throughout the world which may include entertainment services.

Certainly, if you have received any form of written complaint either from the American company or a domain name registrar, you should seek specialist legal advice immediately in order to preserve your rights.

First published May 1998