Harvard as a model in trademark and domain name protection.I. INTRODUCTION
1. Of, relating to, or held to resemble a college.
2. Of, for, or typical of college students.
3. Of or relating to a collegiate church. licensing has developed into a booming industry (1) since the advent of such programs in the early- to mid-1980s. (2) Colleges and universities learned that their names, logos, and designs, which are the "basic protectable items of commercial value that fans identify with," (3) are some of their greatest assets. (4) Efforts to establish and protect these "marketable property rights in licensed merchandise" (5) known as trademarks expanded with the explosion of retail sales. (6)
As is true with the collegiate licensing industry, the Internet has experienced tremendous financial growth in recent years. (7) Consequently, domain names, which were once viewed solely as identifiers on the Internet, (8) underwent a transformation in economic importance (9) similar to that of university trademarks. Colleges and universities, like other entities, realized that domain names possess many of the qualities of conventional trademarks, and that they can be used to deceive TO DECEIVE. To induce another either by words or actions, to take that for true which is not so. Wolff, Inst. Nat. Sec. 356. consumers. (10)
Since that time, institutions of higher education higher education
Study beyond the level of secondary education. Institutions of higher education include not only colleges and universities but also professional schools in such fields as law, theology, medicine, business, music, and art. have taken steps to protect their names and logos. First, many have registered, and are continuing to register, "domain names that are identical to, or confusingly similar confusingly similar adj. in the law of trade marks, when a trade mark, logo or business name is so close to that of a pre-existing trade mark, logo or name that the public might mis-identify the new one with the old trade mark, logo or name. to, their trademarks to minimize instances of trademark infringement Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). ." (11) They also have resorted to litigation An action brought in court to enforce a particular right. The act or process of bringing a lawsuit in and of itself; a judicial contest; any dispute.
When a person begins a civil lawsuit, the person enters into a process called litigation. , bringing claims for trademark infringement, trademark dilution Trademark dilution is a trademark law concept forbidding the use of a famous trademark in a way that would lessen its uniqueness. In most cases, trademark dilution involves an unauthorized use of another's trademark on products that do not compete with, and have little connection , and unfair competition under the federal Lanham Act The Lanham Act of 1946, also known as the Trademark Act (15 U.S.C.A. § 1051 et seq., ch. 540, 60 Stat. 427 [1988 & Supp. V 1993]), is a federal statute that regulates the use of Trademarks in commercial activity. , numerous state statutes, and common law. (12) In addition, some have sued under the Anti-Cybersquatting Consumer Protection Act, which was enacted as part of the Intellectual Property and Communications Omnibus omnibus: see bus. Reform Act of 1999. (13) Finally, many colleges and universities are establishing and expanding their monitoring programs. (14)
This Note will examine Harvard University's ("Harvard," "the University," "the school") numerous methods to safeguard its trademarks, including domain names, on the Internet. Harvard is used as a paradigm because, besides serving as a leader in academia and research, it is on the forefront of trademark protection on the Internet. It recently brought several lawsuits to safeguard its marks, and it also reworked its policies to strengthen its protective measures. Higher education administrators of other educational institutions, intellectual property attorneys, and legal scholars have much to gain from studying Harvard's approaches.
A. Purposes of Trademarks
Trademarks are "word[s], name[s], symbol[s], or device[s], or any combination thereof" adopted and used by manufacturers or merchants to "identify and distinguish" their goods from "those manufactured or sold by others." (15) Currently, trademarks fulfill several important functions. (16) First, given that they differentiate products and services among merchants, (17) trademarks help protect their owners' "investment of time, energy[,] and money." (18) They also indicate that all goods and services In economics, economic output is divided into physical goods and intangible services. Consumption of goods and services is assumed to produce utility (unless the "good" is a "bad"). It is often used when referring to a Goods and Services Tax. on which they appear originate from a single source and are of comparable quality. (19) Consequently, trademarks eliminate consumer confusion and prevent loss of customers because they guarantee that purchasers will receive the goods or services they want when they choose ones bearing particular trademarks. (20) Finally, trademarks are powerful marketing tools. (21) Justice Frankfurter, noting this effectiveness in advertising, once remarked that:
[t]he protection of trade-marks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. (22)
B. Common Law Protection of Trademarks in the United States United States, officially United States of America, republic (2005 est. pop. 295,734,000), 3,539,227 sq mi (9,166,598 sq km), North America. The United States is the world's third largest country in population and the fourth largest country in area.
Regardless of whether names are registered, the common law provides trademark owners with a cause of action for unfair competition. (23) Owners must prove that they alone are entitled en·ti·tle
tr.v. en·ti·tled, en·ti·tling, en·ti·tles
1. To give a name or title to.
2. To furnish with a right or claim to something: to use the marks, and that the defendant's use of identical or resembling marks led to consumer confusion about the products' or services' origin. (24)
C. Statutory Protection of Trademarks in the United States
Federal and state statutory protection of trademarks developed from the common law. (25) The Trademark Act of 1946, which was amended in 1988 and is often known as the Lanham Act, governs federal trademark law. (26) To receive protection of their "exclusive rights to use" a mark nationwide against subsequent users of the mark for related products or services, (27) trademark owners must federally register their marks with the United States Patent and Trademark Office The United States Patent and Trademark Office (PTO or USPTO) is an agency in the United States Department of Commerce that provides patent protection to inventors and businesses for their inventions, and trademark registration for product and intellectual property ("USPTO USPTO
United States Patent and Trademark Office "). (28) The USPTO will permit registration only if owners prove their marks' distinctiveness, (29) or their "'capacity ... to distinguish a product or service which emanates from one source, from products or services emanating from other sources.'" (30)
The Lanham Act affords several causes of action. For instance, once owners of unregistered marks establish an independent basis for a federal court to hear their case by demonstrating that alleged misconduct MISCONDUCT. Unlawful behaviour by a person entrusted in any degree: with the administration of justice, by which the rights of the parties and the justice of the, case may have been affected.
2. occurred in or affected interstate commerce interstate commerce
In the U.S., any commercial transaction or traffic that crosses state boundaries or that involves more than one state. Government regulation of interstate commerce is founded on the commerce clause of the Constitution (Article I, section 8), which , they may sue for unfair competition on any or all of the following bases under section 43(a) of the Lanham Act: false designation of origin, false advertising, and disparagement In old English Law, an injury resulting from the comparison of a person or thing with an individual or thing of inferior quality; to discredit oneself by marriage below one's class. . (31) To prevail, plaintiffs must prove: "(1) nonfunctionality; (2) secondary meaning, (3) prior use; and (4) likelihood of consumer confusion." (32)
Section 32 of the Lanham Act, on the other hand, provides owners of registered trademarks with a cause of action for trademark infringement. (33) Trademark infringement is:
the reproduction, counterfeiting, copying or imitation in commerce of a registered mark "in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive" without consent of the registrant. (34)
A claim for trademark infringement requires proof of priority of use, "as with all claims asserted under the Act." (35) In essence, the court first must consider whether "the plaintiff ha[s] a protected right in the mark." (36) If the court does conclude that the Lanham Act entitles the owner to trademark protection, it must then decide whether a likelihood of confusion results from the defendant's application of the mark. (37)
The Federal Trademark Dilution Act The Federal Trademark Dilution Act of 1995 is a United States federal law which protects famous trademarks from uses that dilute their distinctiveness, even in the absence of any likelihood of confusion or competition. It went into effect on January 16, 1996. of 1995 ("FTDA FTDA France Terre d'Asile (French)
FTDA Federal Trademark Dilution Act of 1995
FTDA Flight Trials Dedicated Area
FTDA Florist's Transworld Delivery Association
FTDA Future Truck Drivers of America ") "amends AMENDS. A satisfaction, given by a wrong doer to the party injured for a wrong committed. 1 Lilly's Reg. 81.
2. By statute 24 Geo. II. c. 44, in England, and by similar statutes in some of the United States, justices of the peace, upon being notified of an the Lanham Act" to provide a cause of action for owners who believe that another's conduct harms their own famous marks. (38) Its additional provision, section 43(c), (39) offers a claim for dilution, which is "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of presence or absence of: (1) competition between the owner of the famous mark and other parties; or (2) likelihood of confusion, mistake or deception." (40)
D. Case Law Protecting Universities' Trademarks
Courts first recognized colleges and universities' "protectable interest in their names and insignia in·sig·ni·a also in·sig·ne
n. pl. insignia or in·sig·ni·as
1. A badge of office, rank, membership, or nationality; an emblem.
2. A distinguishing sign. " (41) in 1930. (42) In Trustees of Columbia Univ. v. Axenfeld, the New York Supreme Court For the highest appellate court in New York, see .
The Supreme Court of the State of New York is New York State's highest trial court, and is of general jurisdiction. There is a supreme court in each of New York State's 62 counties, although some of the smaller counties share concluded that the defendants called their educational service "Columbia Educational Institute" to intentionally in·ten·tion·al
1. Done deliberately; intended: an intentional slight. See Synonyms at voluntary.
2. Having to do with intention. lead the public to believe that it was the same as, or affiliated with, Columbia University Columbia University, mainly in New York City; founded 1754 as King's College by grant of King George II; first college in New York City, fifth oldest in the United States; one of the eight Ivy League institutions. . (43) Stating that the defendants could not adopt "[the] great name and standing among the educational institutions of the country" that Columbia had acquired, the court granted injunctive relief injunctive relief n. a court-ordered act or prohibition against an act or condition which has been requested, and sometimes granted, in a petition to the court for an injunction. to the University. (44)
Similarly, in Cornell Univ. v. Messing Bakeries, the New York Supreme Court, Appellate Division The New York Supreme Court, Appellate Division is the intermediate appellate court in New York State. The Appellate Division hears appeals from the New York Supreme Court, which is the state's general trial court; decisions by the Appellate Division may be appealed to the state's , explained that an educational institution that has invested a great deal of time, effort, and money to earn public praise "ought not, against its will, have the prestige diluted di·lute
tr.v. di·lut·ed, di·lut·ing, di·lutes
1. To make thinner or less concentrated by adding a liquid such as water.
2. To lessen the force, strength, purity, or brilliance of, especially by admixture. by a commercial use of its name, suggesting connection or benefit to the institution from the enterprise." (45) The court upheld a finding that a baker who relied on a recipe developed by a Cornell University Cornell University, mainly at Ithaca, N.Y.; with land-grant, state, and private support; coeducational; chartered 1865, opened 1868. It was named for Ezra Cornell, who donated $500,000 and a tract of land. With the help of state senator Andrew D. professor to make bread, which he later marketed as "Cornell Recipe Bread," negatively impacted the University's rights. (46) The court ultimately ruled that the defendant could not use the name "Cornell" without permission from Cornell University. (47)
Since Axenfeld and Messing Bakeries, the issue of colleges' and universities' rights in their marks has arisen in different contexts. Although specific holdings vary, the courts have consistently reaffirmed the basic principle established in those two landmark cases landmark case Law & medicine A civil or, far less commonly, criminal action that has had an impact on a particular area of medicine. . (48)
E. The Anti-Cybersquatting Consumer Protection Act
Before Congress enacted the Anti-Cybersquatting Consumer Protection Act ("ACPA ACPA American Chronic Pain Association
ACPA American College Personnel Association
ACPA Anticybersquatting Consumer Protection Act
ACPA American Concrete Pavement Association
ACPA American Cleft Palate-Craniofacial Association
ACPA American Concrete Pipe Association "), owners of famous marks had few tools at their disposal with which to successfully battle cybersquatters. (49) Trademark owners could prevent deceitful uses, but could do little to stop the "hold-up" if the cybersquatter was not using the domain name currently, or if he used it for an obviously different good or service. (50) Some owners sued for unfair competition, trademark infringement, and/or trademark dilution, and prevailed, only to find themselves left with tremendous litigation bills and the "partially inadequate" (51) remedy of an injunction. (52) Others took what they deemed the more economically sound approach to procure To cause something to happen; to find and obtain something or someone.
Procure refers to commencing a proceeding; bringing about a result; persuading, inducing, or causing a person to do a particular act; obtaining possession or control over an item; or making a person domain names that embodied em·bod·y
tr.v. em·bod·ied, em·bod·y·ing, em·bod·ies
1. To give a bodily form to; incarnate.
2. To represent in bodily or material form: their marks and "'pa[id] off'" the cybersquatters. (53)
The ACPA provided trademark owners with new ammunition by offering a powerful way to frustrate cybersquatters, who harm "American consumers, businesses and the future of electronic commerce." (54) The ACPA amended the Lanham Act to hold liable any individual who "has a bad faith intent to profit from [an owner's] mark" and who "registers, traffics in, or uses a domain name that," at the time it is registered, is "identical or confusingly similar to [a distinctive] mark," is "identical or confusingly similar to or dilutive of [a famous] mark," or is "a trademark, word, or name protected [under] section 706 of title 18, United States Code Noun 1. United States Code - a consolidation and codification by subject matter of the general and permanent laws of the United States; is prepared and published by a unit of the United States House of Representatives
U. S. , or section 220506 of title 36, United States Code." (55)
The trademark owner, through federal registration or by common law, may seek a court order requiring the cyberpirate to abandon, cancel, or transfer the domain name. (56) He or she might also be entitled to statutory damages Statutory damages are pre-established damages for cases where calculating a correct sum is deemed difficult.
In intellectual property cases (relating to copyright or trademark, for instance), it is often difficult for plaintiffs to determine the exact volume of infringement. ranging from $1,000 to $100,000 per domain name or actual damages Noun 1. actual damages - (law) compensation for losses that can readily be proven to have occurred and for which the injured party has the right to be compensated
compensatory damages, general damages . (57) Although the act is retroactive Having reference to things that happened in the past, prior to the occurrence of the act in question.
A retroactive or retrospective law is one that takes away or impairs vested rights acquired under existing laws, creates new obligations, imposes new duties, or attaches a , plaintiffs will not be granted such damage awards for cyberpiracy that occurred prior to November 29, 1999, the date the bill was enacted. (58)
III. RECENT LITIGATION
A. President and Fellows of Harvard College The President and Fellows of Harvard College (also known as the Harvard Corporation) is the more fundamental of Harvard University's two governing boards. (The other is the Harvard Board of Overseers. v. Rhys
One university that has made good use of the ACPA is Harvard. The school sued Michael Rys d/b/a/ Web-Pro and Michael Douglas d/b/a Web Productions ("Rhys" or "the defendant"), who turned out to be the same individual, (59) for cyberpiracy one week after the ACPA's enactment. (60) The complaint, which was filed on December 6, 1999 in the United States District Court for the District of Massachusetts The United States District Court for the District of Massachusetts is the Federal district court whose jurisdiction is the Commonwealth of Massachusetts. The first court session was held in Boston in 1789. , (61) alleged trademark dilution, trademark infringement, cyberpiracy, unfair competition, and related state law violations. (62) Harvard sought preliminary and permanent injunctions permanent injunction n. a final order of a court that a person or entity refrain from certain activities permanently or take certain actions (usually to correct a nuisance) until completed. , an accounting of profits earned from the infringing and diluting activities, and destruction of all infringing and diluting goods. (63)
The University claimed that it had invested vast amounts of money "to extensively promot[e] and advertis[e] its goods and services" using the "Harvard" and "Radcliffe" marks ("Harvard's marks"), (64) which now were "assets of incalculable in·cal·cu·la·ble
a. Impossible to calculate: a mass of incalculable figures.
b. Too great to be calculated or reckoned: incalculable wealth. value to Harvard." (65) Harvard claimed that, because of such expansive marketing efforts and its long and renowned history, "the ['Harvard'] mark had become famous and the ['Radcliffe'] mark distinctive and well known," long before the defendants' conduct. (66)
Harvard claimed that, on October 5, 1999, Rhys offered Harvard via e-mail the "'first right of refusal'" for domain names before he tried to sell them to the public. (67) According to according to
1. As stated or indicated by; on the authority of: according to historians.
2. In keeping with: according to instructions.
3. Harvard, it sent a cease and desist Cease and desist (also called C & D) is a legal term used primarily in the United States which essentially means "to halt" or "to end" an action ("cease") and to refrain from doing it again in the future ("desist"). letter to Rhys, demanding that he "instruct NSI See Network Solutions.
NSI - Network Solutions, Inc. [Network Solutions, Inc.] to terminate the domain name registrations." (68) Harvard alleged that, although it had asked him to respond in writing by November 22, 1999, Rhys had not replied as of the date it filed its complaint. (69)
The school maintained that the defendant had constructive notice constructive notice n. a fiction that a person got notice even though actual notice was not personally delivered to him/her. The law may provide that a public notice put on the courthouse bulletin board is a substitute for actual notice. of its ownership of Harvard's marks when he "adopt[ed], register[ed], maintain[ed], and offer[ed] to sell or license" without permission (70) sixty-five domain names incorporating the marks, (71) such as www.harvard-lawschool.com and www.radcliffcollege.com; (72) the marks' registration certificates served as "prima facie evidence prima facie evidence
Evidence that would, if uncontested, establish a fact or raise a presumption of a fact. of ... [its] exclusive right to use [the] marks in commerce" in association with the stipulated commodities or services. (73) Rhys, Harvard argued, had hoped to financially benefit from its reputation and to confuse purchasers. (74)
Specifically, Harvard asserted that Rhys's unauthorized activities in interstate commerce "lessened and diluted and will continue to lessen and dilute di·lute
To reduce a solution or mixture in concentration, quality, strength, or purity, as by adding water.
Thinned or weakened by diluting. , the distinctive quality of [its] famous ['Harvard'] mark." (75) Harvard claimed that Rhys infringed upon its rights as well because consumers could mistake his products and services as being affiliated with Harvard. (76) Also, this likelihood of consumer confusion and the defendant's "use of a false designation of origin or a false or misleading representation" (77) were the basis for a section 43(a) claim. (78) Finally, given his "bad faith intent to profit from Harvard's ... marks" (79) and the "confusing similar[ity]" between his marks and its marks, (80) Harvard alleged that Rhys committed cyberpiracy. (81)
A consent judgement was issued on March 14, 2000. (82) The court required Rhys, inter alia [Latin, Among other things.] A phrase used in Pleading to designate that a particular statute set out therein is only a part of the statute that is relevant to the facts of the lawsuit and not the entire statute. , to remove all references to Harvard's marks from his web sites, to immediately cancel the registrations of the infringing and diluting domain names, to supply lists of domain names containing Harvard's marks which he registered, regardless of whether he currently owned them, and to turn over all materials which contained Harvard's marks and which he possessed or controlled. (83) Thus, one of the first parties to bring a lawsuit under the ACPA prevailed.
B. President and Fellows of Harvard College v. Eschool, Inc.
Almost as soon as its dispute with Rhys ended, Harvard engaged in another domain name battle, this time with Eschool, Inc. d/b/a notHarvard.com. (84) Eschool ("Eschool," "the company," or "the defendant"), a company based in Austin, Texas, (85) supplied educational courses and programs called "'online universities'" to private corporations. (86) The corporations then used these classes, which covered subjects related to their goods or services, to attract online customers to their products. (87) It used the name "notHarvard.com" in association with these "'online universities'" without Harvard's permission. (88)
It all began when Eschool failed to secure federal registration for its trademark and domain name: much to the company's dismay, the USPTO determined that consumers would likely confuse "notHarvard.com" with "Harvard" because the marks and the entities' services were so similar. (89) Eschool predicted that Harvard would bring suit, as did others. (90)
On July 27, 2000, over four months after the trademark examiner A trademark examiner is an attorney employed by a government entity such as the United States Patent and Trademark Office to determine whether an applicant should be permitted to receive a trademark registration, thus affording legal protection to the applicant's trademark. mailed the rejection, (91) the company filed a complaint in the United States District Court for the Western District of Texas The United States District Court For the Western District Of Texas (W.D.Tex) is the Federal district court whose jurisdiction consists of the counties in the western part of the state of Texas. This district covers over 92,000 square miles and seven divisions. (92) as a preventive measure, seeking a declaratory DECLARATORY. Something which explains, or ascertains what before was uncertain or doubtful; as a declaratory statute, which is one passed to put an end to a doubt as to what the law is, and which declares what it is, and what it has been. 1 Bl. Com. 86. judgement that the use of its name did not infringe in·fringe
v. in·fringed, in·fring·ing, in·fring·es
1. To transgress or exceed the limits of; violate: infringe a contract; infringe a patent.
2. Harvard's mark. (93) Judith Bitterli, Eschool's CEO (1) (Chief Executive Officer) The highest individual in command of an organization. Typically the president of the company, the CEO reports to the Chairman of the Board. at the time, is quoted as saying, "[w]e believe that it is prudent for us to assure that no trademark issues will arise later, as our company and its brand becomes more established. Because it appears Harvard may be evaluating trademark issues, we are taking steps to resolve these matters now, not later." (94) Some viewed the suit as a "preemptive pre·emp·tive or pre-emp·tive
1. Of, relating to, or characteristic of preemption.
2. Having or granted by the right of preemption.
a. legal strike aimed at staking the jurisdiction of the conflict in Texas rather than Massachusetts, where a judge presumably pre·sum·a·ble
That can be presumed or taken for granted; reasonable as a supposition: presumable causes of the disaster. would be more sympathetic to Harvard." (95)
Harvard then sued Eschool on July 31, 2000 in the United States District Court for the District of Massachusetts. (96) Alleging trademark infringement, trademark dilution, false designation of origin, unfair competition and cyperpiracy, (97) Harvard requested preliminary and permanent injunctive relief, as well as damages. (98)
In its complaint, Harvard pointed out that its registrations of the "Harvard" mark with many goods and services, including "education, ... publishing, research, health care, business management, investments, real estate, legal services legal services n. the work performed by a lawyer for a client. , and various items of merchandise," (99) served as "constructive notice to Eschool of Harvard's claim of ownership of the ['Harvard'] mark" for use in these arenas. (100) Despite this constructive notice, Harvard alleged that Eschool chose "notHarvard and notHarvard.com" as names for its business in an effort "to trade on the image" (101) of excellence and "substantial goodwill" (102) that the "Harvard" mark has earned worldwide from its "inherent distinctiveness," from hundreds of years of widespread use, and from the school's expensive marketing campaigns. (103)
To support a finding of likelihood of confusion and prevail on its trademark infringement claim, Harvard asserted that the "Harvard" mark was famous and thus "extremely strong" (104) and that this mark and the "notHarvard" mark were basically identical, except for the word "not," which is generic and does not distinguish them. (105)
Harvard raised some interesting points about the appearance of "notHarvard" on its web site as well. The school argued that Eschool accentuated the "Harvard" mark embodied in "notHarvard" by capitalizing the letter H in "notHarvard," but leaving the letter n of the generic word "not," in lowercase. (106) Harvard's papers also stated that Eschool attracted people's attention to the "Harvard" segment of "notHarvard" by presenting "'not' in red and 'Harvard' in black," (107) which is a "darker color." (108)
The University also argued the similarity of Eschool's and its own services, given that both were educational in nature. Furthermore, it asserted that "the channels of trade," marketing, and potential clientele were similar, as evidenced by Harvard's use of a detailed web page at "www.harvard.edu" and by the common goal of attracting individuals concerned about online instructional services. (109)
Harvard continued that, as the USPTO had concluded when it denied Eschool's registrations, the public may incorrectly believe that "notHarvard" was affiliated with Harvard. (110) For example, viewers may believe that "notHarvard" was an off-campus extension school or correspondence program of the University. Harvard also argued that use of the "notHarvard.com" name caused Internet users Internet user n → internauta m/f
Internet user Internet n → internaute m/f to "mistakenly go to Eschool's web site" when they intended to go to that of Harvard. (111)
Eschool attacked Harvard's trademark infringement claim by addressing each of the factors that a court may consider when it determines whether a lack of confusion exists. (112) For instance, Eschool distinguished its services, which consisted of organizing "web site learning centers" as part of companies' promotional strategies, from Harvard's, which was "'providing instruction and training at the undergraduate, graduate, post-graduate and professional levels.'" (113) Eschool stated that it "d[id] not offer any online or distance learning courses using the notHarvard.com name." (114) Moreover, it "[wa]s not an academic institution and d[id] not offer any courses accredited accredited
recognition by an appropriate authority that the performance of a particular institution has satisfied a prestated set of criteria.
cattle herds which have achieved a low level of reactors to, e.g. by any academic institution." (115)
Eschool stressed other differences as well. It emphasized the dissimilarity of channels of trade, stating that it offered "services through the web sites of client-companies over the Internet," while Harvard offered services to students in Cambridge, Massachusetts This article is about the city of Cambridge in Massachusetts. For the English university town, see Cambridge, England. For other places, see Cambridge (disambiguation).
Cambridge, Massachusetts is a city in the Greater Boston area of Massachusetts, United States. . (116) According to Eschool, there was an advertising distinction as well; Eschool used its web site as its main advertising outlet, as opposed to Harvard, which employed various advertising techniques. (117) Eschool also argued that the "Harvard" mark was strong in the educational arena, not in "business to business e-commerce, the business of [Eschool], or in numerous other economic sectors." (118)
Eschool also contrasted its customers, which are businesses that try to sell goods or services online, with those of Harvard, who were students seeking admission to its various schools. (119) Eschool argued that Harvard's clientele ordinarily were extremely bright and would recognize at once that "notHarvard.com" differed from "Harvard." (120) It pointed out that "even if these students were to input the name 'Harvard' into five of the most common search engines, they would not pull up a 'hit' on notHarvard.com." (121)
Moreover, the company asserted that it "registered and used the domain name "notHarvard.com" in good faith, with the belief that its use of the name would not be illegal." (122) According to Eschool, it selected this name "because it wanted to highlight its business model as a business to business solution, not as an academic solution." (123) While Harvard had gained recognition as a premier educational institution, Eschool hoped to gain recognition as a business that offered customers "opportunities to buy merchandise in the context of a learning experience." (124) As further evidence of good faith, Eschool stated that it never "offered to sell, transfer[,] or assign any domain names to Harvard or to anyone else." (125)
Eschool also reminded the court that, although it had used the "notHarvard.com" name for more than a year, "'Harvard ha[d] not yet uncovered any direct evidence of actual confusion caused by Eschool's use of the notHarvard name.'" (126) The lack of direct evidence of actual confusion, Eschool argued, further bolstered its argument that there was no likelihood of confusion. (127) Without likelihood of confusion, there could be no trademark infringement. (128)
Regardless of whether a likelihood of confusion occurred, (129) Harvard claimed, the "notHarvard" name diluted Harvard's famous mark. (130) It alleged that Eschool's mark "cheapen cheap·en
v. cheap·ened, cheap·en·ing, cheap·ens
1. To make cheap or cheaper.
2. [ed] and tarnish tarnish,
n 1. surface discoloration or loss of luster by metals. Under oral conditions, it often results from hard and soft deposits.
2. a chemical process by which a metal surface is discolored or its luster destroyed. [ed]" its mark (131) because whenever customers came across "notHarvard," they instantly associated the "Harvard" mark, which symbolizes the "charitable non-profit corporation" (132) that operates the renowned "teaching, learning and research institution" (133) of Harvard University Harvard University, mainly at Cambridge, Mass., including Harvard College, the oldest American college. Harvard College
Harvard College, originally for men, was founded in 1636 with a grant from the General Court of the Massachusetts Bay Colony. , with Eschool's "for-profit" business. (134)
Moreover, Harvard believed that people eventually would think of both Eschool's and its services when they saw "Harvard"; thus, Eschool's use of the "notHarvard" name would cause "a secondary mental association that blur blur (blur) indistinctness, clouding, or fogging.
spectacle blur the indistinct vision with spectacles occurring after removal of contact lenses, especially non–gas-permeable lenses; it is [red] ... Harvard['s] mark." (135) Harvard correctly argued that Eschool's website disclaimer, which stated that "'notHarvard.com by definition is NOT Harvard and is in no way associated with Harvard University,'" (136) was immaterial Not essential or necessary; not important or pertinent; not decisive; of no substantial consequence; without weight; of no material significance.
immaterial adj. to the dilution claim, given that likelihood of confusion is not a necessary element of dilution. (137)
Eschool asserted that Harvard lacked a claim under the FTDA for several reasons. (138) First, Eschool maintained that Harvard could not demonstrate that the "Harvard" mark was "'distinctive and famous'" under the statute. (139) To support its contention, Eschool pointed to a case involving another member of the Ivy League Ivy League
Group of eight universities in the northeastern U.S., high in academic and social prestige, that are members of an athletic conference for intercollegiate gridiron football dating to the 1870s. . (140) Trustees of Columbia Univ. v. Columbia/HICA Healthcare Corp. held that Columbia did not have a dilution claim because, in part, "'any acquired distinctiveness of [its] mark in connection with medical or healthcare services ha[d] been seriously undermined by third party use of the same or similar marks within New York New York, state, United States
New York, Middle Atlantic state of the United States. It is bordered by Vermont, Massachusetts, Connecticut, and the Atlantic Ocean (E), New Jersey and Pennsylvania (S), Lakes Erie and Ontario and the Canadian province of and across the United States.'" (141) Eschool, drawing an analogy between this case and Harvard's, introduced an affidavit affidavit
Written statement made voluntarily, confirmed by the oath or affirmation of the party making it, and signed before an officer empowered to administer such oaths. stating that hundreds of American corporations' names' contain "Harvard," and that many trademark registrations include "Harvard" but are unaffiliated with Harvard University. (142) Thus, the start-up company start-up company
A new business. argued that the applicability of Columbia/HICA Healthcare Corp. holding that third party use of identical or similar marks "seriously undermined" the "Harvard" mark's acquired distinctiveness. (143)
The defendant also argued that Harvard could not meet the "substantial similarity" element of such a cause of action for dilution. (144) Eschool claimed that certain features of its "notHarvard.com" mark, such as the word "not" boldly featured in red and the ".com" ending, sufficiently distinguished it from Harvard's. (145)
Finally, the company claimed that Harvard's dilution claim lacked merit because the school could not establish either type of dilution. (146) For instance, Eschool argued that Harvard presented no evidence to show dilution by blurring, namely, that its "students or customers ... [we]re ... likely to associate [its] 'educational services of the highest caliber' with [Harvard's] online university web sites....'" (147) The company also reminded the court that Harvard admitted in its memorandum that such web sites "'[we]re not universities at all, but rather commercial ventures with private companies designed to entice people into purchasing products over the Internet.'" (148)
Eschool also pointed to the lack of evidence to support Harvard's "tarnishment" claim. (149) It stated:
[Harvard] claim[ed], in conclusory terms, that "every time customers encounter[ed] the notHarvard mark, they w[ould] of necessity associate the Harvard mark with the online universities" provided by [Eschool], thus cheapening and tarnishing [Harvard]'s mark.... If this happened "every time" as [Harvard] allege[d], however, [it] would certainly provide proof of this association. (150)
Eschool further argued that it could not tarnish the "Harvard" mark because its services "[we]re praised in the industry as being of excellent quality," and Harvard did not demonstrate that "notHarvard.com" diminished people's opinion of the school's educational services. (151)
Harvard also sued for unfair competition under the Lanham Act and state common law based on the grounds set forth in its trademark infringement and trademark dilution causes of action. (152)
For the reasons offered in its attack of Harvard's dilution and trademark infringement claims, Eschool asserted that the school lacked a federal and state cause of action for unfair competition. (153)
Harvard also sued for cyberpiracy, claiming that Eschool, without permission and with a "bad faith intent to profit" from the "Harvard" mark, (154) registered "notharvard.com" in or about June 1999, and "notnotharvard.com," "notharvardu.com," and "notharvarduniversity.com" in or about January 2000; licensed some of these domain names; and used "notharvard.com" with its services. (155)
Both the complaint and memorandum of law in support of plaintiff's motion for preliminary injunction A temporary order made by a court at the request of one party that prevents the other party from pursuing a particular course of conduct until the conclusion of a trial on the merits.
A preliminary injunction is regarded as extraordinary relief. discuss at length evidence of intent. For example, Harvard quoted an article featured on Eschool's web site, which read, "'The company's name ... has gotten people's attention, notHarvard says it ... is inundated in·un·date
tr.v. in·un·dat·ed, in·un·dat·ing, in·un·dates
1. To cover with water, especially floodwaters.
2. with requests for T-shirts, which are printed with a crimson design bearing similarities to the famous Ivy League logo.'" (156) In addition, Eschool boldly displayed this portion of a quote: "'They've got one of the great names. For the 2,000 people they piss off piss Vulgar Slang
v. pissed, piss·ing, piss·es
1. To urinate on or in.
2. To discharge (blood, for example) in the urine. , millions identify with it.'" (157)
In addition, Harvard stated that Eschool's founder "ha[d] an ax to grind 1. GRIND - GRaphical INterpretive Display.
A graphics input language for the PDP-9.
["GRIND: A Language and Translator for Computer Graphics", A.P. Conn, Dartmouth, June 1969].
2. with academic institutions...." (158) It pointed out that "[i]n published interviews, [he] ha[d] stated that he was 'kicked out' of Georgetown University Georgetown University, in the Georgetown section of Washington, D.C.; Jesuit; coeducational; founded 1789 by John Carroll, chartered 1815, inc. 1844. Its law and medical schools are noteworthy, and its archives are especially rich in letters and manuscripts by and before his freshman year even began, and was later asked to leave the University of Texas at Austin “University of Texas” redirects here. For other system schools, see University of Texas System.
The University of Texas at Austin (often referred to as The University of Texas, UT Austin, UT, or Texas due to poor grades." (159) Furthermore, as explained in an article featured on Eschool's web site, the company's founder originally planned to call it "Project G-Town, an obvious reference to Georgetown University." (160)
Eschool first countered Harvard's claim that Eschool's use and registration of domain names featuring "Harvard" amounted to cyberpiracy by arguing that the ACPA did not apply to Harvard's suit. (161) The company claimed that the "Harvard" mark was not "'famous' and 'distinctive' within the meaning of the ACPA" for the same reasons it gave in its attack of the University's dilution claim. (162) The company also asserted that it had used "notHarvard.com" in connection with its services. Thus, its use did not fall under the Act, which requires that a defendant use another's name "'without regard to the goods and services of the parties.'" (163)
Eschool alternatively argued that, even if the ACPA applied to Harvard's suit, the school lacked a cause of action because it failed to demonstrate "'bad faith.'" (164) The company stated that it never offered to sell "notHarvard.com" to Harvard. (165) According to the company, it also never attempted to sell the few other domain names containing "Harvard" that it registered. (166)
Proving that it "[was] highly likely to prevail on the merits on the merits adj. referring to a judgment, decision or ruling of a court based upon the facts presented in evidence and the law applied to that evidence. A judge decides a case "on the merits" when he/she bases the decision on the fundamental issues and considers of its claim and [would] suffer irreparable ir·rep·a·ra·ble
Impossible to repair, rectify, or amend: irreparable harm; irreparable damages.
[Middle English, from Old French, from Latin harm in the absence of a preliminary injunction," (167) Harvard secured preliminary injunctive relief against Eschool on September 25, 2000. (168) Then, on October 10, 2000, the starting date of the trial, Harvard settled with Eschool, which already had changed its name from "notHarvard.com" to "Powered.com." (169) Eschool agreed to acknowledge that its prior use of "notHarvard.com" had diluted and infringed the "Harvard" mark. (170) It also promised to transfer ownership of the name to Harvard by December 15, 2000. (171) Finally, the start-up company consented to abandon the trademark applications it had filed with the USPTO regarding domain names that contained "Harvard." (172) The settlement did not award damages to the University, which ultimately had decided not to pursue such relief in the hopes that doing so would result in a swifter resolution of the conflict. (173)
Harvard entered into litigation against Eschool with foresight (graphics, tool) Foresight - A software product from Nu Thena providing graphical modelling tools for high level system design and simulation. . As evidenced by its pledge to continue the suit even after Eschool changed its name to "Powered.com," (174) Harvard maintained its dedication to long-term protection of its domain names. University spokesman Joe Wrinn attributed the school's persistence in its action against the company to its desire for "a 'solution that's legally enforceable,'" rather than "merely 'an individual's promise.'" (175) Indicating that the University believed it had achieved what it set out to accomplish by bringing suit, Wrinn told the press, "'Now we have a judgment on the part of the court agreeing with us. It will be more useful if something like this comes up in the future.'" (176)
IV. HARVARD'S NEW GUIDELINES guidelines,
n.pl a set of standards, criteria, or specifications to be used or followed in the performance of certain tasks. CONCERNING USE OF UNIVERSITY NAMES IN THE ELECTRONIC ARENA
Harvard has not just relied on litigation as a means to protect its domain names; it has taken a proactive stance by revising the "University Policy on the Use of Harvard Names and Insignias" to address Internet use. (177) As Assistant Provost PROVOST. A title given to the chief of some corporations or societies. In France, this title was formerly given to some presiding judges. The word is derived from the Latin praepositus. Sarah E. Wald explained, "'It made sense to come up with electronic guidelines. Since we are trying to police the use of our name outside, we are also trying to police the name inside.'" (178) In addition to Wald, other key members of the Harvard community participated in the project, including Assistant Provost Daniel D. Moriarty, head of the school's trademark office, and several general counsel for the University. (179) During the revision process, which began in the fall of 2000, the deans and information technology directors of Harvard's individual schools added their input. (180)
On April 18, 2000, Harvard's provost, Harvey V. Fineberg Harvey Fineberg is President of the Institute of Medicine. He served as Provost of Harvard University from 1997 to 2001, following thirteen years as Dean of the Harvard School of Public Health. , issued new guidelines for using Harvard names in web pages, domain names, and e-mail addresses See Internet address.
e-mail address - electronic mail address in response to the many inquiries it had received regarding such matters. (181) Fineberg stated, "'This new policy is one of a number of recent efforts aimed at protecting Harvard's name and trademarks. Because of the increasing importance of electronic communication, we want to make it clear to the Harvard community what the rules are in this realm.'" (182)
Not only do the University's deans and provosts drive the revision process, but they also play vital roles in ensuring the policy's effectiveness. The latest version of the school's policy, posted online in December 2000, informs the public that people who wish to use the Harvard name "in any form (including abbreviations or in combination with other words) ... in an internet address There are two kinds of addresses that are widely used on the Internet. One is a person's e-mail address, and the other is the address of a Web site, which is known as a URL. Following is an explanation of Internet e-mail addresses only. For more on URLs, see URL and Internet domain name. , an e-mail address (other than one which consists solely of an individual's name, e.g. firstname.lastname@example.org), or a web site identification, must receive "advance permission of the appropriate official." (183) Thus, the school's provost must agree to use of "Harvard," and, in the case of a particular school's name, the dean of that school must grant approval. (184) Harvard makes it clear that "electronic communication or activity is treated similar[ly] to other activities which require advance permission for the use of the University's name or insignias." (185)
Another provision reminds people that, as is true with trademarks, Harvard University must own all domain names that include "Harvard" or any individual school name "in any form." (186) Domain names of organizations that are associated with Harvard or that have received prior authorization prior authorization,
n See predetermination.
prior authorization Health insurance A cost containment measure that provides full payment of health benefits only if the hospitalization or medical treatment has been must be registered under "'the President and Fellows of Harvard College.'" (187) Those who wish to register domain names that embody em·bod·y
tr.v. em·bod·ied, em·bod·y·ing, em·bod·ies
1. To give a bodily form to; incarnate.
2. To represent in bodily or material form: Harvard or the name of a Harvard school and that are "outside of the harvard.edu domain" need to contact Harvard's Network Operations Center See NOC.
Network Operations Center - (NOC) A location from which the operation of a network or internet is monitored. Additionally, this center usually serves as a clearinghouse for connectivity problems and efforts to resolve those problems. . (188)
The revised policy also includes guidelines for suitable domain names. (189) Those who use domain names that feature a Harvard name must make sure that the domain names correctly depict de·pict
tr.v. de·pict·ed, de·pict·ing, de·picts
1. To represent in a picture or sculpture.
2. To represent in words; describe. See Synonyms at represent. "the activity or program to which they refer." (190) Also, ".edu" or ".org" will be the suitable domain for most activities. (191) Explicit approval by the provost is necessary for registration of domain names in ".com" or ".net." (192)
V. REASONS FOR HARVARD'S SUCCESS IN TRADEMARK AND DOMAIN NAME PROTECTION
Harvard is "the oldest institution of higher learning higher learning
Education or academic accomplishment at the college or university level. in the United States," (193) and one of the most prestigious educational institutions in the world. (194) It also is among the most ardent (Ardent Software, Inc., Westboro, MA) A database vendor formed in 1998 as the merger of VMARK Software, Unidata and O2 Technology. Its products included the UniVerse and UniData databases and DataStage data warehouse utility. protectors For the 1970s television series made by Gerry Anderson, see The Protectors
Protectors was a team of fictional superheroes that starred in the eponymous title published by Malibu Comics. of trademarks and domain names. Adopting various methods to trademark and domain name protection, Harvard serves as a paradigm for fellow colleges and universities.
The school uses all of the tools at its disposal to preserve the fruits of centuries of successful promotion of its reputation for excellence. Harvard sued for cyberpiracy one week after the ACPA was enacted, (195) and it has relied on the statute ever since as another means to preserve its good name. Although the school does not hesitate to bring lawsuits when necessary, it tries to resolve disputes effectively, as evidenced by recent cases.
Harvard also regularly reviews its policies regarding use of university names, and it adapts them to its changing needs. (196) The school inevitably benefits from the involvement of officials in various capacities. (197) People from different schools and departments share the concerns of the individual realms they represent on the issue of domain name misuse, (198) and many suggestions are combined to produce guidelines that are designed to meet the needs of the entire university. The number of administrators involved seems just right; there are enough voices to produce good discussion of the problems and possible ways to solve them, but not too many to cause a deadlock See deadly embrace.
(parallel, programming) deadlock - A situation where two or more processes are unable to proceed because each is waiting for one of the others to do something. .
Moreover, Harvard's newly revised "University Policy on the Use of Harvard Names and Insignias" is clear and concise. Harvard's recently issued guidelines concerning the use of Harvard's names in "electronic contexts" (199) is consistent with guidelines addressing their use in other situations. These features will cut down on unintentional misuse of Harvard's marks while simultaneously supporting Harvard's arguments of alleged infringers' bad faith, which is a requirement for claims under the ACPA. (200) With such an easily understandable policy, defendants will have a very difficult time convincing a court that they did not intend to dilute or infringe upon Harvard's domain names.
Another notable feature of the guidelines is that they offer people who wish to use a domain name embodying a university mark a systematic approach to authorization. Approval responsibilities are disbursed among several individuals, and prospective users are assigned to a particular person according to the desired domain name. (201) Given the size of the school and its numerous branches, such a highly organized system is extremely important.
VI. THE ADAPTATION OF HARVARD'S APPROACHES TO FIT WITHIN THE CONSTRAINTS OF PARTICULAR SCHOOLS
Although many institutions of higher learning do not enjoy a level of renown comparable to Harvard's, all schools rely on their names and marks as their major sources of revenue. (202) No matter their academic tier or athletic conference An athletic conference is a collection of sports teams, playing competitively against each other at the collegiate or high school level. In many cases conferences are subdivided into smaller and smaller divisions, with the best teams competing at successively higher levels. and division, educational institutions devote much time and money toward constantly improving their reputation in everything from curricula to career services to college sports. Therefore, colleges and universities across the United States must fiercely guard against infringement and dilution of their names and marks.
Most schools do not have available to them as many choices for domain name protection as Harvard because they have fewer financial resources. Nor can they afford to utilize the avenues that are open to them as frequently, or to the extent that Harvard does. However, they still can learn much from Harvard's strategies. Colleges and universities, facing continuous pressure to gain recognition, may forget the importance of safeguarding the good reputation they have earned. They need to devote more time and money to trademark protection, which now embraces the ever-expanding Internet arena.
All schools can strengthen their trademark policies, as Harvard has done and continues to do. If these documents are thorough, yet at the same time comprehensible com·pre·hen·si·ble
Readily comprehended or understood; intelligible.
[Latin compreh , they can serve as solid foundations for trademark and domain name protection. The periodic review and revision of policy statements probably will not prove too burdensome, especially considering the benefits derived. These schools, following Harvard's lead, could include many different voices in the design of a policy that meets current needs. Just as their counterpart depends on its provosts and deans in both the implementation and enforcement of trademark guidelines, schools need to involve various officials at every stage. Relying on Harvard's policy on trademark use as a model, colleges and universities can develop highly organized authorization procedures for potential users of domain names embodying school marks. If they carefully allot al·lot
tr.v. al·lot·ted, al·lot·ting, al·lots
1. To parcel out; distribute or apportion: allotting land to homesteaders; allot blame.
2. approval responsibilities among various administrators, schools will prevent a considerable amount of misuse while simultaneously raising awareness Raising awareness is a common phrase advocacy groups use to justify a particular event, brochure or even the entire organization. Raising awareness refers to alerting the general public that a certain issue exists and should be approached the way the group desires. of trademark infringement, dilution, and cybersquatting Registering an Internet domain name for the purpose of reselling it for a profit. One of the more notable transactions was the domain name wallstreet.com, which was registered in 1994 for $70 and sold for one million in 1999. concerns.
Educational institutions also can increase fundraising efforts and devote some of the money raised to the rising fees and salaries of attorneys, whose services become even more necessary as new legal issues arise and old ones take on heightened levels of complexity.
Members of general university counsel usually are involved in domain name protection, but that is only one of their many responsibilities. Aware that these lawyers often are spread so thin, schools who can afford the investment will establish trademark licensing offices. Although trademark office staff may not be staffed with attorneys, let alone trademark attorneys, they may serve as an "eagle eye" by keeping abreast of cybersquatting issues, successful approaches to protection, and potential cybersquatting threats for their institutions.
Given the crucial role that trademark offices play in safeguarding names, marks, and domain names, no university or college should be without one. Schools without such departments should make their establishment, or, at the very least, the hiring a trademark administrator, a top priority. Those that already have implemented trademark protection programs should expand them when resources allow. While these offices can handle daily monitoring, schools should remember that they might need to seek additional assistance from outside counsel when circumstances require.
Colleges and universities must see to it that litigation serves as a viable option for domain name protection; however, they also need to recognize that litigation is not the only possible route. Suffering from the epidemic that inflicts so many entities and individuals, educational institutions often squander squan·der
tr.v. squan·dered, squan·der·ing, squan·ders
1. To spend wastefully or extravagantly; dissipate. See Synonyms at waste.
2. money, time, and energy when they lose sight of why they chose to sue in the first place and instead litigate for the sake of litigating. They, like Harvard, must be open to negotiation and to settlement.
All institutions of higher education ideally would possess the wherewithal where·with·al
The necessary means, especially financial means: didn't have the wherewithal to survive an economic downturn.
Wherewith. to adopt every suggestion given. If so, they could drastically reduce the occurrence of trademark infringement, trademark dilution, and cybersquatting, and could seek compensation for harm caused by such acts. The reality is that a school's ability to protect its name, marks, and domain names is limited by many factors, including its financial resources, size, and reputation. Not every school can be a Harvard.
Despite inevitable constraints, colleges and universities are not powerless in the war against conventional trademark and domain name misuse. Once dedicated to safeguarding their names and marks, they can experiment with strategies that have proven successful. Harvard's blend of approaches serves as a model for any school; it is no wonder that, as surely as it will endure as a symbol of scholarly preeminence pre·em·i·nent or pre-em·i·nent
Superior to or notable above all others; outstanding. See Synonyms at dominant, noted.
[Middle English, from Latin prae , Harvard will remain a model of excellence in trademark protection for many years to come.
(1.) Bruce B. Siegal, Esq., Case Studies in IP Enforcement, in PROTECTING YOUR INTELLECTUAL PROPERTY: HOW TO VALUE, MAXIMIZE, AND ENHANCE YOUR Assets, 441, 447 (PLI PLI Practising Law Institute
PLI Professional Liability Insurance
PLI Programming Language Interface (Verilog programming language)
PLI Partido Liberal Independiente (Independent Liberal Party, Nicaragua) Patents, Copyrights, Trademarks, & Literary Property Course, Handbook Series No. G4-3995, 1997).
(2.) Robert Lattinville, Logo Cops: The Law and Business of Collegiate Licensing, 5 KAN. J.L. & PUB. POL'Y 81, 81 (1996) (citing Bd. of Trs. of Univ. of Ark. v. Prof'l Therapy Servs., 873 F. Supp. 1280 (W.D. Ark. 1995)).
(3.) Andrew D. Baharlias, ... Yes, I Think the Yankees Might Sue If We Named Our Popcorn POPCORN - AI system built on POP-2. "The POPCORN Reference Manual", S. Hardy, Essex U, Colchester, 1973. 'Yankees Toffee Crunch.' A Comprehensive Look at Trademark Infringement Defenses in the Context of the Professional and Collegiate Sports Industry, 8 SETON HALL J. SPORT L. 99, 103 (1998) (citing Steven N. Geise, A Whole New Ballgame Noun 1. new ballgame - a particular situation that is radically different from the preceding situation; "HDTV looks the same but it's really a whole new ballgame"
ballgame : The Application of Trademark Law to Sports Mark Litigation, 5 SETON HALL J. SPORT L. 553, 564 (1995); 2 ROBERT C. BERRY & GLENN M. WONG, LAW AND BUSINESS OF THE SPORTS INDUSTRIES, 619 (2d ed. 1993)).
(4.) Anne H. Chasser, How to Develop a Brand-Name University, 5 No. 1 INTELL. PROP. STRATEGIST strat·e·gist
One who is skilled in strategy.
Noun 1. strategist - an expert in strategy (especially in warfare)
market strategist - someone skilled in planning marketing campaigns 1, 1 (1998).
(5.) Lattinville, supra A relational DBMS from Cincom Systems, Inc., Cincinnati, OH (www.cincom.com) that runs on IBM mainframes and VAXs. It includes a query language and a program that automates the database design process. note 2, at 82.
(6.) Siegal, supra note 1, at 447.
(7.) James M. Jordan, III, Domain Names: Basics, Pointers, and Current Events, 2 No. 1 ELEC (Enterprise LEC) An organization that is large enough (about 2500 or more employees) to file for CLEC status and become its own customer. As a CLEC, it can purchase telephone service at wholesale rates that it can sell to itself and to others to further reduce costs. . BANKING L. & COM. REP. 12 (1997). * Publication page references are unavailable online.
(8.) See Richard Raysman & Peter Brown, Domain Names: Protecting Trademarks on the Internet, 215 N.Y. L.J., June 11, 1996, at 3; see also John I. Stewart, Jr., & Michael D. Bednarek, Cyberpirates, Beware: Recent Anti-Cybersquatting Law Provides New Deterrence deterrence
Military strategy whereby one power uses the threat of reprisal to preclude an attack from an adversary. The term largely refers to the basic strategy of the nuclear powers and the major alliance systems. Tools But Does not Solve all Problems, NAT'L L.J., Jan. 31, 2000, at cl.
(9.) See Stewart & Bednarek, supra note 8, at c1.
(10.) Jordan, supra note 7.
(12.) Ed Colbert et al., United States: The Anti-Cybersquatting Consumer Protection Act Primer--Kenyon & Kenyon, MONDAQ BUS. BRIEFING (August 24, 2001). * Publication page references are unavailable online.
(13.) Jeff Riffer, New Federal Law on Cybersquatting Signed, 4 INTERNET NEWSLETTER: LEGAL AND BUS. ASPECTS 1 (1999). * Publication page references are unavailable online.
(14.) See, e.g., Erin LaRuffa, U. Notre Dame Notre Dame IPA: [nɔtʁ dam] is French for Our Lady, referring to the Virgin Mary. In the United States of America, Notre Dame : "Cybersquatters" Make Monitoring Essential for Notre Dame, Other Schools, THE OBSERVER, Feb. 1, 2000, http://www.nd.edu/~observer/02012000/News/0.html.
(15.) 15 U.S.C. [section] 1127 (1946).
(16.) Celeste Celeste is a woman's first name. Celeste may also refer to:
(17.) Id. (citing LANHAM ACT, 15 U.S.C. [section] 1127); see also Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1264 (5th Cir. 1975); Beer Nuts, Inc. v. Clover clover, any plant of the genus Trifolium, leguminous hay and forage plants of the family Leguminosae (pulse family). Most of the species are native to north temperate or subtropical regions, and all the American cultivated forms have been introduced from Club Foods Co., 711 F.2d 934, 939 (10th Cir. 1983)), rev'd, 805 F.2d 920, 939 (10th Cir. 1986).
(18.) Id. (citing HARRY A. TOULMIN, JR., THE TRADEMARK ACT OF 1946 ANALYZED, ANNOTATED AND EXPLAINED 4 (1946); HARRY D. NIMS NIMS National Incident Management System (US Department of Homeland Security)
NIMS National Institute for Materials Science (Japan)
NIMS Near-Infrared Mapping Spectrometer , THE LAW OF UNFAIR COMPETITION AND TRADEMARKS [section] 9 (3d ed. 1936)).
(19.) Id. at 663-64 (citations omitted).
(20.) Id. at 664 (citing HARRY A. TOULMIN, JR., THE TRADEMARK ACT OF 1946 ANALYZED, ANNOTATED AND EXPLAINED 4 (1946)).
(21.) Id. (citing Northam Warren Corp. v. Universal Cosmetic Co., 18 F.2d 774, 774-75 (7th Cir. 1927)).
(22.) Id. at 664 n.17 (citing Mishawaka Rubber & Woolen wool·en also wool·len
1. Made or consisting of wool.
2. Of or relating to the production or marketing of woolen goods.
Fabric or clothing made from wool. Often used in the plural. Mfg. Co. v. S.S. Kresage Co., 316 U.S. 203, 205 (1941)).
(23.) Joachim F. Reimertshofer, Trademark Protection of Intercollegiate in·ter·col·le·giate
Involving or representing two or more colleges.
Adj. 1. intercollegiate - used of competition between colleges or universities; "intercollegiate basketball" Names, Logos, Colors, and Trade Dress--A Comparison Between the United States and Germany, 10 N.Y. INT'L L. REV. 131, 140 (1997) (citing MICHAEL A. EPSTEIN, MODERN INTELLECTUAL PROPERTY 7-7 (3d ed. 1995); HARRY D. NIMS, THE LAW OF UNFAIR COMPETITION AND TRADEMARKS [section] 9, at 47-51 (3d ed. 1936)).
(24.) Id. (citing RESTATEMENT Restatement
A revision in a company's earlier financial statements.
The need for restating financial figures can result from fraud, misrepresentation, or a simple clerical error. (THIRD) OF UNFAIR COMPETITION [section] 22 (1995)).
(25.) Id. at 136 (citations omitted).
(26.) Id. at 137 (citing 15 U.S.C. [subsection subsection
any of the smaller parts into which a section may be divided
Noun 1. subsection - a section of a section; a part of a part; i.e. ] 1051, et seq et seq. (et seek) n. abbreviation for the Latin phrase et sequentes meaning "and the following." It is commonly used by lawyers to include numbered lists, pages or sections after the first number is stated, as in "the rules of the road are found in Vehicle Code . (1996)).
(27.) Lattinville, supra note 2, at 82.
(28.) Reimertshofer, supra note 23, at 137 (citing 15 U.S.C. [section] 1051 (1996)). Three bases for federal registration exist: "(1) registration based on prior use of a mark [in interstate commerce]; (2) registration based on a bona fide [Latin, In good faith.] Honest; genuine; actual; authentic; acting without the intention of defrauding.
A bona fide purchaser is one who purchases property for a valuable consideration that is inducement for entering into a contract and without suspicion of being intent to use the mark in commerce ('Intent to Use' application); and (3) registration based on application or registration of the trademark in another country." Lattinville, supra note 2, at 82 (citing Balaram Gupta, Names and Logos: Protection Under Intellectual Property Laws, 2 SPORTS LAW The laws, regulations, and judicial decisions that govern sports and athletes.
Sports law is an amalgam of laws that apply to athletes and the sports they play. It is not a single legal topic with generally applicable principles. J. 245, 252 (1995)).
(29.) See Reimertshofer, supra note 23, at 137.
(30.) Geier, supra note 16, at 668 (quoting 3 R. CALLMANN, THE LAW OF UNFAIR COMPETITION, TRADEMARKS, AND MONOPOLIES [section] 18.01 (4th ed. 1983)).
The requirement of distinctiveness encompasses three separate attributes of the trademark: (1) that the mark is sufficiently unique to distinguish it from other marks used in connection with similar goods or services; (2) that the mark does not describe qualities of the goods or services which the goods or services share with those originating from other sources; and (3) that the mark performs as an indication of source, rather than as a decorative symbol or in some other functional capacity. Id.
(31.) Lattinville, supra note 2, at 84 (citing 15 U.S.C. [section] 1125(a) (1994)). One example of unfair competition in the use of domain names is "use of another's trademark or service mark as part of the domain name or visible text of a web site promoting goods or services similar to those of the trademark owner." Marcus J. Millet millet, common name for several species of grasses cultivated mainly for cereals in the Eastern Hemisphere and for forage and hay in North America. The principal varieties are the foxtail, pearl, and barnyard millets and the proso millet, called also broomcorn millet , Same Game in a New Domain--Some Trademark Issues on the Internet, N.J.L., Aug. 1999, at 35 (citations omitted). Use of another's trademark in a web site's metatags, "i.e., in the text which normally is not readable by the user, but is readable by search engines," also amounts to unfair competition. Id.
(32.) A mark's secondary meaning is defined as recognition by customers and potential customers that products and services with that mark are provided by or affiliated with the same merchant. Lattinville, supra note 2, at 83 (citing Nat'l Football League Props., Inc. v. Wichita Falls Wichita Falls, city (1990 pop. 96,259), seat of Wichita co., N Tex., on the Wichita River; inc. 1889. The city's name comes from the Wichitas and from the falls that have since been reduced to an area of rapidly flowing water in the Wichita River. Sportswear, Inc., 532 F. Supp. 651, 658 (W.D. Wash. 1982)). The element of prior use requires plaintiffs to show that they have chosen the trademark to identify the products on which it appears, and that they will market the products with that trademark. Id. at 84 (citing Univ. of Pittsburgh v. Champion Prods., Inc., 566 F. Supp. 711, 722 (W.D. Pa. 1983)). Id. at 84 (citing Univ. of Pittsburgh v. Champion Prods., Inc., 566 F. Supp. 711, 719 (W.D. Pa. 1983)). For the factors courts often consider when determining likelihood of confusion, see Polaroid Corp. v. Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961).
(33.) Lattinville, supra note 2, at 84-85.
(34.) Glenn M. Wong, Recent Trademark Law Cases Involving Professional and Intercollegiate Sports, 1986 DET DET diethyltryptamine.
Diethyltryptamine; a hallucinogenic agent similar to DMT. . C. L. REV. 87, 89 (1986) (quoting 15 U.S.C. [section] 1114(1)(a) (1946)). For examples of trademark infringement in the domain name context, see supra note 31 and accompanying text.
(35.) Lattinville, supra note 2, at 85 (citing Steven N. Geise, A Whole New Ballgame: The Application of Trademark Law to Sports Mark Litigation, 5 SETON HALL J. SPORT L. 553, 564 (1995)). Registration is "prima facie evidence of the registrant's exclusive right to the mark" in association with the commodities or services stipulated in the registration. Id. (citing 15 U.S.C. [section] 1115 (1988)). Occasionally, however, the owner may need to demonstrate the mark's secondary meaning. Id. (citing 15 U.S.C. [section] 1115 (1988)).
(36.) See id.
(37.) See id.
(38.) Raysman & Brown, supra note 8, at 36. For the facts courts consider when deciding whether a mark is famous, see 15 U.S.C. [section] 1125(c)(1)(A)-(H).
(39.) 15 U.S.C. [section] 1125(c) (2002).
(40.) 15 U.S.C. [section] 1127 (1996). Use of a famous trademark as part of a domain name may cause dilution if it "'blur[s]' or gradual[ly] whittl[es] away the distinctiveness of the mark" when it denotes a web site that offers "different, non-competing goods." Millet, supra note 31, at 35. However, dilution in the Internet context usually results from tarnishment, "i.e., unauthorized use of the famous mark in an unwholesome context." Id.
(41.) Anne H. Chasser, University Licensing, in DRAFTING LICENSING AGREEMENTS, 257, 259 (PLI Patents, Copyrights, Trademarks, and Literary Property Course, Handbook Series No. G4-3931, 1994).
(42.) Trs. of Columbia Univ. v. Axenfeld, 241 N.Y.S. 4, 4. (N.Y. Sup. Ct. 1930).
(45.) 138 N.Y.S.2d 280, 282 (1955), aff'd 128 N.E.2d 421 (N.Y. App. Div. 1955).
(46.) Id. at 281-82.
(47.) Id. at 282.
(48.) Examples include: Univ. of Pittsburgh v. Champion Prods., Inc., 686 F.2d 1040 (3d Cir. 1982), on remand To send back.
A higher court may remand a case to a lower court so that the lower court will take a certain action ordered by the higher court. A prisoner who is remanded into custody is sent back to prison subsequent to a Preliminary Hearing before a tribunal or magistrate (566 F. Supp. 711 (W.D. Pa. 1983) (holding that the doctrine of laches A defense to an equitable action, that bars recovery by the plaintiff because of the plaintiff's undue delay in seeking relief.
Laches is a defense to a proceeding in which a plaintiff seeks equitable relief. did not bar Pitt's right to enjoin To direct, require, command, or admonish.
Enjoin connotes a degree of urgency, as when a court enjoins one party in a lawsuit by ordering the person to do, or refrain from doing, something to prevent permanent loss to the other party or parties. Champion from producing goods upon which Pitt's trademarks appeared, even though the university failed to bring an infringement suit for years, because its action could be characterized as mere delay rather than a delay that was so unwarranted that it amounted to abandonment); Univ. of Ga. Athletic Ass'n, v. Laite, 756 F.2d 1535 (1985) (upholding a permanent injunction against a Macon, Georgia beer wholesaler who, in selling beer in cans featuring the University of Georgia's colors and a character that closely resembled the school's mascot MASCOT - Modular Approach to Software Construction Operation and Test: a method for software design aimed at real-time embedded systems from the Royal Signals and Research Establishment, UK. , created a likelihood of confusion and thus violated [section] 43(a) of the Lanham Act); Bd. of Governors of the Univ. of N.C. v. Helpingstine, 714 F. Supp. 167 (1989) (holding that UNC (Universal Naming Convention) A standard for identifying servers, printers and other resources in a network, which originated in the Unix community. A UNC path uses double slashes or backslashes to precede the name of the computer. did not abandon ownership rights in its marks when it failed to prosecute To follow through; to commence and continue an action or judicial proceeding to its ultimate conclusion. To proceed against a defendant by charging that person with a crime and bringing him or her to trial. alleged trademark infringers and permitted unchecked third-party use before it established its licensing program in 1982), and Bd. of Trs. of the Univ. of Ark. v. Prof'l Therapy Servs., Inc., 873 F. Supp. 1280 (1995) (holding that the clinic, which offered services that were closely related to those of the university, infringed on the University of Arkansas's federally registered marks by using the university's colors and the arbitrary "Razorback" mark in its name and by using the hog or hog's head for its logo).
(49.) Colbert et al., supra note 12. Cybersquatters register domain names that mimic famous marks so they can "hol[d] them hostage" and demand huge ransoms ransoms
alliumursinum. from the marks' legitimate owners or so they can misuse them and create public confusion or deception. Id.
(51.) Stewart & Bednarek, supra note 8. * Publication page references are unavailable online.
(52.) Colbert et al., supra note 12.
(55.) 15 U.S.C. [section] 1125(d)(1)(A) (2002). For the factors a court may consider in deciding whether a defendant acted in bad faith, see 15 U.S.C. [section] 1125(d)(1)(B)(i) (2002).
(56.) Id. [section] 1125(d)(1)(C).
(57.) Id. [section] 1117(d).
(58.) See id. [section] 1129(4).
(59.) Consent J., President & Fellows of Harvard Coll. v. Rhys, at 1 (No. 99CV 12489RCL RCL - Reduced Control Language. A simplified job control language for OS360, translated to IBM JCL. "Reduced Control Language for Non- Professional Users", K. Appel in Command Languages, C. Unger ed, N-H 1973. ) [hereinafter here·in·af·ter
In a following part of this document, statement, or book.
Formal or law from this point on in this document, matter, or case
Adv. 1. Consent J., Rhys].
(60.) Shelley Murphy, Harvard Seeks Rights to Own Name in Cyber Suit, THE BOSTON GLOBE, December 8, 1999, at B1.
(61.) Compl., President & Fellows of Harvard Coll. v. Rhys, [paragraph] 22 (No. 99CV12489RCL).
(62.) Id. [paragraph] 1.
(63). Id. [paragraphs] 19-21.
(64). Id. [paragraph] 19.
(65). Id. [paragraph] 20.
(66). Id. [paragraph] 21.
(67). Id. [paragraph] 33.
(68). Id. [paragraph] 39.
(70.) Id. [paragraph] 1.
(71.) Id. [paragraph] 26.
(72.) Id. [paragraph] 1.
(73.) Id. [paragraph] 18.
(74.) Id. [paragraph] 41.
(75.) Id. [paragraph] 64.
(76.) Id. [paragraph] 53.
(77.) Id. [paragraph] 58.
(78.) Id. [paragraph] 61.
(79.) Id. [paragraph] 47.
(80.) Id. [paragraph] 48.
(81.) Id. [paragraph] 51.
(82.) Consent J., Rhys, supra note 59, at 11 (No. 99CV12489RCL).
(83.) Id. at 9-10.
(84.) See generally Kate Thompson Kate Thompson can refer to:
(2) A physical port (plug, socket) or wireless port (transmitter, receiver) used to attach one device to another. $STORY (last visited Mar. 22, 2003) (on file with the Rutgers Computer & Technology Law Journal).
(85.) Compl., President & Fellows of Harvard Coll. v. Eschool, [paragraph] 3 (No. 00-CV-11521 RCL) [hereinafter Compl., Eschool].
(86). Id. [paragraph] 20.
(88.) Id. [paragraph] 1.
(89.) David M. DeBartolo, Website, University Exchange Lawsuits, HARVARD CRIMSON (Aug. 4, 2000), available at http://www.thecrimson.com/article.aspx?ref=101326 (last visited Mar. 22, 2003) (on file with the Rutgers Computer & Technology Law Journal).
(90.) See id.
(91.) See id.
(92.) Def.'s Mem. in Opp'n to Pl.'s Motion for a Prelim. Inj., President & Fellows of Harvard Coll. v. Eschool, Inc., at 2 (No. 00-CV-11521 RCL) [hereinafter Def.'s Mem. in Opp'n, Eschool].
(94.) Thompson, supra note 84; see DeBartolo, supra note 89.
(95.) DeBartolo, supra note 89.
(96.) Compl., Eschool, supra note 85, [paragraph] 1.
(97.) Id. [paragraph] 1.
(98). Id. [paragraphs] 15-17.
(99.) Id. [paragraph] 9.
(100.) Id. [paragraph] 13.
(101.) Id. [paragraph] 17.
(102.) Id. [paragraph] 16.
(103.) See id. [paragraphs] 14-16.
(104.) Mem. of Law in Supp. of Pl's Mot. for Prelim. Inj., President & Fellows of Harvard Coll. v. Eschool, Inc., at 12 (No. 00-CV-11521 RCL) [hereinafter Pl.'s Mem. of Law in Supp., Eschool].
(105.) Id. at 13. Generic marks do not receive trademark protection because they signify sig·ni·fy
v. sig·ni·fied, sig·ni·fy·ing, sig·ni·fies
1. To denote; mean.
2. To make known, as with a sign or word: signify one's intent. the "actual" commodity or service and are not connected with the origin of that commodity or service. Ted Curtis & Joel H. Stempler, So What Do We Name The Team? Trademark Infringement, The Lanham Act and Sports Franchises, 19 COLUM.-VLA J.L. & ARTS 23, 26 (1995). They include words that are commonly used in the English language English language, member of the West Germanic group of the Germanic subfamily of the Indo-European family of languages (see Germanic languages). Spoken by about 470 million people throughout the world, English is the official language of about 45 nations. . Id. Examples of generic words are "tea" and "cola." See Wong, supra note 34, at 97.
(106.) See Pl.'s Mem. of Law in Supp., Eschool, supra note 104, at 5.
(108.) Id. at 10.
(109.) Id. at 14-15.
(110.) See id. at 13.
(111.) Compl., Eschool, supra note 85, [paragraph] 24.
(112.) See Def.'s Mem. in Opp'n, Eschool, supra note 92, at 13-17.
(113.) Id. at 14.
(115.) Id. at 14-15.
(116.) Id. at 15.
(118.) Id. at 17.
(119.) Id. at 15-16.
(120.) Id. at 15.
(122.) Id. at 16.
(124.) Id at 16-17.
(125.) Id. at 17.
(126.) Id at 16 (citing Pl.'s Mem. of Law in Supp., Eschool, supra note 104, at 15).
(127.) See id.
(128.) See id. at 13 (citing I.P Lund Trading ApS v. Kohler Co., 163 F.3d 27, 43 (1st Cir. 1998); Int'l Ass'n of Machinists & Aerospace Workers v. Windship Green Nursing Ctr., 103 F.3d 196, 201 (1st Cir. 1996)).
(129.) See Pl.'s Mem. of Law in Supp., Eschool, supra note 104, at 11 (citing I.P Lund Trading ApS v. Kohler Co., 163 F.3d 27, 48-49 (1st Cir. 1998)).
(130.) Compl., Eschool, supra note 85, [paragraph] 29.
(131.) Pl.'s Mem. of Law in Supp., Eschool, supra note 104, at 10.
(132.) Id. at 2.
(134.) See id. at 10.
(135.) Id. at 11.
(136.) Id. at 14 n.12.
(137.) See id. at 11 (citing I.P Lund Trading ApS v. Kohler Co., 163 F.3d 27, 48-49 (1st Cir. 1998)).
(138.) See Def.'s Mem. in Opp'n, Eschool, supra note 92, at 7-13.
(139.) Id. at 8.
(140.) See id. at 9-11 (discussing Trs.. of Columbia Univ., 964 F. Supp. 733 (S.D.N.Y. 1997)).
(141.) Id. at 10 (quoting Trs.. of Columbia Univ., 964 F. Supp. 733, 750 (S.D.N.Y. 1997)).
(144.) See id. at 11 (citing Mead mead (mēd), wine made of fermented honey and water, sometimes flavored with spices. It is highly intoxicating. Mead was known in classical Greece and Rome and was the favorite drink of the tribes of N and W Europe. Data Ctr., Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029 (2d Cir. 1989)).
(146.) See id. at 11-12.
(147.) Id. at 12.
(148.) Id. (citing Pl.'s Mem. of Law in Supp., Eschool, supra note 104, at 1).
(149.) See id. at 12-13.
(150.) Id. at 12 (citations omitted).
(151.) Id. at 12-13.
(152.) See Compl., Eschool, supra note 85, [paragraphs] 44-45.
(153.) Def.'s Mem. in Opp'n, Eschool, supra note 92, at 18.
(154.) Compl., Eschool, supra note 85, [paragraphs] 51-53.
(155.) Id. [paragraphs] 18-20.
(156.) Pl.'s Mem. of Law in Supp., Eschool, supra note 104, at 5-6.
(157.) Id. at 6.
(158.) Id. at 4.
(161.) See Def.'s Mem. in Opp'n, Eschool, supra note 92, at 17.
(163.) Id. (quoting 15 U.S.C. [section] 1125(d)(1)(A)).
(167.) Pl.'s Mem. of Law in Supp., Eschool, supra note 104, at 1.
(168.) See President & Fellows of Harvard Coll. v. Eschool, No. 00-CV-11521 RCL, at 1-3 (D. Mass filed Sept. 29, 2000).
(169.) See DeBartolo, supra note 89.
(177.) See generally Vasugi V. Ganeshananthan, Harvard Issues E-Name Rules, HARVARD CRIMSON (April 19, 2000), available at http://www.thecrimson.com/article.aspx?ref=100574 (last visited Mar. 22, 2003) (on file with the Rutgers Computer & Technology Law Journal).
(179.) See id.
(180.) See id.
(181.) Provost Announces Domain Name Policy (April 20, 2000), at http://www.news.harvard.edu/gazette/2000/04.20/domain.html (last visited Mar. 22, 2003) (on file with the Rutgers Computer & Technology Law Journal).
(182.) See id.
(183.) Electronic Contexts: Use of Harvard's Name in Internet Addresses, Domain Names, Web Sites, and Other Electronic Contexts (December 2000), at http://www.provost.harvard.edu /policies_guidelines/useofname/electronic_contexts.php (last visited Mar. 22, 2003) (on file with the Rutgers Computer & Technology Law Journal) [hereinafter Policy].
(184.) See id.
(189.) See generally id.
(193.) Compl., Rhys, supra note 59, [paragraph] 6.
(194.) Id. [paragraph] 10.
(195.) See Murphy, supra note 60.
(196.) See Ganeshananthan, supra note 177.
(197.) See generally Policy, supra note 183.
(198.) See generally Ganeshananthan, supra note 177.
(199.) Policy, supra note 183.
(200.) See 15 U.S.C. [section] 1125(d)(1)(A)(i).
(201.) See generally Policy, supra note 183.
(202.) See Chasser, supra note 4, at 1.
Alayne E. Manas, B.A., cum laude cum lau·de
adv. & adj.
With honor. Used to express academic distinction: graduated cum laude; 25 cum laude graduates. , 2000, Brandeis University Brandeis University, at Waltham, Mass.; coeducational; chartered and opened 1948. Although Brandeis was founded by members of the American Jewish community, the university operates as an independent, nonsectarian institution. ; J.D. Candidate 2003, Rutgers School of Law--Newark. The author dedicates this Note to her family and friends. She is extremely grateful for their unwavering love and support during law school and in all endeavors. The author wishes to say a special thank you to Daniel A. Birnhak, who helps her realize her potential. The author also would like to thank Joel R. Leeman, Esq., a partner at Bromberg and Sunstein in Boston, MA, who represents Harvard University in trademark infringement and trademark dilution litigation. Mr. Leeman kindly provided copies of the papers filed, and the judgments issued, in President and Fellows of Harvard College v. Rhys and in President and Fellows of Harvard College v. Eschool, Inc., the two cases the author discusses as examples of Harvard's efforts to protect its trademarks and domain names through litigation. His assistance was invaluable in researching and developing this Note. Finally, the author acknowledges the talent, hard work, and dedication of the members of the Rutgers Computer and Technology Law Journal.