Re: Thoughts on URL scheme registration and trademarks

On Thu, 29 May 1997, Ian King wrote:

> In Memphis, we touched briefly on the subject of trademarks in URL
> scheme names.  I've given this some thought, and the following is an
> analysis of issues as I see them, combined with some suggestions.

Thanks for the many interesting thoughts. Here is some alternative,
maybe provocative, position. I'm not a lawyer, my thoughts are just
based on (European, maybe not US :-) common sense and whatever tidbits
I think I know about trademark law.

People are concerned about trademarks because of the problems
with domain names. Why are there problems with domain names?
Because domain names are (among else) a form of company names,
a way to identify a company. If I own company foo, I'm worried
about somebody else taking www.foo.com because my customers
might be confused, detracted, or deceived, the other guy may
benefit from the name recognition I have invested in, and I
may have to invest again to gett www.foo2.com recognized by
my (potential) customers. Trademark law has been written for
such cases; the main thing it currently can't cope with when
it comes to domain names is that all domain names are globally
visible, whereas most company names have only local visibility
and are restricted to a certain kind of business.

Now URL scheme names are completely different in this respect.
URL scheme names identify protocols, access modalities, the
syntax of what follows after the scheme name, and so on.
This is extremely helpful, because it strongly restricts the
business category. Let's say there would be a company called
"First Tools Production", with a well established trademark
"ftp". Could they challenge the use of "ftp:" in the ftp URL?
No, because the tool production company name "ftp" and the
computer protocol name "ftp" can nicely live together. So the
URL trademark problem is a lot smaller than the domain name
trademark problem.

But I think we can even go one step further. There definitely
are protocols that have been trademarked. I guess nfs would
be a nice example. The nfs specialists at Sun currently work
on an nfs: URL, but let's assume for a moment that they wouldn't,
and somebody else would. Would that be an infringement of
trademark law? Probably not, because unless the URL definition
is really weird, whenever "nfs:" would be used it would
denote nothing else than nfs. Now this is definitely not something
prohibited by trademark law. Everybody is permitted to use
trademarked names to speak about the companies and products
these trademarks denote. Even including a trademark in a book
title is no problem at all, as you will easily see when you
think about computer publications. The only requirement in such
a case is that you mention the trademark ownership, but that
appears in fine print only. In newspapers, it rarely appears,
at least here in Europe; I guess in the US, newspapers might
add a TM mark more frequently. It is clear from the functionality
of URLs that we can't add a TM sign to the scheme part.
Having a sentence such as "due to the nature and use of URLs,
the absence of a TM sign on an URL does not mean that it
does not contain any trademarks" may be the only thing
necessary in our specs. Last, if you say something insulting
about a company or product, there may be other laws that allow
to sue you, but trademark law is not concerned. And it would
be difficult to construct an insult with an URL.

We of course have the problem that two different protocols
might end up with the same acronym. Assume a company
trademarks a protocol name, but then never markets it.
A PhD student invents something else, but with a different
name, and gets it used in the Internet. In this case,
it won't be the use of this abbreviation in the URL that
will cause IETF, IANA, or whoever is responsible, legal
problems. It will be the use of this abbreviation for
the protocol itself.

The case of examples such as "aol:" is something that should
be solved on a different level than trademark law. If AOL
is just a network service (and content) provider, they do
not have a need for an URL. They can use http://www.aol.net
or whatever appropriate, like everything else. If they
indeed have a specific protocol, they should use the name
of that protocol, which most probably won't be "aol", for
the URL.

Whereas I therefore think that trademark issues are really
a minor problem for URLs. Unfortunately, this doesn't apply
for URNs, where all kinds of companies will be interested
to use their proprietary namespaces with acronyms that they
may up to now only have used with a very restricted audience,
but which now suddenly have to be worldwide unique.


Regards,	Martin.