Fan websites' use of trademarks in their domain names: fair or foul?

• Author: Sherman, Joshua I.

1. INTRODUCTION

   Since 1846, when the first baseball game was played in Hoboken, New Jersey, (1) baseball has occupied a central place in the hearts and minds of millions of Americans. With the birth of this truly American sport, dubbed by many as the American "national pastime," (2) came the existence of its admirers, who are referred to as fans. While baseball and its fans have had a somewhat tumultuous relationship over the years, which include a World Series corrupted by gamblers in 1919 (3) and eight work stoppages, (4) the sport and its fans always seem to gravitate back towards each other in this symbiotic relationship. Baseball needs its fans, and its fans need baseball.

   The advent of the Internet fueled baseball fans' cravings; statistics and information were only a few key strokes and mouse clicks away for any baseball fan who desired them. Jim Frasch and Bryan Hoch are two examples of baseball fans who believed that they were doing their favorite sport and their fellow fans a great service by operating free websites dedicated to the New York Yankees and New York Mets Major League Baseball teams, respectively. Baseball fans loved these websites and visited them to garner information regarding their favorite baseball teams. (5)

   In the summer of 2002, amid discussions of another possible player strike and suspicion of possible steroid use by its players, (6) Major League Baseball Properties ("MLBP") sent cease-and-desist letters to Hoch (7) and Frasch, (8) informing them that their websites violated applicable Internet and trademark law.

   This Note demonstrates how MLBP's claims against the operators of fan-based non-profit websites lack a legal basis and discusses the danger that situations such as this pose to the future of the Internet. Part I of this Note shows how the Internet has affected baseball and its fans. Part II discusses Internet trademark law. Part III looks at Frasch's and Hoch's fan-based, non-profit websites devoted to their favorite baseball teams and MLBP's claims against them. Part IV analyzes MLBP's claims and shows why Frasch and Hoch would prevail against such claims. Part V argues that Frasch's and Hoch's use of MLBP's trademarks constituted a fair use. Part VI discusses the disparity in bargaining positions that existed between MLBP and the website operators. This Note concludes by discussing how situations such as this will affect the future of speech on the Internet.

2. THE INTERNET AND ITS EFFECT ON BASEBALL

   According to Howard Goldberg, Senior Vice President of Scarborough Sports Marketing, "[t]he Internet has enabled sports fans to have more frequent and in-depth information about their favorite teams and leagues." (9) While all sports fans can use the Internet to further their interest in sports, (10) Patrick Keane, an analyst at the Jupiter Communications Internet research company, feels that more than any other sport, "baseball takes the most advantage of the [Internet's] strengths." (11) Keane's assertion is based primarily on baseball fans and what he believes is their "obsessive quest for statistics and [their] desire to constantly compare players' performances." (12)

   Because of this wealth of statistics and the demonstrated fan demand for access, baseball is the major American sport best suited for the Internet, and baseball fans certainly take advantage of this fact. Howard Goldberg believes that the Internet allows baseball fans to "make their passion for the game a part of their daily li[ves]" and "keep[] up with their favorite [Major League Baseball] teams." (13) Moreover, in 1988, before most Americans had even heard of the Interact, baseball fans were using the Internet and e-mail to chat about baseball and to archive baseball information. (14) According to a Nielsen//NetRatings study of Internet usage in 1998, eighty-nine percent of baseball fans said that they had used the Internet, compared to eighty-six percent of all respondents. (15)

   In 1998, Major League Baseball maintained one website for the entire League; this website devoted a small section to each team. (16) Unlike other professional sports leagues, such as the National Basketball Association and National Football League, which controlled all of their teams' websites, Major League Baseball allowed its teams to control their own websites. (17) Each team's own website, rather than the League's website, was "the best place" to learn about that team. (18) In 1998, Jupiter Communications' Patrick Keane praised Major League Baseball for not having tried to force consolidation of its team websites, noting that this policy "allowed the teams to be very aggressive in building their own [Internet] presence." (19) Many of the teams' websites even included free radio broadcasts of their teams' baseball games, which became an extremely popular feature with fans. (20)

   Everything changed in January 2000 when the owners of all thirty Major League Baseball franchises unanimously voted to transfer ownership and control of their team's websites to the League "in an effort to be more economical." (21) Under the arrangement, the owners of all thirty Major League Baseball teams agreed to finance and own a newly created company, M.L.B. Advanced Media, which would have the responsibility of running the League's official website, "www.mlb.com." (22) Robert A. Bowman, whom Major League Baseball chose to run M.L.B. Advanced Media, stressed that to attract new users, he and his 120 employees needed to ensure that the League's new website contained team webpages that were "hard-hitting" and maintained their "local" feel. (23) While most of the content on the new official site was still free, some content was accessible only for a fee, including radio and video broadcasts of games. (24)

   While Major League Baseball's Internet presence has grown every year, so has the League's international standing. In 2000, foreign-born players comprised twenty-four percent of the opening day rosters of Major League Baseball teams, with 198 players representing sixteen different countries as well as Puerto Rico. (25) Due in large part to these international players, Major League Baseball has fans spanning the globe. (26) These international fans have enhanced baseball's presence on the Internet because they use the Internet to follow their countrymen who are playing baseball in the United States. (27)

   After adding Japanese stars Ichiro Suzuki and Kazuhiro Sazaki to their roster, the Seattle Mariners' website became more popular than any other Major League Baseball team's website because of the added Internet traffic provided by Japanese fans. (28) The Mariners even created a Japanese version of their website. (29) In fact, the Seattle Mariners were so popular in Japan that Internet giant Amazon.com launched a Seattle Mariners store on its Japanese website. (30) When the league enabled fans to cast online votes for its annual All-Star game, (31) Ichiro Suzuki received more All-Star-votes than any other Major League player in 2001 and 2002. (32) Many of Ichiro's votes were cast across the Pacific Ocean by Japanese fans voting online. (33)

   Problems associated with the game even failed to diminish Major League Baseball's standing on the Internet. In 2002, T.S. Kelly, director and principal analyst at NetRatings, Inc., believed that despite all of the challenges facing Major League Baseball, including the possibilities of a work stoppage, team contraction, and players' steroid use, "Major League Baseball's online presence ha[d] never been stronger." (34)

   With baseball fans in the United States as well as all over the world using the Internet to follow Major League Baseball and enhance their interest in the game, baseball was conquering the Internet. M.L.B. Advanced Media, which owned the League's official website, "www.mlb.com," saw its revenues grow from $36 million in 2001 to $91 million in 2003. (35) In fact, in March 2004, M.L.B. Advanced Media was valued at more than $1 billion and rumors circulated that the League was considering selling off a piece of the company in a public offering. (36) Given the economics involved with its Internet business, one can begin to see why the League might not hesitate to go to any means necessary to protect its valuable Internet property.

3. TRADEMARKS, THE INTERNET, AND THE LAW

   To access a baseball website, or any website for that matter, one must know that site's Internet address; these Internet addresses are referred to as domain names. (37) To access a particular website, one can simply type that website's domain name into her computer's Internet browser and she will be directed to that website. (38) A domain name is usually comprised of a simple name, phrase, or trademark associated with the particular site so that Internet users can easily remember it and enter it into their Internet browsers. (39) For example, the New York Mets use "www.Mets.com" as their domain name. (40) Having the right domain name is crucial for businesses looking to establish an online presence. (41) Therefore, domain names can be the source of much contention.

   Problems arise when people register the well-known names and marks of others as domain names before the rightful owners of these names and marks are able to do so. This conduct is called cybersquatting, and it blocks the actual owner of the trademark from registering it as an Internet domain name. (42) Dennis Toeppen became the first well-known cybersquatter when he personally registered the domain names "deltaairlines.com," "eddiebauer.com," and "neiman-marcus.com," among others. (43)

   A website that uses another company's mark in its domain name may lead people who visit the site to mistakenly believe that an affiliation exists between the website and the owner of the mark. (44) Thus, the operator or registrant of the website is "trading upon the goodwill and fame associated with the [marks] for [his] own profit." (45) Furthermore, a cybersquatter will often use...