Harvard as a model in trademark and domain name protection.

• Author: Manas, Alayne E.

1. INTRODUCTION

   Collegiate 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 consumers. (10)

   Since that time, institutions of higher education 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 to, their trademarks to minimize instances of trademark infringement." (11) They also have resorted to litigation, bringing claims for trademark infringement, trademark dilution, and unfair competition under the federal Lanham Act, 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 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.

2. BACKGROUND

   1. 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 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

      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 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)

   3. 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 ("USPTO"). (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 occurred in or affected interstate commerce, 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. (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 of 1995 ("FTDA") "amends 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)

   4. Case Law Protecting Universities' Trademarks

      Courts first recognized colleges and universities' "protectable interest in their names and insignia" (41) in 1930. (42) In Trustees of Columbia Univ. v. Axenfeld, the New York Supreme Court concluded that the defendants called their educational service "Columbia Educational Institute" to intentionally lead the public to believe that it was the same as, or affiliated with, Columbia University. (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 to the University. (44)

      Similarly, in Cornell Univ. v. Messing Bakeries, the New York Supreme Court, Appellate Division, 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 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 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. (48)

   5. The Anti-Cybersquatting Consumer Protection Act

      Before Congress enacted the Anti-Cybersquatting Consumer Protection Act ("ACPA"), 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 domain names that embodied 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...