This article first appeared in Independent Publisher.
Copyright law is the principal system for protecting authors’ creations. It confers rights without requiring any other action, but in order to fully benefit from the law authors and parties to whom copyrights have been assigned or sold have to record their copyrights with the Copyright Office. Recordation is the key to protection. Once that step is taken the Copyright Act contains a set of statutory tools for combating infringement ranging from maintaining lawsuits in federal court to serving take-down notices under the Digital Millennium Copyright Act (DMCA).
Copyright infringement, however, is not the only form of predatory conduct directed against authors and rights owners. There is also the cybersquatting threat of strangers registering domain names rightfully belonging to authors that infringe their trademark rights. What, do authors have trademark rights? Surprisingly perhaps, they do when it comes to domain names. Trademark protection is not limited to names registered in the USPTO; common law trademark rights are equally enforceable against predators although evidentiary demands for proof are greater.
Like copyright there are remedial tools for authors to take possession of infringing domain names. Registering domain names in anticipation of an author’s success or after he or she has become recognized in the marketplace is a form of identity theft. Cybersquatters have the same underlying intention as thieves, which is to take what is not lawfully theirs and to extort ransom for returning it. It is particularly harmful where infringers register domain names in the dot com space not only because it blocks authors from marketing themselves on the Internet at addresses readers would expect to find them but could blemish their reputations or diminish their status by discouraging readers from searching for their Internet presence.
Getting to the Registrar before Cybersquatters
There are two reasons for registering domain names for personal names early: first, anticipating one’s own success locks in a valuable asset; second, the UDRP is essentially limited to authors with marketplace presences. It is this second reason that makes it imperative to register personal names before authors are known to general readers (as opposed to the enlightened who may already be waiting for the next book). Titles and character names should certainly be registered well in advance of marketing and publication for the obvious reason that they can have real economic value when selling rights to derivative works as well (and separately) for other forms of commercial exploitation. Ownership of domain names enhances the value of these assets.
The not unreasonable question is whether infringing domain names can be taken away from registrants and given to authors when the registrations are found to be unlawful. What remedial tools are available to authors? There are two venues for combatting cybersquatting: an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999; and a regular lawsuit under the Anticybersquatting Consumer Protection Act (ACPA) President Clinton signed into law the same year.
The ACPA, which is nested in the Trademark Act, is a form of trademark infringement. The preferred and least expensive tool for combating cybersquatting is the UDRP. It is comparable in some respects to a take-down notice under the DMCA; that is to say it is a procedure intended to result in a quick decision. The statutory remedy under the ACPA is significantly more expensive; no cases have been found for authors taking this route.
Beating Author to the Registrar
Optimally, authors should own domain names corresponding to their personal names, pseudonyms, book titles and characters but if they wait until gaining solid marketplace presences they may discover that strangers have beaten them to the registrar. This happens because there are no gatekeepers for registering domain names. Anyone, anywhere in the world can register domain names identical or confusingly similar to authors’ personal and pseudonymous names, their titles and characters and hold them for ransom.
In many instances authors may not even realize their names have been registered as domain names until after the publication of their works when they begin the marketing process. A couple of examples are useful for putting this concern in context. The domain name <mohyder.com> is owned by HugeDomains.com. Ms. Hayder” is a 2015 nominee for an Edgar Award for Wolf by (Grove/Atlantic–-Atlantic Monthly Press). She owns her name in the dot net space, which is ok but less desirable. A review of other authors recently featured in Publishers Weekly indicates they too do not own their dot com domain names and have resorted to other stratagems such as initials for the first and middle names as with Kevin Egan for example, (a well-regarded author of thriller and mystery novels) who has registered <kjeganfiction.com> because <kevinegan.com> (an inactive domain name clearly being held for ransom) is registered by someone else.
The distinguished, bestselling author Joyce Carol Oates does not own her domain name in the dot com space either. The domain name <joycecaroloates.com> is “owned” by Alberta Hot Rods. Alberta Hot Rods is a serial cybersquatter. Among other names the same registrant owned (before losing them in cybersquatting proceedings under the UDRP included bestselling authors Dr. Robin Cook, Michael Crichton and Jeffrey Archer, Pamela Anderson and Amber Smith (models and actresses), Tom Cruise and Kevin Spacey (actors) and Larry King (television personality). Ms. Oates has not challenged the bad faith use of her name although there would be no legal impediment however long she waits.
Infringing registration in the other spaces (dot net and dot org or any of the hundreds of new top level domains introduced by ICANN since 2014) are less troubling only because they are less likely to be regarded as an author’s natural Internet address. However, registrations in other top level domains can be distracting and should be shut down if possible.
The UDRP is particularly receptive to established authors by granting them unregistered trademark rights but less generous to authors without consumer recognition.
Authors who have achieved “brand” recognition, as exemplified by J.K. Rowling who owns a host of trademarks in a variety of jurisdictions, are able to shut down infringement of their names relatively easily. Ms. Rowling’s name was registered in 2004 by a Uruguayan domiciliary who purchased <kjkrowling.com> and <www-jkrowling.com>. Joanne Rowling (the owner of the trademark) filed a complaint under the UDRP and the domain name registrations were transferred to her.
Rogue domain names for “Harry Potter” (<shop4harrypotter.com>, <legoharrypotter quidditchmatch.net>) have been successfully shut down. Titles for example that cannot be copyrighted can be trademarked if they are associated as the source of goods or services. “Harry Potter” has featured in a dozen or more domain names; all have been captured by licensees in UDRP proceedings. HARRY POTTER is a registered trademark for clothing; HARRY POTTER AND THE DEATHLY HALLOWS is a registered trademark for printed matter and paper goods (including notebooks, diaries, greeting cards, photographs and calendars).
While the proof demands for taking back control of one’s name are more demanding without a registered trademark a good number of authors have employed the anticybersquatting tools successfully to combat cybersquatters not only in the dot com space but also in the other top level domains that infringe their rights.
The list of successful authors include Delia Ephron (bestselling author, screenwriter, and playwright), Louise Rennison (author of the Confessions of Georgia Nicolson series for teenage girls), Gary Regan (Cocktail Columnist for San Francisco Chronicle, host of gazregan.com, and publisher of newsletters for bartenders worldwide) and Nathaniel Branden (author, lecturer, therapist and corporate consultant focusing on self-esteem and personal development).
In contrast to Joanne Rowling Cook, Crichton, and Archer are three examples of best-selling authors published by traditional publishers who did not have registered trademarks when they filed their UDRP complaints. However, authors without marketplaces presences have a heavier burden. Only those authors have standing to maintain a UDRP who have trademark rights in their names (as brands). The likelihood of prevailing in a proceeding or lawsuit depends in large measure on the timing of the registration of the domain name in relation to an author’s marketplace presence. For example, in Danette Haworth v. Jack Leeds, FA1591257 (Nat. Arb. Forum December 30, 2014) the author lost her domain name through inadvertence in failing to renew it but because she had a lengthy marketplace presence with that domain name (and was successful in asserting a common law trademark) the Panel held that the registration was opportunistic and returned the domain name to the author. The opposite occurred in Sai Maa v. Domain Finance, Inc. /Minakumari Periasamy FA1105001390126 (Nat. Arb. Forum June 30, 2011) where the domain name registration preceded the earliest date of complainant’s first use of her trademark in commerce.
In another recent UDRP decision, in which the Panel denied relief its rationale hinged on the works apparently being self-published: “[I]t was not even clear from the record here that the two books were published by a commercial publisher, as opposed to being self-published.” Betty Liu v. Nicklas Jonow, D2014-0021 (WIPO March 5, 2014). Implicit in this decision is the demeaning view that authors of self-published works have a lower standing than works from traditional publishers.
To demonstrate the difficulty for less well-known authors the Panel in another recent case pointed out that “the evidence goes to the professional and life experience of Complainant rather than to proof that [her] name . . . serves as a unique trade identifier for specific goods or services, that is, functions as a trademark.” Karen Finerman v Ben Johnston / Bookclout, FA141200 1596768 (Nat. Arb. Forum February 12, 2015). These decisions highlight the problem and should sharpen an author’s awareness of the evidentiary demands.
The important point the Karen Finerman and the Betty Liu disputes illustrate is that authors if they decide to file a complaint must understand the evidentiary demands because if they fail to take the learning seriously they will lose. Unproductive authors are probably out of luck, unless their single works have achieved great success in the marketplace. Domain names purchased before a trademark comes into existence is not cybersquatting; the evidentiary difficulty here is to establish an earlier common law date which requires keeping accurate records and supporting documentation.
The first thing authors should do on reading this article is to check a Whois Directory for their names (use a search engine to find a Whois Directory). If their names are available in the dot com space they should purchase the domain names. It is also good practice to purchase title names and characters well in advance of publication. Avoid using titles for which the corresponding domain names are already registered.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here.