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Why the Steve Jobs decision was wrong

In this guest post, Attorney Paul Keating writs that the recent UDRP decision for was flawed.

Blue image with the letters UDRP

The decision troubles me deeply.  In terms of trademark, I see it as attempting to shove a round peg into a square hole and ignoring the many gap.  Although the outcome is perhaps the result of an inexperienced foreign Respondent, I would have expected more.

By way of background, my search for the Claimant dug up several addresses in Palo Alto.  These appeared to be a registered address and not active business locations.  I did not find any website that was related to the Claimant.  A reverse WHOIS search at DomainTools did not show that Claimant had any registered domain names.  In short, I found no evidence that Claimant really existed, let alone that it had used the asserted trademark in any manner whatsoever.

The WIPO TMDM trademark site shows 66 registered trademarks for “Steve Jobs”, 19 of which are registered by third parties unrelated to Mr. Jobs.  Indeed, the 1st registration listed was filed in France on September 2011 by Yohann Uzan. There was one US registration but it included “Steve Jobs” in a laundry list of famous names.

Claimant’s earliest trademark registration was in 2018 (it has since filed numerous registrations in different jurisdictions), all of which are outside of the US.  I could not see any registration documentation that made a “first-use” claim that predated the 2018 application.

The panel concludes that a common law right had been established as of 1999, thus pre-dating the domain registration.  The conclusion is based on the following:

Complainant contends that the name STEVE JOBS has also acquired strong common law trademark rights.  The commercial community and international public identify Mr. Jobs as the alter ego of Apple. As CEO, Chairman and advisor to Apple for decades and the renowned visionary behind the company’s creations, Mr. Jobs became inseparably intertwined with the company’s successes and failures.  Compl. Ex.E shows Steve Jobs’ connection to Apple and public perception, connecting Mr. Jobs to the successes and failures of the company.

Respondent rebuts that common law trademark rights in a person’s name needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name is insufficient to establish trademark rights in a person’s name.

Complainant states that Steve Job’s personal name has taken on such a cachet that it has become a trademark.  See Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005). It further submits a screenshot of an archived news and media database showing the STEVE JOBS name linked to Apple over 10,000 times in articles across the globe prior to December 21, 1999, the date of Respondent’s registration for the <> domain (Compl. Ex. H), including in Asia at least 1,247 times prior to the same date, displayed in Compl. Ex. I. After founding Apple, Mr. Jobs served in executive, leadership and chief advisory roles at Apple for about 24 years total. Mr. Jobs supervised the rollout of successful Apple products such as the iPod, Apple iTunes Store, iPhone and iPad, and, at times, successfully requested that efforts on certain products be halted or discontinued to allow the company to focus on more promising endeavors (Compl. Ex. E). Complainant also submits Compl. Ex. F: a few awards and recognitions Mr. Jobs received during and after his lifetime for the contributions, he, through Apple, made to the technology industry as a whole, as well as Apple’s recognition for the same. In 2002, Apple was awarded the Technical Grammy Award for its technical contributions to the music industry. See Compl. Ex. F. Complainant, which is solely owned by Mr. Jobs’ widow, Mrs. Jobs, is the owner of the rights in the STEVE JOBS trademark and has an interest in protecting the STEVE JOBS name from commercial use.

The Panel observes that the name ‘Steve Jobs’ has satisfied the factors to consider when determining whether a name has acquired common law trademark protection in the case Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068 (WIPO Dec. 21, 2005), namely: (i) the extent to which the commercial community identifies the individual with the company; (ii) the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company; (iii) the extent of the personal ownership of the company by the individual; (iv) the degree of personal control that the individual exercises over the enterprise; (v) the extent to which the individual is identified with any major achievements of the enterprise; and (vi) whether it can be said that the individual and/or the company has a demonstrable interest in protecting the individual’s name for commercial use.

The above is largely based upon the outcome of the Chung, Mong Koo and Hyundai Motor Company case, a default UDRP decision Neil Brown decided in 2005.  I have difficulties in awarding precedent status to default cases.  However, my problem with the decision does not rest on that alone.

None of the facts in the Chung case seem to be present here.  In the Chung case, the evidence showed that the phrase was understood in a trademark context because: (1) Hyundai had itself used the phrase “Chung Mong Koo” in a trademark capacity, AND (2) The respondent itself used the domain to specifically target Hyundai car owners.  No such evidence was cited in the present case.

While Steven Jobs is linked to Apple, there is no evidence that Apple made efforts to sell its products using the Steve Jobs name.  As my memory serves, Mr. Jobs was a great CEO and spokesperson for Apple products (as well as those of NexT and Pixar).  However, the decision makes no reference to Mr. Jobs (or Apple, NexT, or Pixar) having sold any products or services under his own name.

The WIPO index cites a number of cases dealing with celebrity claims.  Perhaps the most well-reasoned statement was made by the 3-,member panel in Dr. Michael Crichton v. In Stealth Mode D2002-0874

In light of the Second WIPO Domain Name Process, it is clear that the Policy is not intended to apply to personal names that have not been used commercially and acquired secondary meaning as the source of goods and/or services, i.e. common law trademark rights: The Reverend Dr. Jerry Falwell and The Liberty Alliance v. Gary Cohn, and, WIPO Case No. D2002-0184; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Kathleen Kennedy Townsend v. B. G. Birt, WIPO Case No. D2002-0030; R.E. Ted Turner and Ted Turner Film Properties, LLC v. Mazen Fahmi, WIPO Case No. D2002-0251.

To establish common law rights in a personal name, it is necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source. Upon such proof, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services: Kevin Spacey v. Alberta Hot Rods, NAF Case No. FA0205000114437.

WIPO Index 1.6 specifically uses the Crichton language stating that finding a common law right in a personal name requires either (1) proof of use of the person’s name as a distinctive identifier of goods or services offered under that name ; or (2) proof of passing-off – making misrepresentations to the public in the context of trade.

The decision seems to have ignored these lessons and seeks to expand well-reasoned limitations so as to extend to famous CEOs and the like.  What makes the instant Steve Jobs case more egregious in my opinion is that there were no citations to relevant authority other than the default Chung case.  The decision seems to have ignored all of the conditions noted in Index 1.6.

The Chung decision has been regularly criticized and it seems an outlier that unduly expands the UDRP beyond its intended scope.  Applying Chung in this case completely ignores the fact that mere celebrity status as a business personality is regarded insufficient to obtain the remedy under the Policy. The essential analysis is whether the celebrity has used his/her personal name in a manner that shows or establishes trademark or service mark rights.  This requires that the celebrity use the mark in a commercial context as a trademark – in other words as an indication of the source of goods or services.

The Jobs decision provides no evidence showing that Steve Jobs was used as “a distinctive identifier of goods/services offered under that name”.  Nor does it reference passing-off.  While Mr. Jobs was certainly a famous CEO and Apple spokesperson, Apple did not sell “Steve Jobs” products/services.  Nor did Mr. Jobs.  Unlike other cases, such as those involving famous authors, there was no reference to any books or movies Mr. Jobs may have authored.  The cited facts seem a far cry from those of the Crichton case.   Indeed, they do not even approach those referenced in your own default case in Chung.

Also troubling to me was the complete absence of any reference as to exactly how the Claimant came to hold any of the asserted pre-1999 common law trademark rights.  Claimant was formed in 2015.  The Delaware records do not disclose ownership.  The decision makes no reference to Claimant’s history.  Nor does it reference how a company formed in 2015 could have succeeded to supposed common law trademark rights that pre-existed the domain registration in 1999.  To hold such rights they would have had to be assigned by the owner.  Who would have been the owner?

While it could have originally been Mr. Jobs (and after his death, his estate), such is contradicted by the decision’s stated reason for the trademark’s existence.  In the decision, panelist the decision cites only to Apple:

The commercial community and international public identify Mr. Jobs as the alter ego of Apple.

Given this statement, the “owner” of the common law rights would logically be Apple because it was Apple’s commercial activities that had been supposedly promoted.  It would be counter-intuitive to believe that Mr. Jobs, by acting as an Apple spokesperson and CEO would be able to claim common law trademark rights in his name in association with Apple.  Remember, Mr. Jobs was an employee of Apple.  Thus, his activities as an employee were legally for the benefit of his employer – Apple.  It would seem that any common law rights are associated with (and owned by) Apple, not the Steve Jobs estate.

This brings me to a more glaring problem.  In Chung both the individual AND Hyundai were claimants.  This was true with all other cases (that I found) citing Chung with approval; the UDRP claimant was either the entity to which the individual was “extricable linked” or both the individual and the company.  I have not found a case in which the individual alone was the claimant.  This makes sense given the comments above – which justifies the “trademark” on the commercial activities of the company for whom the famous person worked.  Here, Apple was not a claimant.

While the Steve Jobs estate may have retained publicity rights (which could arguably have been assigned to Claimant), publicity rights alone do not satisfy the UDRP’s requirement for a trademark.  The decision makes no reference to ‘passing off” in the context of establishing trademark rights.

The panelists seem to have confused fame with trademark status.  The simple fact that Steve Jobs was famous is insufficient to award trademark rights.

I am also troubled by the treatment of legitimate interest and bad faith.  Claimant argued that Respondent’s use was “diversionary”, using the asserted trademark to divert users to Respondent’s website containing links unrelated to the trademark.  Respondent provided evidence showing that the domain had been registered and held by the respondent since December 1999.  Respondent stated he was known as “Steve Jobs Kim”.  During this time the domain was used for a variety of purposes.  From 2005 through 2009 it was used in PPC.  For most of 2012 it was used as a jobs platform (displaying the banner phrase “Steve Jobs Kim”).  From 2016 through now it was used as a community portal for the respondent (again displaying the banner phrase “Steve Jobs Kim Job Site”).

The Panel ignored the use by focusing on the supposed common law rights:

The Panel cannot find any evidence that Respondent began to use the name ‘Steve Jobs’ as his nick name prior to December 21, 1999, the date of registration for the disputed domain name.

But even if the common law rights existed, and even if they were owned by Claimant, the Panel’s finding is non-sensical.  The Claimant admitted that the use was non-conflicting (the site “contained hyperlinks to content unrelated to Steve Jobs”).  There is no evidence that Respondent’s site conflicted with the asserted trademark or evidenced passing off.  Complainant argued that Respondent had not developed rights in “Steve Jobs”, even though shows it was used as “Steve Jobs Kim” and “Steve Jobs Kim Jobs Site” since 2012. The mere existence of a trademark cannot defeat legitimate interests in a domain name when the evidence shows the absence of conflict.  If it were otherwise then the 2nd and 3rd elements of the UDTP would be meaningless drivel.

When it comes to legitimate interest, the Respondent’s burden is merely to show “plausible, non-infringing explanation for choosing and registering the domain name.” (Telephone and Data Systems, Inc. v. Protected Domain Services / Daniel Wang, D2011-0435 (WIPO 2011))

The Telephone & Data panel also confirmed that a respondent’s rights or legitimate interests are not measured with respect to the interests of the Complainant or any third party.  “Complainant’s registration of the CHOICE trademark does not give Complainant unfettered rights to use the name.  Trademark ownership confers no absolute monopoly on a word or symbol.” (Id; citing Jeffrey S. Thompson d/b/a The Wedding Planner v. Wedding, lnc. D2002-0086 (WIPO 2002).

“Trademark rights are not coextensive with rights to a domain name and thus trademark holders do not have the absolute right to reflect their mark in a domain name.” Goldberg & Osborne v. The Advisory Board Forum, Inc., D2001-0711 (WIPO 2001).

The UDRP does not support a balancing of which party has a “better” right.  Respondent must prevail if it has established apotentially legitimate interest in the disputed domain name and Complainant has been unable to prove that such interest is illegitimate.” (Borges, S.A., Tanio, S.A.U. v. James English, D2007- 0477 (WIPO 2007; Choice Courier Systems, Inc. v. William H. Kirkendale, D2002-0483 (WIPO 2002)).

I have similar issues with the decision when it comes to bad faith.  The Panel concluded that Respondent must have had knowledge of Claimant’s trademark rights because it registered the domain name only 2 years after Mr. Job’s reconnected with Apple, which “made it possible that Apple enjoyed resurgence on an unprecedented scale and ultimately became one of the most valuable U.S. companies in history”.  The Panel is thus concluding that the asserted mark became famous less than 2 years of his rejoining Apple.  He joined Apple as “interim CEO in July 89, 1997.  In 2000 he became CEO.  In reality Apple continued to suffer under Mr. Jobs.  Its public stock price was less than $0.25/share (yes, 25 cents) until 2006 when it reached a whopping $10.46/share (Apple Historical Stock Prices).  Most would say that Apple became successful only with the much later release of the IPhone.  It bothers me that the Panel merely assumed the immediate success of Apple such that Steve Job’s name could have gained common law trademark status in less than 2 short years.

While the Panel references Respondent’s use of the email address and offering consulting services and links relaying technology news, it must be remembered that Mr. Jobs died in 2011.  Last time I checked it was difficult for a dead person to either use email or provide consulting services.  And if Jobs was as famous as the Panel believed, the vast public would have known of his death years ago.  While the registered trademarks cover a laundry list of products and services, none of those registered trademarks existed when Respondent registered the domain (or began using publicizing the email, consulting services or technology news).  This would preclude bad faith use.  And of course, nothing in the decision links the supposed common law trademark rights to emailing, consulting or providing technology news.

I must say that the Panel seems to have lost its way and I am saddened by the fact that it appeared to me that Mr. Brown may have written some, if not all, of the decision.  I would have thought he would have objected and filed a dissent.  Mr. Brown seems to have substantially modified his outlook on UDRP matters and developed a far encompassing view of trademark rights which does not seem to be supported by the original purpose enshrined in the UDRP.

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Author: Andrew Allemann

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