Dear all,

The e-mail below on recent rights/domain name rulings may be of interest
(this is freely distributable, see rights notice at end).

Regards

Chris Meaney (AIMC)
Managing Director

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RANDOM HOUSE LOSES E-BOOKS CASE
Random House, one of the world's largest English language book publishers,
has failed in an attempt to prevent an electronic publisher from
distributing e-books by authors who had previously granted exclusive rights
to Random House.

The dispute arose after the electronic publisher Rosetta Books contracted
with several authors to publish certain of their works as e-books.  E-books
are created by converting digitised text into a format readable by computer
software.  The text can be viewed on an ordinary computer, personal digital
assistant or dedicated e-book reading device and includes features such as
electronic highlighting and bookmarking as well as word searching and
dictionary functions.

Some of the authors who contracted with Rosetta Books, including William
Styron and Kurt Vonnegut, had previously signed licences with Random House
granting them the exclusive right to "print, publish and sell" their works
in "book form".

Notwithstanding these earlier agreements, Rosetta Books proceeded to
advertise and sell books by authors contracted to Random House in e-book
format.

Random House sought an injunction from the Southern District of New York
District Court restraining Rosetta Books from selling the e-books, claiming
that they infringed the copyright in the works licensed to Random House.
The court found that the contracts between Random House and the authors
could not be interpreted as covering the right to publish e-books and,
therefore, Random House was not entitled to being a claim for copyright
infringement.

The court agreed with the Webster's dictionary definition of a "book" as "a
written or printed work usually on sheets of paper fastened or bound
together within covers" and "form" as the "external appearance of a clearly
defined area".  This assisted the court in its conclusion that Random House
did not own the right to publish the works as e-books.

The court also held that people who were cognisant of the customs,
practices, usages and terminology as generally understood in the publishing
trade would conclude that the licences did not cover e-books.

The judgment does not represent a complete victory for Rosetta Books and the
case will go on to a full hearing some time in the future.  However, the
decision will be seen as a blow to traditional book publishers and other
rights exploiters in favour of those wishing to exploit works in the digital
domain and, indirectly, the creators of those works.

Stuart Barry
August 2001
85


ARMANI v A.R. MANI

Mr A.R. Mani recently scored a victory over the fashion house Armani under
the dispute resolution procedure set up by the Internet Corporation for
Assigned Names and Numbers (ICANN).  The panel dismissed Armani's complaint
that Mr Mani had cybersquatted the address Armani.com.

Under the terms of the ICANN Policy (para 4a), Armani had to prove three
distinct elements in order to establish a claim to Armani.com:

(1)     The domain name was identical or confusingly similar to a trade mark in
which Armani had rights.
(2)     Mr Mani had no legitimate interest in the domain name.
(3)     The domain name had been registered and was being used in bad faith.

There was no dispute that Armani owned trade mark rights in the Armani name
to which the domain name was identical.  With regard to the second and third
elements, Mr Mani was able to show that Anand Ramnath Mani was his real name
and that he had been legitimately operating his graphic design/illustrator
business under the name A.R. Mani since 1981.  The case was not one of the
many in which respondents adopt a name with an opportunistic motive to
provide legitimacy to a domain name registration.  The panel therefore ruled
that Mr A.R. Mani was not using the name in bad faith.

The success or failure of most ICANN cases is based upon establishing bad
faith.  The ICANN procedure has proved to be particularly effective in clear
cut cases where bad faith can be established and the applicant does not have
a registered trade mark in the name in question.  (See our early warnings on
the Jeanette Winterson and Sting cases.)

Although cases resolved through the ICANN procedure are economical ($1,500
to file a case against a respondent for up to 5 domain names with a 1 member
panel) and fast (estimate of 45 days from notification of dispute to
resolution), the outcome is somewhat limited.  The panel can only order that
the domain name be cancelled or transferred.  There is no appeal mechanism
and parties are not always given an opportunity to answer matters of fact or
allegations put in issue.  Further, unlike litigation, no injunctive
remedies or awards of damages are available.  Therefore, where the applicant
has a registered trade mark it may be preferable to issue legal proceedings
for trade mark infringement as this may provide a more certain and effective
remedy for successful claims.

This Armani decision is available at:
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0537.html

Kazuko Cowley
August 2001
87



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