[Random-bits] Jerry Gleeson: Kodak web trademark dispute

[James Love]

This is a dispute over whether or not a Kodak investor and critic can
use the name of Kodak in an Internet domain, with names such as:

http://www.kodakinvestor.com, as well as:
       
WWW.KODAKDEALER.COM WWW.KODAKSHAREHOLDER.COM WWW.KODAKEMPLOYEE.COM
WWW.KODAKANALYST.COM WWW.KODAKDEALERS.COM WWW.KODAKSHAREHOLDERS.COM
WWW.KODAKEMPLOYEES.COM WWW.KODAKANALYSTS.COM WWW.KODAKSTOCK.COM
WWW.KODAKSTOCKHOLDER.COM
 
---------------------------

GANNETT NEWS SERVICE, January 19, 2000

January 19, 2000, Wednesday, FINAL EDITION

HEADLINE: Kodak sues Web site for infringement

BYLINE: JERRY GLEESON; Westchester Journal News

DATELINE: NEW CITY, N.Y.

BODY:
   NEW CITY, N.Y.--Bruce Sirovich owns a photo lab and is fighting
the sort of adversary that most people in his business would not
want to antagonize: Eastman Kodak.

The $ 20 billion corporation has hauled him into federal court,
complaining that his use of the word "Kodak" in a series
of Internet Web site addresses is infringing on its trademark.

A jury trial could begin as early as March in U.S. District Court
in Manhattan. Kodak is seeking unspecified damages and wants to
put an end to Sirovich's use of the Web site addresses.

He appears unrepentant. He accuses Kodak of trying to silence
his withering criticism of the management and of certain company
products he regards as inferior, an accusation the company denies.

"I tilt at windmills," said Sirovich, 56. "I really
believe what I'm doing is right."

Issues of free speech and trademark infringement go back more
than a century, but experts in the field say the evolving arena
of the Internet makes it difficult to predict how this particular
battle will turn out.

Sirovich's interest in photography goes back to his boyhood days,
working in the darkroom in the basement of his parents' home in
Maryland. It led to his study of physics and ultimately to a doctorate
in that subject; his thesis was on the arcane subject of particle
diffusion in frozen neon gas.

He founded Technilab Inc. in New City in 1983 at a time when one-hour
photo processing was becoming popular. Ask him how business is
and like many merchants he talks about the difficulty in finding
staff (his grown daughter helps out behind the counter) and about
nearby competition.

Ask him about Kodak, and he peppers his conversation with obscenities.

Sirovich alleges that Kodak chemicals have damaged his lab equipment
and says the company's new film products are inferior to their
predecessors.

He said after hearing that Kodak chairman George Fisher sometimes
answered his own telephone directly, he tried to call him at the
company's headquarters in Rochester to share his views. He was
transferred to a subordinate instead.

Kodak spokesman Charles Smith said Kodak has procedures for replacing
defective merchandise, but he was unfamiliar with the details
of Sirovich's complaint. The company's newer films, he said, are
superior to their predecessors.

Sirovich, who said he grew up with Kodak products, said he now
recommends other manufacturers to his customers. He owns stock
in Kodak, he added, because he hopes that some day "somebody
good" will take over management of the business.

Last year Sirovich began posting his views -- lengthy pages of
single-spaced type, with liberal use of boldface and capital letters
-- on Internet Web sites that his teen-aged son helped design.

The sites, nearly a dozen in all, had addresses Sirovich had registered
that all featured the word "Kodak" in them (including
www.kodakdealer.com and http://www.kodakinvestor.com/).

Kodak filed its lawsuit against him in October. Company spokesman
Paul Allen said Kodak has defended its 112-year-old trademark
name in court before but this is the first time in the United
States that the company is challenging its use in an Internet
address.

"If you fail to do so, you could lose your trademark,"
said Allen, who declined to discuss the lawsuit in detail. Sirovich
"certainly has his right to free speech, but infringing our
trademark is not something we can accept."

Sirovich said he sees the issue in more personal terms.

"I regard George Fisher as my employee," he said. "George
Fisher regards me as something he wants to scrape off the bottom
of his shoe. They're trying to shut me up."

Sirovich's attorney, Jerold C. Rotbard, said there are some legal
precedents that support his client.

In 1998, a federal judge dismissed a lawsuit brought by Bally
Total Fitness against a man who had set up a Web site that criticized
the health club chain (the Web address included "Bally").
Judge Dean D. Pregerson held that the use of the trademark in
the context of consumer commentary amounted to speech that is
entitled to First Amendment protection.

"The explosion of the Internet is not without its growing
pains," Pregerson wrote. "It is an efficient means for
business to disseminate information, but it also affords critics
of those businesses an equally efficient means of disseminating
critical commentary."

A less favorable federal ruling, however, may play a larger role
in Sirovich's case.

Planned Parenthood Federation of America sued the operator of
a Catholic radio program broadcast in Syracuse. In 1997, Planned
Parenthood successfully obtained a court order barring the operator
from using a Web address (http://www.plannedparenthood.com/) that contained
anti-abortion messages.

In her decision, U.S. District Judge Kimba Wood held in part that
the operator was making commercial use of Planned Parenthood's
trademark, since the Web site was promoting an anti-abortion book.

Rotbard said that Wood is the same judge who is overseeing Kodak's
current lawsuit.

He said there is no commercial use of the Kodak name, that Sirovich
is just expressing opinions. His Web sites are clearly labeled
at the top of their pages as the property of Technilab and not
affiliated with Kodak, Rotbard said. They even offer a "hot
link" to Kodak's own commercial site for browsers seeking
the company.

"Do you see how many Star Trek Web sites there are? Thousands,"
he said. "What Bruce is doing is similar to that."

The issue of commercial use will be an important one in the case,
according to John Berryhill of Dann, Dorfman, Herrell and Skillman,
a Philadelphia law firm specializing in trademark and copyright
cases.

"If you're making a lawful, non-commercial use, that will
be counted in your favor in the mix," he said. "Intent
is everything, and objective manifestation of intent is everything."