IP: etoys.com takes the low road

[Dave Farber <farber@cis.upenn.edu>]

>Date: Fri, 3 Dec 1999 13:39:38 -0800
>From: Mark Boolootian <booloo@cats.ucsc.edu>
>To: David Farber <farber@central.cis.upenn.edu>
>
>
>This was posted to Slashdot today:
>
>It's been a long week for etoy.com. On Monday, a judge issued a
>preliminary injuction fining them $10,000 each day that their website
>was hosted at their domain. They shut it down right away, of course.
>They're just internet artists. They don't have six billion dollars like the
>company that filed the suit: eToys.com. It's beginning to look a lot like
>Christmas.
>
>etoy was founded in 1994 by a group of European artists who worked on the
>cutting edge, doing performance art at techno events and raves. Their focus
>has always been on the internet as new medium; this interview gives a feel 
>for
>their perspective.
>
>They picked the name "etoy" literally by consensus and running code. Being 
>from
>Italy, England, and Switzerland, physical collaboration was difficult, so 
>they
>got together on an IRC channel and went through a list of random names
>generated by a perl script. When "etoy" came up, they all knew that was the
>name they wanted; they first used it in October of 1994. In October 1995 they
>put up their website at etoy.com.
>
>Christmas 1995 came and went.
>
>In 1996, etoy won their first artistic award. Their work typically blurs the
>line between real world and art; in this case, they had undertaken to
>demonstrate how important and yet how fragile the system of search engines
>was. By subverting the meta tags of prominent websites like Playboy, they
>pulled inexperienced surfers to their site, where they put in a plug for
>Kevin Mitnick, and had a few laughs at the newbies' expense.  They called it
>the "Digital Hijack."
>
>A curious kind of art. In 1996 it was original enough to win an award from Ars
>Electronica. Nowadays everyone knows the trick, the search engines find it and
>disregard it, and some underhanded websites try to make a fast buck by 
>stealing
>trademarks - but etoy did it first, for fun.
>
>Christmas 1996 came and went.
>
>In June 1997 etoys.com, with an S, began operations. It wasn't until October
>that their website went online. They filed for a U.S. trademark on their
>domain, at which point etoy got a little alarmed and filed for their own
>trademark on their own domain. Maybe because they're based in Europe, or 
>maybe
>for some other reason, etoy says their application is still pending on some
>technicalities.
>
>But it doesn't matter when their trademark is granted. Their website went
>online in October 1995, two full years before etoys', and it's date of first
>use that's important - not the date of filing.
>
>Christmas 1997 came and went.
>
>Christmas 1998 came and went.
>
>But now it's 1999, the year of the e-tailer. Suddenly etoys.com, with an S,
>has gone public and is worth six billion dollars. Meanwhile etoy.com, without
>an S, again putting the spotlight on corporations and society, has raised
>money by "selling shares" of itself. I'm not quite sure how they did it, but
>at an artists' gathering, a half-serious, half-mocking exhibition-slash-
>fundraising they pulled in something over ten thousand dollars. (Which they
>then donated to their friends in the U.S., also working at the boundary of
>society and corporations, RTMark, best-known for their George W.  Bush parody
>site.)
>
>In the year of the e-tailer, what kind of speech scares corporations more than
>anything? Disrespect. Artists who don't play by the rules. People who don't
>understand that business is serious business.
>
>Etoys.com, with an S, wants etoy.com, with no S. They offered money. At one
>point they were offering cash and (mostly) stock that would have been worth
>almost half a million dollars. No sale.
>
>But that should give us an idea of how much they're willing to spend on 
>lawyers.
>
>Finally, in September, eToys filed a lawsuit against etoy, on the grounds 
>that
>a potential customer had mistakenly gone to the wrong site and had seen the
>message that - if they wanted to enjoy etoy.com to its fullest extent - they
>should download "the fucking flash plugin." They also didn't like the pierced
>breasts or etoy's sense of humor.
>
>To be precise, they claim that "the antisocial, obscene, and offensive images
>associated with defendants' use of the mark 'etoy,' both on the Internet and
>elsewhere, have tarnished the ETOYS® mark and the eToys brand name..."
>
>Let this be a lesson to anyone whose domain is coveted by a 
>multi-billion-dollar
>company: careful with the F-word.
>
>In October and November the case was bounced from an L.A. court to U.S. 
>District
>Court, and finally to a California State Court. In late November the judge
>refused a request to let the European artists attend the proceedings by
>teleconference. In those proceedings, the judge was told that the artists had
>engaged in "digital hijacking" (the 1996 project), and had sold shares of
>stock without being properly regulated on an official stock exchange (the 
>1999
>fundraising exhibition). Worst of all, they were hosting illegal hardcore
>pornography (which was actually just a link to another site).
>
>They claim:
>
>       "Defendants use the mark ETOY indiscriminately and in random
>        association with unrelated concepts. For example, on the etoy web site
>        alone, defendants use the mark ETOY in conjunction with other,
>        randomly selected words to create phrases such as: 'etoy.research,'
>        'etoy.eternity,' 'etoy.timezone,' 'etoy.history,' 'etoy.servers,'
>        'etoy.strategy,' 'etoy.journeys,' 'etoy.universe,' and 'etoy.crew.'
>
>       "By using the mark ETOY in this random, indiscriminate manner,
>        defendants cause both ETOY and the ETOYS® mark to lose any
>        distinctive, signifying meaning."
>
>Serious business.
>
>The lawyers also kindly suggested that, since at least one etoy member is from
>Switzerland, they really would be more suited to a website in the .ch domain:
>etoy.ch.  Never mind the years of work and the reputation that the artists
>have built around etoy.com - we all know that "dot-com" belongs to America!
>
>Faced with a torrent of buzzwords, the judge issued a preliminary injunction
>barring etoy from: operating a website in the etoy.com domain; associating
>their domain name with the "digital hijack"; or selling their "shares" in the
>U.S.
>
>Penalty for disobeying the injuction: $10,000 per day in fines.
>
>On November 30, etoy.com shut down its Apache webserver. Its last access came
>from the eToys law firm (which has been monitoring it closely). They had no
>choice, really. In fact, when I talked with a member of etoy, he was very
>nervous about saying things which might get him in more legal trouble.
>Suddenly, the artists are afraid to speak.
>
>How can this be, when, as the Village Voice wrote in an excellent article,
>this lawsuit doesn't even pass the "giggle test"? It's absurd to think that
>one website can shut down another for having a similar domain name - when the
>second site is not a domain poacher and has been operating two years longer
>than the first.
>
>The date of the next court hearing, at which this preliminary injunction will
>surely be overturned: December 27th. How convenient! Just after the Christmas
>shopping season.
>
>If you'd like to see more about etoy, their domain is down of course, and I
>don't know of any mirrors, but their fans have constructed a site at
>toywar.com that has some information. And etoy may put some or all of its
>site back online at its IP number (not name!): 146.228.204.72:8080.
>
>Good rules have been written to prevent things like this from happening.
>Unfortunately, the rules have not taken effect yet for most domains. Even
>after they do take effect, their legal status will be uncertain until they 
>are
>tested in court.
>
>Those rules are ICANN's Domain Name Dispute Resolution Policy. This policy
>ensures that the conditions under which a domain name can be disputed are
>strictly limited. For such a dispute even to proceed, a complainant must
>assert that each of three things is true:
>
>       your domain name infringes on a trademark;
>
>       you have "no rights or legitimate interests" to your domain;
>
>       and your domain name is being used "in bad faith."
>
>As long as you're operating in good faith, or you have any legitimate 
>interest
>in your domain, there is not even cause to bring up a dispute over a domain.
>Clearly this puts etoy.com on firm ground, because regardless of the 
>trademark
>issue (which should be resolved once their mark registration is granted) they
>win on the other two points. This doesn't stop clueless judges from issuing
>injuctions, of course. But having these rules codified as official policy 
>will
>give the legal system better guidelines to operate by.
>
>These rules went into effect for some domain name registries on Wednesday, 
>but
>will not apply to the most popular registry, Network Solutions, until January.
>
>I can't even complain to eToys.com. I clicked all over their website looking
>for an email contact address and couldn't find one. When I filled in the web
>form to ask that someone get in touch with me for this story, all I got was a
>email form letter:
>
>      It is our goal to respond to all order-related e-mail within 24 
> hours. If
>      your e-mail is not order-related, we will do our best to take care of
>      your questions, concerns and suggestions as soon as possible.
>
>It's 72 hours later, so my email must not have been sufficiently 
>order-related.
>
>In the meantime, I can at least have the satisfaction of taking my order-
>related business elsewhere this holiday season. I'm sure eToys couldn't care
>less, but it will serve me as a small comfort during the remaining 22 holy
>shopping days. In a world run by retailers, e-tailers, and lawyers, I need
>everything I can get to help me make sense of the bizarre orgy of
>spirituality-soaked commerce that serves as the endcap of each year. Ho ho 
>ho.