SAN DIEGO UNION TRIBUNE
Cyber artists’ toy war is not child’s play
Pam Dixon’s column about arts and the technology appears the first Sunday of each month.
Until recently, the Internet has had primarily a liberating, democratizing effect on small arts groups. Web pages boasting visual art, animation, music and all other manner of art have given previously obscure or esoteric groups much-needed publicity and an inexpensive virtual, not to mention global, space for their art.
Events in the past year, and especially the last six months, have made it clear that the e-commercialization of the Web is costing a lot more than just the price of a few items in the shopping basket. A higher price yet is being levied on the small arts groups that must fight corporations to co-exist on the Web and keep their names — especially their domain names — intact.
The typical scenario is that a large corporation — owning a trademark similar to an art group’s Web-site name or organizational name — discovers the art group and then takes legal action against it, issuing a cease-and-desist letter at the very least. Even if the art group owns trademarks and registered the domain name (or Web site) before the corporation existed, the group must fight for the right to use the name.
“It was very common in the early days of the Web,” says Chris Truax, a San Diego-based attorney specializing in Internet law. “I used to call it the 500-pound gorilla defense. Someone would get a domain name and some big corporation would say: `We want that name!’ So they (the corporation) would send a nasty letter from a big law firm demanding $100,000 in damages, and so on. Meanwhile, some guy gets this letter who has a computer in the bedroom and they’re thinking, `Win or lose, I can’t afford to fight this,’ so they just give up.”
Until now, corporations have had the upper hand when it comes to shutting down organizations’ domains. Without any formal legal precedent to help art groups (such as etoy) hang on to domain names that look or sound like corporate retailers’ domain names or trademarks (like eToys), it’s all a matter of negotiation. And without the deep pockets of corporations, many groups can’t afford the legal counsel required to wage a successful fight.
But recently, arts groups have forged an effective way to deal with these situations — that is, using the Net for political activism on their behalf. And that’s where things get intriguing: When artists and art groups have used the Net to garner widespread public support, they have come out ahead in every major case they’ve fought.
eToys vs. etoy
The most epic online struggle has been the infamous eToys vs. etoy case.
In the etoy fight, the U.S.-based online toy retailer eToys.com sued the noncommercial Swiss cyber-art group etoy, citing the group for trademark infringement and dilution. The suit was based on the cyber-art group’s ownership of the etoy.com Web site and domain name, which the retailer claimed was too close to its eToys trademark and domain name.
There were plenty of problems with the legal claim, beginning with the fact that etoy was a nonprofit art group not operating under U.S. law, and had registered its domain name in 1995, two years before eToys.com existed. But that didn’t stop a Los Angeles Superior Court judge from granting a temporary injunction against the Swiss art group last December. The art group was forced to take down its site or risk paying $10,000 a day in fines.
“Originally, eToys approached etoy about buying their domain name. The offers were in excess of half a million dollars,” says Truax, who represented the art group in the legal suit. “eToys found it hard to understand why these silly people in Switzerland would turn down a half a million dollars for a domain name. But etoy is a respected, award-winning Internet art cooperative. They have a name in the art world, and eToys just didn’t get that.”
Truax also says that the retailer viewed the legal action as a negotiating tactic, which was another misstep. “It’s very common in the United States to file a suit to increase pressure, but in Europe, it is not done.” The retailer’s action prompted etoy to fight the eToys, both legally and in the court of public and “net.opinion.”
But it was the public-relations campaign resulting from the court action that made the retailer’s victory bittersweet and short-lived. Net activists and members of the art world, alarmed at the implications of the legal action, waged a massive public-relations campaign against eToys.com. And what a battle it was.
“On the Internet, you can’t get away with this behavior,” says Ray Thomas, a spokesman for RTMark (pronounced “artmark”), a respected, well-organized net activist group that helped in the etoy fight. “It’s so easy to make it public.”
One of the first organizations to make the etoy-dispute public was a large Web site called Slashdot.org. The site, which receives more than a million page views a day, posted an article Dec. 3 about the etoy battle. “No one likes watching someone bullying another organization just because they have lawyers. I think that’s what raised so much anger from the community about this case,” says Rob “CmdrTaco” Malda, editor of Slashdot.org. “In the etoy case, it was clear: etoy came first, and etoy was in no way competing with eToys’ interests.”
After the article was posted, a sea of Net activists supported the art group. “You’d have an article on Slashdot and a discussion would follow. It would then spontaneously form into a listserve (mailing list), then over the course of a few hours an organization was born,” says Truax, who watched the campaign unfold. Eventually, an entire Web site dedicated to the etoy fight — named Toywar.com — came online.
“Toywar got 700 volunteers in the first two days it was online,” says Truax, who was amazed at how the Net allowed activists to form a community almost instantly.
Relatively quickly after the Slashdot.org articles were posted, big hitters in the art world heard about the story and sided with the award-winning art group. There was a news conference at the Museum of Modern Art in New York. There were virtual sit-ins that brought down eToys.com’s servers. And plenty of e-mail alerts about the battle were sent out to eToys.com’s stockholders. Both Thomas and Truax estimate that at the campaign’s peak, 10,000 to 20,000 Net activists were helping support etoy.
As public pressure mounted, the national financial press picked up the story, and then the eToys.com stock price plunged. Due to the growing impact of the negative publicity, eToys.com dropped its suit against the art group in late January, agreeing to pay the $40,000 in legal costs that etoy had incurred. “We are pleased with the outcome,” says Jonathan Cutler, a spokesman for eToys.
“There were a number of reasons why eToys decided to settle,” says Truax. “For one, they realized that etoy was not going to cave, and that they were going to have a real fight on their hands. We made that very clear to them. . . . ”
eToys figured out that there was no margin in this for them, especially once the financial press started picking up on it. eToys is a virtual company, and without good will online, they’re nothing.”
Since the etoy case, several similar corporation-vs.-art-group scuttles have occurred, but the fights now reveal the positive impact of the etoy struggle. It’s as if etoy unwittingly cut a wide path for others through a prickly legal thicket. “There’s been a lot of work done,” says Thomas. “People know what they can do on the Web. They have confidence that there are a lot of resources that are now ready to jump in to gear.”
Just as the etoy fight was ending, Autodesk, a San Rafael-based manufacturer of 3-D graphic software named 3D Studio Max, initiated a legal skirmish with Matthew Anderson, who owns a small, noncommercial graphic art Web site with the domain name “the3dstudio.com.”
Attorneys for Autodesk deemed Anderson’s domain name to be too close to its “3D Studio” trademark. In a letter dated Jan. 27, attorneys representing the company sent Anderson a heavy-handed letter asking him to cease using the domain name and to “relinquish it to Autodesk.”
Anderson took his case (and the attorney’s letter) to the public by posting everything on his Web site. It didn’t take long for RTMark to get involved. “Sixty minutes after RTMark got involved, Autodesk suddenly replied to me after a week of not responding to any of my e-mails,” says Anderson from his Arizona home. “Autodesk knew who RTMark was and what they were capable of.”
On Feb. 7, just three days after RTMark’s involvement, Autodesk decided to drop its stance against Anderson. “I was reassured of Matthew Anderson’s good faith, and I made a business decision to resolve the matter,” says Martin Konopken, senior corporate counsel for Autodesk, says.
Konopken says the real problem with Anderson’s site is that he put copyrighted images on it illegally. When Anderson took down the images, Konopken saw no reason to proceed. To bring closure to the matter, Konopken also sent an e-mail message directly to RTMark, letting the group know the situation had been resolved.
In a similar case, American clothing retailer JCrew recently clashed with an art group. The retailer asked Jason Kress, owner and founder of the trademarked JKREW Designs, to cease and desist from using the JKREW name, even though the site had nothing to do with clothing. Kress fought back by getting the word out online. RTMark got involved in Kress’ battle, and soon after, the retailer backed off and allowed Kress to continue to keep his art site.
“I used to have a couple of thousand hits on my site. But it got bigger with my ordeal,” says Kress. “At the time, I was getting 5,000 hits a day. I was surprised how quickly it happened.”
Although Kress, etoy and Anderson have won, domain name vs. trademark issues aren’t going away anytime soon for art groups.
“It’s just going to get worse,” says Malda. “We see these kinds of things everyday.”
Indeed, in a new and serious legal fight, the highly respected nonprofit, scholarly art group Leonardo, is fighting for the right to use its name. A French company, Transasia Corporation, has recently trademarked the name Leonardo and has brought suit against the art group. Representatives of Leonardo are in France trying to work out the problems. But trying to find the ground between the intricacies of French law and U.S. law promises to be ugly.
Web action against Transasia is just getting started. “Certainly, we will do what we can coordination-wise. We’re there to support this effort,” says Thomas. Already, at least six pro-Leonardo sites have popped up, and more are sure to follow.
With the amount of dissension online, it’s likely that some day, and probably soon, a slew of national and international court cases will determine the outcome of future battles such as etoy’s and Leonardo’s.
But until then, public opinion on the Net, the ultimate wild card, will continue to play the biggest hand of all in decisions.
Leonardo Web site — http://mitpress.mit.edu/e-journals/Leonardo/home.html
etoy — http://www.etoy.com/
Toywar — http://www.toywar.com/
eToys.com — http://www.etoys.com/
RTMark — http://www.rtmark.com/
Pam Dixon’s column about arts and the technology appears the first Sunday of each month.