Ten years ago the Chicago Tribune took on a couple of fleaspecks with predictable results. The Trib had just introduced the adolescent tab it called RedEye to Chicago’s sagging newspaper market, and the market didn’t open its arms. The resistance was critical (“flaunts its inconsequence,” I wrote), competitive (The Sun-Times threw together a tab called Red Streak and shoved it out the door to sow confusion), economic (the 50 cents the Tribune originally asked turned out to be 50 cents more than anyone was willing to pay), and even legal. Or so it briefly seemed.
In Los Angeles there was grumbling from Red Eye Press, publisher of The Marijuana Grower’s Guide; in Boston it came from a hip-hop magazine called Red Eye. The folks in Boston held talks with the Tribune that the magazine’s founder called “extremely demoralizing and draining” and a Tribune spokesman said proceeded “fairly amiably.” Boston’s Red Eye agreed to terms that included a confidentiality clause so intimidating no one at the magazine would even acknowledge there’d been a settlement.
Red Eye Press, which had trademarked the Red Eye name in 1995 and used it to sell books around the world, gave the Trib just five days to withdraw its own trademark application, drop the name, and pay unspecified damages. The Trib did none of those things, and the Red Eye Press lawyer didn’t lift a finger.
And so the Tribune won round one, effortlessly appropriating a brand name pipsqueaks already were using. Now it’s round two, and the shoe’s on the other foot. The Trib has the name, and it doesn’t want anyone poaching it.
Last December the Occupy Chicago crowd rolled out the first issue of an occasional newspaper that they sassily call the Occupied Chicago Tribune. The name was chosen to make a point, which is that their “independent” paper would speak for the 99 percent who don’t run America, rather than the one percent who do. Similar papers launched in other cities included the Occupied Wall Street Journal, the Occupied Washington Times, the Occupied Boston Globe, and the Occupied Oakland Tribune.
As they launched their paper, the Occupiers registered a couple of domain names: occupiedchicagotribune.org, an active site where news and opinion are continuously posted, and occupychicagotribune.org, an inactive site kept in the Occupiers’ hip pocket.
Miles Kampf-Lassin, development director of In These Times magazine, is a founder and editor of Occupied Chicago Tribune. He tells me that after the first issue came out, the paper got a friendly call from a Tribune lawyer. Douglas Masters, an intellectual property specialist at the firm Loeb & Loeb, “requested politely we change the name of the paper. There was no threat, no cease-and-desist letter.” Not sure how to respond, Occupied Chicago Tribune asked around. “We conferred with lawyers from the National Legal Guild and the People’s Law Office,” says Kampf-Lassin. “And we conferred with different Occupy publications around the country that have taken the names of popular newspapers.” The Boston paper, feeling “soft pressure” from the Globe, decided to avoid a legal hassle by changing its name to Boston Occupier. The Occupied Oakland Tribune got a cease-and-desist letter from Oakland’s Tribune and was fighting it. In Chicago, Kampf-Lassin and his colleagues decided to placate Masters. They eliminated the Gothic type in the Occupied Chicago Tribune masthead and added a disclaimer: “Media for the 99 percent. We’re proud to have no affiliation whatsoever with the 1% Chicago Tribune or the Tribune Co.”
But that didn’t do it. In fact, Masters’s conversational tone hardened. And on May 31 he acted. On behalf of Chicago Tribune Company, the corporate publisher of the Tribune, Masters filed a 15-page complaint with the World Intellectual Property Organization (WIPO), which is a United Nations agency based in Geneva, Switzerland. He maintained that Occupied Chicago Tribune had acquired its two domain names “in bad faith” and in order to “divert traffic” from Tribune websites. To avoid further confusion, he wanted both sites transferred to the Tribune.
The Tribune assured the public that it “encourages free speech in all forms and is not seeking to bar any organization from publishing news, information or opinion of its choice.” Just not under the Tribune name. The company’s credibility as a news organization was at stake, for it “depends in part on maintaining independence from unaffiliated organizations or groups with a political agenda.”
Originally, Masters wanted the Occupiers to change the name of their newspaper. Then he dropped that demand and went after the domains. Michael Deutsch, a People’s Law Office attorney who’s helping Occupied Chicago Tribune deal with Masters’s complaint, asked me if I’d ever heard of the WIPO. I hadn’t. “I haven’t either,” said Deutsch. Now the Occupiers had just 20 days to file a response in Geneva that would impress an organization few of them had known existed and that eight times out of ten rules for the side complaining.
WIPO maintains a long list of “administrative panelists” around the world who read both sides’ arguments and decide these cases—and quickly. A ruling on the Tribune complaint is likely by late July. Their decision making is guided by the international Uniform Domain Name Dispute Resolution Policy, approved in 1999. It declares that a registered domain name can be successfully challenged if it’s “confusingly similar” to the challenger’s trademark, if the registrant has “no rights or legitimate interests” in respect of the domain, and if it’s “been registered and is being used in bad faith.”
That’s what Masters argues. If you ask me, his argument plays fast and loose with common sense. That doesn’t mean it won’t play in Geneva.
Realistically, the claim that occupiedchicagotribune.org could be confused with chicagotribune.com is preposterous. But in law, realism often counts less than precedent. Masters’s complaint is laced with citations of old WIPO rulings, including one in 2001 that declared, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity.” In other words, since occupiedchicagotribune.org incorporates “Chicago Tribune,” it is confusing by definition—even if it actually isn’t.
As for Occupied Chicago Tribune having no “legitimate interest” in domains that incorporate “Chicago Tribune,” this is true only if Occupied Chicago Tribune’s interest in making a political or satiric point is not a legitimate interest. The Chicago Tribune‘s editorial page would never claim that in a million years.
Masters argues otherwise: “Even if the Active Site were to parody or criticize Chicago Tribune (it does not), Respondent’s general right to free expression does not entitle Respondent to appropriate the CHICAGO TRIBUNE Mark in connection with such expression.”
Masters is flatly wrong. Most certainly occupiedchicagotribune.org criticizes the Tribune. A January editorial began: “The Chicago Tribune’s yellow journalism reached unseemly hues January 5, when it published its front-page expose ‘New report chronicles misconduct within CPS.’ Its misrepresentations are so severe even Joseph Medill, no saint himself, must be rolling in his grave.”
And in March the site posted this meditation on the failings of big media: “In a country in which the top 1 percent owns 40 percent of the material wealth, those with deep pockets can dictate the popular narrative, while those without are marginalized or shut out of critical political dialogue. Corporate media consolidation—just six conglomerates are now behind 90 percent of the content Americans see, read, and hear—has produced a near-uniform set of news talking points. ”
In case the Tribune didn’t recognize itself in this critique, the editorial shifted its focus to the conversations with Masters: “In one particularly surreal bit of discussion in January, [the Tribune’s] representative informed our staff that they would be open to legal action were we even to use the name ‘Occupied Chicago Times.’ . . . This suggestion betrays the farcically low regard in which Tribune Company’s executives hold the analytical skills and faculties of their own readers.”
The criticism is sharp and unambiguous, yet Masters told WIPO it’s nonexistent. Why? He wouldn’t answer questions, referring me instead to a Tribune Company spokesman who also wouldn’t answer questions. But I’ll venture a guess: The Tribune‘s argument becomes a lot more persuasive if the Occupiers didn’t choose the domains to serve a critique. Then it’s a simple case of the Occupiers exploiting the proud Tribune name; there are no First Amendment implications.
A handful of WIPO’s administrative panelists are Chicago lawyers, and I talked to one of them. Most WIPO cases involve simple cybersquatting, said the panelist, which is why the complainant usually wins. If a case like that arises in Chicago, it wouldn’t matter if the panelist who decides it hails from Liverpool, or Canberra, or any other English-speaking part of the world. Or Chicago, for that matter. The issue would be cut and dried. But in cases with “First Amendment implications,” said the panelist, “the identification of the panelist might make a difference. A U.S. panelist is likely to pay some attention to those First Amendment rights.”
The panelist I spoke with does. I didn’t identify the case at hand but described it in a general way, and the panelist commented, “There are times where the domain name itself is protected speech. If the domain name were ‘applesucks,’ to me that domain name is protected speech.”
Yet the Occupiers should take little comfort from reading this. The Chicago panelist points out that plenty of other panelists would disagree.