120 Days To R-evolution
They Won the Battle. We Won The War
It's been a long time since the United Food and Commercial Workers International began its battle for the domain name www.ufcw.net. More than 5 years have passed since they first objected to the use of the domain by the small grass roots union reform group that called itself UFCW Local 1518 Members for Democracy and more than 3 years since it launched its lawsuit alleging that MFD's use of the acronym "ufcw" in its domain address and meta tags constituted "passing off on the goodwill of the UFCW".
On October 17, 2005, the matter known officially as United Food and Commercial Workers International Union and David Watts on his own behalf and on behalf of all members of the United Food and Commercial Workers International Union v. Sharyn Sigurdur, Kelsey Sigurdur, John Doe and Jane Doe, carrying on business under the firm name and style of Members for Democracy and the said Members for Democracy finally saw the light of a courtroom, with the UFCW demanding.
1. A Declaration that the Defendants' website, www.ufcw.net (the "MFD Website") headed "THE UNITED FOOD & COMMERCIAL WORKERS UNION, MEMBERS FOR DEMOCRACY" constitutes passing off;
2. A Declaration that the Defendants' use of the United Food and Commercial Workers International Union's (the "UFCW") name or acronym or any similar variations thereof in connection with the MFD Website constitutes passing off;
3. A permanent injunction restraining the Defendants, and each of them, by themselves, or by their servants, agents or otherwise, from using the UFCW's name or acronym in connection with the MFD Website or any website without the approval and consent of the UFCW, and in particular, from using the URL www.ufcw.net or any similar URL or the UFCW's name, or the name of any UFCW local in the meta tags for the MFD Website or any other website without the approval and consent of the UFCW.
It wasn't just about the domain address. This injunction, if granted, would have prohibited any reference to the UFCW on the MFD web site. It would prevent Sharyn and Kelsey Sigurdur from making reference to the UFCW on any web site - without the approval and consent of the UFCW. At the trial, the UFCW claimed that any use of the acronym in any way that would attract Internet search engines was objectionable.
Although no evidence of any confusion or damage was ever presented, the UFCW nevertheless asked for a remedy that included reimbursement of its legal costs as well as general, punitive and special damages.
In Canada, the test for the tort of passing off is based on three factors:
1. The existence of reputation or goodwill at the relevant time. This includes consideration of whether the plaintiff was recognized by the trade name and whether the trade name was distinctive within the relevant field of activity.
2. A misrepresentation leading the relevant public to believe there is a business association or connection between the parties. This includes consideration of whether the defendants' use of the trade name is likely to deceive the relevant public. Any misrepresentation need not be deliberate and proof of intent is not necessary. Evidence of likelihood of confusion, leading to the possibility of lost business opportunity, is relevant. However, the establishment of actual confusion is not required.
3. Damage or potential damage flowing to the plaintiff as a result of any misrepresentation due to loss of control over its reputation is presumed.
Ciba Geigy v. Apotex
The Defendants, who represented themselves, argued that there was no misrepresentation in the MFD's use of the www.ufcw.net domain address or elsewhere on the web site and that the domain address was but one factor that should be considered when determining whether a misrepresentation had taken place. The web site could not, in our view, be mistaken by anyone to be approved of or associated with the UFCW. The domain name was chosen to reach out to the community that MFD wished to engage. MFD and the UFCW had no common business or other interest, hence there was no goodwill on which to pass off.
In the alternative, should the court find against us, we asked that the UFCW be denied its remedy on the basis that it was too broad and that its delay in pursuing its claims put us in a position of considerable prejudice (disadvantage). With the growth of the MFD web site over the past five years (in size and complexity), a move to a new domain would be far more difficult than it would have been in 2000 or even in 2002.
On November 3rd, the verdict came down.
The UFCW did not get the gag ball that it was clearly hoping for. Nor did it get whatever ridiculous amount of money it had in mind as damages.
The Judge decided that, while MFD's use of the acronym "UFCW" in its domain address could cause initial confusion and so was a misrepresentation (and this in itself was sufficient to establish passing off), the remedy wasn't quite what the Voice for Working America was hoping for.
MFD has been ordered to stop using the domain address www.ufcw.net 120 days from November 3, 2005 (with a possible extension if the transition from the current domain address to a new one proves to be more time consuming). Since damages are presumed where passing off has been found, we must pay to the UFCW the sum of $100.
The Bottom Line
This is an important decision for us and for operators of protest web sites in Canada.
After all the grandiose allegations and extreme remedies the UFCW was seeking, we got busted for one reason only: Using "ufcw" in our domain address without any other words. The penalty was nominal and we were given a period of time to migrate to a new address. Why is that important? Because it means that we and our community will be able to make the transition without the web site becoming lost and unreachable. Beyond the impact on ourselves however, is the fact that the decision may help other Internet activists stay out of trouble and send a message to undemocratic unions like the UFCW that suing Internet activists and waiting for them to hoist the white flag really doesn't pay.
In her ruling, the Judge stated:
It is only the bare use of the acronym ufcw in the domain that is objectionable. Should the defendants chose to use ufcw as part its of domain name such as using the domain name like ufcwmembersfordemocracy or ufcwmfd or some other name which incorporates but is not exclusively comprised of the plaintiff's acronym, this may well not amount to a misrepresentation.
The Plaintiff is entitled to a declaration that the use of the domain name www.ufcw.net by the Defendants amounts to a passing off. As to what flows from the declaration it is necessary to consider the facts of this case.
The Defendants' web site is a reform-oriented protest web site. They chose the name for, in my view, legitimate reasons. They initially wanted to specifically reach the Plaintiff's members and to stimulate debate about the Plaintiff's governance structure and about union reform generally. They must be free to identify the Plaintiff and communicate with or reach the Plaintiff's members, to paraphrase Sigurdson J., in the BCAA case.
No commercial purpose has been alleged or established. The Defendants have not attempted to financially profit from the use of the name or to sell it to the Plaintiff.
The appropriateness of using the web site as a medium for protest, political statement and reform is in fact broadly recognized and indeed is recognized by the Plaintiff itself which has a variety of protest web sites that it operates such as www.walmartworkerscanada.com.
The Plaintiff has been slow in taking steps to prevent the continued use by the Defendants of the domain name waiting almost 2 years to commence litigation and then another 3 years to take any substantive steps in the litigation.
In the interim the web site has evolved, become more sophisticated and has become ever more popular. It is the evidence of the Defendant Kelsey Sigurdur that it will be difficult and time consuming to make the changes required if the Plaintiffs are granted the relief sought. In addition, in his opinion, the web site, if renamed will be difficult to find using search engines for a considerable period of time. The Plaintiff's expert Doug Arnold says automated processes are available to make the necessary editing changes and that other steps can be taken to reduce the difficulties web users may have in finding the web site however he does not in his evidence address either the cost or the resources required to take such steps.
Balancing the competing interests here I have concluded that the Plaintiffs are entitled to an injunction restraining the Defendants from continuing to use the web address www.ufcw.net but because the Defendants need time to facilitate an orderly transition to a new domain and web site address, consequently I will order that the Defendants shall, within 120 days be enjoined from using the domain name ufcw.net and the web site address of www.ufcw.net. The Defendants are at liberty to apply to me before the expiry of the 120 days for an extension if they are encountering difficulties in making the necessary changes.
With regard to the Plaintiffs' damages claim, as I have said they have proven no specific damages although in circumstances such as these damages are presumed. This is a case at best for nominal damages and I set the damages payable by the Defendants to the Plaintiffs in the amount of $100. In the cirucmstances of this case including the overreaching and unsustainable relief originally sought by the Plaintiff I will order each party to bear his or her own costs unless there are matters such as settlement offers of which I am unaware.
NOTE: These excerpts were transcribed by MFD to the best of our ability from the Judge's oral ruling.
The nominal amount awarded as damages was the result of a number of factors:
- The domain name was chosen for a legitimate reason.
- It is important that protest web sites be able to reach the target audience.
- The web site was not used by any commercial purpose.
- There was no intent to profit from the use of the domain address.
- The importance of protest web sites is recognized - even by the plaintiffs who run a few of their own..
- The UFCW was slow to advance its claims.
- The difficulty involved in migrating to a new domain address given the evolution of the web site since 2000.
- The initial remedy sought by the UFCW was unsustainably broad.
All of these are factors that provide guidance to protest web site operators in relation to the use of the names of the organizations that are the subject of their protests in connection with their web sites and particularly in their domain addresses.
And that's what this decision is for the UFCW. Nothing to celebrate. They get an order requiring us to stop using the domain address (we don't even have to give it to them, we just have to stop using it) and to pay them a C-note.
We get a period of time in which to evolve and a legal decision that will help other protest web sites protect themselves from similar lawsuits and defend themselves if they end up on the receiving end of one.
What We Won
The legal battle was about a domain address but to us the underlying issue - the war - was about something a lot bigger and more fundamental than that. It was about whether Internet activists would be driven offline by a big well-resourced organization with a long track record of throwing its weight around. Our cause, in defending ourselves, was to win the war - to not be silenced and sidelined.
Five years after our web site was launched, we're still here, more active, more controversial, getting in-the-faces of the lords of labour, shining bright lights into murky places, exposing hypocrisy, lies, payola and shaking up the existing order more often than ever. And we're going to keep right on going.
It was this, we believe, that the UFCW really wanted to "restrain". That's obvious from the remedies that it was seeking. It was never about the domain address. If that were really the case, the issue would have been settled five years ago, on October 20, 2000, when UFCW Local 1518 Members for Democracy offered to give www.ufcw.net to the UFCW on terms as proposed by its International President Douglas Dority.
Yes, believe it or not, it's true: Our day in court came almost 5 years to the day after the UFCW was offered the domain address www.ufcw.net by the small group that was then known as UFCW Local 1518 MFD. For whatever reason, they decided they'd rather sue MFD instead.
During the period 2001 - 2003, the UFCW was busy suing a lot of people. UFCW v. Sharyn Sigurdur, Kelsey Sigurdur and Members for Democracy was just one of a number of lawsuits launched against Canadians who used the Internet to express their views about its practices and achievements. Many of the other defendants settled or otherwise backed off.
But it didn't work out that way with us. The UFCW's scare tactics didn't scare us away. If anything, they made us more defiant. They caused us to reflect more intensely on the nature of biz-unionist oppression and to talk about it online. Their foot-dragging and waiting in the bushes gave us time to bone up on the law to the extent that we could mount a reasonable defense (for a bunch of shitdisturbers who have never set foot inside of a law school - except for the library at one).
Five years after it all began we're still here and they ... look stupid. How many thousands of members' dollars have been spent? And all for a lousy c-note and a domain address that they don't even get to own. One hundred and nineteen days from now, we'll still be out here - only more evolved. And they will look stupider than ever for helping r_evolution.
Some time over the next 4 months we will migrate to a new domain address and there we will launch ... something really cool. The next leap in r_evolution. We'll keep you posted so that you don't miss the launch party.
The past 5 years have been a great learning experience for us. Nothing that we have achieved would have been possible without the Internet. It's what brought us together, kept us together and enabled us to fight and win our cause. We plan to share what we've learned - the legal stuff and the community stuff. Watch for a large file containing all the details of our legal drama (the pleadings, the submissions and legal cases) as well as our insights into how the Internet made it all possible. We hope that in some small way this will help many more 21st Century Shitdisturbers win their causes as well.
The "said Members for Democracy" want to thank all our friends and allies for their support in our legal drama with the UFCW.