South Africa: The IP-Savvy Star Who Doesn't Do Porn

Last Updated: 9 April 2015
Article by Chavern Ismail

Most Read Contributor in South Africa, September 2018

We recently wrote about  Taylor Swift's trade mark protection activities, in which she applied to register her lyrics "This Sick Beat" and "Cause We Never Go out of Style" as trade marks for a range of merchandise.

It was a decision that raised eyebrows. In fact, it even managed to offend certain recording artists who seemed to feel that this was capitalistic, and who accused Swift of trying to monopolise language. However, it was a smart move by an artist who understands the concept of celebrity endorsement; ie, a celebrity who can be identified by many things, including his or her name, image or signature, or even words associated with them.

Manufacturing companies may well see merit in using some of these identifying features on merchandise, and these companies will pay for the right to do so – but they'll only pay if they're satisfied that the celebrity has enforceable rights; the sort that you get through trade mark registration.

Swift has been in the headlines again. This time for registering the domains www.taylorswift.porn and www.taylorswift.adult. So what gives? Has the star with the squeaky-clean image decided that there's money to be made in the porn business?

Not quite. In this case, it's a purely defensive move on Swift's part; one designed to ensure that no-one else registers these names, and thereby manages to cause a certain amount of reputational damage by operating porn sites under her name. Swift lived up to her name by managing to get in early, registering during the priority ("sunrise") registration periods.

Swift's decision to register these unwanted names is, of course, a consequence of the explosion of top level domains (TLDs) that we've seen of late, with professions, cities, sports and others being able to get their own TLDs. Companies and individuals are then able to register second-level domains under these TLDs, perhaps in order to indicate what they do or where they are situated.

To illustrate, an accounting practice might decide that it's useful to register its name under the TLD .accountant, or a Durban-based business might see merit in registering its name under the TLD .durban. The TLDs .porn  and.adult  are the latest in a long line of TLDs that have become available. These TLDs are primarily intended for providers of adult content, but they are obviously also available to companies and individuals who are concerned that their names might be besmirched.

So, should companies register their names under the TLDs .porn  or .adult? Reports suggest that Microsoft has seen fit to register www.office.porn and www.office.adult; although, you have to say that names like these are far more likely to be seen as simply describing what some employees spend their working hours watching, rather than indicating a link with a particular software company.

But it is a weird state of affairs; having to decide whether or not to register a name that you have no interest in and perhaps even feel offended about having to consider protecting simply because you don't want anyone else to have it. As if this isn't enough to deal with, there's now a further TLD to consider – .sucks. This is intended to be a place where consumers can register the names of their least favourite companies. The thinking is that the site can then become a forum for malcontents to complain about the company. Companies are now faced with the dilemma of whether or not to register their own company name or brand as a .sucks  in order to block anyone else from doing so, which appears to be the better option than allowing someone else to get their hands on it.

Sucks or gripe sites do, of course, have a long history. Unhappy campers have been registering the names of companies together with words like "sucks" (or worse) for years under established TLDs like .com. In many cases, companies have tried to have such registrations cancelled or transferred to them on the basis of trade mark rights.

The general approach of the adjudication authorities to these names seems to be that, provided they are used as genuine gripe sites and not as ways of extorting money, they may continue to operate. Part of the reasoning behind this position can be found in the "trade mark thinking"; ie, there is a lack of consumer confusion since no consumer believes that a site comprising the name of a company together with a word like "sucks" is linked to that company.

Last year we saw a decision regarding the name www.fuckcalvinklein.com,  where the arbitrator put it rather well: "Respondent does not believe any consumer could reasonably believe the best route to finding complainant's [Calvin Klein's] goods on the internet is by entering  www.fuckcalvinklein.com  into a web browser."

So what to do? There's no easy answer. Some companies may be more concerned about having their brands linked with porn than about having consumers grumbling about them. For them, there may well be merit in registering their names under .porn and .adult. But those companies that are sensitive to criticism might feel that a registration under .sucks would be best suited to their needs.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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