When Frank Zappa’s wife Gail found out about a music festival in Germany that honors her late husband, she wasn’t happy about the name that was chosen: Zappanale. So she sued, alleging European Union trademark infringement on behalf of Zappa’s estate.
But the Higher Regional Court in Dusseldorf recently ruled that even though the Zappa trademark has been used on a United States-based website for several years, it was never used in commerce in the EU — and in order to protect a trademark, according to the court, the owner must use it.
The fact that the website was accessible in the EU made no difference to the court as there was no effort to advertise or market products directly to the EU market, they wrote.
Zappa’s widow was most concerned with the merchandise, including CDs, that would be sold at the festival; she had claimed €150,000 in damages.
This case poses an interesting question for anyone using a trademark associated with their business: does an international website necessarily mean international trademark protection?
In Zappa’s case, it didn’t, so what would have been sufficient to protect the trademark internationally? Would a section on the website with merchandise prices in euros and shipping costs calculated to international shipping destinations have been enough?
This makes me think of another international case regarding the Internet that made the news a few months ago. Remember when three Google executives in Italy were convicted of a “privacy violation by a judge in Milan for allowing the posting of a video of Torino schoolchildren taunting a classmate with autism?”
Yes, the subject matters in the actions differ greatly (privacy versus trademark), but the same core question is implicated: Is it time for some kind of international Internet law? How should such cross-world disputes be settled? What do you think?