Intellectual Property Law
Baker & McKenzie in Court Fight Over 11-Year-Old’s Birthday Present?
Posted Jun 17, 2008 4:35 PM CST
By Martha Neil
Legal powerhouse Baker & McKenzie may have met its match: A threatened lawsuit over a domain name has pitted the Chicago-based international megafirm against an 11-year-old in Scotland who received it as a birthday present and his parents.
"Gillian Ferguson and Richard Saville-Smith bought the narnia.mobi e-mail domain name in 2006, so that their son, an avid fan of the Chronicles of Narnia books by author C.S. Lewis, might receive e-mails at that address direct to his mobile phone," recounts the Lawyer. But then the company that holds the rights to the books from the deceased author's estate realized it didn't have the domain name and sought to get it.
Although offers of pro bono assistance reportedly are rolling in following news coverage of the legal battle, in which the law firm allegedly is claiming bad faith by the family and use of the domain name for commercial gain, Richard Saville-Smith says the situation is under control.
“Once you get over the initial shock of the complexity of the rules and the number of pages, WIPO (World Intellectual Property Organization) rules are fairly clear—the burden of faith is on them," he tells Legal Week. "We’re not being intimidated by the world’s leading law firm.”
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Comments
BigKapono
Jun 18, 2008 6:26 AM CST
No matter how Baker & McKenzie plays this, they will look bad…score 1 for the little guy.
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Jo Patrick
Jun 18, 2008 7:31 AM CST
Baker & McKenzie - legal bullies.
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LegalAssist
Jun 18, 2008 2:54 PM CST
I think I will buy my grandson a domain name now.
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Todd Rainer
Jun 20, 2008 5:47 AM CST
O.K., how is buying a domain for your kid “bad faith”?
You know, B&M may be able to win this case, but it’s still a loser. If I was a client of theirs, I’d look at this case and not see aggressive advocates, I’d see a bunch of bullying greedheads and take my business down the street.
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Are you kidding?
Jun 20, 2008 7:40 AM CST
Legal bully? Sure, but that is exactly what big companies want in a law firm. This is the best kind of advertising - they even have the defendant calling B&M the world’s leading law firm!
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Marc J. Randazza
Jun 20, 2008 7:49 AM CST
Why would he be “intimidated”? All he stands to lose is the domain name, not money.
And, I’m not buying the story that he bought it for his kid.
http://randazza.wordpress.com/2008/06/20/cybersquatting-comes-to-narnia/
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D. Aysee Metrollin
Jun 20, 2008 7:58 AM CST
@Marc J. Randazza, 6—
I stopped reading your blog at “To my educated eyes.”
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Lee Dickinson
Jun 20, 2008 9:20 AM CST
Give the kid a $10,000 educational trust in exchange for the rights to the domain name, set the kid up with a dedicated email address at that domain, and then be done with it. A lot cheaper than litigation *and* you look like the good guy.
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James
Jun 20, 2008 10:04 AM CST
They should be pursuing the attorney who failed to nail down this easy detail in a trademark department somewhere, not some kid who is making fair use of the name; even if the parents are getting greedy, they screwed up, and should give them some back end and let him keep his address, because the address’ value probably plummets everyday this dispute drags on.
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Pete Wanger
Jun 20, 2008 11:37 AM CST
I’m not an IP lawyer, but if “Narnia” is not a registered trade name or has not been given other IP protection, then Baker & McKenzie and their client should make a generous offer rather than rattling their sabres. This doesn’t look like cybersquatting to me.
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GoofBall
Jun 20, 2008 1:56 PM CST
I wonder if baker&mckenziesucks;.com is taken?
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Marc J. Randazza
Jun 22, 2008 2:50 PM CST
Lee Dickinson,
EXACTLY!
Pete Wagner,
You’ve got a good point there—but the Complainant *probably* has trademark rights. Trademark rights do not arise from registration, they arise from use.
Use of a name in a single book or movie title =/= trademark rights. Use in a series = trademark rights.
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pa-shaw
Jun 22, 2008 7:06 PM CST
B&M “the world’s leading law firm”??? Oh c’mon.
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