Lord of the Rings domain fight enters realms of fantasy
Warner Bros puts claim to 1,000 years of history
The Lord of the Rings trilogy of films may have appeared to have made the impossible real, but now its backers want more.
While there is no doubt they are the masters of Middle Earth, and all the plastic merchandise that can be forged in the Mountains of Cashin, Warners Brothers, New Line Productions and The Saul Zaentz Company are now determined to extend their dominion.
The Internet lives in a sort of virtual world, so it should come as no surprise that the film's producers and the bloke who bought the film rights off United Artists in 1976 for a set of books by JRR Tolkien (yes, there are books of the film), should seek to gain control of www.shiremail.com.
As was explained so coherently to the owner of Shiremail.com, Tarrant Costelloe, in a letter from the lawyers representing all three parties, Addleshaw Goddard: "The SHIRE name is well-known in the UK and elsewhere, to readers of the Lord of the Rings books (and others) and the goodwill in the name has been achieved through sales of such books.
"The incorporation of the SHIRE name into a domain name by you is a misrepresentation to the public that the domain is connected to the Lord of the Rings books and/or films. In particular, the registration by you of the domain name constitutes a representation to persons who consult the Whois register that you are connected to or associated with the name registered and thus the owner of licensee of the goodwill in the name, which of course you are not."
All the company wants is for Mr Costelloe to realise his mistake and hand over the domain on which he has run an email business since September 2003. Let's look at that reasoning again.
To shear or to shear not
Well, it would be impossible to argue with the legal letter's initial assertion: "shire" is extremely well known in the UK. In fact, it has been well known since around 600AD - not long after the Romans had wandered off. "Shire" in fact stems from the Saxon word "schyran", meaning to shear or divide. It has been used to divide up land for over a thousand years and a majority of counties that still exist in the UK today possess the suffix "shire" (see at the bottom). It was also the origin of the word "sheriff", stemming from "shire-reeve".
In fact, we don't think it would be too provocative to suggest that JRR Tolkien may have been inspired by over a thousand years of common history when he first came up with the name "The Shire" as the idyllic home country of the books' main protagonists, the hobbits.
However, the legal letter claims that "goodwill in the name has been achieved through sales of such books". Certainly The Shire sounded rather nice as presented in the fictional books, but we suspect the goodwill towards the area in which people live was there before Mr Tolkien even put pen to paper.
This is the difficult bit though: "The incorporation of the SHIRE name into a domain name by you is a misrepresentation to the public that the domain is connected to the Lord of the Rings books and/or films." We're afraid that assertion seems to be less than well-founded.
Tarrant Costelloe himself runs a Lord of the Rings-connected website, Planet-Tolkien.com, which has also attracted its share of attention from the Tolkien Estate although the Estate finally decided that an extensive site making no money and actively promoting the very assets that it draws its money from, was not such a bad thing.
But drawing the connection between that website, Shiremail.com, the word "shire" and the film rights possessed to a series of book written a thousand years after the word entered common usage, is stretching things a little too far.
You're one in a million
The letter quotes the decision of the Court of Appeal regarding One in a Million Ltd as proof of its legitimate intent. This was a landmark decision in the UK courts in July 1998, which upheld the decision to hand over ladbrokes.com, sainsbury.com, sainsburys.com, j-sainsbury.com, marksandspencer.com, cellnet.net, bt.org, virgin.org, marksandspencer.co.uk, britishtelecom.co.uk, britishtelecom.net and britishtelecom.com over to their respective namesake companies.
Unfortunately, this decision is frequently wrongly used by large companies as legal grounds for pressuring people into handing over their domains. (The Easy Group's derided crusade to take over all domain names with the word "easy" made extensive and misleading use of the One in a Million judgement.)
Citing the Appeal Court judgment (which you can find here), Addleshaw Goddard argues that Shiremail.com infringes its clients' rights. The judge in the judgment does say that he doesn't see direct infringement of a trademark as being needed to prove "passing off". However, he does explicitly mention several other aspects of the case that clearly would not refer to Shiremail.com.
In the One in a Million case, the defendants showed a "deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble the names and marks of other people and are plainly intended to deceive". That is patently not the case with Mr Costelloe.
The judge also stresses: "The trade names were well-known 'household names' denoting in ordinary usage the respective respondent." The same simply isn't true of Shiremail - which is a name that does not exist in any meaningful sense. And while in the decided case, "the motive of the appellants was to use that goodwill and threaten to sell it to another who might use it for passing-off to obtain money from the respondents," Mr Costelloe has no intention of selling the domain.
The matter of goodwill was clearly stated (although not properly argued) by Addleshaw Goddard in its letter, but what of the intention to sell? This may explain a phone call Mr Costelloe took on his mobile a few days after he responded to the original letter by saying he would see them in court.
As Costelloe recalled: "A friendly gentleman ... asks me if I am who he was looking for and continues to query my intentions of whether or not I intend to hand the domain over to them, which I said no. He then instructed me that this was likely to end up with me being taken to court and I kindly replied with 'good'..."
Mr Costelloe has since reported the phone call to the Law Society of England and Wales claiming harrassment.
It's mine, all mine
Perhaps we shouldn't be surprised though. One of three parties being represented, Warner Brothers, has made a habit of stretching its "rights" far into cyberspace.
Back in the early days of the commercial Internet, Warner Brothers sued Andrew Baucom for his District of Columbia Information Site at www.dc.com. Warner Brothers felt that it infringed on their trademark for DC Comics. It is now owned by consulting firm Deloitte.
Then of course there was the infamous campaign against teenage boys and girls who had registered domains with the name "harry potter" in. After massive media coverage of the company's threatening approach to children, the company eventually backed down.
Even in the days before the Internet, Warner Brothers was making a name for itself claiming extraordinary rights over names, prompting Groucho Marx to respond to its claims over his film A Night in Casablanca with the assertion that he believed Warner Brothers may not posses the right to use its "Brothers" name. The letter has been preserved for posterity.
Mr Costelloe remains determined not to have any of it though and has told Addleshaw Goddard he will see them in court. ®
What a load of shire
Here are the areas within the UK that still possess the suffix "shire" - all of whom may have something to say about a US film company's efforts to claim rights over their name.
England: Bedfordshire, Berkshire, Buckinghamshire, Cambridgeshire, Cheshire, Derbyshire, Gloucestershire, Hampshire, Herefordshire, Hertfordshire, Huntingdonshire, Lancashire, Leicestershire, Lincolnshire, Northamptonshire, Nottinghamshire, Oxfordshire, Shropshire, Staffordshire, Warwickshire, Wiltshire, Worcestershire and Yorkshire.
Scotland: Aberdeenshire, Argyllshire, Ayrshire, Banffshire, Berwickshire, Buteshire,Clackmannanshire, Dumbartonshire, Dumfriesshire, Forfarshire, Invernesshire, Kincardineshire, Kinrosshire, Kirkcudbrightshire, Lanarkshire, Morayshire, Peeblesshire, Perthshire, Renfrewshire, Roxburghshire, Selkirkshire, Stirlingshire and Wigtownshire.
Wales: Breconshire, Caernarvonshire, Cardiganshire, Carmarthenshire, Denbighshire, Flintshire, Merionethshire, Monmouthshire, Montgomeryshire, Pembrokeshire and Radnorshire.