News Website Can Keep Domain Name After Trademark Fight
AcompliaReport.com Settles Fair Use Dispute with Drug Company
San Francisco - A medical news website, with the assistance of the Electronic Frontier Foundation (EFF), has settled a dispute with a French pharmaceutical giant over using the name of a trademarked medication, Acomplia.
The settlement came after EFF filed suit on behalf of the AcompliaReport.com, an independent online newsletter devoted to reporting about a drug called Acomplia. Acomplia may help consumers lose weight and quit smoking, but is not yet approved by the US Food and Drug Administration (FDA). Since March 2004, AcompliaReport.com has published original news and commentary about Acomplia's clinical trials, the drug approval process, and anti-obesity drugs in general—all aimed at helping consumers make more informed decisions about their health.
To emphasize the newsletter's impartiality, every page has always included the subhead "your independent source of news and reviews about the new diet drug Acomplia." Nevertheless, drug maker Sanofi-Aventis claimed that the use of the term "Acomplia" in the AcompliaReport domain name created a "risk of confusion." Sanofi asked an international arbitrator to order the domain name transferred, alleging that the publisher of the AcompliaReport, Milton R. Benjamin, was a cybersquatter. Benjamin promptly sought a declaration from a U.S. district court protecting his right to the domain name, claiming both fair use and First Amendment rights to the name as an online publisher.
"Sanofi's tactics threatened to quash free and accurate speech," said EFF staff attorney Corynne McSherry. "The website uses the Acomplia mark solely to refer to Sanofi's product. That use is a textbook fair use. And basic First Amendment principles barred Sanofi from using trademark law to shut down an independent news site."
Under terms of Tuesday's settlement, AcompliaReport.com keeps its domain name, as long as there is a disclaimer stating that the website is not associated with Sanofi-Aventis.
"We are happy to have this absurd dispute behind us, enabling us to focus on independent coverage of the regulatory process and further development of a novel drug that appears to have the potential to be of considerable benefit to many people," said Benjamin. "A news site needs to be able to use a trademarked name in order to report on a trademarked product."
Electronic Frontier Foundation