Debate has raged on TheLawyer.com all week about the merits of Baker & McKenzie client CS Lewis estate’s trademark dispute with a couple who claim they bought the domain name ‘narnia.mobi’ for their 11-year-old son.
Here Herbert Smith IP chief Nick Gardner looks at the law behind the emotive issue.
Is Baker & McKenzie the white witch stealing the child’s birthday present?There has been a lot of press coverage recently focusing on the attempt by the owners of the works of the late CS Lewis to recover possession of the ‘narnia.mobi’ domain name.
The domain name was registered by Edinburgh dad Richard Saville-Smith, who was quoted as saying it was purchased by him to use as an email address for his 11-year-old son Comrie.
The press coverage has almost entirely portrayed the case as an unfair attack on an 11-year-old, with the successors to CS Lewis being likened to the white witch portrayed by Tilda Swinton in the ongoing Walt Disney film adaptations.
The Daily Telegraph, for example, stated: “An idea for an imaginative present has escalated into a legal row that has seen a 128-page document from the New York-based law firm Baker and McKenzie land on [Mr Saville-Smith’s] doorstep demanding that he surrender the name.”
Contrary to popular reports, these types of domain name dispute are not court actions. Technically they are an expert determination, where an independent expert provides a ruling on whether the domain name should be transferred.
The most important factor the expert is required to decide is whether the “domain name has been registered and is being used in bad faith”. The case is, at first sight, reminiscent of an earlier dispute in which Warner Brothers was reported to have backed down against 15-year-old Claire Field, who ran harrypotterguide.co.uk – a fan site for JK Rowling’s teenage wizard.
Obvious problems arise in showing bad faith in such a case. However, closer investigation of the narnia.mobi case suggests it may be premature to cast CS Lewis’s estate as the evil witch, with Bakers’ lawyers as her sinister henchmen.
Saville-Smith says acquiring the name as a present for his son was done in good faith. But in the law, as in Narnia itself, all may not be as it first appears.
A quick visit to narnia.mobi reveals a website operating under the ‘Sedo’ hosting system. Sedo is a service that describes itself as “the leading marketplace for buying and selling domain names and websites”.
The narnia.mobi site contains various links, including to sellers of the Chronicles of Narnia works and Chronicles of Narnia ringtones. Under the Sedo system, ‘click through’ revenue is generated if visitors to the site then use these links to visit the relevant advertiser’s site.
CS Lewis’s estate is no doubt going to say this is a commercial use of the Narnia name to generate revenue, and has got little or nothing to do with the 11-year-old child, and amounts to use in bad faith – although why it takes Bakers 128 pages to say as much is an interesting question.
But Saville-Smith argues that the first he knew of the holding page was when he got a phonecall from Bakers. He and his wife have said they have not earned any revenue at all from it and state that they have asked Sedo to have the advertising removed. So establishing that bad faith was apparent may be difficult for the claimaint to prove.
The expert faced with ruling on all of this is likely to be in a dilemma. This is a paper-based process and said expert will not have the opportunity to see Saville-Smith in person and observe how he deals with cross-examination.
However, as matters stand, it isn’t clear if it really is the forces of darkness who are attacking him, and he may well not emerge victorious.