By Ray Stern
By Ray Stern
By New Times
By Amy Silverman
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By Stephen Lemons
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The webmaster, 28-year-old Chris Birchby, registered the name in January 1998 for his snowboarders' resource directory. He wanted a name that combined "winter games" and "cross competition."
But www.wintercrosscompetition.com was too long, and www.wintercrossgames.com too awkward. Birchby decided to use an "x" to represent "cross competition." He figured he'd found the ideal mix of hipness, length and coherence in "winterxgames."
Birchby says he didn't hear of ESPN's Winter X Games until a month later.
"I was extremely shocked," Birchby says of his realization that ESPN had come up with the same title. "It was exciting, but more disturbing than anything else."
Birchby says he'd only heard of ESPN's event called Extreme Games.
But Mike Soltyn, ESPN's director of communications, says that the winter competition has been using Winter X Games as a title since 1997, and that the name has been trademarked since 1996.
"Winter X Games is an ESPN trademark," Soltyn says. "Not a whole lot to tell you beyond that."
Last week, Birchby was given notice by ESPN, demanding he relinquish his domain name or face a lawsuit for trademark infringement.
"I was certainly in no position to battle ESPN," Birchby says. "I was extremely frightened I was going to lose everything I've dumped into this site over the last two years."
In an e-mail sent to New Times earlier this month, he said: "I do not have any plans to relinquish this site to ESPN. My family and loved ones endure my 12 hours at the office as a Network Operations Manager for an ISP, and then an additional 10-plus hours a night on the computer developing, marketing and promoting this site. ...I find it extremely disheartening that such a law can place someone like my family and myself in a possible state of bankruptcy, because I will fight this until the end. I must."
Birchby admits his site gets only 500 to 1,000 hits per day. But the hours of time invested at a keyboard are valuable, as any webmaster knows, and so Birchby called ESPN's lawyers and offered to let them purchase the domain name.
He says ESPN was "perturbed" at the offer, and told him he was not only running afoul of its trademark, but he was also in violation of the Anticybersquatting Consumer Protection Act. Passed in November, the law is designed to prevent opportunists from registering trademarked or proper names such as www.johntesh.com or www.mtv.com for the purpose of reselling them to their rightful owners or profiteering from their reputations.
Birchby hired a lawyer. His attorney, Richard Keyt, says he can't comment on the case, except to say that he is in communication with ESPN.
Other Internet law analysts, however, say Birchby has a strong claim.
Anupam Chander, an associate professor of law at Arizona State University, notes that "the key [to the cybersquatting act] is whether ESPN can demonstrate to a court that this individual was acting in bad faith."
And new-media law specialist Douglas Katich points out that Birchby is "actually using the mark to identify a legitimate purpose, so right there alone they're going to have a problem demonstrating bad faith -- he registered the mark with a legitimate business purpose in mind."
The matter of trademark ownership is less clear. Birchby claims that ESPN has only trademarked Winter X Games for unrelated matters such as clothing, but that the relevant trademark -- for telecommunications, including TV broadcasts and the Internet -- is still pending. Soltyn, ESPN's lawyer, says he can't comment on that.
Katich says that, pending or not, both sides have a valid legal claim. "This is a case where both parties have arguable intellectual property rights to the mark," he says.
Katich adds that the market studies and legal maneuvers necessary to prove ESPN's ownership of Winter X would be so expensive that the network will likely offer to purchase the name.
That would be just fine with Birchby, who says he would use the money to start a new site. But so far, Birchby claims ESPN has only offered him two pieces of compensation.
First, he says, the network promises to link from his old domain to a new site of his choosing.
And it will give him free press passes to the Winter X Games.
Contact James Hibberd at his online address: email@example.com