Steve Mount's Letter to Lucasfilm

On January 20, 2000, I responded to Lucasfilm's email and letter. I sent the following via fax and by regular mail.

I got a call from a representative of Lucasfilm the next day, January 21, 2000, and she and I resolved the issue amicably, though the end result was that I was to turn over the rights to Tatooine.com to Lucasfilm.

January 19, 2000

David J Anderman
Associate Director of Business Affairs
Lucasfilm, Ltd.
P.O. Box 2009
San Rafael, CA 94912

Mr. Anderman:

I am in receipt of your email and certified letter of January 12, 2000, regarding the Internet domain name "Tatooine.com".

When I registered tatooine.com for my domain name, I did so legally and for the purpose of creating a website for personal use. I never claimed an affiliation with Lucasfilm, nor did I ever seek to profit in any way from any affiliation, express or implied. Nor have I used this site to intentionally injure the profitability of your company through negative association of any kind. On the contrary, I have always held Star Wars and Lucasfilm products in high regard, and do not have any copyrighted Lucasfilm content on my site (unlike many sites with Star Wars-related domains and Star Wars-related subject matter), either visual, aural, or textual. One visit to the main page on the site is more than enough to show that there is no affiliation, even without expressly stating such. The name "Steve Mount" is prominently displayed.

It is not in my interest to cease to use this domain name which I registered legally and with legitimate intent. If your company finds this domain name so indispensable, one wonders why it has taken you this many years to come looking for it. I registered the domain name in March of 1997 - the opportunity for Lucasfilm to register this name had existed for years.

I understand that you are a very large company with a very well fortified legal department and perhaps some substantial economic interest in acquiring this domain name. But I also know that I acquired this domain name legally and have been using it actively for almost three years. I am not a cybersquatter by any legal or common use of the word.

I believe that a reading of recent case law will more than bolster my position. In the Avery Dennison case, the 9th Circuit Court of Appeals ruled that few marks are actually so famous as to deserve or enjoy total protection as a mark. Your use of the mark Tatooine as a location in a movie and as a descriptor for the various toys, figures, posters, books, etc., is not harmed by my use of the mark as an address. At most, my use of Tatooine in Tatooine.com is as a service mark, which cannot conflict with a trademark used for products unrelated to the service; though USTPO has ruled that domain names are neither trademarks nor service marks; they merely indicate a location on the Internet.

Though it could well be asserted that Tatooine is famous in certain circles, the famousness of the mark Tatooine declines greatly when dealing with the general public, rather than that subset of the public who are fans of the Star Wars series of movies. I do concede that if Tatooine could possibly be deemed "famous," I did start to use it after that time, since its first use would have been in 1977 or thereabouts, and my registration of the domain was in 1997. This is just a statement of the facts, and not an admission of famousness of any sort. Finally, famousness may be influenced by registration of a trademark. At no point since my registration of the Tatooine.com domain name has the word Tatooine been registered as a trademark, according to searches of the USPTO's database (allowing for recent possible applications).

I am aware of a town in Tunisia known as Foum Tataouine, and that the words Tataouine and Tatooine are homonyms, both potential English spellings of a Tunisian word. The ability to trademark the name of a foreign city for all possible purposes is in doubt.

The notion that my use of the mark Tatooine in the domain name Tatooine.com dilutes Lucasfilm's trademark doesn't seem fair. Consumer confusion is the very root of a dilution charge, and I think that no reasonable person could view my site, or any page on my site, and be confused as to the source of the page.

The courts have held that dilution can be found in the attempt of a domain name owner to sell a domain to a trademark holder. I have never contacted Lucasfilm with any offer to sell Tatooine.com in the past, nor do I intend to do so in the future.

Likewise, any charge that my site causes any loss of income by Lucasfilm seems unfair. Lucasfilm and I are in totally different businesses. No one coming to my site is going to buy web design services from me instead of from Lucasfilm, because Lucasfilm does not offer web design services to the general public. Nor does Lucasfilm offer web programming services; nor do they generally post personal photographs of the Mount family. These are all services provided at Tatooine.com.

Finally, I submit that Lucasfilm has been remiss in its protection of its marks, since not only has the Tatooine.com site been registered as a domain name since March 1997, but Tatooine.net has been registered to a non-Lucasfilm party since at least January 1998, and Tatooine.org has been registered to a non-Lucasfilm party since at least March 1999. I do not feel that either of these domain names is in violation of Lucasfilm's trademark either, since neither contain any Star Wars content - however, these domains have existed for less time than Tatooine.com, and the opportunity for Lucasfilm to register them obviously came and went without action by Lucasfilm. Other sites with names that use Lucasfilm marks in the domain name abound and many of them infringe quite blatantly on copyrighted Lucasfilm materials. None of the Tatooine domains listed above include any copyrighted material.

I urge you to reconsider your request and rescind your demand that I surrender Tatooine.com to your company. We have lived on the Internet without incident for almost three years - I see no reason why we could not continue to do so. If you do insist on pursuing this matter, I would like to discuss an amicable resolution that does not involve the courts or litigation that would be unnecessarily costly to both of us.

Sincerely,

Steve Mount
322 N Brownell Rd
Williston, VT 05495

Last update: 22 Jan 2000