Bar News - March 9, 2001
Dispatches from a Young Attorney in 21st Century China
Editor’s Note: Curiosity about an unusual e-mail address of a Bar member seeking access to the members’ portion of the Bar Web site led me to a virtual encounter with John Smagula, a 1995 graduate of the Washington University School of Law who is currently teaching legal concepts in China on a two-year teaching fellowship. The following is adapted from an article Smagula wrote for the Yale-China Association newsletter and from our e-mail correspondence.
MY STUDENTS were thoroughly intrigued with the money-making concept of "cyber squatting," in which a person wins the race to obtain the domain name of a registered trademark owner and then tries either to "sell" the domain to the lawful trademark owner for an exorbitant price or otherwise uses the site profitably to confuse consumers. An eager student in the back of the room ventures a tough question: "Doesn’t a trademark owner have the right to its corresponding domain name?" My answer, in typical lawyerly fashion, is, "It depends." That provokes an uproar as the students pepper me with comments about how over-regulated and litigious the United States must be and that a more absolute and directed system is better.
Or is it?
And so we begin our discussions in my US Internet Law class. As the recipient of the 2001-2002 legal teaching fellowship sponsored by the Yale-China Association, I teach a group of over 100 graduate students, undergraduate auditors and faculty members at the law department of Zhongshan University in Guangzhou, China. The case is Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y 1997), in which a conservative radio host registered the domain name "plannedparenthood.com" and tried to sell an ambiguously titled but ostensibly anti-abortion book, "The Cost of an Abortion." Understandably, Planned Parenthood was upset about the confusion and wins a preliminary injunction.
"Your courts are too liberal," the students cry, but alas, the law cuts both ways. For a similar result, I refer the students to Jews for Jesus v. Brodsky, 46 U.S.P.Q.2d (D.N.J. 1998), in which the defendant was up to similar shenanigans as leader of a group opposed to Jews for Jesus. The defendant lost. The students then see that as lawyers, as officers of the court, we must uphold the law even if it may be inconsistent with our own personal convictions. We can challenge the law, try to persuade a court and write to our US and state representatives, but at the end of the day, the law is the law. And the United States is a society grounded on the rule of law.
The students then ask, "What if the defendant was only using the site for political purposes?" Look no further than MGM-Pathe Communications v. Pink Panther Patrol, 774 F.Supp. 869 (S.D.N.Y. 1991), in which a gay rights group used the "Pink Panther" trademark in support of its non-profit aims to educate the community about gay issues. The court ruled that the goal of political activism, regardless of the "seriousness and virtue," could not allow a political group to infringe upon a trademark owner’s rights. The defendant thus had to refrain from using the name "Pink Panther." Cases consistent with this ruling have been applied to Internet domain disputes. Students thus see that law is not compartmentalized, and that the rationale the court uses for a certain set of facts (e.g., dispute over the name of a political activist group) can also apply to other kinds of fact patterns (e.g., dispute over the use of a domain name). The job of the lawyer is to compare or distinguish, depending on which party he or she represents.
Undaunted, my students with computer backgrounds insist that trademarks can be hidden in metatags, the invisible HTML codes that describe a site and cause search engines to match sites with user searches. Not quite, I respond. US courts have considered that point as well. Check out Playboy Enterprises, Inc. v. Welles, 7 F.Supp.2d 1098 (S.D. Cal. 1998), in which Playboy sued to prohibit a former Playmate of the Year from using "Playmate" or "Playboy" in her personal Web site’s metatags. The court ruled that her use was a permissible, good faith attempt to index the content of her Web site, since such use was for descriptive purposes. If she were trying to capitalize on Playboy’s goodwill to mislead people to visit her site, however, that would be an improper trademark infringement. Through this line of cases, my students actively participate in our discussions, yet also observe in quiet awe as we work through judicial rationale. The US common law tradition provides a degree of clarity that does not yet exist in China. The students also learn about procedural remedies, such as preliminary injunctions, that are nascent in China. Moreover, these cases give the students a glimpse of social debates in the United States, which are carried out on a regular basis due to the strong tradition of the freedom of speech.
To me, this is what the Yale-China legal teaching fellowship is about. Our objective is not just to give the students a substantive knowledge about US law, but also a broader perspective of US traditions and convictions. Our discussions create an unusual dialogue among legal professionals that in the past did not exist between our countries. Although this interaction is only one small piece of the increasingly complex social relationship between the United States and China, it is my hope that our dialogue here at Zhongshan University will become a source of goodwill that can only bear abundant fruits.
Observations of China
Smagula said many in China are eager to consider new ideas, although they do not accept them blindly. "I really love it here," Smagula wrote. "The people are hospitable, very friendly to Americans, and have a growing curiosity about the developments of law in the United States. I find the culture fascinating and the language an extraordinary challenge—despite studying it since 1988!"
He writes that as China’s economy modernizes, its regard for lawyers is increasing: "Lawyers originally had a somewhat dismal reputation, and law was generally taught as part of a philosophy or political science curriculum. The judiciary in China is not exactly independent, so the role of lawyers is important, but limited. However, there is an increasing regard for lawyers in society and now they are generally held in decent regard."
Smagula, slightly more than five years out of law school, has already put on a lot of mileage. After graduating from Washington University School of Law in 1995, he began working for a law firm in San Juan, Puerto Rico, where he stayed until 1997. Then he moved to New York City to work with the large law firm of Paul,Weiss until May of 2000 (including five months in their Hong Kong office).
Smagula, whose father was born and raised in Manchester and who sometimes vacationed with family in Moultonborough as a child, said he took the New Hampshire bar exam after graduating law school because he believes he ultimately may end up living in New Hampshire.
But for now, Smagula is in the midst of his China experience. After this academic year, he will move from Zhongshan University in Guangzhou to Tsinghua University in Beijing for the 2001-2002 academic year.
He believes his next stop, after his fellowship ends in July of 2002, may be to return to New York City, where he hopes to practice in the significant Chinese community that has a need for immigration and corporate legal skills.
John Smagula can be contacted through his permanent forwarding e-mail at firstname.lastname@example.org.