Nebraska Hospital Caught in Madonna Trademark Spat
The players: Madonna the singer, Madonna the hospital, and a pornographer
by John Fulwider
August 23, 2000
LINCOLN - An international trademark dispute involving pop star Madonna and an Internet entrepreneur who runs a famous pornography web site has Lincoln, Nebraska's Madonna Rehabilitation Hospital caught in the middle.
New Jersey entrepreneur Dan Parisi has received national media attention for his pornographic web site, whitehouse.com, because its Internet address (more precisely: "domain name") can rather easily be confused with President Clinton's web site, whitehouse.gov. Now Parisi has caught the eye of Madonna's lawyers because he owns the Internet address madonna.com, which, as you can imagine, some people might think is Madonna the singer's official web site. Parisi once posted pornography there, too, which didn't please The Material Girl.
Madonna wants ownership of Madonna.com. Parisi doesn't want her to have it, so he's offered to donate the Internet address to Madonna Rehabilitation Hospital. The result is that a respected Catholic hospital in conservative Nebraska is stuck between:
A. A woman who writhes seductively in front of burning crosses and grabs herself in embarrassing places.
B. A man whose most famous web site, Whitehouse.com, offers access on its first page to such joys as "Hollywood Hooters" and "Teen Buffet."
"It was quite shocking to discover that he linked to us on a porn site," Madonna Rehabilitation Hospital spokeswoman Carol Jess said Wednesday. That's how Madonna, the hospital, first found out about the Madonna.com dispute. When that web site was still offering adult entertainment, there was a disclaimer on the site saying, "Madonna.com is not affiliated or endorsed by the Catholic Church, Madonna the singer, Madonna College or Madonna Hospital."
Jess went on: "We would accept the domain name from Mr. Parisi, but we do not want to be involved in any disputes between him and madonna the rock star." For good reason -- according to Parisi and Jess, Madonna the singer's lawyers have threatened to sue Madonna the hospital if the hospital takes ownership of Madonna.com. (Madonna the hospital already owns and uses madonna.org.)
"We prefer to take a sideline view of that," Jess said. "We certainly wouldn’t want to be sued by the singer. We just want to stay out of any legal entanglements that this would present."
Madonna the singer's publicist, Liz Rosenberg, did not respond to telephone messages and e-mails.
In a brief telephone interview Wednesday, Parisi told StatePaper he's not trying to hold on to the Madonna.com domain name out of spite for Madonna the singer. "It has nothing to do with her at all. It's my decision to give them the domain name." Parisi said his attorneys had advised him not to say more.
Jess doesn't know how Parisi got the idea to donate the Madonna.com domain name to Madonna Rehabilitation Hospital. "He must have gone surfing and come across our site," she said.
The trademark dispute over Madonna.com has gone international because it's now in arbitration at the World Intellectual Property Organization, a United Nations agency based in Geneva, Switzerland. Madonna the singer filed a complaint with WIPO on earlier this month; according to the organization's web site, a decision will come September 16.
In Madonna the singer's complaint filed with WIPO (a copy appears here on Parisi's web site; WIPO doesn't make such documents available), she argues that she has both trademark and common-law rights to the word "Madonna."
"Through long, extensive, and continuous use, through extensive advertising and promotion, and through extensive unsolicited media attention, the Madonna mark has achieved enormous fame, has become synonymous in the minds of the public with Madonna and her activities in the music, film, and entertainment industries, and serves as a symbol of the goodwill and excellent reputation associated with Madonna," the complaint reads. She goes on to argue that having pornographic content on Madonna.com tarnished the Madonna trademark.
In his response, Parisi argues that Madonna the singer cannot control use of a generic word like "Madonna" the way which she would like. He then takes a stab at Madonna's argument that association with pornography tarnished her reputation: "Finally, complainant’s claim that respondents’ use of the domain name Madonna.com as an adult entertainment website tarnishes complainant’s image rings hollow. Noticeably absent from the complaint is any mention of complainant’s own exploits into adult entertainment, including her publication of Sex, a sexually explicit coffee-table book and accompanying sex video."
Parisi's response says he's been falsely accused of acquiring Madonna.com solely for the purpose of selling it to Madonna the singer, a practice known in Internet parlance as "cybersquatting." Parisi says he never intended to sell the domain name to Madonna, and turned down her attempts to buy it.
There's no porn on Madonna.com now, just a periodically updated message from Parisi about the trademark dispute. "This case is about whether big business has the right to claim exclusive ownership of common words in the English Language and to take them out of the public domain," the message says.
" ... (Madonna) was named after the Virgin Mary as was her mother and hundreds of thousands of other people throughout the world over the past 2,000 years. We do not believe that because Ms. Ciccone named her act after the Virgin Mary that gives her the right to stop any other party from using the word "madonna" as a title of their website."
Editor's Note: The World Intellectual Property Organization has issued its ruling in the Madonna.com case. Read all about in this StatePaper story.
Nebraska Hospital Caught in Madonna Trademark Spat
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