What legal questions do you have about IM?
- Thread starter mont7071
- Start date
mont7071 - Can you indicate some general times When It Would Be OK to have a trademarked name in the root domain?
For example:
1) A product has a TM - and you have a site called productnamereviewed.com
2) Say there is a software called MyBrowser and lots of people (besides the software company) write books about MyBrowser. If I registered and developed a site that listed only books about MyBrowser with a name such as MyBrowserbooks.com .
Any issues with those two examples?
Thanks.
Quote:
"Having their trademarked name in your actual root domain name is usually a bad idea though."
Good Question davidb, I'll briefly touch on it, but this is just a quickie, don't consider this an exhaustive description of how it works, its fairly complex.
The Uniform Domain Dispute Resolution Policy (UDRP), Lanham Act, and 15 U.S.C. 1125 (ACPA) are kind of the main laws that apply. (Very) basically, if you "confuse" the average visitor about whether your site is associated with, owned, or sponsored by the TM product, you are at risk.
A lot of people would say that providing a review of a product, especially a negative one, is not going to cause any risk of confusion, because obviously nobody is going to think you are associated with that company/product. Fair Use doctrine allows you to criticize, parody, etc other products without being sued, but its a fine line. If you are a competitor, you are going to be held to a more strict standard than just a disgruntled consumer is.
Hot buttons: If you are making a profit off "trading on" somebody else's good name, you are squarely in the "risk zone". If the average visitor would be misled into thinking you are associated with the TM holder (e.g. a reseller, an employee, etc) and you are NOT, you are looking at trouble. If you are a competitor to the TM-holder, you are really looking at being under closer scrutiny.
You have to realize, intellectual property like brand names is INCREDIBLY valuable to companies, more than diamonds, gold, and puppies. A company like Coca-Cola will fight to the death to protect their trademark name, anybody can make a sticky syrupy cola-flavored soft drink, but there is only one Coca-Cola.
I own some brand names that people register variations of all the time. I will zealously come after anyone that misleads their association or relationship with that brand, especially competitors. I am a small fry compared to these large companies, imagine what lengths they will go to if you come close to crossing a line. Many companies are so fearful that they will send C&Ds and file lawsuits if somebody even trivially mentions or has a remotely similar URL to their brand name, it's that important to them.
From a common sense perspective, look at your actions from their perspective. You can say that you don't like XYZ product on a random blog and it might not be a big deal. Go register Official-Coca-Cola-Reseller.com and sell Pepsi on it while dickrolling IP addresses from Coca Cola, and you can guess how long before you get sued.
Look at lawsuits like Google vs. Booble for an example of how the big dogs in the online game treat people messing with their brand name. This topic gets so complex and case specific, that its hard for me to provide much more guidance on a WF than this. The best defense is to not tangle with the big dogs, and when someone sends you an official-looking legal notice related to their brand name or intellectual property, talk to a lawyer.
"Having their trademarked name in your actual root domain name is usually a bad idea though."
Good Question davidb, I'll briefly touch on it, but this is just a quickie, don't consider this an exhaustive description of how it works, its fairly complex.
The Uniform Domain Dispute Resolution Policy (UDRP), Lanham Act, and 15 U.S.C. 1125 (ACPA) are kind of the main laws that apply. (Very) basically, if you "confuse" the average visitor about whether your site is associated with, owned, or sponsored by the TM product, you are at risk.
A lot of people would say that providing a review of a product, especially a negative one, is not going to cause any risk of confusion, because obviously nobody is going to think you are associated with that company/product. Fair Use doctrine allows you to criticize, parody, etc other products without being sued, but its a fine line. If you are a competitor, you are going to be held to a more strict standard than just a disgruntled consumer is.
Hot buttons: If you are making a profit off "trading on" somebody else's good name, you are squarely in the "risk zone". If the average visitor would be misled into thinking you are associated with the TM holder (e.g. a reseller, an employee, etc) and you are NOT, you are looking at trouble. If you are a competitor to the TM-holder, you are really looking at being under closer scrutiny.
You have to realize, intellectual property like brand names is INCREDIBLY valuable to companies, more than diamonds, gold, and puppies. A company like Coca-Cola will fight to the death to protect their trademark name, anybody can make a sticky syrupy cola-flavored soft drink, but there is only one Coca-Cola.
I own some brand names that people register variations of all the time. I will zealously come after anyone that misleads their association or relationship with that brand, especially competitors. I am a small fry compared to these large companies, imagine what lengths they will go to if you come close to crossing a line. Many companies are so fearful that they will send C&Ds and file lawsuits if somebody even trivially mentions or has a remotely similar URL to their brand name, it's that important to them.
From a common sense perspective, look at your actions from their perspective. You can say that you don't like XYZ product on a random blog and it might not be a big deal. Go register Official-Coca-Cola-Reseller.com and sell Pepsi on it while dickrolling IP addresses from Coca Cola, and you can guess how long before you get sued.
Look at lawsuits like Google vs. Booble for an example of how the big dogs in the online game treat people messing with their brand name. This topic gets so complex and case specific, that its hard for me to provide much more guidance on a WF than this. The best defense is to not tangle with the big dogs, and when someone sends you an official-looking legal notice related to their brand name or intellectual property, talk to a lawyer.
1) On brands/trademarks in domains again, let's say someone signs up for an affiliate program to promote Product X (name is a registered trademark).
There's nothing in the affiliate program TOS that says the affiliate can't use (infringe on?) the trademark to promote the product, and the product vendor already owns ProductX.com.
The affiliate registers a domain name like ProductX.ccTLD and promotes the product.
Firstly, is this trademark infringement, and secondly, is the affiliate entitled to their commissions?
2) In Web Hosting TOS agreements, I commonly see something like "We reserve the right to modify this agreement at any time. Changes take effect 24 hours after they are posted online at http://url/. Your continued use of our web hosting service after changes are made to this agreement constitutes your agreement and acceptance of said changes.
Then, let's say the web host added something like "If your site has a blue background, you will owe an additional $5,000/month?" into the TOS.
Are "living" contracts like this legal or enforceable?
There's nothing in the affiliate program TOS that says the affiliate can't use (infringe on?) the trademark to promote the product, and the product vendor already owns ProductX.com.
The affiliate registers a domain name like ProductX.ccTLD and promotes the product.
Firstly, is this trademark infringement, and secondly, is the affiliate entitled to their commissions?
2) In Web Hosting TOS agreements, I commonly see something like "We reserve the right to modify this agreement at any time. Changes take effect 24 hours after they are posted online at http://url/. Your continued use of our web hosting service after changes are made to this agreement constitutes your agreement and acceptance of said changes.
Then, let's say the web host added something like "If your site has a blue background, you will owe an additional $5,000/month?" into the TOS.
Are "living" contracts like this legal or enforceable?
Thanks so much for the information! + Rep!
I'm an affiliate for a company that has a trademarked product (I'm an affiliate via a third party company, not this company itself). The site (domain) I use to promote their product does not have their exact TM in the domain, but it is very similar and users could get confused that my site is their actual product site (I've had people recommend the product linking to my site) (product is software you can download). I only promote their product with this site, nothing else. I have a disclaimer page saying I am not this company, am an affiliate and for support go to ... their page site.
Right now I'm not sure if I should invest more time in the site in case they someday decide they want cause issues. I could just leave it be, if they do something deal with it then, or if I'm not doing anything wrong then keep building the site out.
Based on this, do I have any issues to worry about?
(Note: I don't know how specific you will give answers on - I don't expect one - you've already given so much! If you say - go talk to an Attorney - Understandable.)
Thanks.
I'm an affiliate for a company that has a trademarked product (I'm an affiliate via a third party company, not this company itself). The site (domain) I use to promote their product does not have their exact TM in the domain, but it is very similar and users could get confused that my site is their actual product site (I've had people recommend the product linking to my site) (product is software you can download). I only promote their product with this site, nothing else. I have a disclaimer page saying I am not this company, am an affiliate and for support go to ... their page site.
Right now I'm not sure if I should invest more time in the site in case they someday decide they want cause issues. I could just leave it be, if they do something deal with it then, or if I'm not doing anything wrong then keep building the site out.
Based on this, do I have any issues to worry about?
(Note: I don't know how specific you will give answers on - I don't expect one - you've already given so much! If you say - go talk to an Attorney - Understandable.)
Thanks.
Can we talk a little more about being "associated with the TM holder"? Like Louis asked above, are affiliates associated if they were never granted the right (expressly?) to "infringe" on trademarks? Obviously sites like Google-Watch.org aren't infringing on trademarks, but what if I made a site that was like "GoogleSearcher.com" which was just a link to Google.com (or maybe it was an AdSense search box): it seems like there's a difference between being negative and being positively related to the TM holder.
One other question. I sell a product that allows users to deceive advertising networks by "masking" their links. The basic process works like this:
Affiliate sets up a landing page that breaks arbitrary rules on an advertising network but may/may not break the law on it's own (probably doesn't). Affiliate sets up a link with my product that, when clicked, checks your IP and compares it against the ARIN database for IPs registered at that advertising network: if you are at that advertising network at the time, it redirects you to another landing page (one that meets the rules) of your choosing; if you're just not a normal user, it sends you to the non-compliant landing page.
This seems like it's a purely private issue to me, the advertising network is responsible to enforce their own rules. I would hope that's what the law would say too, but I'm (and I'm sure other people around here - many of whom are my customers are too) curious as to your opinion.
Affiliate sets up a landing page that breaks arbitrary rules on an advertising network but may/may not break the law on it's own (probably doesn't). Affiliate sets up a link with my product that, when clicked, checks your IP and compares it against the ARIN database for IPs registered at that advertising network: if you are at that advertising network at the time, it redirects you to another landing page (one that meets the rules) of your choosing; if you're just not a normal user, it sends you to the non-compliant landing page.
This seems like it's a purely private issue to me, the advertising network is responsible to enforce their own rules. I would hope that's what the law would say too, but I'm (and I'm sure other people around here - many of whom are my customers are too) curious as to your opinion.
These are some more really good questions. On the affiliate/trademark issue, I personally work with companies and affiliates that do exactly this. It largely comes down to the individual circumstances, some merchants wink and look the other day, some (a lot) never notice, some ban you immediately etc. Since this relationship of affiliate/merchant is a private one, the law/courts don't get in the way too much. Its not a trademark violation if the TM holder doesn't raise the issue. You take a risk doing so that, if they feel like it violates their TOS, they simply won't pay you. If you come after them for non-payment though, they are going to wave a copy of that TOS that you agreed to, and your case just lost a lot of "bricks" right there. Even if its not spelled out in their TOS, if they decide not to pay you over it and yell "trademark violation" you are going to have an uphill battle trying to collect (I had one client that was ripped off over $20k on this exact scenario, and brand name usage was mentioned nowhere in the original TOS).
The "living" contracts is one of my favorites in the IM world. Rule of contracts is that parties are pretty much welcome to contract to whatever they want, so long as it doesn't break any laws (e.g. I can't contract to buy a tanker-truck of heroin from you, no matter how detailed the contract). Its a private issue, the law only gets involved at the civil level when one party cries "breach".
I will say that, in my experience, courts frown on "surprise" changes in the terms of contracts. When you first start promoting as an affiliate, you are basically entering into simple contract. Either party can change things later, They can decide they don't want affiliates anymore, You can decide to go promote the biz-opp offer that pays $1 more, its not an issue. What becomes an issue, and one that I see judges get mad about, is when one party tries to "sneakily" change the terms (as in your example) to their benefit w/o the other party knowing or agreeing to the new terms. The law frowns on those "surprises" that benefit one party at the expense of the other.
This is why for example, when your credit card company wants to change your interest rate, or even move a comma around on their privacy policy, the always mail you some legalese jargon that (almost) nobody reads, its the concept of providing "notice". They know the courts would hammer them if they changed the terms without some kind of notice.
Notice basically means that, parties can change the terms of a deal going forward, so long as the other side "knows" about the changes. If you know about the new CC interest rate, but continue to use it, then you are presumed to be "agreeing" to the new terms. Same deal in the IM world, parties can change terms if the contract doesn't prohibit it, as long as the other party knows about it, and can thus decide whether to continue under the new terms, or leave. If you keep promoting or doing whatever after they notified you of the changes, then you are expected to realize that you are "agreeing" to the new terms. If you don't like them, leave, but you can't really cry foul later and say you want the old terms back if you continue operating under the new ones once you were notified.
So, in a nutshell, those "living" TOS agreements and such tend to get smashed in a court of law if one side uses it to "screw" the other party by surprise.
Great Questions +rep
Yes, your instincts are right, this is largely a private issue, the Law generally isn't going to get involved. Granted, if they decided not to pay you and then you sued civilly for nonpayment, a court would probably come to the conclusion that you breached the agreement between the two of you, so you're out of luck. There is also a concept of "duty of good faith" in contractual dealings, but I wont get too much into that, where you can still not collect if you did something sneaky that is not technically against the wording of the contract/TOS, but that is obviously against the "spirit" of it.
I should also add here that I have yet to meet the judge who has ANY clue what anybody is talking about if you start throwing around terms like "IP cloaking" or "htaccess redirects." you might as well be speaking Martian. They will, however, distill it back to the underlying law concepts: a private contract between two parties that is governed by whatever those two parties agreed to.
Hey Guys
Thanks for the kind words and great questions, it's good to know its appreciated. I know we have only scratched the surface of IM legal issues, but I'm going to "shut down" answering any new ones for now. Hopefully, these posts have given you some grasp of the things to watch out for, ideas to think about, and how truly involved legal issues can be in for any serious IMer. Keep an eye out in the next week or so, I might just open up a "Round II" and take some new ones that you have..
As always, NOTHING I have said in this post should be construed as legal advice or create an attorney/client relationship. Please don't take what I've said here to be the gospel for your particular case, the law is very fact-intensive, and no two cases have exactly the same facts. Use at your own risk.
It is refreshing to see that so many of your questions were exactly the issues I see IMers facing/screwing up, so that means a lot of you guys recognize what the risks are. I'm not exaggerating when I say that my legal background is largely responsible for my success in the IM world, and these issues DO matter to more IMers than most realize.
So, the next step. Obviously there is some demand/need for some sort of help like this to IMers. I don't know if I will do a "Legal IM 101" pdf, eBook, printed book, forum,etc, but your questions have at least given me some ideas. If you want to contribute, post your ideas on this forum for a sample "Table of Contents" of what general concepts you would want listed in a book that you would want to have. If I write one, you'll get review copies.
For now, I've got to get back to making some money online
, so keep the feedback coming and keep an eye out for "Round 2" of Legal Questions facing IMers. Peace.
Thanks for the kind words and great questions, it's good to know its appreciated. I know we have only scratched the surface of IM legal issues, but I'm going to "shut down" answering any new ones for now. Hopefully, these posts have given you some grasp of the things to watch out for, ideas to think about, and how truly involved legal issues can be in for any serious IMer. Keep an eye out in the next week or so, I might just open up a "Round II" and take some new ones that you have..
As always, NOTHING I have said in this post should be construed as legal advice or create an attorney/client relationship. Please don't take what I've said here to be the gospel for your particular case, the law is very fact-intensive, and no two cases have exactly the same facts. Use at your own risk.
It is refreshing to see that so many of your questions were exactly the issues I see IMers facing/screwing up, so that means a lot of you guys recognize what the risks are. I'm not exaggerating when I say that my legal background is largely responsible for my success in the IM world, and these issues DO matter to more IMers than most realize.
So, the next step. Obviously there is some demand/need for some sort of help like this to IMers. I don't know if I will do a "Legal IM 101" pdf, eBook, printed book, forum,etc, but your questions have at least given me some ideas. If you want to contribute, post your ideas on this forum for a sample "Table of Contents" of what general concepts you would want listed in a book that you would want to have. If I write one, you'll get review copies.
For now, I've got to get back to making some money online
, so keep the feedback coming and keep an eye out for "Round 2" of Legal Questions facing IMers. Peace.Just wanted to add my experience with exactly that. After the iPhone was first unlocked but not officially available yet overseas, I sold US iPhones to Europe. I used a site and a domain in a European language that basically translated to "iPhoneUnlocked.ccTLD". The term "iPhone" was in there. After a couple of months I got a cease and desist letter from Apple's European law firm to my WhoIs contact. Not only did they demand to take the site down, but also demanded to hand over all profits I made from selling iPhones, access to all documents recording sales including customer data, and, for their effort of writing me that letter, a minor compensation in the 4-digit Euro range. (That's why I asked earlier if US C&D letters typically come with compensation demands.)
Luckily, I had kind of seen the possibility of something like this happening, my WhoIs was fake and when they realized I was in the US at the time, and that they didn't even have my real name/address, the whole thing kind of went away. They did however get the REGISTRAR to turn off my domain. They didn't even go to the host first. I was pretty scared for a while because theoretically, they could have retraced the payment system and subpoenaed the credit card processor for my real info.
And all just because of the word "iphone" in the domain.
To give a stab at answering this (I didn't see it answered before), I am a Canadian, and I dont think Mont will/can answer this because he is not a Canadian Attorney. Canada has its own set of laws on spamming/privacy if I'm not mistaken (this is what I remember my attorney telling me). So my advice would be consult a canadian attorney for this. But as Mont has said, there are many avenues that you can be pursued on if you have any ties to the US.. (hosting, any kind of ad/mail serving platform, ect).
This being said, I'm not a lawyer and nothing I say should be taken or considered legal advice, thats just my 2 cents and consult a REAL attorney before making any decisions
hope that helps a bit
Hey, I have a legal question for you:
I have been running a couple of anime fan sites for years now which lets you watch episodes and read comics online (never hosted on the site though, always linked out) and have never had any issues.
I recently got a cease and desist letter from VIZ media stating that I'm "Distributing and/or making available for distribution material bearing copyrights without authorization............... by providing for viewing full and partial anime episodes of the property"
It goes on to say " Such unauthorized display and distribution of the infringing material voilates the exclusive copyrights in and to the property of viz media ..........and creates a likelihood of confusion, since visitors to the website who view the infringing material thereon may erroneously believe that such us of the infringing material is licensed, sponsored and/or authorized by viz media."
And followed by the usual comply by xx or else we take legal action.
Do they have the right to do this since I am not sharing anything on the site it's just pointing to other websites. Are these guy fishing or do they mean business? Also, if they were to take legal action would they do that against myself or against the hosting company? They are in the US and I'm Canada, would it be worthwhile for them to do this?
This is the first time I get this kind of letter, not too sure what the best course of action is. What do you think?
I have been running a couple of anime fan sites for years now which lets you watch episodes and read comics online (never hosted on the site though, always linked out) and have never had any issues.
I recently got a cease and desist letter from VIZ media stating that I'm "Distributing and/or making available for distribution material bearing copyrights without authorization............... by providing for viewing full and partial anime episodes of the property"
It goes on to say " Such unauthorized display and distribution of the infringing material voilates the exclusive copyrights in and to the property of viz media ..........and creates a likelihood of confusion, since visitors to the website who view the infringing material thereon may erroneously believe that such us of the infringing material is licensed, sponsored and/or authorized by viz media."
And followed by the usual comply by xx or else we take legal action.
Do they have the right to do this since I am not sharing anything on the site it's just pointing to other websites. Are these guy fishing or do they mean business? Also, if they were to take legal action would they do that against myself or against the hosting company? They are in the US and I'm Canada, would it be worthwhile for them to do this?
This is the first time I get this kind of letter, not too sure what the best course of action is. What do you think?
I think you should read Mont7071's last reply. He's not answering any more q's and Round #2 may be coming later. Bu my stab at it is... dont worry about, MOST OF THE TIME C&D's are scare tactics.
Yea Garret I hadn't bothered reading the last page. Hmmm...I'll wait and see then, besides they got my last name wrong so technically they are referring to someone that doesn't exist, right? Can I use that as a defense? The message wasn't addressed to me? lol
Great thread!
I agree with your position, I'd personally never go back to the day job but I do think you'd be missing out if you didn't whip together some kind of package to market to us.
I disagree with the seminar/book/e-book requests ... wouldn't it be so much sweeter just to re-bill the re-billers?
Set up a subscription based site that covers all of the the FAQs well organized into categories and then put a private forum armed with paralegal admins. All of your FAQs can be mailed out to lawyers in all states and their compensation for reading the questions and submitting any state specific clauses would be free referrals (since you're already banking on the rebills). Just work similar to Prepaid Legal but charge more and specialize in internet marketing. PPL is worthless in internet law.
There are potentially enough internet marketers/site owning clients to support $100k/month easy with the only real expense on your part as the paralegal moderators in the forum.
I agree with your position, I'd personally never go back to the day job but I do think you'd be missing out if you didn't whip together some kind of package to market to us.
I disagree with the seminar/book/e-book requests ... wouldn't it be so much sweeter just to re-bill the re-billers?
Set up a subscription based site that covers all of the the FAQs well organized into categories and then put a private forum armed with paralegal admins. All of your FAQs can be mailed out to lawyers in all states and their compensation for reading the questions and submitting any state specific clauses would be free referrals (since you're already banking on the rebills). Just work similar to Prepaid Legal but charge more and specialize in internet marketing. PPL is worthless in internet law.
There are potentially enough internet marketers/site owning clients to support $100k/month easy with the only real expense on your part as the paralegal moderators in the forum.
mont7071 first of all wana thank you for starting this thread and help everyone. Respected mod of this form told me about you.
I got 2 silly questions:
Firstly, is it safe to run a clone of any website? By clone i mean the concept and basic structure of the site not about coyping looks or logo.
Second one i have Pmed u if you can read that and reply in PM.
Thanks for you time
I got 2 silly questions:
Firstly, is it safe to run a clone of any website? By clone i mean the concept and basic structure of the site not about coyping looks or logo.
Second one i have Pmed u if you can read that and reply in PM.
Thanks for you time