The USPTO states: "A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services." In the case of Buy.com, even if they did not own the domain name, they could prevent the use the domain for a service that infringed upon their classification. If they had very broad protection, like IBM, they could prevent almost any type of use of the domain name. A much stronger trademark would be on a term alone, like Microsoft, where you could prevent any domain use, and in fact, take the domain name. This thread was about people who have "MySpace" codes or related content and then using the "MySpace" in the domain. This is ALWAYS infringement and cannot be done. Once "MySpace" related content has been put on a domain, they have infringed and can lose the domain. This is why the owner of "Madonna.com" lost the domain to the singer. I don't think anyone has said "MySpace" has sent out C&D letters to mere holders of a domain name. All C&D letters have gone out to people who have already committed infringement. If you want to register a "MySpace" domain and sit on it or use it for something not related to any prior usage, then that is fine - it's just no one was talking about that.
Myspace sent me a C&D letter and told me to hand over my domain. I told them to give me the thousands of dollars I spent on advertising. They replied and told me I have 5 days to remove the site and hand over the domain or they will take legal actions. I then told them I guess I would see them in court. By the time everything goes down I would have made a lot more then what they are going to take from me. Plus I just want to see if they're bluffing. It's been over 2 months now and I still haven't herd back from them.
If a site is infringing, they are entitled to all the income the site has generated, plus damages, plus treble legal fees. You should at least explore an option for asset protection.
They don't know how much the site has made. Plus I'm incroporated so it wouldn't be the end of the world.
"Only if it functions as an identifier" and "comprised of an Internet domain" are the key phrases there. It does not mean a standalone domain name. And "identifier" means exactly what I was saying earlier, it has to be something along the lines of the legal company name. And Buy.com doesn't have as broad of a classification as you might think. They're an online retailer for a variety of products. Wholesalers or service providers could easily use it w/o an infringement. IBM has even less protection. Any company could have the initials I.B.M. and use that domain if IBM lost it, as long as they're pretty much out of the tech industry. It would probably work great for a marketing or management firm for example. So they couldn't stop "almost any use of the domain." And even with Microsoft ... same issue. Another company can set up shop using that same exact name with no problem whatsoever. For example, maybe they're a furniture manufacturer specializing in soft microfiber sofas. Legally, Microsoft couldnt' do anything to stop them, especially because the name would make sense, and the company's in no way competing with them. The problem is that too many people think trademarks are the be all and end all, and that's not even close to being the case. Providing free items to be used on another site also isn't enough to constitute trademark infringement. If it were, no "fan sites" could ever exist. You're violating the trademark if you're using it to commit slander or libel (not the same as voicing a negative opinion), or if you're profiting by drawing traffic AWAY from a company or misleading their customers into thinking you're associated with them. If you tried to start another social network and got a domain like betterthanmyspace.com or something like that, then yes, you'd be violating trademark law. However, offering free services that encourage the user to actually GO TO the site in question is not a trademark issue legally. That's what this kind of site is doing. They're providing tools that can be used by Myspace users to go back to Myspace and improve their pages, leave better comments, etc. Myspace doesn't have any interest in this world of stopping sites like these, because they're not offering the services themselves, and they drive a lot of traffic to Myspace. Like I said before, they're only doing it because legally they have to have a paper trail showing they tried to defend the trademark diligently, if a larger trademark issue ever comes up, like Myspace being used as a general word in the social networking arena. It's the same thing every large company does. I've been dealing with issues like these with my own clients for a while now (especially because I do a lot of work with bands - often multiple bands have the same name until one gets big enough to complain ... trademarks are a huge issue in my business). I've consulted attorneys on their behalf. I'm pretty well-versed and well-read on copyright and trademark issues. I guarantee you that people are reading too much into this, just like they do any other time a company sends out cease and desist letters. There's no cause for alarm in the slightest. They try a letter. They may even try scare tactics if they really don't like your site for some reason or if they really want your domain for a project of their own. But they also know they can't win a battle in court. It's just sad that some people obviously folded w/o realizing that they're protected. To keep it safe, just add a disclaimer saying your site isn't affiliated with Myspace. Even that's not technically necessary though. These sites are one of the best marketing tools Myspace has, and they get the promotion for free. If anything, you should be charging them. j/k Jenn
You are grossly lacking in knowledge of trademarks and should refrain from posting on something that you do not understand. "IBM has even less protection. Any company could have the initials I.B.M. and use that domain if IBM lost it, as long as they're pretty much out of the tech industry. It would probably work great for a marketing or management firm for example. So they couldn't stop "almost any use of the domain." And even with Microsoft ... same issue." Wrong. IBM has broad protection on almost every type of protect and sector, including many non-tech related services and products. They even have a jewelry line. I don't care what business you are in, you can't register "IBM.anything" and use it. "Another company can set up shop using that same exact name with no problem whatsoever. For example, maybe they're a furniture manufacturer specializing in soft microfiber sofas. Legally, Microsoft couldnt' do anything to stop them, especially because the name would make sense, and the company's in no way competing with them. The problem is that too many people think trademarks are the be all and end all, and that's not even close to being the case." Wrong again. You can't use "Microsoft" in any domain name unless your usage predates their usage- and even then it would likely be limited. Even Mike Rowe "real name" found out phonetic spellings can get you into infringement problems with Mikerowesoft.com. Trademarks can be limited to a single classification, but they can also be registered in all classifications. You don't even need to register a trademark to own the rights to usage. Too many people falsely think that because there is no registered trademark that it is ok to use. The US recognizes “common law†rights to a trademark. "Providing free items to be used on another site also isn't enough to constitute trademark infringement. If it were, no "fan sites" could ever exist." Any site that is considered commerical - i.e takes in ANY form of income like adsense, sells a product, membership, or even accepts donations for "bandwidth" cannot infringe upon a trademark. Most fan sites could be shut down if the artist wanted too - it's just bad publicity for them are they aren't likely to push the matter. That not the same as saying it isn't infringement. "Like I said before, they're only doing it because legally they have to have a paper trail showing they tried to defend the trademark diligently, if a larger trademark issue ever comes up, like Myspace being used as a general word in the social networking arena. It's the same thing every large company does." LOL, sending out a C&D is only a first step. It does NOT constitute a diligent defense of a trademark. "To keep it safe, just add a disclaimer saying your site isn't affiliated with Myspace. Even that's not technically necessary though. These sites are one of the best marketing tools Myspace has, and they get the promotion for free. If anything, you should be charging them. " This is a common mistake made by people who have no legal knowledge of trademark law. A disclaimer does NOTHING to protect you with infringement on a domain name. It MAY give you some protection on the "content" of the site as long as the trademark owner can't argue you "tricked" the consumer with the "domain name" into implying that it could be associated with the TM holder. There are certainly companies that will not follow through with a lawsuit - just like using a copyright photo, but that isn't the same thing as saying it is ok to do it. There are many companies who will go after someone they perceive as infringing upon their domain - and the expense of defending such a suit can easily run six figures. Even if you ultimately win, you are out your legal fees in the US and cannot recover them from the trademark holder. As for your advice that MySpace isn't going to do anything, they have already filed Federal lawsuits for infringement - including domains that don't include "MySpace". "MySpace filed a federal lawsuit in California alleging trademark infringement against Anthony Lineberry, who sells adders on his site Myfriendbot.com with the slogan "Need fans? Or just want to be popular on MySpace?" Murdoch spent $580 million for "MySpace" and he certainly has the deep pockets to legally pursue infringement. The way you do it is to put everyone on notice, sue some of the larger cases and make an example of them, let the others fold, and then go after anyone else.
OK. Well I stopped reading your post when you began sounding insulting. I'm not going to sink to fighting with someone on a forum. I've worked with attorneys on these issues, I've done the research, I'm paid to write on the topics, and I'm more than familiar with what I'm talking about. Just because you've been around DP longer doesn't mean you've worked in the industry or know more about the subject. So that said, I'm through with this thread. If people choose to give up on things that they're legally not required to, that's their business and their loss. I won't feel sorry for them taking incorrect advice. Jenn
I ran a public company that had a well known trademark. We spent vast amounts of money on trademark infringement - We won every single case. Bad advice (such as yours) caused several people to file personal bankruptcy due to legal costs. We never even attempted to recover damages or our legal fees. We were legally required to act and did everything we could to prevent it from going to court because is was a lose, lose situation. I own several Federal trademarks and have spent over a million dollars in legal related expenses - and have been on both sides of the trademark argument. I prevailed in every case except one, and that was against one of the largest retailers in the world. We felt we would win, but came to a compromise because they had a lot more money and could have dragged it out for years. I decided to cut legal costs at $30K before it wound up in court. As MySpace is already filing Federal lawsuits, it is clear that your advice was wrong. Anyone who has intellectual property rights issues should spend a few hundred dollars and get the advice of an attorney - not someone who isn't an attorney, but "writes articles" and has no actual experience with trademark law.
Since you feel so competent in the legal arena, I'm going to have to assume you're also familiar with the fact that speaking against someone's reputation in an accusatory tone in a public forum such as DP, acting as though you know the depth and breadth of their experience on a topic (especially when incorrectly accusing them of having none), is a form of libel. And as such, I'm going to ask you only once nicely to refrain from it in the future. I've had my fair share of winning battles in a variety of capacities, also against extremely large organizations. I don't take attacks on my credibility lightly, especially when I go out of my way to help someone. As I said, I work extensively on copyright and trademark issues, and have worked numerous times with intellectual property lawyers. So you can choose to share whatever insight you may have, as will I. But when you escalate into personal attacks, you've crossed the line, and I expect such comments to cease immediately. If they do, I'm more than happy to leave it alone as a disagreement among professionals. But if you continue to attack my credibility on any level, there's a very good chance that it will need to resume offline, and I'll fail to carry any level of civility that I exercise here. So for everyone's benefit, let's just agree to be professional while in this environment and agree to disagree. Jenn
Oh give me a break. You're threating legal action? I think the only battle you've every won is with a box of donuts.
I have to say, I'm extremely disappointed to see that someone who claims to be such a professional can't carry themselves in such a manner. I've had a reasonably pleasant experience here in DP until today. Everyone I've dealt with previously, from clients to colleagues and whether we agreed or disagreed, has been entirely respectful. I'm going to try not to let one person's ignorance towards me professionally negatively color my perception of the community as a whole. But you're right. You're probably not worth the hassle of dealing with legally. Anyone who chooses to take your word in reference to my credentials, especially after juvenile remarks like your last, certainly isn't the kind of professional that I want to network with or the kind of client that I have any interest in working with. Besides, why bother filing suit when I can see from your latest response that you're already doing more damage to your own reputation and character than you are to mine? As far as I'm concerned the discussion is over. I won't waste my valuable time responding further to you. Jenn
I had a run in with the legal department of maattell when I worked for a company that was sued for using their cars in a display. Talk about being up against some nasty people - just search for b a r b i e m a t t e l and lawsuits on the internet (I don't even want to draw their attention since they even shut down their "fansites" about the stupid dolls.
lol, you mean I have damaged the reputation of an alias? Unlike yourself, I don't troll the boards looking for work. I don't sell any services - haven't ever even put a link on any post. I don't get any benefit from DP other than to share experiences, learn, and help when I can. Stick to music reviews or try to get some actual experience in the real world. Faking a resume and giving bad advice isn't something you should build a repuatation on.
Yup, the only people who win with trademark issues are the attorneys. I hate trademark disputes and do everything I can to avoid them.
I have to admit, this is one of the most interesting threads on DP that I have actually read. I wish jhmattern wouldn't have gotten so offended, as the conversation will probably die off. Personally, I have to agree with mjewel. Regardless, my point in posting this is that after I read through the thread, I wanted to read some non-DP opinions on the subject, so I typed "myspace trademark" into Google, and ironically enough, this thread was the first and second result
What interests me is just how far the trademark extends to derivative words and phrases. Myspaceship, myspaceontheinternet, myownspace? Just how far do you have to change the letters before you're out of trademark territory and able to build a competing website? The reason I ask is because trademarks of common words are all over the place. Easy Group is the obvious one, and they did go after a lot of sites which used Easy + Keyword. When it's a made-up name like Yahoo you know where you are, and it's easy to tell when you've crossed the line. But when something like Myspace gets a trademark, it's as though you can barely write a paragraph without it accidentally being littered with trademarks.
Dell went after someone named dell who had a website with his name. Same with a few other big companies. Tough if your name is Jane CocaCola and you want a personal website using your name.
I am not experienced in this but if I had my guess based on reading this myspace has nothing to gain by shutting these sites down. I think it is to protect their trademark so if they need to they can say they tried to defend it.