I created a fan site for the Discovery TV show, Deadliest Catch back in 2007. I used videos from YouTube that were all from the official Discovery Networks channel. (No third party unauthorized uploads) Since they have the embed code I thought I would be ok using them on the site (http://www.deadliestcatchtv.com) A few weeks ago I get a letter from Dsicovery's legal department stating the domain name contained their trademark as well as demanding I remove all of the YouTube videos. When I actually spoke to one of their lawyers he stated that the availability of the embed code did not give anyone the right to actually use it outside of youtube. He also stated that the videos were not allowed to be used outside of YouTube. Even more frustrating was an email I received a while back from Discovery with a link to photos and videos to use on my site for my readers. The same lawyer responded that the folks at Discovery have since had a change of heart and I needed to remove that material as well. Am i missing something here or is this ridiculous. Has anyone run into this issue?
Oh dear. You seem to be up against a bunch of lawyers with little grasp of IP law and no grasp of what the rest of the business is doing. I believe you are in the clear as far as embedding the videos goes as they have agreed to the YouTube TOS, which grants you (and everyone else) the right to embed the videos. To reiterate what I've just said, by uploading their content to YouTube, Discovery Communications has granted If they don't want people embedding the videos any more, they should disable embedding. As a bonus, disabling embedding in this way would be effective immediately and not require lawyers that charge $500/hour writing emails to people like you. Owning the trademark Deadliest Catch gives Discovery Communications certain limited rights in certain limited circumstances. I don't believe you are infringing on their trademark, as you are accurately describing the show Deadliest Catch on your site and making no claims to be an official site. Also owning a trademark does not necessarily give them the rights to the domain; see Prince v Prince for example. To have the domain transferred to them, Discovery Communications must show that you You have not caused confusion with their mark, you have not diluted their mark, you have not run the site for commercial gain (I believe). A case similar to yours (which found in the defendant's favour) is this one, where a reseller of ITT parts was asked to transfer several domains that included ITT to the manufacturer. While IANAL, I believe their case is extremely weak and you would probably be granted a summary judgement against them. The only thing they have going for them is much deeper pockets. I've submitted this to Techdirt. See if we can get the Streisand effect to kick in...
The domain name is the real issue here. The previous post about prince is entirely different and isn't applicable to your situation. You domain name alone is trademark infringement. It isn't a pure fan site as it is commercial (runs ads). They could file a WIPO action and take the domain and/or sue you. Even if they had granted you express permission (and I don't see where they have), they can revoke it as it is their "intellectual property". Even if had legal grounds to keep the domain, the legal costs in defending a lawsuit would greatly exceed any possible profit the site could make. A court trial is something you certainly don't want to get involved in. Even you won (and I think there is about zero chance) you would be out legal costs that could easily go into six figures. If you can't work something out with them, I would turn over the domain to them. I would see if they would allow you to use another non-infringing domain, maybe even a redirect of your old domain for a period of time.