Today is an exceptionally important day in my beloved Chicago – the first truly open election for Mayor in over two decades. The leader in the race to replace retiring Mayor Daley is former congressman, Presidential Chief of Staff, and famed profanity artist Rahm Emanuel. The Saturday Night Live routines nearly write themselves.
So what on earth does this have to do with social media and the law?
Actually, quite a bit, as Rahm has faced an interesting social media conundrum from the moment he first declared for the race this past September, a problem faced by many businesses every day. Nearly as soon as his candidacy was rumored in the press, Rahm Emanuel had to deal with an imposter on Twitter, known as @MayorEmanuel.
Now typically when a public figure is faced with an imposter, they run to Twitter to take it down, or (in some extreme cases) run to court. But Rahm (who is not exactly famous for being a subtle guy) did a much smarter thing.
He didn’t try to take it down, he didn’t sue “John Does 1-20″ in a desperate effort to uncover the parodist. Instead, he got into the spirit of the thing, and mockingly offered $2500 to a charity of the author’s choice if he or she is willing to come forward. He has apparently learned one of the most difficult lessons for any brand owner (or celebrity): the difference between infringing behavior that should be stopped, and infringing behavior that not only harms no one, but in fact may be beneficial.
Prof. Thomas McCarthy — probably the greatest expert on trademark law of the 20th century — recently spoke at a joint synmposium on trademark law held by the University of San Francisco’s McCarthy Institute and Microsoft. (To toot my own horn, I moderated the panel on trademark dilution — which was a significant thrill!) At this conference, which was quite amazing
It is very easy to be too aggressive, or not aggressive enough, said Prof. McCarthy, when enforcing your IP rights, especially online. And that is because too many people don’t spend the necessary time thinking about what they actually will be accomplishing by sending that cease and desist letter. Did Mastercard really gain anything through its failed effort to stop Ralph Nader from using it’s “Priceless” campaign? Would Rahm have done his public image any favors by suing an anonymous funny person? Would it have made him appear petty and overly sensitive? Does having someone out there making fun of you mean that you actually … matter?
So yes, there are many times that you need to aggressively pursue legal remedies when someone out there is using your brand, or your name. But think about it first — you may conclude that discretion is the better part of valor.
Clients frequently ask me to explain the difference between domain names and trademarks. They don’t understand whether registering a domain name has any impact on trademark rights, or whether using (or registering) a trademark has any impact on domain names. Thankfully, this is one circumstance where the answer is actually fairly easy to understand — even without a love of circuitous complexity.
Let’s take trademarks first. Trademarks are designations of source or origin. They tell consumers where a product or service originated, and act as a form of consumer protection. Depending on who you believe, trademarks were either first developed by Roman blacksmiths or medieval guilds, but in either case they were intended as a way to “brand” a product as originating from a single, specific source. Unlike patent rights (which must be the subject of a registration to have any validity) trademark rights (in the United States) are derived from use. Trademark registrations provide certain procedural advantages (and there are some circumstances where registrations are not only useful but necessary); however, it is only use of the mark that develops any rights to the mark.
Domain names are nothing more than addresses. To quote that ever-popular information source, Wikipedia, “A domain name is an identification label that defines a realm of administrative autonomy, authority, or control on the Internet, based on the Domain Name Systemwww.amazon.com. However, Amazon.com does develop trademark rights through its independent use of “Amazon.com” as a trademark on its site and through its marketing efforts.
“But wait,” you might say, “I heard about this ICANN thing, and you can stop folks from using a domain name that infringes on your trademark, right?” Yes, the one twist in all of this is that while use of a domain name does not create trademark rights, valid trademark holders can challenege domain names where:
Thus, you can’t simply register the domain name “coca.cola.com” if you are not, in fact, Coca-Cola. In addition to the ICANN dispute resolution system I linked to above, there are other weapons available to trademark holders, most notably the Anti-Cybersquatting Consumer Protection Act, which can provide more extreme legal impact. We’ll talk about that one another day.
In short, you should walk away from today’s post with a very simple piece of knowledge: trademark rights are not domain names, and domain names are not trademarks. However, a valid trademark can trump a domain name under certain circumstances, but the reverse is not true.
The Wall Street Journal recently ran an article entitled “Name Choices Spark Lawsuits.” They might as well have run an article entitled “Sun rises in East” or “BREAKING: Wine made from Grapes.”
In other words, this is hardly news. Companies have had problems with trademark infringement for centuries, and the Internet and social media have only increased the chance for a conflict over names. As with other kinds of intellectual property disputes, companies big and small can easily find themselves as either plaintiffs or defendants in these suits. But with some planning, and a little care, the pain of trademark infringement can be minimized, or at least somewhat controlled. Today, we’re going to talk a bit about the defensive side of the equation: how do you avoid becoming a defendant in this type of suit. Tomorrow, we’ll talk about what to do if someone else is ripping you off.
When entrepreneurs start out, or established businesses launch a product, they often inadequately clear their new trademarks. They don’t want to spend the money on a lawyer are in a hurry, and don’t want to take the time to figure out real availability. Or they just do a search on Google, or look to see if the domain name is available. They are, in short, asking for trouble — while you should certainly do those things too, they do not substitute for a real trademark search reviewed by a trademark practitioner. The old aphorism about ”an ounce of prevention beats a pound of cure” may as well have been about trademark clearance. Would you rather spend a few thousand dollars at the beginning of the process, or hundreds of thousands (or millions) of dollars later?
This is not, by the way, a problem limited to entrepreneurs. I have personally been involved in trademark infringement disputes where large companies find themselves sued by smaller ones, and end up having to pay out significant amounts of money to repair the damage. But for small companies, these problems can be even worse — at least the big companies can afford to hire lawyers to fight their battles. Small companies, conversely, often find themselves over a barrel, threatened with financial apocalypse if they don’t accede to the demands of a more senior trademark owner.
This is why, when starting out, you need to think about what you’re doing. Searching for the availability of a mark before you use it is annoying, but a relatively inexpensive insurance policy. Does it eliminate all risk? Of course not: no trademark clearance process is perfect. But will it dramatically improve your chance of avoiding messy problems later, the kind of problems where you have to change your branding and then pay a lawyer and then perhaps pay damages or a settlement to a competitor?
Yes, you read that headline correctly. A federal judge in New York yesterday unsealed warrants that authorized the confiscation of several websites (TVShack.net, Movies-Links.tv, FilesPump.com, Now-Movies.com, PlanetMoviez.com, ThePirateCity.org, and ZML.com). One of the websites stored copies of illicit content (e.g. infringing entertainment content like movies), but the others apparently only linked to the content stored on other sites. The government will seek to have these sites and their domain names forfeited.
Newbies in the world of intellectual property and social media often don’t realize that acts of copyright infringement are not only subject to civil penalties (e.g., some content owner can sue you), but can also result in criminal liability. The folks behind these sites may have more to worry about than just losing their domain names.
While we await more detail on what exactly happened here (it appears that these were video streaming sites, so they may have been actively engaged in the infringing activity) this case study presents social media users with yet another warning: do not assume that you are free to host, link to or otherwise use content without permission from the copyright holder.
To be sure, there are many instances where it is legitimate (for example, in discussing this issue I can link to the article cited above without worry that I am engaged in some kind of infringing behavior). There are other situations where the activity lies in a grey area, but is potentially okay for reasons of fair use (e.g. were I to enable my site to embed infringing material hosted on another site for the purpose of analysis or criticism). Finally, there are areas where you are asking for trouble (e.g. setting up a site to permit folks to watch copyrighted content without paying for it). But as the recent Google decision demonstrated, even that requires some analysis.
Thus, your best advice is not to assume anything, but rather to consider what you’re doing, and recognize the risks. Including someone else’s content on your website may get you more traffic, but it may attract other kinds of attention as well. And you could lose more than your domain name if you aren’t careful.