Five Things to Know About Parody and Criticism Websites

The Internet has allowed everyone to voice his or her opinion. With blogs, message boards, and other forums, the town crier has been transformed into a modern journalist.  This is why parody and criticism websites have flourished throughout cyberspace.

However, many website owners are not prepared to respond to a cease and desist letter from a high-priced law firm, which may claim that the website is defamatory, infringing on intellectual property rights, and/or engaging in unfair business practices.

Receiving a cease and desist letter can be a scary experience. Unless you’ve managed to stay awake through a law school lecture, the language and principles of the letter may be difficult to comprehend. Plus, the letter will likely demand that you immediately remove content from the website or else face the legal consequences. Before drafting a response or complying with the demands of the letter, here are five things you should know about parody and criticism websites.

1. The First Amendment Protects Parody and Criticism

The First Amendment gives individuals the right to express themselves. Throughout our nation’s history, people have expressed their viewpoints through parody and criticism.  A person or entity cannot shut down your website merely because you criticize them or make fun of them.

But there are very few, if any, absolutes in law and the First Amendment is no exception.  The First Amendment does not protect defamatory content. Defamation is a false, published statement that adversely affects the reputation of an individual, group, or company. An opinion cannot be considered defamatory, but it is only an opinion if a reasonable person would think that the statement was an opinion. What is the definition of a reasonable person? Who knows, it’s whoever a judge or jury thinks it is.

To protect yourself, think about what you’re writing before publishing the content.  Don’t play loose with the facts. Make sure you can verify your statements before you hit the publish button. If you are expressing an opinion, make sure that it is clear that it is an opinion. You may even want to consider putting language on the website that clearly states that the comments are an opinion. Taking a few preventive measures before publishing the content may save you in the long run.

2. Parody and Criticism Have Been Recognized as Fair Uses

Although the content of the website may be protected as free speech, it may still be violative of another’s intellectual property rights. Courts have traditionally protected parody and criticism as fair uses. But as I have written in a previous post, whether or not something is a fair use is not always clear. If someone’s intellectual property is being used for the purposes of criticism or parody, you should first analyze (1) whether you need the content to make your point and (2) whether you are using too much of the content to make that point. Unfortunately, anytime you use someone’s intellectual property without permission, it is a calculated risk.

3. For Trademark and Unfair Competition Claims, You Have to Use the Plaintiff’s Mark in Commerce

A lot of cease and desist letters will allege trademark infringement or a violation of unfair competition laws. Under federal law, a plaintiff must prove that the defendant used the mark in commerce in connection with the sale or advertising of goods and services without the plaintiff’s consent. Thus, using a mark on a noncommercial website for the purposes of parody or criticism is likely not a trademark infringement or a violation of unfair competition laws, even if your comments may have an adverse economic effect on
the plaintiff.

4. You Need to be Careful with Your Domain Name

You need to carefully select your domain name. Some courts have found that diversion of economic activity constitutes a use in commerce, thus strengthening a plaintiff’s trademark claim. For instance, if someone typed in Peta.com expecting to go find an animal rights organization, but instead found your website which was critical of the organization, you may be liable for trademark infringement and for engaging in an unfair business practice. A website owner may be liable even if a user would instantly recognize the website was not what they were looking for.

You also need to be aware of the Anti-Cybersquatting Protection Act (“ACPA”). During the Internet Bubble, people were buying domain names without any intention of using the domain name, hoping that a large company would purchase the domain name from them.  ACPA was designed to stop and penalize such activity. An ACPA violation occurs if a defendant has (1) a bad faith intention to profit off a mark and (2) registers, traffics in, or uses a domain name that is identical or confusingly similar to a distinctive mark, identical or confusingly similar to or dilutive of a famous mark, or is a trademark protected by marks involving either the Red Cross or the Olympics.

You need to make sure consumers will not be confused by your domain name. For instance, you will have a weak case if your website is McDonalds.net. Whereas your case is much stronger if your website is McDonaldssucks.net because no reasonable consumer would believe that McDonaldssucks.net was a website authorized by Ronald McDonald.

5. Sometimes It’s All Bark and No Bite

Just like a dog should not be judged based on its bark, a cease and desist letter should not be judged solely on its strong wording. Writing a cease and desist letter is an art and good lawyers know the right buttons to push. Yet, website owners sometimes comply with the cease and desist letters simply to avoid potential litigation even when their website is legitimate parody or criticism. Unfortunately, this can lead to a chilling effect on free speech and allow the more powerful individuals and entities to dictate the conversation.

That doesn’t mean that you shouldn’t take the letter seriously.  But, if you receive a cease and desist letter, you should first evaluate the opposition’s claim before responding and contact an attorney if necessary. Parody and criticism serve a vital role in our society and the Internet is a great forum for such expression, but more so than ever it is essential that you understand the legal standards and how to respond if necessary.

Dave Owens is an attorney based in the San Francisco Bay Area.  He can be reached at [email protected]

Photo credit: Flickr/DonkeyHotey

What is Trademark Dilution?

Guest post by Dave Owens, an attorney who lives in the San Francisco Bay Area.

Generally in trademark disputes, the parties compete in similar markets. To prove trademark infringement, a plaintiff must prove that there is a likelihood of consumer confusion. However, just because the marks are being used in different markets doesn’t necessarily mean that a defendant has escaped legal liability.

Owners of famous trademarks may bring a federal claim for trademark dilution (note: under state law, a mark does not necessarily have to be famous in order for the trademark holder to bring a dilution claim). This occurs when the defendant’s use of the mark creates an association that weakens the famous mark.

Federal law allows a plaintiff to enjoin (to stop the use of) the defendant from using the mark. A plaintiff may receive additional remedies, including damages and attorney’s fees, if it can be shown that the defendant willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark. Before you use your mark in commerce you should first consider whether it could potentially dilute a famous trademark.

Elements

For a federal dilution claim, the plaintiff must prove:

  • the mark is famous and distinctive;
  • the mark was used in commerce;
  • the use of the mark occurred after the plaintiff’s mark became famous;
  • the use is likely to cause dilution of the mark’s distinctive quality through blurring or tarnishment.

Famous Marks

Under the Federal Dilution Revision Act of 2006, the factors for determining whether a
mark is famous include:

  • the duration, extent, and geographical reach of advertising and publicity of the
  • mark, whether advertised or publicized by the owner or third parties;
  • the amount, volume, and geographic extent of sales of goods or services offered
    under the mark;
  • the extent of actual recognition of the mark;
  • whether the mark was federally registered.

This is actually a difficult standard for the plaintiff to meet. The Ninth Circuit has defined a famous mark as one “with such powerful consumer associations that even non-competing uses can impinge on their value.” The obvious examples are businesses you could think of off the top of your head: Nike, McDonald’s, Coca Cola, Microsoft.

Commerce

To bring a federal claim, a defendant must have used the mark in a way in which has an effect on interstate commerce. This will likely be satisfied if you are selling anything (goods or services) with a famous trademark. One court even found that using an Internet domain name to operate a website was “use in commerce” because it affects a party’s ability to offer services.

After Mark Became Famous

In 2011 it would be ill advised to name your restaurant Nike Steakhouse. However, if you started the same business in the 1960’s when Phil Knight was still running on the Oregon track team there wouldn’t be a dilution issue. This protects businesses in the event that another business in a different market suddenly becomes famous.

Likelihood of Dilution

In Moseley v. V Secret Catalogue, Inc., the United States Supreme Court held that the current federal dilution law required a showing of actual dilution. However, that decision was superseded by the Federal Dilution Revision Act of 2006, which now only requires a plaintiff to prove that there is a likelihood of dilution — an easier standard for a plaintiff to meet.

Types of Dilution

There are two main types of dilution: blurring and tarnishment.

Blurring is the “association arising from the similarity between the mark or trade name and a famous mark that impairs the distinctiveness of the mark.” This is like if you had a bowl of water and you added a drop of food coloring to the bowl, thus making the water less clear. For example, if you started Nike Steakhouse, the shoe company would argue that the steakhouse’s use of the name was blurring their mark.

Tarnishment is the “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” This occurs when the trademark is linked with shoddy quality or used in an unwholesome manner. For example, if you started Nike Sex Shop, the plaintiff would argue that the uses of the name was tarnishing their mark.

Defenses

Among the defenses that may be raised, there are several statutory defenses that Congress put in place to prevent courts from enjoining speech protected by the First Amendment:

  • Fair uses are exempted under the statute, such as comparative advertising or promotion to identify the competing goods or services and uses that parody, criticize, or comment upon the famous trademark or trademark owner. Because of this defense, Adidas is allowed to use the Nike trademark in a commercial
  • comparing its tennis shoes to Nike’s tennis shoes. Furthermore, a political cartoonist is free to use the Nike swoosh symbol in a cartoon that criticizes Nike’s policies about outsourcing.
  • Noncommercial work is exempted under the statute. Courts have disagreed about the definition of “noncommercial.” Some courts have held that parody and political speech are protected noncommercial uses because they are not purely commercial. Whereas another court found that a non-profit organization was
  • engaged in commercial activity because, amongst other things, it was selling books with the famous trademark.
  • All forms of news reporting and news commentary are exempted under the statute. Congress included this defense in recognition of the heightened First Amendment protection afforded to the news industry.

Dave Owens is an attorney based in the San Francisco Bay Area.  He can be reached at [email protected]

 

What Is Trademark Infringement?

Guest post by Dave Owens, an attorney who lives in the San Francisco Bay Area.

Trademarks are a product of our culture, surrounding us every time we drive down the highway or walk through the aisles of the supermarket.  Since the highway, aisle, or even Google search is cluttered with various trademarks, an intriguing name or symbol might be what lures a potential consumer to your product.

For this reason, an effective trademark is almost essential for your business to thrive. But it is for the same reason that companies want to zealously protect their trademark. Before starting a business, selling a product, or even creating a website, you should first examine whether your mark will likely cause consumer confusion.

What is Consumer Confusion?

To prove trademark infringement, the owner of a trademark must prove that another’s use of a mark creates a likelihood of consumer confusion. The key word is likelihood; a trademark holder does not have to prove that actual confusion occurred.

So what constitutes a likelihood of consumer confusion? Well, it depends.

Note: Anytime a lawyer tells you “it depends” he or she usually means that the courts are unpredictable and/or the law is pretty vague.  In this case both apply.

Jurisdictions have different standards for what constitutes a likelihood of confusion, often with only slight variations. The tests usually contain most or all of the following factors:

  • Strength and weakness of the plaintiff’s mark;
  • Whether the defendant’s use of the mark is the same, similar, or related to the plaintiff’s use of the mark (e.g., it may not be an infringement if the plaintiff uses a mark for a restaurant whereas the defendant uses the mark for an automobile);
  • Similarity of the marks in terms of sight, sound, and meaning;
  • Whether the plaintiff has evidence of any actual confusion;
  • Defendant’s intent in using the mark (e.g. is this a bad faith effort to simply to profit off plaintiff’s mark?);
  • Whether both parties use the same marketing and advertising channels (e.g., are the products or services sold in the same stores or advertised in similar media);
  • Purchaser’s degree of care in making the purchase (e.g., courts generally presume that more care is made for a bigger purchase than a smaller purchase);
  • If the parties sell different types of products, courts will evaluate the likelihood of whether the plaintiff will enter into the defendant’s line of business.

A plaintiff does not need to prove each factor to be successful. Courts will weigh the totality of the factors in making their determination. Of course this unfortunately means that it is harder to gauge whether you are infringing upon another’s trademark.

Steps to Limit Your Risk

Before using your mark, there are a few steps you can take to limit the risk of infringement:

  • Search the USPTO website: Federal registration means that the owner has nationwide rights over their mark and could bring legal action you against even if they are not using the mark in your geographic area.

The United States Patent and Trademark Office allows you to search other federally registered trademarks to see whether your mark is the same or similar to another mark. But just because someone has the same or similar mark does not mean that your mark would necessarily infringe upon theirs. Before further proceeding you should examine whether the use would create a likelihood of confusion (see factors above).

  • Search Your State’s Website: You should check to see whether your mark is already registered in your state. Most states have a system set up similar to the USPTO website that allows you to search for registered trademarks.

If there are marks that are the same or similar to yours, you must examine whether the use would create a likelihood of confusion.

  • Search Google: An owner may still have common law protection if they did not register their mark at the federal or state level. The best way to search this is to do a Google search and to browse through as many pages as possible.

Doing this research beforehand will take time and potentially cost money if you decide to hire an attorney, but a little due diligence can minimize your risk and save you money in the long run.

Dave Owens is an attorney based in the San Francisco Bay Area.  He can be reached at [email protected]

Photo credit: Flickr/Jinx!

How to Protect Your Image

Guest post by Dave Owens, an attorney who lives in the San Francisco Bay Area.

In 2008 the American Beverage Institute, a restaurant trade association, ran an advertisement in USA Today featuring a mug shot of Lindsay Lohan, which stated that in-car breathalyzers were a good idea for the actress, but not a good idea for the general public. The purpose of the ad was that the vast majority of people know how to drink responsibly and in-car breathalyzers should not be mandatory. As expected, Lohan did not find ad humorous and threatened to sue the American Beverage Institute.

The lawsuit never came to fruition, but it sparked an interesting discussion about the parameters of the right of publicity. For many, how they are perceived becomes more important than reality. In the Internet age when photos and videos are constantly being placed on websites, every individual should know their rights in regards to their image.

What is the Right of Publicity?
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Five Reasons to Register Your Copyright

Guest post by Dave Owens, an attorney who lives in the San Francisco Bay Area.
counterfeit copyright handbags
When you create a work, you have copyright protection regardless of whether the work was registered. Before 1978, you had to register your work in order to receive copyright protection. If you failed to properly register or did not provide sufficient notice, the work would fall into the public domain.

Now, under the Copyright Act, the only requirements are:

  1. Originality (this is not a high standard; courts don’t expect everyone to be DaVinci), and
  2. Fixation in a tangible medium of expression (it has to exist on something tangible — paper, film, disc, etc.)

Although registration is no longer a requirement, there are still several important benefits to registering your work. Upon completing your work, you should consider registering your copyright.

Find Out The Five Reasons To Register Your Copyright

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How to Protect Your Trade Secrets

In the business world, the information you possess can give you a great economic advantage over your trade secretscompetitors. Certain information is protected as a trade secret. So it is necessary to know what information you can protect and how you can protect it. Here is what you need to know about trade secrets.

Definition of a Trade Secret
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