Woman Spends $17,000 Of Her Own Money To Stop SEO From Being Trademarked

from the now-that's-a-trademark-hero dept

Stephanie Migot writes "Two years ago, the SEO community noticed that somebody they'd never heard of had begun the process of applying for a trademark for SEO (Search Engine Optimization). From the look of things, it was a bit of a power-grab to set standards for which businesses could and could not describe themselves as providing an SEO service.

Naturally, the professionals were a bit alarmed, and at one point there were at least four different oppositions in the works. One by one, however, they all dropped out and it was left to a single individual, who paid the legal bills out of her own pocket, costing over $17,000, to get the application thrown out.

This never should have got that far. But what the story also shows is that the reason why so many dubious patents, copyrights and trademarks live on is because once the sound and fury has died down, there are very few who are willing to follow their opposition through to the end. Also, unless you keep a close eye on applications, it might be too late to take effective action before it's too late."

In some ways, it's even worse than Stephanie describes above -- because beyond being costly, it's often just an incredibly complex process to oppose a trademark or to try to invalidate a patent. The system is designed to focus on the approval process -- and not the opposition process.

Filed Under: seo, trademark

Olympics Threaten ICANN, Saying Its Trademark Concerns Outweigh Any Benefits From New TLDs

from the sense-of-entitlement-much? dept

It's no secret that the Olympics seem to have a massive sense of entitlement when it comes to trademark issues -- getting various governments to pass laws that go way beyond trademark laws in those countries to add special protections for the Olympics, barring pretty much any unauthorized mentions outside of press coverage (and even that's a bit iffy). This is not at all what trademark law is supposed to do. Its latest move is to complain to ICANN about its new plans for a .sports top level domain, worrying that any benefits "are outweighed by the risks, harms and costs it poses to trademark owners and the public." The public? Really? Furthermore, the IOC warns ICANN that it retains the "right to proceed against ICANN for damages resulting to the IOC or the Olympic Movement from the implementation of an unlimited number of new gTLDs." Nice of them.

That article highlights that the IOC already has special deals with a number of big domain registrars blocking any registration that includes an IOC trademark -- which is highly questionable, since registrations including trademarks are very much allowed to non-trademark holders, so long as the sites aren't confusing to the public (for example, with "sucks sites" which are allowed). Hopefully ICANN stands up to bullying from the IOC which has no real case here, unless gov'ts keep passing special "for the Olympics only" abusive trademark laws.

Filed Under: icann, olympics, tlds, trademark
Companies: icann, ioc

Kulula Responds To FIFA Legal Threats With Hilarious Clarifying Ad

from the this-is-not-an-ad-about-the-world-cup dept

In response to our post about FIFA threatening Kulula airlines in South Africa over its advertisment jokingly declaring itself the "unofficial national carrier of the 'you-know-what'," JJ sends over the news that Kulula has put together a new ad that looks similar to the old ad, but which changes the text to the even more ambiguous: "Not Next Year, Not Last Year, But Somewhere in Between" to avoid saying the dreaded "2010." The artwork in the ad is similar to the original, but clarifies that each thing that you might interpret as being about the World Cup is actually about something else. For example, the vuvuzelas (horns) are "definitely, definitely golf tees" and the guy who looks like he might be playing football is actually just a "man putting his right foot in, his right foot out and shaking it all about." Small versions are below, but be sure to click through for the larger versions: Original ad


Latest ad

Filed Under: south africa, trademark, world cup
Companies: fifa, kulula

The First Rule Of NCAA March Madness Is You Can't Mention NCAA March Madness

from the where's-that-happening?-shhhhhh! dept

What is it with sports leagues that think they have the right to deny anyone from making factual statements? We've seen it (repeatedly) with the Olympics and we've seen it with the World Cup... and now we're seeing it with the NCAA men's basketball tournament, better known as March Madness. This week, of course, some of the games will be played in Syracuse (including, I feel the urgent need to mention, the surprise of the tournament, my alma mater Cornell), and jsl4980 was the first of a few of you to send in the news that local businesses are being told they cannot mention the fact that the tournament is being held there. No local businesses are allowed to "welcome" fans or players for the event. They can't mention the NCAA event is happening, or that we're at the "Sweet Sixteen" level.

Of course, that's all according to the NCAA, which is basically lying. They're abusing the rights that trademark law gives them to try to restrict free speech on factual information, in a misguided effort to squeeze more money out of sponsors, by pretending that only sponsors can mention the event. But trademark law does not give you blanket control over the trademarked terms -- and presenting factual information, or welcoming people to a city by mentioning an event that is absolutely happening there should not be considered trademark infringement in the slightest.

Apparently, in the past the NCAA wasn't as abusive of trademarks, but it's learned a thing or two by watching how other sporting events abuse trademark law, and now everyone seems to be bending over backwards assuming that just because the NCAA forbids something that they have the legal right to do so.

Filed Under: basketball, march madness, ncaa, syracuse, trademark
Companies: ncaa

ACTA Set To Cover Not Just Copyrights & Trademarks, But Seven Areas Of IP

from the stretching-the-law dept

The folks who created ACTA were already sneaky enough in describing it as an "anti-counterfeiting" agreement, when they knew all along it went way beyond issues related to counterfeiting. For a while, it's been obvious that it was also very much (perhaps more than counterfeiting) about copyright, but it's actually about much more than that. We already mentioned that it is designed to cover patents as well. Now, KEI has looked at another leaked draft document, and notes that the draft sneaks in the fact that it's designed to cover seven different areas of intellectual property. In typical sneaky fashion, it doesn't come out and list them directly, but in the definitions section, defines "intellectual property" as "refers to all categories of intellectual property that are the subject of section 1 through part 7 of Part II of the Agreement on Trade Related Aspects of Intellectual Property Rights." Basically, it's saying that it's accepting the definition in a totally different document, from TRIPs. So, what's in that document?

1. Copyright and Related Rights
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Layout-Designs (Topographies) of Integrated Circuits
7. Protection of Undisclosed Information

Note how little of that has anything to do with counterfeiting -- which is mostly just a trademark issue.

Filed Under: acta, copyright, counterfeiting, intellectual property, patents, trademark

FIFA Demands Airline Drop Ad That Didn't Mention FIFA At All

from the unofficial-sponsor-of-you-know-what dept

Earlier this year, we wrote about how the Olympics, notorious for trying to control everything associated with the Olympics to block anyone from doing any marketing around the games if they haven't paid up, got upset at company selling a t-shirt that read:

"Cool Sporting Event That Takes Place in British Columbia Between 2009 and 2011 Edition."

Now it looks like something similar has happened with the World Cup and the South African airline, Kulula. Kulula, if you don't know, is somewhat famous for its sense of humor. In particular, I really like the way the company recently redesigned one of its airplanes as "Flying 101": Along those lines, the airlines decided to make a joke of the limits that FIFA struck on sponsors of the World Cup and put out an advertisement calling itself the:

"Unofficial National Carrier of the You-Know-What."

And, along with that it included images of stadiums, national flages and vuvuzelas (a type of horn regularly blown at football matches in South Africa). FIFA apparently sent a threat letter demanding Kulula pull the ad, calling it "ambush marketing." Apparently, FIFA has no sense of humor. After people got annoyed, FIFA put out a silly statement saying that it never said the airline couldn't use certain words or symbols -- but it just couldn't use them all in combination.

Of course, you have to imagine that all the additional attention to Kulula thanks to this "controversy" doesn't bother the airline one bit...

Filed Under: ads, trademark, world cup
Companies: fifa, kulula

Nestle Discovers The Streisand Effect... But Only After Making Things Worse And Worse... And Worse

from the how-not-to-do-things dept

Earlier this week, reader Jorvay sent over the news of how food giant Nestle had massively overreacted to an (admittedly disgusting) anti-Nestle video put together by Greenpeace and posted to YouTube. The thing was, this video was getting no attention. It had less than 1,000 views... but someone who should have known better at Nestle filed a bogus copyright claim to take down the video. There is no copyright issue in the video at all, so it was a bogus takedown. Even if there had been a legit reason for the takedown, doing so only drew much more attention to the issue, and the video quickly went back up on Vimeo, where it started getting even more views, a lot of which came because of the takedown.

Okay, bad enough, right? I was going to post that story, but before I had the chance, Nestle decided to make things worse.

Because of all this new attention, a bunch of anti-Nestle people went to Nestle's Facebook group, and started posting messages that were certainly anti-Nestle. Now, there are lots of ways to respond to such things. The one thing you don't want to do is respond the way Nestle's "moderator" did. First, they threatened to delete comments from anyone using a modified Nestle's logo, claiming that this infringed on trademarks (which is an interesting claim, but unlikely to hold up in court, where countless times the use of a logo in protest has been upheld). This resulted in some pointed responses from group members, such as "It's not OK for people to use altered versions of your logos, but it's OK for you to alter the face of Indonesian rainforests? Wow!"

Nestle then didn't do itself any favors by having its moderator respond sarcastically ("Oh please...it's like we're censoring everything to allow only positive comments") and then go with the foot stomping response as well ("it's our page, we set the rules, it was ever thus.")

Eventually, Nestle admitted that it was wrong and apologized, promising that the moderator would be a lot friendlier. However, by then the damage had been done. An issue that very, very few people would have noticed turned into a huge ordeal thanks to repeated mistakes in handling them. The company attempted to stifle speech with both bogus copyright and trademark claims, and then when called on it failed to realize that it was only making things worse.

Filed Under: copyright, streisand effect, takedowns, trademark, videos
Companies: greenpeace, nestle

Citizens United, Recent Winner Of Free Speech Case, Tries To Silence Critics

from the free-speech-for-thee,-but-not-for-me? dept

Unless you've been living under a rock lately, you've heard about the Citizens United decision by the Supreme Court, which reiterated corporate personhood in certain circumstances -- specifically with regards to political campaign funding -- effectively freeing up companies to spend as much money as they wanted to support (or not support) political candidates. The ruling was quite controversial, and it's not at all surprising that a Facebook group popped up with the creative name "Citizens United Against Citizens United." Turns out that the Citizens United organization was none too happy about the criticism. Paul Alan Levy alerts us to the news that the new bastion of "free speech" is claiming that the Facebook group violates its trademark and is demanding the destruction of all documents bearing its mark.

Although we haven't seen this issue litigated in the context of Facebook, Citizens United's demand flies in the face of the many decisions holding that an Internet gripe site (or fan site) may use the trademark of the subject of the discussion as its domain name. Under Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005), that's even the rule in the Fourth Circuit, where Citizens United is located. How can they possibly hope to win a case like that?

Wisconsin Democracy Campaign's argument would seem to be even stronger, because it is using "Citizens United" in its descriptive sense, and not as a mark. It seems doubtful that Citizens United the conservative group can prevent a group of citizens who are united to support or oppose a particular proposition from referring to their effort as Citizens United For X or Citizens United Against Y. (Otherwise, many groups that would have to change their names). It is especially hard to understand how any confusion about source could be expected to result from labeling a campaign "Citizens United Against Citizens United."

Interestingly, Citizens United asks Wisconsin Democracy Campaign to destroy all documents bearing the Citizens United trademark. If that demand were extended to the Supreme Court, could it succeed in wiping the Citizens United decision off the books?

Filed Under: citizens united, free speech, trademark
Companies: citizens united

Williams Sonoma Nastygrams Blogger Who Helps People Build Their Own Furniture

from the furniture-pirates? dept

Brad Hubbard writes "I regularly read a blog called "Knock Off Wood" -- a site where a woman teaches readers how to build various designer-looking pieces of furniture at home for a lot less. It's the best kind of "maker" site - someone who is passionate about crafting, freely sharing their passion with a community of readers and everyone learns a little something. So when Williams Sonoma, Inc (owner of Pottery Barn and West Elm among others) sent them a legal nastygram, the owner of the site was entertained more than anything."

The company is alleging both trademark and copyright violations -- though it's difficult to see either one holding up. Unfortunately the woman who runs the site decided it was easier to just cave in, but that's unfortunate. Doing so encourages more bullying. The trademark claims are ridiculous. They say that by mentioning specific product names, she's implying that "the website is somehow affiliated" with WSI. But, of course, any moron in a hurry knows that's not true. The whole site clearly states it's about making knock-off furniture. No one is going to go to this site and think it's actually affiliated with WSI, or any of the other brand name furniture companies.

The copyright claim is equally questionable. At issue is that she's using the copyrighted images of WSI's furniture as part of the blog posts about how to make that type of furniture. But that seems like it should be a clear cut case of fair use. If you run through the four factors of fair use, it's hard to see how this is infringement:

1. the purpose and character of your use
   
   The question here is if the use is somehow transformative or being used to build something new. But one of the questions usually asked in judging this factor is: "Was value added to the original by creating new information, new aesthetics, new insights and understandings?" It seems like an entire blog post around how to build that kind of furniture certainly qualifies. This one is in favor of fair use.
   
   
2. the nature of the copyrighted work
   
   Well, they're photographs, but they were used in catalogs and such, not for sale. So that would seem to, again, lend to a fair use ruling. The original purpose of the photos was that they were to be seen widely.
   
   
3. the amount and substantiality of the portion taken
   
   Indeed, it sounds like the "entire" photo was used, so you might be able to weigh this factor against fair use, but not necessarily. As we've seen in multiple lawsuits, even if you're using the entirety of the work, it can be considered fair use if the purpose is so completely different from the original -- which, in this case, is definitely true.
   
   
4. the effect of the use upon the potential market.
   
   Now, some might argue that the use here might harm the market for WSI furniture since it's teaching people how to build their own, but that shouldn't apply here. The test is for the potential market of the copyrighted work. That is, this factor should not take into account the impact on the market for the furniture itself, but just on the market for the photographs. And it's difficult to see any harm done here at all.

So going through all of that, it's difficult to see how this isn't a clear cut fair use case. Unfortunately, as mentioned, the woman didn't want to fight the legal battle and agreed to just take down the images and mentions of WSI. However, she is amused that a housewife in Alaska has brought out the legal attack dogs of a giant retailer.

Filed Under: blogs, copyright, furniture, knockoffs, makers, trademark
Companies: williams sonoma

Australian Trademark Tribunal Tells Apple That It Can't Stop Other Products From Using The Letter 'i'

from the imorons-in-ihurry dept

Late last year we noticed that Apple seemed to be getting needlessly (and at times ridiculously) aggressive over its trademarks in Australia. There was the software developer who had a product named iPodRip, which had been around for years, which Steve Jobs suddenly decided needed to change its name. When the developer pleaded directly to Jobs, Jobs replied "Change your apps name. Not that big of a deal," which is amusing since the Beatles once tried to force Jobs to change the name of Apple -- and to him it was a big deal. Then there's the lawsuit against Macpro, a company that's been in business for 26 years -- since before Apple even had Macintosh as a product. And, finally, there's Apple's decision to fight Woolworth's in Australia (and New Zealand) because its logo looks sorta like an apple, though absolutely nothing like Apple's apple logo.

While some of those disputes are ongoing, Apple has now lost a different trademark claim, while also being smacked down for thinking that just because a product has the letter "i" it means it violates an Apple trademark. In this case, it wasn't even the first letter of the product -- which was DOPi. Admittedly, this is iPod backwards, but no moron in a hurry -- which, I should note, was the legal standard that Apple's own lawyers brought back into vogue a few years ago -- is going to look at a product called DOPi and confuse it with an official Apple product.

And it wasn't like the folks on the tribunal just don't like Apple. The head guy is apparently a fan, but finds it ridiculous that Apple seems to think anything with an "i" is infringing:

In the tribunal hearing, IP Australia, the government body that oversees trademark applications, said Apple overlooked the fact that there were already a large number of products that have the "i" prefix, for example iSkin and iSoft to name just two, all of which are operating in the same class of electronic goods as Apple.

The registrar overseeing the case Michael Kirov, who confessed to being a tech head and a fan of Apple's products, judged that Apple failed to demonstrate that a "person of ordinary intelligence and memory" would automatically assume that just because a product carries the letter "i" it is an Apple product.

Chalk one up for iCommon sense.

Filed Under: australia, trademark
Companies: apple