Protest, Parody and Criticism Sites

A trademark is a "mark" (word, phrase, symbol, design, mark, device, or combination thereof) used to identify the source of a product. Trademarks allow consumers to evaluate products before purchase.

A famous mark is a mark that has become so well known, that it has become almost universally recognized. An example of such a mark would be "McDonald's" or "Coca-Cola." Famous marks become important where an owner of a trademark is claiming trademark dilution against a defendant. The Federal Anti-Dilution Act of 1996 provides that an owner of a famous mark is entitled to an injunction where a defendant's use of the mark causes dilution of the distinctive quality of the owner's famous mark. In determining whether a mark is famous, a court will consider a list of eight factors, found in the 1996 Federal Anti-Dilution Act.

Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.

It covers similar ground to trademark infringement, but is more specific to misrepresentation of source, and applies even when there is no trademark at issue. If your website makes it appear that you sell products made by Company X, but in fact you make these products in your garage, Company X might accuse you of falsely designating the origin of (or "passing off") your items.

A type of infringement of a famous trademark in which the defendant's use, while not causing a likelihood of confusion, tarnishes the image or blurs the distintiveness of the plaintiff's mark. For example, if someone tries to sell "KODAK" pianos, KODAK could stop the person--even if consumers were not confused--because "KODAK" is a famous mark, and its use on products other than film and film-printing accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness.

Many states have anti-dilution laws. The federal government only recently enacted anti-dilution legislation; see the Federal Trademark Dilution Act at 15 USC 1125(c).

"Unfair competition" covers a wide range of kinds of unjust business behavior---so many kinds, in fact, that it is impossible to give one simple general definition. In essence, unfair competition means trademark infringement or false advertising to confuse the public. In most states, only commercial competitors can be engaged in "unfair competition."

The UDRP was approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") in 1999. It is an online procedure for resolving complaints made by trademark owners about domain names.

In order to win a UDRP proceeding against a domain name holder, the trademark owner must prove ALL of the following: 1) that the domain name registered by the domain name holder is the same or confusingly similar to a trademark or service mark in which the trademark owner has rights. UDRP decisions have gone both ways on whether a protest, criticism or parody site is confusingly similar when a domain name consists of the trademark and another word such as "sucks." The most important factor seems to be whether or not the domain name owner is using the site for commercial purposes. If it is, the panel will probably find that the use of the trademark in the domain name causes a likelihood of confusion.
2) that the domain name owner does not have a legitimate interest in the domain name. If the domain name owner's site is being used to criticize, protest or parody the trademarked entity or its owner's products and/or services, the panel will probably find that the domain name owner has a legitimate interest in the domain name. This will probably be true, even if the domain name is, for all practical purposes, the same exact thing as the trademarked word.
3) that the domain name owner has used and registered the domain name in bad faith. Bad faith can be found in any number of factors including, but not limited to a) registration for the purpose of selling the domain name to the trademark owner for profit; b) a pattern of registration to prevent the trademark owner from using the mark in a domain name; c) registration for the primary purpose of disrupting the business of a competitor, or d) an intentional attempt to attract, for commercial gain, Internet users to the domain name owner's web site by creating a likelihood of confusion as to the source of a product or service on the domain name owner's website. One clear example of bad faith would be where the domain name owner creates a site that contains ads advertising the goods or services of the competitors of the trademark owner. Remember, that to prevail under the UDRP, the trademark owner must prove all of the points listed above.

There can be three outcomes: 1) the trademark owner wins and the domain name is transferred to the trademark owner; 2) the trademark owner wins and the domain name is canceled; or 3) the domain name owner wins and keeps the domain name. There is no appeal under the UDRP process, but you can file a lawsuit if you believe your rights have been violated. If a timely lawsuit is filed (within 10 business days), there will be no action taken until the parties settle, the lawsuit is dismissed or withdrawn or there is a court order regarding the ownership of the domain name.

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The right of publicity is a right to prevent the unauthorized commercial use of someone's identity, including name, image, or likeness. A natural person (and that person

The distinction between the two is a subtle one. The false light cause of action focuses upon indignity and defamation focuses upon reputation.

An intangible but recognized business asset which is the result of such features of an ongoing enterprise as the production or sale of reputable brand name products, a good relationship with customers and suppliers, and the standing of the business in the community.

Product disparagement law prohibits certain false claims about another's goods or services. While a defamatory statement harms the reputation and character of a person or corporation, a product disparaging statement harms the marketability of the goods being disparaged. Product disparagement is typically harder to prove.

Notice is information concerning a fact, actually communicated to a person by an authorized person, or actually derived by him from a proper source.

"False light" is a claim that publicity invades a person's (plaintiff's) privacy by a false statement or representation that "places the plaintiff in a false light that would be highly offensive to a reasonable person."

The elements that must be proved to establish defamation are: (1) A publication to one other than the person defamed; (2) of a false statement of fact; (3) which is understood as being of and concerning the plaintiff; and (4) which is understood in such a way as to tend to harm the reputation of plaintiff.

The free speech guarantees under the Constitution protect certain speech and commentary. The degree of protection generally depends on whether the person commented about is a private or public figure and whether the statement is regarding a private or public matter. According to the New York Times rule (from the case New York Times v. Sullivan), when the plaintiff is a public figure and the matter is one of public concern, the plaintiff must prove "malice" or "reckless disregard" on the part of the defendant. If both parties are private individuals, there is less protection for the speech because the plaintiff only needs to prove negligence.

Libel is a defamatory statement expressed in a fixed medium such as a writing, picture, sign or electronic broadcast. Slander is a defamatory statement expressed in a transitory form such as speech.

An order by the court requiring the defendant to do or refrain from doing some action pending a full trial on the merits of the lawsuit. Sometimes in intellectual property litigation, the property owner, soon after filing the complaint, will make a motion for a preliminary injunction requiring the defendant to stop doing those things the plaintiff alleges are infringing the plaintiff's intellectual property rights.

Traditionally, a party seeking a preliminary injunction is required to show five basic factors: (1) that there is a probability of success at the ultimate trial on the merits of the claim; (2) that the plaintiff will undergo "irreparale injury" pending a full trial on the merits; (3) that a preliminary injunction will preserve the status quo which preceded the dispute; (4) that the hardships favor the plaintiff; and (5)that a preliminary injunction will favor the public interest and protect third parties.

Libel is a defamatory statement expressed in a fixed medium, usually writing but also a picture, sign, or electronic broadcast. See <!--GET LINK Question 323-->

As defined in Black's Law Dictionary (7th ed. 1999), disparagement is "A false and injurious statement that discredits or detracts from the reputation of another's property, product, or business. To recover in tort for disparagement, the plaintiff must prove that the statement caused a third party to take some action resulting in specific pecuniary loss to the plaintiff."

A procedure that permits a judgment to be granted to all or part of a case if there is no real dispute in the evidence that would require a trial to determine the facts. The judgment is often prompt and direct.

In a right of publicity claim, actual damages is the loss the plaintiff suffered due to the misappropriation of identity. The statutory damages is a minimum fine the court can assess, particularly if actual damages are difficult to assess. In California the minimun for statutory damages is $300.

A trade secret is business information that is the subject of reasonable efforts to preserve confidentiality and has value because it is not generally known in the trade. Such confidential information will be protected against those who obtain access through improper methods or by breach of confidence. Infringement on a trade secret is a tort and a type of unfair competition. Every alleged infringement of a trade secret involves two main issues: (1) whether there is valuable and secret business information; and (2) whether this defendant used improper means to obtain that information.

A publically traded company is one which trades stock on any of the stock exchanges such as the NASDAQ or New York Stock Exchange. Any member of the public can buy and sell shares of the company stock.

Exemplary damages are punitive damages, which are defined as "Damages awarded in addition to actual damages when the defendant acted with recklessness, malice, or deceit." Punitive damages are intended to punish and thereby deter blameworthy conduct. The Supreme Court has held that three guidelines help determine whether a punitive-damages award violates constitutional due process: (1) the reprehensibility of the conduct being punished; (2) the reasonableness of the relationship between the harm and the award; and (3) the difference between the award and the civil penalties authorized in comparable cases. BMW of North America, Inc. v. Gore, 517 U.S. 559, 116 S.Ct. 1589 (1996)."

An injunction is "A court order commanding or preventing an action. * To get an injunction, the complainant must show that there is no plain, adequate, and complete remedy at law and that an irreparable injury will result unless the relief is granted... [A]permanent injunction [is] [a]n injunction granted after a final hearing on the merits. * Despite its name, a permanent injunction does not necessarily last forever."

The main federal register of marks established by the Lanham Act. Trademarks, service marks, collective marks and certification marks may be registered on the principal register.

At one time the term referred only to the manner in which a product was dressed up to go to market e.g. a label, package, display card and other packaging. Today, the term refers to the totality of elements in which a product or service is packaged or presented. These elements combine to create the visual image presented to customers. This "trade dress" is capable of acquiring exclusive legal rights as a type of trademark---or, identifying symbol of origin. All aspects of appearance are potentially protected as trade dress

A word used by the majority of the public to name a class or category of product or service. A generic name cannot be protected or registered as a trademark or service mark. For example, no seller can have trademark rights in "telephone" or "oven." If a seller did have exclusive rights to call something by its recognized name, it could amount to a monopoly on selling that type of product.

The Lanham Act may prohibit the unauthorized use of a celebrity's identity if someone uses the likeness, voice, or other uniquely distinguishing characteristic in a way likely to make consumers believe -- falsely -- that the celebrity sponsors, approves of, or is associated with the unauthorized user's goods or services.

Parody is a usage of a mark that pokes fun at the mark and does not confuse the public as to the source of the usage. In determining whether there is infringement the court balances the public interest in free expression against the public interest in avoiding consumer confusion. "A parody must convey two simultaneous--and contradictory messages; that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the consumer will be confused." From Cliffs NOtes, Inc. v. Bantam Doubleday Dell Publishing Group, 886 F. 2d 490 (2d Cir. 1989)

Trademark Misuse is a theoretical concept which pertains to how a trademark holder handles its rights. It purports to be similar to the defenses brought in copyright and patent cases, which dictate that if the owner of the intellectual property rights (e.g. a patent or copyright) over-exerts its rights (e.g forces someone to buy an unrelated product to gain acess to the protected work), then the copyright or patent holder will lose its right to sue for infringement.

Recently, the theory was employed in challenging Network Solutions' dispute policy which held that registered trademark holders had the right to have Network Solutions immediately freeze any allegedly infringing domain names until the dispute was settled. It was argued that often claims with little or no support were being alleged by Registered Trademark Holders so as to prevent possibly infringing sites from materializing. Although the trademark holder's registration (and rights) were not cancelled, the argument that giving "extra" rights to registered trademark holders was unfair ultimately led to a change in Network Solution's dispute policy.

It is believed that the trademark misuse theory may still prove useful where a domain name owner is forced by a trademark owner to litigate or arbitrate a frivolous claim of infringement.

An Act to amend the law of defamation and to amend the law of limitation with respect to actions for defamation or malicious falsehood.

[4th July 1996]

BE IT ENACTED by the Queen's most Excellent Majesty, by and with the advice and consent of the Lords Spiritual and Temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:-

Responsibility for publication Responsibility for publication. 1. - (1) In defamation proceedings a person has a defence if he shows that-

(a) he was not the author, editor or publisher of the statement complained of, (b) he took reasonable care in relation to its publication, and (c) he did not know, and had no reason to believe, that what he did caused or contributed to the publication of a defamatory statement. (2) For this purpose "author", "editor" and "publisher" have the following meanings, which are further explained in subsection (3)-

"author" means the originator of the statement, but does not include a person who did not intend that his statement be published at all; "editor" means a person having editorial or equivalent responsibility for the content of the statement or the decision to publish it; and "publisher" means a commercial publisher, that is, a person whose business is issuing material to the public, or a section of the public, who issues material containing the statement in the course of that business. (3) A person shall not be considered the author, editor or publisher of a statement if he is only involved-

(a) in printing, producing, distributing or selling printed material containing the statement; (b) in processing, making copies of, distributing, exhibiting or selling a film or sound recording (as defined in Part I of the Copyright, Designs and Patents Act 1988) containing the statement; (c) in processing, making copies of, distributing or selling any electronic medium in or on which the statement is recorded, or in operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form; (d) as the broadcaster of a live programme containing the statement in circumstances in which he has no effective control over the maker of the statement; (e) as the operator of or provider of access to a communications system by means of which the statement is transmitted, or made available, by a person over whom he has no effective control.

In a case not within paragraphs (a) to (e) the court may have regard to those provisions by way of analogy in deciding whether a person is to be considered the author, editor or publisher of a statement. (4) Employees or agents of an author, editor or publisher are in the same position as their employer or principal to the extent that they are responsible for the content of the statement or the decision to publish it.

(5) In determining for the purposes of this section whether a person took reasonable care, or had reason to believe that what he did caused or contributed to the publication of a defamatory statement, regard shall be had to-

(a) the extent of his responsibility for the content of the statement or the decision to publish it, (b) the nature or circumstances of the publication, and (c) the previous conduct or character of the author, editor or publisher. (6) This section does not apply to any cause of action which arose before the section came into force.

If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial.

If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement.

Hosting (also known as Web site hosting, Web hosting, and Webhosting) is the business of housing, serving, and maintaining files for one or more Web sites. More important than the computer space that is provided for Web site files is the fast connection to the Internet. Hosting allows the files to be stored in a location which is quicker for third parties to access. Typically, an individual business hosting its own site would require a similar connection and it would be expensive. Using a hosting service lets many companies share the cost of a fast Internet connection for serving files.

A number of Internet access providers, such as America Online, offer subscribers free space for a small Web site that is hosted by one of their computers. Geocities is a Web site that offers registered visitors similar free space for a Web site. While these services are free, they are also very basic.

A number of hosting companies describe their services as virtual hosting. Virtual hosting usually implies that their services will be transparent and that each Web site will have its own domain name and set of e-mail addresses. In most usages, hosting and virtual hosting are synonyms. Some hosting companies let you have your own virtual server, the appearance that you are controlling a server that is dedicated entirely to your site.