How to locate an infringer on the internet

Hello!

Welcome Back! Happy Holidays! Today's topic will discuss how to find the owner of a website that is using your intellectual property without your permission. I always get calls from clients regarding a website that is unlawfully using their trademarks or copyrighted material. In the majority of these cases, the website owner's information is not readily available. Here are a couple of ways to locate the infringer.

1. Look up the owner's information on whois.net. Whois.net will allow you to type in any domain name and they will provide the registrant's (owner) information. Most times, the name of the owner or company is readily available. However, there are instances when aliases are used. In this case, use the following method:

2. Contact the Internet Service Provider and inform them of the infringing activity and they will provide the owner's contact information or they will contact the owner on your behalf.

I hope this information was helpful. If you have any questions or comments, please leave one.

Can You Trademark a Common Name?

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Thank you for visiting! Today's post will address whether you can trademark common or generic names. I briefly discussed this issue in a previous article you can find here. Basically common or generic names, or words or phrases that are merely descriptive are not sufficient for trademark registration with the USPTO. See TMEP §1213.05. However, if a combination of common or generic names create a unique name, tag line, or coined phrase, then the USPTO considers them unique enough to be a trademark. See the example below:

Go and Daddy separately are two common or generic words. Alone neither are sufficient for trademark registration. However, the combination of "Go Daddy" together is a unique name that is trademarked!

So when choosing names for trademark registration, do not be afraid to use common names together to create a unique name or phrase. As long as your name has not been previously used by another individual or entity, and you are using the name in commerce, trademark registration is feasible.

I hope this information was helpful. If you have any questions, please leave a comment.

How To Protect Your Intellectual Property Online

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Welcome Back! I hope everyone is having an awesome day! Today I am going to discuss how to protect your intellectual property on the internet. Here are a few practical tips and tools you can implement right now to ensure your intellectual property is not stolen.

1. Include a section or link on your website that clearly states the terms of use when someone wants to use your material. See the examples below:

For Copyrights

All Content on Site X are protected by U.S. Copyright. This site is licensed under a Creative Commons License. You are free to site or quote material on this site if you first obtain our permission and if you properly attribute the material back to Site X.

For Trademarks

Site X's name and logos are all registered trademarks of the X company. All Rights are Reserved. You must obtain our permission before using or displaying any of our registered trademarks.

2. Watermark your copyrighted images. A watermark can contain an image across the photo with your copyright notice or the name of your site.

3. Do keyword searches of your trademarks and be vigilaint about contacting infringers and demanding they remove your intellectual property from their sites immediately.

4. For as little as $249.00 per trademark, use a company like Mark Trend to track and monitor possible and actual trademark infringement on the internet. Using a montioring service like Mark Trend will save you money and most imporantly time. They do all the work for you.

I hope this information was helpful. If you have any questions, please leave a comment.

Google's Policy for Keyword Advertising: Beyond the U.S.

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Welcome Back! In my previous post I discussed Google's Policy for Keyword Advertising. Specifically, I discussed how Google's Policy was different in the US, Canada, UK, and Ireland than in countries outside of these territories. Why? Well it depends on how "trademark owner" friendly laws are in certain countries.  Below I will discuss some "trademark owner" friendly laws in France and Austria.

In France, one court found Google liable for trademark infringement in allowing trademarks to be used a keywords by Google Advertisers.  Viaticum & Luteciel v. Google France, Court of Nanterre, Oct. 13, 2003.  The court conluded that a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products.  

In Austria, the court found that use of trademarks in keyword advertising is trademark infringement.  The court concluded that infringement existed when the search resulted in the competitor's or infringer's advertisement appearing before the trademark owner's advertisement.   Also if the trademark owner's trademark appeared in the text of the advertisement, then trademark infringement existed.   AdWord-Urteil aus Osterreich OGH, Beschluss vom 20.3.2007

So what is the final conclusion? As I have previously stated, advertisers should be overly cautious in deciding to use trademark as keywords in advertising. Depending on the country or the region in the US, you may be liable for trademark infringement.

Google's Policy for Keyword Advertising

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I hope all is well! In my last post I briefly mentioned Google's Policy on their advertisers' use of trademarks as key words in key word searches that produce advertisements.  Specifically, I mentioned that Google has established a policy in which Google will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further.  Google will implement this policy when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger.  I do need to clairfy that this policy applies to countries outside of the UK, Ireland, Canada, and the US.  See Google's Policy here.

However, in the UK, Ireland, Canada and US, Google's policy is different.  Google will remove the trademark as a keyword only when the trademark is displayed in the ad title or in the ad text.  But it will not completely disable the use of the trademark as a keyword.  View this policy here. 

Below is an example:

In the U.S, if I have a company that is a competitor of John Deere, I can purchase John Deere, which is a trademark, as a keyword.  A search for John Deere will also pull up advertisements for my company.  My advertisement can be just as prominent or more prominent than John Deere's. Of course this can be frustrating for John Deere.  But as long as John Deere, which is a trademark, does not appear in my ad title or text, Google will not require I stop using John Deere as a keyword.  Google will allow this even if John Deere complains.  But outside of the UK, US, Ireland, and Canada, if John Deere complains about the use of its keyword in my advertising campaign, Google will require that I stop using the keyword and prevent me from using it further.   Even though the trademark, John Deere, does not appear in my ad text or title, Google will prevent me from using it as a keyword.  Why is Google's policy different for the US, Canada, Ireland, and the UK?  Well it mainly comes down to how strong the trademark laws are in a particular country regarding the use of trademarks as keywords.

As I mentioned in my previous post, Google has been sued many times for its policy here in the US.  However, Google has either settled each lawsuit or the lawsuit was dismissed for a variety of reasons.  The second circuit has concluded that the use of keywords in advertising is not a use in commerce and therefore not trademark infringement. Read my synopsis of this case here.  On the other hand, the 11th circuit has said the use of keywords in advertising is a use in commerce and therefore trademark infringement.  Other courts in the US, have not been clear whether using trademarks as keywords is trademark infringement. Ultimately this issue is still up in the air and will have to be decided by a higher court.  

Since the courts are pretty much split regarding this issue, Google is not motivated to do more to stop advertisers from using trademarks as keywords in an advertising campaign. Google's policy here in the U.S. is definitely more advertiser friendly. I still stand by my policy to not use trademarks as keywords if you are an advertiser.  The search engine may not be liable for allowing you to use the trademark has a keyword, but you will as an advertiser. 

In my next post, I will discuss some of the laws established in countries where Google's policy is more trademark owner friendly.

I hope this information was helpful.  As always leave a comment or contact me via email if you have any further questions.

Can Search Engines be Contributorily Liable for Trademark Infringement?

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Today's topic is contributory liability in regards to trademark infringement, i.e, contributory infringement.  Of course, we are going to discuss this trend as it applies to the Internet. First let me explain what is contributory infringement.

Contributory infringement is a legal concept that is usually applied to copyright infringement. Contributory infringement is when an individual or entity knows that copyright infringement is taking place by another and allows, causes, or assists the infringing activity.  Here is an example:  

A manufacturer unlawfully copies an artist's work and sells it to a major retail chain.  The retail chain sells the works in all of its stores.  The artist notifies the retail chain of the infringement and requests that they stop selling the infringing work.  However, the retailer continues to sell the infringing work.  The retailer would be liable for contributory infringement because they had notice the work in question was infringing and they induced or allowed the manufacturer to commit copyright infringement through selling the work.  

Recently, courts have applied the contributory infringement concept to trademark law.  The current law states that "If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit."  Inwood Laboratories, Inc. v. Ives Laboratories, Inc.  Strong language!  

How does this rule apply to search engines?  Specifically, can a search engine be liable for allowing trademarks to be used in keyword searches that result in the advertisement of the trademark by a trademark infringer?  This practice is called key-word linked advertising.  I briefly discussed this concept in my earlier post.  Google has come under fire for this practice.  They have been sued many times.  However the lawsuits were either settled or dismissed.  As a result, Google has established a good policy to avoid contributory trademark infringement liability.  Essentially when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger, they will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further.   Thus Google is adhering to the law established in Inwood Laborities...not knowingly contributing to trademark infringement.

What does this mean for consumers who advertise on the Internet? Don't use established trademark has key words when advertising.  If you sell designer purses, use "designer purses" as a key word  instead of "Louis Vuitton" or "Chanel."  This simple practice will save you a lot of heartache and money. 

Using Third Party Trademarks as Meta-Tags on Blogs

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I hope all is well! Like most bloggers, I use meta-tags based on the subject of my blog or posts, to make it easier for search engines to find my blog when an internet users enters the search term. However, what happens when you use a trademark as a search term.  Is it trademark infringement or a search engine linking function?  This issue was discussed at PLI's Intellectual Property Law Institute.  There are two critical cases that have recently addressed this issue. However, each ruling is different.  Here is a brief synopsis of the law as it stands today:

1. The use of trademarks in meta-tags is "use in commerce" and therefore trademark infringement. The 11th Circuit came to this inclusion this year in North American Medical Corp. v. Axiom. The court stated that the use of a trademark as a meta-tag was use in commerce. Essentially, the court concluded that the use of the meta-tag, which resulted in the trademark in question being displayed on the search engine, was an advertisement for the sale of goods. Thus it was used in commerce.

2. However, the 2nd circuit decided in 1-800 Contacts, Inc. v. WhenU.Com, Inc. that use of trademarks in meta-tags was not a "use in commerce" because the search engine merely provided the link to the trademark.  The court emphasized that linking a trademark through a search engine was not a use in commerce because the trademark in question was being displayed by a machine and the defendant was not causing the trademark to be physically placed on goods or services, or was physically causing the trademark to be displayed or reproduced.  

What does all of this mean for those of us who use meta-tags? Although the 2nd Circuit and 11th Circuit give different opinions on whether the use of trademarks in meta-tags is trademark infringement, it is better to be safe than sorry.  When using meta-tags be wary of using trademarks.  Make sure that when you purchase key words meta-tags that there are not any trademark in the list.  The last thing you want is to be sued by a huge corporate giant for trademark infringement.