I run a review site and received an email from my web hosting company today – with what appears to be an official document from a law firm, claiming that my web site is infringing on their client’s trademark. The page in question has the company’s name on the page, with about 10 (mostly negative) user-submitted reviews.
I don’t see how any trademark is being infringed upon. If every company was successful in filing and winning such claims, the web would not have any negative reviews on it.
My web host is giving me 48 hrs to tell them what steps I have/will take to remedy this situation, or else they will be forced to disable this material in accordance with federal trademark laws. They are going to remove the material, even though they have “not sought to determine whether the Infringing Materials on the Web Site do indeed infringe upon the Claimant’s intellectual property rights”.
I would like to postpone my web hosting company from removing any material from my web site until I am able to speak with/hire a lawyer. What are my options? Are there any trademark lawyers that visit this bulletin board?
There are a few attorneys on this site but generally discussion is about the hypothetical topic or discussions of current issues from a general sense. If you need immediate, and actual legal help you should consider trying a law forum or contacting an attorney known for their internet expertise directly.
I am not a lawyer, so take this as my own personal opinion:
It sounds like a common situation these days, abuse of ip law to stifle criticism. From what you’ve described, there is no trademark infringement whatsoever, you are perfectly within your rights to mention a company name and to also offer critiques of their service. The comments may be defamatory or libellous, so they may have a case there, it depends on the actual content. But as these are user submitted reviews, Section 230 safe harbors should apply, assuming you are in the US.
You mention the need for a copyright lawyer, but this is not an alleged copyright issue. As such, the DMCA is also irrelevant. If it were copyright, you could file a DMCA counter notice. But with it being trademark infringement, there is no counter notice, and no DMCA protection for your host, which is why in 99.9% of these cases, web hosts take the easy route and disable the content from fear of legal action. It would be nice to say ‘find a stronger-willed host who understands ip law’, but good luck finding one.
Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark.
As you can see from the above, scathing reviews of a company should not considered trademark infringement, as there is no ‘competitor’, nor any attempt to cause confusion. It seems abuse of the law and that letter was written knowing full well that your host will take down the content to avoid any hassle. If you are somehow affiliated to one of their competitors, this may lead to other problems, although I still don’t see how this could be seen as trademark infringement.
There are of course other things you can, going public is one of them - blogs like techdirt.com love to write about these cases. You could hire a lawyer, or maybe try public citizen or the eff. Paul Alan Levy of public citizen seems to know his stuff and writes a very decent retort to ip bullies.
The document starts off by giving the company’s trademark name/registration number, and when it was first used. It then goes on to state that “[Company]'s intellectual property rights include the right to restrict the use of the Registered Mark and any related website content.” This is the main complaint in the notice.
It then says that furthermore, the site is “capitalizing on the use of the Registered Mark by diverting traffic from its website in violation of laws regarding trademark infringement, counterfeiting, and unfair competition.” There are non-invasive ads built into the template, but I don’t know how they can claim counterfeiting and unfair competition.
If we were to put up a disclaimer or statement on the page in question that acknowledges their trademark and its ownership, would this not remedy the situation? We could also remove the advertisement to satisfy the second part of their claim.
I sent the official notice to a lawyer and am waiting to hear back. All thoughts/comments are welcome.
(The annoying part is that my web host is only giving me 48 hrs. [now 24 hrs.] to do something about it.)
They don’t get to dictate completely how their ‘mark’ is used by others. In the case of a review of their company, merely mentioning their name is clearly not trademark infringement - how can you criticise without mentioning their name? Even if you used their logo, I’m pretty sure you’d have a fair use argument. Again, there is no confusion here - you are using their name as part of a review of their company.
It then says that furthermore, the site is “capitalizing on the use of the Registered Mark by diverting traffic from its website in violation of laws regarding trademark infringement, counterfeiting, and unfair competition.” There are non-invasive ads built into the template, but I don’t know how they can claim counterfeiting and unfair competition.
If we were to put up a disclaimer or statement on the page in question that acknowledges their trademark and its ownership, would this not remedy the situation? We could also remove the advertisement to satisfy the second part of their claim.
IMO it would do nothing, because in reality, this letter has absolutely nothing to do with trademark infringement and all to do with trying to stifle free speech - they are simply abusing IP law to stop unwanted criticism of their company. They know damn well your service provider will yank the content, and they’ll be pretty sure you won’t have the money to fight it.
I doubt this would get very far in court, if it ever even comes to that - they are just bullying you and this is very common these days.
If it were me, I’d go public with this. Post it on your site, post it to blogs like techdirt. Let everyone know what this company is like - full on streisand effect. I’d also change service provider. There are some hosts who specialise in hosting your type of content, hosts who don’t cave when they receive legal letters. Typically they host political sites, but they might consider a site that presents consumer reviews and needs a little protection. Have a search around.
In both copyright law and trademark law there is a concept called “fair use” which applies to sites which use another’s intellectual property for the purpose of commentary, criticism, news reporting, research, teaching, etc.
In this instance, the company complaining does not have a legal leg to stand on. There is plenty of case law to back up your legal use of their name.
However, they can still cause you a lot of heartburn through their efforts.