HarryPotterTalk.com trademark versus free speech

[CoolDot]

Hello,

I have placed a thread on the appraisal section of DnForum but have decided that this is something that actually belongs here, into the legal section.


I am completely aware that any domain like HarryPotterSomthing.com in principle violates the trademark rights of the Warner Bros. The link
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1254.html
shows a whole bunch of them and there are many more like this.



I own a domain, that MIGHT (and this is my question) might be different.

I own HarryPotterTalk.com


My intentions are (or would be if I was sure on the legal issues) to create a noncommercial site that basically only offers a big chat-board (well moderated!) for people to talk about all things Harry Potter.

So far to the "simple story". The more complex version is that the site would be 100% commercial free, but that I would like to (if possible) point people to other websites (not Harry Potter related). Concrete I have a website that shows absolutely marvellous pictures. So what I would do on HarryPotterTalk.com is to show a few of these pictures with a copyright-remark on them and anybody who wants can deduct that where on picture came from others might be too (we are talking beautiful landscape pictures, not porn ). The pictures would not even be links, just simply optical enhancements of the website.


Now my questions:

1) Is it true that a domain does not infringe on a trademark, if it is used exclusively to talk about, discuss, criticise, ... the trademark? Does the right for free speech allow for this?

2) Would my pure chat-site WITHOUT the "pictures with copyright" be allowed?

3) Would a pure chat-site WITH these pictures be allowed?

4) Can I do anything with the domain (provided it is really a 100% noncommercial usage?

5) I have other domains, MagicalChat.com and MagicalTalk.com
Could I use those to create Harry Potter chat sites (and possibly even make them commercial sites?)


The dispute trademark-rights versus the right for free speech is, even apart from my own case, an interesting one. (I basically had given up on the idea of ever to be allowed to use the domain anyway, but finding out about this free-speech defense has rekindled my hope a bit).

If you know of any cases where this conflict played a role (and went in favor of the domain-owner) then I'd be VERY grateful to learn about them.

Thank you very much for your insights into the matter.

Kind regards
CoolDot

 

[dtobias]

Well, if it's noncommercial, then some other domain ending than .com would be more appropriate (and, on rare occasions, judges and UDRP panelists actually reflect this in their decisions).

 

[CoolDot]

dtobias, Dan thank you for your comment.

I don't think that it makes much difference if it's a .com or .org or .info even. If you look at the link I posted above, you'll see that Warner Brothers went after all TLD's.

The only "defense" I can see is
a) a pure talk-site. Critique, even critique on a trademark is protected (as far as I know)
b) a non-commercial site

Now the big question is, how much can "non-commercial" be "tweaked" to somehow make use of the traffic. I think, not very far. A bit too much linking to commercial sites and off we go to the courts... )

So I still believe the domain is practially worthless but I would love to hear the opinions of anybody around here (especially TM lawyers!).

But thanks for your comment!
CoolDot

 

[CoolDot]

Could anybody else give me an opinion if a pure chat-site is actually protected by the free speech right and can contain trademarks in it's domain-name?

Thank you for your thoughts!
CoolDot

 

[Domagon]

Originally posted by CoolDot

1) Is it true that a domain does not infringe on a trademark, if it is used exclusively to talk about, discuss, criticise, ... the trademark? Does the right for free speech allow for this?

Likely a permitted "fair use"

2) Would my pure chat-site WITHOUT the "pictures with copyright" be allowed?

Possibly, but would people be confused and believe they are on the official Harry Potter website - or is sponsored by them.

3) Would a pure chat-site WITH these pictures be allowed?

Same answer as to #2.

4) Can I do anything with the domain (provided it is really a 100% noncommercial usage?

What constitutes noncommercial? Just because no revenues are being generated doesn't automatically make it noncommercial; non-profits conduct commercial activities too, which can include the internet.

5) I have other domains, MagicalChat.com and MagicalTalk.com
Could I use those to create Harry Potter chat sites (and possibly even make them commercial sites?)

Yes...generic domains are a safer path...and have more longterm viability...Harry Potter is hot now, but in a few years, who knows...also you would be able to expand into other topics easier.

The dispute trademark-rights versus the right for free speech is, even apart from my own case, an interesting one. (I basically had given up on the idea of ever to be allowed to use the domain anyway, but finding out about this free-speech defense has rekindled my hope a bit).

Keep in mind that often in law it's not who's right, but rather who has more time, money, and resources. Trademark law is very arcane and many aspects of it go against many commonly held wisdoms, so it's really best to avoid such conflicts to begin with.

Regardless of the domain you choose, read up on "fair use" and related issues; careful, "fair use" is not a clearly defined and really depends much on one's intentions and specific situation.

If you know of any cases where this conflict played a role (and went in favor of the domain-owner) then I'd be VERY grateful to learn about them.

Yes, but I don't have specific references at-hand...however, below is linked a great site that likely does, and more importantly will likely answer many of your questions...and could even come in handy if you run into DMCA problems...be sure to bookmark it!

http://www.chillingeffects.org/

Ron

 

[namedropper]

I try to draw a clear line... and in this case, it's pretty simple. This isn't about free sppech versus trademark. Free speech is saying what you want to say, and that's what the page content is for. You could talk about Harry Potter on the page itself and use a generic domain name. Thus not being able to use the domain name due to trademark concerns doesn't impact your free speech at all.

In this case, since you intend to use the term "HarryPotter" as the trademark in the books about the boy magician, that'd be a clear violation of their trademark because it'd cause confusion in the public about whether the site is official or not. Some people have gotten away with doing fan sites with names of celebrities, but the cases have been split. I wouldn't gamble on this one. Avoid the trademark.

Avoid copyrighted pictures too, since you were asking about them also.

 

[seeker]

some sites place for example:
"welcome to the unofficial blablabla site"

Would not this take care of the confusion to the public?

 

[jberryhill]

http://www.ca7.uscourts.gov/op3.fwx?submit1=showop&caseno=02-1771.PDF

 

[seeker]

too complicated for me jberryhill.

You are a lawyer?
Are you for hire?

Please PM your prices for services.
Ok, I take back all the jokes I have said about lawyers...

shame, I had some good ones.
I am sure many others would also benefit to know that there is someone on this forum that is a lawyer and can handle our cases!

LLAP jberryhill

 

[CoolDot]

seeker, John Berryhill is the best! And I am not trying to suck up to him. It's just a matter of fact.

But Mr.Berryhill,
seeker is right and while the whole ruling (thank you very much for the link!) made a lot of sense to me, I did not understand the end of the ruling.

So was the domain-holder ultimately permitted to continue usage of his site or not? I fear my legalese is a bit rusty )

If I may summarize (and translate into Harry Potter terms) how I understood the ruling:

1) Harry Potter is a famous name. Dilution, tarnishment, initial confusion,... are all applicable to it. A disclaimer saying "We are not the makers of the movie..." will not help because initial confusion would already have taken place.

2) "Secondary market" would the fan-base because without the primary market (books and movie) there would be no secondary ne.

3) The ruling says, it is common business practice to make use of such secondary markets but only to a certain extent.

4) The sale of products or services that contradict, compete with, dilute or tarnish the original mark is illegal

5) And this is, where I did not understand the ruling. As long as only's products are sold that the original trademark holder produces (HP books and movies) the domain holder seems to be on safe ground.

And I think this cannot be and I am sure I am missing something important here...


Direct, simple question:

Would it be probable that I can use HarryPotterTalk.com to create a completely non-commercial site (no links to other sites, no hidden ads, simple and straightforward just a message board that is well moderated and talks only about Harry Potter).

Would it be probable that I was allowed to do that? No commercial interests involved, just for the idealistic value of being able to offer a platform to the fans that is childsafe and fun?

I don't have to make money on the domain at all. I would just like to know if I, in principle would be allowed to use it for such a non-commercial talk-forum site.

Thank you, Mr.Berryhill, for taking the time to answer.
Thanks to everybody else who adds his input to this thread also.

Kind regards
CoolDot

 

[CoolDot]

I found an explanation of the ruling that is easier to read than the original text.

http://www.usatoday.com/tech/columnist/ericjsinrod/2002-10-17-sinrod_x.htm

So it seems that "Beanie baby" had already taken the course from descriptive mark towards commonly used term for "fluffy bean-filled animal"...

Harry Potter is no in danger to loose it's power any time soon. This is a mark much like Kodak, Exxon or Rolex. So we are clearly in a different situation here...

I seem to understand the ruling, but still would like to know if it is possible that I could use HarryPotterTalk.com for a pure, non-commercial chat-forum without any financial interest whatsover...

Thank you for your insights!

Kind regards
CoolDot

 

[jberryhill]

http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0160.html

http://cyber.law.harvard.edu/metaschool/fisher/integrity/Links/Cases/newkids.html

See also:

Volkswagenwerk Aktiengesellschaft v. Church, 4111 F.2d 350 (9th Cir. 1969)

Posting links to these decisions does not constitute my agreement or disagreement with whatever interpretations or applications of these decisions that others might make to the facts posted in this forum.

"So was the domain-holder [in the bargainbeanies.com case] ultimately permitted to continue usage of his site or not?"

http://www.bargainbeanies.com

 

[CoolDot]

Thank you Mr.Berryhill.

I think that using HarryPotterTalk.com for anything Harry Potter related, even a pure chat-site is probably not safe.

Even if the name is interpreted as "Talk about the trademark 'Harry Potter' ".

I will therefore use MagicalChat.com and MagicalTalk.com
for such a chat-forum. This should be safe. Right? (Any negative opionions about this, PLEASE post them here!!! Thank you).

Thank you for your help!
Kind regards
CoolDot

 

[LewR]

Originally posted by CoolDot
Thank you Mr.Berryhill.

I think that using HarryPotterTalk.com for anything Harry Potter related, even a pure chat-site is probably not safe.

I disagree, and do not think that this was the crux of what was presented.

Simply put, I believe that if you run an upfront and honest dicsussion forum - then the principals most likely will not bother you. If you use and abuse - cover your A hole.... First step in any situation is normally the delivery of a C&D notice - at which time you can decide to fight or cave in. The proper and popular use of a chat forum can truly enhance the product dicussed, and good marketing managers will enjoy this as long as it does not step on their toes.

JMHO

 

[CoolDot]

LewR, thanks a lot for your very insightful comment.

You are right. There is a difference between what you can do according to the letter of the law and what you can do as long as the trademark owners are not bothered.

Anybody who would confirm or contradict LewR's thoughts?

LewR, thank you!
CoolDot

 

[namedropper]

Only the owner of the trademark in question can determine if your use of it "can truly enhance the product dicussed" and most of the time they don't the risk.

Yes, it is possible you could use a TM in such a way and get away with it. But if they say they don't want you using it later, you'll have to start over getting links and people interested in whatever name you end up using later. Why take that risk?

And this is Harry Potter we are talking about, the owners sue at the drop of a hat.

 

[Garry Anderson]

Your absence of malice is no defense to trademark infringement.

However, if all you want to do is talk about Harry Potter - and you make it plain they do not sponsor or endorse site - in my opinion you would be safe.

Some relevant text:

2] There are two “fair use” defenses to trademark infringement. Cairns, 292 F.3d at 1150. In Cairns, this court described the difference between the “nominative” fair use and “classic” fair use defenses:

The nominative fair use analysis is appropriate where a defendant has used the plaintiff’s mark to describe the plaintiff’s product, even if the defendant’s ultimate goal is to describe his own product. Conversely, the classic fair use analysis is appropriate where a defendant has used the plaintiff’s markonly to describe his own product, and not at all to describe the plaintiff’s product.

Id. at 1152 (emphasis and footnotes omitted).

[3] The classic fair use defense “applies only to marks that possess both a primary meaning and a secondary meaning - and only when the mark is used in its primary descriptive sense rather than its secondary trademark sense.” Brother Records, Inc. v. Jardine, 318 F.3d 900, 905-06 (9th Cir. 2003)(citations and footnote omitted). The Pycnogenol mark does not possess any meaning other than its use as a registered trademark. Therefore, Garcia’s use of the trademark plainly does not qualify for the classic fair use analysis.

The nominative fair use analysis “acknowledges that ‘it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark.’ ” Brother Records, 318 F.3d at 908 (quoting New Kids on the Block v.News Am. Publ’g, Inc., 971 F.2d 302, 306 (9th Cir. 1992)).“Still, the ‘core element’ of trademark infringement law is ‘whether an alleged trademark infringer’s use of a mark creates a likelihood that the consuming public will be confused as to who makes the product.’ ” Id. at 908 (quoting Thane Int’l, 305 F.3d at 901). Accordingly, this court has held that “the nominative fair use defense is available only if ‘the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one.’ ” Id. (quoting New Kids, 971 F.2d at 307-08).

[4] This court looks to three factors in determining whether a defendant is entitled to the nominative fair use defense: (1) the product must not be readily identifiable without use of the mark; (2) only so much of the mark may be used as is reasonably necessary to identify the product; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids, 971 F.2d at 308. However, even if Garcia could meet the first two criteria, he cannot meet the third requirement because, as evidenced by the record at trial, Garcia’s references to Pycnogenol spawn confusion as to sponsorship and attempt to appropriate the cachet of the trademark Pycnogenol to his product.

http://www.google.co.uk/search?q=ca...site:.gov+"fair+use"+trademark&hl=en&ie=UTF-8

 

[CoolDot]

namedropper, thank you for your comment. I am aware that it's risky but as long as it is completely commercial free there just MIGHT be a chance. But you're right. It's risky....


Garry Anderson,
thank you for your extensive comment! Highly interesting and informative. Thanks a lot!

Summary:
Basically a risky endeavor. But as long as Harry Potter's trademark is enhanced rather than diminished and as long as clear disclaimers make likelihood of confusion improbable and of course as long as the site is commercial free, there might be a chance that the domain can actually be used.

No guarantees, but at least a chance.

Thanks a lot for all the comments! They made my situation much clearer!

A nice weekend to all!
CoolDot