David A. Windham thumbnail

intellectual rights..

but someone should certainly look into it..
resources for intellectual property
ASCAP
Berkman Center at Harvard
ChillingEffects.org – Great resource for case studies
by topic
anyway… this one is funny..

Kelloggs Poops on Evilpoptarts.com

June 5, 2006

Sender Information:
Kellogg Company
Sent by: [Private]
[Private]
Battle Creek, MI, 49016, USA

Recipient Information:
[Private]
evilpoptarts.com
San Francisco, CA, 94117, USA

Sent via: email, postal mail
Re: RE: Domain Name “evilpoptarts.com”

[private]

June 5, 2006

[private]
San Francisco, CA 94117

Re: Domain Name “evilpoptarts.com”

Dear [private]:

Kellogg Company has recently been alerted to the existence of the domain name evilpoptarts.com which is registered in your name. Your registration of this domain name inhibits Kellogg Company’s legitimate uses of its POP-TARTS® trademarks and the corresponding domain names. Accordingly, Kellogg hereby demands that you immediately cease and desist from continuing the use of this domain name and that it be transferred to Kellogg. Your use of this domain name constitutes a violation of Federal Trademark Laws and a misappropriation of our company’s intellectual property.

Please note that Kellogg Company is the owner of the following federally registered trademarks: POP-TARTS® Reg. Nos. 791514 and 1671971; POP-TARTS PASTRY SWIRLS® Reg. No. 2358511; and POP-TARTS SNAK-STIX® Reg. No. 2498744. These trademarks are registered with the United States Patent and Trademark Office and protected under the provisions of the Trademark Act (15 USC 1051 et. seq.) as well as the Federal Trademark Dilution Act of 1995 (15 USC 1125(c)) and federal copyright law.

Kellogg Company has expended vast sums of money throughout the United States and the world in the advertising and protection of its famous marks. The POP-TARTS® name and marks have become highly distinctive properties of Kellogg Company. These trademarks create in the mind of the public, an instant identification with the high quality products and services of Kellogg Company. The distinctive wording POP-TARTS® is used by Kellogg in various contexts such as in connection with the Kellogg licensing program, including use on clothing and advertisements for various Kellogg products and services. It is therefore important to us to maintain the validity of this mark and to assure that it is not infringed upon or misused by unauthorized third parties.

Please be advised that, unless you cease and desist any further use of the evilpoptarts.com domain name and cooperate in the transfer of the domain name to Kellogg Company, Kellogg reserves the right to pursue all of its legal remedies for both money damages and injunction relief under state and federal law, including the Anticybersquatting Consumer Protection Act of 1999.

If you have any questions, please contact, or have your attorney contact, [private], Trademark/Licensing Attorney, Kellogg Company as soon as possible by telephone at (269)[private] or by email to [private] in order to discuss this matter.

Sincerely,

[private]
Paralegal – Trademarks

/lvd

thermometer
Having a Bad Hair Day? Customer tries to get even with Bosley Medical.

Ameet Patel, DePaul University College of Law Technology/Intellectual Property Clinic, September 14, 2005

Abstract: In a domain name dispute, the Ninth Circuit found that the use of another’s trademark as part of a domain name for a noncommercial gripe site does not constitute trademark infringement or dilution under the Lanham Act. However, the court remanded the matter back to the district court to determine whether in registering his domain name the defendant had a “bad faith intent to profit” from plaintiff’s trademark which would allow recovery under the Anticybersquatting Consumer Protection Act (ACPA).

In Bosley Medical Institute v. Kremer, the defendant, Michael Kremer (Kremer), was dissatisfied with the hair restoration service provided by the plaintiff, Bosley Medical Institute (Bosley). As a result, Kremer launched a website under the domain name BosleyMedical.com that was highly critical of Bosley and its services. Bosley, which owns the trademark to the name “Bosley Medical,” brought suit alleging trademark infringement and dilution under the Lanham Act, as well as a claim under the Anticybersquatting Consumer Protection Act (ACPA).

Athough Kremer’s website contained information critical of Bosley, it did not offer for sale any goods or services, nor contain any commercial advertising. The website had no links to Bosley’s competitors but did have a link to a newsgroup chat room, which in turn contained links to competitors and to Public Citizen-the organization representing Kremer in the case.

In rejecting Bosley’s trademark claims, the District Court concluded that Bosley failed to show that Kremer’s website was a “use in commerce” as required by the Lanham Act. On appeal, the Ninth Circuit stated that “use in commerce” was merely a jurisdictional predicate and the proper inquiry was whether Kremer’s website was “in connection with a sale of goods or services,” in other words, “commercial use.” Bosley advanced three arguments to support its assertion that Kremer’s website was in fact a commercial use.

First, Bosley argued that although the website itself did not include advertising, it contained a link to a newsgroup chat room, which in turned contained links to advertisements from Bosley’s competitors. The court rejected this argument because the linking to other sites was “too attenuated” to render Kremer’s website commercial. The court also held that Kremer’s identification of his lawyers with a link did not constitute commercial use.

Second, Bosley argued that Kremer planned to profit from registering the domain name by extorting money from Bosley and thereby making his use of the domain name commercial. The court rejected this argument because the record contained no evidence that Kremer was trying to sell the domain name itself.

Finally, Bosley argued that Kremer’s website was a commercial use because using Bosley’s trademark as its domain name prevented users from obtaining Bosley’s goods or services. In support of this, Bosley relied on the Fourth Circuit’s decision in People for the Ethical Treatment of Animals v. Doughney. In that case, the Fourth Circuit held that a parody site that criticized PETA satisfied the commercial use requirement because it prevented users from obtaining PETA’s goods or services. Although the court distinguished PETA from the present case – the website in PETA directly linked to other commercial sites – it disagreed with the Fourth Circuit’s rationale in determining whether a website is a commerical use. According to the court, such an expansive reading of the commercial use requirement would place all consumer commentary sites under the reach of the Lanham Act. Instead, the court stated that the appropriate inquiry was whether the defendant offered competing goods or services. The court concluded that no customer would mistakenly purchase a hair replacement service from Kremer under the belief that the service was offered by Bosley. As such, the court concluded that Bosley failed to prove that Kremer’s website satisfied the commercial use requirement under the Lanham Act.

Although the court rejected Bosley’s claims under the Lanham Act, it did leave open the possibility that Bosley could pursue a claim under the ACPA. The court reversed the District Court’s holding that Kremer did not violate the ACPA because his website was noncommercial. The Ninth Circuit clarified that the ACPA does not have a commercial use requirement, and stated that the district court should have decided the issue based on whether Kremer had a “bad faith intent to profit” from Bosley’s trademark. The court stated that allowing a defendant to register a domain name in bad faith but get around the statute by making noncommercial use of the trademark would defeat the purpose of the ACPA. Accordingly, the court concluded that Bosley was entitled to discovery on whether Kremer had a bad faith intent to profit from the use of the domain name.