Copyright Law and Trademark Law in Cyberspace

Trademark Basics and the Internet

Toledo Bar Association May 6, 2011

C. Fred Charpie, III

Patent Attorney & Member

MacMillan, Sobanski & Todd, LLC


May 6, 2011 MacMillan, Sobanski & Todd LLC

Nomenclature: Trade Name

• Identifies company or business



Nomenclature: Trade Mark

• Identifies goods



Nomenclature: Service Mark

• Identifies services



“The term "trademark" includes any word, name, symbol, or device, or any combination thereof used by a person …

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”

Lanham Trademark Act 15 U.S.C. § 1127



Examples of trademarked slogans:



Sounds can be trademarked:

Aflac Duck

Reg. No. 2,607,415Pillsbury Doughboy

Reg. No. 2,692,077



Colors and scents can be trademarked

Tiffany “blue”

Pantone 1837

Barbie “pink”

Pantone 219

UPS “brown”

Pantone 462C

Target “red”

Pantone 186C



Marks can be owned by: • Individuals• Corporations or companies• Groups of people (“collective marks”)

National Honor

Society

National Rifle

AssociationGirl Scouts of the United

States of America



• Federal registration of trademarks is not required

• However, federal registration provides:

* Geographic protection throughout the United States, not just in one state

* Nationwide constructive notice of ownership

* Treble damages + defendant’s profits + attorney fees

* After 5 years – “incontestable” status

* Designation ®



Some words or phrases cannot be registered:

* Generic words (e.g. vacuum cleaner, toaster)

* Merely descriptive (e.g. audio book club, e-ticket)

* Geographically descriptive (e.g. Nantucket nectars)

* Deceptive marks (e.g. cafeteria if providing sit down service)

* Obscene words (no examples necessary)

* Prior marks that have become generic (e.g. aspirin, escalator, cellophane, linoleum, kerosene)

* Marks associated with certain organizations (e.g. red cross, peace corps)

* Merely a surname (e.g. Binion’s)



• Trademark rights are based on use in commerce

* Must provide evidence of the mark in use

* Specimen – product label, packaging, etc.

• Federal registration has a 10 year term

* Indefinitely renewable as long as the mark is in use



Practice Tips:

• Use ™ for marks in use prior to federal registration

• Search before filing trademark application

* Look for the likelihood of confusion

• File for broadest protection:

NASCAR or

• Use ® after registration



Common Trademark Issues and the Internet:

• Domain names (Gregg Emch)• Misdirection of search engines (metatags)• Hyperlinks• Deep Linking• Framing• Inlining (or Copying)



Misdirection of search engines (metatags)



Misdirection of Search Engines• Websites have headers• Headers can include pre-programmed terms (called

“metatags”) used by search engines• Metatags can be invisible to many browsers• Companies have been known to populate their headers with

competitor trademarks• Misdirection of search engines violates federal law under the

– Lanham Act (15 U.S.C. §1051 et. seq.) and,– Ohio Law - Deceptive Trade Practices Act (O.R.C. §4165

et. seq.).



metatags



Hyperlinks



Hyperlinks (links)

• Hyperlinks (links) send a user from one website to another website

• Example: Visit W3Schools

• Some hyperlinks incorporate trademarks



Potential Trademark Issues with Hyperlinks:

• Defamation* Example: A student creates a hyperlink titled “Alcoholics on the

Net” and links it to a picture of the school principal at another site.

• Invasion of Privacy* Example: A disgruntled employee of Company A creates a

hyperlink titled “Washed Up” that links to a hidden camera in Company A’s executive washroom

• Likelihood of Confusion (endorsement, association)* Example: An X-rated website used the Playboy name and bunny

logo to link to the Playboy website.



Hyperlinks (links) continued:

• The courts are split on whether the use of trademarks in hyperlinks constitute infringement

• One view: it is infringement because one could imply origin, affiliation, or endorsement, unless:

* Trademark owner grants permission

* There is a business relationship (e.g. distributor)

• Another view: no infringement since the marketplace understands the links exist to provide information rather than an endorsement



Deep Linking



Deep Linking• Deep linking directs visitors past a home page and directly to an

internal webpage

* Example: appliance manufacturer links directly to internal page of non-profit consumer reviewing agency

Website Home Page



Deep Linking continued• Results in target website potentially losing advertising

revenue (number of hits)• Some deep links incorporate trademarks• Some include disclaimers:

“This link will take you directly to another company’s website.”

• No law prohibiting deep linking, but actions brought for:* Unfair competition* Deceptive practices* Trademark infringement* False Advertising



Framing



Framing• Website A displays content from website B, usually

within a window or frame• The user remains at website A and can view content

from both websites

Website A

Website B



Framing continued:

• Potential for confusion:

* If user is unaware content in frame is from another website

* If frame is surrounded by advertising for website A

* Website A may create the impression that the owner of website B endorses or supports website A



Inlining (Copying)



Inlining (or Copying)• Website A imports graphic files (using IMG links) from

website B• The user remains at website A and can view content

from website A and the graphic files• Dilbert case (Dan Wallach)

Website A (Dilbert Hack Page)

Imported cartoon files from real Dilbert website



Inlining (Copying) continued:

• Potential for confusion:

* If user is unaware imported content is from another website

* If imported content is surrounded by advertising for website A

* Website A may create the impression that the owner of website B endorses or supports website A



Practice Tips:• Periodic internet search for your trademarks

* Look for competitors among search results

* Examine metatags in competitor website headers

* Engage with cease and desist efforts

• If using links:* Get permission (linking agreement)

• Jury is still out on use of disclaimers



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Copyright Law and Trademark Law in Cyberspace

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