Trademark

Avast! The Pirate Bay's Intellectual Property's Been Boarded!

If you haven't heard of The Pirate Bay by now, you may want to emerge from that cave, wipe the sleepies from your eyes, and start getting caught up on your backed up WIRED magazines in the bathroom. The Pirate Bay (TPB) is a website run by a few Swedish intellectual property anarchists. TPB provides a comprehensive indexing service for BitTorrent files.

Jurisdiction: 

Subject Area: 

International Olympic Committee v. Giles

Date: 

10/06/2009

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Richard Giles

Type of Party: 

Organization

Type of Party: 

Individual

Legal Counsel: 

Pro Se

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Description: 

The International Olympic Committee (IOC) sent an email to a Flickr user Richard Giles  asking him to cease and desist from distributing and/or licensing photographs of the 2008 Beijing Olympic events that he had photographed while at the games and posted on Flickr.

Giles originally put the photographs online under a CC Attribution-Share Alike License (CC BY-SA), but then relicensed them under a CC Attribution-No-Derivatives License (CC BY-ND) upon the request of a Wikipedia user, so that they could be used in a Wikimedia project. Later on, a British bookstore used one of Giles' pictures for promoting a book. When this came to IOC's attention, they sent the cease and desist letter to Giles. 

IOC invoked contractual limitations found on the back of tickets:

As you know, when entering any Olympic venue, you are subject to the terms and conditions mentioned on the back of entry tickets, under which images of the Games taken by you may not be used for any purpose other than private, which does not include licensing of the pictures to third parties.

The letter also suggested a trademark-oriented claim:

Olympic identifications such as the Olympic rings, the emblems and mascots of the Olympic games, the word 'Olympic' and images of the Olympic games belong to the IOC and cannot be used without its prior written consent.

Giles reports that it was not clear to him what exactly the IOC wanted him to do, so a chain of mutual emails followed, in which IOC clarified its position that the only acceptable copyright notice for pictures from Olympic events would be "all rights reserved." In an effort to keep the CC licensing regime, Giles counter-suggested licensing the pictures under a noncommercial CC license, but IOC declined:

IOC's current policy is to restrict the use of pictures taken at the venues to private, domestic and non-commercial use and does not allow licensing of pictures to third parties, even for free non-commercial use, for the reasons I explained in my previous email.

Therefore, for the time being the IOC considers full copyright as the only suitable credit and asks that you change the license of the photos taken inside of the Olympic venues to 'all rights reserved'.

Throughout the course of these events Giles was in touch with the Electronic Frontiers Australia, a nonprofit organisation supporting online freedoms and rights,  and Creative Commons Australia, both of which advised him that as a first step he should comply with the IOC's demand. Eventually Giles reverted all pictures to full copyright protection, adding a note under every picture: "The license on this photo has been changed from Creative Commons to Copyright [sic] due to a request from the IOC."

Jurisdiction: 

Content Type: 

Subject Area: 

Priority: 

1-High

Jenzabar, Inc. v. Long Bow Group, Inc.

Date: 

05/14/2007

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Long Bow Group, Inc.

Type of Party: 

Individual
Organization

Type of Party: 

Organization

Court Type: 

State

Court Name: 

Superior Court of the Commonwealth of Massachusetts, Suffolk County

Case Number: 

No. 07-2075-H

Verdict or Settlement Amount: 

$0.00

Legal Counsel: 

Paul Alan Levy, Michael Kirkpatrick - Public Citizen Litigation Group; T. Christopher Donnelly, Adam B. Ziegler - Donnelly, Conroy & Gelhaar, LLP

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

In 2007, Jenzabar, a company that makes software systems for colleges and universities, sued Long Bow Group, the maker of a documentary film about the 1989 student protests at Tiananmen Square called The Gate of Heavenly Peace. The complaint included claims for trade libel, defamation, and various trademark violations. 

Long Bow publishes the TSquare website, which features information and commentary about the events and people depicted in the film. Among other things, it includes articles and background information about Chai Ling, the founder of Jenzabar who was a student leader during the Tiananmen protests and who was portrayed critically in the film.

According to court documents, Chai Ling, Jenzabar, and another Jenzabar executive, Robert A. Maginn, Jr., claimed that Long Bow defamed them on the TSquare website by publishing an "excerpt from an August 2003 Boston Globe column stating that 'fiveformer executives have sued Jenzabar, including the former CEO, whoaccused Chai and Maginn of "a number of unethical, inappropriate,and/or illegal actions."'"  Slip op., at 2-3. The former CEO referenced in the Globe article eventually retracted his allegations anddismissed his lawsuit.

The plaintiffs also claimed that Long Bow violated federal and state trademark laws by using their trademarks—JENZABAR, JENZABAR.COM, JENZABAR.NET, LING CHAI AND CHAI LING—as metatags for those pages discussing Chai Ling and Jenzabar.

In response to Long Bow's motion to dismiss the complaint, in August 2008 the court dismissed the defamation and trade libel claims, ruling that Long Bow had no continuing duty to investigate the accuracy of the Boston Globe article posted on its site.  The court denied the motion to dismiss the trademark claims, but expressed doubt as to their viability:

Although Jenzabar seems unlikely to prevail on this claim because of the dissimilarity of Long Bow's business, Jenzabar has adequately pled the likelihood of confusion element, which is all that is required to survive a motion to dismiss. 

Slip op., at 7.

Long Bow filed a motion for summary judgment in October 2009, arguing that use Jenzabar's trademarks in its metatags does not create a likelihood of consumer confusion, and that the First Amendment protects its use of the metatags because they are directed to Long Bow's truthful and noncommercial speech about Jenzabar and Chai Ling.

In November 2009, Jenzabar filed a motion to disqualify Public Citizen Litigation Group as Long Bow's counsel based on two blog posts Public Citizen lawyers published about the case—Jenzabar Joins Trademark Abusers Hall of Shame (CL&P Blog) and Faulty trademark case pits Tiananmen Square protest leader against filmmaker (Citizen Vox).  Jenzabar argued that the posts will "create controversy" and "cause prejudice to Jenzabar," and that anylawyer who engages in such blogging is in violation of Massachusettscourt rules. Paul Levy of Public Citizen publicly responded to these claims on the CL&P Blog, characterizing the motion as a further attempt to suppress speech.

Update:

12/7/10 -  Superior Court Judge Cratsley granted defendant's motion for summary judgment on the ground that there was no evidence supporting the claim that any reasonable Internet user might be confused about whether Jenzabar was the sponsor of Long Bow's web site.

9/6/11 - Jenzabar appealed the grant of defendant's motion for summary judgment.

10/17/11 - Jenzabar filed its opening brief with the Massachusetts Appeals Court.

12/22/11 - The Boston Patent Law Association filed an amicus brief urging the Appeals Court to recognize "initial interest confusion" as a valid doctrine under trademark law.

1/18/12 - Appellee Long Bow filed its brief with the court. The Digital Media Law Project filed an amicus brief urging the court to reject application of trademark law to critical, communicative uses of trademarks. 

3/2/12 - Appellant Jenzabar filed a reply brief with the court, addressing the claims from Appellee Long Bow and the Digital Media Law Project.

10/18/12 - The Massachusetts Appeals Court affirmed summary judgment in favor of Long Bow, holding that: (1) Jenzabar's infringement claim failed because it did not present sufficient evidence to support a finding of likelihood of confusion; (2) allegations that Jenzabar's trademark was used for the purposes of critical commentary could not support a dilution claim; and (3) the fact that Long Bow's website did not possess a tendency to deceive consumers was fatal to its Massachusetts statutory claim for unfair and deceptive trade practices.

11/2/12 - Jenzabar filed an Application for Further Appellate Review with the Massachusetts Supreme Judicial Court. 

11/19/12 - Long Bow filed an opposition to Jenzabar's application.

12/19/12 - The Supreme Judicial Court denied the application for further appellate review.

Jurisdiction: 

Content Type: 

Subject Area: 

CMLP Notes: 

Edited 1/24 to include updated brief - AFS

Subject Area: 

RSA v. Scott Jarkoff

Date: 

07/19/2009

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Scott Jarkoff

Type of Party: 

Organization
Government

Type of Party: 

Individual

Publication Medium: 

Blog

Status: 

Concluded

Disposition: 

Withdrawn

Description: 

After Jarkoff posted an entry about the security risks he sees with the login mechanism of the Navy Federal Credit Union (NFCU) website on his blog, TechMiso, he received an e-mail from the RSA Anti Fraud Command Centre.  RSA Security Inc. is  an encryption and network security company, and the RSA Anti Fraud Command Centre helps the NFCU with online fraud prevention.

The RSA email claimed that Jarkoff's post infringed on NFCU's copyright and trademark rights, and it expressed concern that Jarkoff's site could become a host of phishing attacks against NFCU's clients. The email then proceeded to ask for various kinds of information from Jarkoff, including the tar/zip file of the site's source code. After Jarkoff replied to the email, clarifying the purpose of his post and maintaining that there was no fraudulent activity involved, RSA replied that Jarkoff's post may confuse NFCU's customers and stating that NFCU had asked RSA to take down Jarkoff's blog.

A month later, Jarkoff received an email from Rackspace, his web host, regarding a trademark infringement complaint it received from RSA. Jarkoff replied to the email from Rackspace, explaining that there was no trademark infringement. Soon afterwards, Jarkoff received another email from Rackspace letting him know that RSA had requested that Rackspace disregard the shut down request.

Jurisdiction: 

Content Type: 

Subject Area: 

CMLP Notes: 

EK editing (10/07/2009)

Priority: 

1-High

Video Professor, Inc. v. Montgomery

Date: 

02/26/2009

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Cameron Montgomery

Type of Party: 

Organization

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

United States District Court for the District of Colorado

Case Number: 

1:09-cv-00417-REB-BNB

Legal Counsel: 

Penniann J. Schumann

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Settled (total)

Description: 

On February 26, 2009, Video Professor filed a lawsuit in the U.S. District Court for the District of Colorado against Cameron Montgomery, the owner of a website that labels itself "the Internet's ONLY Certified Review AuthorityTM for work at home opportunities" at www.ripoff-review.org.  The Complaint asserted claims for trademark infringement under state and federal law, commercial and business disparagement,  violation of the Colorado Consumer Protection Act, and tortious interference with business relationships.

According to the Complaint, defendant purchased the trademark "Video Professor" as a Google AdWords keyword. (Compl. ¶ 14)  As a result, whenever a consumer used Google to search for the words "Video Professor," an advertisement for defendant's website appeared, containing the statements "NEW VIDEO SCAM" and "Stop! Dont [sic] fall for this Scam.  Read this Report before you Buy."(Compl. ¶ 19)  Clicking on the link lead to a page on the website Ripoff-Review.org (which has, itself, been the subject of complaints on the Ripoff Report website) headlined "Online Fraud Investigator Dr. William J. Tomlin Reveals the Shocking Truth You MUST Know About Video Professor Program. . ." (Compl. ¶ 20). The website further claimed that "Dr. Tomlin" himself "was scammed by the Video Professor." (Compl. ¶ 22)  On the same page outlining claims against plaintiff's Video Professor program, defendant recommended its own "Top 3 Work at Home CertifiedTM Programs," along with links to the websites of these programs.  (Compl. ¶¶ 26-28)  The Complaint alleges that these three programs are under common ownership by defendant.  (Compl. ¶ 30)

On March 5, 2009, Video Professor filed a Notice of Dismissal stating that the parties had reached a settlement.  The statements about Video Professor no longer appear on the ripoff-review.org website.

Jurisdiction: 

Content Type: 

Subject Area: 

Threat Source: 

Westlaw Alert

CMLP Notes: 

KI

Priority: 

1-High

Subject Area: 

Beck v. Eiland-Hall

Date: 

09/04/2009

Threat Type: 

Other

Party Receiving Legal Threat: 

Isaac Eiland-Hall

Type of Party: 

Individual
Organization

Type of Party: 

Individual

Court Type: 

Administrative

Court Name: 

World Intellectual Property Organization Arbitration and Mediation Center

Legal Counsel: 

Marc J. Randazza

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

In September 2009, conservative talk show host and self-described "rodeo clown" Glenn Beck filed an administrative complaint with the WIPO Arbitration and Mediation Center under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the privacy service for glennbeckrapedandmurderedayounggirlin1990.com.  (The UDRP is a policy that website operators automatically agree to when they register a domain name; the policy enables trademark owners to initiate an administrative proceeding challenging the registration of a domain name in "bad faith.")  In response to the compaint, the privacy service revealed the identity of the website operator, whose name is Isaac Eiland-Hall.

The origin of the website is an Internet meme that came into being on Fark.com. The premise of the rape and murder charge comes from a Gilbert Gottfried routine performed during a Comedy Central roast of comedian Bob Saget. During Gottfried's act, he keeps repeating that there are rumors that Bob Saget raped and killed a girl in 1990 and pretends to admonish the audience to stop spreading the until-now-non-existent rumor.  

Picking up on a perceived similarity between Beck's rhetorical style and the Gottfried routine, a Fark user posted this comment in late August: "Why haven't we had an official response to the rumor that Glenn Beck raped and murdered a girl in 1990?"  The joke caught on immediately, and, according to Mediaite, the Farkers took the meme and plastered it all over the web

The next day, Eiland-Hall registered the domain name and posted satirical commentary and links on the site. Picking up on Beck's comments in his famous interview with Congressman Keith Ellison, where he asked the Congressman — a Muslim — to "prove to me that you are not working with our enemies," the website says:

This site exists to try and help examine the vicious rumour that Glenn Beck raped and murdered a young girl in 1990. We don't claim to know the truth -- only that the rumour floating around saying that Glenn Beck raped and murdered a young girl in 1990 should be discussed. So we're going to do our part to try and help get to the bottom of this.

Why won't Glenn Beck deny these allegations? We're not accusing Glenn Beck of raping and murdering a young girl in 1990 - in fact, we think he didn't! But we can't help but wonder, since he has failed to deny these horrible allegations. Why won't he deny that he raped and killed a young girl in 1990?

Under the caption "A Plea for Help" and title "Don't Leave Glenn Beck Alone!!!!!," an embedded video clip features a mock-crying woman saying, among other things, "everytime people stop teasing him [Glenn Beck], and ridiculing him, and making fun of him, and laughing and pointing and staring at him, a baby ghost gets turned into a human being. Do you want that to happen?" 

The site contains a disclaimer at the top of the page: "Notice: This website is 100% parody" with a link to a full disclaimer at the bottom of the page:

Notice: This site is parody/satire. We assume Glenn Beck did not rape and murder a young girl in 1990, although we haven't yet seen proof that he didn't. But we think Glenn Beck definitely uses tactics like this to spread lies and misinformation.

Read the last sentence again. That's the point. Read it a third time and ignore the name of the site itself, because anyone who believes that we're trying to actually get people to believe Glenn Beck raped and/or murdered is *whoosh* missing the entire point. So don't be dumb like a lot of people are. I greatly expanded this text because so many people *read* it, and *still* didn't understand.

Beck claims in his UDRP complaint that the domain name is confusingly similar to his trademark "Glenn Beck" and that Eiland-Hall has no rights or legitimate interests with respect to the domain name and registered it in bad faith. 

On September 28, 2009, Eiland-Hall filed a response brief arguing that the domain name is not confusingly similar to "Glenn Beck" (except perhaps to a "moron in a hurry"), that Eiland Hall has legitimate rights in the domain name because he uses it to criticize Beck and to participate in an Internet meme, and that Beck has failed to establish that he has trademark rights in his name. 

Update:

10/13/2009 - Beck filed a supplemental brief in response to Eiland-Hall's brief.

10/20/2009 - Eiland-Hall filed a surreply brief

10/29/09 - The WIPO panel denied Beck's UDRP complaint.

11/6/09 - Eiland-Hall voluntarily transferred the domain name to Beck.

Jurisdiction: 

Subject Area: 

Priority: 

1-High

MonaVie v. Lazy Man and Money

Date: 

08/01/2009

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Corey Whitlaw (owner of www.lazymanandmoney.com)

Type of Party: 

Organization

Type of Party: 

Individual

Legal Counsel: 

Pro Se

Publication Medium: 

Blog

Status: 

Pending

Description: 

In August and September of 2009, MonaVie LLC sent two cease-and-desist letters to Lazy Man and Money, a personal finance blog authored by Corey Whitlaw.  MonaVie produces, markets and distributes "MonaVie" juices, açai berry drinks that are rich in antioxidants. MonaVie promotes its products as delivering "powerful antioxidants and phytonutrients to help fight free radicals and maintain your body's overall health."

The first letter related to an April 16th, 2008 blog post, titled "MonaVie a Scam?".  In the post, Whitlaw critiqued the juice as being expensive and questioned the efficacy of the company's network marketing strategy. MonaVie's name appears in the URL of the blog post — http://www.lazymanandmoney.com/monavie-scam-was-my-wife-recruited-sell-snake-oil/ — and is mentioned in the text, alongside a photograph of a bottle's nutrition information.  MonaVie's letter claimed that the post infringed on MonaVie's federally registered trademark and trade name. The letter explained that MonaVie "does not permit its name to be used in any URL or email address."  The letter requested that Lazy Man and Money stop using the mark. 

Whitlaw did not comply with MonaVie's request. He posted and discussed the letter on his blog on August 28, 2009.

On September 11, 2009 The Consumerist spoke with Doug Whitehead, MonaVie's General Counsel, who said that MonaVie's concerns are not with "user-visible content on the Lazy Man site," but instead with "the site's metadata, which includes MonaVie's name." 

MonaVie then sent a second cease-and-desist letter to Whitlaw, claiming that Lazy Man and Money had infringed on MonaVie's trademark by using "MonaVie" in the blog's metatags:

<meta name="keywords" content="lending club,portfolio,alternative income,blogging,football,patriots,chase,credit cards,rewards programs,lay-offs,monavie,ted kennedy,law suit,trademark infringement,spreadsheets,budget planning,envelope system,jar system" />

<meta name="description" content="Is MonaVie a Scam? Hundreds of people weigh in on MonaVie, MonaVie's business model, and whether you should buy MonaVie." /><meta name="keywords" content="monavie, mona vie, monavie scam, mona vie scam, monavie juice, acai, acai scam,acai,acai scam,mona vie,mona vie scam,monavie scam" />

That day, Whitlaw used his blog to respond to the letter, explaining why metatag keywords and descriptions do not affect ones ranking in search results.  He also distinguished his use of MonaVie's trademark from the facts of cases where trademark infringement was found.  

As of September 28, 2009, MonaVie has not pursued the matter further.

Jurisdiction: 

Content Type: 

Subject Area: 

CMLP Notes: 

-MW 9/24

Priority: 

1-High

Shameless Self-Promotion: Updating the Lanham Act for the Internet Age

I have an article in the newest issue of World Trademark Review.  Entitled "Updating the Lanham Act for the Internet Age," the article looks at four areas for reform of the Lanham Act: fair use, use in co

Subject Area: 

Will Glenn Beck Sue a Defamatory Website in 2009?

Even though Glenn Beck has a prime spot on cable television to offer up his beliefs, it's sometimes quite hard to understand what his beliefs actually are.  For example, as Jon Stewart has pointed out, he believes we have the best healthcare in the world, except when he says it's a nightmare.  Or as Politico underscored, he believes that

Subject Area: 

Lego® My Video: "Clearance Culture" Becomes a Parody of Itself

Much has been written on the proliferation of the so-called "clearance culture" and the threat that overly aggressive intellectual property enforcement poses

Content Type: 

Subject Area: 

New York Times v. Republican Governors Association

Date: 

06/17/2009

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

Michael Adams; Republican Governors Association

Type of Party: 

Media Company

Type of Party: 

Large Organization

Publication Medium: 

Website

Relevant Documents: 

Status: 

Pending

Description: 

A lawyer for the The New York Times has sent a cease and desist letter to the Republican Governors Association that takes issue with the layout, name and typefaces of a satirical RGA website, which the Times says is "clearly intended to be nearly identical to NYTimes.com." The letter claims the site's design is an infringement of the Times' rights under the Copyright Act of 1976 and that it violates the Lanham Act by falsely suggesting that the Times sponsored or is associated with the RGA's site. 

The RGA's Corzine Times site, which targets Democratic New Jersey Gov. Jon Corzine, has since changed its logo to a typeface that is different from the Gothic typeface the Times uses in its trademarked logo. However, the site continues to use a layout similar to that of NYTimes.com. It is unclear whether this change complies with the Times' demand that the site "cease and desist any further use of The Times' design, format and other intellectual property in any manner whatsoever."      

Content Type: 

Subject Area: 

CMLP Notes: 

Made this high as I've never seen a website font lawsuit

UPDATE 6/24/09 AVM added washington post coverage of case, looks like RGA isnt taking this very seriously

7/16/09  - CMF

Priority: 

1-High

First Call Properties v. Craigslist

Date: 

05/29/2009

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Melissa Gomez, d/b/a AAA Apartment Locating; Mario Gomez; Craigslist, Inc.

Type of Party: 

Individual
Organization

Type of Party: 

Individual
Organization

Court Type: 

Federal
State

Court Name: 

District Court of Nueces County, Texas (State); U.S. District Court Southern District of Texas (Federal)

Case Number: 

09-2571-F (State); 2:09-cv-00151 (Federal)

Legal Counsel: 

F. Edward Barker - Barker Leon et al

Publication Medium: 

Website

Relevant Documents: 

Status: 

Pending

Disposition: 

Dismissed (partial)

Description: 

First Call Properties and its officers filed suit against AAA Apartment Locating and Craigslist in Texas state court, alleging, among other claims, trademark infringement, defamation, intentional infliction of emotional distress, and tortious interference.  According to the complaint, First Call began posting advertisements on Craigslist's Corpus Christi site using their trademark phrase "First Call" in March of 2009.  Shortly thereafter, AAA allegedly began posting advertisements to the same Craigslist local site using the words "first call," "call first," and "call us first."  (Compl. 3.)  First Call alleges that AAA posted these ads "deliberately and intentionally in an effort to confuse the public into believing the ads were posted by [First Call]."  (Compl. 3.)  It also claims that AAA's ads contained "false, libelous and misleading information" about First Call.  (Compl. 4.)

First Call asserts that it sent multiple cease and desist notices to AAA, with copies sent to Craigslist.  Based partly on this, it asserts that Craigslist knew of AAA's "unauthorized practice" and did nothing to stop it, materially contributing to AAA's alleged infringement.  (Compl. 5.)  First Call is seeking temporary and permanent injunctions and damages.

On May 29, 2009, the Nueces County District Court entered a temporary restraining order, barring AAA from posting ads containing phrases such as "first call," "call first," or "call us first," which might cause confusion and deceive the public; using a telephone logo similar to that used by First Call; making false or defamatory statement about First Call or its officers, agents, or employees; or causing ads posted by First Call to be removed from Craigslist or any other public domain.  Craigslist was barred from removing legitimate ads posted by First Call. 

The temporary restraining order was made reciprocal by the court, pursuant to an agreement by the parties, thus barring First Call from using AAA's trademarks, making false or defamatory statements about AAA, or causing AAA's ads to be removed.  It was also extended to include Stephan Noak and Sarah Regmund, owner of Free Apartment Locators, neither of whom are parties to the litigation.

On June 26, 2009, the case was removed to the federal District Court for the Southern District of Texas.  A hearing is scheduled for July 29 before Judge Janis Graham Jack.

UPDATE: 

07/15/09- First Call filed a motion to dismiss the case against Craigslist. However, it continued its suit against the other parties. 

Jurisdiction: 

Content Type: 

Subject Area: 

CMLP Notes: 

07/08/2009 - LB editing

UPDATED 7/28/09- added info about motion to dismiss re: craigslist, changed to dismiss partial

Priority: 

1-High

Brandjacking on Social Networks: Twitter, Malicious Ghost Writing, and Corporate Sabotage

It seems all I can write about these days is digital doppelgangers. I’ve written about employers engaged in Facebook hijacking and MySpace lurking. Today, a story of brandjacking through Twitter sabotage rounds out the cyber-possession trilogy.

Subject Area: 

Guinness World Records v. FAIL Blog

Date: 

07/01/2009

Threat Type: 

Correspondence

Party Receiving Legal Threat: 

FAIL Blog

Type of Party: 

Organization

Publication Medium: 

Blog

Status: 

Pending

Disposition: 

Material Removed
Material Reinstated

Description: 

Guinness World Records Limited (GWR) sent a cease-and-desist email to FAIL Blog after it published a posting called "Record Breaking Fail," which showed a screenshot from the Guinness World Records website for the entry "most individuals killed in a terrorist attack."  The "fail" captured by the screenshot was a link on the page -- apparently part of the site's template -- encouraging readers to "break this record." The email claimed that FAIL Blog's posting infringed GWR's trademark rights because its "star and pedestal" logo appeared in the screenshot.

FAIL Blog took down the original screenshot came down and replaced it with a slightly altered version with the GWR logo fuzzed out, a copy of GWR's C&D, and a comic yet biting response warning GWR that "douchebaggy cyber-bullying emails will only bring upon you more shame on your house." The FAIL Blog response elaborated:

Since we at FAIL Blog(TM) don’t have a legal defense department, we have complied with your request to remove the trademarked term and logo from the original image. We have used the “naughty bits filter” on the image to secure your naughty, naughty, trademark assertions. However, we have posted your email so that our audience can see why we had to remove the name of the failer from the image. I hope that this is the outcome you have expected as now NO ONE WILL EVER KNOW THAT GUINNESS WORLD RECORDS LIMITED HAS FAILED.

Techdirt reports that it has removed the original world record page from its site.

Content Type: 

Subject Area: 

The Guinness World Record for Trademark Fail

As if anyone needed more proof that shooting off an ill-conceived cease-and-desist letter is a bad PR move, Techdirt points us to a recent gem.  The hilarious FAIL Blog publishes user-submitted photos and videos documenting various mishaps, incongruous images, and other examples of human fa

Subject Area: 

Tanner Friedman v. Doe

Date: 

05/27/2009

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

John Doe

Type of Party: 

Organization

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

United States District Court for the Eastern District of Michigan

Case Number: 

2:09-cv-12017

Publication Medium: 

Micro-blog

Relevant Documents: 

Status: 

Pending

Disposition: 

Material Removed
Subpoena Enforced

Description: 

TFSC, LLC, a public relations firms doing business as Tanner Friedman, is suing an unknown Twitter user in a Detroit federal district court seeking injunctive relief and damages arising out of his use of the Twitter account "tannerfriedman."  Tanner Friedman, in its complaint, alleges that "tannerfriedman" posted "false and defamatory statement[s] regarding Tanner Friedman on the Twitter website using the hijacked name."  (Compl. ¶ 14.)  Tanner Friedman also alleges that "tannerfriedman" posted tweets by legitimate Tanner Friedman employees to "mislead Twitter users that it was Plaintiff who was posting these tweets and to impugn its reputation."  (Compl. ¶ 17.). 

Besides defamation, the complaint includes claims for violation of the Computer Fraud and Abuse Act (18 U.S.C. § 1030), unfair competiton under federal and state law, trademark infringement under federal and state law, cyberpiracy, and intentional interference with contractual or business relations.

After filing suit, Tanner Friedman moved the court for permission to subpoena Twitter for identifying information about the unknown user.  The court granted the motion, which was unopposed. According to The Detroit News, John Doe was traced to a computer at a rival firm. 

According to its blog, this tweet, and CBS-affiliated WWJ Newsradio, Tanner Friedman has now gained possession of the "tannerfriedman" Twitter alias.

Jurisdiction: 

Content Type: 

Subject Area: 

CMLP Notes: 

06/30/2009 - LB editing

Priority: 

1-High

Blazi v. Wagoner

Date: 

09/19/2008

Threat Type: 

Lawsuit

Party Receiving Legal Threat: 

Jason Wagoner; Nicholas DeGrazia

Type of Party: 

Individual
Organization

Type of Party: 

Individual

Court Type: 

Federal

Court Name: 

United States District Court for the District Connecticut

Case Number: 

3:08-cv-01441

Legal Counsel: 

Pro se

Publication Medium: 

Website

Relevant Documents: 

Status: 

Concluded

Disposition: 

Dismissed (total)

Description: 

The owner of a Connecticut coffee shop sued two former employees in federal court, asserting that they violated federal and state law when they allegedly converted the coffee shop's website into a forum to launch verbal attacks on the store and its owner. In his complaint, John A. Blazi, the owner of Greenwich Coffee, LLC, accused Jason Wagoner and Nicolas DeGrazia of trademark infringement, violating state and federal unfair competition laws, false representation, violating the Computer Fraud and Abuse Act, and conspiracy.

In the complaint, Blazi accused the defendants of using GreenwichCoffee.com, the coffee shop's former website, as a "web-based campaign of discrediting the store" in hopes of running it out of business. Compl. ¶ 17. The domain name, although initially used for official Greenwich Coffee business, was registered solely in Wagoner's name without Blazi's permission, according to the complaint. Compl. ¶ 12. 

The defendants denied the allegations and filed a motion to dismiss the suit on the grounds that the plaintiff had filed an almost identical suit in Connecticut state court. The plaintiff objected to the motion on the grounds that Blazi was not the plaintiff in the state lawsuit, the state complaint named an additional defendant, and the federal claims were not included in the state suit.  The United States District Court for the District of Connecticut granted the motion to dismiss the federal suit Feb. 4, 2009. The court stated its main reasons for its ruling were the presence of identical underlying facts in both cases, the state court's ability to apply federal law to the other lawsuit, and inconvenience to the defendants.

Greenwich Coffee, LLC v. DeGrazia, the suit in state court, has yet to be resolved, according to the Connecticut Judicial Branch's website.

Jurisdiction: 

Content Type: 

Subject Area: 

CMLP Notes: 

Source: Dozier Internet Law

Note: It isn't clear whether the state case in the Superior Court of
Connecticut for the Judicial District of Waterbury (CV084015494) constitutes a threat for the Database because it relies on different claims.  Whoever edits this entry should look for info regarding the state case to see if it warrants a separate threat entry.

CMF-6/4/09

Priority: 

1-High

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