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Trademarks and Websites
The growth of the Internet over the past decade has increased the forums where people can gather and discuss their favorite interests. Many people have decided to share their enthusiasm over a certain topic by creating websites for all to see. One area specifically where this has occurred has been in the sports and entertainment industry, where people have created “fansites” to follow their favorite television shows, movies, and sports teams. These “fansites” have message boards, images, and commentary allowing fans to follow their favorite team or movie in new ways.
Most of the creators of these sites have made the sites out of their love for the team or movie, to share their enthusiasm with others, and not for any commercial reason. However they have run into problems over illegal trademark use.
In 2002 Major League Baseball sent out letters to many fan cites around the country saying they were in violation of illegal use of Major League Baseball team logos and trademarks. Many sites had pictures of players in uniform or pictures of team logos, both of which would violate trademark law. (www.usatoday.com/sports/baseball/2002-08-20-online-copyrights_x.htm).
In order to establish a trademark infringement under the Lanham Act, one must show that the trademark was used in connection with a sale of goods or services, and has “bad faith intent to profit from that mark.” 15 U.S.C. § 1125(d). It would seem that under those requirements many of these fan websites would have no problems as they websites have no interest in selling goods or profiting from their sites. In fact, many creator of these websites assumed that Major League Baseball would appreciate the fan sites as they spread interest of the game which at the end of the day would profit Major League Baseball. Major League Baseball did not totally agree with this assessment. A spokesman for Major League Baseball said “"We like the sites, encourage the sites," Pat Courtney said. "But our (trademark) people are very wary of misuse. They are very careful to protect our logos and trademarks." (www.usatoday.com/sports/baseball/2002-08-20-online-copyrights_x.htm). Courtney pointed out as well that all fan sites only received letters not lawsuits, to show that baseball wasn’t trying to really hurt anyone.
The argument of protection of logos and trademarks is one not to be taken lightly. The use of these trademarks by websites for free could lead down a very slippery slope. While many sites are not used for profit, some have advertisements on their sites in order to raise money to cover the cost of running the website. It is at that point where the gray area begins between sites raising money to cover the cost of the website and sites who are using that rational and excuse to make some profit as well. One argument for baseball is that if they were to make a distinction and allow the use of their trademark for free on some sites, it would be hard to litigate the sites where a violation has occurred.
In reaction to baseball’s letters, some sites shut down, saying they would rather have no site than “a watered down one.” Other sites continued to run, making express notice that they were not affiliated to Major League Baseball or any team at all, gave links to Major League Baseball’s official website, and have no content that includes logos or pictures of logos of that team or Major League Baseball. (An example of such a site is www.ultimatemets.com).
Major League Baseball is not only corporation that has gone after “fan sites.” Twentieth Century Fox has in the past also forced the shut down of fan websites over trademark issues. (www.efc.ca/pages/media/globe.15mar97.html). Another way to deal with fan websites is what Marvel Comics have done. They allow independently run fan sites to use pictures of characters and comic book covers. For this use the websites sign up with Marvel to become authorized fan sites and in exchange Marvel gives them images to use as well as having an area on their own website which link to fan sites. (www.efc.ca/pages/media/globe.15mar97.html).
Most likely due to fans compliance there has been very litigation between corporations and these websites. However where the courts have been involved has been in the area of “gripe sites.” “Gripe cites” are “unauthorized websites that not only criticize the company or its products, but also use the company’s own trademark as part of the website’s domain name.” (www.skadden.com/content/Publications/Publications1024_0.pdf). (An example of such a site is www.walmartsucks.org).
In April 2005, the 9th circuit found that the noncommercial use of a trademark as the domain name of a “gripe cite” is not infringement under the Lanham Act. The court said “the Supreme Court has made it clear that trademark infringement law prevents only unauthorized uses of a trademark in connection with a commercial transaction in which the trademark is being used to confuse potential consumers.” Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005) Since the “gripe cite” is not being used to raise money, they are not violating any trademarks.
In many cases involving ‘gripe cites,” the corporation has tried to use an argument that the “gripe cite” violates the company’s first amendment rights. In Taubman Co. v Webfeats, the 6th circuit found that that a gripe site was “purely an exhibition of Free Speech, and the Lanham Act is not invoked.” The appeals court explained: "We find that the domain name is a type of public expression, not different in scope than a billboard or a pulpit, and [the gripe site owner] has a First Amendment right to express his opinion about Taubman, and as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it.” Taubman Co. v. Webfeats, 319 F.3d 770, 778 (6th Cir. 2003). The courts have generally also held that since a company would not make a negative website about themselves, a viewer of these websites would clearly realize that these websites are not run by the company, and the confusion that a trademark infringement requires would be lacking.
It is very interesting to compare “fan sites” and “gripe cites” and see the stance the courts take. It is surprising that while that “fan sites” are thought to be disallowed and can possibly cause trademark infringement, “gripe cites” do not. I suppose, therefore, when for the upcoming baseball season of 2006, I will not make a website “Lets Go Mets,” which might run me into legal troubles, but rather “Yankees suck” where I can include any information that I please.
Posted by Abraham Adler at January 29, 2006 11:59 AM in Commentary Posts
Comments
This dichotomy is quite fascinating. I think the last paragraph of one of the articles you cited may give a hint as to part of the reason for the divergence. I hope it's a fair use to quote what I'm referring to in full:
"Kerby is continuing with his Web site. Instead of running photographs, he has set up a link to Yahoo.com's news photos of games."
My thought is that perhaps MLB (and presumably Yahoo!) are willing to countenance something like this on the basis that they derive some theoretical financial benefit. Yahoo! gets more traffic and MLB may be able to charge Yahoo! higher licensing fees for such photographs (either if Yahoo! compensates them on a sliding scale) or when they negotiate the next such contract.
While I think MLB's behavior could be justified on a short-term commercial basis (for the reason above) I wonder whether they are doing themselves long term damage in terms of both goodwill (in both the technical and general senses of the term) I think the opposite argument could be made in the long term since it would provide less positive exposure. Given the protection afforded "gripe sites" this seems particularly ill-advised.
Having played on Little League teams named after major league teams I remember being surprised a few years back when MLB discussed cracking down on this practice, which actually only dates to the 1970s. It seemed ill-advised to me for the teams' owners to be alienating their potential future customers (and perhaps employees) in this fashion. Presumably Little League Baseball and MLB settled but MLB seems to be continuing the practice, note how this webpage illustrates the potential effects of this intransigence.
Also, I find it interesting that this page makes no reference to Microsoft (or its copyrights) in dispensing advice about how to use Excel. Much like the various "For Dummies" titles this could be seen to be infringing Microsoft's rights to derivative works, but I expect that Microsoft must have decided that this sort of publicity benefits it.
A further interesting website is this U2 fan site which takes donations, sells advertising, and includes a link to a fan-run shop which sells U2 recordings and gear (whose royalties thus benefit the band.)
What I conclude from this is that MLB (which incidentally redirects you to URLs which include "mlb" in the URL when you type something like "yankees.com") is be acting within its legal rights but is not behaving in its own long-term economic best interests. Certainly this contemptous attitude to its customers makes me less likely to go and purchase a Johnny Damon shirt to finance the Yankees' intra-city battle this year (to Avraham's great delight I'm sure.) I would postulate that the fact that it is a monopoly that enjoys a special exemption from the anti-trust laws may have something to do with this.
Note: I find it interesting that English football (soccer) teams, admittedly operating under a different but nonetheless common law copyright regime, but a technically less monopolistic league structure, seem to have no qualms about providing links to fan club pages that would be deemed infringing by MLB's logic.
Posted by: Owen Lipsett at January 30, 2006 11:25 AM
To clarify: I meant to refer to Microsoft's trademarks rather than copyrights. The page in fact does refer to the fact the program is "Microsoft Excel" but makes no reference as to whether that name or program is trademarked.
Posted by: Owen Lipsett at January 30, 2006 12:01 PM
