by Scott A. Meyer –
For those clients who understand the value of registered trademarks and copyrights as part of their intellectual property portfolios and the added goodwill positively impacting the value of their businesses, we’ve got even more good news for you. In addition to the added options to enforce your intellectual property rights in federal courts and the damage models that tag along with those rights, the online world continues to throw more benefits your way (we’ll share that new benefit below). Rather than absorbing the expense associated with filing lawsuits to protect holders’ rights, the Digital Millennium Copyright Act (“DMCA”) provides copyright holders the ability to send notices to online or social media providers to remove infringing uses by third parties quickly and efficiently. While the DMCA only applies to copyrights, many trademark holders have used the same process to notify internet and social media companies about trademark infringers. As you would expect (this being a law firm newsletter after all), this ultimately led to litigation.
CrossFit, Inc. owns the “CrossFit” trademark. Several years ago, a blog was started on Facebook called “CrossFit Mamas” at “crossfitmamas.blogspot.com.” As you can imagine, CrossFit was not pleased and sent a DMCA takedown notice to Facebook. While initially successful, CrossFit ultimately had to file a lawsuit against the infringer claiming trademark infringement. The blog launcher filed counterclaims alleging that CrossFit made material misrepresentations in the DMCA takedown notice it sent to Facebook because the basis of the notice was a trademark, not a copyright. The US District Court for the Northern District of California agreed and ruled against CrossFit because CrossFit had attempted to use the DMCA takedown process for a trademark.
Most social media and internet companies have processes and procedures in place for trademark owners that mirror the DMCA takedown notice process for copyright owners. Mozilla, for example, recognizes “Trademark Notices” using the same submission of information process for copyright owners under the DMCA. But be careful, because not all internet and online providers are like Mozilla.
And the new benefit to registered trademark holders we mentioned above? Google announced in June that it will now support registered trademark owners and process the removal of unsponsored links on Google Search, not just paid advertising or downloadable apps from Google Play. This gives you one more reason to file for trademark protection of your brand. And once you have your trademark, don’t make the mistake CrossFit did when submitting your takedown notices or you will open yourself up to potential damages under DMCA §512(f) including payment of damages, costs and attorneys’ fees to the very infringers you are trying to stop!
Better yet, if you have identified third parties infringing your intellectual property rights, contact Scott Meyer at 469-916-7700 x115 or email him for assistance with the takedown notices so you don’t fall into this trap.
when it matters ™
About Scott A. Meyer
Scott Meyer focuses his practice on Corporate and Intellectual Property matters. His Corporate practice includes a broad spectrum of services including entity formation, business transactions, operational agreements and contracts, sales, acquisitions and mergers of businesses, corporate governance and employment matters.
His Intellectual Property practice includes trademark, licensing and various service agreements for corporations.Read more…