How do I deal with a cease and desist letter to my blog?

May 29, 2002 2:00 AM

After 5 years online publishing hundreds of pages of content, my personal site poprocks.com has received a cease and desist letter from Barcelona candy company Zeta Espacial. I write about pop culture, and I am identified with the domain, personally and professionally. I have never tried to sell the domain to anyone, nor have I ever had its value appraised. Do I have any hope?
posted by popvulture to general weblog-related at 2:00 AM (47 comments total)

From what I've heard, I'm sorry to say there's a decent chance not. I have to admit I've haven't really looked into this sort of thing too deeply, but your domain pretty clearly fits into the first requirement regarding trademarks, etc. As I understand it, courts have generally tended to overlook little things like the fact you've had it for several years and heard anything. If you can prove your professional interest in the domain, it's definitely something to pursue, though I figure the first requirement is probably considered to override the second.
The uglier part of it is that people tend to find that just trying to prove rights to the domain will probably end up being so legally expensive that they don't have a chance, anyway.

You might look into the etoy/etoys case for some hints as to what you can do. They actually won that one. I'm having a bit of trouble finding any complete case information. Anybody know of a place with it? Etoy doesn't seem to have a link to the case anymore, but Google turns up a lot of random stuff.
posted by Su at 3:06 AM on May 29, 2002

These people obviously have not been policing their mark very well. Five years is a bit long for them not to have noticed the site and may prevent them from actually winning a trademark battle. Seems a bit odd. Take a look at the unfair competition laws in your jurisdiction (State claims) and the Lanham Act (Fedreral claims). Better yet, get the advice of a professional if this means a lot to you.
posted by anathema at 3:29 AM on May 29, 2002

I would resist. And/or find an attorney who wants to make his name in this field, and who will represent you for free or on a contingency basis (counter-sue?). Between your status as "little guy" and the name of your site, you should be able to get quite a ride from the media as well. I'm not an IP attorney, but I would be happy to offer additional suggestions by e-mail.
posted by ParisParamus at 3:51 AM on May 29, 2002

(maybe my cousin or a friend can help?)
posted by ParisParamus at 3:51 AM on May 29, 2002

Since when is it Tradmark-illegal to use a duly owned domain name? The name isn't being used for candy, so where's the violation?

Seems to me popvulture may be well on the way to a comfy retirement.
posted by ParisParamus at 4:03 AM on May 29, 2002

Since when is it Tradmark-illegal to use a duly owned domain name? The name isn't being used for candy, so where's the violation?

Well....she does use the phrase "dangerous candy" as the title of the front page. Anyway, popvulture, my advice to you is to find a good lawyer. I'm sure there is one out that that would be willing to assist you for free, or for minimal cost. I think it's worth fighting for.

posted by jennak at 5:31 AM on May 29, 2002

I would talk to the guy who successfully is fighting off a trademark claim on unicom.com. However, since you admitted at one time that your choice of the name was an homage to the candy, it's probably going to be tough to keep the domain if the company chooses to pursue the matter with ICANN.

If that happens, I think it will take at least six months for the company to get a successful ruling with ICANN, perhaps longer. During that time, I would establish a second domain name for your site as a fallback in case you lose it. ICANN's domain dispute resolution process seems to be tiltled in favor of trademark holders and against small publishers.
posted by rcade at 5:45 AM on May 29, 2002

at one time that your choice of the name was an homage to the candy

I don't think that has any bearing on things.

posted by ParisParamus at 5:52 AM on May 29, 2002

If she had never said anything about Pop Rocks candy on her site, she could claim to be using it as an original mark to identify her own services -- her site itself. She might even be able to register it as a trademark, since she isn't selling candy and is unlikely to be confused with a candy manufacturer.

However, since her choice of the name was based in part on the Pop Rocks trademark, the company's got a stronger claim than it would otherwise.
posted by rcade at 5:56 AM on May 29, 2002

The biggest deciding factor is, if they take this to court, do you have enough money to fund an attorney through to the end. Finding one who will take this on contingency could be impossible considering you are the defendant and you do not have a viable countersuit. If you intend to hold onto the name, you need a lawyer asap.
posted by mischief at 6:02 AM on May 29, 2002

PP: "Since when is it Tradmark-illegal to use a duly owned domain name? The name isn't being used for candy, so where's the violation?"

If I'm not mistaken, the key is "likelihood of confusion" -- and it's not necessarily limited to the particular product. If I opened a chain of indoor playgrounds called "McDonald's," I would probably be infringing (even if my name was McDonald). I guess the argument would be that anyone typing in "poprocks.com" would believe they were going to the official site of the candy. The fact of proper ownership of the domain name probably doesn't matter for the Lanham Act.

All that being said, I don't buy it in this case. A simple disclaimer should eliminate any confusion. If popvulture was hawking candy, that would obviously be a different story.
posted by pardonyou? at 6:02 AM on May 29, 2002

I don't think a simple allusion to the name, be it serious or satirical, creates "confusion." It's a jury question, ultimately.

Don't give up so easily. If they want to buy the domain name, let them do so for a price. But don't let corporate largesse or a law firm letterhead intimidate you. Think marshal arts: use their momentum to your advantage for PR purposes, sympathy, etc.
posted by ParisParamus at 6:20 AM on May 29, 2002

Goddammit, that is one hell of a blog. I am going to have to spend far too long reading it now. Damn!

Definitely, definitely worth fighting for...


posted by i_cola at 6:21 AM on May 29, 2002

I know someone who is an IP lawyer, and I asked him what he thought of the situation, off the top of his head... (it's not legal advice, really... you should probably consult an attorney yourself.)

The candy company is presumably making a claim under the "anti-dilution" statute (i.e., even if there is no likelihood of confusion, the unauthorized use of a famous mark can still cause damage to the owner of the mark under the antidilution statute). The candy company might be able to eventually force her to give up her domain name (they will allege that she's a "domain name pirate" who selected that domain name in bad faith just to "hold them up"). Without knowing more, my guess is the case is not open and shut and so she could probably negotiate something. Interestingly, the federal trademark registration for POP ROCKS is listed as being owned by Kraft (which we all know is a subsidiary of Philip Morris).

In other words, about that last item... DEEP POCKETS. Anyway, hope this helps.
posted by crunchland at 6:34 AM on May 29, 2002

To suggest that a blog not about POP ROCKS, not about candy has any dilution effect is silly. Entertain offers of no less than $100K.
posted by ParisParamus at 6:48 AM on May 29, 2002

Ugh.... I hate seeing this happen.

While I don't have any legal advice, I do suggest sending a plea for help to Declan McCullagh's (of wired.com fame) Politech list. A quick search through the archives might be of some help (e.g. what others have done; finding sympathetic types to contact). If little else it will lead to the right kind of exposure for your cause.

GOOD LUCK!
posted by 10sball at 6:49 AM on May 29, 2002

To suggest that a blog not about POP ROCKS, not about candy has any dilution effect is silly. Entertain offers of no less than $100K.
posted by ParisParamus at 6:50 AM on May 29, 2002

Sorry. Slow server. You might also try a law school for some help. But that's probably not necessary.
posted by ParisParamus at 6:52 AM on May 29, 2002

I'm trying not to be pessimistic, but I think you're being overly optomistic there, Paris -- not only does Kraft / Phillip Morris have deep pockets, they also have an army of top notch attorneys at their disposal.
posted by crunchland at 7:03 AM on May 29, 2002

Which is why popvulture should at least offer them a decent price. Make it just less than the cost of having their lawyers have a court battle. Of course, I'd check with an attorney before doing that, it could be construed that the ultimate goal was to make money off the site by holding it up.
posted by geoff. at 7:21 AM on May 29, 2002

Jeez, folks -- telling her to offer to sell it at this point is terrible advice. Never offering to sell the domain to anyone is a mark in her favor.
posted by rcade at 7:24 AM on May 29, 2002

I don't mean to suggest that you should you roll over, whatever your chances of successfully keeping the Poprocks name may or may not be, but why not go with "popvulture"?
It's just my opinion of course, but you have a cool site, the name of it should be it's own concept, not a pilfered one. I'd personally be more apt to visit popvulture than poprocks simply because it's a more interesting concept of a name.
posted by dong_resin at 7:25 AM on May 29, 2002

But then, I named myself after smegma.
posted by dong_resin at 7:29 AM on May 29, 2002

Well, for one thing, Popvulture is already registered, and has been since February, 2000.
posted by crunchland at 7:30 AM on May 29, 2002

If popvulture was hawking candy, that would obviously be a different story.

Tell that to the Miller Family who were not selling beer, or Uzi Nissan, who is being told that he has no claim to use his own name as well as the name of his business as his domain name.

Big companies are becoming notorious for trying to intimidate individuals, who have been doing legitimate work of various sorts with a domain for years, and who are not in any way attempting to steal or divert business from the company which could also have a claim to the domain name.

Get a lawyer, but be prepared to either fight for a long time, or sell -- but not at anything less of a price befitting the stature and financial picture of the companies involved in the dispute.
posted by Dreama at 8:02 AM on May 29, 2002

dong: These guys will come for you one day...
posted by i_cola at 10:21 AM on May 29, 2002

Dreama: The Miller family was using the beer company's "Miller Time" trademark as their domain name. Why should a family named Miller be able to make use of Miller Beer trademarks when naming their personal site? That one seems like one of the least defensible examples of a personal site's collision with a trademark owner.
posted by rcade at 11:24 AM on May 29, 2002

I don't think popvulture's claim is any more defensible; she named her site for the candy. The Millers at least tried to claim (disingenuously, I believe) that the name was a legitimate coincidence.
posted by timeistight at 12:36 PM on May 29, 2002

I seem to remember that the Miller one was a little weirder than that. Something like that they were using "Miller Time" after the phrase was well-known(informally) in association with the beer company, but before the company had actually bothered to register it.
Totally different, and obviously more complicated, situation. But it's a vague memory.
posted by Su at 12:46 PM on May 29, 2002

We registered this domain name in 1995 and have used it as a repository for information about our family's activities ever since. ... [We] tried to register other domains, first, such as "miller.com" and "millerfamily.com" but these were already taken. ... [F]riends would often call us and say, "My computer is broken -- I need some Miller time," we finally settled on millertime.com as our domain name. ... [Miller Beer] did not submit trademark registration paperwork for the phrase, "It's Miller Time!" until long after our web site was live, and in fact their trademark registration was not actually granted until 2001.
posted by Marquis at 1:05 PM on May 29, 2002

Su, I think your memory is correct: here's the thread.

Anyway, I think the point is that the Millers lost despite registering the domain before the phrase was trademarked, claiming that their use of the phrase was coincidental to the beer company's advertising (yeah, right), and actually being named Miller. That can't bode well for popvulture's case.
posted by timeistight at 1:35 PM on May 29, 2002

Drop on over to the RTMark gang or send them an email and tell them the trouble you're having. You'd be amazed at how fast companies with no real case will back down. Thus far, Etoys (now deceased), Autodesk and a number of other companies have been forced to back away and apologize for trying tactics like this when they didn't really have any chance of winning, except by virtue of their large pocketbooks.

RTMark is well funded and has bunches and bunches of activists to mobilize. Give them a holler and let them shake a few trees.

But, by all means, also contact the EFF , the ACLU and it wouldn't hurt to call your local bar association and ask for a referral to an Intellectual Property attorney for a pro-bono consultation. Whether or not they'll take the case under pro bono rules, I dunno...but it's worth a shot. :)

Good luck!


posted by dejah420 at 2:32 PM on May 29, 2002

I think that's the best advice. I do know that if you approach the candy company and say you'd be willing to sell the domain name for $X*1000, they'll probably use it against you as a domain pirate and cybersquatter. However you proceed, popvulture, you need to do it very carefully, which unfortunately means you'll probably need the help of an attorney. You might even be able to get one who will work on a contingency basis, too.
posted by crunchland at 3:31 PM on May 29, 2002

Buy some Kraft stock and demand to know why they treat their shareholders so badly.
posted by skallas at 4:39 PM on May 29, 2002

Popvulture, tell 'em to piss off, then see if you can find a lawyer that will pro bono countersue 'em for harassment. I don't know if this is possible. I wouldn't be saying this if your site was a month old, but you say it's been up for five years. That should earn you a lot of legal credibility. Corporations are also scared shitless of bad publicity. Use that to your advantage.

Don't just bend over and take it from a bunch of corporate scumbags. I'm very disappointed with the responses from this thread. If so many people are unwilling to fight for what they believe in, it's no wonder that the world continues to go to hell in a handbasket.

When good people choose to do nothing and play dead out of safety, the assholes will triumph.
posted by mark13 at 7:30 PM on May 29, 2002

Paris asks, disingenuously:
Since when is it Tradmark-illegal to use a duly owned domain name? The name isn't being used for candy, so where's the violation?

Since 10/26/99, when Congress enacted the Trademark Cyberpiracy Prevention Act, which states:

(d)(1)(A) A person shall be liable in a civil action by the owner of a trademark or service mark if, without regard to the goods or services of the parties, that person--

Note that this language supersedes the common usage of trademark goods and services categories. Paris uses the case that poprocks.com is not selling candy, but the law erases that requirement in the case of domain names, for fairly obvious reasons.

(ii) registers, traffics in, or uses a domain name that--

`(I) in the case of a trademark or service mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to such mark;

`(II) in the case of a famous trademark or service mark that is famous at the time of registration of the domain name, is dilutive of such mark; or

`(III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220506 of title 36, United States Code.

{skipping the bad-faith parts, since that's not really at issue -- no sale of product, no auction of name}

Clearly (I) and (II) do apply here. The confusingly similar language is the broad area known as "trademark dilution". In fact trademark dilution was the subject of a 1995 amendment to the trademark code. In the cast of the 1999 law, it codified a multiple-question test that had originated in trademark case law over 30 years ago:

`(B) In determining whether there is a bad-faith intent described under subparagraph (A), a court may consider factors such as, but not limited to--

`(i) the trademark or other intellectual property rights of the person, if any, in the domain name;

`(ii) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;

`(iii) the person's prior lawful use, if any, of the domain name in connection with the bona fide offering of any goods or services;

`(iv) the person's lawful noncommercial or fair use of the mark in a site accessible under the domain name;

`(v) the person's intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;

`(vi) the person's offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services;

`(vii) the person's provision of material and misleading false contact information when applying for the registration of the domain name or the person's intentional failure to maintain accurate contact information;

`(viii) the person's registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to trademarks or service marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous trademarks or service marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of such persons;

`(ix) the person's history of offering to transfer, sell, or otherwise assign domain names incorporating marks of others to the mark owners or any

third party for consideration without having used, or having an intent to use, the domain names in the bona fide offering of any goods and services;

`(x) the person's history of providing material and misleading false contact information when applying for the registration of other domain names which incorporate marks, or the person's history of using aliases in the registration of domain names which incorporate marks of others; and

`(xi) the extent to which the trademark or service mark incorporated in the person's domain name registration is distinctive and famous within the meaning of subsection (c)(1) of section 43 of the Trademark Act of 1946 (15 U.S.C. 1125).

First, popv, you don't have prior common law rights to the name. It's not your name, it's a name you borrowed from a trademark holder. It seemed innocuous at the time, but as the law has evolved, domain name rights have become more closely identified with pre-existing trademark rights. A lot of people continue to hold uninformed opinions on the topic, alas -- and there are a lot of old internet hands who take political positions against this convergence, but mainly as a straightforward anti-corporate stance, rather than anything that's supported legally.

It's not your name. It's not a name that means anything, in combination, outside of the product (even though the two words singly are very common). It would be an uphill battle to try to establish that there is a public meaning separate from the product name Pop Rocks. Chip has kept Unicom because his company name was registered as a business a long time before the corporation took that name. Clue Computing kept its name clue.com because it's a common word and does not refer solely to the product Clue. Barbie.com lost their domain because they were centered around the Barbie product and were starting to do business as a broker of some kind, which the mark owner thought was a really bad infringement for some strange reason. The millertime.com domain was specifically used for business with the hope that the name would prove distinctive, yet that distinctiveness all came from the advertising pockets of the mark owner.

I hate to say it, but I don't think you have much hope here. Even if it doesn't go to lawsuit, but stays within the ICANN UDRP, the rules there are even more strongly in favor of domain names belonging to pre-existing mark holders. They could easily choose an arbitrator in the WIPO group, which has tended to turn over domains to mark holders more than twice as often as any other group. And don't listen to Paris -- if you start demanding money from them, you're in even more danger of being ruled a bad-faith cybersquatter. It's one of the worst things you can do at this point. See point (vi) above.

In fact, listen to almost none of what Paris has said. He's blowing it out his ass on this one, frankly. He hasn't read the law, he doesn't have a clue what trademark dilution really means, and he's making legal arguments based on what he thinks the world should be like, rather than what it actually happens to be like.

You may want to contact MeFi'er and sometime IP lawyer Mikewas and see if he can hook you up with a colleague in your area.
posted by dhartung at 7:44 PM on May 29, 2002

Hey everyone, thanks for your advice and great suggestions about the various organizations and people to contact. I've had several phone and email conversations today... some with lawyers and others with people who have fought similar cases. It looks like it will be a difficult battle to fight.

I'll keep you posted on my next action. I need to reply to their letter by June 3 (Monday), so I don't have a lot of time...
posted by popvulture at 10:35 PM on May 29, 2002

I disagree with dhartung--and don't appreciate what he says about me. Specifically, (II), supra, does not "clearly" apply. There's no dilution. The name is not being used in a way which impacts on the candy. The question of dilution remains one of fact for a jury.
posted by ParisParamus at 3:51 AM on May 30, 2002

P.S.: no, you don't "have to" reply by June 3.
posted by ParisParamus at 3:52 AM on May 30, 2002

Here's but one article exemplifying how unclear the answer is here. Ignore cocky posters, perhaps with corporate bents, who wish to have you wave a white flag.
posted by ParisParamus at 4:32 AM on May 30, 2002

Change your name to Pop Rocks. It will help if you're known to all rock collectors as the beloved Father of Geology, but there's time to work on that. If that fails and they take it away from you, just steal it back. I understand Verisign can help you in this matter.
posted by pracowity at 5:04 AM on May 30, 2002

The arbitrator's decision in the Miller case makes it clear that two of the deciding factors were a)the Miller family tried to make money by offering goods/services on their site and b) the Miller family had at one time offered to sell the domain name. If you've ever done either with poprocks.com, your case is probably going to be hurting, especially since you don't have the family name as a link to your domain name.
posted by tdismukes at 7:16 AM on May 30, 2002

I have never made money directly from poprocks.com (only indirectly through freelance writing that I've done, as a result of someone viewing my site), nor have I ever tried to sell the domain to anyone. I've also never had its value appraised.

Talking to some more lawyers today. I'll let you know what I hear.
posted by popvulture at 10:13 AM on May 30, 2002

Popvulture, while I am a lawyer, I am not _your_ lawyer (this goes for the rest of you metatalkers, I'm not your lawyer either, don't rely on what I say at all) so bear with me here.

Without going into details, the first duty of a trademark holder is vigilant pursuit of possible infringements of their mark. If you don't faithfully pursue it, you can potentially lose it.

Now, that being said, that's a reason that big corps attack little guys. A few other obvious points.

1) They have deeper pockets than you and can bury you. It's not ethical, but we know well that it happens.
2) There is a decent body of US caselaw on precisely these issues dating back to Josh Quittner and McDonalds, if not before. The law is of course, ever changing, which is what makes being a lawyer fun. But there _is_ a body of law.
3) ICANN is an odd process I know nothing about but seems arbitrary and balanced towards big business and _not_ bound by above US Caselaw.

The best advice you've received so far, and the advice I'd give you myself is
A) what you're already doing - speak to lawyers about it.
B) do what Dejah420 suggested, which is bring in as big guns as you can get ahold of. EFF, EPIC, RTMark, lawyers at any company you work at may know people, etc. Fight lawyers with lawyers, essentially. Contact Mike Godwin if you can find him. He's formerly of the EFF, and a great friendly guy. Contact every law school professor in your town that does IP. Contact every law school professor you can think of that does Trademark. Go read articles in the Trademark journals and contact their authors asking for help.
C) Do _not_ offer to sell the domain. Do _not_ speak further about this. Do _not_ do anything else vis a vis your domain name until you've thoroughly spoken with attorneys about it, have one on retainer who specializes in this, and can advise you as to what to say.
D) Consider giving up the domain as it's going to be _very_ expensive to fight a multinational corporation. That's what they want you to do, obviously, but frankly, a principle is a very _very_ dangerous thing to fight for, especially at law.

Good luck. Again, I am a lawyer, but not _your_ lawyer. This is purely nonlegal advice, and every bit of this should be checked against some other lawyer's counsel. DO NOT RELY ON ANYTHING SAID IN THIS POST EXCEPT THAT YOU SHOULD SEEK COUNSEL.
posted by swerdloff at 8:40 PM on May 30, 2002

I used to have a particular .com address. I no longer have it. There were lawyers and lawsuits involved. I ended up with the .org variation of the name, and the other guys ended up with my .com name. The rest of the settlement terms are confidential, but I guess I'm relatively satisfied with them (though I would have preferred to keep the original domain I had registered in 1994 -- oh well).

Having been through this process, I just want to reiterate what swerdloff said -- Do NOT call or write to the law firm that sent you the letter until you have have been thoroughly advised by a lawyer. Especially do not offer to sell the domain.

I came very close to screwing up my case completely by speaking to the other side's lawyers. Luckily, I came to my senses soon enough and let my lawyer do all the talking after that.

I'm not very hopeful about this one, frankly. The reference to "candy" on the website doesn't help, and it seems to be easier for trademark holders to get away with this sort of thing now than it was when I went through my case.

Coincidentally, I used to run a mailing list about power-pop bands such as the Posies, Jellyfish, etc. (I also run the Posies mailing list, Dear23.) The list was called... Poprocks. (Pop Rocks lawyers, don't bother writing to me. The list is long defunct.)
posted by litlnemo at 1:19 AM on May 31, 2002

Hopefully, the offending lawyer is not a member of Mefi.
posted by ParisParamus at 10:39 AM on May 31, 2002

If they're telling her to see this as an opportunity for a shake-down, hopefully they're not lawyers.
posted by dhartung at 7:32 AM on June 1, 2002