Grantastic Designs’ Blog

Today I have an article featured at SearchEngineWatch on online copyright issues online marketers, especially search engine marketers, need to know both their rights and responsibilities on. I wrote this as an introductory piece that clearly explains U.S. copyright law from the perspective of internet and search marketing, and includes some quotes from attorney at the Search Engine Strategies San Jose conference, on the panel titled “Copyrights and Trademarks: What SEMs (Search Engine Marketers) need to know.”

Now that there’s been enough sound legal precedents with online media distribution, the search engines have really been able to put together some helpful resources for copyright owners to protect their copyrighted content from unauthorized distrbution, even when outside of the U.S. Most important to achieving this has been the DMCA take down notice, which can be filed with any major search engine, which have legal departments to handle DMCA take down notices for both organic and paid search.

Throughout the years I’ve been in the web business, I’ve found all types of characters stealing my website content. Two particular amusing incidents: one company ripped off my entire design glossary, and it was a pastor out of Colorado offering to his customers “Christian-conscious web design.” Another stole one of my logos, and when I caught him, his response was “Well, it looked so good I just assumed you stole it from someone else.”

That’s just so copy-wrong.

This article on cybersquatting comes from my own intellectual property attorney and former Search Engine Strategies speaker on legal issues, David M. Adler, Esq. and Associates P.C. While the recent Search Engine Strategies conference’s legal sessions were expanded to a record three sessions, they all primarily focused on the issues of clickfraud, copyrights and trademarks. Cybersquatting is also important for search marketers to understand, especially since it can also be a part of trademark infringement and potentially disrupt your own search results. 

What can you do when someone registers a domain name that is identical, incorporates or is confusingly similar to your trade name or trademark? You may be able to claim that the registrant is “cybersquatting.”

Definition of “cybersquatting.”

Cybersquatting must meet the following legal criteria:

1. Registration, trafficking in, or use of a domain name, with…
2. A bad faith intent to profit from that domain name, when…
3. The domain name consists of a mark that is distinctive at the time of registration of the domain name or is identical or confusingly similar to that mark, or …
4. In the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark.  Marks composed of generic terms, descriptive terms or personal names will be much more difficult to protect. (There is actually a specific prohibition against using the “Red Cross” mark, however.)

Cybersquatting and “bad faith” intent. 

If the domain was registered by a competitor, this is a good indicator of the “bad faith” requirement, which is generally the real issue and can be harder to prove .

There are cases which hold that the following are evidence of bad faith:

1. Registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct;
2. Registration of the domain name primarily for the purpose of disrupting the business of a competitor; or…
3. Use of a domain name intentionally to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on a web site or location.

Notably, personal names are not, in-and-of-themselves, protected as trademarks, unless, they have acquired secondary meaning. Under §2(e)(4) of the Trademark Act, 15 U.S.C. 1052(e)(4), a mark that is primarily merely a surname is not registrable on the Principal Register absent a showing of “acquired distinctiveness” under §2(f), 15 U.S.C. 1052(f). However, whether a personal name is capable of protection as a trademark depends on whether it has acquired distinctiveness with respect to the goods or services. For instance, a famous actor or author may be able to protect his or her name primarily due to the fact that such person’s trade or craft is identified with that name.

Going after the cybersquatter– The Anticybersquatting Consumer Protection Act

The Anticybersquatting Consumer Protection Act of 1999 empowers a cybersquatting victim to file a federal lawsuit to regain a domain name and/or sue for financial compensation. Victims of cybersquatting can also use the provisions of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN, an international tribunal administering domain names. However, this international policy results in arbitration of the dispute, not litigation.