Chilling Effects
Home Weather Reports Report Receiving a Cease and Desist Notice Search the Database Topics
Sending
Topic HomeFAQsMonitoring the legal climate for Internet activity
USF Law School - IIP Justice Project
 Chilling Effects Clearinghouse > Protest, Parody and Criticism Sites > Frequently Asked Questions Printer-friendly version

Frequently Asked Questions (and Answers) about Protest, Parody and Criticism Sites

  • Q: What is a trademark?
  • Q: What is a famous mark?
  • Q: What is trademark infringement?
  • Q: What is false designation of origin?
  • Q: What is trademark dilution?
  • Q: What is unfair competition?
  • Q: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?
  • Q: What is the right of publicity?
  • Q: What is the UDRP (Uniform Domain Name Dispute Resolution Policy)?
  • Q: What must a trademark owner prove to win a UDRP proceeding against a domain name holder?
  • Q: What type of relief can be obtained through a UDRP proceeding?
  • Q: What is defamation?
  • Q: What kinds of things are copyrightable?
  • Q: What is the legal definition of defamation?
  • Q: Does it make any difference if I am commenting on a product or company rather than a person?
  • Q: What is false light invasion of privacy?
  • Q: What is the difference between false light invasion of privacy and defamation?
  • Q: How does the First Amendment to the Constitution affect defamation?
  • Q: What is the difference between libel and slander?
  • Q: What is a preliminary injunction?
  • Q: What are the factors the court considers in issuing a preliminary injunction?
  • Q: What is libel?
  • Q: What is disparagement?
  • Q: What is a trade secret?
  • Q: When is a company deemed "publically traded"?
  • Q: What are "Exemplary Damages"?
  • Q: What is a "Permanent Injunction"?
  • Q: What is a summary judgment?
  • Q: What is the "principal register?"
  • Q: What is "trade dress"?
  • Q: What is a "generic" name?
  • Q: What are "actual and statutory damages" for a right of publicity claim?
  • Q: Does the Lanham Act protect against misappropriation of likeness?
  • Q: What is Trademark Misuse?
  • Q: When is parody protected from a charge of trademark infringement?
  • Q: What is the purpose and effect of a cease and desist (C&D) notice in an alleged case of trademark infringement?
  • Q: What does it mean to have material "hosted" on a website?

    Question: What is a trademark?

    Answer: A trademark is a "mark" (word, phrase, symbol, design, mark, device, or combination thereof) used to identify the source of a product. Trademarks allow consumers to evaluate products before purchase.

    >>top


    Question: What is a famous mark?

    Answer: A famous mark is a mark that has become so well known, that it has become almost universally recognized. An example of such a mark would be "McDonald's" or "Coca-Cola." Famous marks become important where an owner of a trademark is claiming trademark dilution against a defendant. The Federal Anti-Dilution Act of 1996 provides that an owner of a famous mark is entitled to an injunction where a defendant's use of the mark causes dilution of the distinctive quality of the owner's famous mark. In determining whether a mark is famous, a court will consider a list of eight factors, found in the 1996 Federal Anti-Dilution Act.

    >>top


    Question: What is trademark infringement?

    Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.

    >>top


    Question: What is false designation of origin?

    Answer: It covers similar ground to trademark infringement, but is more specific to misrepresentation of source, and applies even when there is no trademark at issue. If your website makes it appear that you sell products made by Company X, but in fact you make these products in your garage, Company X might accuse you of falsely designating the origin of (or "passing off") your items.

    >>top


    Question: What is trademark dilution?

    Answer: A type of infringement of a famous trademark in which the defendant's use, while not causing a likelihood of confusion, tarnishes the image or blurs the distintiveness of the plaintiff's mark. For example, if someone tries to sell "KODAK" pianos, KODAK could stop the person--even if consumers were not confused--because "KODAK" is a famous mark, and its use on products other than film and film-printing accessories (or other products on which Eastman Kodak places the mark) dilutes its uniqueness.

    Many states have anti-dilution laws. The federal government only recently enacted anti-dilution legislation; see the Federal Trademark Dilution Act at 15 USC 1125(c).

    >>top


    Question: What is unfair competition?

    Answer: "Unfair competition" covers a wide range of kinds of unjust business behavior---so many kinds, in fact, that it is impossible to give one simple general definition. In essence, unfair competition means trademark infringement or false advertising to confuse the public. In most states, only commercial competitors can be engaged in "unfair competition."

    >>top


    Question: What is the Anti-Cybersquatting Consumer Protection Act (ACPA)?

    Answer: The ACPA [codified as 15 USC 1125(d)] is aimed at people who register a domain name with the intention of taking financial advantage of another's trademark. For instance, if BURGER KING did not have a web site, and you registered www.BURGERKING.com with the intent of selling the site to BURGER KING for a royal ransom, you could be liable under ACPA.

    ACPA applies to people who:
    (1) have a bad faith intent to profit from a domain name; and
    (2) register, use or traffic in a domain name;
    (3) that is identical, confusingly similar, or dilutive of certain trademarks. The trademark does not have to be registered.

    ACPA provides that cyberpirates can be fined between $1,000 and $100,000 per domain name for which they are found liable, as well as being forced to transfer the domain name.

    Somewhat more broadly, the Act is meant to reduce consumers' confusion about the source and sponsorship of Internet web pages. The idea is to provide customers with a measure of reliability, so that when they visit www.burgerking.com, they will be able to find actual Burger King products, not something entirely different. It also protects mark owners from loss of customer goodwill that might occur if others used the trademark to market disreputable goods or services.

    See the module on ACPA to find out more about bad faith and legitimate defenses.

    >>top


    Question: What is the right of publicity?

    Answer: The right of publicity is a right to prevent the unauthorized commercial use of someone's identity, including name, image, or likeness. A natural person (and that person

    >>top


    Question: What is the UDRP (Uniform Domain Name Dispute Resolution Policy)?

    Answer: The UDRP was approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") in 1999. It is an online procedure for resolving complaints made by trademark owners about domain names.

    >>top


    Question: What must a trademark owner prove to win a UDRP proceeding against a domain name holder?

    Answer: In order to win a UDRP proceeding against a domain name holder, the trademark owner must prove ALL of the following:
    1) that the domain name registered by the domain name holder is the same or confusingly similar to a trademark or service mark in which the trademark owner has rights. UDRP decisions have gone both ways on whether a protest, criticism or parody site is confusingly similar when a domain name consists of the trademark and another word such as "sucks." The most important factor seems to be whether or not the domain name owner is using the site for commercial purposes. If it is, the panel will probably find that the use of the trademark in the domain name causes a likelihood of confusion.
    2) that the domain name owner does not have a legitimate interest in the domain name. If the domain name owner's site is being used to criticize, protest or parody the trademarked entity or its owner's products and/or services, the panel will probably find that the domain name owner has a legitimate interest in the domain name. This will probably be true, even if the domain name is, for all practical purposes, the same exact thing as the trademarked word.
    3) that the domain name owner has used and registered the domain name in bad faith. Bad faith can be found in any number of factors including, but not limited to a) registration for the purpose of selling the domain name to the trademark owner for profit; b) a pattern of registration to prevent the trademark owner from using the mark in a domain name; c) registration for the primary purpose of disrupting the business of a competitor, or d) an intentional attempt to attract, for commercial gain, Internet users to the domain name owner's web site by creating a likelihood of confusion as to the source of a product or service on the domain name owner's website. One clear example of bad faith would be where the domain name owner creates a site that contains ads advertising the goods or services of the competitors of the trademark owner.
    Remember, that to prevail under the UDRP, the trademark owner must prove all of the points listed above.

    >>top


    Question: What type of relief can be obtained through a UDRP proceeding?

    Answer: There can be three outcomes: 1) the trademark owner wins and the domain name is transferred to the trademark owner; 2) the trademark owner wins and the domain name is canceled; or 3) the domain name owner wins and keeps the domain name.
    There is no appeal under the UDRP process, but you can file a lawsuit if you believe your rights have been violated. If a timely lawsuit is filed (within 10 business days), there will be no action taken until the parties settle, the lawsuit is dismissed or withdrawn or there is a court order regarding the ownership of the domain name.

    >>top


    Question: What is defamation?

    Answer: An attack by speech on the good reputation of a person or business entity. Speech that involves a public figure--such as a corporation--is only defamatory if it is false and said with actual malice. It also must be factual rather than an expression of an opinion. In the United States, because of our strong free speech protections, it is almost impossible to prove defamation of a public figure.

    >>top


    Question: What kinds of things are copyrightable?

    Answer: In order for material to be copyrightable, it must be original and must be in a fixed medium.

    Only material that originated with the author can support a copyright. Items from the public domain which appear in a work, as well as work borrowed from others, cannot be the subject of an infringement claim. Also, certain stock material might not be copyrightable, such as footage that indicates a location like the standard shots of San Francisco in Star Trek IV: The Voyage Home. Also exempted are stock characters like the noisy punk rocker who gets the Vulcan death grip in Star Trek IV.

    The requirement that works be in a fixed medium leaves out certain forms of expression, most notably choreography and oral performances such as speeches. For instance, if I perform a Klingon death wail in a local park, my performance is not copyrightable. However, if I film the performance, then the film is copyrightable.

    Single words and short phrases are generally not protected by copyright, even when the name has been "coined" or newly-created by the mark owner. Logos that include original design elements can be protected under copyright or under trademark. Otherwise, words, phrases and titles may be protected only by trademark, however.

    >>top


    Question: What is the legal definition of defamation?

    Answer: The elements that must be proved to establish defamation are: (1) A publication to one other than the person defamed; (2) of a false statement of fact; (3) which is understood as being of and concerning the plaintiff; and (4) which is understood in such a way as to tend to harm the reputation of plaintiff.

    >>top


    Question: Does it make any difference if I am commenting on a product or company rather than a person?

    Answer: Product disparagement law prohibits certain false claims about another's goods or services. While a defamatory statement harms the reputation and character of a person or corporation, a product disparaging statement harms the marketability of the goods being disparaged. Product disparagement is typically harder to prove.

    >>top


    Question: What is false light invasion of privacy?

    Answer: "False light" is a claim that publicity invades a person's (plaintiff's) privacy by a false statement or representation that "places the plaintiff in a false light that would be highly offensive to a reasonable person."

    >>top


    Question: What is the difference between false light invasion of privacy and defamation?

    Answer: The distinction between the two is a subtle one. The false light cause of action focuses upon indignity and defamation focuses upon reputation.

    >>top


    Question: How does the First Amendment to the Constitution affect defamation?

    Answer: The free speech guarantees under the Constitution protect certain speech and commentary. The degree of protection generally depends on whether the person commented about is a private or public figure and whether the statement is regarding a private or public matter. According to the New York Times rule (from the case New York Times v. Sullivan), when the plaintiff is a public figure and the matter is one of public concern, the plaintiff must prove "malice" or "reckless disregard" on the part of the defendant. If both parties are private individuals, there is less protection for the speech because the plaintiff only needs to prove negligence.

    >>top


    Question: What is the difference between libel and slander?

    Answer: Libel is a defamatory statement expressed in a fixed medium such as a writing, picture, sign or electronic broadcast. Slander is a defamatory statement expressed in a transitory form such as speech.

    >>top


    Question: What is a preliminary injunction?

    Answer: An order by the court requiring the defendant to do or refrain from doing some action pending a full trial on the merits of the lawsuit. Sometimes in intellectual property litigation, the property owner, soon after filing the complaint, will make a motion for a preliminary injunction requiring the defendant to stop doing those things the plaintiff alleges are infringing the plaintiff's intellectual property rights.

    >>top


    Question: What are the factors the court considers in issuing a preliminary injunction?

    Answer: Traditionally, a party seeking a preliminary injunction is required to show five basic factors: (1) that there is a probability of success at the ultimate trial on the merits of the claim; (2) that the plaintiff will undergo "irreparale injury" pending a full trial on the merits; (3) that a preliminary injunction will preserve the status quo which preceded the dispute; (4) that the hardships favor the plaintiff; and (5)that a preliminary injunction will favor the public interest and protect third parties.

    >>top


    Question: What is libel?

    Answer: Libel is a defamatory statement expressed in a fixed medium, usually writing but also a picture, sign, or electronic broadcast. See What is the legal definition of defamation?

    >>top


    Question: What is disparagement?

    Answer: As defined in Black's Law Dictionary (7th ed. 1999), disparagement is "A false and injurious statement that discredits or detracts from the reputation of another's property, product, or business. To recover in tort for disparagement, the plaintiff must prove that the statement caused a third party to take some action resulting in specific pecuniary loss to the plaintiff."

    >>top


    Question: What is a trade secret?

    Answer: A trade secret is business information that is the subject of reasonable efforts to preserve confidentiality and has value because it is not generally known in the trade. Such confidential information will be protected against those who obtain access through improper methods or by breach of confidence. Infringement on a trade secret is a tort and a type of unfair competition. Every alleged infringement of a trade secret involves two main issues: (1) whether there is valuable and secret business information; and (2) whether this defendant used improper means to obtain that information.

    >>top


    Question: When is a company deemed "publically traded"?

    Answer: A publically traded company is one which trades stock on any of the stock exchanges such as the NASDAQ or New York Stock Exchange. Any member of the public can buy and sell shares of the company stock.

    >>top


    Question: What are "Exemplary Damages"?

    Answer: Exemplary damages are punitive damages, which are defined as "Damages awarded in addition to actual damages when the defendant acted with recklessness, malice, or deceit." Punitive damages are intended to punish and thereby deter blameworthy conduct. The Supreme Court has held that three guidelines help determine whether a punitive-damages award violates constitutional due process: (1) the reprehensibility of the conduct being punished; (2) the reasonableness of the relationship between the harm and the award; and (3) the difference between the award and the civil penalties authorized in comparable cases. BMW of North America, Inc. v. Gore, 517 U.S. 559, 116 S.Ct. 1589 (1996)."

    >>top


    Question: What is a "Permanent Injunction"?

    Answer: An injunction is "A court order commanding or preventing an action. * To get an injunction, the complainant must show that there is no plain, adequate, and complete remedy at law and that an irreparable injury will result unless the relief is granted... [A]permanent injunction [is] [a]n injunction granted after a final hearing on the merits. * Despite its name, a permanent injunction does not necessarily last forever."

    >>top


    Question: What is a summary judgment?

    Answer: A procedure that permits a judgment to be granted to all or part of a case if there is no real dispute in the evidence that would require a trial to determine the facts. The judgment is often prompt and direct.

    >>top


    Question: What is the "principal register?"

    Answer: The main federal register of marks established by the Lanham Act. Trademarks, service marks, collective marks and certification marks may be registered on the principal register.

    >>top


    Question: What is "trade dress"?

    Answer: At one time the term referred only to the manner in which a product was dressed up to go to market e.g. a label, package, display card and other packaging. Today, the term refers to the totality of elements in which a product or service is packaged or presented. These elements combine to create the visual image presented to customers. This "trade dress" is capable of acquiring exclusive legal rights as a type of trademark---or, identifying symbol of origin. All aspects of appearance are potentially protected as trade dress

    >>top


    Question: What is a "generic" name?

    Answer: A word used by the majority of the public to name a class or category of product or service. A generic name cannot be protected or registered as a trademark or service mark. For example, no seller can have trademark rights in "telephone" or "oven." If a seller did have exclusive rights to call something by its recognized name, it could amount to a monopoly on selling that type of product.

    >>top


    Question: What are "actual and statutory damages" for a right of publicity claim?

    Answer: In a right of publicity claim, actual damages is the loss the plaintiff suffered due to the misappropriation of identity. The statutory damages is a minimum fine the court can assess, particularly if actual damages are difficult to assess. In California the minimun for statutory damages is $300.

    >>top


    Question: Does the Lanham Act protect against misappropriation of likeness?

    Answer: The Lanham Act may prohibit the unauthorized use of a celebrity's identity if someone uses the likeness, voice, or other uniquely distinguishing characteristic in a way likely to make consumers believe -- falsely -- that the celebrity sponsors, approves of, or is associated with the unauthorized user's goods or services.

    >>top


    Question: What is Trademark Misuse?

    Answer: Trademark Misuse is a theoretical concept which pertains to how a trademark holder handles its rights. It purports to be similar to the defenses brought in copyright and patent cases, which dictate that if the owner of the intellectual property rights (e.g. a patent or copyright) over-exerts its rights (e.g forces someone to buy an unrelated product to gain acess to the protected work), then the copyright or patent holder will lose its right to sue for infringement.

    Recently, the theory was employed in challenging Network Solutions' dispute policy which held that registered trademark holders had the right to have Network Solutions immediately freeze any allegedly infringing domain names until the dispute was settled. It was argued that often claims with little or no support were being alleged by Registered Trademark Holders so as to prevent possibly infringing sites from materializing. Although the trademark holder's registration (and rights) were not cancelled, the argument that giving "extra" rights to registered trademark holders was unfair ultimately led to a change in Network Solution's dispute policy.

    It is believed that the trademark misuse theory may still prove useful where a domain name owner is forced by a trademark owner to litigate or arbitrate a frivolous claim of infringement.

    >>top


    Question: When is parody protected from a charge of trademark infringement?

    Answer: Parody is a usage of a mark that pokes fun at the mark and does not confuse the public as to the source of the usage. In determining whether there is infringement the court balances the public interest in free expression against the public interest in avoiding consumer confusion. "A parody must convey two simultaneous--and contradictory messages; that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under trademark law, since the consumer will be confused." From Cliffs NOtes, Inc. v. Bantam Doubleday Dell Publishing Group, 886 F. 2d 490 (2d Cir. 1989)

    >>top


    Question: What is the purpose and effect of a cease and desist (C&D) notice in an alleged case of trademark infringement?

    Answer: If a trademark owner believes someone is infringing his or her trademark, the first thing the owner is likely to do is to write a "cease-and-desist" letter which asks the accused infringer to stop using the trademark. If the accused infringer refuses to comply, the owner may file a lawsuit in Federal or state court. The court may grant the plaintiff a preliminary injunction on use of the mark -- tell the infringer to stop using the trademark pending trial.

    If the owner successfully proves trademark infringement in court, the court has the power to: order a permanent injunction; order monetary payment for profit the plaintiff can prove it would have made but for defendant's use of the mark; possibly increase this payment; possibly award a monetary payment of profits the defendant made while using the mark; and possibly order the defendant to pay the plaintiff's attorney fees in egregious cases of infringement.

    >>top


    Question: What does it mean to have material "hosted" on a website?

    Answer: Hosting (also known as Web site hosting, Web hosting, and Webhosting) is the business of housing, serving, and maintaining files for one or more Web sites. More important than the computer space that is provided for Web site files is the fast connection to the Internet. Hosting allows the files to be stored in a location which is quicker for third parties to access. Typically, an individual business hosting its own site would require a similar connection and it would be expensive. Using a hosting service lets many companies share the cost of a fast Internet connection for serving files.

    A number of Internet access providers, such as America Online, offer subscribers free space for a small Web site that is hosted by one of their computers. Geocities is a Web site that offers registered visitors similar free space for a Web site. While these services are free, they are also very basic.

    A number of hosting companies describe their services as virtual hosting. Virtual hosting usually implies that their services will be transparent and that each Web site will have its own domain name and set of e-mail addresses. In most usages, hosting and virtual hosting are synonyms. Some hosting companies let you have your own virtual server, the appearance that you are controlling a server that is dedicated entirely to your site.

    >>top


    Maintained by USF Law School - IIP Justice Project

  • Frequently Asked Questions (and Answers)

    Chilling Effects Clearinghouse - www.chillingeffects.org
    disclaimer / privacy / about us & contacts