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Free Advertising or Trademark Infringement?



I’ve always thought it ironic that if you use a trademark in a movie or other medium, the owners would sue the pants off of you—but if you approach them in advance to sell “product placement,” they’ll pay you to put it in there.

Jason Schramm, who runs Jason Blogs and (and wants to rank #1 for his surname ;) ), may have this irony shoved down his throat. Another website of his, Kindle Report, is a website devoted to news about the Amazon.com-owned ebook reader, the Kindle. Kindle Reports was also an Amazon affiliate.

Which is how the site came to Amazon’s attention. Yesterday, Amazon emailed Jason to demand the trademark-containing domain:

At this juncture, we are willing to assume that you have registered and are using this domain name without a full appreciation of the above [explanation that Amazon associates can't use Amazon trademarks in their domains], provided that you are willing to assign this domain name over to Amazon.com. Please advise whether you agree to transfer ownership of the KINDLEREPORT.COM domain name to Amazon.com. If so, you will be contacted with further details.

If, however, we do not hear from you regarding the above within ten days from the date of this email, we will have no alternative but to terminate your associates account effective as of the date of this email and you will not receive payment for Q1 2008.

Jason says his Q1 2008 earnings thus far are about $45.

The email closes:

Please know that we value our relationship and we look forward to hearing from you. Please do not hesitate to contact me if you have any questions.

Right. Anyway, while these terms were doubtlessly in place when Jason registered, the agreement says that a site containing Amazon trademarks in its domain wouldn’t be accepted in the first place. Furthermore, nowhere in the associates agreement does it state that a remedy for not complying to their rules might be forfeiting your domain.

Amazon could conceivably demand the domain if Jason were cybersquatting. The Anticybersquatting Consumer Protection Act was written to provide such a remedy. There are three criteria to meet under the law:

  • the trademark owner’s mark is distinctive or famous
  • the domain name owner acted in bad faith to profit from the mark
  • the domain name and the trademark are either identical or confusingly similar (or dilutive for famous trademarks)

There is also a safe harbor provision that states that bad faith intent “shall not be found in any case in which the court determines that the person believed and had reasonable grounds to
believe that the use of the domain name was fair use or otherwise lawful.”

Is it fair use to report news about a product? The content of his website is focused on news stories about and usage tips for the device. Is this likely to cause “consumer confusion,” as trademark law states?

As of last night, Jason removed his Amazon associate links. In the footer of his page, Jason acknowledges that “The Kindle Report is not affiliated with Amazon.com. Kindle is a registered trademark of Amazon.com.”

What do you think? Does Amazon have a right to demand the domain? Should they look at this as free advertising or trademark infringement?

  • http://www.winningponies.com/ Jason

    Although I see where Amazon is coming from with this, because they do own the trademark, it’s crappy that big companies have to bully little guys out of domain names because of it.

    Myspace is doing the same thing, and it seems to be their way of protecting their brand… It just leaves a bad taste in my mouth when large companies with huge revenue have to go after small fish and force them to take their sites down… but I guess in an online world where people abuse trademarks, the companies have to protect what is rightfully theirs.

  • Jordan McCollum

    However, I think that this is a legitimate use of the trademark. There are lots of fair use exceptions to trademark law.

  • http://www.intuitive.com/blog/ Dave Taylor

    Actually, the whole point of trademarks is to be able to control the use of your mark in the industry, so it not only makes sense for Amazon to go after domain registrations that infringe, but it’s actually *required* to do so by trademark law. I’ve received these sort of letters in the past from companies like Southwestern Bell and, more recently, Porsche.

    Sounds to me that while Jason is doing a service that Amazon should appreciate, he’s doing it in a way that is inconsistent with patent law and it’s quite reasonable for Amazon to ask him to stop.

    It’s not “bullying” as much as that might make for a good headline. It’s defending the company trademark and if you check out uspto.gov you’ll find that Amazon could *lose* its trademark if it doesn’t “actively defend” its use in the marketplace.

    Finally, one more observation, based on my own experience with these situations: the legal team that goes after possible trademark infringements has no communication with and is probably physically quite distant from the marketing department, and doubly so at a company like Amazon.

  • http://www.goodnightmoonfuton.com Futon-Matt

    This is a really tough issue. I can see both side of the argument.

  • http://www.livingonadsense.com Living on Adsense

    I could side with both parties in this situation.

    Due to a past situation that I had to deal with I would have to side with Amazon. It is extremely important to protect your brand. A few years ago I created a product that was sold online and shortly thereafter purchased a domain name that similar to mine. It turns out this person was also much better a SEO than myself, and his domain ranked much better than mine. His site absolutely destroyed my brand and led to many other copycat sites.

  • Jordan McCollum

    I’m not sure we’re all understanding one another here. He’s not trying to dilute their brand power or market power; he’s reporting about their product. He’s not selling anything, so he obviously doesn’t meet the requirement that he’s acting in bad faith to profit from the mark.

    As a reminder, trademark law allows a nonowner of a trademark to use the mark to refer to the actual trademarked product or its source. In addition to protecting product criticism and analysis, United States law actually encourages nominative usage by competitors in the form of comparative advertising.

  • http://www.gowfb.com GoWFB

    I think they sould look upon it as free advertising and be thankful.

  • http://www.marketing-tools-review.com Hock

    Amazon has every right to block his activities if he accepted the agreement when he signed on as an Amazon Associate. Companies should be able to protect their trademarks and how they are used.

    The whole idea behind setting up that site is probably to capture commissions from any sales of the Kindle (or anything from Amazon for that matter) and to capitalize on the buzz generated from the Kindle.

    Having the word “Kindle” in the domain name is a well-known SEO technique. Without being able to promote Amazon links, the Kindle Report can try other means of monetization… that is, until Amazon forces him to give up the domain.

  • http://tcattorney.typepad.com/anticybersquatting_consum/ Enrico Schaefer

    Sorry folks. This is black-letter law cybersquatting. You CAN NOT register domains using third-party trademarks.

    “He’s not trying to dilute their brand power or market power; he’s reporting about their product.”

    You automatically dilute someone’s brand by registering their marks as a domain. And he is/was trying to profit by increasing his affiliate revenue / andd now is obtaining Google adword revenue.

    “He’s not selling anything, so he obviously doesn’t meet the requirement that he’s acting in bad faith to profit from the mark.” Diverting traffic is also proof of bad faith. Clearly, he is trying to divert traffic.

    What if every affiliate of Amazon could register domains using their trademarks on the basis of fair use?

  • Jordan McCollum

    Actually, I think it’s pretty clear that he was absolutely NOT trying to divert traffic from Amazon. If so, he’s doing a pretty crappy job. Furthermore, if the product doesn’t make sales and news, he loses the purpose behind his site. Let us remember that the reason his site operated was to promote the reader and books available for download, all of which were almost exclusively available from Amazon in the first place. The cybersquatting and trademark laws simply don’t fit the case.

    However, as mentioned, Amazon should have never allowed the site to become an affiliate. The first article of the agreement says that domains with their trademarks can’t participate. It doesn’t say that if for some reason affiliates operating domains with their trademarks pass their obviously deficient application review, applicants or affiliates will be forced to surrender their domains. I wouldn’t argue against their denying his application in the first place or discontinuing their agreement now.

    Finally, the ACPA includes an exception to bad faith which is pretty broadly worded: that if the defendant even thinks their use is fair use, it can’t be bad faith.

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  • http://www.capatrex.com Alexis

    You can resuse trademarked names on websites as long as you don’t use it to directly sell your competing product, and you refernce the owner of the mark. I do it a lot!

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  • http://www.hotproductsplus.com Mike Montague

    Unless he gets a cease and desist from Amazon, I wouldn’t touch a thing.

  • http://www.craigs-blog.com Craig

    Does anyone know if it is legal to use a competitors trademarked name in a domain name as long as it is differentiated from a competitors site?

  • John

    because of such news, we decided to enroll into Google’s Adsense than Amazon’s affiliate program for our website.

  • Janet Eaton

    Does anyone know how trademarking works? I would like to file a trademark with the USPTO.

  • http://www.traverselegal.com Enrico S.

    Sorry guys. Domain names are protected under law by the Anti-Cybersquatting law. Use of a domain name incorporating someone else’s trademark is not going to qualify as fair use.