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?