Nominative use/legitimate business use?

[Silverwire]

Finally decided to start a new thread for this question, it seemed lost buried in another thread.

Scenario:
A new and unique type of product is invented and the manufacturer applies for a trademark. The product is so unique, that there is no other logical or recognized way to categorize or refer to it, other than by that name (which is fanciful).

Company A is not an authorized dealer, and has no formal relationship with the manufacturer but is getting into the business of repairing, or renting, or reselling used, or marketing accessories for this product.

Can Company A use the name within their domain name (with an additional second generic term like “_______Accessories.com” or “_______Repair.com”) or within their metatag keywords as nominative use while providing proper disclaimers within the website to prevent consumer confusion? Is this a legitimate business use? Otherwise, there would be no other way to find this company on the internet as it relates to this product.

 

[jberryhill]

There was a very good recent case on this out of the US 7th Circuit Court of Appeals concerning the use of the domain name bargainbeanies.com by someone who was selling Beanie Babies:

http://www.ca7.uscourts.gov/op3.fwx?submit1=showop&caseno=02-1771.PDF

Rather than to summarize, it is worth reading the whole thing on your own to get a sense of what considerations were important.

 

[DNQuest.com]

That was a very intereseting read. A good decision and well explained.

 

[Silverwire]

Mr Berryhill,

Don't know how to thank you enough! I have learned so much from all your posts.

I just hope it's consistently applied and holds true for the UDRP as well (though you've previously made me aware of the MercedesShop.com case, there was a dissenting opinion there as well. http://www.dnforum.com/showthread.php?s=&threadid=8173).

DNquest:

A good decision and well explained.

I hope you're not talking about this sentence:

The number of prestigious
names is so vast (and, as important, would be
even if there were no antidilution laws) that it is unlikely
that the owner of a prestigious trademark could
obtain substantial license fees if commercial use of the
mark without his consent were forbidden despite the
absence of consumer confusion, blurring, or tarnishment.

or is it just me that had to read it 6 times to think I maybe have a clue?

 

[dtobias]

It's interesting that the court case cited here mentions "Tiffany" as an example of a famous trademark that might have legal remedy against dilution. Could Tiffany & Co. then have sued the '80s teen singer Tiffany for using her own name? That certainly seems to be a "dilutive" use, given that it created an association in the public's mind with teen pop rather than fine jewelry, and after she declined in popularity, it might even be seen as "tarnishment" in that the name was then associated in the public's mind with a "has-been" former celebrity. But, however, that actually was her birth name, and is a fairly common first name in fact, so it's dubious that the jeweler, however famous and long-lived it is, could make a legitimate claim to complete exclusive ownership of the name in all contexts. And it doesn't appear their lawyers made any such attempt.

For that matter, did the author and publisher of the book "Breakfast at Tiffany's" have permission to use the name, or the producers of the movie of the same name? Or, for that matter, the music group Deep Blue Something which had a song "Breakfast at Tiffany's" that refers to the movie which refers to the jeweler? More trademark dilution, it would seem, but probably fair use anyway, as is the use within the Eagles' song "Hotel California" of the line "Her mind's Tiffany twisted".

This stuff is of some personal interest to me, since one of my own domains is tiffany.org, used for a fan site about the above-mentioned singer. I've had it for over five years and have not been hit with any UDRP, lawsuit, or C&D letter.

 

[DNQuest.com]

Silver... I will admit that some areas I needed to read slower...

Dan..... Tiffany Did the get the Playboy she was in?

 

[jberryhill]

I defended the mercedesshop.com case, and there is a mixed record for the argument in prior UDRP cases. I believe at this point in time, the 7th Circuit decision adds force to the argument that prior UDRP cases going the other way lack.

Some other decisions that are well worth reading on the subject are:

Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) (no infringement where repair shop used the words "Volkswagen" and "VW" in advertisements merely to convey information about the types of cars he repaired).

New Kids on the Block v. News America Publishing, 971 F.2d 302 (9th Cir. 1992). (Newpaper can use "New Kids on the Block" in an advertising promotion where reference is made to the band by that name)

But the all time best read on this subject is the Ninth Circuit's decision in Mattel v. MCA over the use of the term "Barbie" in the song "Barbie Girl" by Aqua.

http://www.ca9.uscourts.gov/ca9/newopinions.nsf/2507FB5DDCB94D7088256C000051F3B8/$file/9856453.pdf?openelement

The final order of the court is "The parties are advised to chill."

 

[jberryhill]

"Don't know how to thank you enough! "

I prefer paypal to dnforum bucks.

 

[Silverwire]

Originally posted by jberryhill
"Don't know how to thank you enough! "

I prefer paypal to dnforum bucks.

Let me rephrase that: Can't afford to thank you enough. :sad: Seriously, you are welcome to bill me in dnforum bucks. Not sure I have enough of those, but PM me whatever you think is fair. How do I deduct those on my tax return? (or is that a question for Howard, and then will I have enough dnforum bucks to pay his tax advice invoice?)

 

[Silverwire]

Never mind with the PM invoice, I just paid 233 DNbucks to you (my entire DNforum life savings). I'll just leave it off my tax return, so you won't have to declare the income.

 

[HOWARD]

The IRS doesn't have anything in its code about DNBucks, so I'm afraid that they are not deductible.

However, if domains are your business, and not just a hobby, any expenses related to that business ARE deductible. It's equivalent to the barter system. If you provide a service in exchange for legal advice, it becomes a business transaction. You would have to pick up the income based upon the value of your services and deduct the cost of the legal advice. But don't try this at home. See a professional first.

 

[Silverwire]

Originally posted by HOWARD
The IRS doesn't have anything in its code about DNBucks, so I'm afraid that they are not deductible.

However, if domains are your business, and not just a hobby, any expenses related to that business ARE deductible. It's equivalent to the barter system. If you provide a service in exchange for legal advice, it becomes a business transaction. You would have to pick up the income based upon the value of your services and deduct the cost of the legal advice. But don't try this at home. See a professional first.

So I consider my contribution of posts to this community as a service and receive consideration in DNbucks. I generously estimate the value of my role at .02 a post. I pay 233 DNbucks for a service, that's $4.66 I can deduct, (EDIT: offsetting the 4.66 in income.) Hmmm, how can this be a hobby, the tax shelter is looking way too attractive now.

Now, you and Mr. Berryhill and the other esteemed attorneys on this board have posts valued at about $100 per Dnbuck (just assuming for a second you’re all even), so 233 Dnbuck income is like $23,300. Hmmm, the fair market value of a DNbuck is getting confusing, especially considering the million dollar domain names you can purchase in a DNbuck auction with just a few Dnbucks!

Howard, where am I going to find a professional with experience converting DNbucks to fair market value? 10 DNbucks to you for the e-mail address.

 

[HOWARD]

"Howard, where am I going to find a professional with experience converting DNbucks to fair market value? 10 DNbucks to you for the e-mail address"

Sorry Silverwire. Don't have an answer to that one.