Trademark Issue

**kingspice** · Mar 25, 2008 17:56

Hi,
I operate a musician fansite with the domain URL:
www."celebsfirstname"star.com

Recently i've been approached by the musician's lawyers asking me to:
(1) transfer ownership of the domain name, (2) immediately cease and desist using in any manner the blah mark (or anything confusingly similar thereto or which is likely to cause confusion), and (3) immediately cease and desist from reproducing, publicly performing, publicly displaying, and/or distributing any sound recordings, musical works, lyrics, and videos featuring blah or which are owned by her in whole or in part.
as I am infringing the trademark and copyright of her materials.

I have removed any music clips, videos etc from the site but obviously don't want to have to transfer my site over.
The site makes it perfectly clear it is an non-official site. Does anybody have any opinion on where I stand? I didn't think it was a problem using the celebrities firstname in the domain name?

Thanks
Gareth

**TheAnarchist** · Mar 25, 2008 20:14

If the name is a common one (for examle, John), then I would think you'd be fine. If the name is not a common one (for example, Madonna), then I would guess you have some problems on your hands.

The only useful thing I'm going to tell you is to sit down with a lawyer - the only person who should be answering your questions.

**shadowbox** · Mar 26, 2008 08:23

If it's infringing trademark, then there should be a registered trademark for the first name. It would have to be a really, really unique first name for you to have to hand over the domain IMO. They may have trademarked the 'brand', e.g. the face etc, and this may include the name. I know footballers do this to ensure their likeness cannot be used anywhere without permission - I would assume it's quite common in all celebrity areas.

**Ted S** · Mar 26, 2008 10:07

Let's start with the regular disclaimer, I'm not a lawyer, don't presume to give out legal advice and anything in this thread should be treated as discussion of the general concept only and not advice for your specific case. Consult an attorney before you actually act. Also to note: trademark law differs by geographic location; since you don't have one stated in your profile assume people will speak to their local laws -- mine being those of the US.

That all said, let’s jump in to the heart of the issue…

A trademark does not have to be filled or on record to be sued for trademark infringement in the US. Because celebrity names tend to be famous (obviously) and because sites about those celebrities are clearly similar and therefore potentially diluting to the mark there have been a good number of lawsuits on the subject. However, for the most part, the suits I’m aware of were for full name uses, generally with no other words involved.

Here are some relevant WIPO arbitration and court decisions:

Kevin Spacey v. Alberta Hot Rods
Over the domain kevinspacey.com ruled in Spacey’s favor
- http://www.arb-forum.com/domains/decisions/114437.htm

Julia Fiona Roberts v. Russell Boyd
Over the domain juliarobers.com ruled in Robert’s favor
- http://www.wipo.int/amc/en/domains/d...2000-0210.html

These cases point at a few major takeaways…

- “Stated simply, a celebrity’s name can serve as a trademark when used to identify the celebrity’s performance services” -See Roberts v. Boyd

- “[T]rademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association that common law trademark rights exist”

Whether someone uses a first name or a full name, they have a site built around the a celebrity and likely are profiting off it so there's really no question about it being "generic" (as would be the case if they had a site with "name" "word".com but had nothing to do with any stars using that first name.) However, using only the first name may be viewed differently than using the entire name. Also to note, in some of the cases I've read, having a true “fan” site is generally considered much better than having an aggregate site promoting multiple celebrities.

The real question here that I see is PR. That you've removed infringing material is nice but that doesn't fix any "damages" that may have been done or stop infringement, confusion or dilution if there indeed is any taking place. However, if you were actually sued it could, potentially, unleash a great deal of negative PR for the musician as they are attacking a "fan". That doesn't mean you can't or won't be sued, simply that there's more at stake then just getting your name.

So my opinion on the matter is that you’re in an interesting spot... you don’t have a blatant name registered and may be a true fan site but you’ve had materials up that may be copyrighted and may be profiting. If you want to keep the name, or consider keeping it, you really do need to talk to an attorney.