Fair use of someone's Trademark on a website?

[legal.quest]

It's a website so it's global, but I'm really interested in US law.

I have a website that's basically a niche search engine. It indexes other websites and then lists the results. For example, say there is a company called "John Smith Shoes". My search engine would look at other websites and then list the prices of "John Smith Shoes" at those websites so people can easily comparison shop. I've received an email from "John Smith Shoes" claiming that I have used their Trademark without authorization and asking that I explain myself. I'm not in the shoe business and I'm only using their name in a search result that lists other sites. Like how any search engine would use the name of a company/product in it's search results. I don't think there is any consumer confusion that I could be mistaken for this company. Is this fair use?

The email itself seems like a form letter giving the impression that it's automatically generated by a bot that finds their Trademark on any website. How best should I address it?

thanks.

 

[quincy]

It's a website so it's global, but I'm really interested in US law.

I have a website that's basically a niche search engine. It indexes other websites and then lists the results. For example, say there is a company called "John Smith Shoes". My search engine would look at other websites and then list the prices of "John Smith Shoes" at those websites so people can easily comparison shop. I've received an email from "John Smith Shoes" claiming that I have used their Trademark without authorization and asking that I explain myself. I'm not in the shoe business and I'm only using their name in a search result that lists other sites. Like how any search engine would use the name of a company/product in it's search results. I don't think there is any consumer confusion that I could be mistaken for this company. Is this fair use?

The email itself seems like a form letter giving the impression that it's automatically generated by a bot that finds their Trademark on any website. How best should I address it?

thanks.

In what country are you located, legal.quest?

From what country did the John Smith Shoe complaint you received come from?

In the US, fair use is a defense to a claim of trademark infringement and not permission to use another's trademark.

A defendant in an infringement lawsuit can use "fair use" as a successful defense if it can be shown that the trademark was used in a descriptive way (to describe the goods identified by the mark, as when a car is identified as a Ford Mustang to distinguish it from other cars) and not as a way to trade off the name and reputation of the trademark and the trademark holder. Fair use can even allow for a little bit of consumer confusion.

Here is a link to 15 US Code, Section 1115 on defenses (e.g., fair use): https://www.law.cornell.edu/uscode/text/15/1115

Non-commercial uses of another's trademark, for comparative advertising and for journalistic accounts and for parodies can also be permitted. Specifics of use matter.

How you address any notice by a trademark holder that you are infringing on their marks depends on the trademark, the trademark holder and how you are using the mark. Countries each have their own trademark laws.

I suggest you sit down with an IP professional in your area of the world for a review of your exact business use of the trademarks belonging to others. Using trademarks of others can be done and is done - but it must be done carefully to avoid legal action being taken against you.

Good luck.

 

[tranquility]

Craziness. The US Constitutional theory of patent was to insure innovation. The law has morphed to making sure some make money by their theory of how they can make money. Best. Law. Ever.

Terrible situation. But, talk to Gawker about how money and litigation can ruin anything resembling your business model. We can point to the cases where the horrible concepts of a guy who thinks of something can prevent all other from such things. It is stupid. It is wrong. But, quincy is right on the law given. Read it. Learn it. Love it. An attorney can only let you know how much it might cost to challenge it. A great attorney might be able to give you your chances.

Get over it. Without a ton of attorneys, you don't get to make our life better. Move on, nothing to see here.

The question you ask is at the forefront of current litigation. Old companies, including media, have a visceral fear of ad blocker and links that go to content rather than to the top and drill down. They would prefer 4 or 5 clicks and viewing of advertisements than to drop right on down to what a person wants. Those 4 or 5 clicks are defeated by your search engine. To me? Information is information. If they are putting it out there, people should not have to jump through hoops to get there. (Unless there is a cost paywall to get there.) But, that's me. Anything one does on the internet should probably be run by an attorney to determine risk. My putting links up on this forum included. The law is weird and subtle in general. IP law? Astonishing.

Astonishing.

Do what quincy says. It is incredibly good advice. By any reasonable theory, no. But, be afraid. Be very afraid. Most anything you do is going to infringe on IP rights. While I've said it many times, I can make a case that hitting a website that happens to have a picture that is not licensed is a violation of law. Law that could put you in prison. Sure, that's not what would happen as everyone does it. Make sure you either have a great defense or are so insignificant to not have a person with money and a claim care.

Think Gawker. Read the news.

 

[quincy]

The trademark laws that will be most important to legal.quest are the laws of his own country because, if legal action is taken against him, it will be in his country in his country's courts and under his country's laws that he will be sued.

legal.quest might want to take a look at other websites that do company comparisons and check to see how the successful sites handle trademarks (e.g., check out trivago.com). If legal.quest's business is patterned after Trivago (which compares hotel rates), what he is offering could be a valuable consumer service.

That said, the use of logos can be tricky because there are often copyrights that attach to the logo designs (and copying logos, therefore, can infringe on the copyrights). The trademark names can come with less risk.

I think it is important for legal.quest to have his business plans reviewed by an IP attorney in his area because I am envisioning problems with price comparisons of retail goods - perhaps price comparisons that lead consumers to counterfeit goods over legitimate retail goods because of price differences. The price comparison of services is less risky.

 

[legal.quest]

First, let me thank everyone for responding. You've given me a lot to think about.

legal.quest might want to take a look at other websites that do company comparisons and check to see how the successful sites handle trademarks (e.g., check out trivago.com). If legal.quest's business is patterned after Trivago (which compares hotel rates), what he is offering could be a valuable consumer service.

That said, the use of logos can be tricky because there are often copyrights that attach to the logo designs (and copying logos, therefore, can infringe on the copyrights). The trademark names can come with less risk.

To clarify my situation, my site is very analogous to Trivago. Using a hypothetical Trivago like example. Say a fictional hotel "Hotel X" lists it's rates on sites like Hotels and Orbitz. Like Trivago, my site lists "Hotel X" as having rate A on Hotels and rate B on Orbitz. It's not a matter of deep linking. The sites listing "Hotel X", Hotels and Orbitz in this fictional example, are not objecting to it. Quite the opposite, some of the sites have asked to be listed. The objection is from "Hotel X" for using their name without authorization. I only use their name in order to list the rate offered by the other sites.

I am not using any logos. I am only using their name in plain text.

 

[quincy]

First, let me thank everyone for responding. You've given me a lot to think about.



To clarify my situation, my site is very analogous to Trivago. Using a hypothetical Trivago like example. Say a fictional hotel "Hotel X" lists it's rates on sites like Hotels and Orbitz. Like Trivago, my site lists "Hotel X" as having rate A on Hotels and rate B on Orbitz. It's not a matter of deep linking. The sites listing "Hotel X", Hotels and Orbitz in this fictional example, are not objecting to it. Quite the opposite, some of the sites have asked to be listed. The objection is from "Hotel X" for using their name without authorization. I only use their name in order to list the rate offered by the other sites.

I am not using any logos. I am only using their name in plain text.

Okay. But you are doing this with products instead of services, right?

I can see some legal issues with your website that may (or may never) arise. If a trademark holder has already questioned your use of their trademark on your site, however, it appears your site already might be attracting the wrong kind of attention.

Trademark holders are very protective of their rights and how their trademarks are used. They have spent a lot of money building a reputation with consumers and this reputation in turn makes them a lot of money. They do not want anyone or anything harming that reputation or the company's economic health.

For that reason, and because I can envision some legal issues that could arise that are better addressed before you invest too much time and money into your website, I recommend you have your website and the letter you received from "John Smith Shoes" reviewed by an IP attorney in your area. The fastest way for a new business to fail is by becoming involved in a lawsuit with a company that has a lot of money and a large team of lawyers.

With all of that said, I think your idea is a pretty good one and I can see where your website has a chance of being successful, this if all rights-protected material is handled with care.

Good luck, legal.quest.