NONE: Re: ONLINE-ADS>> pursuing copyright/trademark infringements
Re: ONLINE-ADS>> pursuing copyright/trademark infringements
Cliff Kurtzman (cliff_at_tenagra.com)
Sat, 22 Mar 1997 12:00:22 -0600 (CST)
I received so many replies to my post on pursuing copyright/trademark
infringements that I've tried to edit them down into something manageable
and add some commentary. Obviously I've hit a sensitive topic. Many
thanks to all who responded!
Basically replies were split into two camps: those that felt it is not a
good idea or just not worth the time and effort to mess with infringers,
and those that felt it is necessary to protect your copyright and trademark
rights. Lets start with some of those who felt I shouldn't worry about it:
--------------
Bala Pillai <bala_at_sydney.net> wrote:
My take - and yes like all salient issues there's ying-yang - is live and
let live. On balance, in cases like this, I would say the maxim "bad
publicity is better than no publicity" applies. But of course, each of us
has to decide for ourselves.
Our rice bowls (income) in the Internet world are so ambivalent that I think
building relationships is more important that adhering to rigid hard and
fast rules. Just my 2 cents.
--------------
"Steven Heath" <Steven_Heath_at_grey.net> wrote:
I think it all depends on what changes they have made to the graphic and
what context they are using it.
If the context is is bad, i.e, "Click here for a the WORST website in the
world" and the here is your logo. Then you have a problem :-)
If the context is good but the graphic is poor then do you risk "pissing
off" the site by asking them to change the graphic or do you live with the
poor graphic.
In a nut shell I think the only answer is this. Each case must be reviewed
on its own merits. Blanket statements can only be used by those with a
large legal group to be able enforce the edit or at least threaten webmasters.
The argument of "I have done this hundreds of times and youa re first to
ask me to stop" is like telling a polce when you have been caught speeding
"man, I travel this speed everyday for the last year, therefore I cant be
doing anything illegal"
--------------
Bill Pohlman <apltd_at_apltd.com> wrote:
I read with interest Cliff's dilemma as to handling trademark infringement
vs. traffic.
As with anything you have to weigh the good with the bad. Somebody once
said, "I don't care what they say about me as long as they spell my name
right." I wouldn't go that far, but if I'm getting good, quality traffic
from the site I wouldn't make too many waves. Not unless, of course, they
were ruining my image with their manipulation of my graphics. Cliff, sorry
to say it, neither one of us is Disney. We have to look at traffic vs.
image. With Disney, they look at image and the traffic will take care of
itself.
[Note from Cliff: Starwave wasn't Disney until a few weeks ago either, but
now they indeed are Disney (33% Disney to be accurate), and have 90 million
in the bank to go along with it. In a dynamic industry that is changing at
an incredible rate, it is hard to say where Tenagra or any of the rest of
us will be in the months or years ahead. Over the past three years I have
invested very considerable resources in building Tenagra's brand identity
on a global scale. Because of our efforts in this area we have become one
of the best known agencies within our industry. I've always felt that if
we built our name, reputation, and capabilities that business and traffic
would follow. And it has. We may indeed not be a company of the scale of
Disney, but a negative image or perception of our company could well affect
us proportionately more than it would a business of Disney's size.]
--------------
[I've included this next note because there are some good points here, but
I've left the author's name off because it was sent to my personal address
and not to the list posting address. --Cliff]
Cliff, what's the upside to this situation? Nothing. Let the little
[expletive deleted by moderator] go along his happy way. The fact is that
a guy with these kinds of business practices is probably not doing a lot of
business anyway. And if he IS doing business, he's right -- he will drive
business to you.
So what's the big deal?
Now, if he were misrepresenting you, that would be another story. But if
he's not, your time is better spent making money, not spending it.
Besides, he's the one guy you caught. There must be a few hundred more you
just haven't seen yet.
-------------- And now from the other camp...
Jim Sterne <jsterne_at_targeting.com> wrote:
>the referring site had "borrowed" and altered one of my site's
>branding graphics
>The graphic's alterations were not flattering.
>is it worth it to let someone infringe
>on your copyrights and trademarks and alter your branding in return for
>free traffic to your site?
Nope. Not a bit. If it "fits with the background
and style" of that person's site - it's no longer
your mark.
By definition, you must protect your trademark
or lose your rights to it. By conception, a logo
builds equity when it is recognized over and over
again. Somebody changing your look is messing with
your brand. You lose control. I could go on and
on about how important brand is on the Net.
Finally, the note you got from God's Gift to
Web Sites makes me think you'd be much better
off without a link from there. Let your
competitors deal with this headache.
--------------
Adrienne Kramer (of ASK Management) <ASKMGMT_at_aol.com> wrote:
I couldn't imagine a fate worse than death other than torture. Branding is
the most important part of any business. It is your image, reputation and
why customers select your product over another one. Corrupting your image
(altering a trademark, copyright, etc.) is a slow painful death for any
business.
Frankfurt, Garbus, Klein & Selz, a NYC law firm that specializes in
entertainment and media, has done extensive work on protecting the integrity
of trademarks, patents, copyrights, etc. In the last couple of years, Rick
Kurnit of FGK&S, has published many papers on translating this work to the
web.
Given the quality product that you produce, I hope you would stop the
bootlegger from denigrating your product's image.
--------------
"Kim M. Bayne/wolfBayne Communications" <kimmik_at_wolfBayne.com> wrote:
At 10:52 PM 3/18/97 -0600, Cliff Kurtzman <cliff_at_tenagra.com> wrote:
>>The graphic's alterations were not flattering. They were not malicious --
>let's just say the person who altered them won't be winning any graphic
>design awards soon.
This is VERY common, whether or not a person has your permission to use your
graphics or not. Distributors and resellers in computer and electronics are
famous for altering graphics from manufacturers. I have often seen blatant
color changes, resizing, changed type styles, word mark repositioning, and
so on.
It amazes me how people do not understand the concept of corporate identity
and the precision that goes into establishing a consistent look. It makes no
difference whether the person is a copywriter or a graphic artist.
I have often seen artists redraw a logo, simply because they couldn't read
the graphic file provided. What looks like a perfect match to them looks
like an abomination to a marketing manager intimately familiar with a logo
and wordmark.
>He was also infringing on my copyright and altering a graphical
>representation that is used to brand my site in a manner I considered
>inappropriate.
Now THAT is the issue. For the purposes of this discussion, let's call this
guy WEB ROGUE.
>What I did (as I usually do in such cases) was send him a nice friendly
>e-mail, thanking him for linking to my site.
It sounds as if you were very professional in your approach.
>In this case, the reaction was rather different and quite hostile.
Sounds like someone who didn't get enough attention as a child. I wonder how
WEB ROGUE would have reacted had you been in the "sue mode" and asked your
lawyer to contact him instead.
I'm siding with you, Cliff, mainly because you tried to resolve the issue in
the most honest and straightforward method, and you even offered him some
alternatives. That is ALWAYS the best, first approach to use whenever
someone has infringed on your copyright.
>"Are you guys out of your damned minds? Everyone, individual or
>corporate, desires as much publicity for and links to their website as
>possible."
This is not publicity. This is advertising. WEB ROGUE 'acts like' he is
doing you a favor. He may even believe that. However, since he is delving
into the area of advertising, YOU call the shots. You have the right to ask
someone to remove an advertising link and your logo from their site.
Someone once grabbed the HTMARCOM logo and linked to my site from
theirs...without my permission. Their site was for multi-level marketers, a
link I considered totally inappropriate for high tech marketing
communications in the computer and electronics industry. I ask him to remove
the logo and link and he did.
Public relations, such as running a story about you in an editorial, is less
under your control. But he did not do that. WEB ROGUE is in effect
MISREPRESENTING himself, as though you had placed an ad at his site. He is
possibly doing this to establish his site as a future ad placement
opportunity, which is a revenue issue. So he could be using your company to
endorse his site without your permission.
Compare this (unauthorized advertising placement) with editorial or free
speech issues (a e-zine, a fan list or an online user forum). You'll see
that the two have entirely different purposes. What is WEB ROGUE's purpose
in offering these links? Perhaps you could ask him his purpose in providing
this 'free service.'
I remember when Jim Sterne placed the Sun logo at his site for his
'Marketing on the Internet' seminar series. Jim had established a
relationship with the company first and they were sponsoring his seminar.
His link to their site enhanced his credibility, but he had obtained
permission first.
>"Then you BITCH about me providing publicity and a link for you!"
WEB ROGUE's defensiveness makes me suspicious of his true motives. What was
that quote about protesting too much? Again, this is not publicity! If it
was just a hyperlink, then it would be informational. If the hyperlink
contained his two cents about your site, then it would be editorial. But the
fact that he is using your logo...well...
>So my question to the list is this: is it worth it to let someone infringe
>on your copyrights and trademarks and alter your branding in return for
>free traffic to your site?
Absolutely not. There is no proof that he is ADDING to your efforts. You've
already checked your logs and have found that he was only sending a few
referrals a
month. His indiscriminate efforts CAN damage your branding efforts. Someone
might think YOU supplied him with that ad and could discount YOUR
professionalism as a result.
>I know Disney won't allow it.
Forget Disney. You shouldn't allow it either. If WEB ROGUE had asked your
permission and revealed his intentions ahead of time, you could have worked
with him.
>I'm interested
>in hearing if others working to build major online brands feel the same way
>as I do, of if you have a live and let live attitude when you encounter
>similar circumstances.
I would say that these are two concepts that are NOT mutually exclusive. You
CAN protect yourself on the Web without stepping on toes. There ARE software
packages out there that allow you to do just that.
For more details, read my article:
"To Catch a Thief: Protecting intellectual property on the World Wide
Web," Marketing Tools magazine, January/February 1997, pg. 60.
http://www.marketingtools.com/publications/mt/97_MT/9701_MT/9701M60.HTM
[Note from Cliff: I did read this article and recommend it to other
members of this list.]
The bottom line: Cliff, you have to decide if he IS damaging your branding
efforts and whether you can quantify it in some manner to force his
cooperation. You also have to decide whether or not his efforts are
significant or just a thorn in your corporate identity side. Sometimes our
pride can play a big role in these situations...
WEB ROGUE may truly believe he is doing you a favor, and he obviously
doesn't understand, or care to understand anything else. So you may have to
take a different approach. Perhaps you can offer to redo his banner so it
meets your corporate identity needs. Let him know that you understand his
situation but that you have certain corporate requirements. Phrase it as
though you are doing HIM a favor.
If he still refuses to work with you, then request that he remove the
unauthorized advertisement because of it's confusing misrepresentation and
distortion of your corporate identity. As a LAST resort, you may have to
have your lawyer fire off a polite request to stop. But only as a last resort.
--------------
Julio Fernandez <CPNet_at_aol.com> wrote:
Cliff and fellow list members:
If we have a story about your company (Tenagra Corporation) and don't
make a link to you (www.tenagra.com), it does not help our readers or
your site.
For the same reasons, we want college newspapers (actually anybody) to
link to our College Press Network web site.
We help webmaster by giving them a logo and directions on how to use it
on their web site. Most people use the logo, others just link to us
without a logo.
The solution: I don't know. Cliff did his work by providing a graphic,
sent a nice email asking them to change the image and now the person does
not want to work with him. What would Disney do? When they had their 101
Dalmatians movie out, they gave webmasters a background to use on their
sites.
I think Cliff should have a second email to this person, with "nice"
words like the first one but remind him that he is using YOUR graphic on
his site. If he gets upset he will end the link to you.
--------------
Karl Kraft <karl_at_relada.com> wrote:
>is it worth it to let someone infringe
>on your copyrights and trademarks and alter your branding in return for
>free traffic to your site?
Absolutely NO.
I am not a lawyer. However, I have done my own trademark and copyright
work, and have a registered trademark. I have managed to defend, with
success, a dozen tradmark issues that I have had both with the registered
and non-registered marks. I've fought off high priced lawyers, and gotten
others to stop infringing on my mark.
I am working on making a web brand (www.relada.com), and have to deal with
these issues on at least a monthly basis. Now that we are doing a web site,
the amount of trademark work I do has gone up. (sigh)
The web has a copy and paste mentality. It started with HTML, moved into
graphics, and now (where most problematic for us), into taking Java
applets. We review our log files each morning for odd activity, and when
we find an infringement, we start up the action right away. If you fail to
protect a trademark, you can lose all right to that trademark. Also, if you
let an infringing site use your graphics, it's another source for a third
party to take the artwork from, that you can't log or monitor.
So by all means, when you find an infringer act on it. Unless you
authorized them to use your trademark, you are losing control of it, and
the referals aren't worth losing the ownership of the mark.
We generally send out polite letters via email. We also use the regular
net tools to contact the web administrator, and others involved to get
things moving. We also make stickers available and work with people who
want to make links to our site. That's the human side of getting what you
want. The lawyer side is using legal action.
>
>In past similar cases, I have sometimes received a contrite note back
>indicating that the person would change the graphic. Most people seem to
>know they are infringing and are embarrassed when caught.
Exactly. I would say 99.4% know what they did was wrong, but figured that
the owner would never find out. It seems you've run into a professional
theif who lacks morals annd doesn't care about right and wrong. These
people tend to need more persuasion.
>"allow me to tell you that over the past several years I
>have used HUNDREDS of logos from corporate and individual websites to
>provide surfers direct links from my site to those sites. In the majority
>of cases I have made slight modifications to those logos..." <snip>
>
Well, save the email in case you need to go to court.
Normally, I try to get the person to use an approved sitcker, in the hopes
of keeping the link. This case sounds beyond that. I would politely ask
him to remove the link, and explain that you don't like modified versions
of your artwork being available on the web (ie act the control freak) If
it doesn't get better in 72 hours, then I move to warning them that the
legal department / boss / supervisor / parent company says that they will
have to start legal action, and can't we please end this now by just
removing the link. That usually gets them to remove the link, and you've
ticked him off, but that's life.
If that doesn't solve it then you do need to start looking at legal action.
--------------
Summary from Cliff:
Here is what I think about all this:
Image is important. Very important. While Tenagra is probably not going
to spend a great deal of time or money searching the web for people
infringing on its copyrights and trademarks, when we find such instances we
will probably continue to respond in as constructive manner as possible.
This may include asking the party to exchange the graphic, or just put up a
statement acknowledging our copyright and that the image is used with
permission. In this particular case, WEB ROGUE has removed the graphic and
told us he never wants to hear from us again, and I sure won't lose any
sleep over this one, given the unprofessional nature of his site and
correspondence.
I have unfortunately been involved in many instances where our content or
graphics have been ripped off by other sites. (Hopefully this is a
reflection on the quality of the content we publish!) This particular case
that I brought to the attention of this list was complex because the person
that took our artwork was really not profiting from his actions -- in fact,
a good case could be made that we were the real beneficiaries of his
actions. But in many cases I've been involved in the people stealing our
content have done so for their own commercial purposes, without either
hyperlink or attribution, and in those cases the course of action is much
clearer.
I've also been on the other side of the fence. We once had one of the
advertisers on one of our sites put something on their ad that potentially
infringed on the trademark of third party. Of course, we would not have
allowed this if we knew it to be the case, but we were unaware of the
implications of the ad. We received a very intimidating letter from the
lawyers of the third party.
>From my point of view, this kind of action did not put the third party in a
very good light. All they (or their lawyers) had to do was send us an
e-mail letting us know the facts and requesting that we and our client
change the ad. If that had failed, then they could have started the legal
threats. By failing to attempt to resolve the situation in a civil manner
they only alienated us and our advertiser. In the end, what our advertiser
was trying to convey in the ad had only positive implications for the third
party. The advertiser had just not done it in the proper manner, and it
needed to be changed.
--Cliff
Cliff Kurtzman
The Tenagra Corporation
http://www.tenagra.com/
281/480-6300
