SilentKnight

A few years ago we were unexpectedly contacted (phoned) by the 'in-house' attorney for a major westcoast adult video production company, regarding the name of a website domain we owned at the time. He told us during the call that his company was upset with our use of a word (an adjective - one of two words in our domain name) - which was shared by his company. He claimed his company had a trademark on the word, and that since we were both in the adult industry, he felt we were "riding the coattails of success" of his company with our use of the word.

Although I was well aware of the company - having been in the adult industry many years at this point, our website had absolutely nothing to do with their operations.

I pointed out the fact that although we were obviously both in the adult production industry - we specialize in BDSM & fetish...while his company primarily produces only mainstream porn (non-fetish). He argued that it didn't matter - they regarded it as trademark infringement, and insisted that we close the website immediately. I went on to inform him that the website had nothing whatsoever to do with his company, it only featured our own original content we produced ourselves, and there was absolutely no resemblance to their trademark image or identity. His argument was entirely based on the use of ONE WORD in our domain name.

After getting off the phone with the clown, I was concerned enough to contact our attorney, who referred me to another top-notch trademark and copyright litigation attorney in Toronto. I called and spoke with them at length for an hour, explained the situation fully...and asked what my next step should be.

To make a long story short, the attorney suggested we simply offer to sell them the domain. He advised that although they may have had the word internationally trademarked as part of their corporate identity, chances were slim they'd win their case in court if they decided to press the issue. But he also advised it would likely ruin us financially fighting against them if we chose to do so.

So in the end I decided to extend an offer to sell. Between our lawyers we came up with a price (much higher than the domain was ever worth - or had generated in revenues in the few years we'd operated it)...and we sold it off to them. Today they simply use it as a re-direct domain.

Its somewhat ancient history now with us...we've obviously moved on. But I've always been curious as to how often situations like this arise in the industry. We ended up profiting, but that wasn't really the point. For the record, I can't/won't mention the domain or the production company involved since we agreed to non-disclosure during the terms of the sale negotiated between the lawyers.

My question - has anyone else gone through this bullcrap in the past with large bullying corporations that use intimidation against smaller companies?

And if so, what was your course of action at the time, and the outcome?


SilentKnight

SilentKnight

**bump**

spacedog

well, good that you profited from it, but legally, you could have told them to go fuck themselves. A single word is not trademarkable.

A coined term is one thing, like if you had Pepsi Whores.

The word Pepsi is trademarkable, but the word Whores is not.

So, if you had a string of common words that are nouns, verbs, adj, etc, legally, the other company has no right to claim trademark to it.

Like; freepornvideos.com cant do jack shit if someone uses freepornmovies.com, etc

After Shock Media

That varies.
Try defending yourself vs Nike if you had justdoit.com (common nouns, verbs).

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aico

So how exactly did Paris Hilton trademark "That's Hot" and Donald Trump "You're Fired"???

spacedog

because they are phrases, slogans. A slogan and phrase is trademarkable, but not a single word, unless the single word is a made up word like google, or the single word is a product name like pepsi or coke.


like mcdonalds trade marked i'm lovin it

a slogan is trademarkable, but not a common word singualrly

SilentKnight

Appreciate the input thus far, but it wasn't so much a question of whether or not the single word could be trademarked, but whether any of you had experiences with large companies attempting to intimidate your smaller one with such tactics...and what was the outcome.

Had they been a small or even medium-sized company I wouldn't have hesitated to tell`em to go take a flying fuck. But this one in particular can buy probably 90% of everyone here on GFY - and that wasn't something we wanted to financially tangle with at the time.


SilentKnight