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Archive for the 'TMCH' Category

Copyright is known to protect original works such as literary, dramatic, musical, artistic and other intellectual works. When a person creates original work, it is automatically copyrighted at the time of its creation. Copyright gives one an exclusive right to do or authorise another person to use, reproduce and distribute copies, perform or communicate in public, certain kinds of creative works. Copyright lasts, on average, 50 years after the death of its author for most creative works.

For a work to enjoy copyright protection, the creation must be both original and tangible. A simple idea in someone’s mind is not sufficient to give protection under copyright, as the idea must be expressed in a physical form.

In contrast, trademark is a mark, when used in trade, capable of being represented graphically, and which distinguishes the goods and services of one person from that of another. The coverage of a trademark is broader than copyright, as a name, symbol, word, sign, shape of a product, colour, sound or smell can be protected under trademark law.

The main requirement for a mark to be protected is to be distinctive and not generic in relation to the business for which it is used.

However, the question here is to know if brand logos can be protected under copyright or trademark. Logos are a complex matter, and the simple answer is that they can be protected both under trademark and copyright law.

In order for a logo to have copyright protection, it requires a sufficient level of creativity. As copyright cannot protect words, colours or simple logo designs, most simple logos do not have the required level of creativity and originality to be copyrightable.
Nevertheless, some artistic logos can qualify for copyright protection if it is considered as a piece of artwork, and separate from its use as a corporate identifier. In such cases, those logos can and are enforced using both trademark and copyright.

As an example, in the United States, the Digital Millennium Copyright Act (“DMCA”) gives the opportunity for copyright holders to enforce their right and send notices to remove any content containing copyrighted works from websites or social media pages. However, as there may be some confusion between copyright and trademark protection for logos, companies must be careful when relying on the provisions of the DMCA.

In the case CrossFit, Inc. v. Alvies, No. 13-3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014), the Defendant, Jenni Alvies, launched a blog and created a Facebook page called “CrossFit Mamas”, where she posted exercise routines. The fact that Alvies used the term “CrossFit” came to the attention of the company CrossFit Inc. In order to stop Alvies using this name, the company sent a takedown notice to Facebook pursuant to the DMCA, requesting a takedown of her Facebook page. Later, CrossFit Inc. sued Alvies for trademark infringement, but Alvies counterclaimed, arguing that the company violated paragraph 512(f) of the DMCA. This provision provides that:

“Any person who knowingly materially misrepresents under [17 U.S.C. § 512] that material or activity is infringing (…) shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer (…) who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing.”

In other words, this section held that any person who sends a notice of claimed infringement with knowledge that such claims are false might be liable for damages. In the CrossFit case, the company sent the DMCA takedown notice asserting infringement of its trademark rights rather than its copyright. The Court held that Alvies suffered damage when the content was removed via an improper DMCA takedown notice and agreed that such notice, used for a trademark matter, may violate paragraph 512(f).

The conclusion here is that a DMCA takedown notice, whether used for shutting down websites or social media pages, should be used carefully and only to address copyright violations. As many logos do not have the level of creativity required to be copyrightable, brand owners cannot rely on the DMCA provisions if a person only uses a company’s name logo without authorisation.

The use of a company’s logo by a third party, however, gives legal protection under trademark law and brand owners can enforce those trademark rights. Social media platforms, such as Facebook, also have specific procedures to report trademark infringements. Ideally, the best strategy for companies is to seek protection of their unique brand logos under both laws and obtain trademark rights as well as copyrights.

Author – Caroline Valle
Safenames Legal

Protecting brands and marks online has been a complicated process since the introduction of new gTLDs. Fortunately, registries with large portfolios of TLDs, like Rightside, have begun offering the Domain Protected Marks List (DPML) service, to cover a mark on multiple domain extensions. Rightside’s own DPML covers all 40 of its TLDs, including highly relevant business verticals and concentrations, from .MORTGAGE and .SOFTWARE, to .SALE and .SOCIAL. This past April, Rightside launched an upgrade of DPML that has made the service more valuable than ever.

When DPML was first offered, it covered rightsholders’ exact-match trademark as recognized by the TMCH. Since then, domain squatters have begun taking advantage of the exact-match limitation by slightly altering trademarks in the names they register. To combat this, Rightside’s upgraded DPML offers subscribers the ability to create up to ten Variants of their mark that are covered by the same list. With the trademark and ten variants secured under all 40 new TLDs, each DPML subscription can protect up to 440 domain names.

In addition to Variants, DPML covers all domains in a list in over 200 supported IDN languages, and now includes coverage for Premium-tier domain names, as well. With such a broad blanket of protection, Rightside’s DPML now offers one of the most powerful tools for modern mark holders in a single, easy-to-manage package.

While DPML has made brand protection much easier, it now enables rightsholders to pivot from protection to true brand enhancement. With the upgraded DPML service, it is now possible to activate any domain protected in a list with no additional activation cost. This new feature is a very valuable option for any brand’s marketing or sales team. An activated domain can quickly be employed for a landing page, a campaign, or a Branded Short Link, and represents a real opportunity to generate value with domains that may have otherwise sat unused forever.

Whether the priority is protection or enhancement, DPML—especially in its new and improved form—gives mark holders added flexibility and confidence to tackle both current and future obstacles to successfully managing a trademark.

For more information or to purchase please reach out to your Safenames representative today or visit our DPML Page

Guest Blog by Rightside

New GEO gTLD .MIAMI is now in TM Sunrise — this exclusive registration phase will remain open through September 18, 2015 and General Availability (GA) will open October 2, 2015. The registry will not open a formal Landrush period. Miami is a leader in finance, commerce, culture, media, entertainment, the arts, and international trade. Miami was classified as an Alpha-World City in the World Cities Study Group’s inventory and is home to largest concentration of international banks in the United States, and many large national and international companies. Registering a .MIAMI domain(s) enables companies doing business in this Florida region, or organizations serving the local communities, to secure shorter and more relevant domain names for their web site(s).

For questions about this launch please contact Safenames in the UK at +44 1908 200022 (emeasales@safenames.net) or in the US at +1 703 574 5313 (nasales@safenames.net).

Age.com recently posed the question in an article, “will Google Switch To .Google & .YouTube By The End Of The Year?” and we simply cannot wait to find out. While new gTLDs have already changed the domain name registration landscape, some (perhaps many) remain reluctant to register a .brand for their business—mainly for fear that not representing with a standard .com will somehow have a negative impact. But some large/global brands are shaking things up–Barclays recently launched the branded domain names .barclays and .barclaycard. According to Barclay’s news release, registering .brand domains “allows them to create a simplified online user experience, making it crystal clear to [their] customers that they are engaging with a genuine Barclays site.” There is also talk from some media sources that Google and its YouTube brand may register .brand domains in Q4 (.google and .youtube, respectively) this year with the launch of celebrity anchor sites (e.g. rockgod.youtube). If Google makes this move to the right (of the dot), it will be a game changer.

So why haven’t more companies made the move already? Let’s face it, even for global enterprises “new” can often be scary. Perhaps in light of Barclays recent move, and Google’s impending move, we can begin thinking of new gTLDs as “more” instead of “new”. More available domains, more opportunity, more targeted/relevant traffic, higher search rankings, etc. It has become incredibly difficult to find a short domain (because .com et al are saturated)—so ‘more’ gTLDs offer ‘new’ opportunities to be creative and once again register short, relevant domain names that aren’t already registered.

Registering a .brand domain allows you to lose the ambiguity and let potential customers know exactly who you are and what you do. Registering these domains is also a great way to brand and market your products and services. “Registering a .brand top level domain can make it clear to customers that they are visiting or purchasing from an authentic website (or, conversely, when they’re not). It can also offer a breadth of marketing opportunities for different products, services and campaigns—think run.nike, drive.bentley, and the like.”

For questions please contact Safenames in the UK at +44 1908 200022 (emeasales@safenames.net) or in the US at +1 703 574 5313 (nasales@safenames.net).

Verisign recently published an interesting report, which stated that 4 million domain names were added to the Internet during Q4 2014. This brings the total number of registered domain names to a whopping 288 million worldwide across all top-level domains (TLDs)—that’s a growth rate of 1.3% in just one quarter. What’s equally (or perhaps even more) impressive is that .com/.net registrations increased by 8.2 million in Q4 of both 2013 and 2014 and to date, account for 131.6 million of all TLD registrations (in aggregate). Of that 131.6 million, 115.6 million are .com and 15.0 million are .net. And while we’re talking about .com… we also wanted to mention that the Internet’s most recognized top-level domain turned 30 this year—Happy 30th .COM!

 

New gTLDs .PORN and .ADULT entered TM Sunrise today, March 2, 2015. This exclusive registration phase will remain open through April 1, 2015, but the registry will also launch another Sunrise phase, a domain matching phase, and General Availability:

  • TM Sunrise B :: Scheduled to open April 6, 2015 and remain open through April 30, 2015
  • Domain Matching :: Scheduled to open May 6, 2015 and remain open through May 31, 2015
  • General Availability :: Scheduled to open May 31, 2015

The ICM Registry is not offering any registry blocks for these two new gTLDs, like they did for .XXX. If you are interested in protecting your brand/TM, you may register .porn/.adult domains during one of the launch phases. For questions about this launch please contact Safenames in the UK at +44 1908 200022 (emeasales@safenames.net) or in the US at +1 703 574 5313 (nasales@safenames.net).

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