Forum Moderators: phranque
"The gist of the story is that Katie Tarbox became a victim of an online sexual predator when she was 13. She wrote a book about it in 2000 and Penguin Putnam made the title of the book 'Katie.Com', which unfortunately was a domain name owned by Katie Jones since 1996. Now Tarbox's lawyer is demanding that Jones turn over the domain name. Penguin refuses to apologize, saying that it would be a violation of their free speech to re-title the book and that Jones never trademarked katie.com, so they can do what they want with the words."
If there ever was a reason to trademark your most important domains, this is it.
Tom
There are some nice benefits to registering a mark, like the ability to file claims in federal court, and the ability to have nationwide use of the mark.
And now they're trying to strongarm the owner into "donating" it to them (or else)? They aren't just incompetent: they're being a**holes.
This is a pretty clear-cut case as far as I'm concerned. If not, the implication is I could register your domain as a trademark then force you to donate it to me.
Rather, the owner of katie.com is upset that she has lost effective use of her website because of the book. The book has a disclaimer denying any connection to the website. The lawyer's comments that "things will only get worse" does not seem to refer to legal action, but to the flood of unwanted visitors to the site.
I'm wondering whether Katie Jones is hoping to seek redress (in the form of damages) because a chatroom business she had set up using that domain is effectively offline because of Penguin's actions.
That starts to make a little more sense.
Tom
Me, being who I am, would replace my front page with a redirect to one of the most reviled sites on the internet.
(No, not the .cx one, the other one)
great minds.
A much more mature way to handle it, and far less likely to create ill will unnecessarily....
[Edit: actually, what glacierbay travel did was SET UP a site FOR HomeDepot referencing the problems people were reporting to glacierbay travel. HomeDepot was eventually shamed into buying the site and doing it themselves....]
She has every legal right to own her trademark, official registration or no, and she should never give it up unless they drive a truck full of money to her door. I call it a trademark because the law is very clear on the subject. You own a mark by presumption from prior usage, even if you neglect to actually register it as such. Her ownership of the name is cut and dried, written in stone.
Mind you, I am basing this upon United States trademark law, but it is basically the same all over the world. Not only does she have well-established prior use of the mark, it is a also what they call a 'generic' mark. To illustrate, trademarks such as Exxon, Kodak, Polaroid or Xerox are totally unique, made from scratch and highly distinctive. Thus they have powerful and defensible brand/mark identity, and if persons other than their rightful owners were to try using them they would be slaughtered in Court.
A generic mark such as BusinessWorld or BestFoods, on the other hand, is enforceable but weaker on the spectrum. Weaker still, in fact so weak it would have no legal standing whatsoever, would be if business.com or drugs.com were to try suing anyone using 'business' or 'drugs' as part of a business name or domain. Common sense, and all case law, call that preposterous. And that's where Katie.com sits.
Instead of being harassed, she should get yourself some sort of talented broker/agent/attorney and demand a fortune from them, otherwise insist they stop harassing her. And sell advertising on her site. Plus, it's her own name to boot, the one on her birth certificate, just in case they even tried to (absurdly) accuse her of grabbing the domain as a cybersquatter for extortion purposes, with no intention of actual use. She owns the name through and through, beyond any shadow of a legal doubt. She can sell to the highest bidder, but she is in no way shape or form compelled to do so. Absolutely not. She is free to cash in but need not give in no matter what, because she holds all the power in this situation. Again, this is an absolute, legally speaking. I am frankly amazed that with all this media coverage, no one has pointed this out to Ms. Katie. It's utterly astounding.
Ok, that makes sense. That's why I was confused in my first post, becuase I thought and you verify that:
You own a mark by presumption from prior usage, even if you neglect to actually register it as such.
As near as I can tell, the publishing company in NOT asserting trademark rights. I think that if a case is brought for trademark infringement, it will and probably should be brought by Katie Jones.
I would not give up my domain by redirecting it to something nasty as suggested. Everyone loses there. I would tell any lawyer who wanted to take the case that he/she could keep 100% of any settlement if he could win, just to assert my rights, get full use of my domain back and to put people on notice about these issues.
Personally, I don't see how the one publishing the book has any case. They knew a site existed on the domain, made no attempt to purchase it prior to naming the book and named it that anyway. I hope the girl who actually owns the domain not only tells them where they can go, but sues them for damages (if possible, I'm not a lawyer or legally inclined). If I named a book Amazon.com and it was about the boom of the porn industry, you had better believe Amazon would be suing ME not the other way around.
AFAIK there's no copyright in titles, so from that standpoint Penguin Putnam could call the book what they wanted. That doesn't give them the right to muscle Katie.com from Katie Jones. Trademark law is all about overlapping names for businesses in the same sector, so I'm not sure if it even applies here.
If the site has been around for 8 years, there have quite possibly been more visitors to the site than people who purchased the book. Looks more to me like the author is trying to capitalize on the website's popularity, not the other way around. Who does this author think she is? What a moron.
There would be some legal issues re: a potential trademark filing and subsequent tm lawsuit if the owner of Katie.com was inclined to go that way.
If the owner of the website was not selling any goods or services from that website, she is not entitled to a TM. She would have to begin selling something a product or service. Until she does that, or until she forms an INTENT to do that, she cannot file a TM.
This might be part of the problem for Katie.com or maybe she doesnt care.
Also the name may not be generic. SHe is not selling Katies. To put it another way, the name Katie is not a word for a product or service. Possibly the mark is descriptive but still you'd have to look at the goods or services being sold...
But there arent any goods or services being sold so there is no way to form a conclusion as to the status of katie.com be it generic, or descriptive or arbitrary.
Place the blame where it belongs.
At any rate, this is kind of old news, the book has since been given a new title, and the author has tried to chalk this all up as being a misunderstanding..
Me, being who I am, would replace my front page with a redirect to one of the most reviled sites on the internet.(No, not the .cx one, the other one)
>>> redirect to one of the most reviled sites on the internet.
great minds.
What are you guys talking about? Microsoft.com?
:o)
the book has since been given a new title
Katie.net?
haha
Katie.biz
How many of you have heard of a business named, "John's Place?" They aren't a franchise, it is their name.
