Trademark and Copyright Name

[Anonymous780]

My question involves business law in the state of: Pennsylvania

Cesar Milan is a popular dog trainer with his own show on the National Geographic channel. He has published DVDs and books under the brand that is himself. "Cesar Milan" is copyright and trademark.

Let's say I run a Web site called "Cesar's Way". The Web site is a general fan site for Cesar Milan where I feature products (for sale) and news about him and his show on a weekly basis. I also sell advertising on the site. Let's say you can find my site at www.cesarsway.com. And I own that domain.

Say Cesar Milan has a book out called Cesar's Way: The Natural Guide to ... and say this is where I got the name for my Web site.

And even though "Cesar Milan" is copyright and trademark the term "Cesar's Way" is not.

1. Would the Cesar Milan brand be able to sue me for infringement on say a trademark or copyright in his full name or is "Cesar's Way" too separate for there to be an issue.

2. Does the fact that I'm selling products seen on his show or advertising on the site make me liable? Cesar Milan in no way promotes these products on the show, but say I just saw the type of dog shampoo he happens to use in the show and I'm offering that for sale or talking about it on my site.

3. Would it be a smart move to trademark and copyright the name "Cesar's Way" before anyone else has the chance to pursue litigation?

Thanks!

[LawResearcherMissy]

"Cesar Milan" is not copyrighted. You cannot copyright a person's name.

1. Would the Cesar Milan brand be able to sue me for infringement on say a trademark or copyright in his full name or is "Cesar's Way" too separate for there to be an issue.

You'd be sued for trademark infringement because "Cesar's Way" IS trademarked.

2. Does the fact that I'm selling products seen on his show or advertising on the site make me liable? Cesar Milan in no way promotes these products on the show, but say I just saw the type of dog shampoo he happens to use in the show and I'm offering that for sale or talking about it on my site.'

If you're writing a review of a product you saw on his show, stating "I saw this on Cesar's show the other day, tried it out on my dog, and this is what I liked/didn't like/here's why", you're fine. You need to make it abundantly clear that you're running a fan site that is not at all affiliated with or endorsed by Cesar Millan in any way.

If you phrase things such that you make it appear that Cesar Millan is endorsing your site, you'll be in for trouble.

3. Would it be a smart move to trademark and copyright the name "Cesar's Way" before anyone else has the chance to pursue litigation?

You're too late.

[Anonymous780]

Thanks for replying so soon.

I tried hard to ensure that my post was taken as hypothetical. I know that "Cesar's Way" is already trademark and that sort of thing BUT let's say it's not. In the case that all the variables I set up exist, then how does this work?

Can I get some answers for 1-3 in viewing my original post as hypothetical? Thanks!

[LawResearcherMissy]

Answer one changes very little, really. If you have anything on your site that implies a relationship between your site and the brand, you open yourself up for an infringement claim. This is standard operating procedure when it comes to Trademark - trademark holders are required by law to defend their trademark, or else face losing it.

If there is even the faintest whiff of possible infringement, the company will sue.

How fat is your wallet?


Answer two remains the same.


Answer three also changes little. If you were to try to file a trademark on someone else's title, and they objected to it and showed prior art/usage, you would not only be denied the trademark, you open yourself up for an infringement claim if you've got anything on your website linked to the brand.

Businesses don't look too kindly on people trying to steal their brand, even if only for a fan site.

[Anonymous780]

Ok, thanks. I think I'm understanding this a little better now.

You mentioned question 1 changes very little but I don't see how that can be if in fact (in this hypothetical scenario) "Cesar's Way" was not trademark or copyright. So if "Cesar's Way" was not trademark or copyright would the Cesar Milan brand still have grounds for litigation against my site called "Cesar's Way"? And if so, why?

For question 2 I understand if an implied connection between the Web site and the brand are presented how litigation could be pursued. Let's say there's a clear statement of disassociation; however, the site still continues to sell product seen on the show and advertising on the site itself. Does this affect anything?

Completely understandable on question 3 and rightly so.

Also, are we determining that any fan site of any entertainment entity runs the possibility of litigation from the entertaining brand? Or at the very least a cease and desist?

Thanks again!

[LawResearcherMissy]

You mentioned question 1 changes very little but I don't see how that can be if in fact (in this hypothetical scenario) "Cesar's Way" was not trademark or copyright. So if "Cesar's Way" was not trademark or copyright would the Cesar Milan brand still have grounds for litigation against my site called "Cesar's Way"? And if so, why?

You're proposing titling your site after the name of a product. This can be seen as infringement, even if they've not yet registered the name for trademark. Prior art/usage will be the deciding factor - and if they've already got a product out with that name, they'll win.

For question 2 I understand if an implied connection between the Web site and the brand are presented how litigation could be pursued. Let's say there's a clear statement of disassociation; however, the site still continues to sell product seen on the show and advertising on the site itself. Does this affect anything?

Nope. Nothing says you can't sell a product you've seen on a TV show, and nothing says you can't say "Hey, look at this thing that I saw on [insert TV show here]. Isn't it nifty? I liked it because it [cured cancer/made my dog talk/turned me into the Incredible Hulk], and I think you will like it too."

Also, are we determining that any fan site of any entertainment entity runs the possibility of litigation from the entertaining brand? Or at the very least a cease and desist?

Yup. Many celebs and even some companies will look the other way, on the premise that any publicity is good publicity. Some, however, are very protective of their brand, and some of those skip right over the cease and desist part straight to lawsuit.

To mitigate this possibility, I suggest you contact the company you're a fan of, write a glowing, gushing praise letter, and ask if it's OK for you to gush all over the internet about them.

Though it's often easier to beg forgiveness than it is to ask permission, in the case of trademark, that attitude could get very expensive.

[Anonymous780]

I completely understand now. Thank you so much!

[Anonymous780]

I've talked some things over with family and friends and they're asking a few new questions I'm unsure about. But I bet you can help.

1. If I changed the name of the Web site to "Cesar's Routine & Way". Does that escape infringment on "Cesar's Way" with the addition of the phrase "Routine &"? Basically if we break the two words apart is it still infringment?

2. If I change the name of the Web site to "The Cesar Fan Site". Would the active domain name www.cesarsway.com (pointing to our site) still infringe on "Cesar's Way"? Basically, can domain names infringe on copyright?

[LawResearcherMissy]

1. If I changed the name of the Web site to "Cesar's Routine & Way". Does that escape infringment on "Cesar's Way" with the addition of the phrase "Routine &"? Basically if we break the two words apart is it still infringment?

Possibly. They could still construe it as infringement and at the very least, send a cease and desist.

But...

2. If I change the name of the Web site to "The Cesar Fan Site". Would the active domain name www.cesarsway.com (pointing to our site) still infringe on "Cesar's Way"?

...clearly titling it as a fan site helps mitigate this possibility.

But...

Basically, can domain names infringe on copyright?

This isn't a copyright issue, it's a trademark issue. And domain names certainly CAN infringe on trademark. Using someone else's product name as your domain name CAN be seen as misleading and infringing.

Why chance it? cesarsnumberonefan or somesuch is far less likely to cause you difficulty.

[Anonymous780]

Hmm, yes I see.

The reality of the matter is that I have registered a domain name that is currently the title of a book but the title is not trademark strangely enough. The situation is the same as if I'd registered cesarsway.com but "Cesar's Way" was not trademark; however, the book still exists and more than likely it's copyright.

I'm not sure what to do in this situation. Am I still able to use the domain name even though there is no trademark or does this infringe on the copyright of book by confusing anyone visiting the domain?

My Web site is no doubt about the author of the book and the subject matter of the site is the same as the hypothetical situation.

I don't want to damage the copyright of the author in anyway. In fact, I have links pointing back to their work and other works. I'm a fan and only interested in providing information to the users of the site while selling advertising and possibly offering some products for sale.

So in keeping my domain I don't believe I'm intruding on any trademark (because one does not exist) but I may be infringing on copyright, correct?

I'm not sure what to do here.