Celebrity Trademark Issue

[kingspice]

I own a celebrity music site under the name of namestar.com (where name the celebrities name and trademark). I have recently received the following email:

Your registration and commercial use of the <trademarkstar.com> domain name has given rise to claims against you for violation of various United States laws, including the Anticybersquatting Consumer Protection Act, the Federal Trademark Dilution Act, and the Lanham Act, as well as violations of state statutes and common law rights governing trademarks, unfair competition, and rights of publicity. As a result you are subject to court-ordered injunctive relief requiring you to transfer the domain names, plus a judgment being entered against you for actual damages, lost profits, additional damages, attorney’s fees and court costs. Alternatively, you may be liable for statutory damages as high as $100,000.00 per domain name, plus attorney’s fees and court costs.

Additionally, your reproduction, public performance and public display of various sound recordings, musical works, lyrics, and videos infringes the rights of those who own the copyrights therein. The remedies for copyright infringement include the entry of injunctive relief restraining further violations of the Copyright Act, statutory damages as high as $150,000 per work infringed, and recovery of attorney’s fees and court costs.

Lastly, the domain name is subject to being transferred to ... for your violation of the Registration Agreement you entered into with the registrar of the domain.

Demand is made for you to (1) transfer ownership of the domain names to ..., (2) immediately cease and desist using in any manner the mark (or anything confusingly similar thereto or which is likely to cause confusion), and (3) immediately cease and desist from reproducing, publicly performing, publicly displaying, and/or distributing any sound recordings, musical works, lyrics, and videos featuring .... or which are owned by her in whole or in part.


I have removed any material that may be copyrighted but am a bit concerned about the issues relating to the trademark. My site is an unofficial fansite which I make clear on the website. I am also making money from the site in terms of advertising so do not want to give up the site.

Thanks
Gareth

 

[Pommy - The DN Doc]

My opinion (non lawyer) is that the money that you are making is the problem - give it up and the problem may not have come; now that its arisen I am sure its that simple.

 

[Name Trader]

The fact is that if you are making money out of using an artist's trademarks and copyrights, you don't have a leg to stand on. The crime has been committed already. The remedy is not to delete that material and hope they go away. The (cheapest) remedy is for you to give up the domain with assurances from them that they won't pursue you for damages in a court of law.

 

[tinner666]

I assume you regged it so you could give it to them as a gift? Because you are such a fan of him/her/them? So, what's the fuss? Give it to them like you had planned.

 

[DebX420]

Once you made ti so they had to pay to join or whatever is where you messed up - any money made under a trademarked name is going within the trademark law, and you could be fined or punished. Had you made it 100% free, you would've been fine. But that's just my point of view

And who's the star? Some people could care less, but depends on who it was.

 

[kingspice]

The fact is that if you are making money out of using an artist's trademarks and copyrights, you don't have a leg to stand on. The crime has been committed already. The remedy is not to delete that material and hope they go away. The (cheapest) remedy is for you to give up the domain with assurances from them that they won't pursue you for damages in a court of law.

So any kind of internet fan site that makes money is liable to trademark infringement?

 

[DebX420]

So any kind of internet fan site that makes money is liable to trademark infringement?

Yep, but not if you ask the star first and agree to give him/her a cut of the profits, but I dont know too much about trademark issues.

 

[Name Trader]

So any kind of internet fan site that makes money is liable to trademark infringement?

If it's not owned by the TM holder or they have not given permission for it's use. Yes.

I'm not a lawyer. You should consult a lawyer for legal advice.

 

[DNQuest.com]

As someone who recently got pretty burned over a fansite that had zero commercial value, the panelist made sure he found a way that I lost. Including determining my character based on a website to which I had never been asociated with. So yes, there can be issues, there have been successfully fought fansites through the UDRP and through the courts.