In Depth: Carlson vs. Olbermann – The Case Law…
This morning Keith Olbermann sent a not so cryptic tweet about The Daily Caller getting keitholbermann.com…
Also regarding @TheDailyCaller and KeithOlbermann.com – the law’s pretty clear on this, so, nice waste of money, Tuckie.
Is it? I’m not a lawyer but this is what I was able to dig up on the subject from keytlaw.com on the Anticybersquatting Consumer Protection Act…
Update: Replaced Bitlaw quotation with what appears to be a more relevant section covering the Anticybersquatting Consumer Protection Act
What is the ACPA?
The Anticybersquatting Consumer Protection Act is a federal law that took affect on November 29, 1999. This new domain name dispute law is intended to give trademark and service mark owners legal remedies against defendants who obtain domain names “in bad faith” that are identical or confusingly similar to a trademark or service mark. If a mark is a famous mark, the same remedies are available if the domain name is identical to, confusingly similar to or dilutive of the mark.
What Must a Mark Owner Show to Win a Case of Cybersquatting?
The plaintiff must prove the following elements:
The Defendant has a bad faith intent to profit from that mark, including a defendant name which is protected as a mark;
2. registers, traffics in, or uses a domain name that–
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
(III) is a trademark, word, or name protected by reason of 18 U.S.C. § 706 (the Red Cross, the American National Red Cross or the Geneva cross) or 36 U.S.C. § 220506
The key element that must be proven is that the defendant has a “bad faith intent to profit from the mark.” ”Traffics in” refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.
What is Bad Faith Intent to Profit from a Mark?
The ACPA gives the court some guidance to assist it in determining if the requisite bad faith exists. In determining if the defendant has bad faith, the court may consider the following non-exclusive factors:
the trademark or other intellectual property rights of the defendant, if any, in the domain name;
the extent to which the domain name consists of the legal name of the defendant or a name that is otherwise commonly used to identify the defendant;
the defendant’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
the defendant’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
the defendant’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
the defendant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the defendant’s prior conduct indicating a pattern of such conduct;
the defendant’s provision of material and misleading false contact information when applying for the registration of the domain name, the defendant’s intentional failure to maintain accurate contact information, or the defendant’s prior conduct indicating a pattern of such conduct;
the defendant’s registration or acquisition of multiple domain names which the defendant knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
the extent to which the mark incorporated in the defendant’s domain name registration is or is not distinctive and famous within the meaning of Section 1125(c)(1) of the Lanham Act.
Bad faith intent will not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
The operating question is does the ACPA apply in this case? That’s for a court of law to decide I guess. Another question would be, and I’m sure this is one that Olbermann is weighing now, will a lengthy court case be worth the hassle? Will the publicity from the court case make it more trouble than it’s worth?
Olbermann Watch was a huge thorn in Olbermann’s side but, and this is a big “but”, it was a rag tag small time operation that didn’t have money backing it. Olbermann could afford to ignore Olbermann Watch and Countdown’s staff could have sliver of fun with it calling it “the site that hates us”. But a Daily Caller implementation with a name brand conservative at the helm is another matter entirely. That’s why I think we saw that tweet from Olbermann threatening legal action.
Daily Caller’s response to said tweet was ridiculous. It did what so many have done in the past, it dragged out the First Amendment straw man argument.
Not so fast, responded Tucker Carlson, editor-in-chief of The Daily Caller. “Some might step back and allow Mr. Olbermann to drain his bladder on the first amendment – indeed, on the Bill of Rights itself,” said Carlson. “Not us. No, by God, not us.”
Wrong. This isn’t a First Amendment issue Tucker and you and your legal eagles should have known this going in to it. This is a trademark and identity protection issue. There is US law designed to protect individuals and corporations from this sort of thing. And that’s what this will all be about if it does go to the courts.
I would be interested in hearing Johnny Dollar jump in here with his legal background…
Related: Mediaite’s Glynnis MacNicol writes that Tucker himself fought to get control of TuckerCarlson.com. This leads me to believe this stuff with Olbermann is all just a publicity stunt because Carlson has first hand experience in domain name spats and knows they can be won by the plaintiff. Then again, as Johnny Dollar pointed out in the comments, Carlson may be calculating that Keith Olbermann won’t want to sit through a very probing, and likely to leak to the public, discovery phase and abandon any legal war notions…