In Depth: Carlson vs. Olbermann – The Case Law…

This morning Keith Olbermann sent a not so cryptic tweet about The Daily Caller getting…

Also regarding @TheDailyCaller and – 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 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

(begin quotation)

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.


(end quotation)

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 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…

28 Responses to “In Depth: Carlson vs. Olbermann – The Case Law…”

  1. $10+ to tick off Olby and get publicity for The Daily Caller… yea, it’s worth it.

  2. Who knew Tucker was such a fortunate genius?

  3. Not if Olby ends up OWNING the Daily Caller due to winning a lawsuit. Unlikely, but a possibility.

  4. starbroker Says:

    One of the problems Keith will face is he wasn’t even smart enough to trademark his own name. That’s one of the first things you should do when you become famous at all.

    I hope Tucker and Keith blow large sums of money fighting each other over this. I really can’t stand either one of them. FNC should be ashamed they ever hired Tucker.

  5. I never practiced this sort of law, so I’m just analyzing what I’ve read. The law in general would favor Olby on this. The CyberSquatting Act (which I always thought was bad law, but that’s not relevant) seems to place emphasis on service marks and trademarks, so star’s point about did he ever trademark his name may play into it. There’s also the issue that he never sought to register the domain himself. When somebody else did, back in August of 2004, Olby did nothing. He’s waited six years to “protect” his domain. I don’t know how that plays into it but those sorts of equitable issues do have an effect in some areas of the law.

    As for Olby ending up bankrupting Daily Caller? So unlikely as to be near-impossible. If however KO decides to take this to court, the whole thing could take years to resolve. I kind of recall his cackling over Fox when they sued Al Franken over a trademark issue. He may be about to do the same thing himself.

  6. Two points here:

    1) In August 2004, Olbermann wasn’t the lightning rod he now is and it probably didn’t even occur to him that he’d need that protection.

    2) Did the original holder do anything with the URL or just sit on it? It’s because Daily Caller is going to do something with it that’s prompted this.

  7. One more point…

    3) Olby was cackling over FNC suing Franken because he, I think correctly, believed that O’Reilly pushed them into doing it. If Olbermann goes after Daily Caller by himself, it’s not the same thing. If MSNBC goes after him, then we have parallels to the FNC/Franken suit.

  8. 1) Agree.
    2) Interesting point, but I wonder if legally it makes a difference.
    3) I disagree. If Olbermann goes after Caller himself, then it IS the same thing he accused O’Reilly of doing. The Franken suit was over a slogan owned by FNC. Olby’s suit is regarding his name; I’m not even sure MSNBC would have standing to complain. But as I said before, I’m not an expert in this area.

    Here’s a 4). If Olby challenges it, what can Tucker/DC do with discovery? Can they root through Olbermann’s papers, emails, etc., looking to see what he’s done to protect the use of his name up until now? The worst part of most non-criminal suits is often discovery, and what it turns up.

    Olby’s been silent since that one tweet. He’s probably going over the whole magilla with legal experts, which is the smart thing to do.

  9. laura l Says:

    — parallels to Franken v Fox –

    Now that’s popcorn-time. Unlike Billo, KO is their biggest (if not only) marquee-name. It’s your basic ”jump/how high?”-scenario. I can’t imagine him not pushing MS into a lawsuit, with no awareness of the parallel.

  10. Does the Daily Caller have any real financial value? After all it’s not Politico or Huff Post. Heck Johnny $ site or even ICN probably has more value than Daily Caller.

  11. icn should read icn 2.0. Sorry Spud.

  12. For what it’s worth, I just did a trademark search on the US Patent and Trademark website. The search term “Olbermann” turned up zero results.

  13. J$, point 4 is a real good point. Olbermann has shown an O’Reilly like disposition to invasions of his privacy so disclosure may be more than he can stomache….

  14. For what it’s worth, I just did a trademark search on the US Patent and Trademark website. The search term “Olbermann” turned up zero results.

    And it won’t change, at least immediately, if Olbermann goes to court. But I suspect that either once the court case is over or, immediately after Olbermann decides not to go to court, there’s going to be some sort of application made.

  15. starbroker Says:

    I had already searched the trademarks J$… that’s why I said he hadn’t bothered to trademark his own name like he should have.

  16. stevemg Says:

    Setting the legalisms aside, this is a cheap stunt by Carlson and the Daily Caller and they should cease. Give Olbermann his name back (so to speak) and raise the debate.

    Given all that, we all know that old Keith would have done the same thing to Beck or Hannity. And cackled and snorted all while doing so.

    Which is one more reason that Carlson should stop the game.

  17. No way KeithOlbermann should have got the domain along time ago it was just sitting there I mean really. He has money to buy a domain.

  18. Nobody wants to give in to a cybersquatter…

  19. Mediaite has a story up now about how Tucker Carlson got HIS domain name from a poacher, based on his ‘common law’ ownership of his own name. If Mediaite has this right, then Tucker is only in this for some temporary PR and fun.

  20. We’re on the same page. I just wrote something similar in an update above.

  21. If Tucker Carlson uses the domain name to satire KO, he may get some First Amendment traction. Doubt directing it to The Daily Caller qualifies as “satire”. He’ll lose anyway, I think. Also think KO would do best to shut up about it.

  22. The issue isn’t about what The Caller writes about Olbermann. It’s about how The Caller uses Keith’s name to direct to a site that writes about Olbermann. It’s not a First Amendment issue and never will be.

  23. ^ Agreed.

  24. stevemg Says:

    It’s about how The Caller uses Keith’s name to direct to a site that writes about Olbermann. It’s not a First Amendment issue and never will be.

    Yes, but it directs to a cite that is critical of Olbermann. The Caller is using Olbermann’s name to promote their interests and generate publicity for them without his permission.

    This seems to me a First Amendment issue, in part, since it concerns such concepts as the right of publicity and the misappropriate use of someone’s name.

    I’ve dropped a note to the First Amendment scholar and UCLA Law Professor Eugene Volokh to see what he thinks. When I get a response, I’ll post it.

  25. joeremi Says:

    I’m not sure how the First Amendment would enter into this case – my cursory reading of its impact here left me more confused than when I started – but this could certainly turn into a defamation suit. Using a person’s identity for the sole purpose of harming said person sounds potentially criminal to me.

    The hiccup would be in the ‘public persona’ aspect. If someone creates a for the sole purpose of creating a distateful impression of me (hush, gallery), I can legitimately claim nobody knows me from Adam, therefore ‘the public’ can be easily lead to believe is an accurate portrayal authorized by myself.

    But if Tucker loads derisive crap on, will KO be able to convince a judge it’s anything but satire that no reasonable viewer would misconstrue? I report, you decide..

  26. stevemg Says:

    (1) Defamation? The standard (Sullivan vs. Times) for proving defamation against a public figure is enormously high. And I haven’t seen anything run by The Caller that is even close to libeling Olbermann.

    (2) It seems to me, as I noted above, that The Caller is perhaps guilty of misappropriating Olbermann’s name or violating Olbermann’s right of publicity although the news standard probably protects them.

    (3) Why do I always type “cite” when I mean “site”?

    Anyway, I disagree with Spud’s argument that there are no First Amendment issues involved here. I think there are.

  27. joeremi Says:

    I haven’t seen anything run by The Caller that is even close to libeling Olbermann.

    Future tense, mate. As in: the bogus lasts for six months, and there’s lots of nasty stuff on it.

    (3) Why do I always type “cite” when I mean “site”?

    Why do I constantly travel back and forth between UK and US English? I realise too much reading of Al’s prose colours my thinking. That’s the rumour, anyway..

  28. wehadrons Says:

    There are no first amendment issues here.
    The only way the The Anticybersquatting Consumer Protection Act may apply is if there are damages of a financial nature. It would be a long shot to go this route.
    Olbermann needs to ask himself “what are my damages”?
    That is all the court ever cares about. What are the damages.
    He has plenty of room for a legal victory.
    He needs to focus on Tucker as an individual, this is about impersonation, libel, defamation of character, damage to his brand, keeping in mind all of this was carried out with intent, and malice in order to misrepresent the real Keith Olbermann.
    California’s online impersonation law SB 1411 goes into effect today, this is the kind of angle he should be looking for in the appropriate jurisdiction.
    Even though I may prefer Tucker to Olbermann, it appears Tucker has bitten off more than he can chew, he is legally screwed!

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