Vicarious Infringement

[IM-Still-Trying]

Hi Guys and Gals,

I have a question regarding "Vicarious Infringement".

I have a blog which discusses laser hair replacement - I won't put the URL up for fear of being accused of advertising.

Anyway, in all my blog posts, I have google ads running at the top of every one.

Yesterday, I received an email from some solictors claiming "Vicarious Infringement" on the blog post.

In the blog post, and in the blog tags, they claim, are trademarked words, one of which made my blog rank on page one (position 10) in google.

In viewing the blog post, my page obviously shows a set of google ads. The solictors claim that I am trying to decieve my visitors, when simply, all I have is a page that contains these words and shows relevent ads.

Upon notification from the solicitors, I immeadiately removed the page and requested that google remove it from there index.

But is also seems that they want to charge me over £2000 to cover the legal costs of there client. The whole site has only made £25 in its entire life.

Any one else experience this sort of thing before?

Regards,

Mark.

[winebuddy]

You removed the page and also notified Google. Unless and until you get a certified letter, I wouldn't worry about it.

note: not an attorney - seek your own legal counsel

[AnniePot]

I found this when I Googled "Vicarious Infringement" ...

What is vicarious infringement?

Vicarious infringement is one of the two types of indirect copyright infringement (contributory infringement is the other type of indirect infringement). Vicarious infringement occurs where someone has a direct financial interest in the infringing actions being committed by another and has the ability to control it, even if they do not know that the infringement is taking place and do not directly take part in it.


One of the classic examples of vicarious infringement is where someone owns a swap meet, and somebody at the swap meet is selling infringing materials. The owner of the swap meet is liable for vicarious infringement because he receives a direct financial benefit and has the ability to see what is going on at the swap meet and prevent the seller from selling the infringing materials (by kicking him out).

[rainspeak]

This is an unfortunate inconvenience to say the least. Just yesterday the term intellectual property lawyer came up in a conversation. This is like the second flash of insight for me on the subject in as many days. Yesterday I had never heard of the term Vicarious or contributory infringement. I for one like you don't want to infringe on any one or their copyright knowingly or unknowingly. So my point is thanks for educating us. I don't have any advise or experience in this but am grateful for the education, hope it works itself out. Thank you for posting it.

[IM-Still-Trying]

Well looks like it may cost me dear :-(

But overall, surely this effectively invalidates the use of google ads!?!

If for example, I had a forum/blog discussing IPhones or Coca-Cola, and google ads were showing for Sony-Ericsons or Pepsi you could end up in the same s**t!

[Kay King]

In the blog post, and in the blog tags, they claim, are trademarked words, one of which made my blog rank on page one (position 10) in google.

Are there trademarked words in the POST and the TAGS? If you did not in any way use their brand name or copy on your blog, You are assuming its google ads but that doesn't make sense and I think you've jumped to a wrong conclusion.

The google ads aren't going to move your site's ranking - so what was it that made your blog rank on page one?

Demands for payment are more often seen when you violate copyright by using an image on your site that you have no rights to. I would start by verifying the name of the person who signed the letter and the law firm listed to make certain they do represent the brand.

I also would not hesitate to ask for clarification of exactly what violation they are objecting to - IF you really don't know.

kay

[rosetrees]

You do say that you were using these, allegedly, trademarked words as tags for your pages. I know that many affiliate programs prohibit you from "bidding" on a range of keywords, which usually includes the name of the product and any other trademarked words.

In otherwords if you aim to make money from a blog post talking about "trademarked product" you can't mention that term. So if, for example, I had a banner promoting Cad****s chocolate, I couldn't "bid" on the term "Cad****s" - I could write a blog post about chocolate and include their affiliate ad (if they have one - I don't know, just using them as an example), but I couldn't use the name Cad****s.

It's also strange that any Adwords user would be allowed to use "trademarked product" in their adwords ad - unless they were, in fact, "trademarked product".

I also find the idea that their client's costs were £2000 rather funny. That;s a seriously expensive letter they sent you. I suggest their clients find another solicitor asap.

If I were you, I would write directly to the legal department of "trademarked product" and apologise humbly, asking them to drop the matter.

[LB]

In the blog post, and in the blog tags, they claim, are trademarked words, one of which made my blog rank on page one (position 10) in google.

Did you actually do this or are they claiming this incorrectly?

[IM-Still-Trying]

The post appeared on my blog from using the "Article Marketing Automation" system. articlemarketingautomation.com

Thought this was a nice idea initially (until now) to keep my blogs fresh with regular new content. For those who don't know about this system - it enables you do distribute spun blog posts on other peoples blogs and vice versa.

So yes indeed, someone did a blog post on my blog containing the trademarked words - in the content of the post and in the post tags.

Still - thinking now of trademarking a word myself - distributing a blog post (via AMA) containing the trademarked word - wait for it to be distributed to the 1000's of blogs in the system - and then get a solicitor to try and leverage some money out of the websites owners - JOKE honest.

If I do a direct search for this trademarked name in google, there are no sponsered results. So other keywords within the page must of triggered the actual ads that were displayed on the blog post page.

But my initial point is valid - if I did a blog post about Cad***y and used the trademarked word in the blog - and google decides to display some ads for another chocolate manufacturer (because I triggered the google ads from the word chocolate for eg) - would that give Cad***y the right to cite me for infringment!?!

Hope you see my point.

[scrofford]

Originally Posted by IM-Still-Trying

In the blog post, and in the blog tags, they claim, are trademarked words, one of which made my blog rank on page one (position 10) in google.

I have heard of "trademarked" names, but "trademarked" words? How is that possible? Words themselves unless they are put together as a name can't be trademarked or the whole english language would be illegal to use wouldn't it? Maybe I don't understand or am just an airhead this morning lol.

[JustVisiting]

Originally Posted by IM-Still-Trying

In the blog post, and in the blog tags, they claim, are trademarked words, one of which made my blog rank on page one (position 10) in google.

Trademarked words in the Domain Name I can understand them complaining about...but as a blog URL? Do you have a solicitor? You need legal advice if they want to screw 2k out of you.

Your blog is number 1 in Google for these terms?...good for you. It's a post and a few kw tags. As long as you are not liabling the product I don't see how they can have a case. But you need to consult a solictor.

Perhaps you need a disclaimer at the foot of each page stating :
"All trademarks, product names and services are property of their respective owners"

Consider this...AMAZON are ranked number one in Google for MANY, MANY, MANY trademarked products...will these solictors be chasing them? I doubt it.

I don't think for one minute it could possibly be greedy solictors trying to create and then jump on another gravy train.

[sbucciarel]

This sounds bogus to me. I've heard of no rules that state that you can't talk about a trademarked product ... that's called freedom of speech, by the way. As for tags, it sounds a bit shaky as well.

Do not voluntarily give them a cent. You removed the page and that's it. If they want to extort money from you, make them prove this case in court because they are the ones who are sounding shady to me.

Actually, this sounds like sour grapes from a competitor that is jealous of your rankings.

Disclaimer: I'm not a lawyer. This advice is what I would do in this circumstance.

[Kay King]

This story is coming in bits and pieces so let's make the logical assumption of "trademarked name" which is probably what the letter said.

Clearly a blog post did violate trademark as did tags. Which is exactly what the letter to the OP stated. This had nothing to do with adsense java script or ads - but with an auto-posted article. Taking the article and tags down would probably have solved the problem though it would be wise to check the blog occasionally to prevent this happening again.

Now, the question is - did the letter really asked for a payoff ---or did it explain that failure to remove the violation could result in those fees?

kay

[LB]

I would talk to an attorney before doing anything.

[IM-Still-Trying]

Their solicitors sent me a 46 page pdf!

What they are griping about is the fact that the blog post which contained their trademarked name/words whatever, contained google ads which showed adverts for their competitors.

They are accusing me of deceit by using their trademarks to get traffic to drive to their competitors.

[LB]

Originally Posted by IM-Still-Trying

Their solicitors sent me a 46 page pdf!

What they are griping about is the fact that the blog post which contained their trademarked name/words whatever, contained google ads which showed adverts for their competitors.

They are accusing me of deceit by using their trademarks to get traffic to drive to their competitors.

You seriously need to talk to a lawyer. Nothing anyone says in this forum matters one bit.

No one here is going to defend you in court if you actually get sued.

You need to pick up the phone and call a lawyer. Probably one who deals with intellectual property.

Many attorneys will give you a brief consult for free or a tiny fee to see if they want you as a client. You can get a better idea of what you actually are up against that way.

[eslucky]

LB said it right. It is sad that our society has become so lawsuit happy but it has. Having been partners in business with attorneys I learned the hard way that they will challenge any little thing (or nothing) for their own gain. All the attorney jokes are around for a reason. Any advice you might take here, without consulting an attorney, could get you in deeper hot water. You will have to play their game and "lawyer up". It may only take a consultation to ease your mind and straighten things out.

Much luck to you. I understand your frustration.

[Frank Donovan]

Originally Posted by IM-Still-Trying

Their solicitors sent me a 46 page pdf!
What they are griping about is the fact that the blog post which contained their trademarked name/words whatever, contained google ads which showed adverts for their competitors.
They are accusing me of deceit by using their trademarks to get traffic to drive to their competitors.

Ah. It starts to become clearer. This isn't a trademark issue as such - the solicitors are arguing that you've used their client's name as "bait" to lure targetted visitors whom you've then sent off to their competitors via an AdSense advert from which you've presumably profited.

Sweet.

Obviously, you should get some legal advice, but a few questions spring to mind:

1) Are these solicitors aware of how Google's AdSense algorithm works?

2) How did they arrive at a compensation figure of £2,000?

3) If their client is so impressed with your ability to drive such targetted volume traffic, perhaps they would be willing to advertise on your site themselves

4) They took 46 pages to say that?


But again, talk to a solicitor before doing anything else.




Frank

[limoge]

Get a lawyer that specializes in these types of cases. This is not something you want to respond to on your own. You need an expert.

[entrepenerd]

Not a lawyer and don't pretend to be one...

This is bogus crap someone trying to railroad you. Don't worry about it.

Google has recently changed their trademark policy for just this reason. It's total bologna for someone to think that by showing an ad with a trademarked term that you are portraying yourself as the owner of the trademark in an effort to benefit from their trademark.

EDIT: Just for clarity. Google now allows you to bid on trademarked terms as keywords, and also use trademarked terms in your ads as long as they adhere to certain guidelines. They have learned that it is not illegal for you to mention trademarks as long as you're not portraying yourself as the owner of the trademark in an effort to benefit financially.

As long as you are not trying to imply to your visitors that YOU are the owner of the trademark, then you've done nothing wrong.

That's why it's OK for Burger King to use McDonald's in their advertisements all the time. They are not in any way trying to imply that they are the owner of the McDonald's trademark.

There's nothing that stops you from writing an article about a product, as long as you don't try to say that you are the owner of the trademark and try to make a profit from it.

This letter is another example of a bully trying to prey on the innocent without little knowledge of the legal system hoping that they will cave, or worse, cough up some money that was never due anyone.

If you're seriously concerned about this though, you should definitely seek the advice of a lawyer.

[JustVisiting]

I know some law firms now employ people to scour the internet for supposed violations of trademarks. They are the "Have you Had an Accident in the Past 3 Years?" and "Ambulance Chasers" of the virtual world.

[IM-Still-Trying]

Look OK - I've removed the offending page from my site and requested google de-index the page, but at least from my view point, my page is still appearing in google search results now in position 33 - and google is still displaying the cached result.

I'm was going to post the link to the cached result here, but the system here will not let me.

Do a google search for "***-**" and try to find my site in the results. Last time I checked I was down to position 33.

The site is "laser hair replacement dot net" - look at the google cache as the page obviously no longer exists.

Please however do not click on any of the google ads - although I could probably do with the money :-) - I do not want to profit from this unpleasentness.

Please take a look if you can and tell me what you think.

This is what the solicitors are saying in their contact with me.

"Given, as set out above, you have been wholly aware of the ownership of the above trade marks as belonging to our client, you have acted with deceptive intent when utilising those mark for the purpose of advertising third party hair replacement services."

NOTE - Amended this post to remove the offending trademark - which was in the original post - wouldn't want to end up with this forum post ranking for it. :-)

[Frank Donovan]

Pending some qualified legal advice, why don't you just disable the AdSense code on the offending page?



Frank

[sbucciarel]

Now it's clearer what their beef is. You should talk to a lawyer, but I still believe that they do not have a winnable case. I would go to court on this one if I had to and would not pay them a dime.

[LB]

How many times in every legal post on this board does one have to say, "talk to a lawyer" before it actually happens...?

My thinking is...if you can't afford a lawyer then you probably aren't worth suing. If you have assets to protect from suit- then you can afford a lawyer.

"Warrior Forum Legal" is free but I don't think they can represent you in court.

[IM-Still-Trying]

Let me just say that if I have too, I will definately be talking to a lawyer.

The purpose of the initial post was not one of "help", but one of "have any of you 'more' experienced internet marketers ever had this happen to you?" questions, and what was the outcome.

Personally, I believe that someone is trying it on - I will also not be paying a penny to them and I will see them in court first.

[JohnMcCabe]

I'm not sure which legal system you're operating under, but I'd get me to a lawyer. Then, based on the lawyer's opinion, I'd consider my next actions. If the other party did initiate an action, I'd be tempted to file a countersuit charging them with frivolously interfering with your ability to operate you business.

I'm not a lawyer, nor do I have any skin in the game, so that's easy for me to say.

If it is a cyber-bully, a return letter from another lawyer may be enough to send them seeking easier prey.

It's like burglar-proofing your home - crooks are lazy, so you just have to be tougher to victimize than the next guy.

But get at least a consultation to see what you are really up against...

[Ilya Feynberg]

What I'm about to say is not advice, I am not a lawyer and seek your own consule. This is just friendly talk from me to you

I've been through this situation in different ways more than just a handful of times. Understand this....9 times out of 10 the company and lawyers that are going after you have virtually no legal ground to stand on, no balls, and fully understand before that if this were to go to court they would almost surely have no real way of winning the case.

They do understand of course that 9.9 times out of 10 the person behind that site is simply inexperienced, scared easily, and can be intimated easily. People usually almost always comply because of fear and because lawyers can talk a big game.

The interesting thing....9 times out of 10....the site or owner who is being attacked is not actually infringing on any trademark laws. But it's an easy way for them to remove either negative feedback on their product or service, or to remove competition. This is always the principle reason behind their actions.

My favorite way to deal with lawyers? Tell them to go f**k themselves. If they really start getting in the way of business, I will take legal action against them. I have done this twice and never went to court (settled long before) because they understood quickly they don't have a leg to stand on.

That being said....you have to MAKE SURE that you are not infringement on their trademarks for real. Contrary to popular belief, writing about another company, using their trademark name or words in a post, a title tag etc is not infringement. Remember...that the key reason trademark laws exist is so that companies can insure that their buyers, prospects etc... are not being tricked or mislead in thinking that you are in any way shape or form part of their company, endorsed by them, or using their trademark as part of your branding campaign and so on.

Personally, I wouldn't have removed that page. You've let them win that fight already (although you could just put it up). I would not pay them a dime. Don't respond to them until you know what you're legally going to do about it. Every communication can count against you or for you...so do it with a strategy in mind.

And PLEASE PLEASE PLEASE always remember.....that lawyers and the legal teams of companies no matter how big or how small....are just people....usually great bullsh*ters and lairs....and DO NOT MAKE LAWS AND DO NOT ENFORCE LAWS.

Judges and courts enforce laws.....not lawyers. Remember that the burden of proof is on them, not you. THEY have to work hard to prove that you infringed on their rights, not the other way around.

Either way good luck!

P.S. Looks like you might be operating out of the UK so I'm sure what the laws are over there. As always, seek the legal advice you need.

[davezan]

Originally Posted by scrofford

I have heard of "trademarked" names, but "trademarked" words? How is that possible? Words themselves unless they are put together as a name can't be trademarked or the whole english language would be illegal to use wouldn't it? Maybe I don't understand or am just an airhead this morning lol.

Well, Shell and Head And Shoulders are common words in the English language
for a mollusk and a person who's above the rest. Yet you still see people load
gas at Shell and wash their hair with Head And Shoulders because both of 'em
are being sold "distinctively" rather than their descriptive or common meaning.

Make sense?

[JustVisiting]

Originally Posted by IM-Still-Trying

Let me just say that if I have too, I will definately be talking to a lawyer.

The purpose of the initial post was not one of "help", but one of "have any of you 'more' experienced internet marketers ever had this happen to you?" questions, and what was the outcome.

Personally, I believe that someone is trying it on - I will also not be paying a penny to them and I will see them in court first.

I see you are in the UK. Why not try Citizens Advice? Could be a complete waste of time but I think it's free? They may be able to direct you to a good lawyer. Just a thought.

One final thought: "99 per cent of lawyers give the rest a bad name"

[Kay King]

Pay the money and talk to an attorney qualified to give trademark advice.

You are getting legal advice on a forum from people in different parts of the world - and acting on that advice is not in your best interest. The outcome may hinge on where you live and where the complaining company is located.

I hope once this is resolved you will post the end result here as I think that would be useful knowledge. Good luck - hope you can put this behind you quickly.

kay

[IM-Still-Trying]

Sent the solicitors a quite ar**y (but professional) email last night claiming that I was currently seeking legal advice over this matter - and guess what, had a reply today stating that - as I had removed the offending "trademarked" post, their client now no longer wished to persue the matter further.

Unbelievable - makes you wonder how often they get away with this sh*t!

So hopefully this unpleasentness has a happy ending.

Thanks to all for their comments and advice - was a great source of help.

Best regards to all. (and happy xmas - only 3 weeks away)

[JustVisiting]

Originally Posted by IM-Still-Trying

Sent the solicitors a quite ar**y (but professional) email last night claiming that I was currently seeking legal advice over this matter - and guess what, had a reply today stating that - as I had removed the offending "trademarked" post, their client now no longer wished to persue the matter further.

Unbelievable - makes you wonder how often they get away with this sh*t!

So hopefully this unpleasentness has a happy ending.

Thanks to all for their comments and advice - was a great source of help.

Best regards to all. (and happy xmas - only 3 weeks away)

They were "trying it on". Can you post the name of this firm for future info please?

[IM-Still-Trying]

To be honest - I would rather not put their name up here and risk incuring any other issues - the last few days have been a bit of an eye opener to the legal system, and one I do not wish to experience again for a while.

However, if anyone else did have a similar issue, PM me with the name of the solictors, and I'll tell you if it is the same bunch.

ie I won't tell you who they are, but I'll certainly tell you who they're not.

Can't say fairer than that.

[tjs1954]

Originally Posted by scrofford

I have heard of "trademarked" names, but "trademarked" words? How is that possible? Words themselves unless they are put together as a name can't be trademarked or the whole english language would be illegal to use wouldn't it? Maybe I don't understand or am just an airhead this morning lol.

I agree, how can words from the dictionary be copyrighted? I understand you can't use Coke's label or trademark but they don't own the word "coke", Example: coke is a by-product of burned coal and is used in blast furnaces to make steel.

Maybe it' someone just trying to get you off page one because you are in a better spot than them!

[JustVisiting]

PM me the name? You live in the UK not Russia or China

[tjs1954]

Originally Posted by IM-Still-Trying

Look OK - I've removed the offending page from my site and requested google de-index the page, but at least from my view point, my page is still appearing in google search results now in position 33 - and google is still displaying the cached result.

I'm was going to post the link to the cached result here, but the system here will not let me.

Do a google search for "***-**" and try to find my site in the results. Last time I checked I was down to position 33.

The site is "laser hair replacement dot net" - look at the google cache as the page obviously no longer exists.

Please however do not click on any of the google ads - although I could probably do with the money :-) - I do not want to profit from this unpleasentness.

Please take a look if you can and tell me what you think.

This is what the solicitors are saying in their contact with me.

"Given, as set out above, you have been wholly aware of the ownership of the above trade marks as belonging to our client, you have acted with deceptive intent when utilising those mark for the purpose of advertising third party hair replacement services."

NOTE - Amended this post to remove the offending trademark - which was in the original post - wouldn't want to end up with this forum post ranking for it. :-)

I looked at your site, what word were they trying to say you can't use??
I think it's a bunch of BULL myself from someone trying to get a better ranking on Google that is competing with you, Did you look up the law firm online to see if they are even legit?

[JustVisiting]

Originally Posted by IM-Still-Trying

Sent the solicitors a quite ar**y (but professional) email last night claiming that I was currently seeking legal advice over this matter - and guess what, had a reply today stating that - as I had removed the offending "trademarked" post, their client now no longer wished to persue the matter further.

Are these really solictors? Could be a scam? Their 'client' may not have known anything about this. They would just pocket the 2K.

[tjs1954]

Originally Posted by IM-Still-Trying

Hi Guys and Gals,

I have a question regarding "Vicarious Infringement".

I have a blog which discusses laser hair replacement - I won't put the URL up for fear of being accused of advertising.

Anyway, in all my blog posts, I have google ads running at the top of every one.

Yesterday, I received an email from some solictors claiming "Vicarious Infringement" on the blog post.

In the blog post, and in the blog tags, they claim, are trademarked words, one of which made my blog rank on page one (position 10) in google.

In viewing the blog post, my page obviously shows a set of google ads. The solictors claim that I am trying to decieve my visitors, when simply, all I have is a page that contains these words and shows relevent ads.

Upon notification from the solicitors, I immeadiately removed the page and requested that google remove it from there index.

But is also seems that they want to charge me over £2000 to cover the legal costs of there client. The whole site has only made £25 in its entire life.

Any one else experience this sort of thing before?

Regards,

Mark.

I looked at your site, what word were they trying to say you can't use??
I think it's a bunch of BULL myself from someone trying to get a better ranking on Google that is competing with you, Did you look up the law firm online to see if they are even legit? I would never have removed my site if it's on page one, I would tell them to go to H**L!!

How can words from the dictionary be copyrighted? I understand you can't use Coke's label or trademark but they don't own the word "coke", Example: coke is a by-product of burned coal and is used in blast furnaces to make steel.

Maybe it's your competition just trying to get you off page one because you are in a better spot than them!

[Ilya Feynberg]

Originally Posted by IM-Still-Trying

Sent the solicitors a quite ar**y (but professional) email last night claiming that I was currently seeking legal advice over this matter - and guess what, had a reply today stating that - as I had removed the offending "trademarked" post, their client now no longer wished to persue the matter further.

Unbelievable - makes you wonder how often they get away with this sh*t!

So hopefully this unpleasentness has a happy ending.

Thanks to all for their comments and advice - was a great source of help.

Best regards to all. (and happy xmas - only 3 weeks away)

Congrats on getting away from it....Although I still think you were just been bullied around and had no need to take anything down. (again I'm not a lawyer, just talking form experience).

Originally Posted by JustVisiting

Are these really solictors? Could be a scam? Their 'client' may not have known anything about this. They would just pocket the 2K.

This is actually a very good point to bring up. I've actually heard about this happening before in the past. Interesting....maybe look further into this...seriously! If they are a scam and bogus firm...put your posts back up and then tell them to go f**k themsevles (literally this time) if they contact you again.

[JohnMcCabe]

Originally Posted by tjs1954

How can words from the dictionary be copyrighted? I understand you can't use Coke's label or trademark but they don't own the word "coke", Example: coke is a by-product of burned coal and is used in blast furnaces to make steel.

You are perfectly clear to use the word 'coke' in any manner you please - coal byproduct, illegal drug, whatever - as long as you aren't referring to the concoction of sugar, carbonated water and carbolic acid sold by the Coca-Cola company.

In fact, you're free to refer to the soft drink by its nickname as well, as long as you don't try to pass yourself off as the trademark owner, i.e. try to register and operate buy-coke-from-me.com or some other blatant infringement.

Another fact - you can't copyright book titles. That's why folks like the "For Dummies" or "Chicken Soup for the Soul" publishers trademark the phrases that refer to their products. The trademark stops other publishers from using knockoff titles.