Some advice on IP/Trademark issues

Factual Questions
1

Before anyone says anything yes you are not my lawyer, and besides, this is just information for me, I’m not directly involved.

Some background,
A UK based company Games Workshop released a miniatures game called Bloodbowl many moons ago (15+ years). They rightly have the term Bloodbowl trademarked, fair enough.

There is a lot going on but the thing I wanted to focus on is this:

In the last few days, they have sent Cease & Desist letters to several website operators, where the domain name includes ‘bloodbowl’ within the address. Basically saying your domain address cannot include the word ‘bloodbowl’ in your address.

The most high profile of these is a website called Talkbloodbowl, with a web address of www.talkbloodbowl.com. This website is a forum which is used by people who play the game all over the world, it is used to exchange tips, tactics, gneral information about the game, to organise tournaments, to show off the latest paint job or converted team. So basically a community hub for the game.

Importantly, the website is non profit and non commercial, but, and this was raised in the C&D letter, it does have a ‘donate’ button to help defray the hosting costs. According to the owner of the site, who is an indivudal, not a company or trading name, the donations do not even cover costs let alone provide any sort of income or profit.

Is there a basis under IP law for this action by Gamesworkshop? It seems to me that a genuine fansite would fall under fair use? as it is pretty clear that it is not an official GW site. (another point raised apaprently was the potential for confusion with it being official content.)

2

Obligatory IANAL.

There have been quite a few cases like this - and the usual answer is that you can tell the company to sod off. The only reasonable basis that they can take action is if they can show they are suffering harm because someone might mistake the talk website as being an official website. They would need to show this in court. It is very rare for a company trying this to win.

What is happening is probably one of two things:

  1. that someone is playing threatening legal letters. This is a great game where you get a lawyer to write an intimidating letter with lots of vague but nasty sounding legalese on really impressive letterhead. It is often a very cheap way to get people to cave in to some demand. The question is, to what end? The usual reason companies do this is because the website in question is openly critical of the product, and they want it shut down. But this doesn’t seem to be the case. Maybe they want to start their own forum site, and control it, and advertise on it. Seems unlikely.

  2. That this firm of lawyers are pro-actively going out and shutting down similarly named sites, and will charge the main company for the efforts they go to. So it is possible that the main company doesn’t even know what is going on. Yet.

I would write to the main company, not to the lawyers, and ask what is going on. It would probably help to remind them just how much value and continued good will the talk site brings, and how you are sure there is some trivial mistake.

3

To add to what Francis Vaughan said, a third possible explanation occurs to me: in order to retain control of a trademark, a company needs to show that it has defended it – ie actively taken measures to prevent someone else making use of it in ways that would be damaging to its value to them.

It may be that Games Workshop have no real interest in shutting down these websites at all, and that the purpose of the exercise is to have the lawyer’s letters on file, so that – should there ever be a serious dispute over the trademark in the future – they can show that they have actively defended it.

4

IANAL and IDNSAAHILN (didn’t stay at holiday inn last night)

Here’s something from a case where there were actual products being sold and the domain name contained another companies trademark, in this case the courts said the consumer would not be confused by the usage.

“If defendants are only using IPC’s trademark in a “non-trademark” way - that is, in a way that does not identify the source of a product - then trademark infringement and false designation of origin laws do not apply.”

5

If the website solicits donations or has advertising, it is a commercial website, according to a lot of caselaw. The question of there being a likelyhood of confusion would have to be decided by a court, but the website in question is probably using the mark for a commercial purpose.

6

http://websmurfer.devnull.net/ received such a threat 4 years ago, and nothing happened.

In my experience, this sort of thing is often automated. And, of course, machines are not smart enough to know whether you are appropriately using the trademark.

Still, it’s possible this is just intimidation–I seriously doubt the fansite owner would have the money to defend against an actual suit. And it is apparently working.

7

IANAL, and all that.

I am in the US, not the UK, so this isn’t really applicable, but I put it out as a source of reference. In the US, trademark law is governed by the Lanham Act.

I would agree with the advice to just ignore the letter. But, in the US at least, trademark law emerged from the Lanham Act, and in recent years something arised called the doctrine of initial interest confusion, which means that if a consumer does a search on a trademark, or goes to a domain name that is also a registered trademark, and is directed to a site which is not the trademark owner’s, even if the consumer eventually gets to the proper site and culminates a sale, there is “initial interest” confusion because the consumer was diverted.

This link contains more info.