[Aquarello]

Welllllll.

As some of you know, I maintain a website of 2000+ uses for peanut butter: http://members.kconline.com/kerr/pb.htm

I received a registered letter today, from the J. M. Smucker company of Orrville, Ohio. Seems like someone there finally visited my website and decided to do something about it. Seems like my use of the Jif color scheme, "constitues unfair competition" and "dilutes the valuable good will that exists in the Jif brand" and that they demand that I cease to use the Jif color scheme immediately.

My goodwill towards the Jif brand is diluted, indeed.

:shake

 

[Particle Man]

:shake

So what are you gonna do?

 

[Scot]

Hahahah!! Find a country that uses the same colors on their flag, tell them you are from that country and threaten a lawsuit for them being predjudicial towards the people of that country.

 

[JEWELZ007]

Yeah! Or tell them its for the Christmas holidays.. and stop being a scrooge! :laughing

 

[ManaBurrn]

Ignore it. You are not selling a product, and you cannot copyright colors (to my knowledge). If they take this to court, the judge will laugh in their face.

They're just trying to intimidate you. :mad

 

[JEWELZ007]

Azerbaijan!

 

[Scot]

JEWELZ007 said:
Azerbaijan!

Holy cow! I am actually half Azerbaijanian!:laughing

 

[Apocolypse]

is that where the poo fetish comes from?

 

[Scot]

Apocolypse said:
is that where the poo fetish comes from?

I was kidding......
I don't have a poop fetish!

Now back to Andy's Peanut butter problem

 

[Aquarello]

Not sure what I'm going to do yet. My understanding is that you must defend a trademark in order to maintain it, and they've given me 14 days to comply. Thing is... I've had that color scheme up there for 5 years now, and I consistently rank higher than them on most search engines for the term "peanut butter." I mean, seriously, they're 5 years out of step. Couldn't that constitute not defending their trademark?

...but realistically, I'm not going to court over a color scheme of a joke website.

:rant

 

[Stillie]

JEWELZ007 said:
Azerbaijan!

Tell them you're responsible for starting the recent coup in that country and JIF is next.

 

[ManaBurrn]

Aquarello said:
...but realistically, I'm not going to court over a color scheme of a joke website.

:rant

And neither will they.

 

[bilbo33889]

Move on... put up the color scheme of Skippy or Peter Pan peanut butter next. Just rotate the colors every couple of months.

 

[Jester27]

Tell em to eat the peanuts out of your :shit and then you'll change the colors. To my knowledge, there isn't a copyright on colors if you're not using their name. If there was, Coca Cola could go after Ducati for the red color scheme.

 

[karl_996]

Scot said:
I was kidding......
I don't have a poop fetish!

Now back to Andy's Peanut butter problem

I heard you eat poo.:redflip

Eritrea

South Africa

Nambia

 

[ManaBurrn]

Ask their competitors permission to advertise their peanut butter, and advertize every one but Jif. Make sure you include a story about how retarded the JIF company was on the page and urge people to "consider their actions" when choosing Jif. :redflip

 

[Baby Gorilla]

I'm not researching it, but I'm pretty sure they are blowing smoke.

It's not worth their money, and they have to make the case, not you.

Here's the file I have from law school on the topic if you want to read it....

Intellectual Property in Cyberspace – esp. Trademarks and Domain Names.

Trademarks are common law IP law. Eventually, it got codified into state and federal law (Landham Act).
· You can register via a central registry your trademarks.

Domain Names as Trademarks

Panavision Int’l v. Toeppen (1998)
· Toeppen was accused of taking trademark names, registering them as domain names, and then selling them for high price to the rightful owners.
· Famous trademarks don’t need any proof of harm if you use it.
· Not-Famous trademarks have to show some infringement and harm.
· Lesser ones you have to prove it’s likely to confuse.
· This is cyber-pirating.
· Problem of Dilution (powerful cause of action for famous trademarks)
1. Mark is famous;
2. Commercial use of mark;
3. Done after mark is made famous;
4. Dilutes the quality of the mark.
· Toeppen claimed he wasn’t doing “commercial use” but court disagreed. He was “spoiling.” He took the name “Panavision” and was trying to sell it, taking it from the rightful owner. Holding onto a trademark and trying to sell it is “commercial use.”
· Any use of a famous trademark is actionable. For the Internet, the instinctive response of the public is to enter the company’s name. Not finding what they are looking for can be discouraging. It diminished Panavision’s ability to market their goods on the Internet.
· Often compared to cyber-squatting

Avery Dennison Corp. v. Sumpton –
· Problem with domain name is that there can only be one name worldwide. So, where several company can have the same name globally in reality, the Internet only allows one.
· In this case, the defendant ran a personal e-mail service where domain name was selling them for e-mail use. It tied up domain names so nobody else can use them.
· They tried to claim Dilution, but it didn’t work for them. Why? Name was distinctive, but not famous. There’s an 8-point test on p. 813 helps decide is a registered trademark is distinctive and famous enough to prevail here.
· Another point is that Sumpton was not selling it as a trademark but rather a last name. They were not trying to sell a domain name back to the rightful owner.
· They were also not diluting the Avery name as Panavision was impacted. More so, the .net and .com versions were not all taken. Avery was still able to use their name on the internet. Finally, they were not doing anything to tarnish the Avery name.
· So, dilution did not happen.

Congress in 1999 passed an act to deal with this rather than let the court muddle through it.
· Consumer protection act to come against cyber squatting – Referred to as Cyber Piracy – 11 U.S.C. §1125(d)
· IF there is bad faith intent present, you have a cause of action for this.
· Multifactor test for this.

Sporty’s Case – Competitor (Spotty’s) bought domain name so they could keep Sporty’s from using it. It diverted surfers from one site to their own. Their excuse didn’t fly. It was a hard-nosed business tactic.

Northern Light Case – Man bought the site but had a legitimate use that was somewhat phony. He got to keep the name, but had to make links to the proper sites to avoid confusion.

Planned Parenthood case (1997) – Anti-abortion guy bought their domain name to run his site. Got sued.
· Sued claiming dilution under trademark law. Odd since it isn’t a commercial case. However, court sided with PP claiming that this counts as “in commerce” by curtailing PP’s ability to offer services and information. Also pointed out the Internet crossed state lines so it make it interstate commerce.
· Defendant was selling a book and had links to other sites that tried to raise money. So, there are commercial implications.
· Lanham Act is applicable.
· The likelihood of confusion – Page 828 to 831 lists factors they consider to establish this.
· First amendment doesn’t protect you from using a domain name. It’s not seen as communicative in quality when commercial interests get involved.
· Parody defense? Only works if it is obvious parody to prevent confusion.

Metatagging? When you enter words for a web search engine, you can enter words for searching. Can you be in violation to use copyrighted names for these tags? It leads people to your site.

Brookfield Communications Case (1999) – You can do this, but viewers must be clear about the fact that you aren’t offering the thing they look for. In this case, they used the metatags to draw people from one site to them which didn’t offer the named service but a competition.
· Plaintiff emphasized that this was “riding on someone else’s coattails.”

Playboy case – Sued prior model for running her own site. No domain name issue. However, the tile of site said “Playboy” and “Playmate” in the metatags
· “Fair use” is allowed. In this case, she is a former Playboy Playmate for 1981, so her statement was accurate and permissible. Site did not deceive people into thinking someone was going to a Playboy site.
· Even though “Playboy” and “Playmate” are famous words, they come from common words, and can’t be protected.

From what I see, you are not a business competitor, and you are not doing anything to confuse your web site with that of Jif. Most you can do is state on your site indicating you are not to be confused with Jif of their products and put a link to their home page.

They're full of :shit.

 

[Brett87lx]

Thats total bullshit. A company cannot claim ownerhship on colors. Otherwise the court system would be clogged full of lawsuits over who owns which "color". Tell them to eat :shit. Why would they waste time sueing a joke website over colors when they aren't even in competition with it.

 

[ManaBurrn]

http://lajollalight.com/2003/11/20/n031120guitarist_proves.html

Guitarist proves peanut butter and jazz make a tasty mix

MEET YOUR NEIGHBOR with LANCE VARGAS

Choosy moms may choose Jif, as the ad slogan states, but Jif doesn't choose David Warren, even though the La Jolla jazz guitarist wanted to give the peanut butter company some free publicity.

Warner has been a fan of the creamy spread for many years and named his group, Peanut Butter Jazz and Blues, in its honor. The group's logo even resembled the product's label, borrowing heavily from its design and color scheme.

"Not to offend peanut butter or any company, but peanut butter is not the most sophisticated of foods," said Warren. "We were playing similar music. We play Allman Brothers and then we play 'Take 5' and some of the simpler Miles Davis tunes, and then we play Lynard Skynard and some Beatles tunes in a jazz style, but not in a complex, reharmonized, seriously intellectual (style)."

In the week's preceding the group's CD release party at La Jolla's Hard Rock Cafe, Warren came up with a novel idea that he thought would be quirky and fun. He wrote to Jif and asked if they would like to sponsor the group and give away free peanut butter at his shows.

It seemed like a natural fit. He even offered to place a quarter-page ad in the paper with Jif's logo on it free of charge.

In the letter, Warren wrote, "I absolutely LOVE Jif peanut butter. It has the perfect creamy texture that's not too artificial, a slight graininess gives it a traditional peanut butter flair."

He goes on to say, "All we are asking is that maybe you can send us a small quantity of Jif peanut butter, maybe, if you have them, in smaller-sized promotional containers."

When Warren received a certified letter from Jif's parent company, Smuckers, a short while later, he thought the company was playing ball. Instead of the letter of gratification he expected, received something equivalent to a cease and desist order to stop using the brand's likeness in his materials.

"I think they took a harder line position than I thought was necessary," Warren said, "but I understand them having concerns."

The letter states that Warren's homage to their product was flattering, but Smuckers was concerned that customers may be confused by the use of the company's color scheme and may think that Jif is associated with the band.

Warren can relate to that sentiment, even if the company never bothered to check his band out.

"They don't know us," he said. "We could be throwing Jif at people and hitting them on the head with it."

Jif's director of corporate communications Brenda Dempsey wrote in an e-mail: "We appreciate Mr. Warren's enthusiasm towards our Jif brand. The letter we sent Mr. Warren politely requested that he refrain from the unauthorized emulation and use of our brand marks in his band's identification as they so closely resemble our Jif trademark that it may suggest an association with our company or our products that does not exist."

Warren has since altered his logo slightly but has retained the color scheme. He also changed the name of the band to the Dave Warren Group. He has released a CD, "Funplay" and performed at Hard Rock.

 

[H2O_Goalie]

Post the letter on your website, and be sure to allow others to comment on the lameness of Jif.