Discussion:
What is the name of your state? DC
I am the President of an international law student organization with chapters in several law schools in the US and Canada. We are the first group to use our name and have been using it for a couple of years, and our application for a Collective Service Mark is currently in process. We are seeking this mark so that students at XYZ law school can't create an organization, call it by the same name as ours, but not be affiliated with us, because our reputation is primarily based on the events we host. Think Federalist Society or American Constitution Society. It only makes sense that students who want to have a group should be officially affiliated with the international organization if they want to use the name, right?
We are in the process of being incorporated in DC.
Anyway, we found a website a few months ago that claims to be copyrighted by a group with the same name as us. However, it is privately registered with Network Solutions, so we do not know who owns the domain. Over the past three months we have sent two emails and one Registered Letter to Network Solutions, who have dutifully passed the messages on to the registered owner of the domain. However, the domain owner has not responded.
When I spoke with Network Solutions today, they informed me that the only way that they could release the name of the registered owner is if they receive a court order to do so. My question is, do I have to wait until the Collective Service Mark is granted to ask the DC Superior Court for such an order, or is it enough that we have been using the name in trade and publication for two years and are in the process of registering?
We don't want to sue the owner, or even threaten him/her. Chances are reasonable that he might not even know we exist. We are relatively confident that a phone call to him would clear up the whole mess in a very amicable manner. However, we do need to make sure that when someone Googles our name, it does not bring up an incomplete website claiming to be ours (their website has the basic lorem ipsum text on it). We are concerned that someone looking for us will find that site and say, "oh, their site must not be up yet" and not see the real site.
So how do we go about getting a court order as soon as possible to find out who this person is so we can settle the issue before it does us too much damage? Under normal circumstances, we'd be happy to wait until the Collective Service Mark is registered, but we have a big conference coming up for which we need people to be able to find our website without too much confusion.
Answer:
What is the name of your state? DC
I am the President of an international law student organization with chapters in several law schools in the US and Canada. We are the first group to use our name and have been using it for a couple of years, and our application for a Collective Service Mark is currently in process. We are seeking this mark so that students at XYZ law school can't create an organization, call it by the same name as ours, but not be affiliated with us, because our reputation is primarily based on the events we host. Think Federalist Society or American Constitution Society. It only makes sense that students who want to have a group should be officially affiliated with the international organization if they want to use the name, right?
We are in the process of being incorporated in DC.
Anyway, we found a website a few months ago that claims to be copyrighted by a group with the same name as us. However, it is privately registered with Network Solutions, so we do not know who owns the domain. Over the past three months we have sent two emails and one Registered Letter to Network Solutions, who have dutifully passed the messages on to the registered owner of the domain. However, the domain owner has not responded.
When I spoke with Network Solutions today, they informed me that the only way that they could release the name of the registered owner is if they receive a court order to do so. My question is, do I have to wait until the Collective Service Mark is granted to ask the DC Superior Court for such an order, or is it enough that we have been using the name in trade and publication for two years and are in the process of registering?
We don't want to sue the owner, or even threaten him/her. Chances are reasonable that he might not even know we exist. We are relatively confident that a phone call to him would clear up the whole mess in a very amicable manner. However, we do need to make sure that when someone Googles our name, it does not bring up an incomplete website claiming to be ours (their website has the basic lorem ipsum text on it). We are concerned that someone looking for us will find that site and say, "oh, their site must not be up yet" and not see the real site.
So how do we go about getting a court order as soon as possible to find out who this person is so we can settle the issue before it does us too much damage? Under normal circumstances, we'd be happy to wait until the Collective Service Mark is registered, but we have a big conference coming up for which we need people to be able to find our website without too much confusion.
Q: So how do we go about getting a court order as soon as possible to find out who this person is so we can settle the issue before it does us too much damage?
A: You're a law student and you ask this kind of question? First, review your civil procedure notes. Next, get down your trust Black's and look up the definition of subpoena.
Then report back.
Answer:
I guess I made it too simplistic. I know that I have to get a subpoena. I'm just not sure how to get a subpoena without filing a complaint.
See, if I were to sue anyone, it would be the owner of the domain. Problem is, I don't know who owns it without the information that I would have to subpoena. So, the only way I can see to get the information is to file a complaint against "Unknown Defendant" and then request a subpoena duces tecum on the web company for the defendant's name.
However, I'd rather not sue the owner unless absolutely necessary. To me, that creates an adversarial relationship, and that's the opposite of what I am trying to do. It's obvious from the name that whoever owns the domain has similar interests to us, and perhaps a similar mandate. I think there's a decent chance that if I just called him/her and informed him that we owned the common law rights to the name, so please change your name or join up with us, he would say something along the lines of "oh, I didn't know" and we may have made a new friend who shares our goals. I'm concerned that if the first he hears of this issue (assuming that he hasn't been getting the correspondence I sent through the web provider) is a lawsuit, we'll have made an enemy unnecessarily. He's probably a law student who hasn't updated his contact information, since it appears that the domain is simply on auto-renew.
Anyway, is filing a complaint and the subsequent request for subpoena the only solution? I've looked it up and asked a few people around the school, both students and faculty, and nobody has run across this particular problem before. That's why I posted it here.
Answer:
I guess I made it too simplistic. I know that I have to get a subpoena. I'm just not sure how to get a subpoena without filing a complaint.
See, if I were to sue anyone, it would be the owner of the domain. Problem is, I don't know who owns it without the information that I would have to subpoena. So, the only way I can see to get the information is to file a complaint against "Unknown Defendant" and then request a subpoena duces tecum on the web company for the defendant's name.
However, I'd rather not sue the owner unless absolutely necessary. To me, that creates an adversarial relationship, and that's the opposite of what I am trying to do. It's obvious from the name that whoever owns the domain has similar interests to us, and perhaps a similar mandate. I think there's a decent chance that if I just called him/her and informed him that we owned the common law rights to the name, so please change your name or join up with us, he would say something along the lines of "oh, I didn't know" and we may have made a new friend who shares our goals. I'm concerned that if the first he hears of this issue (assuming that he hasn't been getting the correspondence I sent through the web provider) is a lawsuit, we'll have made an enemy unnecessarily. He's probably a law student who hasn't updated his contact information, since it appears that the domain is simply on auto-renew.
Anyway, is filing a complaint and the subsequent request for subpoena the only solution? I've looked it up and asked a few people around the school, both students and faculty, and nobody has run across this particular problem before. That's why I posted it here.
I've looked it up and asked a few people around the school, both students and faculty, and nobody has run across this particular problem before.
Change law schools.
Unless you can find a court that issues "investigative subpoenas" you will have to file a lawsuit.
Answer:
FYI, I can't seem to determine if Washington DC allows investigative subpoenas in general, but it seems as though 17 USC 512(h) is referring to a subpoena that would precede an actual lawsuit, in this particular instance.
So we have written the Clerk of Court of the US District Court, and hopefully we have crossed all our t's and dotted all our i's. But at the very least, this section does seem to make an exception to the normal rules of procedure for determining the owner of a website for possible copyright infringement. So that's good.
So thanks for at least pointing me in the right "investigative subpoena" direction. That helped me figure out the language I needed for my research.
Answer:
FYI, I can't seem to determine if Washington DC allows investigative subpoenas in general, but it seems as though 17 USC 512(h) is referring to a subpoena that would precede an actual lawsuit, in this particular instance.
So we have written the Clerk of Court of the US District Court, and hopefully we have crossed all our t's and dotted all our i's. But at the very least, this section does seem to make an exception to the normal rules of procedure for determining the owner of a website for possible copyright infringement. So that's good.
So thanks for at least pointing me in the right "investigative subpoena" direction. That helped me figure out the language I needed for my research. Good luck, but before you get too excited about 17 U.S.C. 512(h), you might want to read this decision:
EDIT: It's not exactly on point, but it does raise some questions, particularly Article III questions, that may limit the usefulness of this particular code section.
Answer:
I found this case to be very interesting from a legal standpoint, but agree that it's not exactly on point. Since the offensive material is in print and stored on the website itself, this seems to be exactly what the DMCA was designed to address, according to this case. ("[A] subpoena may be issued only to an ISP engaged in storing on its servers material that is infringing or the subject of infringing activity.")
I have to express confusion regarding your concern over the Article III issues. The Court seemed to dismiss them out of hand, and I would assume that res judicata would keep it that way. The only problem I could foresee having read this is the "case or controversy" issue, but I think that the blatant use of a name that is someone else's intellectual property, even if such infringement is unintentional, constitutes a clear controversy.
In any case, thanks for drawing my attention to this case, so that I can be ready should the ISP cite it.
Answer:
I guess my question is where is the copyright issue in the first place? Unless this other website has taken copyrighted material from YOUR website, I don't see where a copyright issue exists, so I'm not sure that you can use 17 USC 512 where no copyright issue exists. Names, titles, website addresses, etc., none of these can be copyrighted. Sometimes they can be trademarked, but they can never be copyrighted, so it's not clear to me where the copyright issue comes from -- that's why I suggested the Article III issues.
Now, there certainly may be trademark issues involved here, but you'll need to look at the Lanham Act to determine is a similar, 512-like provision exists -- I doubt it, but I'm not really an expert on trademark law, so you should check yourself.
Further, just because you have registered the name and have common-law rights to the name does NOT mean that you can automatically force them to give up the name or use of the name -- it will depend on timing (when they started using v. when you started using), geographical area, and notice. If they started using the name before you, there is almost no chance you can force them to change their name, or to stop using their name. You might be able to limit the expansion of the use of their name, but that may be it. In any event, this will all depend on the relevant facts of the situation, so the above may or may not be applicable to your particular situation.