Interesting copyright/ tm dillema

businessdit

Recently I set up a digital magazine publication. Recently after acquiring the .ie domain and publishing a few issues I found that there is a print magazine of the same title in the same industry. The only difference in the name is that I always use .ie after the brand name. This particular magazine is also on the shelves for sale in ireland. I do not want to give away the name of the publication or the industry, but I will use the following as an example.

For example ( not actual name or industry)
My online magazine is a mountaineering magazines called "summit.ie" but there is a print magazine in the uk (and distributed in IRL) called "Summit"...

Am I in trouble here? My publication is quite low profile and the other magazine has not approached me, but possibly because they do not know about me. I own the .ie domain for this name but wondering what to do.

Also it is worth mentioning that my digital magazine is only targeted at Irish people and is free. But we will be canvassing advertisers soon.

Alan Shore

Does the other company have any trademarks in relation to the name?

businessdit

Alan Shore wrote: »

Does the other company have any trademarks in relation to the name?

Hi Alan - I am not sure , how would I check this do you know. I haven't has the time to check this s only saw this mag on the shelves over the weekend and got a surprise. The magazine is owned by a fairly big media publishing house which is worrying...

mneylon

Most of the patent offices are online: http://www.ipo.gov.uk/t-find.htm

Gloomtastic!

If the print magazine is an established brand, ie longer than you, then you are going to have to change your title name.

If the magazine is published by a large company, and they chose to sue you, which they have every right to do, then you will be in serious financial trouble.

Change it quick, before they hear about it.

Peterdalkey

On the face of it, it appears that you failed to do your research properly and this is the consequence. Gloomtastic is correct and sooner is best! As it stands you could be sued for "passing off" as well as copyright/trade mark infringement, you just don't want to go there.
Come up with a unique name that perhaps incorporates the disputed word, much as The Times and The Irish Times solution.

Is it infringing if the competitor has not registered their trading name or trademark in ireland?

Peterdalkey

You do not have to register to claim copyright or an unregistered trade mark, you simply have to claim it and have proof of first use!!

jmcc

Gloomtastic! wrote: »

If the print magazine is an established brand, ie longer than you, then you are going to have to change your title name.

Not necessarily. It depends on markets and jurisdictions.

If the magazine is published by a large company, and they chose to sue you, which they have every right to do, then you will be in serious financial trouble.

The first step would be to try to acquire the domain name rather than suing.

Regards...jmcc

jmcc

Peterdalkey wrote: »

Gloomtastic is correct and sooner is best!

No he is not. There are not enough facts available to decide if there is a TM issue. Generally when it is a TM issue, there's a domain dispute procedure that can be used. However in the absence of a TM, it is possible for more than one websites of the same name but in different ccTLDs to exist targeting their local markets.

As it stands you could be sued for "passing off" as well as copyright/trade mark infringement, you just don't want to go there.

If the TM exists. And if there is some relationship implied. Proving "passing off" could be a lot more difficult as there are multiple jurisdictions involved.

Come up with a unique name that perhaps incorporates the disputed word, much as The Times and The Irish Times solution.

Title name can be quite tricky but it depends on how that "disputed" word is used. The problem with these threads is that there are not enough facts and details.

Regards...jmcc

jmcc

Deleted User wrote: »

Is it infringing if the competitor has not registered their trading name or trademark in ireland?

If the competitor has an EU trademark (Community Trademark/CTM) or an IE trademark, then there is a potential problem.

Regards...jmcc

Peterdalkey

The domain name issue is the least of his worries, the possible legal infringement of the IP rights and ownership of the established player are likely to be far more serious that some bitty IEDR spat!

Peterdalkey

jmcc wrote: »

If the competitor has an EU trademark (Community Trademark/CTM) or an IE trademark, then there is a potential problem.

Regards...jmcc

I repeat again, Registration is NOT required to establish ownership of a Trade mark or Copyright.

jmcc

Peterdalkey wrote: »

The domain name issue is the least of his worries, the possible legal infringement of the IP rights and ownership of the established player are likely to be far more serious that some bitty IEDR spat!

If.

The problem is that there is not enough data to make any such decision. There's an online publication in a different jurisdiction and a print publication (possibly with a website) in another.

Regards...jmcc

Gloomtastic!

The OP, as it stands, is guilty of 'passing off' his product as the more established competitor. It's the same name. End of story. Tring to confuse things is not helpful to the OP and the serious sh1t he is going to be in when the other publication finds out. They will throw the book at him and he will lose everything.

jmcc

Peterdalkey wrote: »

I repeat again, Registration is NOT required to establish ownership of a Trade mark or Copyright.

It can be a hell of a lot stronger to have a registered TM when taking any legal case or domain dispute over a domain or passing off. As for the copyright issue, if the OP is generating original content, then copyright exists in that too.

As it stands, the situation might be that the title of the OP's site and the competitor's publication is the issue. These threads tend to be a bit flakey when it comes to the TM/copyright/domains aspects because they rarely have any hard details.

Regards...jmcc

Peterdalkey

jmcc wrote: »

It can be a hell of a lot stronger to have a registered TM when taking any legal case or domain dispute over a domain or passing off. As for the copyright issue, if the OP is generating original content, then copyright exists in that too.

As it stands, the situation might be that the title of the OP's site and the competitor's publication is the issue. These threads tend to be a bit flakey when it comes to the TM/copyright/domains aspects because they rarely have any hard details.

Regards...jmcc

Flakey! I agree, especially when some posters clearly have no idea what they are talking about when it comes to this subject.

jmcc

Gloomtastic! wrote: »

The OP, as it stands, is guilty of 'passing off' his product as the more established competitor.

Rubbish. It has to be proven in a court. It is generally a civil action.

It's the same name. End of story.

No. It is not. There are not enough facts available.

Tring to confuse things is not helpful to the OP and the serious sh1t he is going to be in when the other publication finds out.

If anything, your advice to cut and run based on very few facts is far worse. The other publication owner has to consider if there is any 'passing off', what basis for any legal action exists and what remedy should be sought.

They will throw the book at him and he will lose everything.

Based on what?

Regards...jmcc

jmcc

Peterdalkey wrote: »

Flakey! I agree, especially when some posters clearly have no idea what they are talking about when it comes to this subject.

Yes and trademarks. And most people have a very poor understanding of Copyright but are willing to give others the benefit of their own inexperience anyway. If there is an issue then the OP would be better off seeking a proper legal opinion.

Regards...jmcc

Gloomtastic!

jmcc wrote: »

Rubbish. It has to be proven in a court. It is generally a civil action.

No. It is not. There are not enough facts available.

If anything, your advice to cut and run based on very few facts is far worse. The other publication owner has to consider if there is any 'passing off', what basis for any legal action exists and what remedy should be sought.

Based on what?

Regards...jmcc

Have you ever faced a legal suit from one of the big UK publishing companies? I have and they will take the OP to the cleaners. They'll want his database, all his financial records and everything do to do with his publication.

How is the OP going to pay to fight them off? No legal firm will touch him unless he can pay them upfront.

jmcc

Gloomtastic! wrote: »

Have you ever faced a legal suit from one UK publishing company?

Publishing books for an international market covering the Ireland, the UK, the US, Canada and Australia would provide some insight as would dealing with attempted and actual infringements and 'passing off' issues. I've even had to deal with UK (and others) publishers over infringements. And as for domain names, it may have escaped your notice that this is, at its core, a domain name issue. There was a case of a UK publisher trying to claim an .ie domain infringed on its IP due to it having sales in IE but no other standing. Its action to acquire the .ie domain failed.

Regards...jmcc

Peterdalkey

the domain name issue is only an easily rectified sideshow to the possible major IP law infringement.

jmcc

Peterdalkey wrote: »

the domain name issue is only an easily rectified sideshow to the possible major IP law infringement.

What possible "major" IP law infringement?

Regards...jmcc

Peterdalkey

Infringement of the Copyright and or legally owned Trade Mark and possible exposure to damages for "passing off" etc etc. And you claim expertise in the area!!

Gloomtastic!

jmcc wrote: »

it may have escaped your notice that this is, at its core, a domain name issue.

No it's not. The OP states that he's published a digital magazine called x.ie. he then discovers that there is already a magazine (albeit in print) in the same marketplace called x. The OP is guilty of passing off.

I edited my previous post to include the most important bit though - how is the OP going to fight this? No legal firm will work on his behalf on the slim chance he might be able to justify his actions in front of a judge. Not a hope!

Peterdalkey

And yes, I do have significant experience in ownership of various patents, registered trade marks, unregistered trademarks, licensing of my trademarks and other IP and experience of defending them. i also understand the potential for substantial costs involved for both sides, through personal experience.

jmcc

Peterdalkey wrote: »

Infringement of the Copyright and or legally owned Trade Mark and possible exposure to damages for "passing off" etc etc. And you claim expertise in the area!!

Rubbish. Without details, this is all hypothetical. You don't seem to understand where the copyright problem exists (in the title or the content). And the OP has stated that they created original content which is actually copyright.

Passing off concerns misrepresentation in the course of trade (a business essentially claiming or implying some connection where none exists). From what I remember, it it does not create any monopoly on a word, phrase or business name. That's why trademarks and service marks exist.

It has not even been established that there is a trademark and in what classes that trademark exists. I don't claim "expertise" in the area. However I think I was the only one to suggest getting a proper legal opinion.

Regards...jmcc

jmcc

Peterdalkey wrote: »

And yes, I do have significant experience in ownership of various patents, registered trade marks, unregistered trademarks, licensing of my trademarks and other IP and experience of defending them. i also understand the potential for substantial costs involved for both sides, through personal experience.

But no actual experience or expertise in publishing then?

Regards...jmcc

Peterdalkey

It is pretty obvious that the OP, from his post, did not do his homework/research properly. He now realizes this and came on here looking for advice as to how to extricate himself from this mess. I certainly formed the view that he did not have the resources or the interest in getting involved in any legal dispute with the UK publishers. Most posters took the sensible, pragmatic and lowest cost option, change the name and move on.

Peterdalkey

jmcc wrote: »

But no actual experience or expertise in publishing then?

Regards...jmcc

Actually yes, I did own a publishing company that had one publication, a guide in book form, which sold over 1 million copies.

jmcc

Gloomtastic! wrote: »

No it's not. The OP states that he's published a digital magazine called x.ie. he then discovers that there is already a magazine (albeit in print) in the same marketplace called x. The OP is guilty of passing off.

I'll explain it simply for you again.

A court decides.
Not you. Not me. Not some random poster on a forum.
A court decides.

The OP has a domain example.ie and has published his own magazine (which has its own copyright). The print magazine, published in a different jurisdiction sells into this (IE) jurisdiction. It has copyright in its own publication. The two are different publications. The print publication seems to have made no attempt to acquire the .ie domain name. Theoretically, if there is an issue (and trademarks exist), then it is possible for the OP to change the domain name of the site and continue publishing unique and non-derivative content.

I edited my previous post to include the most important bit though - how is the OP going to fight this?

Fight what? Something that only exists in your mind? There has been no movement from either side. The UK publication may even be completely unaware of the Irish title.

Regards...jmcc