If you like crime stories, you’ll love this. ‘True Crime: Hammersmith’ is the story of a deranged criminal organisation (Datadial) and the ensuing legal battle to stop it.
Chapter 1. The Best Intentions.
On August 17th, 2010; the world was rocked to its core when the Datadial blog posted an article titled ‘Increase Conversion rates – advanced techniques’. Of course, it all seemed fairly innocuous. A simple review of tools to help increase conversion rates on your website. The article named several companies and their websites and praised them for their techniques. Indeed, one man even thanked Datadial for the mention! Clearly Mr. Eames didn’t realise that he was just a pawn in one man’s cruel game; the likes of which the legal world has never seen. …until now.
Chapter 2. The Worst Intentions 17th April 2013. Almost three years later. An email is sent from Fox Williams LLP to the author of the article and owner of the website, Mr. Robert Faulkner. The email was sent on behalf of Fox Williams LLP’s client, Shopzilla.co.uk. You’ve probably heard of Shopzilla. According to their Trade mark List of Goods and Services (which was supplied in the email) they specialise in: ‘Promoting sale of goods and services of others; Internet consumer comparison shopping services; providing ratings and reviews of businesses and products and services for use by consumers; providing databases containing commercial information relating to products and merchants’. As it transpires, Shopzilla had been mentioned in Datadial’s article all those years ago. Right at the bottom. As an honourable mention, as recognition for their online service. Shopzilla had finally gotten wind of the article, after all that time; and they did the only thing any self-respecting company would do. They contacted their solicitors to have the link removed. Chapter 3. Motives Why did they want the link removed? Why indeed. Allow me to reprint the grounds of the legal action and analyse each point in-depth:
- Trade Mark infringement
- Causing detriment to the distinctive character of the Trade Mark;
- Causing detriment to the reputation of the Trade Mark by creating an undesirable association with the Infringing Website; and
- Taking unfair advantage of the goodwill attached to the Trade Mark.
Now… as I’ve mentioned, Shopzilla is legally defined as one that “provides ratings and reviews of businesses and products and services for use by consumers”. It sets itself up as one. That is the legal definition of Shopzilla. If acknowledging this definition is ‘detrimental to the distinctive character of the trademark’ and it creates an ‘undesirable association’ I daresay they might need to have a brand re-think. I wasn’t sure exactly what ‘Goodwill attached to the Trade Mark’ meant. Suing for a mention of your brand doesn’t seem like an act of goodwill to me. I have since looked up ‘Goodwill’ in legal terms and it pretty much means ‘the right to do business without direct competition’.
Basically not stealing other people’s business. (If anyone has a better definition, I’d welcome it in the comments). I’m not quite sure how praising a company prevents it making profits; but I’m fairly sure Datadial didn’t steal any of their market, or any other products that Shopzilla recommends on its site.
As requested, I’ll provide an account of the profits Datadial made through the use of Shopzilla’s name alone:
£0, 000, 000, 000, 000, 000, 000, 000
We’ll happily share in these profits with Shopzilla. It’s only fair.
2. Passing off [Fox William’s LLP’s] client’s goodwill Our client has invested significant time and money in developing the Shopzilla® brand making it instantly recognisable amongst the public as a trustworthy and reputable online comparison shopping engine. It is highly likely that the average consumer will be confused, believing that our client is in some manner connected with the Infringing Website, either through ownership and operation or through a commercial relationship or endorsement with the operator of the Infringing Website. Such connection is causing our client damage. As such, your use of Shopzilla® in this way constitutes passing off.
I had to open my legal dictionary again for this one. Basically ‘Passing off’ means creating an undue association between two parties, specifically one claiming undue association with the goods sold by another company. I’d like to state unequivocally that Datadial’s use of a link congratulating Shopzilla® on its use of product comparison is not an attempt to gain an association with Shopzilla® or any products sold or compared on Shopzilla®’s website. It would be interesting to see if Shopzilla® could provide proof that Datadial has stolen any of its business.
3. Copyright Infringement The use of the Infringing Website of text and graphics taken from our client’s websites is an infringement of our client’s copyright. You have copies and communicated the copyrighted work to the public through the Infringing Website. The use of the copyrighted work has occurred without the consent of our client, the copyright owner. We put you on notice that any continued use of our client’s text and/or graphics (in whole or in part) on the Infringing Website will constitute and infringement of our client’s copyright. This is without prejudice to our client’s position that you already have the requisite knowledge to establish such liability.
I was totally on-board until the last sentence. Even my module in Forensic Linguistics couldn’t have prepared me for that. I guess they’re suggesting that because Shopzilla® is a well-known website we should know that everything on their site belongs to them.
If Fox Williams LLP is reading this, I would recommend visiting The Plain English Campaign’s site. I’ve provided a link so you know what I’m talking about. . http://www.plainenglish.co.uk/ I hope they don’t sue me…
Legalese notwithstanding, Datadial hasn’t stolen any content from Shopzilla®. Neither text nor images have been used. Shopzilla®’s name wasn’t even used. It was a link via a URL, and you can’t copyright a URL. And even if you could (WHICH YOU CAN’T) it was a mention in a review so it’s fair use! What’s even more confusing is that Shopzilla appears to have sold out on Point 6 of its own philosophy:
‘Information is Empowering: Share it Wherever Possible’.
Chapter 4. Reasons. So far as I can tell there are no legal grounds for removing a hyperlink. We have been advised by Fox Williams to seek legal advice, so I am hoping the readers of this article can offer some help. Fox Williams have not mentioned that this is a link clean-up operation; and surely they would have gone down the normal route if that was the case. If they’d sent us a polite email asking for the link removal, we would have explained that since we have a reasonably high domain authority of 50+ the link in question would likely have little effect on their rankings and it’s 3 years old anyway so any effect would have been discounted anyway…etc As a precautionary measure we have taken down the link, as requested. If anyone has any thoughts on why Shopzilla wanted this link removed so badly, please share them here though keep it legal! Chapter 5. A riposte. Datadial is not a law-firm, but it is an internet marketing agency. We know how to use Google. Upon receiving the email, we took to the web to find out all we could about the legalities of Hyperlinking. Here are some insights into the subject as documented by Out-Law.com.
- “…hyperlinks do not transmit a work, (to which they link) they merely provide the viewer with information as to the location of a page that the user can choose to access or not. There is thus no communication of the work.” (source)
- “Just as an improved search-engine that improves the ability of users to locate material for which they are searching should not be required to obtain permission as a matter of copyright law, so providing links or access to material already publicly available should not be regarded as an act that requires any authorisation” (source)
- “every internet user enjoys access to the work simply by learning the uniform resource locator (URL) the court held. The hyperlink technique obviates the need to enter the URL manually and merely provides an easier and more convenient way to use the internet.” (source)
- “Kranten.com successfully argued that such deep linking to other sites is a widespread and commonly accepted practice on the internet and because, as in UK law, news articles can be copied for the purpose of reporting current events, provided there is sufficient acknowledgement.” (source)
The author of the original article has never been in trouble with the law. He’s an honest man who does business by the book. You can imagine his upset when he received the original letter. Faced with the fear that he would spend the rest of his life in prison, he considered transfering all of the company’s money to The Battersea Cat’s Home, and move to a Tibetan Monastery. However, he quickly rationalised the situation and sat down on his sofa with a glass of wine and a Twix. Since Shopzilla® and its lawyers are solely responsible for causing an undue amount of stress, it only seems fair that they reimburse him for the glass of wine and Twix. Twix: £0.80 Glass of wine: £2.40
Chapter 5. Prologue.
Shopzilla’s VP has come forward to apologise for the misunderstanding. The apology is in the comments below. They acknowledged that it was a mistake and said they were sorry it happened. I guess we’re not being sued anymore!
We just received a courier delivery…
I wonder what it is…
Well, how about that! A bottle of Red Wine and a box of Twixes. Thanks very much Shopzilla!
Those rascals in Europe have really done it this time. They have dreamt up the most insane law that will render any complicated website practically unworkable.
Their intentions were probably honourable but as the law is a mess but they are happening and YOU DO NEED TO TAKE NOTICE.
The law comes in on May 26th 2012.
There is a £500,000 max fine for non compliance.
It”s all about cookies
Why do cookies always come with consequences? If it isn’t calories you’re trying to avoid it’s breaching someones privacy – you just can’t win!
What are cookies? In short they are a method for tracking what you “do” on a website and where you go afterwards, how you got there etc. Most cookies are essential for a website to work. Some admittedly are a bit suspect and it’s not entirely wrong to be doing something about them but the sledgehammer approachby the EU is not the solution we feel.
The new shiny piece of legislation is being enforced as a solution; a way to protect you from the prying eyes of the web owners.
We’re not going to rewrite all the great articles out there already so here are pointers to finding out more about the Cookie Law
- Here’s the official ICO site http://www.ico.gov.uk/
- Here’s a nice well written PDF Click here to read the PDF on new EU Cookie Law’s
- Just in case the above PDF is too much to bear, you can check out this informative video that breaks the new rules down in just under 3 minutes:
- Here are some examples on how to comply with the law and implement solutions on your site http://econsultancy.com/uk/blog/9202-eu-cookie-law-three-approaches-to-compliance
- Make the pain go away: For a small price these guys will tell you what to do and how to do it, and you don’t have to learn anything legal. I think they will be busy this summer http://www.cookielaw.org/
Biting of more then they can chew?
Before you get collared by the EU police you can refer them to their own website which is used to announce the legislation and has been criticised for breaking the very same laws they intend to enforce as pointed out (and illustrated with pretty pictures) by the good folks at Code Blog here: “UK Government ‘break’ the law they imposed“.
So, to summarise: This legislation will apply to nearly everything on the web, will probably reinforce the much dreaded “pop-up” and seems to be an overall nuisance.
In conclusion, you can choose to do the following:
- Implement the new functionality to comply with the law ASAP
- Delay the implementation as long as possible
- Ignore the law
What do you think?
December 2nd, 2009.
A few weeks ago I had an interesting discussion with a few attendeesÂ to one of our online marketing workshops. The workshops are designed to give small business owners guidance in what they can be doing to improve their own marketing campaigns with advice on link building, creating content and how they could be using social media to promote their sites.
One particular debate arose on the legality of competitors squatting on variations of their branded domain names, and offering up the domain name for extortionate prices. I did a little research and dugg our the Oasis case study from earlier in the year:
Since 1991, the highstreet brand Oasis has been trading as a UK women’s clothing chain, and in 2006 the domain name oasis.co.uk was acquired by Mr. James Dale who parked the domain name and displayed sponsored links to women’s clothing sites using the DoubleClick advertising network through Google AdWords.
Earlier this year Oasis challenged the registration of the domain oasis.co.uk, stating that the domain took unfair advantage of the company brand and trademark, taking their appeal to Nominet.Â Under Nominet’s Dispute Resolution Service, the initial case had been won by Oasis, and initially decided that the domain should be transferred to Oasis.
However this was no ordinary Nominet recovery case.Â Mr. Dale then came forward shortly thereafter to advise that the complaint had been mailed to his previous address, thus meaning he found out about the decision without having a chance to appear to do anything to fight it.
Mr. Dale had failed to update the Whois registration information after changing both physical and email addresses, and only found out about the decision after a friend contacting him to offerÂ commiserationsÂ on loosing such a valuable domain. Mr. Dale was able to appeal against the decision, stating that Nominet had his correct details from otherÂ correspondenceÂ and asked that this violation was overlooked.Â He was allowed to file an appeal, although the DRS appeal to a three person panel would cost him Â£3000.
In Mr. Dale’s response to the complaint, the panel allowed the submission of new evidence, which was not their normal practice. However, due to the fact that his non-appearance at the initial hearing was due to circumstances of notification rather than just a basic failure to appear, they felt that the fee for filing the appeal was punishment enough. Thus they allowed the new evidence in the interest of true justice, rather than depriving him of the domain in an unjust fashion. By this time the appeal panel had in essence already found in favor of Mr. Dale based on the merits of the case.
Mr. Dale informed the panel that when he spent Â£4000 to purchase the Oasis domain name he had no idea that it had been a domain related to a women’s clothes shop. He had no interest in such a business and wanted to use the Oasis domain for a financial services or bingo website. Mr. Dale then produced proof of discussions that had taken place in which he could prove that the domain was intended for financial services. These kinds of claims are often viewed by dispute domain panels with much skepticism, but they could not dispute the proof provided by Dale. Combined with the fact that Oasis was a common English word, the panel accepted Mr. Dale’s argument that he did not wish to target Oasis with the registration of the domain and thus the acquisition of the domain could not be considered an abusive registration.
Due to other factors, however, the case would not end here. Unlike the UDRP, under the DRS abusive use later on is sufficient, even in cases where the domain was actually acquired in a genuine fashion. The question that then came about was if it was abusive to use the domain for sponsored links directing to women’s clothing websites. Under Nominet’s policy, parking pages are not abusive in and of themselves. The nature of the domain, it’s links, and the ultimate responsibility for the domain by the registrant must all be considered by the panel.
Since some parking pages depend on specifications set by the owner while others have content that is generated automatically, the appeal panel found it would be dangerous to simply draw conclusions by looking at parking pages. Parties should explain in detail how their parking pages work, but in this case there was no explanation by either party.
It was then claimed by Mr. Dale that the parking page originally used contained only general links. To build his case against Oasis, Dale produced a statement from the parking company. The statement suggested an uncommon situation of how the women’s clothing links appeared on the domain’s parking page. It seemed that Oasis was using the domain name of “oasis.co.uk”, which was not owned by Oasis, as a keyword in their online marketing campaign. This in turn meant they would be targeting users specifically searching for the domain owned by Mr. Dale. Although Dale’s claim was short and did not provide much detail, the panel thought it was something that should be considered.
Oasis’ dismissal of the claim as “fanciful, unproven, and bizarre” did not satisfy the panel, as there was no statement provided by Oasis that it hadn’t used the keyword “oasis.co.uk” in their marketing efforts.
Since this claim was brought up by Mr. Dale and Oasis didn’t seem to have a valid defense, the panel then decided to check the Oasis website out for themselves. Upon inspection of the Oasis website, it was found that the keyword “oasis.co.uk” was indeed among the keywords being used to drive traffic to their own website.
What turns a genuinely acquired domain into an abusively used one can be assessed by Nominet panels by using the abusive acquisition or abusive use test provided under DRS. The normal approach to this situation has been that liability by the registrant is only present if they actively exploited their position by making reference to the trademark. The panel backed up Mr. Dale’s claim that it was the action’s of Oasis themselves which led to women’s fashion links appearing on the domain oasis.co.uk. Oasis lost it’s appeal as it was proven that not only did Dale not actively exploit his position, but the complaint that Oasis had filed was actually caused by their own behaviour.
While this may have looked like a good case for Oasis, it shows that assuming any DRS case is a “pushover” is a risky assumption. Detailed evidence must be provided explaining how the parking pages of any parties domain work. The content of a domain parking page cannot be assumed to be the responsibility of the registrant, and information from the parking company itself could be a necessity.
My point is this: if you can prove domainers are holding a variation of your domain to capitalise on your brand or trademarks then you probably have a strong case for appeal. If however the domainer can find any excuse (such as not updating their whois record after moving house!), they can drag the process out and duck out if they have some form of proof the domain was acquired for any other purpose.
AlsoÂ trademark owners need to be aware that it may not be in their best interest to include domain names that they don’t own in their marketing strategy!
Yes, this might indeed be the most boring blog post ever but it does have a point to make.
I recently copied the terms and conditions from www.lovefilm.com into a word document.Â Lo and behold, Word then revealed all the tracked changes that had been edited, presumably by Lovefilm’s lawyers.
Delightfully we are given an insight into the weasel legal world of small print; for exampleÂ see how they have subtly shifted any responsibility for lost CD’s onto the member, sorry subscriber, rather than Lovefilm.
None of this is overly important, just a bit amusing but it also reveals the perils of copying and pasting from word into HTML and why you should always use a plain text editor instead.
If you’re interested, and if you are, do you have a life? – I was copying the text so that I could work out how they do their neat subscription model so that I could emulate the concept for one of our own projects.
Here are a couple of excerpts copied from http://www.lovefilm.com/info/terms_and_conditions.html
June 21st, 2009.
From 1st January 2010 there will be a change to the basic rule regarding the place of supply of services. This is the rule which identifies the country where services are deemed to have been ‘supplied’. Currently, if a supplier has established its business in the UK, then the place of supply will be deemed to be the UK and any services charged for will be subject to UK VAT. There are, however, numerous exceptions to this rule. Establishing whether a service falls under one of the exceptions â€“ and if so, which one â€“ constitutes a major headache for businesses.
The new basic rule states that if the recipient is a business customer then the place of supply is the country where the recipient belongs. Therefore, when the new rule applies, if a UK business supplies training services to a business customer in Spain and delivers the training in France then the place of supply will be Spain and the reverse charge will apply. The existing rules dictate that the place of supply is France, with the result that the UK business may need to register in France.
The new basic rule also states that if the recipient is not a business customer then the place of supply is the country where the supplier belongs.
As is now the case, there will be some exceptions, but these exceptions are in many cases different from those currently in force. It will be important to ascertain just how your business will be affected.
The changes may affect businesses which receive services from abroad. Such businesses may already account for VAT using the reverse charge mechanism, but may in future have to do this in situations where the reverse charge currently does not apply.
Another significant change, which is being introduced as an EU anti-fraud measure, relates to EC Sales Lists. Businesses supplying services to commercial customers in other EU countries will be affected. Currently, EC Sales Lists are required only for supplies of goods. Although this comes into force on 1st January 2010 you should be preparing now to collect the necessary data.
Â The above was copied from an email sent to me by UK Training (Worldwide) Limited
4/5 The Mayflower,
Tel: +44 (0)1704 878988
Fax: +44 (0)1704 832124
I have no association with them but the information is important to digest for anyone trading online.
As ever Datadial are here to assist you in implementing your e-commerce sites to the specification you desire.