ShareTV, a community-based website that tracks information for every major television series aired since 1930 on networks based in the US, UK, and Canada, has prevailed in a trademark infringement case and was awarded the domain sharetv.com after an extensive battle with a foreign infringer. The case, handled by the San Diego office of the global law firm of Fish & Richardson, sends a cautionary warning to start-up businesses about the importance of properly securing intellectual property rights, including domain names.
When ShareTV was founded in 2007, the company discovered that the domain “sharetv.com” was owned by a Korean-based individual who was using the domain as a “parking site’” – a website that doesn’t have any significant content or just displays revenue-generating sponsored links. When ShareTV management contacted the individual on multiple occasions and requested to purchase the domain, he responded with a demand for an exorbitant payout, significantly higher than the value of the domain.
ShareTV instead used the domain “sharetv.org” to market the firm and as a portal for service delivery. The company grew rapidly and gained prominence in the online entertainment industry, including securing a deal with industry leader HULU.
The company’s success spurred the individual owning the desired domain to put content on thesharetv.com website, suggesting that he soon would be offering services similar to the services offered by ShareTV, causing confusion among consumers and potentially causing harm to the ShareTV brand.
“Potential and current users of our services were going to sharetv.com and not realizing that it wasn’t our company or a legitimate website,” states Chris Richmond, founder of ShareTV. “We have worked hard to establish our brand, as well as be a leader in the entertainment industry, and to have someone infringe on our name had the potential to do tremendous damage to our company.”
Requests by Fish & Richardson to take down the website were ignored, forcing the law firm to file a lawsuit on behalf of ShareTV. The individual also ignored the lawsuit. Armed with proof of consumer confusion as well as ShareTV’s valid trademark of its name, the court awarded the domain to ShareTV.
ShareTV is now the rightful owner of the sharetv.com domain and is now actively using the site.
“For start-up businesses, ShareTV’s experience is a primer for the importance of acquiring up front what you will need to properly brand and market your company online, as well as through other vehicles,” states Fish & Richardson attorney Erin Hickey, who represented ShareTV in the matter. “Once a company is established, the stakes - and costs - of obtaining the tools you need to fully control your trademark become much higher. Those who pirate domain names and other marketing vehicles as well as infringe on a trademark will expect higher compensation once a company becomes successful.”
According to Hickey, start-up companies should consider the following steps to avoid domain, trademark and other legal conflicts:
- Develop an intellectual property strategy from the outset, including protecting your trademarks, copyrights, patents and domain names, as appropriate. Doing so will help you make informed business decisions and avoid long-term negative consequences. Future purchasers of or investors in your company will consider IP a core business asset.
- Register your marks with the U.S. Patent &Trademark Office (U.S.P.T.O). This will protect the mark nationwide. Also, register in the foreign patent and trademark offices of the countries in which you are doing business. A good rule of thumb is to plan ahead at least five years to where you expect to be selling/distributing products and/or have offices or licensees in considering where to file.
- Focus on protecting your recognizable key “family” of marks (such as company name, major product/service names, etc.) of the company by filing with the U.S.P.T.O. It isn’t necessary to file for all features of your products/services as that can get costly and doesn’t serve the overall brand protection strategy.
- Unique and identifiable color schemes, product shapes, scents and even sounds that are recognized by the consumer in association with a product or service should be protected. (Think UPS “Brown” and the Aflac duck’s quack.)
- Take preventive measures. Always search the availability of a proposed mark before adopting it. Start-ups shouldn’t invest time and money in a brand that could be infringing someone else’s rights.
- Market and advertise. It will create a strong and recognizable brand. Select and consistently use the chosen brand, together with the “TM” or “SM” symbol if the mark isn’t registered yet. This will give notice to others that the term is in use as a trademark or service mark and common-law trademark rights will accrue.
- Police your mark(s), and develop an enforcement strategy in case you do discover infringers. However, pick your battles wisely. Fighting infringers can take an emotional and financial toll on a start-up. Resources invested in infringement prevention will most likely be less costly than litigation.
About ShareTVShareTV is a community-based website for fans of network television. The site tracks information for every major series which has aired since 1930 on networks based in the US, UK and Canada. As an official distribution partner of HULU, ShareTV is able to offer full-length episodes to watch free for hundreds of hit TV shows.