I uploaded a video regarding the poor service and deceitful practices of a financial company. The video shows the item in question, along with a statement showing the exorbitant fees they charge. Prior to entering into this contract, both their sales rep and manager made it very clear that any rates from competitors would be beaten or matched. They have failed to match anything after many requests made. There are numerous complaints about them online from many disgruntled customers and businesses.
Youtube received their trademark infringement complaint around two weeks ago, but my video is still up. Today I received a letter from their attorney requesting that I take down my video within 30 days or face arbitration.
1) Isn't federal court the correct venue for trademarks?
2) Which law firms provide pro bono trademark defense?
3) Isn't fair use allowable under trademark?
Thanks in advance.
This would be fair use of the trademark to truthfully refer to the company in question. However, it could still be taken down, and /or you could be sued, if it is defamatory.
Statements are not defamatory if they are true. States vary on the issue of burden of proof of truth. In many states, you bear the burden of proving the truth of your statements.
I suggest a private consultation with an attorney admitted in NJ to discuss exactly what was posted and what you can prove in order to determine your best next steps.
Did he expressly state it was a trademark complaint? It seems that your use of the trademark was to identify them, not to sell a product or service of yours, so that a trademark infringement claim is not warranted. Your video may also be fair use under copyright law regarding their materials as you are providing a commentary. However, you may be sued for defamation, unless you can show that the entire video taken as a whole is your opinion and a trier of fact agrees or you can prove each potentially factual statement you made is true.
Trademark (for goods) or Servicemark (services) infringement cases can be launched in State or Federal court depending. Using goods or services in commerce generally provides "Common Law" TM or SM protection. Registering a federal TM/SM permits use of federal courts, and other benefits but is not necessary.
If you have a complaint against the provider you might consider making a complaint with the FTC or Attorney General of your state. You can try this as a place to begin:
Any information offered is for general education purposes to assist readers with an overall understanding, and is not intended as specific legal advice. Each situation is different, requiring individual consultation and sometimes research before actual legal advice can be dispensed. No attorney-client relationship is created through the exchange of such information. Prior results do not guarantee future outcomes.
1)Trademark lawsuits can be brought in either state or federal court. A threat of arbitration would require you to have contractually agreed to arbitrate. Did you?
2)The ACLU sometimes provides pro bono defense of First Amendment Free Speech, even when defending against a private (non-governmental) entity. (See Mattel vs. walking Man productions where the ACLU defended artist Tom Forsythe against copyright and trademark claims.
3) Fair use is a recognized defense to trademark infringement under both state and federal law. So too, comparative advertising allows you to make truthful statements using another company's name, and truth is a defense to defamation (libel, slander and trade disparagement.)
But the chances of getting a lawyer to defend you pro bono are miniscule, and if you get sued you could spend $50,000- $100,000 defending, and if you win you still are out of pocket for your defense costs?
Most folks want to avoid that scenario. A good trademark litigator can help you protect yourself from potentially devastanting legal expense.
The foregoing is for informational purposes and does not constitute legal advice in a particular matter or the existence of an attorney-client relationship. All answers ©2017 Greg Victoroff, Inc. No further reproduction or use for any purpose.
By using YouTube you agreed to their terms of service, which may include arbitration - doubt the arbitration part comes from trademark law at all. If you use their trademarked name to identify the product is fair use. That does not mean they can't sue. It still means you have to defend such a lawsuit if they do. Bravo if you are honestly criticizing a company and resisting such pressure, but it still might result in a lawsuit. Your opinion can be defended so long as it is not completely unreasonable.
This should not be considered legal advice and is intended for educational purposes only. It does not constitute a contract for legal services between any parties. Answers are given to questions for which there may be additional facts not mentioned which might change the legal issues or consequences.
Not so sure what the trademark complaint is here exactly. Using another's mark to refer to that mark holder is not infringement. Yes, federal court is the proper venue where the Act is concerned. There are common law rights to trademarks which state courts will hear as well.
Before you take any further action, I suggest that you consult with a lawyer in private and discuss your objectives and best course of action in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
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