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  1. #1
    Newbie Timewarp's Avatar
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    July 21st, 2007
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    Affiliates Responsible for Merchant TM Violations?
    Hope someone can help, here is my situation:

    I run an affiliate site selling t-shirts from one of the major POD (Print On Demand) merchants.

    My site pulls tens of thousands of products automatically from the merchant's data feed. Customers browse my site and are redirected to the merchant's shopping cart to purchase.

    I have been contacted by a major US automaker who found TM violating t-shirts on my site. It looks to me that yes these are probably violations.

    They also mention 2 of my other t-shirt sites - Im not sure why as these sell my own designs and do not contain any TM violations.

    For unrelated reasons the affiliate site in question is no longer up but I hope to get it back online soon using new software and no longer listing the offending items. (although with datafeed sites its hard to police every item)

    I don't think I have actually sold any of the TM violating items and there is no inventory to speak of as POD prints items as needed.

    Their demands seem reasonable but Im not sure if I should be admitting to anything at all at this point. Here is what they ask:

    Your unauthorized use of the ***** Marks in this manner is likely to cause confusion, constitutes a false representation that you are affiliated with or sponsoredby *****, and is an infringement of *****s trademark rights in violation of the Lanham Act, 15 U.S.C. 1114 and 1125(a). Moreover, because ***** has a rigorous program to select licensees and appropriate goods for sale by licensees, it is important to *****, its licensees, and the consuming public that only official licensed goods bear *****s protected trademarks. ***** takes the infringement of its intellectual property rights very seriously. That being said, it is *****s current intention to avoid legal action and resolve this matter amicably. Accordingly, ***** requests that you provide written assurance that you will immediately:

    cease and desist manufacturing, advertising and/or distributing unauthorized products bearing any ***** trademarks, including but not limited to the ***** Marks referenced above;

    cease and desist any and all unauthorized use of ***** trademarks, including but not limited to the ***** Marks referenced above, or any confusingly similar marks, in conjunction with merchandise, catalogs, promotional materials, advertising and/or in any other manner whatsoever.

    turn over to ***** through its counsel for destruction all unauthorized products and inventory bearing any ***** trademarks, including but not limited to the ***** Marksreferenced, or any variation of *****s trademarks;

    agree to refrain from further unauthorized use of *****s trademarks, including but not limited to the ***** Marksreferenced above, in the future; and provide an accounting of the numberof units sold as well as revenue received for all unlicensed products bearing any of *****s trademarks, including but not limited to the ***** Marks referenced above.
    Also I am in Canada if that affects anything.

    They claim in their email that they also sent me notice by over-night courier which I did not receive although they have my address (probably from the domain registration). I have not yet replied. I was hoping I could ignore their first email after the site went down but they just sent me a second one.

    On the surface I don't have a problem just agreeing to their terms but this legal stuff makes me nervous. Advice appreciated!

  2. #2
    ABW Ambassador
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    So this is stuff the merchant is selling that you pulled from their feed as an affiliate? If so, it seems they should be directing all of this to the merchant. Have you contacted the merchant about this yet?

  3. #3
    ABW Ambassador
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    They need to send you a cease and desist, not an e-mail.

  4. #4
    Analytics Dude Kevin's Avatar
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    Timewarp, was the email actually from the Auto Maker, or was it from a "law firm"?
    Kevin Webster
    twitter: levelanalytics

    Kayak Fishing
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  5. #5
    Newbie Timewarp's Avatar
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    July 21st, 2007
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    Quote Originally Posted by Trust
    So this is stuff the merchant is selling that you pulled from their feed as an affiliate? If so, it seems they should be directing all of this to the merchant. Have you contacted the merchant about this yet?
    Yes, its stuff the merchant is selling that I pulled from their feed. I was hoping it was their problem and not mine but wasn't sure how to explain that to the lawyers. I haven't contacted the merchant yet but they have TM issues all the time given that t-shirt designs are uploaded by their thousands of users - they catch many of them but many slip through.

    Julian, so far just an email but I just noticed my domain info is missing a part of my address so maybe that is why I haven't received the hard copy - not sure if that is a legit loophole or not.

    Kevin, it was from a "law firm" ... their web site looks legit and they say in the email "We are intellectual property counsel for **automaker**" is this unusual?

    Thanks for the tips so far.

  6. #6
    http and a telephoto
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    I'm not sure if they can come after you for damages, but once you are aware there are images that are an issue you need to remove those from your site. I got a C&D several years ago from a collectibles manufacturer that was in a feed that I got from a merchant, and they had not contacted the merchant (I ranked higher than the merchant for those items). *I* contacted the merchant and immediately removed the pages, and a few days later the merchant sent out an affiliate newsletter stating that those products needed to be removed from all affiliate websites.

    When you are working with a merchant that is an aggregator, or has user generated content, you are going to run into those issues. Especially if you rank for those keywords.

    Forward the email you received to the POD immediately, if you haven't already.
    Deborah Carney
    TeamLoxly.com BookGoodies.com ABCsPlus.com

  7. #7
    CPA Network Rep Essociate's Avatar
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    perhaps you are protected under dmca if the designs are user-submitted? (this is not a legal opinion or advice). their requests sound reasonable in any event...

  8. #8
    Affiliate Manager PetsWarehouse.com's Avatar
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    First of all do not reply in writing, that may work against you as trap to gain jusisdiction.

    "agree to refrain from further unauthorized use of *****s trademarks, including but not limited to the ***** Marksreferenced above, in the future; and provide an accounting of the numberof units sold as well as revenue received for all unlicensed products bearing any of *****s trademarks"
    Take down any TM info then sit back, do not report any sales.

    They sent you a boiler plate letter if they were serious they would sue you.
    Bob Pets Warehouse
    Worlds Largest Pet Supply DataBase
    Join our Share-A-Sale Program [since 2003] Twitter



  9. #9
    I like traffic lights
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    Boilerplate letter.

    "turn over to ***** through its counsel for destruction all unauthorized products and inventory bearing any ***** trademarks"

    Dickheads.

    Find a refrigerator dump close to the law firm. Slap some trademark-bearing stickers on 100 of said items, and pay someone to dump them all in the reception area of said law firm.

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