UPDATED 9/15/09. See below.
Lazy Man and Money is just one of many sites (including this one) that have been critical of MonaVie, a company that has cleverly combined the miraculous, life-extending properties of the acai berry with the equally stupendous, wallet-emptying promises of a multi-level marketing company. Lazy (as the blog’s author likes to call himself) has, however, achieved one thing that other MonaVie critics apparently haven’t: He’s gotten the company’s attention, and they’re accusing him of trademark infringement.
In an email to Lazy Man’s domain registrar, MonaVie accused him of a raft of violations of the company’s trademarks, and demanded that he “remove all references to MonaVie and its products” from the site.
The MonaVie name and symbol are registered trademarks. (U.S. Reg. Nos. 3111333, 3111332, 78526279). MonaVie’s federal registration of these trademarks provides MonaVie with the right to restrict the use of the trademark, or a confusingly similar trademark, in any way that misrepresents the origin of MonaVie’s products or dilutes the MonaVie brand and goodwill associated therewith.
We were surprised to see an email like this sent to a blogger. While businesses have a right to protect their trademarks from abuse, the news media and individuals are typically exempt from such restrictions provided the trademarks are used as part of “news reporting and news commentary” — as well as a wide range other purposes, including parody and satire — and not as part of a commercial effort to mislead consumers.
To find out what was going on, we called MonaVie, and spoke to Doug Whitehead, the company’s associate general counsel. Whitehead admitted that the email sent to Lazy Man didn’t accurately express the company’s position. “We had a new person working in our compliance department,” he told us. As it turns out, MonaVie actually supports Lazy Man’s “free speech rights,” according to Whitehead. So, everything’s copacetic now, and Lazy can kick back with a Monatini? Not quite.
“Our issue with this guy is that he is using MonaVie in his keyword tags,” Whitehead told us. The company’s concern, he said, has nothing to do with user-visible content on the Lazy Man site, but instead is all about the site’s metadata, which includes MonaVie’s name. As precedent, Whitehead cited several cases, including Brookfield Communications v. West Coast Entertainment and Promatek Industries v. Equitrac Corp. In both of those cases, courts found that companies using their competitors’ trademarks in metadata were guilty of trademark infringement.
So, how would this branch of law apply to a news organization? We spoke to Fred von Lohmann, a senior staff attorney with the Electronic Frontier Foundation, who said that he thinks MonaVie “has the losing end of this argument.” In an online trademark infringement case, von Lohmann explained, the plaintiff has to demonstrate that a consumer might be misled into believing the defendant’s site is actually the plaintiff’s. In this case, he said, “there’s no chance that anyone could be confused into thinking that [LazyMan] is the official MonaVie site.”
We reached Lazy Man by email, and he expressed surprise at this turn of events. “Wikipedia, CNet, the Consumerist, and even Yahoo News all include trademarked terms in their metadata when they write about companies,” he wrote. “Some of them even include MonaVie’s trademarked terms in their keyword metatags for articles related to MonaVie. Are such large organizations routinely violating trademark law?”
Since he hasn’t been officially notified by the company that they’re going after him for metatags, Lazy didn’t want to comment about his legal plans — though he did say he found it “highly unusual and unfortunate” that MonaVie was willing to share this kind of information with us prior to notifying him. Meanwhile, we asked von Lohmann what kind of legal strategy he’d recommend. “Just take [the metadata] down,” he said. “Every search engine expert I’ve spoken to says metadata doesn’t do anything anymore.” Now, there’s an idea; hand MonaVie their legal — but Pyrrhic — victory, and go for the win out there in the tubes, where free speech — and keyword-optimized incoming links — rule.
UPDATE: MonaVie sent Lazy Man a letter on Friday, outlining the terms of its claim against his site. Sure enough, it’s all about the metadata. The letter includes the following mind-benders:
It has come to our attention that you are using our trademark name MonaVie in your source code …
…The use of our trademarks in http://www.lazymanandmoney.com in the source code constitutes trademark infringement and you must immediately cease and desist. …
Failure to comply with our requests may result in legal action.
Lazy has followed up with a great guide to metadata, and an analysis of the precedents used by the company to justify its action. It’s a thoughtful, well-reasoned post about Monavie and trademark law, and well worth reading — and linking to.
MonaVie is Trying to Sue Me… [Lazy Man and Money]
Metatags and Trademark Law: Continuing Uncertainty [Jere M. Webb]