Trademark holders in a seemingly unending quest to expand their online rights, have now filed suit against Craigslist for trademark infringement based on ads posted by users.
The lawsuit was brought by Texas real estate company First Call Properties, (yes Texas again) which alleges that it began advertising on Craigslist’s in March and that a competing company, AAA Apartment Locating (AAA), began posting Craigslist ads that use the phrases “first call,” “call first,” and “call us first.”
First Call alleges that those ads were placed in a deliberate attempt to confuse consumers.
The company also asserts that Craigslist knew that AAA was using the First Call trademark and failed to stop the ads from appearing.
The lawsuit, in the Federal Court for the southern district of Texas late last week named Craigslist, AAA and two other individuals as defendants. Before the case was sent to federal court, a state court judge issued a preliminary order banning Craigslist and AAA from using “Call First,” “First Call Properties,” or “Call Us First,” or similar terms.
Now for me here is the interesting thing.
Unlike the suits filed against Google, on Craigslist, the posted ads are free.
Craigslist does not charge for placing the ads.
Craigslist does not make any more or less money on whether someone clicks on the ads
Now the trademark interest want to place on Craigslist a duty to know every unknown trademark in the world, and make Craigslist the enforcer of trademark laws.
Yet in this particular case the term “First Call” is very generic.
If you search “first call” on Google you get the following companies, all around the world that uses “First Call” and are all in the property management business:
Firstcallpropertyservices.com, located in NH
1st Call Property Management located In CA.
First Call Property Maintenance, located in FL
First Call Property Maintenance, located in the UK
1st Call Property Maintenance Located in Spain
There are HUNDREDS maybe thousands more businesses using 1st call or first call in their name and they are all allowed to co-exist and operate, but when it comes to the net, it seems there can only be one.
If its not the domain their after, then its the exclusive use of the term in all internet advertising.
And what stupid judge would give someone an exclusive right to use the term “call us first” in advertising by issuing a injunction based off First Call which is generic in nature on its own.
Oh BTW “Call Us First” is also trademarked by another company in the background check business.
I’m telling you someone needs to address this problem.
Yes the true trademark infrining domains like “verison”, but we are at the point where every word, 2 letter combo, 3 letter combo and every phrase and saying that anyone has ever heard is trademarked, just in the US.
We need to bring a “famous” requirement back into online trademark law or we got bring problems coming at us.
There’s a growing need for trademark/copyright free internet.
In the movie “The Demolition Man” it depicted a near-future where Taco-Bell owned virtually everything. What wasn’t described in the movie was how Taco-bell got to where they are.. maybe they simply took the Trademark law to its ultimate extreme..
… seriously though – this is getting ridiculous and no one seems interested in applying sensible boundaries.
The suit seems without merit. The DMCA doesn’t apply here, but it would seem Craigslist obligation would be similar, take down the offending ad if its brought to their attention and let the two parties resolve the dispute . If AAA and First Call are competitors in the same market and AAA is trying to manipulate Craigslist search results to rank for First Call Properties, that seem to me like willful infringement.
From what I read this has nothing to do with domain names? Until the parking industry stops monetizing domain names that are typos of trademarks, registries prevent obvious registration of domain name trademarks and search engines stop serving ads on the offending names, this issue won’t go away. There’s too much money being made. Unfortunately the crooked few may ultimately spoil it for the honest many.
Alan
This suit has nothing to do with domains but its the same basic argument used in suits against Google in PPC ad suits.
“””Until the parking industry stops monetizing domain names that are typos of trademarks, registries prevent obvious registration of domain name trademarks and search engines stop serving ads on the offending names, this issue won’t go away””
Your wrong the issue is bigger.
They want full protection for all trademarks famous or not.
The problem started with typos of FAMOUS trademarks but now trademark groups, as you can see here, want this protection to apply to every trademark and everything is trademarked.
You are underestimating the issues and problems this is going to create for domain holders, especially when coupled with the URS and internet ad platforms
Mike,
The Google PPC suits and to a far lesser extent this CraigsList suit are necessary to establish case law for trademarks given these relatively new advertising mediums. When managing a PPC campaign in Google, there’s a link to ad keywords. Click the link and now Google offers up your competitors trademarked terms to bid on. This seems like Google is enabling trademark infringement, but I’m not a lawyer.
I’m not a fan of the URS or the UDRP as it currently is structured. Instead of the URS, I think the UDRP should be fixed. It takes $1,600 to file a UDRP. If a UDRP is won the respondent should reimburse the complainant the $1600 filing fee. If a UDRP is lost, the complainant should pay the respondent $1,600 for needlessly defending his property. Complainant’s will think long and hard before they roll the dice on getting a name. Domain investors will think long and hard about registering trademark domain names. Further, if I own a generic domain, bring on a silly UDRP if its going to be an easy payday.
I’m sure this comment will light up so emotions.
Alan
I agree with you the UDRP should be fixed and go to a loser pays system.
I actually proposed exactly that, earlier this week to the ICA.
The Problem is the trademark groups don’t want to fix the UDRP.
They want a whole new system that will allow them to cheaply and quickly take down domains.
Again I have no problem with doing that with the “verisons” or “wallmarts” of the world, but I see the writing on the wall and what you consider generic they don’t just like “first call” we consider it generic but they got some judge to issue an injunction given them exclusive use not only to that term but also to the term “call us first” which is totally generic but also subject to a trademark.
So what I’m telling you don’t think your going to get any “easy paydays” defending generic trademarked terms, I just lost one, “smooth move” which is now on appeal.
Time for Craig to cash out, sell craigslist for billions of dollars, and let this all be someone else’s problem who will be thrilled to have it. Sounds like its approaching critical mass.
I read every one of your post. Today I had to comment. The person the had Leno’s domain probably didn’t know the way domains work, apparently. Most scumbag US attorneys will sue for any reason. Just because they both are from Texas that doesn’t mean that all Texans are that way. Thanks
I apparently didn’t see the use of the instead of that in my 3rd sentence. Just another Texas without spell check.
What gall on the part of FirstCallProperties. You’d think Craigslist could ban them at least from any free advertising, which is a gift after all!
MJ
Trademark owners are going to keep pushing the envelope until a chorus of just regular business owners rise up with their own horror tales like Verizon and Microsoft does at every turn