In my earlier post, I discussed fan sites in the context of copyright law. Well, Lady Gaga challenged a fan site, LadyGaga.org, under a trademark theory. Lady Gaga sought to shutdown the fan site because she claimed that the owner of the domain LadyGaga.org was cybersquatting. The Anticybersquatting Consumer Protection Act (part of the Lanham Act which is the Federal law on trademarks) was enacted in 1999 in response to persons seeking to sell famous domain names to their rightful trademark owners. California has its own cyberpiracy statute which is slightly different than the Anticybersquatting Consumer Protection Act (“ACPA”). However, both statutes create civil liability for anyone who registers a domain name that is the same or “substantially and confusingly similar” to the name of another living person without that person’s consent. The cybersquatter must have the specific intent of profiting by selling the name to that person or a third party. This is where Lady Gaga’s fight went awry.
While Lady Gaga was able to prove that her mark was sufficiently famous to allow her to claim common law trademark rights, she was unable to convince the National Arbitration Forum (where she filed her complaint) that the fan site was exploiting Lady Gaga’s trademark for its own gain. As currently constituted, the fan site is a blog dedicated to the singer. There were no advertisements displayed, there was no merchandise sold, or any other commercial activity related to the site. As stated by the arbitration panel: Lady Gaga “cannot have fame without fans, and fans cannot have fan sites without referring to the objects of their adoration.” In other words, the panel seemed to believe that the fan site owner was not using the Lady Gaga’s name or trademark in a trademark sense, but merely in a way to describe the object of the site’s “adoration.” It also helped that the fan site contained a number of disclaimers, especially making clear that the site was not an “official” Lady Gaga site.
What does this mean for fan sites? Clearly, if you are going to have a fan site, then have a fan site. The moment the fan site becomes a vehicle to attempt to turn a profit or make money, then it may be subject the owner of the site to an ACPA lawsuit, as well as various trademark claims. In fact, the arbitration panel said as much—just not in so many words. To wit, the arbitration panel warned that should the fan site attempt to make a profit in the future, then the result may different and Lady Gaga may re-file and win her complaint. Disclaimers help in making it clear to consumers that the site is not related, sponsored by, affiliated with, etc. to the object of the site. It is always wise to consult an attorney if you are ever unsure as to whether your site crosses a line.
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