 |
| Web | Toys & DVDs | |||||||||||
 |
Press Releases | About/Contact |
|
February 24, 2004 Search Leader Outraged Taunted by Tatas dot com New York, February 19 - Booble.com, the racy parody of Google, was broadsided yet again by the search engine giant, whose senior trademark lawyer has promised to "tuck the Booble name back into the softly padded embrace of obscurity". In response to Google's attempt to squelch the humor site through legal threats, Booble has launched TauntedByTatas.com. Booble founder "Bob" has declined to commission another expensive legal response to the search leader. "We stand by our response to Google's demands three weeks ago." said Bob. "The law recognizes that intelligent people can disagree on what's funny." Offended that Booble is "parading around in public ... doing things polite search sites prefer to engage in more discreetly" Google repeated its demand that the parody site shut down. The latest e-mail from Google's legal department goes on to claim - hilariously - that Booble.com is "grabbing our assets and claiming them as its own." Bob, supported by the law, good old-fashioned American common sense and the overwhelming popular response to Booble, strongly disagreed, and urged the public to decide for themselves by visiting Tauntedbytatas.com, "the home of Google humor." He also flatly denied that he has ever grabbed Google's "assets", pointing out that the headquarters of Google is located 3,000 miles away - well out of reach. Bob asserts he is not breaking any laws. "Nonetheless, we offered to negotiate changes in our site and our logo, but Google will settle for nothing less than our domain. We can't afford to fight with lawyers, so we're going to use more humor. Tauntedbytatas.com is our answer to Google's demands." The entire text of Google's letter can be seen at Booble.com/legal.html. Bob and the team of NYC web developers who created the Booble.com site as a lark were astonished when the site became an instant sensation, with so much traffic it had to increase its servers from one to seven just hours after it launched January 20. "We're just poking fun. Though we'd like to thank Google for unselfishly helping to keep our parody site in the news," said Bob. February 13, 2004 The offices of Booble.com received the following email from Google on Friday, February 13th. Dear Mr. *****,Thanks for your clarification that you see Booble as a parody of Google. That was not immediately obvious to us from viewing the site, which appears to be a clone of Google intent on commercializing on the goodwill we've build over the past five years. By wrapping your infringement of our trademarks in this transparent ruse, you have shown nothing but your own lack of respect for proper use of the term parody, which has a specific legal meaning that does not apply here. To be a parody, Booble would need to actually satirize or poke fun of Google. Other than taking some obvious liberties with our logo to enhance its appeal to the puerile and the press, there is no aspect of Booble that could in any way be seen as a parody of www.google.com. Stripped of this transparent legal maneuver, the site is revealed for nothing more than a commercial venture striving to compete with Google by grabbing our assets and claiming them as its own. Furthermore, your client's use of our trademarks and trade dress constitutes tarnishment of Google's marks. In other words, your client has borrowed our dress and is parading around in public pretending to be Google while doing things polite search sites prefer to engage in more discreetly. Yes, it is possible to search for adult content using the Google search engine, but Google does not have a "longstanding association with pornographic terms and material" as you assert. As a search engine, Google provides links to all of the web's content. However, we also offer SafeSearch, filtering for those users that choose not to have adult content included in their search results. Google's reputation would therefore be harmed by association with your client's site, which includes a graphic that mimics our logo, but in a way that suggests Google is the star of a grossly inappropriate halftime show during a nationally telecast sporting event. And since Booble sells pornographic videos, DVDs and sex toys and offers results that are limited to adult content, the association with our logo clearly harms Google's reputation as a site that can be enjoyed in the company of children and those less adventurous souls among us. We also were surprised that you appear to be alleging Google's right to complain about this ill treatment by Booble.com is diminished because there are other potentially infringing domain names in existence. As you know, a trademark owner is not obligated to police every conceivable infringing use. We refer you to: Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F. Supp. 1090 (S.D.N.Y. 1980), affd, 687 F.2d 563 (2d Cir. 1982); see also Heaton Distributing Co. v. Union Tank Car Co., 387 F.2d 477 (8th Cir. 1967). Mr. *****, your client treats us in this manner and then you suggest we have no right to object? And to add insult to injury you accuse us in the press of lacking a sense of humor? Sir, have you never used Google's Mentalplex(TM) technology? (http://www.google.com/mentalplex/) Have you never been acquainted with the search breakthrough that is PigeonRank(TM)? (http://www.google.com/technology/pigeonrank.html) Perhaps it is difficult to locate one's inner child when constantly surrounded by content that is intended only for adults. There can be no question that your client's use of BOOBLE and BOOBLE.COM confuse consumers and tarnish the GOOGLE marks. There is no polish that will restore their luster if this association is allowed to continue. We have already received emails from users who have been confused, such as the following: Are you people now totally morally bankrupt? Your booble.com is pornographic filth are you are promoting hardcore sexual acts from this site. I will now re-consider any search business dealing from you because of this outrageous search solution direction you are now taking. Therefore, we must insist that your client cease all use of BOOBLE and BOOBLE.COM. You may wish to review the appropriate legal precedents: Harley-Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d. Cir. 1999), on remand to 91 F. Supp. 2d 544 (W.D.N.Y. 2000) ("[The junior user's] mark makes no comment on [the senior user's mark]; it simply uses it somewhat humorously to promote his own products and services, which is not a permitted trademark parody use."); see also Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997); Elvis Presley Enterprises, Inc. v. Capece, 141 F.d 188 (5th Cir. 1998); Coca-Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). Mr. *****, we take this matter seriously and will not be intimidated by the taunts of those who wish to remain anonymous while tying their tawdry wares to our good name. We look forward to resolving this quickly and to tucking the Booble name back into the softly padded embrace of obscurity. Sincerely, **** ***** Senior Trademark Counsel Google Inc. January 28, 2004 Dear Trademark Enforcement Team, We are intellectual property counsel to Guywire, Inc. This letter responds to your e-mail message of January 20, 2004 to our client via domains by proxy. As your communication recognizes, our client adopted and uses the BOOBLE and booble.com designations to parody the Google web site. Our client's web site is in fact a successful parody, which simultaneously brings to mind the original, while also conveying that it is not the original. See, e.g.,Jordache Enters., Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1486 (10th Cir. 1987) (finding no likelihood of confusion between LARDASHE for oversized jeans, despite its obvious similarity with, and parody of, the well-known JORDACHE mark for jeans). Cf. People for the Ethical Treatment of Animals v. Doughney, 263 F. 3d 359 (4th Cir. 2001) (finding a domain name parody was unsuccessful because Internet users had to view the web site before they were able to discover that it was not the original). Obviously, the Booble web site brings to mind the Google web site, at the same time that it underscores its unique identity as a parodic adult search engine. In trademark law, parody is a defense to trademark infringement. Eveready Battery Co. v. Adolph Coors Co., 765 F. Supp. 440 (N.D. Ill. 1991) (holding that a commercial advertisement of a well-known actor in a bunny outfit, banging a drum, was an effective parody of the plaintiff's mechanical toy rabbit advertising character). In the present case, consumers are highly unlikely to be confused as to the source of services for several reasons, including the following:
Neither does the Booble trademark dilute Google's mark. First, the capacity of the GOOGLE mark to identify and distinguish its services is unchanged by Booble's use of its mark. See, e.g., Moseley v. V Secret Catalogue, Inc., 537 US 418 (2003) (requiring proof of actual dilution). In addition, Booble does not tarnish the Google mark. See, e.g., L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir. 1987) (finding that a sexually explicit parody of appellee's catalog did not constitute tarnishment). Moreover, Booble's web site is an adult search engine, not 'a pornographic site,' as referred to in your letter. In fact, entering the terms "porn" and "sex" in the Google search engine return 98,400,000 hits and 269,000,000 hits, respectively, while entering these same terms in the Booble adult search engine return 268 hits and 291 hits, respectively. Therefore, the Google mark - which has a longstanding association with pornographic terms and material - is obviously not tarnished. In your letter, you refer to the Supreme Court decision in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (holding that a commercial parody may qualify as a fair use and is not presumptively unfair). As you may have recognized, this is a copyright case. Although some analytic similarities exist between copyright and trademark parody cases, Google neither claims copyright infringement in its letter, nor is any relevant portion of its web site copyrightable. Lotus Dev. Corp. v. Borland Int'l, Inc., 49 F.3d 807, 815 (1st Cir. 1995) (holding that literal copying of a computer command hierarchy does not constitute copyright infringement because it is an uncopyrightable method of operation). Therefore, while we feel that Campbell adequately supports the legality of Booble's parodic web site, we believe your reliance thereon is somewhat misplaced. Finally, we note that Google does not object to numerous registered domain names and web sites, including the following few samples:
Since the law does not appear to support Google's position, we ask that Google reconsider its objections and accept the Booble web site in the spirit that it was intended - as a parody. We hope that these comments will permit you to now close your file on this matter. However, if you wish to discuss it further, please feel free to contact the undersigned. January 20, 2004 Via Email to: BOOBLE.COM RE: Infringement of Google's trademarks and trade dress: http://www.booble.com (Our ref.: 4.614) Dear Sir or Madam: Google is the owner of the well-known trademark and trade name GOOGLE, as well as the domain name GOOGLE.COM. As you are no doubt aware, GOOGLE is the trademark used to identify our award-winning search engine, located at http://www.google.com. Since its inception in 1997, the GOOGLE search engine has become one of the most highly recognized and widely used Internet search engines in the world. Google owns numerous trademark registrations and applications for its GOOGLE mark in countries around the world. Google has used and actively promoted its GOOGLE mark for a number of years, and has invested considerable time and money establishing exclusive proprietary rights in the GOOGLE mark for online computer services and a wide range of goods. As a result of its efforts, the GOOGLE mark has become a famous mark and a property right of incalculable value. Google has developed a distinctive layout and design for its Google website. Over the years since its inception, Google has invested considerable time and money establishing exclusive rights in this layout and design. By virtue of these efforts, the layout and design of Google's website are recognized by visitors as originating with Google. Google aggressively protects and polices its intellectual property rights, including the various trademark and service marks used for its search services and related goods and services, the distinctive trade dress used to present its services to Internet users, and the copyrighted material on its website. We have recently become aware of your website at http://www.booble.com (the Domain Name). This Domain Name is confusingly similar to the famous GOOGLE trademark. Your web site is a pornographic web site. Your web site improperly duplicates the distinctive and proprietary overall look and feel of Google's website, including Google's trade dress and the GOOGLE logo. Your use of the Domain Name and corresponding web site constitutes trademark infringement and dilution of Google's trademarks and unfair competition under federal and state laws. Further, your improper duplication of Google's trade dress on the web site will mislead consumers into believing that some association exists between Google and you, which tarnishes the goodwill and reputation of Google's services and trademarks. Your registration and use of the Domain Name is in bad faith pursuant to the Uniform Dispute Resolution Policy ("UDRP") and is clearly designed to appropriate the goodwill associated with the famous GOOGLE mark in violation of the Anticybersquatting Consumer Protection Act ("ACPA"). In addition, you would not be able to demonstrate any rights or legitimate interests in the Domain Name because you are using it to tarnish the GOOGLE mark. We note that you have given interviews to the press in which you state that you intended booble.com to be a parody. We dispute your assertion that your website is a parody. For a work to constitute a parody, it must use some elements of a prior author"s composition to create a new one that, at least in part, comments on the original author"s works. See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569. Your website does not comment on the Google website at all; it merely uses the Google look and feel and a similar name for a search engine. In view of your infringement of Google's rights, we must demand that you provide written assurances within 7days that you will immediately:
The Google Trademark Enforcement Team |
Get Booble Stuff!
Webmasters | About/Contact | Press Releases