On May 9th, I received a nasty gram from American Express asking to remove my logo.
Date: Fri, 9 May 2003 14:07:44 -0500
From: "Herbig, Nancy"
To: "'Technical Director, amexsux.com'"
May 9, 2003
Via e-mail - Confirmation by First Class Mail
P.O. Box 321
Chandler, AZ 85244-0321
Re: Content of amexsux.com (Our Reference 222425)
Dear Sir or Madame:
We represent the American Express Company in intellectual property matters.
In that capacity, we have reviewed your web site at amexsux.com. At the
outset, please be advised that American Express is not objecting to your
right to have a web site discussing American Express' services. American
Express respects First Amendment right of free speech and does not object to
your use of this domain name in connection with a web site to allow
consumers to voice comments with regard to it. However, our client must
object to one specific use of its registered trademark on your web site.
Specifically, we note that you are using a reproduction of the AMERICAN
EXPRESS Card Design on the home page of the web site with the term "SUX"
over the card design.
As you may be aware, under the First Amendment, you are allowed to use
American Express' trademarks in such a manner to discuss criticism of the
company. However, the law does not afford the right to use a registered
trademark in a manner beyond what is necessary to voice your concerns and
comments. Accordingly, we ask that you remove use of American Express'
registered card design from your company's web site.
We trust that this request is acceptable and that you will remove the
registered AMERICAN EXPRESS Card Design from your web site upon receipt of
this letter. Should you have any questions with regard to this request,
please do not hesitate to contact the undersigned.
Very truly yours,
Anne E. Naffziger
LEYDIG, VOIT & MAYER, LTD.
Two Prudential Plaza
Chicago, IL 60601
e-mail: [email protected]
Here's my response to the nasty gram.
Date: Fri, 9 May 2003 13:52:04 -0700
To: [email protected], [email protected]
Cc: [email protected], [email protected], [email protected], [email protected], [email protected], [email protected], [email protected]
Subject: Re: amexsux.com
Dear Ms. Naffziger:
Thanks for visiting my site and thanks for your email. I’m sorry to hear that
your client (American Express) objects to my web site using their logo with the
word “SUX” imposed on the logo.
As you probably know, the courts have continually ruled in favor of owners of
gripe sites with respect to First Amendment rights. Moreover, just as long as
the site does not create brand confusion, the use of a logo with SUX imposed on
the logo is viewed as fair use by the courts. The leading case, decided under
a "likelihood of confusion" standard even before the cybersquatting act was
passed, is Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161
(C.D. Cal. 1998). The defendant operated a web site that prominently displayed
the plaintiff's name and logo for the purpose of criticizing Bally for alleged
abuse of consumers. The court found no likelihood of confusion because of the
plain statement that the page was "unauthorized" and the superimposition of the
word "sucks" over Bally's mark. As a result, "The Court finds that the
reasonably prudent user would not mistake Faber's site for Bally's official
site," id. at 1164, and "no reasonably prudent Internet user would believe
that 'Ballysucks.com' is the official Bally site or is sponsored by Bally." Id.
at 1165 n.2.
As you can see by web site, there is absolutely zero chance of a user viewing
my site to confuse my site with American Express. The following are the steps
I’ve implemented to insure that brand confusion will not occur.
1. The title of the web site has the word unofficial as the second word of the
title. Moreover, since unofficial is the second word, search engines will place
this word in any displayed listings.
2. On the amexsux.com logo, the word unofficial is prominently displayed.
3. Half way down on the left side is a logo that states this site is not
affiliated with American Express. Moreover, the “NOT” is in a different color
to add emphasis.
4. The terms and conditions clearly state that this site is not affiliated with
American Express. Moreover, this statement is on every page of my web site.
Furthermore, my site does not have any commercial value. I do not make a penny
off my site and as you can see I do not accept any type of advertisements.
Sorry this is not the outcome you were anticipating but I trust you can
understand my position. If I do not hear from you in ten days, I’ll assume that
you and your client have decided to drop the issue.
Have a good weekend.
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