Quick(hopefully) copyright question for the ST legal department

The Coffee Shop
1

Okay, at first this didn’t bother me, but now I’m getting pissed as I sit and think about it.

I play amateur soccer on two teams. Both of which I “manage”. One is an adult men’s indoor team called Dayton United. We’ve been called that for going on 8 years and played at the same place the entire time. It’s a group of 20-30 year old former college guys playing soccer on Wednesday nights.
The second team is an all Police and Fire team also called Dayton United. We travel, playing in Police and Fire only tournaments. We’ve been called that for at least 6 years.

Both teams have uniforms that say Dayton United, but they are separate teams. It’s adult soccer for crying out loud.

So tonight, I walk into the soccer complex and the manager, comes over and tells me this guy, not a player and not in our particular league, has called at least 3 times threatening to sue the complex if they don’t make us change our name. He says he owns the name Dayton United and has it copyrighted. They told him to pound salt because they can’t make us change our name. At that point he informed them that he was getting a lawyer and coming after me personally. I thought of making him use his own money and telling him(if he ever approaches me) to have his lawyer send me a letter advising me to stop using the name. The I thought of other humorous(to me) ways of messing with the guy. i.e. changing the name to D8on Ewe-knighted, or since I know the guy’s name, actually calling the team his personal name like Team Tom Smith, etc. In the grand scheme of things, I know it’s not really worth it, but on the other side, this guy is being an ass about it, so I don’t want him to just intimidate me either and would love to be able to tell him to piss of if needed.

So, here is his website, which obviously references a copyright. But that’s as far as I get. I am researching, but completely unfamiliar with copyright law. Is it as simple as me changing it to Dayton United FC? Or does he have some pull here? My next question would be that they operate under the umbrella of Team Dayton Soccer, which is, according to the website, copyrighted too. But the cycling team I am on is called Team Dayton Cycling and has been since the mid 90’s. The website says copyright 2003-2006…what does that tell me with the years in there? And from what I understand, he can’t copyright a name like Dayton United, it would have to be trademarked right? If so, I don’t see anywhere that the name is trademarked.

http://www.daytonunitedsoccer.com/

Thanks for any info. I was going to wait until I was back at work and talk to the city solicitor, but this is just aggrevating me more as I think about it.

2

I am an attorney, but not an IP attorney. So please do not take what I say as the gospel.

I think you are on the right track, its a trademark issue, not copyright. I searched the trademark database and can’t find a mark registered that would be consistent with his team name. You should search there as well: http://tess2.uspto.gov/bin/gate.exe?f=tess&state=9j0jm.1.1

Some school named “Harvard” has a website with a nice discussion that provides a basic overview of trademark law: http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm But the lack of registration does not preclude him from having rights in the trademark/name.

Whoever first uses the name in commerce probably has a strong claim to the name. It looks like there could be a dispute as to who used the name first (and if it was in “commerce”). If you’ve got an extra $400 bucks sitting around, you could register the trademark first and then send him a cease and desist letter. http://www.uspto.gov/main/trademarks.htm Registration creates a presumption that the registrant has the rights to the name.

That would be fun and would surely piss him off. Think about it like this. If he is bringing a trademark infringement action, an attorney may take it on a contigency fee basis. If he is defending such an action, he would probably be paying on an hourly fee (unless he counterclaims, which could be possible).

One issue may be the “use in commerce” requirement. I have neither the expertise nor the time to research the issue, but I would ask an expert about how this could impact the dispute.

In the end, the guy probably just needs a swift kick in the nuts. Although you are both soccer teams/organizations, I doubt he is suffering any real or cognizable harm. Sure, there may be some trademark dillution, but to what extent does this dilution have any real impact on his team/organization?

3

Yeah, I thought about trying to beat him to the TM name since I saw that it wasn’t done already. But really, it’s just not worth that much to me. Like I said, as much as I would love to really fight this, it’s still just recreational soccer.

Thanks for the links. I’ve found some interesting stuff. Now I’ll just sit and wait on him to do something.

4

the other thing missing - even if you trademark it officially with the feds, that just means you can’t have the mark taken away from you - most likely he can continue his use, narrowly tailored to his current operation. and, he can always fight your award of the mark with the TM office - up to a year? after it has been awarded. if he used it first, then he might win the fight.

the commercial stuff isn’t too problematic. the problem now is that you have knowledge of the other use. I think that the best option would be to send him a professional letter asking him his priority dates for the various names he’s been using. It’s preferable that he come up with his dates first. You can also look at the state biz names database and see what’s used there.

other than that - you’re completely right about copyright. names and such can’t be copyrighted, only trademarked. he’s pretty much displayed his legal aptitude at this point… so maybe your wait and see approach is best. his current correspondence indicates he doesn’t have any access to legal advice.

5

You know… I’m not even going to try to go into an explanation here, but you can tell this guy to go find a lawyer and do his best. Just tell him to make sure his lawyer reads Rule 11 before filing any lawsuit here. Even assuming this guy has some rights to the Dayton United name, I’m trying to figure out how he is being damaged.

6

I agree he sounds like a tool and is going to have a tough time getting an attorney, but the damage arguably is dilution. Of course that needs a whole bunch o’ facts to support, but . . .

7

Huh…now…anyone want to tell me how it is a company can lay claims to
Iron Half *Man Distance Half Distance 1.2 56 13.1 70.3

And a few others…

8

Good luck with the dilution statutes. He’s got NO claim under federal law, which requires the senior user’s mark be “famous.” I don’t know Ohio dilution law, but I suppose it could be tenable.

Maybe, but I doubt it. I suppose he could at least get past a Rule 12(b) motion.

From Universal Tube & Rollform Equipment Corporation v. YouTube, Inc.

Ohio recognizes a claim for the dilution of a senior user’s mark against a junior user that uses a similar mark. Jet, Inc. v. Sewage Aeration Sys., 165 F.3d 419, 424 (6th Cir. 1999); Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960, 965 (6th Cir. 1987); Reed Elsevier, Inc., v. thelaw.net Corp., 269 F. Supp. 2d 942, 952 (S.D. Ohio 2003); Nat’l City Bank v. Nat’l City Window Cleaning Co., 174 Ohio St. 510, 513 (1963). The senior user’s mark must be distinctive. Ameritech, 811 F.2d at 965. Moreover, the mark must be well-known, at least in a particular product area or geographic region. Ameritech, 811 F.2d at 965. While the Lanham Act uses the word, “famous,” courts interpreting Ohio’s common law action for dilution have used different, but related, adjectives to describe the requirements of a dilution claim. See Jet, 165 F.3d at 424 (“the senior user must demonstrate that it has a famous mark”) (emphasis supplied); Ameritech, 811 F.2d at 965 (“Plaintiff’s trademark need not be nationally famous, however, for a mark that is strong in a particular geographical or product area also deserves protection.”) (emphasis supplied). Courts interpreting the anti-dilution laws of other jurisdictions have often found “strength” to be an important requirement for a dilution claim. See, e.g., Fruit of Loom, Inc. v. Girouard, 994 F.2d 1359 (9th Cir. 1993); Continental Corrugated Container Corp. v. Continental Group, Inc., 462 F. Supp. 200 (S.D.N.Y. 1978). Regardless of whether Ohio law requires “strength,” “fame,” either of the two, or both of them, the two concepts are sufficiently related that Universal’s allegation of having a “strong” mark puts YouTube on notice of the claims against it. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11:83 (4th ed. 2007) (describing how “fame” is a component of “strength”).

9

No company that I’m aware of makes those claims, Chip.

10

He’s probably pissed off because he went to the trouble of registering the name.

http://www2.sos.state.oh.us/reports/rwservlet?imgc&Din=200621500044

11

No company that I’m aware of makes those claims, Chip.
I know of one :wink:

12

No company that I’m aware of makes those claims, Chip.

I know of one :wink:

And I know which one you’re thinking of, but you’re wrong! :wink:

13

After a long mean letter was sent in the mail…I decided to stop using the term “Half Distance” and also will not use “70.3” - just to avoid more long letters.

14

After a long mean letter was sent in the mail…I decided to stop using the term “Half Distance” and also will not use “70.3” - just to avoid more long letters.

I understand. But, I highly doubt that anywhere in the letter was it stated that said company outright “owns” or “lays claim to” those terms. I’d be willing to bet the language was in the vein of, “XXXXX owns the following registered trademarks… Your use of the term ‘Half Distance’ in connection with providing triathlon race event services relating to the ZZZZZ Half Distance Triathlon race is confusingly similar to…”

15

Wow, thanks for the replies guys. I wonder, with too.tall’s post showing the name was registered in 8/2005, I have proof that I used it as early as 2002(scores, standings, roster from a tournament), if I can shove that in his face when he comes knocking?

Anyway, like I said, it’s just rec adult soccer, so it’s not like I’m going to go all out on this. It’s just the principle.

16

It is NEVER just adult rec league soccer. :slight_smile: Even our pickup games require an intervention from the League of Nations, the UN and Amnesty International. But I keep going back every week.

Good luck! (It’s just a girl’s team, after all)

17

Yeah, true. It is pretty brutal here too. But I was trying to put it in perspective of how asinine this guy was being.

:slight_smile:

18

So to put an end to this, I had a game tonight and talked to the manager of the complex. Come to find out, the gentleman who was originally calling is just the manager of Dayton United, working under the umbrella/supervision of Team Dayton. He is high up in the organization, but not “the man”. Further investigation revealed who actually had the name registered and doles out who can use it. I actually used to guest play for Ohio Elite(another part of Team Dayton) and was coached by the guy who had the name registered. Evidently, once my name and a few other players came up, he said it was fine to use as long as we represented well and would change the name if he ever felt that we were doing his team name a disservice or diluting it.

So, kudos to Ryan B. for being understanding. The other guy can piss off.

And thanks for the links. At least I learned some things!