Officials in the UK passed a new libel law, but will it be effective?

Last month, the United Kingdom finally green lit some new defamation statutes. It was a long haul, as parliamentarians negotiated on terms for over three years. The main goals were to reduce the number of libel tourism cases filed in the country, in addition to fortifying free speech protections for the press and bloggers.

Sides argued, lobbyists cajoled and Parliament debated. When the machinations ended, the nation homologated a new libel law on April 25, 2013. Entitled the Defamation Act of 2013, the statute was touted as having saved Her Majesty’s realm from the perils of 128-year-old libel laws.

But like many laws, the devil is in the detail. And the Godfather of 21^st century law theory, Eric Goldman, articulated potential problems with the Defamation Act of 2013. The burden the new law places on website operators may have the opposite effect than what officials intended.

UK’s New Defamation Law

The UK Defamation act of 2013 passed on April 25, 2013. Generally speaking, the bill tightened the country’s libel tourism provisions and added a bit more meat to their free speech statutes. At least that’s the message dominating the media. But as Goldman points out, Section 5 of the bill – which deals with “Operators of Websites” — may result in unforeseen consequences.

Section 5 of the UK Defamation Act of 2013 establishes a notice-and-takedown process for user generated content (UGC). According to the law, a website cannot be sued for online libel if the plaintiff doesn’t first send a takedown request. If they don’t act with malice, webmasters who edit their sites are still eligible for protection under the law.

As is often the case, however, a “rub” exists. Under the UK Defamation Law of 2013, a website operator cannot claim immunity if they are unable to provide identifying information about users. In other words, a webmaster is only safe if they can hand over information that allows the alleged victim to track down their defamer. So what does that mean in practical use? In all likelihood, people who run UK-based websites will most likely remove material the second they get a request to do so. Sure, they could start verifying the identity of every person that uses their site, but the effort and cost involved probably isn’t worth it.

The other potential problem Goldman highlights is that unlike the Section 230 of the CDA, the UK defamation law doesn’t include any consequences for filing a false takedown request. To put it simply, the omission could cause headaches – and end up clogging up the courts. (Ironic, since one of the original goals of the bill was to reduce the amount of frivolous defamation lawsuits.)

Goldman’s On-point Theory About UK’s New Defamation Law

In an article on Forbes.com entitled, UK’s New Defamation Law May Accelerate The Death of Anonymous User-Generated Content Internationally, Eric Goldman opines that “the act’s most change to existing law is creating a user identification obligation.” He also points out that “having a user’s IP address doesn’t seem to satisfy the act.”

Goldman also deftly explains that the new UK defamation act does not restrict third party access to data for defamation litigation purposes only, which means anybody will be able to subpoena websites for identifying information. So, expect people to use the law for various intellectual property issues, as well.

What Will The Future Hold For The UK Defamation Act of 2013?

Welp, at this point, there is no stopping the UK Defamation Act of 2013. It’s the new law of Her Majesty’s land. That said, it will be interesting to see if new statutes will create fresh problems.

If you need an international defamation attorney, contact Kelly Warner law.

The Players In This Ex-Lover Defamation Lawsuit

Michael Arrington founded TechCrunch – a wildly popular tech news blog. In 2010, he sold his blog-baby to AOL for a cool $30 million. Now, he’s a tech investor on the speaking circuit.

Jennifer Allen was Arrington’s on-again/off-again lover who lived in San Francisco.

Defamation Lawsuit Against Ex: What Happened To Prompt The Filing?

The fracas began on March 29, 2013. According to reports, at that time, Allen started posting salacious stories on various websites and social media accounts. Valleywag – a Gawker-owned blog about Silicon Valley – was first to break the story. To condense a story, Allen posted some statements on Twitter, Facebook and a couple of other websites accusing Arrington of Physical abuse, emotional abuse and rape. To give you an idea, Allen had this to offer in one of her online musings about Arrington:

“Hurts when you love someone borderline [sic] and they can’t feel anything at all for you, and threaten to murder you if you told anyone about the physical abuse – all for keeping his reputation.”

Arrington Finally Decides To File A Defamation Lawsuit Against Ex

On April 11, Allen took to the wires and insinuated Arrington impregnated her. Well, Mr. TechCrunch must have had enough, because he decided to file a false light lawsuit against his ex. (False light is a tort similar to defamation.) In his lawsuit, Arrington claimed Allen’s intent was “to smear the plaintiff’s name on the Internet, to destroy his reputation, and to deter third persons from associating with him.”

The original filing asks for both general and special damages, but it doesn’t state a monetary amount. A previous cease and desist letter, however, sent by Arrington’s attorneys indicated that any award money would be donated to charity.

Arrington’s lawsuit is teeming with evidence of Allen’s tendency towards emotional outburst. He also provided evidence of Allen “instigating playful and highly emotional conversations” with the plaintiff, Michael Arrington. (Basically, the plaintiff wants to light the defendant with dim credibility filters.)

Arrington cast the die; now we wait and see how this false light lawsuit turns out. In the meantime, if you need an attorney well-versed in online false litigation, contact Kelly Warner law. While located in Arizona, we are licensed to practice in several states. Get in touch today to begin the conversation.

Facebook Defamation Legal Questions

Is it possible to sue Facebook for defamation? Can you file a libel claim against the creator of a Facebook group? As an online libel legal practice, we hear these two Facebook defamation questions quite a bit. Below is a brief explanation of who is liable, under United States law, for defamatory material on Facebook.

Can I Sue An Individual Who Defames Me On Their Personal or Business Facebook Page?

Yes. If a person posts an untrue, harmful statement about you on their Facebook timeline – or anywhere else in their account that is accessible by more than 1 person – you can sue for online libel. Remember, though, that statements of opinion, in addition to parody and satire, are not regarded as defamatory in the United States. Moreover, different standards of proof apply for public and private citizens. Also, the defamation statute of limitations is short in most jurisdictions. So, if you are serious about suing someone for Facebook defamation, it’s best to start the process sooner, rather than later.

Can I Sue The Creator Of A Facebook Group For Libel?

Yes. If you know the name of the person who created a defamatory Facebook group against you or your business, it’s possible to sue. Even if you only know their online alias, a suit is still conceivable – it’ll just take a few extra steps.

Again though, remember that opinion is not libelous. If someone doesn’t like you, they’re allowed to shout, “I think you suck!” from the rooftops – and on the Internet. It’s also not libelous to share the truth online – but it is defamatory to lie publically and spread inaccurate gossip.

Even though truthful, embarrassing statements may not be considered defamatory, other civil torts – like right of publicity or false light – can sometimes be used to censure someone spreading private, humiliating information without authorization.

Can I Sue Facebook For Defamation?

If you’re a U.S. citizen, the chances of winning a defamation lawsuit against Facebook are between slim and none. It’s not impossible, but the mega-cloud-corps – like all other websites – are protected under Section 230 of the Communications Decency Act. In the simplest of terms, section 230 of the CDA provides safe harbor protection for ISPs and website operators in the event one of their users posts infringing, defamatory or otherwise illegal material on a given platform.

If An Individual Uses An Alias On Facebook, Not Their Government Name, Will Facebook Give Me Their Real Name So I Can Sue?

Whether or not a mobile or online platform will divulge user information almost always depends on the circumstances of a given case. Often times, a website will not reveal personally identifiable information for the purposes of personal lawsuits unless directed by a U.S. court order. That said, as a matter of law, many site operators willing help out in cases of imminent danger.

If you’re looking to unmask an anonymous individual for the purposes of a defamation lawsuit, it’s best to hire a cyber-libel lawyer with experience tracking down unknowns, online.

If you are looking to sue a Facebook group creator for libel, Kelly Warner law can provide comprehensive counsel. Contact us to begin the conversation.

Jerk.com may be facing FTC censure.

Review Websites Are An Internet Staple

RipOffReport, Yelp and other niche market review sites are Internet staples. And while review websites can sometimes present a problem for businesses, they can also serve as great advertising tool. Sure, a surly customer could sully your reputation for a stint, but more often than not, happy customers share glowing testimonials, which helps boost business.

A New Type Of Online Review Site (It’s Now Getting Personal)

At around the time social media started to take hold, a new type of “review site” grew in popularity. People got bored with rating products and services. So, they gravitated to new types of review sites – ones where users “reviewed” each other. In fact, if you believe Aaron Sorkin’s Facebook creation myth, a crude version of a “Hot or Not” site was the genesis of Zuckerburg’s now ubiquitous online hangout.

Jerk.com 101

Jerk.com is one of the more popular “personal review websites” around. It features user-generated content and ranking functionalities. Some believe the platform also features questionable “automated content.” Jerk.com’s rules about who can post a profile are, shall we say, less than strict. As such, it’s easy for users to create unflattering pages about their least favorite people.

In their nascent days, Jerk.com loved free speech so much that, according to Gene Quinn, the company allegedly refused to remove material about a 10-year-old target. In fact, again according to Quinn, in the past, Jerk.com was extremely reluctant to remove any material.

But like Internet laws, Jerk.com has evolved. Most notably, the social media site says they now adhere to DMCA takedown procedures. Moreover, “Remove” is the second item on their website menu – which, if clicked, takes you to a pay for removal portal of which Al Capone would be proud.

Jerk.com Lawsuits & Detractors

As you’d imagine, since its inception, Jerk.com has had its fair share of detractors. But what recently caught officials’ attention were allegations that Jerk, LLC wasn’t following COPPA regulations. COPPA – The Children’s Online Privacy Protection Act – is a strict law that aims to safeguard the personally identifiable information of all citizens aged 13 and under. COPPA violation fees are steep and the FTC is always on the hunt for violators.

After the FTC investigation was underway, material surfaced which raised the question: was COPPA the only issue of concern, or did Jerk.com’s profile generation methods also skirt the law?

This April, the FTC denied Jerk, LLC’s motion to quash a civil investigative demand which focused on the company’s site, Jerk.com. As a result, the FTC will continue to investigate the website’s content generation methods as they relate to the PII of minors and profile creation.

Are you dealing with an online defamation issue? A COPPA issue? If yes, get in touch. Kelly Warner is a full service defamation and Internet law legal practice. We’ve helped many others and can do the same for you.

Can I be sued for retweeting or talking about defamatory statements on social media?

Is it unlawful to re-tweet a defamatory statement? What happens if you talk about a libelous article on a social media platform – is that the same as making the defamatory comment yourself? A California judge recently ruled on these online defamation legal questions. Her decision: just because you discuss a potentially defamatory article via social media doesn’t mean you will be held liable for libel. You can be; but not always.

Twitter Defamation Lawsuit Background

According to reports, on September 13, 2011, Devin Ebanks – a forward for the Los Angeles Lakers – left a club with a woman. Later that night, the woman was in contact with law enforcement officials; she claimed Ebanks raped her. She insisted that he forced himself on her; he insisted that they never had sex.

The night of the incident, the woman made a criminal rape complaint against Ebanks, and the police began an investigation. After several days, TMZ reported that the police completed an investigation and Ebanks was cleared. According to the gossip website, law enforcement officials didn’t find any evidence of “foreign DNA” on the accuser. Moreover, reports surfaced that the claimant previously made unfounded sexually related claims against other professional athletes, allegedly.

Social Media Conversation Leads To Twitter Defamation Lawsuit

On the day TMZ published the story, Ebanks engaged in a Twitter exchange with his friend, Junior. Junior also happened to be the guy who set-up Ebanks and his accuser. During the online back-and-forth, Ebanks jibed Junior about never setting him up with another woman again.

Time passed, and presumably still unsatisfied, the woman filed a Jane Doe sexual assault civil complaint against Ebanks. Curiously, in her filing, Doe argued that since Ebanks tweeted about the contents of the TMZ article, he committed online libel. Specifically, Doe’s lawyer reasoned:

“When defendant responded to the Twitter message, ‘I’m glad you got cleared on that incident,’ Defendant Ebanks adopted the false statements included in the TMZ article, thus defaming Plaintiff Jane Doe.”

In other words, since the TMZ article was ‘salacious’ and Ebanks’ Twitter messages “were not about rape (and therefore not a matter of public interest),” his actions were self-serving and done to “gather ammunition” against his accuser.

Anti-SLAPP Response To Twitter Defamation Claim & Judge’s Ruling

Ebanks countered Jane Doe’s suit with an Anti-SLAPP motion, and Los Angeles Superior Court judge Samantha Jessner ruled on the case. The central question under consideration was, “Can a Twitter user be held liable for re-tweeting or discussing inaccurate information that damages someone’s reputation?” Ultimately, Jessner reasoned that in this case, the defendant didn’t “adopt” the contents, or any possible inaccuracies, of the TMZ article by talking about it on Twitter. Specifically, the judge reasoned:

“While the Twitter conversation and TMZ article were published on the same date, the Twitter conversation does not specifically reference the article other than to speak of the same incident the article covered.”

Are you embroiled in a Twitter defamation melee? Kelly Warner maintains a dedicated online defamation practice. If you need legal counsel, get in touch.

Brian Burke is on an Internet defamation war path!

The NHL playoffs are underway – and so is an Internet defamation legal battle initiated by notorious GM, Brian Burke. The former Toronto Maple Leafs executive is suing over insinuations that he and Sportsnet anchor, Hazel Mae, had an affair. An affair that allegedly produced an heir.

In addition to monetary damages, Burke wants to unmask 18 anonymous online commentators and bar them from posting defamatory content in the future.

Brian Burke’s Internet Defamation Lawsuit: The Background

A few days before this year’s NHL season started, notoriously blunt NHL general manager – who favors “belligerence” and “truculence” – Brian Burke, got the boot from the Toronto Maple Leafs. Most assumed his ousting was a result of the failed Luongo trade. Several bloggers, however, attributed Burke’s canning to an extra marital affair with a TV sport’s reporter — Hazel Mae. Rumors that Burke impregnated Mae also swirled.

Brian Burke’s Internet Defamation Lawsuit: Did He Exacerbate The Situation

Though the Burke-Mae gossip wasn’t widely publicized – hardly headline news – Burke decided to file a defamation claim in British Columbia Superior Court. Most legal watchers and attorneys agree that Burke exacerbated the gossip by filing a defamation lawsuit. That said, filing a formal complaint allows Burke to publicly denounce the accusations. According to Burke, he chose the defamation lawsuit route “to stop people who post comments on the Internet from thinking they can fabricate wild stories with impunity.”

As for Hazel Mae, she supports Burke’s lawsuit and, like him, “feels strongly that people should be held accountable for writing and spreading malicious lies over the Internet.”

Even Though The Bloggers Removed The Material, The Internet Defamation Case Is Still A Go

Since news of the lawsuit broke, several targeted bloggers removed the allegedly offending material. A cached copy, of at least one of the web pages, however, supposedly contains the words “speculation” and “rumors.”

In addition to monetary damages, Burke is seeking an injunction that will prevent the accused from blogging about the unsubstantiated story. According to reports, Burke also wants court orders compelling ISPs to reveal identifying information in service of the lawsuit.

Are you in need of an attorney who focuses on Internet defamation? Get in touch with Kelly Warner Law today.

After 170-years, The UK Has A New Set Of Libel Laws.

After 48 months of lobbying, three public consultations, two working groups and seven parliamentary debates, the UK defamation reform bill passed in the UK’s House of Lords. Leading up to yesterday’s vote, speculation swirled as to whether or not the law would even be introduced for a vote. But it was, and it passed, so, sayonara 170-year-old UK libel laws. Congratulations Brits, you’ve finally lost your title of the “libel tourism capital of the world.”

Lord Lester’s UK Defamation Reform Bill

Venerated UK human rights lawyer, Lord Lester, is the political spearhead of the UK’s defamation reform bill, though the movement included other politicians, citizen activists and media watch groups. For nearly half a decade, defamation reform advocates pushed to:

(1)    bolster free speech protection for the press – including bloggers and online media outlets;  and

(2)    diminish the number of libel tourism lawsuits filed in UK courts.

In order to achieve the above goals, Lord Lester’s libel reform bill bars foreign parties from bringing lawsuits in a UK court unless the plaintiff can prove “serious harm” and more than a tenuous connection to the nation. In addition, the bill allows for “fair comment” as an acceptable defense to defamation charges. Moreover, the bill includes stipulations that corporations would have to show “substantial financial loss” in order to win a defamation lawsuit.

What Got Knocked Down In UK Defamation Reform?

UK libel reform advocates, however, didn’t get everything they desired.  An amendment that would have prevented third parties, which do contract work for government, from suing critics without proving “substantial financial loss” was shot down. Most reformers are disappointed about the omission of the third party clause, but are nevertheless pleased that the bulk of their bill will become the law of Her Majesty’s land.

The Rocky Road To UK Defamation Reform

Before yesterday’s vote, British free speech advocates clamored for UK defamation reform – and the road to reform was bumpy. The News International Phone Hacking Scandal was perhaps the most derailing event faced.

News International Phone Hacking Scandal

Two years ago, just when it looked like the Lord Lester’s defamation reform bill would sail through Parliament, the News International Phone Hacking scandal broke. The incident prompted an inquiry into the culture, practices and ethics of the British press.

Chaired by Lord Justice Leveson, the investigation was divided into two parts. The first dealt with “the culture practices and ethics of the press, including contacts between the press and the police” and potential corruption when it came to “warnings about media misconduct.” The second part, due to commence in the coming months,  will look at “the extent of unlawful or improper conduct within News International [and] other media organizations…It will also consider the extent to which any relevant police force investigated allegations relating to News International, and whether the police received corrupt payments or were otherwise complicit in misconduct.”

Leveson part I public hearings were held between 2011 and 2012. The first findings were published in November 2012. The central suggestion proffered in the first part of the Leveson report was the establishment of a new self-regulatory press agency to replace the current Press Complaint Company – the media monitoring body that was severely criticized in the wake of the phone hacking scandal. Like the PCC, the proposed new media self-regulatory agency would be funded by membership fees; each outlet would have a representative on the new body’s board as well. The only real difference between the old and new agency is that the Leveson inspired PCC would be able to fine entities, dole out other types of sanctions and run an “inquisitorial arbitration service.” They also want to be able to impose “exemplary damages” to entities that don’t participate in the new PCC. In other words, the agency would have more actual power.

Will Proposed New Leveson Agency Still Make Bloggers Personas Non Grata Despite Defamation Reform ?

Many support the creation of a new media monitoring agency in the UK. However, detractors aren’t thrilled about how the Leveson committee’s proposed agency could hurt bloggers and online outlets disproportionately.

Kirsty Hughes, CEO of Index of Censorship, explained that Leveson’s recommendation hurts bloggers and smaller online media outlets because it “introduces a layer of political control that is extremely undesirable” because the fees to join the proposed agency are out of reach to the average blogger. But Leveson suggests that those who don’t participate in the monitoring agency should be subject to higher fines and stricter sanctions. Hughes went on to highlight the absurdity of the stance, reminding that it’s asinine for bloggers to be forced to participate in a regulatory body “that was not intended for them in the first place.”

UK Defamation Laws vs. US Defamation Laws

Before the UK House of Lords homologated Lord Lester’s bill, UK libel laws were stunningly plaintiff-friendly. In fact, they were so claimant-leaning, in 2010, the U.S. passed the SPEECH Act as a way to protect American citizens from being financially pummeled in a UK defamation lawsuit that didn’t adhere to First Amendment standards.

Click here to read more about UK defamation law.

Kelly Warner handles all manners of international defamation lawsuits and litigation. If you’re a company or a private citizen in search of international defamation litigation counsel, please get in touch today.

Defamation is one of the most threatened lawsuits in the United States. It’s also a very most misunderstood tort. While it’s true that it is tougher to win a slander or libel lawsuit in the United States than in other countries, many plaintiffs do emerge victorious – even plaintiffs who aren’t named directly by their accuser.

The First Amendment Makes Winning Defamation Lawsuits Difficult, But Not Impossible

Thanks to the First Amendment of the United States Constitution, defamation laws in the U.S. are decidedly defendant-friendly. Unless a statement is blatantly false, and has a deleterious effect on a person’s or entity’s reputation, it’s tough to prove defamation – but it’s not impossible.

You Can Be Sued For Slander Even If You Don’t Use The Person’s Name

Our nation’s free speech rights erroneously lead some people to believe they’re legally untouchable when it comes to smack talking and divulging others’ secrets online. For example, many believe that if you don’t use your target’s actual name then you can’t be prosecuted.

That is not necessarily true. So long as another individual can figure out the person being described, then it’s possible to be sued for defamation. For example, let’s say you make a YouTube video about “a female talk show host, who now has her own television station, and recently interviewed Lance Armstrong said [insert disparaging comment here]” – expect Oprah Winfrey to sue you. Moreover, expect her to win if (a) what you said was false, (b) you knew it was false and did it anyway, and (c) the statements caused “O” reputational or financial harm.

Even If You Can’t Be Sued For Slander, You Could Be Sued For Something Else

Let’s say, however, that the information you posted is true. While you would definitely have a stronger defense, it is not a given that you will escape legal censure. Other charges – like false light or various publicity and privacy torts – can be used to go after “truth defamers.”

One Can’t Be Sued For Slander If The SOL Has Expired

The important thing to remember, though, is that there is a statute of limitations for defamation. If the incident occurred many moons ago, the chances of you being granted a hearing are between slim and none. Check here to see if list of limitation statutes in each state.

Are you dealing with a slander or libel issue? Kelly Warner Law has experienced great success with various types of defamation lawsuits. If you are looking to sue for slander, or are being sued for slander, get in touch. Our team of defamation attorneys will provide superb counsel and help you through the process.

What happens if you bungle a word in a different language? Can you be sued for defamation?

During the 2012 elections, many people clamored for President Obama’s school records. He declined to produce them, arguing college academic records have no effect on governing. An educator in Hong Kong, however, is bending over backwards to make sure every man, woman and child is familiar with a sub-par university grade, because if he can convince a judge of his long-time struggle with the English language, he may successfully defend himself against defamation charges. The case also raises the question: can you be sued for mistranslating?

Parent Files Complaint; Principal Uses Incorrect English Word To Describe Complaint

The mistranslation defamation melee started several months ago when a parent at the Wah Yan College – a well-known Catholic secondary school on Hong Kong Island – submitted a complaint about a teacher named Shiu Han-po. The principal of the school, George Tam Siu-ping, allegedly  repeated the accusation and called the complaint “valid.” Upon hearing the news, Shiu filed a HK$200,000 defamation lawsuit against Tam.

Teacher Files Defamation Lawsuit Over Alleged Mistranslation

The defending principal, however, insists he should have used the word “real” not “valid.” He’s arguing he only meant to convey that the parent filed the complaint, not comment on its veracity. Shiu is not hearing it, though, and formally accused Tam of “endorsing a groundless complaint filed by a parent.”

Lawyers Produce Evidence Of ‘Bad English’ In Mistranslation Defamation Case

As part of their defense plan, Tam’s lawyers stressed that their client often misuses English words. They went so far as to provide transcript testimony proving Tam once used the word “invest” for “investigate” and “divert” for “disclosure” in other former documents. Tam’s attorneys also highlighted that even though their client has a Masters degree from Hong Kong University, he failed his A-Level English exam in 1970.

Perhaps in an attempt to elicit more sympathy for their client, the defendant’s attorney also called attention to Tam’s lifelong breathing difficulties and severe shortsightedness. Are they purposefully conjuring the image of a well-meaning, but bumbling, nerd being bullied by the better looking jock? (Hey, perception plays a large part in defamation lawsuits.)

Judge Set To Deliberate Mistranslation Defamation Evidence

Judge Wang Hung-chun, the ruling official, seemed sympathetic to Tam’s plight, and she is due to hand down a decision soon. We’ll have to wait a few days to see what happens in this translation misinterpretation defamation lawsuit.

Are you interested in learning more about international defamation laws? Check out the Kelly Warner International Defamation Law Database. If you are looking for a lawyer to assist with a defamation issue – whether it is international or domestic in nature – get in touch with Kelly Warner law today.

Is the trademark "Dunk City" up for grabs?

A Florida businessman is trying to grab the trademark rights to “Dunk City.” Will the USPTO grant him the rights to the phrase? Does he have a legal leg to stand on?

Florida Gulf Coast University came, saw and conquered. Well, they conquered until the Elite 8 when a neighbor Gator team defeated the beloved underdog of this year’s NCAA tourney. But the loss mattered little.  America was already smoldering with a case of FGCU fever. People wondered, “What is the deal with this school and how did they get such a talented basketball team!? Is it a fluke, or is FGCU a new force on the court?

Within days, every leading media outlet mentioned the new Florida university, and all used the term ‘Dunk City’ – a moniker of unclear origins – to refer to the new basketball phenoms.

Now, an industrious businessman from the Gulf Coast – who clearly understands the financial power of intellectual property – is trying to register the trademark “Dunk City.” Can he?

Dunk City Intellectual Property Case Background

FGCU came into existence at about the same time the Internet began spreading through the suburbs like wild ivy, 1991. So, it is fitting that the tagline for which the school is now inextricably linked – Dunk City – dribbled into existence via hashtags, blogs posts and social media updates.

Perhaps “Dunk City’s” lack of verifiable provenance is why music producer Charlie Pennachio of Fort Myers, Florida, tried to snag federal trademark rights to the phrase soon after it went viral. After all, the chances that another party had already filed for the registration was slim.

In the middle of the FGCU winning streak, encouraged by his business partner –Florida music personality and VH1 reality show participant, Tripp Tribbett – Pennachio filed trademark registration paperwork with the United States Trademark and Patent Office. He requested rights to the phrase “Dunk City” for a yet undetermined business.

Florida Gulf State University’s Claim to “Dunk City”

Currently, Florida Gulf Coast University is using “Dunk City” on merchandise alongside its logo. Perhaps more importantly, from a trademark registration standpoint, the school has been selling said products emblazoned with the phrase – which means the school was the first entity to use the mark in commerce.

Additionally, not only does a splash page on the school’s website now dons the tagline, but FGCU also used “the term as a part of a campus food drive. The school created Sixteen hundred student IDs with the ‘Dunk City’ moniker.” Students who donated goods to a local food bank drive were given the special IDs as thanks.

The position of Michael Van Wieren, General Counsel of licensing Resource Group, the firm that handles school’s licensing program, is “‘Dunk City’ is inextricably linked with FGCU. Had it not have achieved its fame or notoriety.”

Does Pennachio Have A Shot At Being Granted The Trademark Registration for ‘Dunk City’?

The question of the hour is: does Pennachio have a chance at beating FGCU to the USPTO? And if he does, could he be granted the trademark registration for “Dunk City”?

In two words: probably not.  Here’s why:

1. According to the Lanham Act – the nation’s chief trademark law – a party cannot register a trademark if another party is already using the mark or phrase commercially. Since the university uses it on merchandise, Pennachio will have a hard time proving that he used the term first. Most noteworthy, Pennachio admits to not hearing of the phrase until FGCU’s NCAA success.
2. The school could argue “Dunk City” is technically a collective trademark of FGCU since the university used it on student identification badges. As a collective trademark, the school would enjoy strong trademark protections./li>
3. The annual NCAA Basketball Tournament is a popular, national happening. Since “Dunk City” entered the public arena via a highly publicized event, attorneys for FGCU easily could  argue that the phrase is a “famous trademark” – which means it would be granted superior protection under the law. As such, the holders (FGCU) could sue for infringement and trademark dilution if Pennachio, et al. tried to use it to promote a music company.  Moreover, since there is no need to show likelihood of confusion, FGCU could stop others from using the mark in unrelated fields.  However, showing that a mark has reached a “famous” level is not a given, especially since it has only been in use for a short while — even with Dickie V. shouting it from courtside.

If you have a trademark legal issue, and need a lawyer who regularly deals with intellectual property litigation, get in touch with us here.