News: Steve Bryant of eWeek has posted a copy of the complaint filed against YouTube by Ohio-based Universal Tube & Rollform Equipment Corp, which claims to have used the “uTube” trademark since 1996 for industrial tubing products. Universal Tube filed an application to register the “UTUBE” mark in the U.S. Trademark Office only last month. (I’ve reposted the Complaint here utube_v_youtube.pdf if you have trouble downloading it.)
Analysis: A couple days ago, I did a preliminary analysis of Universal Tube’s trademark claim here, without having a chance to see the complaint. Now that I’ve seen the complaint, here is some more reaction.
1. How to make YouTube sound like a shady character: I have to hand it to the attorneys for Universal Tube, they know how to write a complaint that is steeped in atmospherics. They describe YouTube as being a provider of “illegal copyrighted materials and pornography.” According to the Complaint, “YouTube facilitates the infringement of copyrighted works and the dissemination of illegal pornography through its service. YouTube condones the public exhibition of lewd and other disgusting videos which depict: [i] A man committing suicide, [ii] Torture fetish, [iii] Tampon fetish, [iv] Pubic hair fetish, [iv] Discussion of corpse defilement, and [v] child pornography. [links in Complaint omitted.]” Universal Tube complains that, because people now confuse its site (www.utube.com) for YouTube’s site (www.youtube.com), “the public has now come to associate the UTUBE mark with the Defendant and mistakenly believes [Universal Tube] to be the infringer or pornographer when it uses the mark.”
2. Actual confusion?: Universal Tube claims that “hundreds” of people have made and continue to make inquiries to Universal Tube, based on the mistaken impression that it is YouTube. Two of the inquiries, which are pretty foul-mouthed and profanity-laced, are quoted in the Complaint. Another inquiry allegedly came from Australian police inquiring about an alleged video with child pornography on YouTube.
In my first post about this case, I doubted whether Universal Tube could prove a likelihood of confusion based on the reverse confusion theory. I thought that Internet users going to a website for industrial tubing would not somehow believe that the site was a video sharing website run by YouTube. After all, the industrial tubing site has no videos!! But I could be wrong on the sophistication of at least some Internet users. If Universal Tube has the evidence to back up the allegations of “hundreds” of actual inquiries mistaking Universal Tube for YouTube, this could give it a possible leg to stand on.
3. Ohio law dilution claim?: Universal Tube also has alleged a trademark dilution claim under Ohio law, apparently under the common law. I have yet to find an Ohio case that recognizes dilution as a claim under common law, but will look around some more. Under the federal Lanham Act, only “famous” marks are eligible for dilution claims. Universal Tube probably concedes (by not raising a federal dilution claim) that it can’t qualify as having a famous mark.
I think UT is simply trying to take advantage of YouTube’s popularity … perhaps ‘making a fast buck’. Sigh, there may be few cases of ‘mistaken identity’ but majority of web surfers can’t even differentiate between the two? Are you (U) serious?
wait a sec? universal tube is not where i go for my tampon fetish videos? my god. i hope this comment is cited as more “proof” for their claim. YouTube has so much traffic its evitable that this company would get some misdirected inquiries. i bet Yahoo gets some too, hey it starts with a “Y”!!!!!
On the other hand, now I’ll never go wanting for steel tubes again.
-s.
UTube, YouTube & Missed Opportunities
It has come to my attention the company who owns utube.com is sueing YouTube!
From here via drmike:
YouTube is being sued by an industrial equipment maker whose domain name is Utube.com. Universal Tube and Rollform Equipment said it has been deluged b…
Ok I also found the porn argument to be a bit tenuous, however I have to side with utube on this one. The basic facts of the case are that youtube and utube have similar names and people looking for videos are finding their way to the wrong site. Also, some of these users are making harassing phone calls and writing harassing e-mails that are causing an expense to utube. In addition, a web site that was costing them about $1,200 a year is now costing them $60,000 on hosting costs alone.
I must agree with them in regards to this not being the type of website visitor that they want. Clearly, the type of visitor that they want is in the market to buy their products. I doubt that many who find their way to the utube website by mistake are in that market thus I doubt that this is profiting them in any way. Besides, if utube’s claim that youtube is loosing money every month, then there are no profits to take.
Youtube is clearly causing problems for utube in addition to simply the sheer irritation of dealing with a few harassers. I don’t see where this goes as far as an intentional trade mark infringement, but I certianly agree that youtube does owe utube some sort of reparations and a plan to keep this from becomming a problem again.
that’s like being able the sue the tattoo parlor next door for attracting bad crowd into the neighborhood.
or… the video store that opened up with similar phone number and making me pay for a lot of “do you have blah blah in stock?” calls. in both case, either you change your location/number or you’re SOL. why should internet be any different?
if i recall correctly, utube made money on this… the traffic generated turned profit and more than paid for their 60k bandwidth cost. and it looks like they’ve sold their domain name as well… shouldn’t youtube (google) take a cut of that profit? you can’t sue for the bad traffic while capitalizing on the good.