May 17, 2000

9:36 PM

Naked Juice: Journal of a Tangerine Girlis the latest personal site to receive a cease-and-desist, after Chiquita Brands, owners of nakedjuice.com and the brand name Naked Juice, say there's potential confusion between this artist's web journal and their juice company. This is despite the fact that the journal is hosted on Jessi's own tangerinegirl.com, a site that obviously has nothing to do with fruit juice, naked or otherwise.

Interestingly, though they've apparently claimed in a letter to Jessi that they own the trademark Naked Juice, only the word Naked is trademarked according to their legal page.

Contact Naked Juice/Chiquita here.
posted by Georgina (16 comments total)

It's strange, if corporations didn't make a big deal out of what they perceive as "copyright violations" they'd be so much better off. No one in their right mind would confuse this weblog with a coroporate juice site.

Instead of leaving well enough alone, Chiquita has incurred the wrath of a whole mess of people (including myself). Had they remained silent, no one would have ever noticed.

It just doesn't make sense.

On another note, the design and layout of that log looks awfully familiar . . . (in a good way).
posted by aladfar at 9:55 PM on May 17, 2000

Fuck Chiquita. They're the reason why I don't eat bananas when I'm in the US. They fund both political parties, have systematically campaigned to squeeze Caribbean co-operatives out of banana production, and screw over the subcontracted labour they use in Latin America.

Of all the transnational corporate scumbags which represent the cancerous evil of globalisation, Chiquita is the quintessence. They can sod off.
posted by holgate at 10:00 PM on May 17, 2000

it's outrageous. this isn't even a *domain dispute* it's over the title of her page.

I wish the media would pay attention to this kind of case for a change. the only stories you read are about unprincipled people buying up domain names in the hopes of making big bucks off of innocent, unwitting companies.

I'd like to see attention paid to the innocent, unwitting individuals who are making a little website for the love of it only to find a massive corporation threatening them with legal action over a perceived infringement of their trademark.

we need an online toolkit to help individuals deal with this kind of thing. a place that describes what to do, when to do it, and maybe even provides a list of sympathetic lawyers who might be willing to take these cases.

it's only getting worse. we need to provide resources to anyone who might find themselves in this situation.

rcb
posted by rebeccablood at 11:24 PM on May 17, 2000

I agree, Rebecca. I was thinking much the same thing last night.

I'd love to get together with a few people via email and throw some ideas for a site around. Anyone, anyone?

Bueller? :)
posted by Georgina at 11:59 PM on May 17, 2000

I think there are a couple of things that need to happen here.

First, the trademark and copyright laws must adapt to the new environment wrought by the Internet. As it stands right now, holders of intellectual property are required to go to these absurd lengths because the courts say that if they don't, they forfeit said property. In other words, Chiquita has to go after Jessi or else they'll have no defense should someone else try to market a product called Naked Juice.

These laws have stood the test of time, and for the most part have worked fairly well. But in a world in which something produced by a hobbyist in her bedroom can reach just as many people as that produced by a multinational conglomerate, they totally break down. So we need new rules. (What should they be? Don't ask me -- IANAL.)

Secondly, steps must be taken to ensure that the Internet will be a place where art and commerce can peacefully co-exist. All of the parties empowered to handle these disputes -- from the courts to Network Solutions to ICANN to WIPO -- have systems in place that betray the deep assumption that commercial interests automatically outweigh all other interests. That any business's rights are more important than those of any individual.

A dialogue has to take place, even if the corporations have to be dragged kicking and screaming to the table. But right now, no one is speaking for the rest of us. And until someone does, businesses will be free to run roughshod over the Web, parceling up the language until any given turn of phrase can get you shut down because some company owns it.
posted by jjg at 12:00 AM on May 18, 2000

smart words.

Not being American, I'm not au fait with the procedures, but are you more likely to change the law by creating precedents in the courts or by lobbying Congress? If anything, what might be needed is a grass-roots lobby organisation to protect the opportunities that the Net now offers from over-zealous (but well-trained) legal departments. After all, if the corporations can persuade legislators to back such flawed pieces of work as the DMCA and UCITA, there must be room to do the same kind of canvassing, mustn't there, especially if you bring in the ACLU and other First Amendment organisations?
posted by holgate at 1:14 AM on May 18, 2000

holgate, in this case, Congressional action will be required.

Georgina and Rebecca, this is a simple trademark infringement dispute that has nothing to do with domains. jjg is right, the way the law is written they must send out C&D orders to anyone using something that might be perceived as infringement. This is a legal process and the widespread perception of it as bullying isn't entirely deserved; often a post-lawyer-letter dialog can result in no further action.

It's really a shame that personal uses keep getting nailed, but with the flattening of the spheres of commerce concept under which trademarks operate, such that any usage is automagically "worldwide", these kinds of collisions can only become more frequent.
posted by dhartung at 3:33 AM on May 18, 2000

There's a great Intellectual Property in Cyberspace site that I hadn't found before (at Harvard Law). It includes the full text of the key 1961 Polaroid v. Polarad case that laid out eight provisions for determining infringement, and which were further refined for internet purposes in the Planned Parenthood v. "plannedparenthood.com" case.

These eight factors are as follows:
1. the strength of the mark
2. degree of similarity
3. competitive proximity
4. bridging of gap between markets
5. existence of actual confusion
6. defendant's good faith
7. quality of defendant's product
8. sophistication of purchasers

1 is simple for any product with advertising and market recognition. 3 and 4 are really obsolete when you're talking about the internet: both sites are automatically in the same "market", the Web. 6 is clearly on TG's side, assuming she hasn't tried in any way to capitalize on the similarity in marks. 8 is probably on Chiquita's side. The only real questions are 2, 5, and 7. The similarity is clear (and we're not even talking about a .com extension here), so that probably goes in Chiquita's favor as well. 5 is arguable, but all Chiquita has to do is produce affidavits from someone who searched for "naked juice" and found TG's page instead. 7 probably hinges on whether anything on TG's whole website, not just her journal, might be "destructive" to the product image.

Summary: 1, 2, 3, 4, 5, and 8 are probably in Chiquita's favor. Only 6 and maybe 7 are probably in TG's favor. Note that "use in commerce" is a determining factor, but that doesn't need to be "commercial", i.e. moneymaking, because trademark law also protects against dilution and confusion.

IANAL by any means, but this doesn't look especially good. She'd better talk to a lawyer. On the other hand, she should also look to Meat of the Loom as a model (no legal precedents, there, though). Styn went to court, though, which may have been what was necessary to scare them off. Nevertheless, it can be done.

As I noted above, when you're on the internet, you've pretty much put yourself right in front of a gunbarrel with respect to questions 3 and 4.
posted by dhartung at 4:50 AM on May 18, 2000

What a fascinating summary, dhartung. Thank you for posting it.

A couple of points in response:

(a) As I understood it, Meat of the Loom was essentially about defining the work as a parody, parody being protected against accusations of trademark infringement. As such, the case seems different enough not to warrant comparison here. (Unfortunately.)

(b) I am not so sure about 5. The existence of actual confusion seems awfully slight given the fact that Chiquita, not Jessi, owns nakedjuice.com. This lack of confusion is strengthened by the fact that Jessi’s domain is completely different; ie she doesn’t own nakedjuice.org or nakedjuicegirl.com or similar. If the customer is presented with both as results of a search engine hit, which is s/he going to choose?

[Interestingly, neither page is at the top of altavista’s rankings when I do a search for "naked juice" -- two beverage reviews of NJ products come up instead. nakedjuice.com is third with their "Naked Juice - New Juice Sensation" page, and Jessi’s journal fourth with "Naked Juice : Journal of a Tangerine Girl". Then various other assorted pages, including another hit on nakedjuice.com, until we get to the (ahem) porn video "Naked Juice" at number ten. I wonder if Chiquita is also going after Odyssey Men Video?]

IANAL either, but something to be considered is that Chiquita does not own a trademark on the term "Naked Juice" (ie Naked Juice [tm]) but on the term "Naked" within the industry of juice production (ie Naked [tm] juice). If Jessi had a commercial or non-commercial page about juicing it would seem Chiquita may have a case; as it stands, the only similarities between the two sites is a predominance of the colour orange.

I'm still not convinced that Chiquita have a case here; moreover I think the possibility of trademark dilution is close to zero. But I am starting to realise, thanks to your thoughtful posts, that the situation is a lot more complicated than I'd given it credit for.
posted by Georgina at 6:31 AM on May 18, 2000

If Chiquita was smart,they would have asked Jessi to run an ad on her site... :/
posted by Calebos at 7:04 AM on May 18, 2000

I wish I would have known about this earlier. I was 20 feet away from the CEO of Chiquita at the Reds game last night (he owns the team).

I doubt he'd even know what I was talking about though.
posted by Mick at 9:54 AM on May 18, 2000

Well if Playboy's reaction to AP's "Elian Movie" C&D, and Microsoft's reaction to the Digital Diva's are any indication...then Cease & Desists are a joke!

(Of course, I still abide by all the ones *I* get and keep adding them to the collection) Hey, I'm a wuss...sorry!
posted by EricBrooksDotCom at 11:28 AM on May 18, 2000

Georgina: count me in if you move on your idea.
posted by wiremommy at 1:14 PM on May 18, 2000

The whole thing is completely ridiculous. I've never even heard of Chiquita's Naked Juice, and if I had, how could I possibly think that Tangerine Girl's journal was the official site for the drink. Then, even if I had accidentally gone to TG's site on accident, what happens when I do? I realize immediately that I made a mistake and go back to the search engine I used (because a search engine is the only thing I could have used since TG's journal is on tangerinegirl.com and not nakedjuice.com) and try again?

<sarcasm>How horrible! Why, Chiquita has every right to take legal action against Tangerine Girl for that grave injustice!</sarcasm>
posted by deckard at 1:35 PM on May 18, 2000

Actually, Georgina, parody is not an affirmative defense against trademark infringement. It's much weaker in that area than in copyright law, where it is very much protected. And as for your point b, the lack of a domain name issue here simply means that this is a plain old trademark tussle.

IANAL, IANAL, IANAL, but confusion seems possible (Google shows the journal first, the juice site 2nd), and ironically -- in an age of astroturf marketing, ala Blair Witch, the Mutants political ad, and such, it's even more likely that somebody might come upon this thinking it's some kind of promotional site. Stupid, yes, but that speaks to point 8 -- which I neglected to note. TG's readers are presumably sophisticated enough to know the difference, but the juice customers may be presumed to be average-IQ folks coming on line for the first time just to find the Naked Juice website (yeah, right). In any event they are the group of peers to be considered by the judge.

I'm not saying it's run-and-hide time, but I think that her case is considerably weaker than some others we've discussed. In fact, it's very similar to the Digital Divas v. Microsoft case, with the only difference being that in that case the law is firmly on the side of the underdog and not the big nasty corporation (as I'm hopeful Microsoft will soon realize).

The bottom line is that there are very few precedents involving bignastycorp vs. j. random enduser where enduser prevailed. And there's no legislatively defined safe harbor for personal uses. We'll need one if we want the corporations to back off, but they not only have all the lawyers, they also have all the lobbyists. It's quite clear that S.1948 last year had little to no input from anyone concerned about the far-reaching effects of granting broader trademark defense rights.
posted by dhartung at 2:22 PM on May 18, 2000

I continue to appreciate your thoughts, dhartung, though I can't say I agree with all of them. IANAL, IANAL, etc too. Ultimately, the courts will decide (or morelikely, one party will back down).

[I should apologise, however, for writing about parody on the assumption the law was the same in the US as it is here; as I understand it parody is a defense against trademark infringement where I live. Sometimes the global nature of the net makes me forget the very real geographic differences that exist behind it.]

Either way, I'm going to move my energies from the specific to the general. I think the idea of a website that brings together information on trademark as it relates to the web, descriptions of current trademark issues (Digital Divas, mattl.com etc), and an active discussion of what needs to change to prevent these kinds of lawsuits from continuing to happen would be a benefit to the online community. I hope you'll consider bringing your knowledge on board.

I'd also like to encourage anyone else interested in throwing some ideas around to drop me a line.

Cheers.
posted by Georgina at 1:07 AM on May 19, 2000