There is a growing trend of online video companies that are featuring derivatives of the YouTube logo for their own brand;. Perhaps this is done to imply to customers and prospects of a special business affiliation the company has with YouTube, and also an implied advantage in the search results for their video content. Is this an acceptable use of the YouTube trademark – a business practice that's savvy and effective? Or, its it unfair, and perhaps illegal? We interview two intellectual property attorneys for their take on these issues.
YouTube "trademark copycat" example?
Lately I've been coming across more companies in the growing online video solutions business using derivatives of the YouTube logo for their own product or brand. This is done obviously because the YouTube brand is widely recognizable. Its also done because what it implies is that the company has an affiliation with YouTube. This could imply a special business partnership, or even a licensed video technology, for production and/or marketing purposes. Customers want to find a company that can give them a special advantage with getting traffic to their own video content, and the YouTube "copycat" brand certainly helps "sell" the impression that the company has one.
Let's take an example of one such company, Sister Technologies – an company which provides Video SEO and other marketing solutions to the auto industry and car dealers. The company promotes these solutions to the auto industry with its brand, PushTube, featured on its own website, its YouTube channel, and the websites and YouTube channels of its participating dealers and affiliates - to the tune of an estimated 10,000 videos already online.
But is copying the YouTube logo a legitimate use?
I interviewed a representative from Sister Technologies and asked them if they had any special business arrangement with YouTube not available to the general public, and they said no. I then asked if they had received permission from Google (the parent company of YouTube), or any authorized liaison to copy the YouTube logo for their own business. Their response was "No, but we know that YouTube knows about us," implying that their belief in YouTube's awareness of their activities, and them actively producing new videos regularly with the YouTube-derivative logo in their videos without anything happening to them so far, made them believe (or at least profess) that they were promoting their brand legitimately.
I posed this question to two attorneys I've known professionally for many years:
Deborah Wilcox, Partner with Baker and Hostetler out of Cleveland; co-chair of the firm's Intellectual Property Litigation Practice. I've known Deborah since 2002 when she spoke at her first Search Engine Strategies conference, and has probably been the longest active legal panel speaker at search marketing conferences to date.
David Adler, of David Adler, Esq. and Associates, P.C., based right out of Chicago, who deals with IT and ecommerce, corporation and business law, intellectual property law, and entertainment law. David has also been my own attorney since 2002.
Reviewing the PushTube logo: In your opinion, is this example a fair and legitimate use?
Wilcox: It looks like it would be a rip-off of the YouTube mark. YouTube is so famous that its entitled to a fairly wide berth of protection. When you incorporate not only the word but the logo portion of "Tube" into a new mark, I would say its infringement and dilution. If you're going to be working off of someone's trademark, you're going to have legal issues that you're going to have legal counsel clear for you. You have to have support to show that its a fair use or some other defense for taking someone else's trademark, otherwise its likely to cause confusion, or to dilute the distinctiveness of the trademark… it does seem to cross the line, in my opinion.
Adler: I think you certainly have the prospect of trademark infringement. Trademark infringement basically looks at 8 different factors, a few of which are: the similarity of the mark, the similarity of the customer base, and the similarity of the channel of trade of which the goods and services travel.
So in this case, to use a YouTube/PushTube example, the PushTube trademark, or logo if you will, looks strikingly similar to YouTube. It conveys an instant connotation that its supposed to look like YouTube. They offer video content just like YouTube does. They're probably going after the same class of consumers if you will, which would basically be a broad demographic; basically, anyone who looks at video on the internet.
Another thing to look at is, does YouTube have a registered trademark? (Author's note: YouTube is a registered trademark of Google.) Is their mark famous? Do they have an inherent distinctiveness in the mark that's protect-able in case it's not a registered trademark? So it's always a balancing test, its always an effect-and-circumstances test, and all of these factors are evaluated. But I would say that if I was YouTube, the chances are very good that they would prevail. If I was counsel for YouTube, I would certainly send [Sister Technologies] a cease-and-desist letter, saying it's too similar to ours.
Does YouTube really care about trademark infringement… yet?
I had tried to get a response from YouTube for many weeks on this issue, to no avail. First I tried their PR agency, which informed me that they didn't handle legal issues. After trying one last time through the standard email route, this week I finally received a response from one of YouTube's media contacts, saying that they forwarded my email to their trademark lawyers but that they couldn't commit to a date or even any specific answers. So instead I got this canned official response:
"We take very seriously any abuse of our brand that could confuse the public."
Well, that's really not implying YouTube's taking any immediate action. Now of course, YouTube can still block the videos, and ban the offending account altogether, if at any point they decide its a problem for them. They don't even have to go the route of a cease-and-desist, since it's happening on their own site. However, I don't know of any examples where YouTube has taken any such action for this issue in the past. Perhaps, their long-standing lack of action is probably the biggest validation for companies like Sister Technologies to go ahead and do a copycat trademark with the YouTube logo.
The Sister Technologies / PushTube example appears to be just one of many out on the Web. And I wonder if their competitors see this as an unfair business practice? I certainly would. What incentive is there for other companies to respect YouTube's trademark and logo, when YouTube doesn't seem particular interested in protecting it themselves?
So back to my questions for the attorneys…
Why do you think YouTube hasn't taken any action, or at least anything reported or noticeable, against companies who are doing this type of trademark copying?
Wilcox: There is a huge amount of enforcement work that YouTube needs to do. And in addition to all of the trademark issues they have the copyright issues to deal with, plus enforcement of rights. So, this might be on their list, but maybe its not up to the right level yet for their attention;
Adler: The flip side of this is always the business analysis of some of this cutting-edge, fringe kind of marketing, in that maybe PushTube is actually driving traffic to YouTube. And maybe, YouTube feels that they have a strong enough brand that this PushTube mark isn't going to erode their brand, as much as its going to help them in the marketplace. That's a business decision and analysis. Some companies are less aggressive on the IP side. A lawyer will always be aggressive on the side of protecting your trademarks, and really pursuing anybody you perceive who could diminish the functionality of the brand or trademark. One of the reasons for that is, junior users who come online; i.e., people who are using the same or similar marks for very similar goods or services, that can erode the distinctive quality [of the original trademark].
Is there any consequence for YouTube, or any company, that doesn't take any action with other's copying its own trademark?
Adler: Over time, it chips at your ability to claim not just distinctiveness, but also protectability. Eventually, your mark becomes so watered-down that you can't protect against these junior users. That's the potential harm, which not everybody appreciates at the beginning. Because at the beginning, there may not be any actual harm; it's just the potential for harm. But down the road, over time, the distinctiveness of a brand or trademark tends to diminish by the use of junior users. Junior users don't necessarily have to use the same mark. They can use what's known as a "confusing similar" mark. Which, by definition, is a similar connotation, appearance, or overall look or feel.
I think you have to add that if you are aware of junior users who may be potential infringers and you don't do anything, then there are defenses available to those junior users, one of which is called "laches," which is the equivalent of sitting on your rights. If you are aware that somebody is causing you harm and you continue to let them do it, eventually the law will say that you waited too long, and you no longer have the right to do anything about it. Its what's known as an "equitable defense," which arises in the content of a lawsuit. There are other equitable defenses as well. With respect to shutting of an account, its true that YouTube can just shut down the account so that mark is no longer showing up on YouTube. But, that really doesn't prevent the infringer from posting it on their own site, or some other 3rd party service, in which case its still a mark that's confusing similar to YouTube.
You have to think in terms of the class of consumers who may see this mark, and they may not necessarily be very sophisticated people. They may see the PushTube logo and think "hey, this must be a new product that's being offered by YouTube!" That's called initial-interest confusion – when you receive something that's confusing similar, and you confuse it with something you already know.
Video SEO companies are getting away with it… but for how long?
Video solutions companies with a YouTube brand derivative, or planning on doing one, shouldn't think they will be immune to any repercussions, just because they may be getting away with it for now. Also consider that if you're have a large quantity of video content on YouTube for your customers, and that all suddenly gets pulled, you could put yourself in a situation where your own customers end up suing you for not only damaging their own business, but with false advertising. Companies that want to be YouTube trademark copycats do it because they find it an effectively strategy for luring consumers by implying a special affiliate with a proper brand, but its one that can get you in a whole bunch of financial and legal troubles down the road. Even if you have an expert attorney to make your case, can you really afford the down-time with all your video content, because you never bothered about it before? YouTube trademark copycats are simply bad for the industry of Video SEO.
Right now, it seems that Google has been focused mostly on entire countries protesting YouTube content, rather than individual companies. So perhaps Sister Technologies and other companies may continue to promote their own YouTube-derivative logo for quite some time. However, if you're a potential customer looking for a video solutions provider and see one of these YouTube brand-copycats, be very cautious with considering them as your provider. At the very least, see if they are actually making an claims, direct or implied, of a special "relationship" with YouTube. Get everything they promise in writing, including a guarantee of reimbursement of fees if their videos get dropped from YouTube for any reason.
And if you happen to be a competitor of one of these same companies? You might even have a case for going after them for unfair business practices; or at the very least, you can bring it to the attention of potential customers and the general public. You are certainly allowed to optimize for their own "Tube" trademark name, and any comparative advertising exposing your competitor's implied relationship with YouTube to be nonexistent. (Heck, why not even do an optimized video on that, and really get your point across?)
My example of what I consider fair use
I'll first pre-qualify my opinion and state that I'm not an attorney, and you shouldn't use this article as a substitute for professional legal advice. That being said, I think companies are perfectly within their rights to use the word "Tube" in their own logo if they are a video provider, and even copy some graphic elements of the original YouTube logo.The TeacherTube logo is an excellent example in my opinion of how this can be accomplished, and avoid getting in any legal hot water.
Lesson to businesses: Don't be swayed by the logo!
Any business should not base their choice for a video solutions provider on a brand that looks similar to the YouTube logo. Otherwise, they may end up getting "You-Screwed."
The views expressed above are my own and do not necessarily reflect the views of the management or staff of ReelSEO.com