Cease and desist order over website that shares a name with a celebrity...?

[gowan]

So back in 1998 my boyfriend bought his name as a website. He uses it as his family's site; basically a forum just for members of his family across the country to talk. Well suddenly last week he received a cease and desist letter from a law firm, basically ordering him to shut down his site and fork it over to their client. When we Googled it we found out that he shares a name with a celebrity, however it's the celebrity's birth name and not their Hollywood stage name.

We don't have any cash to fight a law firm, so does he basically have no choice but to do as told?

[christie42]

So back in 1998 my boyfriend bought his name as a website. He uses it as his family's site; basically a forum just for members of his family across the country to talk. Well suddenly last week he received a cease and desist letter from a law firm, basically ordering him to shut down his site and fork it over to their client. When we Googled it we found out that he shares a name with a celebrity, however it's the celebrity's birth name and not their Hollywood stage name.

We don't have any cash to fight a law firm, so does he basically have no choice but to do as told?

If this particular celebrity holds a copyright or trademark on the web address, then your BF might have to cease and desist. I say might, because if your BF can prove he registered the web address before the celebrity got his copyright or trademark, then he should be OK.

The only other issues a judge may consider legit on behalf of the celebrity would be....

1) If your BF is making money or attempting to make money based on the name or image of this celebrity and if the web address and/or website is part of that effort or appears to be leveraging the celebrity's name, likeness or image for profit.

2) If your BF is trying to capitalize on a comparison to the celebrity for the purpose of career enhancement or making money.

3) If the web address represents or leads to anything that defames, degrades, tarnishes or damages the celebrity's reputation or image, even if it is meant to be in humor.

4) The appearance of any of the aforementioned or reasonable sign of intent of any of the aforementioned.

It is really common for both celebrities and corporations to send cease and desist orders to anyone who uses an associated name, especially in web addresses. Most of the time it is just a scare tactic and they are betting the cease and desist order will scare the person or entity from continuing use of the name in dispute. It doesn't sound like there is a case here for your BF to give up his web address. Here's what I would do and in this order:

1) Find out the date your BF registered the web address. He probably got it through Go Daddy or some place like that and there will certainly be a date stamped record of registration and purchase.

2) Respond to the Attorney who sent you the cease and desist order and tell them you have been advised to ask for a copy of the celebrity's registered trademark or copyright that has been validated by the Library of Congress.

3) If a copyright/trademark cannot be produced, or if they have one that is dated after your BF's web address registration date, simply tell them they are out of luck and since the web address is not using the celebrity's name in a derogatory way or to promote anything to make money, there are no legal grounds to obey the Cease and Desist order. Obviously, I would also mention that your BF happens to have the same name as the celebrity and the website is a private family website used for personal and non-public communication.

4) I would also tell the lawyer that your BF will consider any offers to buy the web address, but will not commit to selling it.

5) I would end by telling the lawyer that you consider this matter closed, unless the celebrity wants to make an offer for the web address. I would also say that if any further Cease and Desist notices are sent, or any letters that are written in an intimidating or threatening manner, they will be turned over to the press and appropriate news organizations, so a story maybe reported on the matter.

Good Luck!

[muata2]

Well, how important is it to your bf to keep the site? If it's important, then have bf hire a lawyer to write a response letter.

Law firms will routinely write cease and desist letters, even though there is frequently absolutely no basis for legally ordering cessation of the activity.

Talk to a lawyer. Perhaps the lawyer can arrange a deal where your bf sells the web site to the celebrity.

[hjortur]

let it go to court tell them to pound sand the boyfriend legally owns the title and the celeb doesn't. Counter sue for frivolous lawsuit at ten times the amount they threaten you with.

[parnell]

Contact the ACLU and Electronic Frontier Foundation. They may be able to direct you towards low-cost or free legal representation.