We Must Defend The Word "Entrepreneur" From Entrepreneur Media, Inc., Publisher of Entrepreneur Magazine!
Recently, Entrepreneur Media, Inc. threatened us with legal action, saying that we must cease using the domain name EntrepreneurBooks.com for our business book review site, claiming that the domain name infringes upon its trademarks.
We are strong supporters of the rights of intellectual property holders, including the holders of copyrights, trademarks, and patents. We do not believe that our use of the word "Entrepreneur" and the domain name EntrepreneurBooks.com infringes upon the trademarks of Entrepreneur Media, Inc.
In researching trademark litigation, we came across several suits filed by Entrepreneur Media, Inc. against other companies for varying uses of the word "entrepreneur."
To us, it seems that Entrepreneur Media, Inc. has attacked small businesses which use the generic words "entrepreneur" or "entrepreneurs" in their business names, products, or websites. By claiming that the use of both of these generic words violates Entrepreneur Media's trademark protection (Primarily Trademark Reg. Nos. 1892783 and 1453968), we believe Entrepreneur Media has used predatory business actions, lawsuits, and financial threat to acquire or to attempt to acquire assets rightfully belonging to others at unreasonably low prices. We believe this is a misuse of the protection intended to be provided by trademark law.
How Would You Like To Own A $1 Million Dollar Domain Name And Then Have It Taken Away From You?
Claiming the right to the general word, "entrepreneur," without any other surrounding context, Entrepreneur Media, Inc. filed legal actions against James Borzilleri who had registered the domain name, entrepreneur.com. Entrepreneur Media, Inc. prevented use of the domain name by Borzilleri through Network Solutions, which, at the time, had a policy of not allowing the use of a domain name which it felt might involve any trademark infringement claims at all. This made the domain name useless to Borzilleri.
Faced with losing thousands of dollars in legal fees and an unusable domain name without an expensive legal fight against Entrepreneur Media, Inc., Borzilleri sold the domain name Entrepreneur.com to Entrepreneur Media, Inc. for an undisclosed amount of money, rumored to be about $50,000. When, Borzilleri sold the name Entrepreneur.com, Borzilleri signed a confidentially agreement and agreed not to discuss the settlement or his experience with Entrepreneur Media, Inc. publicly.
We feel this is a clear case of forcing a sale under duress, where the duress was forced upon Borzilleri by the financial threats of Entrepreneur Media, Inc. The fact that the sale was made under duress means that Borzilleri might not be legally bound to fulfill the obligations he promised Entrepreneur Media, Inc. in signing a confidentially agreement.
We compare this to a robber placing a gun to somebody's head, forcing the individual to give the robber his wallet, and then forcing the individual to sign an agreement that he won’t discuss the transfer of the wallet to the robber with the police or any other parties. Certain contracts cannot be legally entered into and certain conditions can invalidate contracts. You always have the right to discuss contracts with legal counsel to determine the legality and enforceability of a contract, even after you sign and agree to a contract.
Borzilleri didn't have the financial resources to defend himself against the much larger Entrepreneur Media, Inc., which it seems selectively targets financially weaker victims, even though the outcome of a full legal decision would probably have favored Borzilleri.
Recently, the domain name business.com sold for $7.5 million dollars. It is reasonable to estimate that a domain such as entrepreneur.com could sell for as much as $1 million. Allowing for treble damages, this means we feel Borzilleri is rightfully entitled to compensation of about $3 million from Entrepreneur Media, Inc.
Note To Entrepreneur Media, Inc. : Pick On Someone Your Own Size For A Change
Entrepreneur Media, Inc. sued Entrepreneurs.com to acquire their domain name but was forced to back down when Entrepreneurs.com demonstrated the financial resources and the tenacity for a fight. Today, Entrepreneurs.com helps entrepreneurs attacked by Entrepreneur Media, Inc.
Entrepreneur Media, Inc., while targeting individuals and smaller businesses who/which lack the financial wherewithal to defend themselves, has not pursued equivalent legal action against larger companies which have used the words "entrepreneur" and "entrepreneurs" in an entirely analogous fashion to the way in which smaller companies use these terms.
To the best of our knowledge, Entrepreneur Media, Inc. hasn't filed legal action against larger companies, such as Ernst & Young and CNN, with their "Entrepreneur Of The Year" and "Entrepreneurs Only" programs. It is inconceivable that Entrepreneur Media, Inc. isn't aware of this "infringement" of their trademarks by larger companies. It is clear that any lost name association and dilution of the value of trademarks held by Entrepreneur Media, Inc. for the word "entrepreneur" would be most significant for infringement by larger companies, which Entrepreneur Media, Inc. hasn't aggressively targeted in its legal attacks.
By not pursuing aggressive legal action against larger, financially strong companies, Entrepreneur Media, Inc. demonstrates that such legal fights with larger, financially strong companies would probably end in a loss to Entrepreneur Media, Inc. Either that, or, else, Entrepreneur Media, Inc. does not have the financial or other resources to defend any trademark of the word "entrepreneur" against many competitors in a large market selling informational, service, and media products to entrepreneurs.
"Entrepreneur" Is A Generic Word Most Widely Used Without Implying Any Association To Entrepreneur Magazine or To Entrepreneur Media
This inability to defend Entrepreneur Media, Inc.'s trademark claims against so many larger companies in the broader market of selling informational products to entrepreneurs doesn't stem from brand-name awareness which was created by Entrepreneur Media, Inc. and upon which other companies are encroaching or trying to encroach. Rather, it stems from the word "entrepreneur" being a generic word which refers to a person who "organizes, manages, and assumes the risks of a business or enterprise." (Webster's New Collegiate Dictionary). The word "entrepreneur" existed and was extensively used in the business context long before Entrepreneur Media, Inc. existed.
If a person does a general search on a popular search engine, such as google.com, looking for information about becoming an entrepreneur, for example, with the specific phrase, "How can I become an entrepreneur" that person isn't specifically looking for Entrepreneur Media, Inc. The person probably hasn't even heard of Entrepreneur Magazine, Entrepreneur Media Inc.'s main product. Rather, the person is looking for general information about a generic term in common use in the English Language.
We believe by trying to deprive and depriving other entrepreneurs and small businesses, selling informational products, services, and media products to entrepreneurs, high positioning on popular search engines by trying to unreasonably restrict use of the generic word "entrepreneur," Entrepreneur Media, Inc. is restricting free trade and commerce and interfering with business relationships.
It is well-known that the words in domain names are significant in determining the ranking of results returned by many search engines. There is no justification for Entrepreneur Media Inc.'s products and services to have a higher ranking than any other company or organization providing informational products, services, and media products to entrepreneurs.
For example, Borzilleri had as much right for any informational products, books, etc., he was selling to entrepreneurs to display highly in a returned list of search engine results looking for information about " How can I become an entrepreneur " as did Entrepreneur Media, Inc.
The high value behind the domain, entrepreneur.com, results from the word's generic use and not any association to or with Entrepreneur Media, Inc. The dollar value of this domain would remain whether or not Entrepreneur Media, Inc. and Entrepreneur Magazine continued to exist or not.
By depriving Borzilleri the use of his domain name, "entrepreneur.com," based upon the generic word "entrepreneur," we believe Entrepreneur Media, Inc. has denied equal access to the marketplace selling to entrepreneurs. Lawsuits by Entrepreneur Media, Inc. against Borzilleri also compromised the value and position of Borzilleri in selling the domain name to any other party not Entrepreneur Media, Inc., both by tarnishing the name with threat of lawsuit to potential buyers and by allowing for the possibility of damage suits against Borzilleri after such a sale.
While trademark rights are important, their improper use by companies must not prevent fair and just competition. Yet, possibly spurred on by the successful acquisition of the valuable domain name Entrepreneur.com, Entrepreneur Media, Inc. has continued lawsuits against smaller businesses.
In an article by Judith Kautz, Entrepreneur Media's corporate counsel, Ron Young, was quoted as saying, "We don't go after just the little guys...but the law requires us to. If you don't protect your mark, you lose it and it becomes generic. When it becomes generic, it is unprotectable -- like 'escalator' and 'cellophane.'" Today, the word, "entrepreneur," is in more common generic usage than the word "cellophane."
We believe that the use of the word "entrepreneur" without any other context is generic and that all trademarks held by Entrepreneur Media, Inc. which claim the general wordmark, "Entrepreneur" without any other context to identify the wordmark to be invalid. But, ultimately, only the higher courts can decide this.
According to Entrepreneur Media, Inc.'s own corporate counsel, by not aggressively pursing legal actions against larger companies, such as Bloomberg, Ernst & Young and CNN, while at the same time pursuing legal action against smaller, financially weaker companies, Entrepreneur Media, Inc. has decided to only selectively protect its "trademark rights." Any such claims to the use of the word "entrepreneur" without surrounding context have been legally forfeited and should be declared invalid by the courts.
We feel that, while protecting the true rights of trademark holders is crucial, Entrepreneur Media, Inc.'s attempt to manipulate the trademark of a common word as a weapon of manipulation and financial extortion should null and void all trademarks held by Entrepreneur Media, Inc., with the sole, reasonable exception of the exact phrases "Entrepreneur Media" and "Entrepreneur Magazine" and "Entrepreneur Press."
We're Shocked That Entrepreneur Media, Inc. Was Able To Register The Wordmark "Entrepreneur" as a Trademark
It is important to note that, just because a trademark has been registered, does not mean that the trademark is enforceable or that the trademark doesn't infringe upon the trademarks of other parties, or that the trademark isn't invalid, because it claims ownership of words in the public domain without sufficiently limiting context. It is possible for a trademark to be registered although the registration should have been originally denied. Only the courts can decide the validity and scope of trademarks and can cancel existing trademarks.
Even long-standing trademarks declared "incontestable," due to their length of standing, can be cancelled in the event that the wordmark of the trademark has become generic. This means that the primary public use of the word is not in regard to a particular company's products or services, but is in regard to a more general class of products and services.
Rather than protecting brand-name awareness which has been built up and created by Entrepreneur Media, Inc. and protecting the consumer from confusion, we believe that Entrepreneur Media, Inc. has used the threat of lawsuits and actual lawsuits to extend their position in the market consisting of entrepreneurs and future entrepreneurs.
Cancellation of Incontestable Trademarks
Entrepreneur Media, Inc.'s trademark of the wordmark "entrepreneur" today is technically referred to as "incontestable." Incontestable trademarks tend to give a company a very strong position.
Having a trademark declared incontestable, courts recognize "the registration . . . [as] conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce." 15 U.S.C. § 1115(b).
Yet, acquiring an "incontestable" status for a trademark amounts to only filing a Section 8 Affidavit between five and six years after registration and continuous use of the mark, and, assuming, of course, that the mark hasn't been cancelled.
Had Entrepreneur Media, Inc. aggressively tried to protect against "infringement" of its "entrepreneur" wordmark by larger companies, such as Bloomberg.com with its Entrepreneur Network, it seems there is little doubt that the mark would have been cancelled or deemed to be a weak trademark.
By only attacking smaller companies, which lacked the financial resources to bring this aspect of the trademark issue to a full legal decision, while, at the same time, failing to "protect" against "infringement" by larger companies, Entrepreneur Media, Inc. has created a veneer of aggressively protecting its trademark rights, while at the same time, failing to do so and allowing "infringement" by larger companies, such as bloomberg.com. This behavior, while legally savvy, is unfair to smaller businesses serving the entrepreneurial market. And, through this strategy and failure to protect its mark from generic use by large companies, any such trademark rights that Entrepreneur Media, Inc. once had, if any, to the general wordmark of "entrepreneur" should be cancelled, because it is clear, that, even if the wordmark were at one time deemed not to be generic, today, it clearly is.
The Fate of Entrepreneur Books
So, what about Entrepreneur Books and the domain name EntrepreneurBooks.com specifically? We do not believe that our web domain and book review site infringes upon Entrepreneur Media, Inc.'s trademarks. While Entrepreneur Media, Inc. does hold a trademark to "Entrepreneur Press," book readers tend to be informed consumers who can distinguish between "Press" and "Books." Our products and book reviews are clearly distinguishable from Entrepreneur Media, Inc.'s products.
We believe the word "entrepreneur" will ultimately be deemed by the courts to be a generic term in common use by the world population to mean "someone who starts a business" or when used as an adjective to modify a noun to have equivalent meaning to "entrepreneurial." That is the only sensible legal decision.
Entrepreneur Media, Inc. has made no attempt to build up brand name recognition for "Entrepreneur Books" or do business under that name. We have. We have posted nearly a hundred high-quality book reviews to EntrepreneurBooks.com. We have paid to have EntrepreneurBooks.com listed in Yahoo.com. We have sent countless e-mails to book-related organizations, including libraries, who have chosen to link to our site because of its high-quality content. It would be unfair to these organizations to redirect them away from our quality book reviews into Entrepreneur Media, Inc.'s website which promotes only its own products, and, of course, gives them rave reviews. On the Internet, "Entrepreneur Books," is associated with high-quality book reviews.
Two years before EntrepreneurBooks.com began, Entrepreneur Media, Inc. created a site, Entrepreneur Magazine's SmallBizBooks.com. Entrepreneur Media, Inc. could clearly have purchased the domain EntrepreneurBooks.com from Network Solutions long before we began our book review site, had it considered the domain desirable. Considerable effort has gone into building EntrepreneurBooks.com to establish a unique, quality identity throughout the Internet to which Entrepreneur Media, Inc. is not entitled.
While we feel justified in keeping the domain EntrepreneurBooks.com because it, we believe, in no way, compromises the value of Entrepreneur Media, Inc.'s trademarks, we acknowledge that the courts must be the ultimate arbiter in deciding whether or not the domain EntrepreneurBooks.com is confusingly similar to the domains and identity trademarked by Entrepreneur Media, Inc. Similarly, the courts must be the final arbiter of whether or not Entrepreneur Media, Inc. has overreached in its attempt to "protect" its trademark rights, while at the same time failing to do so, and instead has tried to monopolize the entrepreneurial market with predatory business actions designed to eliminate smaller competitors.
Personally, as a supporter of the interests of small business owners, I find it reprehensible that Entrepreneur Media, Inc., while claiming to help entrepreneurs and small business owners, would seek to damage small business owners and enrich itself through what seems to be unjustified extortion by legal attacks. In my opinion, such behavior clearly shows the disregard that Entrepreneur Media, Inc. holds for entrepreneurs. As a personal protest, I have deleted all links on my Small Business Site, Thinking Like An Entrepreneur, to any websites owned by Entrepreneur Media, Inc. And, you won't find me subscribing to Entrepreneur Magazine anytime soon.
Peter Hupalo, CEO Hupalo, Ltd., entrepreneur, and author of Thinking Like An Entrepreneur