What's the point without a trademark

[morelia]

Recently got an order from Soundcloud to give up my account as stop using anything related to "morelia". I've been using this name since I joined kvr in 2002. I am taking this as a sign that unless I can afford to trademark a name it really doesn't matter what I choose. Anyone have any experience in this sort of thing?

[BertKoor]

Get good legal advice!

I think one cannot trademark existing geographical names. So this request you got from soundcloud sounds just plain silly. You picked the account name first, so there are no grounds to let it go.

Say you had registered it as a domain name.... you'd be selling it, or not?

[morelia]

Exactly. Morelia is in Mexico right? I haven't registered any domain though. I have that name as my account across almost every well know hosting site there is. Even a release on iTunes, and all the other pay the artist SFA services. I had no choice in letting the Soundcloud site go. They closed it and banned me. Only when I asked them why did they enable my reuse of my account under a different url.

[Jace-BeOS]

What other artist uses that name? Did they send a cease and desist order to SoundCloud?

[morelia]

What other artist uses that name? Did they send a cease and desist order to SoundCloud?

Yep, that's what happened. Soundcloud contacted me and stated they had verified proof of Trademark and ordered me to close my account and stop using the name morelia.

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a SoundCloud user has reported trademark infringement regarding your URL "morelia" and Display Name "morelia". They have provided verified proof of trademark ownership. Accordingly, we are writing to request that you please change your URL and Display Name so that they do not include any version of "morelia".
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Check him out for yourself. Well worth the trademark investment.
https://soundcloud.com(forwardslash)morelia

Sorry about the url. I just don't want to post the music here as it would look like it is mine.

[Gamma-UT]

This is Soundcloud stepping outside its remit once again. The company is not there to enforce trademarks, it's there to serve up audio to internet users. But they've taken the easy way out rather than challenge this kind of abuse of trademark law. What they should have done is pass on the complaint which, as you're in Australia, you can respond in the manner of Arkell vs Pressdram.

Second, the US recognises common-law trademarks - that is, if someone has been using a name to trade for years, you can't simply gazump them by filing for the name as a trademark. You do need to have been "doing business" so serving up free music might not qualify. However, it's clear when picking the name, Tanner Munn didn't do much in the way of due diligence and he only registered the trademark in February this year.

Third, a US trademark has no power outside the US. Soundcloud is supposedly an international site. Numerous acts have operated under the same name, occasionally adopting "The Charlatans UK" or whatever when there's a naming conflict. This is an option that should be available to you as you have prior use over the name for which Soundcloud has records. So, Soundcloud really has no place telling you that you can't use Morelia anywhere.

But, it's expensive fighting this and the value of a Soundcloud account is going down all the time. The number of plays he's got indicates his career trajectory isn't exactly soaring. If he's bought a trademark, I wouldn't be surprised if he's bought a bunch of listens on Fiverr in any case. This is annoying but probably not a long-term problem and maybe it's worth giving Soundcloud the heave-ho in any case.

Was it a free account or paid for? (Just wondering if Soundcloud is more likely to fold if it's not receiving cash for the account).

[morelia]

This is Soundcloud stepping outside its remit once again. The company is not there to enforce trademarks, it's there to serve up audio to internet users. But they've taken the easy way out rather than challenge this kind of abuse of trademark law. What they should have done is pass on the complaint which, as you're in Australia, you can respond in the manner of Arkell vs Pressdram.

Second, the US recognises common-law trademarks - that is, if someone has been using a name to trade for years, you can't simply gazump them by filing for the name as a trademark. You do need to have been "doing business" so serving up free music might not qualify. However, it's clear when picking the name, Tanner Munn didn't do much in the way of due diligence and he only registered the trademark in February this year.

Third, a US trademark has no power outside the US. Soundcloud is supposedly an international site. Numerous acts have operated under the same name, occasionally adopting "The Charlatans UK" or whatever when there's a naming conflict. This is an option that should be available to you as you have prior use over the name for which Soundcloud has records. So, Soundcloud really has no place telling you that you can't use Morelia anywhere.

But, it's expensive fighting this and the value of a Soundcloud account is going down all the time. The number of plays he's got indicates his career trajectory isn't exactly soaring. If he's bought a trademark, I wouldn't be surprised if he's bought a bunch of listens on Fiverr in any case. This is annoying but probably not a long-term problem and maybe it's worth giving Soundcloud the heave-ho in any case.

Was it a free account or paid for? (Just wondering if Soundcloud is more likely to fold if it's not receiving cash for the account).

Thanks for the reply. It was a free account. Do you think it would be worth contacting Soundcloud and stating some of the information you have supplied?

[Gamma-UT]

Thanks for the reply. It was a free account. Do you think it would be worth contacting Soundcloud and stating some of the information you have supplied?

It might be. My guess is that this isn't the first time they've done this but it might be worth seeing what they think their reasons are for doing this. The fact that you can't use Morelia in any way for an account name makes me think they have really cheap lawyers or just go for the absolute minimum legal hassle, which doesn't bode well for a company operating in the music business. Not fighting any of this just makes them a lawyer's punchbag IMO.

One other thought is that by pushing this they've kinda blown away any safe harbour protections they might have as a social media site. IANAL and I'm not clear those would apply to trademarks but it's possible. EDIT: Safe harbour applies to copyright not to trademarks, apparently.

[morelia]

Thanks again. I particularly like the way the Arkell vs Pressdram situation was handled.