aNewDomain — Back in 2012, Avid Life Media, parent of AshleyMadison.com and some four dozen other dating, sex cam and adult listings sites in the U.S. and around the world, sued Digisec AS. In the complaint, Avid alleged its Norway-based competitor was violating its trademarks by using an image that looked exactly like Ashley Madison’s signature woman with a finger over her lips.
In a 2013 response (readable in full below), Digisec crisply pointed out that the photo was stock.
Both Avid and Digisec got the image from the same place, Digisec lawyers pointed out in their response to the U.S. federal complaint. The so-called “shush” image Avid was claiming trademark rights on, they said, came from Getty Images’ iStockPhoto library.
How could Avid claim a trademark on an image available to anyone via iStockPhoto.com? That’s what Digisec wanted to know, as you can read in the Digisec response at the bottom of this piece.
Scroll below the fold for Avid’s admission that the photo was stock and its explanation of this — and to read many of the relevant legal docs as filed in U.S. Federal Court in 2012, 2013 and early 2014 regarding stock photos, trademarks and other issues.
Here is the photo comparison between Avid’s “shush” image and the one at iStockPhoto, which Digisec said it’d also downloaded and was using on its competing site, according to its response.
In the leaked emails released in the AshleyMadison.com breach, Avid execs discuss the issue with their attorney, acknowledging that while, yes, the image is stock art, the trade dress is around Avid’s use of it in a marital dating website.
Digisec’s VictoriaMilan.com, Avid asserted, violated the trade dress not because it used the same stock image, but because it is also an extramarital dating site and carries the same basic message as Ashley Madison. The whole package, not just the stock art, was Avid’s trade dress, according to Seth Gold, Avid’s external counsel at K&L Gates, in Seattle.
Instead of Avid’s “Life is short, Have an affair,” Digisec’s VictoriaMilan.com and its adultery-dating affiliates use the slogan: “Relive the Passion — Find your Affair.”
In addition to complaining that Avid couldn’t possibly complain of trade dress infringement on a piece of widely available stock art both firms had uploaded, Digisec came back with some additional allegations.
As you can see in its response below, Digisec also claimed that Avid had created some URLs suspiciously similar to VictoriaMilan’s, including URLs showing it had registered the name with United States (.US) and Canada (.CA) extensions. It claimed that Avid also had saved a version of the name with the letters R and N standing in for the M — i.e., VictoriaRNilan.com, the firm complained. That version was pointing all of them to AshleyMadison.com and other sites in the Avid arsenal, Digisec alleged.
When all in lower case, that looks exactly like Victoria Milan. Victoriamilan.com, it correctly points out, is nearly indistinguishable from Victoriarnilan (with an R and an N instead of an M) on screen.
As we’ve reported here previously, using an R and an N to sub in for an M to create a totally different site but one that looks exactly like another is a tactic Avid has used with success in the past. A case in point is AshleyRNadison.com (shown at right), an adult classified listings site that gets, on average, twice the hits that the AshleyMadison.com so-called adultery dating site gets, a comparison shows. AshleyRNadison.com remains up at this writing.
AshleyRNadison functions as a landing site for several of Avid’s harder core porn sites in the U.S. and around the world, according to the leaked email cache released after the July 2015 Ashley Madison hack.
As for the stock image scuffle, both companies reached a settlement in February, 2014 — a draft of the settlement terms is found in the leaked emails allegedly sent to and from Avid CEO Noel Biderman, which now are widely available on the Internet.
In the settlement, Digisec agreed to stop using language similar to Avid’s message and stop it with the shush stock art, which Avid started using first. And Avid execs agreed to turn over the victoriaRNilan domain as well as VictoriaMilan.ca and other sites it was using to direct the competitor’s would-be customers to AshleyMadison.com and other sites it owned.
As for Avid’s use of a stock image for its most famous Ashley Madison image, this was hardly a secret in the company, corporate emails leaked in the Ashley Madison hack show.
In one of many comments about stock photos, Avid VP of creative and design Brian Offenheim emailed execs to show how he had taken the image to make it look more Japanese as the company prepared its various Japanese Ashley Madison and Ashley Madison-related sites for release in Japan. In that country, Ashley Madison has a number of key entries, including HonorMen.com, Wasabi and others.
Eventually, Avid had its lead legal guy, Avi Weisman, track down the producer of the stock “shush” image, as execs call it internally, and purchase it from that Ukranian-based photographer, emails show.
But right up to July 2015, which is when the leaked email cache stops, Avid art director Offenheim talks freely of using stock art photos for various images attached to womens’ profiles and other marketing materials. See the document listing a number of stock images he hoped to employ for various Avid properties below, as well as a leaked email showing how he made the piece of art more Asian for the Japanese market.
Here’s the Digisec response to the Avid complaint, readable in full, that alleges and demonstrates that the signature Ashley Madison image came from stock. Read it in place below or click here.
Here’s a version of the settlement agreement eventually signed in February 2014 by Digisec and Avid execs, in which the parties agreed to stop using each other’s messaging — and in which Avid finally agreed to hand over its Victoria Milan-like URLs.
Here’s a company document produced in discovery for the case that shows the relationship between Avid Life Media and various others of its shell firms mentioned in the suit, like Praecellens, Ltd., in Cyprus, which handles the money side of Avid’s sprawling international “dating” site business, direct marketing program, content business, data aggregation activities and more.
And here’s the document from Avid’s VP of design Offenheim, listing some of the stock art he was planning to use on Avid’s various dating, sex and adult-listing sites around the Internet.