Google Trademark Bullies Obviously Non-Commercial Parody Site

from the no-need-to-do-this dept

Tue, May 20th 2014 1:06pm — Mike Masnick

We've been disappointed in the past to see Google descend into the land of trademark bullies, and had hoped that the company had learned its lesson. Unfortunately, it appears that the company still will dip into trademark bullying when it really should know better. The latest came in response to some pranksters setting up a (quite amusing) parody site called Google-Nest.org, playing on the fact that Google recently purchased Nest, the makers of internet connected thermostats and smoke detectors. The site was clearly mocking Google's expansion into... well... everything, with fake product announcements for things like Google Trust, Google Hug and Google Bee (your personal drone). The whole thing was clearly parody, and while it was clearly making a statement about how integrated Google has become into many people's lives, you would have hoped that Google's trademark lawyers would have a sense of humor and let it go.

They did not.

If you go to the link above, you now see a message from Peng! Collective, who put the site together for the Republica event in Berlin, saying that they didn't want to get involved in a big legal battle. Of course, the internet never forgets, and there are plenty of archives of the original.

The whole thing is incredibly questionable on Google's part. Not only is the work clearly parody, but it's non-commercial. And trademark only applies to commercial uses.

The EFF has stepped in and sent a letter to Google on behalf of Peng! Collective questioning why Google decided to be a trademark bully over this, and reminding Google (and us) of the neat practice that Linden Lab pioneered years ago -- a proceed-and-permit letter instead of a cease-desist-letter on trademark issues.

The site is a pure political commentary. Indeed, its launch has long since been recognized as such by a variety of news organizations. U.S. authorities consistently support the basic notion that trademark law does not reach, much less prohibit, this kind of speech regarding a matter of substantial public concern. Simply put, "The Lanham Act regulates only economic, not ideological or political, competition . . . Competition in the marketplace of ideas is precisely what the First Amendment is designed to protect." ...

First, use of the Google name and logo on the site is fully protected by the nominative fair use doctrine.... Indeed, courts have noted that nominative fair uses are particularly likely to be found in parodies....

Second, given the content of the site, and the ample publicity the spoof has generated, all of which recognized as satirical and parodical commentary, it is difficult to imagine that any Internet user would be confused.

Third, the site is sheltered by the First Amendment.... Again, there is nothing on the site that would lead consumers to purchase goods or services based on a mistaken affiliation.

Finally, my client's action is entirely noncommercial and, therefore, statutorily exempt from the Lanham Act.

There's even more in the letter, including the fact that since this all happened in Germany anyway, the Lanham Act (which governs trademark law in the US) doesn't even apply.

Either way it's disappointing to see Google go down this path. Yes, as trademark lawyers love to point out, unlike with other forms of intellectual property, there is more of a requirement that you actively protect your marks under trademark law, but (contrary to what some believe) this does not mean that you have to go after everyone using your mark, especially when it's clearly not infringing for all of the uses listed above.

As in nearly every case of trademark bullying, the end result just makes the bully look silly and legalistic, where they could have come out much more reasonable and accommodating. Hopefully, this time, Google learns its lesson on these kinds of things. Sure, the Google-Nest site was mocking Google, but big companies need to learn to not just have a sense of humor about these things, but to recognize that this is part of the public discussion and debate about their role in the world. Google could have jumped into that discussion or avoided it all together. But, it chose one of the worst options: to go with a threat.

Google Nest Org Correspondence From C McSherry (PDF)Google Nest Org Correspondence From C McSherry (Text)

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Filed Under: cease and desist, germany, google nest, peng! collective, proceed and permit, trademark, trademark bullying
Companies: eff, google

32 Comments

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Michael, 20 May 2014 @ 1:17pm

Here you go - another Google is great and can do no wrong article. Don't you get tired of being the Google fanboy?
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typical troll on techdirt, 20 May 2014 @ 1:22pm

for once Google actually did something right and I must defend them here. Normally they do everything wrong by being pro consumer and forcing their competitors to actually compete. I hate Google and there must be some anti-trust law they are violating for all of the good things they do for consumers. But now they are finally doing the right thing.

Mike, why are you against Google illegitimately enforcing their trademark? Next thing you know you will be supporting murder.
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OldMugwump (profile), 20 May 2014 @ 1:39pm

The site is down now (replaced with a commentary about the trademark stuff).

As long as the site made it reasonably clear that it was a parody and not a real Google site, I think it should have been fine.

If that wasn't clear, then I sympathize with Google. But the solution is to ask for them to make that clear - not to take it down.
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Anonymous Coward, 20 May 2014 @ 1:44pm

Whoops...
And trademark only applies to commercial uses.

This is not entirely true. A trademark can be used to protect against someone from using a trademark to misrepresent something or someone in bad faith, basically someone using it to intentionally confuse. They do not have to be receiving any income for this. Otherwise individuals/companies could cause some nasty havoc for competitors.
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Anonymous Coward, 20 May 2014 @ 1:52pm

Re: Whoops...
Maybe that should fall under identity theft or something.
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Anonymous Coward, 20 May 2014 @ 2:11pm

Re:
This may cost him his job as a Google spokesman.

More likely, his paymasters approved the article knowing it supports the illusion that he is not the groveling Google shill that he is.
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Anonymous Coward, 20 May 2014 @ 2:25pm

Maybe instead of launching legal assaults, they should've been taking notes. I'd love to have a personal drone. (Really, what nerd wouldn't want >sudo make me a sandwich to actually work?)
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martyburns (profile), 20 May 2014 @ 2:25pm

Re: Re:
Damned if you do, damned if you don't..

Figures.
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Anonymous Coward, 20 May 2014 @ 2:35pm

Re: Re:
No, more likely he is being consistent in that he criticizes based on the action being taken and not based on who's dong the action. Like criticizing those who sue or threaten everyone for infringement and abusing the IP system. If Google initiated a bogus, non-retaliatory, patent lawsuit then Mike would criticize them for that just like he criticizes everyone else who does the same.

Your problem is that you don't like the criteria he uses to criticize others with. Not that he's being inconsistent in who gets away with criticism and who doesn't.

IOW he doesn't criticize Google for being a pirate supporter or something (even though they aren't) and that's what makes you mad.

In which case I would respond that you can start your own blog and get lost because

A: No one asked you to be here or needs you here

B: You're not contributing anything useful

It's not my fault that no one would care to visit your stupid blog and so you have to come here and bombard this blog with your stupid nonsense.
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John Fenderson (profile), 20 May 2014 @ 2:38pm

Re:
Bad, fake troll, bad!

We all know that it's literally impossible for Google to do anything that the trolls agree with. They'll change their stated principles as necessary to ensure this remains true.
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rapnel, 20 May 2014 @ 2:44pm

Re: Re: Whoops...
I see what you did there.
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Anonymous Coward, 20 May 2014 @ 2:52pm

Re: Re:
Let me give you the opportunity to back up what you have to say. What is it that Google is doing that's so bad that Mike doesn't comment on. If your complaint is that Google is a piracy supporter my response is

A: No they're not

B: Even if they were that's not the type of thing Mike would complain about. Does Mike typically complain about the piracy (support) of anyone else? Do you have examples?

It has nothing to do with Mike being a shill for Google and everything to do with the criteria he uses to criticize others with.

So you have one of two choices

A: Start your own blog explaining what is it that Google does that's so evil that Mike neglects to report

B: The comments here are open so present your case here. What does Google do that's so evil that Mike doesn't complain about that makes Mike a shill?

but for you to just come here, without making any case whatsoever, and claim that Mike is being paid by Google to go easy on them and that his posts are biased in their favor based on nothing isn't going to get you taken very seriously. Make your case. Show me an inconsistency based on the criteria that Mike normally uses to complain about others, such as the MPAA, and the criteria that he uses to complain about Google.
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RonKaminsky (profile), 20 May 2014 @ 2:52pm

Re:
Ah, you don't understand. Actually, the only reason they went for a "takedown" was because this was a leak site, not a parody. Yes, Google has actual plans for all of these products, don't you worry!
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rapnel, 20 May 2014 @ 2:52pm

Re:
Any respectable geek would have named their first child Sudo on boot.
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Anonymous Coward, 20 May 2014 @ 3:05pm

Re: Re:
Mike defending Google makes him a shill and Mike disapproving of Google's actions is also proof Mike is a shill

I FEEL LIKE I'M TAKING CRAZY PILLS
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Anonymous Coward, 20 May 2014 @ 3:05pm

Google, you are getting worse than pathetic! you seem to have turned into the very opposite of what you once were. you have the clout to resist, but you cave. you have the ability to laugh, but you threaten. not good!
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Billy Gates, 20 May 2014 @ 3:54pm

Scroogled Again
I am not sure, given this response by Google, how the Big W in Redmond got away with the Scroogled campaign. But the Google Hug? That deserves its own T-Shirt, alongside the Prenda (above the) Law shirt.
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Anonymous Coward, 20 May 2014 @ 4:20pm

Re: Re:
Nah.

Sinister voice on phone:
"Masnick, the comments on the German thing yesterday were disastrous.
You know what you have to do today."

Masnick:
"Right away, Mr. Schmidt"
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Anonymous Coward, 20 May 2014 @ 4:26pm

Re: Re:
Because, of course, the government has taught us that doing anything obvious is clearly an attempt to hide the opposite behavior.
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Anonymous Coward, 20 May 2014 @ 5:10pm

Re: Re:
You're hilarious.
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Whatever, 21 May 2014 @ 3:40am

misrepresentation
I think that it would generally qualify as a parody, until you scroll down the page and read this:

In 2014 we purchased Nest Labs, an innovative little company reinventing unloved but important devices in the home such as thermostats and smoke alarms. We saw the potential of the brand to go further and to incorporate a range of new products for living life on the web with ease and comfort. The intention behind Google Nest is to restore confidence in the opportunities the internet offers. The products themselves are the result of an intensive period of studying user behavior in response to increased debate around privacy and government surveillance. They are designed to address the concerns our users have, about their data, with practical solutions. More products are currently under research.

I think at this point, they are creating confusion and representing themselves a little too directly as Google. Not cool.
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Mike Masnick (profile), 21 May 2014 @ 5:23am

Re: misrepresentation
I think at this point, they are creating confusion and representing themselves a little too directly as Google. Not cool.

Except that every single publication that discussed the page, highlighted how it was parody. If every single reporter could figure it out, and pretty much every other person could... the fact that *you* were unable to... doesn't really mean much.

Besides, any parody may fool a few gullible folks for a brief period of time. That doesn't change the trademark question.
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Jeremy Lyman (profile), 21 May 2014 @ 5:45am

Re: misrepresentation
I don't think there's anything there that says "parody" to me. If I didn't know the source wasn't Google nothing on that page would make me question the statement's validity. The look and feel are all googlish, and there's even a button at the top that takes me to my actual Google account.

But most of all, the usual "over the top" hyperbole that lets us know something isn't real and indicates parody, isn't there. Those all seem like maybe plausible things. Part of that is the fact that Google does announce crazy sounding things. Self-driving cars, personal heads-up displays, high-altitude balloon based internet service...

And that's just the stuff that still sounds crazy. Maybe that's the point of the parody, but it would still take a pretty savvy reader to know that the page wasn't endorsed by Google.
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Harold K, 21 May 2014 @ 7:45am

Google-Nest
I am the Google God! I am worth millions of dollars! I will dominate the world! And, you will not get in my way! Squash!
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John Fenderson (profile), 21 May 2014 @ 8:18am

Re: Re: misrepresentation
"If I didn't know the source wasn't Google nothing on that page would make me question the statement's validity."

Seriously? That paragraph absolutely screams "parody".
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nasch (profile), 21 May 2014 @ 11:05am

Re: Re: Re:
Your problem is that you don't like the criteria he uses to criticize others with.

And your problem seems to be a broken sarcasm detector.
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Jeremy Lyman (profile), 21 May 2014 @ 11:24am

Re: Re: Re: misrepresentation
I read through it again, really trying to put aside my Google bias.

I guess my reservations relate to the fact that "Google Nest" is the name of a real product. True this page isn't tricking people into buying a different product, but they are trying to talk people out of the real one.

Mike noted above that every reporter who wrote about it figured it out, but what happened to his "moron in a hurry" test? Just because professional technology fact checkers weren't fooled doesn't convince me that normal people are immune too, especially now that it's not 'hot news.' Haven't you ever gotten an email forward about some long debunked claim from someone who thought it was real? All the top search results now are about the real Nest, not the parody. What if someone wasn't reading tech blogs two weeks ago? If this website sours their view of Nest, are they likely to go searching for details about it?

It seems to me that these folks baited Google into action against them, and Google shouldn't have taken it. But I can see the argument for removing false information that looks authoritative.
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John Fenderson (profile), 21 May 2014 @ 12:47pm

Re: Re: Re: Re: misrepresentation
"what happened to his "moron in a hurry" test?"

That's not Mike's test. That's an actual standard used by judges (the first use of the term was from the UK, by Justice Foster in the 1978 case Morning Star Cooperative Society v Express Newspapers Limited). The true intention of it surrounds consumer confusion in the moment: if two products are on the shelf and one of them copies the other's trademark so closely that a moron in a hurry might mistakenly buy it instead of what he really wanted, there's trademark infringement.

In my opinion, that standard should not apply to parody at all, and particularly when nobody's hurriedly grabbing products as they pass by.
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Sheogorath (profile), 23 May 2014 @ 12:02am

I hate to defend Google, but...
The Peng! Collective site wasn't such an obvious parody. Yes, they 'offered' products that even the real Google wouldn't offer, but they did it in a way that looked genuine, and the 100% official looking Google links at the bottom of the home page along with the lack of any disclaimer meant that Google had to sue or lose its trademarks. In this case, unfortunately, Google Inc. were in the right, tw#ts that they are otherwise.
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Anonymous Coward, 23 May 2014 @ 2:19am

Re: Re: Re: Re: Re: misrepresentation
Anyone who parodies a large corporation should know said corporation may not like it and should have a multitude of lawyers on retainer ready to defend themselves.
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Pragmatic, 23 May 2014 @ 6:34am

Re: Re:
Trolls have principles? 0.0
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Khaim (profile), 26 May 2014 @ 12:01pm

Re: Re: misrepresentation
If every single reporter could figure it out, and pretty much every other person could

I don't think that's how it works. Reporters should put more effort into investigating a site than your average reader, otherwise they might end up publishing an article about Google's new products (which are actually parodies). That all these reporters figured it out in no way proves that a reasonable person - who is otherwise uninformed on the topic - would instantly be able to determine it was a parody.
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