Soundcloud Tells Guy It Needs To Kill His Account Of 8 Years Because Someone Else Trademarked His Name

from the trademark-law-gone-mad dept

Wed, Mar 1st 2017 11:48am — Mike Masnick

I've known Bas Grasmayer for many years, and he's a super insightful digital/music strategist and has written a bunch of posts for us over the years. He tends to be on the cutting edge of any digital music startup -- so it's little surprise that he first got a Soundcloud account way back in 2008 or 2009, soon after Soundcloud started. His account is at soundcloud.com/bas/ because, well, that's his name. So it was a bit of a shock for Bas to get this notice from Soundcloud yesterday:

If you can't read that, it says:

Hi there,

We are writing to inform you that a SoundCloud user has reported trademark infringement regarding your URL "https://soundcloud.com/bas" and Display Name "Bas". 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 "BAS".

If your URL and Display Name are not changed within the next 48 hours, we may have to suspend your account, on the grounds of trademark infringement. Please make these changes within the next two days, to avoid any consequences in this situation.

Thank you very much for cooperation and please let us know if you have any questions about this.

Kind regard,

SoundCloud Trust & Safety Team

Did you get that? Bas Grasmayer is not allowed to use any version of his own damned name in a URL or Display Name. Of course, if you're in SoundCloud's shoes, you're in a tough spot. They don't want to get sued, and the intermediary liability protections around trademark are even weaker than they are for copyrights.

After writing back to SoundCloud with a "hey, but that's my name..." message, the company has told Bas if he can prove that's his name then maybe, just maybe, the company can push back on his behalf:

The key portion in that one reads:

"...their [sic] is an exception within the Trademark Directive that may apply in your case. This exception states that trademark owners can't prevent an individual from using their own name in the course of trade. If we receive documentation proving that your name is "Bas", we will be able to push back and reject the trademark infringement claim.

That's better than nothing, but still seems silly that Bas needs to go about proving his name is Bas just to keep his account or to use his name anywhere on his own account.

The problem here isn't so much SoundCloud, which is in a tough spot due to ridiculous laws, but with the nature of trademark law itself and how it's been expanded and twisted over the years. Again, the original intent of trademarks was for consumer protection -- to distinguish one company's products from another's. It's not like people are going to go to Bas' SoundCloud page and freak out that it's not the trademarked' "BAS'" page.

Of course, over the years there have been other disputes involving trademarks and people's names. Most famously there was the years-long legal fight over Nissan.com (which we wrote about back in 2001) between the car company Nissan and a dude named Uzi Nissan who ran a computer repair business under his own name. Either way, Bas has responded with evidence that his name really is Bas, and also questioned that anyone might confuse him with a musician who trademarked Bas.

It's fairly ridiculous that these kinds of disputes keep happening, but it's the result of over aggressive trademark laws in a world where our basic namespace has put little emphasis on the need to be unique. While you can quibble over whether or not everyone should have unique names, we shouldn't be stripping or shutting down long term internet accounts just because someone jumps in years later with a trademark claim.

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Filed Under: bas, bas grasmayer, confusion, eu, likelihood of confusion, trademark
Companies: soundcloud

48 Comments

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shakinghead, 1 Mar 2017 @ 12:11pm

First come first serve
Ye who uses the name first wins.

Then again, this is why accounts should require additional letters numbers of something appending the account name.

bas0123 would not be bas0xyz

Then again, trademarking 3 letters shouldn't be legal to begin with as there are only 26 letters in the English alphabet.

e.g. Alphabet (Google parent company) shouldn't have been able to claim well something that's been used for hundreds of years...
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Anonymous Coward, 1 Mar 2017 @ 12:13pm

I had the trademark first!

-Barium Sulfide
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Ninja (profile), 1 Mar 2017 @ 12:30pm

I wonder when the trademark was granted. If the human behind the checking process had bothered to review how old the account is and when the trademark was filled then maybe this mail exchange would have never happened.

In another news from 2050 people use online addresses that look like cats walking on a keyboard because everything else has been trademarked.
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Anonymous Coward, 1 Mar 2017 @ 12:31pm

While you can quibble over whether or not everyone should have unique names

Can you really? What is this magical argument? The "average" length of a name is about 6 letters in Western culture. Assuming that all possible combinations of letters qualify as a name (e.g. zzzzzz), then all names that have 6 or fewer letters consist of about 321 million names, or about 1/22 the current human population.

In fact, to give everyone currently alive a unique name would require using almost all combinations of letters of lengths 1-7. If we then drop already existing words, and anything unpronounceable...

And then there's the massive logistics issues of trying to verify that any given name is actually unique. And how do you deal with dead people?

In summary, I don't think you have an argument.
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R.H. (profile), 1 Mar 2017 @ 12:34pm

Re: First come first serve
The Alphabet holding company doesn't hold a trademark on Alphabet since there are many other companies with similar names. BMW even owns the alphabet.com URL (it's the name of their fleet vehicle servicing arm). No one actually owns that trademark.
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Roger Strong (profile), 1 Mar 2017 @ 12:35pm

Re: First come first serve

Then again, trademarking 3 letters shouldn't be legal to begin with

Or two. Virtual Works registered vw.net back in 1996. Volkswagen won it in court a few years later.
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Anonymous Coward, 1 Mar 2017 @ 12:37pm

Re: First come first serve
Real words alone should not be trademarks by themselves, but rather a word in association with some distinguishing graphics element, like the golden arches of McDonald's.
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Anonymous Coward, 1 Mar 2017 @ 12:48pm

Lucky guy. My name is Kevin Bacon, and i'm not related to the actor. I've had to jump through a few hoops to register on some sites...
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Roger Strong (profile), 1 Mar 2017 @ 1:11pm

Re:
Back in 1996 a Quebec election candidate made voter fraud allegations, pointing out that it was highly unlikely that "Omar Sharif and his wife Martina Navratilova" were living and voting in Montreal.

Reporters had a look. Omar Sharif (the son of the actor) was indeed married to Martina Navratilova (a stock broker; no relation to the tennis star) in Montreal.
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Jordan Chandler, 1 Mar 2017 @ 1:22pm

Funny
I had to look that up, actually his Grandson's name is Omar Shariff :)

"
In later life, Sharif lived mostly in Cairo with his family. In addition to his son, he had two grandsons, Omar (born 1983 in Montreal) and Karim.The younger Omar Sharif is also an actor."
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Roger Strong (profile), 1 Mar 2017 @ 1:25pm

Re:
The email exchange would have happened regardless.

The trademark system has it bas ackwards, and not by accident. They make money on granting the trademark, and their friends make money litigating it. There's no incentive to avoid conflicts like this one.
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Rajani Isa, 1 Mar 2017 @ 2:00pm

Re: Re: First come first serve
Actually you can trademark basic words like "Alphabet".

The caveat is that generally the more generic a word is, the more specific you have to be.

For example "Apple" - Apple Computers was sued by the Beatles' Apple Corp Music. The issues there got into serious territory every time Apple Computers ended up messing with music.

Thor is even trademarked - in the arena of heroes/superheroes (Heck, "Superhero" is a joint trademark by DC and Marvel. "Captain Marvel" has an interesting history as well.)
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Anonymous Coward, 1 Mar 2017 @ 2:07pm

Reminds me of Microsoft...
Anyone else remember Mike Rowe and his battle with Microsoft over registering mikerowesoft.com?

I have to admit though, when I saw Bas' name, I immediately thought of BASF. Even though they're a chemical company, they'd definitely have some trade confusion in the audio market.
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I.T. Guy, 1 Mar 2017 @ 2:16pm

Re:
You will all receive a number.
You!! You are number 6.
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Bas, 1 Mar 2017 @ 2:17pm

When was the trademark granted? might the soundcloud use count as prior art?
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Bas Grasmayer (profile), 1 Mar 2017 @ 2:19pm

Re: Re:
Exactly. I've tried to establish a timeframe, but that's only something that I could use to get the trademark declared void in court... Which I would probably have to do in the US and don't really want to spend money / energy on.

Until then, Soundcloud's incentive is to make legal risk assessments based upon a system that really needs to be changed.
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JoeCool (profile), 1 Mar 2017 @ 2:22pm

Re: Re: First come first serve
This. A trademark should cover only the full graphic of an advertised and sold object, encompassing the the name, any images, and the product itself. New product? New trademark application. No more trademarking just a WORD or even a few LETTERS or a COLOR. The whole point behind trademark was to prevent customer confusion about an ACTUAL PRODUCT. So trademark should require ALL elements that make up an ACTUAL PRODUCT.
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Roger Strong (profile), 1 Mar 2017 @ 2:30pm

Re: Re: Re: First come first serve

The issues there got into serious territory every time Apple Computers ended up messing with music.

And to be clear, it started in 1978 long before iTunes. Later there was litigation over MIDI. Then the IIGS's sound chip, ending further development of the Apple II line. And then over a system sound in the Macintosh called Chimes, later renamed to sosumi.
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Anonymous Coward, 1 Mar 2017 @ 2:33pm

Re: Re: Re: First come first serve
A trade mark can identify a company, and be used on all its products, and is not needed for individual products. I would consider limiting individual product trademarks held by one company, as that is all too often used by the content industry to increase their "rights".
!.e.
Even if Mickey Mouse reaches the public domain, nobody will be able to use the name because of Disney's trademark on the name.
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Anonymous Coward, 1 Mar 2017 @ 3:06pm

Their platform, their rules.

Move along, serf.
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Leigh Beadon (profile), 1 Mar 2017 @ 3:11pm

Re: Re: Re: First come first serve
Or, go the opposite way: allow companies to register pretty much whatever they want as potentially identifying marks, but require them to demonstrate actual and substantial customer confusion, with evidence, in order to make any kind of claim against someone else using the same or a similar mark.
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JoeCool (profile), 1 Mar 2017 @ 3:11pm

Re: Re: Re: Re: First come first serve
That's how it's used now. It SHOULD be on individual products ONLY since that's what it's for - reducing confusion on PRODUCTS. One trademark per product and only on products would virtually eliminate trademark abuse, but still allow fighting counterfeit products.
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Thad, 1 Mar 2017 @ 3:21pm

Re: First come first serve

Then again, trademarking 3 letters shouldn't be legal to begin with as there are only 26 letters in the English alphabet.

26^3 = 17576, FYI. And there are lots of organizations with three-letter names that I recognize immediately by their acronyms: ITT, BMI, HBO, EFF, CDC, WWE (which had to change its name from WWF because another company owned that TLA...), etc.

e.g. Alphabet (Google parent company) shouldn't have been able to claim well something that's been used for hundreds of years...

Context is relevant.

I don't think Microsoft should have gotten a trademark on "Windows" because it's a generic term for a common user-interface element. On the other hand, generic words aren't so generic in specific contexts; if you want to tell a story about a spy, you probably don't want to call him "Bond"; if you're making a medical drama, you don't want to call it "House". But those terms are perfectly fine in other contexts; you can use "House" in the name of a TV show that's about home repair, or "Bond" in the name of your bail bonds company.
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Thad, 1 Mar 2017 @ 3:30pm

Re: Re: Re: Re: First come first serve
Well, kind of.

Conan's a good example. All Howard's original Conan stories are public domain (at least, in their original, magazine-published versions), but the "Conan" name is still under trademark. You can write your own Conan stories, and you can use his name in the text, but not in the title.

(Warning: Paradox might sue you anyway, even though you'd be legally in the right.)

Somebody else mentioned Captain Marvel; he's a good example too. DC publishes the original Captain Marvel, but original publisher Fawcett's trademark lapsed and Marvel (understandably) snatched it up. DC can still call the Fawcett character "Captain Marvel" (though these days I think they're calling him "Shazam"), but they can't use that name on the cover of the comic book.

Daredevil is another example; there was a superhero called Daredevil in the 1940's, and he's in the public domain now, but Marvel snatched up the expired trademark for their own character. Various other publishers have used the original Daredevil under other names; Dynamite, for example, calls him the Death-Defying 'Devil.
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Thad, 1 Mar 2017 @ 3:31pm

Re: Re:

The trademark system has it bas ackwards

I see what you did there.
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Thad, 1 Mar 2017 @ 4:06pm

Re:

might the soundcloud use count as prior art?

Given that prior art is patent law and we're talking about a trademark, no.
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Roger Strong (profile), 1 Mar 2017 @ 4:22pm

Re: Re: Re:
Back in 2002, Rolling Stones musician Bill Wyman sent a cease-and-desist nastygram to American journalist and music critic Bill Wyman demanding that he stop using his own name. The journalist was born with the name, while the musician adopted it in place of his real name two years later.

(Journalist) Bill Wyman was able to get the word out, and the story was quickly reported by news services around the world. Faced with bad publicity, (musician) Bill Wyman backed down.

I hope that you're able to get a definitive answer on who is sending the trademark threats in this case. Shining a spotlight on their actions is probably the best defense you have.
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Atkray (profile), 1 Mar 2017 @ 4:39pm

Re: Re: Re: Re: First come first serve
I know you are not from the US but you have been exposed to us enough to know that people here wake up confused.

Having to prove confusion in a court would be trivially easy.

See also: election coverage/results.
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Now-yer Talkin, 1 Mar 2017 @ 5:24pm

The war on words and language... A load of baloney
I received notice from the website Zazzle that they had taken down a photo I had posted ten years earlier - reason: (per their reply when I asked), I had said in my caption of the photo of pelicans flying over a beach, that I used a Leica 35mm camera to snap the photo.

Turns out that ten years after posting this a person (a woman's name was cited) working for Leica said I did not have permission to utter/post/say the name Leica without their permission, which of course I had not asked for, as it was an a priori fact, as I would have uttered in a court of law, if asked.

By that logic, I could not say I drove my Ford to New York, or had purchased a hot dog at Nathan's, etc., without having permission to use most of the nouns in my language.

I took down all my photos and cancelled my Zazzle account (in a huff). Also, I will never buy another Leica (they are too expensive anyhow).

What an insane world this has become. I think I take my ball (in this case my personal world-view) and go home.
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Leigh Beadon (profile), 1 Mar 2017 @ 5:25pm

Re: Re: Re: Re: Re: First come first serve
"When the moron in a hurry takes the Clapham omnibus" ;)
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Anonymous Coward, 1 Mar 2017 @ 5:34pm

Trademark three letter combinations and sell them to the highest bidder? Up yours, American dream my painful rectal itch.
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Anonymous Coward, 1 Mar 2017 @ 7:27pm

Soon enough copyright/trademark holders will be fighting for the right to block people from naming their kid something because it infringes their imaginary rights
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Anonymous Coward, 1 Mar 2017 @ 11:36pm

Re: Re: Re: Re: Re: First come first serve

It SHOULD be on individual products ONLY

Do you really want one trademark per product, like say beer, or do you want to know which brewery made the beer you are about to drink. A trademark is meant to identify the maker f a product, so that customers can be confident they know who made what they are buying.
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PaulT (profile), 2 Mar 2017 @ 12:50am

Re: Re: Re: First come first serve
"The caveat is that generally the more generic a word is, the more specific you have to be."

Is that true, though? My impression is that trademarks always have to be for a specific type of market, it's just that it's more likely for you to win a case if the mark is a common generic word (e.g. you might be more likely to get away with creating something in a non-tech market called "Apple" than you would "Nintendo" because the latter has no meaning other than an existing trademark).

"The issues there got into serious territory every time Apple Computers ended up messing with music."

Well, the full story there is that Jobs' company didn't win or lose the original case, they simply settled with a caveat not to enter into the music business. They were then sued again by The Beatles' company every time they did exactly that.

It is a little silly that such a basic word is allowed to be trademarked in the first place, but their real problem was making the settlement agreement in the first place rather than agreeing to something that they later kept violating. In principle, the trademark is working there as intended (preventing customer confusion, which was agreed wasn't a problem as long as the two companies didn't trade in each others' markets).
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PaulT (profile), 2 Mar 2017 @ 12:55am

Re:
"If the human behind the checking process had bothered to review how old the account is and when the trademark was filled then maybe this mail exchange would have never happened."

No, if the reason for doing this is indeed to avoid lawsuits then it would have happened anyway. The issue isn't whether the Soundcloud employee realised how silly it was, the issue is that they know they'll be sued over silly things. Better to potentially annoy a customer than have to fight idiocy in court. It will stay that way until the system changes.
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Cowardly Lion, 2 Mar 2017 @ 4:16am

Re: Re: Re:
Good luck, I hope Soundcloud do the right thing...
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The Wanderer (profile), 2 Mar 2017 @ 4:21am

Re: Re: First come first serve
To be fair, I think the original Windows trademark may have been on "Microsoft Windows", not just on "Windows".

But yes, like all other forms of intellectual property that I'm aware of, trademarks are out of control in the modern world - and they're the form for which I have the least idea of how to fix the problem.
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Basel, 2 Mar 2017 @ 4:33am

A never ending storey
Was the litigating Bas tarred and feathered?
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Wendy Cockcroft, 2 Mar 2017 @ 5:53am

Re: Re:
Bas Grasmayer: "I am not a number. I am a free man!"
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Wendy Cockcroft, 2 Mar 2017 @ 5:56am

Re: The war on words and language... A load of baloney
That is so outrageous...! How wimpy and pathetic of Zazzle to have allowed that Leica rep's order to pass. They should have put her firmly in her place. I'd have directed her to Techdirt.
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Geno0wl (profile), 2 Mar 2017 @ 7:02am

So what you are saying is
So what you are saying is if I want a legal "right" to Spiderman.com all I need to do it name my third child Spiderman?

....hey honey, I have this crazy I...no wait hear my out...Honey where are you going...please come back...
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JoeCool (profile), 2 Mar 2017 @ 9:40am

Re: Re: Re: Re: Re: Re: First come first serve
No, it's meant to identify the PRODUCT of a particular maker. And yes, it should be one per product. If the maker can't afford a measly trademark per product, the product is clearly a commodity that deserves no protection. Allowing multiple products per trademark encourages the current system of abuse.
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Anonymous Coward, 2 Mar 2017 @ 10:13am

Re: So what you are saying is

if I want a legal "right" to Spiderman.com all I need to do it name my third child Spiderman?

Technically, that would give lil' Spidey the right. As their guardian, that would only transfer to you until they sued for emancipation, which would undoubtedly be at the earliest opportunity.
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Thad, 2 Mar 2017 @ 12:45pm

Re: Re: Re: First come first serve

To be fair, I think the original Windows trademark may have been on "Microsoft Windows", not just on "Windows".

Didn't stop them from forcing Lindows to change its name.
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Thad, 2 Mar 2017 @ 12:48pm

Re: So what you are saying is

So what you are saying is if I want a legal "right" to Spiderman.com all I need to do it name my third child Spiderman?

No, because to have the legal right to a domain name, you have to register it.

(By the way, Marvel's trademark "Spider-Man" is hyphenated.)
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The Wanderer (profile), 2 Mar 2017 @ 8:13pm

Re: Re: Re: Re: First come first serve
Long ago though it was, Lindows was still well after the time I'm thinking of for "original"; I'm thinking as in the days of Windows 3.x or earlier. (Which is when I got my start with Windows, as it happens.) The Microsoft-v.-Lindows court case was apparently in 2001; it's entirely likely that even if the original trademark was for "Microsoft Windows", they may have extended things to also trademark the shorter term by that point.
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Anonymous Coward, 5 Mar 2017 @ 10:00am

I should copyright/patent/corporation-steal (all the same thing in the end these days) the words SoundCloud.....
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djhomedi, 20 Dec 2017 @ 1:23pm

question
Thx for ur story btw have a question to soundcloud producer,which websites u usually use for making music ?
I am thinking about using one edm sample pack from here
https://www.lucidsamples.com
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