Hey The North Face! When You Said Sending Us A Bogus Trademark Threat Was A Mistake, We Believed You; So Why Did You Do It Again?

from the i-feel-like-i'm-writing-to-you-too-much dept

Hey The North Face! Hi, how are you? We keep meeting like this and I really wish it would stop. As you may recall, last month, the "brand protection" company that you hired, Yellow Brand Protection, currently owned by Corsearch, sent us a completely bogus legal threat claiming that our news story from nine years earlier -- about someone you threatened for creating a parody image of a patch (not an actual patch and not for sale) saying "Hey Fuck Face" -- was somehow infringing.

I realize this can get confusing, so let me spell that out for you again more clearly. Nine years ago, someone Photoshopped a fake patch parodying The North Face logo, with one that said "Hey Fuck Face." They posted it to Flickr. You guys lost your shit and filed a bogus takedown notice on this obvious parody that was not being used in commerce in anyway. But, much worse, nine years later, you had your "brand protection" company send us -- a news organization -- an even more bogus takedown for our reporting on it.

That story got a bit of attention, and you had an executive reach out to me and admit that this "is obviously such a ridiculous mistake" and that you were "trying to figure out what happened." You also said you were "digging into it" and thought maybe someone had just "hit the wrong button." Your exec was very nice about it and apologized for the inconvenience and said that you'd use this as a learning experience to "course correct."

I appreciated that.

So... what I don't appreciate is that after all of that, Yellow Brand Protection/Corsearch apparently decided to escalate this matter a month after all of this went down. I assumed that after you realized how "ridiculous" this was and moved to "course correct" that at some point you informed Yellow Brand Protection to knock it off. Either you did not, or you don't yet realize just how much money you're wasting with them. Because on December 17th (again, a month after I thought this was all sorted out) Corsearch's "Vice President of Enforcement," Joseph Cherayath (who used to do internet enforcement for the City of London police, infamous for their completely confused and incorrect approach to intellectual property enforcement) upgraded the threat, sending a takedown demand not to us -- but to our CDN provider, Cloudflare.

This now gets slightly more serious, because Cloudflare passes it on to our hosting company, who then demands that we do something about this potential legal threat, so rather than before where we could just ignore it, we need to go and explain to our hosting company why they shouldn't kick us off or go talk to their lawyers on how to deal with this. And at the same time, we have to go reach out to Cloudflare to make sure they know that we're not -- as Joseph Cherayath falsely claimed in his letter to Cloudflare -- "infringing on my client's IP rights by misusing the 'The North Face' trademark to sell counterfeit products."

So, now you're not just wasting a little of my time, you're wasting a lot of it, along with two other companies, and putting me in a position where my site is at risk.

So... yeah, forgive me for asking why do you still employ Corsearch for anything? And next time you're looking to use this as a learning experience and to course correct, could you do it without risking my entire site being taken offline? Please?

Filed Under: brand protection, cdn, fuck face, joseph cherayath, trademark
Companies: cloudflare, corsearch, the north face, yellow brand protection

Hey North Face! Our Story About You Flipping Out Over 'Hey Fuck Face' Is Not Trademark Infringement

from the hey-fuck-face,-hire-better-brand-protection dept

Update: After this article was published The North Face reached out to me, admitting that it was "ridiculous" to send this threat letter, and that they were using the mistake to improve their processes to (hopefully) avoid this kind of thing happening again.

The "brand protection" industry is endlessly fascinating to me, in that it seems to be a near total scam that preys on gullible big company execs who believe that if anyone uses their brand or logos in a way they don't approve of, it'll mean the end of the world. That's not to say there aren't legitimate "brand protection" steps that large companies need to take, but so much of it is overblown fluff and nonsense, and all of the various "brand protection" companies out there feel the need to justify whatever bizarrely lucrative contracts these giant companies hand out. So they completely overreact to the smallest of things -- and the end result is not brand protection, so much as brand destruction for demonstrating just how over aggressive you are as a company.

The clothing company The North Face seems to have a particularly itchy trigger finger in overreacting based on its "brand protection" strategies -- and their latest target is... Techdirt. Now, I'm pretty fucking sure we don't compete with The North Face in any real way (I don't think our limited selection of self-designed tech policy nerd t-shirts counts). We do, however, sometimes report on the ridiculous ways in which The North Face overreacts to parodies.

It started, back in 2009, when The North Face decided to sue a student who created a sophomoric parody line of clothing called South Butt. Absolutely no one was going to be confused about where the clothing was coming from. No one was accidentally going to buy South Butt clothing, thinking it was really from The North Face. There was no likelihood of confusion. There was no dilution or tarnishment. There was just over-protective marketing execs who didn't like being made fun of. Unfortunately, the judge in the case didn't dismiss it upfront, meaning that it was about to get super expensive, and The North Face's lawyers started dragging the family of the student through the mud. Given all that, it was unfortunate, but not surprising, that South Butt settled the case. Of course, a few years later, South Butt showed up again, but this time as... Butt Face, giving The North Face lawyers some billable hours.

Anyway, soon after all that happened, we wrote about a different overreaction by The North Face. Some guy made parody patches mocking The North Face (it's not even clear if he actually made any patches, or just Photoshopped images of such patches). A key one was a patch with the phrase "Hey Fuck Face" on it, and The North Face's three-line Half Dome wannabe logo design.

I mean, not the most clever of parodies, but a parody. "Mr. Smashy" posted the image to Flickr, and the hypersensitive lawbots at The North Face sent Flickr/Yahoo a takedown notice. And then, we at Techdirt wrote about this completely stupid overreaction by The North Face.

That was nine years ago. On Friday, we got a notice from a company "Yellow Brand Productions" on behalf of The North Face, complete with legalistic sounding language to make us think that us writing a story about The North Face overreacting to a parody image of a parody patch that has never actually been sold anywhere is actually trademark infringement.

Subject: Notice of infringement - techdirt.com

Date: November 12, 2021

Dear Sir/Madam,

I, the undersigned, state under penalty of perjury that:

• I am the owner, and/or an agent authorized to act on behalf of the owner, of certain intellectual property rights.
• I have a good faith belief that the listings identified hereto offer items and/or contain materials that infringe on The North Face and Design trademark (see attached file) and are not authorized by the Intellectual Property Owner, its agent, and/or the law.
• Please act expeditiously to remove the listings identified.

Intellectual Property Owner: The North Face Apparel Corp.
Email Address for communication: [redacted] Website: https://www.thenorthface.com/

URLs at Issue:

https://www.techdirt.com/articles/20121121/17405821118/north-face-continues-to-file-questionable-legal-claims-against-parodies.shtml

Best regards,

Yellow Brand Protection
on behalf of,
The North Face Apparel Corp.

The email also, helpfully, included the Trademark Registration of The North Face logo, which notes that it covers specific trademark categories including backpacks, sleeping bags, tents, and clothing. As far as I know, a news article about a stupid overreaction to parody is not one of those things. The "notice of infringement" also included a signed letter from Christine Hernandez, saying that Yellow Brand productions and Matthew Leclerc are "authorized to represent The North Face, in trademark enforcement". Usefully, this lets me know who I should address our response to: Christine Hernandez, who (according to her LinkedIn profile) is currently General Counsel at "VF Corporation" which is the parent company to a bunch of outdoor-focused brands that I will now start keeping track of to avoid ever supporting again, including The North Face, Vans, Timberland, Altra, Icebreaker, Smartwool, Jansport, Eastpak and more (this is unfortunate as I have a few Icebreaker and Smartwool products, and didn't realize they were owned by an evil overly aggressive corporate conglomerate bully).

So, here's our response:

Dear Christine Hernandez,

I wanted to make sure you were aware that you were throwing away money with "Yellow Brand Protections" (who itself appears to have bought up its own conglomerate called Corsearch.) While the company promises to "protect your brand to grow its value" and claims that it uses "advanced technology to detect, monitor and protect your brands," it appears that it employs people who can't tell a news story about your company's itchy trademark trigger finger from actual infringement.

Sending out completely bogus trademark threat letters to news organizations covering your company's bad practices seems like the kind of thing that might come back to bite your brand. In fact, rather than "brand protection" this feels a lot like "brand destruction."

I'd suggest revisiting your contracts with "brand protection" companies who you give the authority to use your name in bogus threat letters, and maybe (just maybe) easing up on believing you need to threaten everyone over parodies.

Sincerely,
Techdirt

Filed Under: brand protection, hey fuck face, moron in a hurry, trademark, use in commerce
Companies: corsearch, the north face, vf corporation, yellow brand protections

Not This Again: Facebook Threatens To Sue Guy Who Registered 'DontUseInstagram.com'

from the don't-be-a-trademark-bully dept

Ah, this one takes me back to the early days of Techdirt, when the biggest nonsense we were writing about was giant corporate bullies threatening (or in some cases suing!) over so called "Sucks Sites" (that's an article from almost 20 years ago!). The issue was that people who were upset with a particular company would register the domain of CompanySucks.com to (usually) put up a protest site. The company (and its lawyers) would then threaten to sue the individual for trademark infringement. There were some mixed rulings over those sites, but in general most have decided that sucks sites are not trademark infringement, and are protected under a variety of theories -- including a lack of any possible confusion and because they're nominative fair use.

You'd have hoped that, by now, big company lawyers would recognize all of this. Apparently not Facebook's. Now, to be fair, as we recently discussed, for companies like Facebook, often they carefully police domains that make use of similar URLs in order to cut off sketchy phishing and scam sites. But it's one thing to go after such scammers... and it's another to go after someone who is obviously engaging in criticism.

Enter: DontUseInstagram.com, created by Paul Kruczynski.

The site now is designed to pretty much do what it says on the tin: give you reasons why you shouldn't use Instagram. Whether or not you agree with that messaging, it's clearly not infringing on Facebook/Instagram's trademarks. Someone should probably tell Instagram's lawyers. Because they sent a threat letter. In fact, they sent this threat letter before he'd even launched anything at the site, basically trying to intimidate him out of the site before he'd even done anything with it.

To Whom It May Concern,

We are writing concerning your registration and use of the domain name dontuseinstagram.com, which contains the Instagram trademark.

You are undoubtedly familiar with Instagram and its worldwide renown in providing photo sharing and editing services, online networking and related products and services through a number of channels, including through its mobile application software and its website available at Instagram.com. Instagram owns exclusive rights to the INSTAGRAM trademark, including rights secured through common law use and registration in the United States (Reg. Nos. 4,170,675 and 4,146,057) and internationally. Instagram is a global leader in photography software for mobile devices, with over 800 million monthly active accounts. Due to Instagram's exponential growth and immense popularity, the Instagram brand, is frequently, if not daily, referenced in the media and pop culture. Its fame entitles it to broad legal protection.

We have recently discovered that you registered the domain name, which incorporates the famous INSTAGRAM mark. Instagram has an obligation to its users and the public to police against the registration and/or use of domain names that may cause consumer confusion as to affiliation with or sponsorship by Instagram, dilute the distinctiveness of its INSTAGRAM mark, or otherwise tarnish the mark. Accordingly, in addition to civil actions, Instagram and its parent Facebook have filed numerous proceedings pursuant to ICANN'S Uniform Domain-Name Dispute- Resolution Policy (http://www.icann.org/en/help/dndr/udrp) to secure the transfer of infringing domain names. Moreover, the Anticybersquatting Consumer Protection Act provides for serious penalties (up to $100,000 per domain name) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes another's trademark.

While Instagram respects your right of expression and your desire to conduct business on the Internet, Instagram must take action to stop the misuse of its intellectual property. As you can imagine, various third parties around the world have attempted to wrongfully capitalize on Instagram's reputation by registering domain names that include or are derived from the INSTAGRAM brand. Such names are confusingly similar to, dilutive of, and can tarnish the INSTAGRAM mark.

We understand that you may have registered dontuseinstagram.com without full knowledge of the law in this area. However, Instagram is concerned about your use of the Instagram trademark in your domain name. Accordingly, we must insist that you immediately cease using and disable either delete or transfer to Instagram any site available at that address. You should not sell, offer to sell, or transfer the domain name to any third party.

Please confirm in writing that you will agree to resolve this matter as requested. If we do not receive confirmation that you will comply with our request, we will have no other choice but to pursue all available remedies against you.

Sincerely,

Instagram IP & DNS Enforcement Group

Instagram, Inc.

Kruczynski was able to line up the Cyberlaw Clinic at Harvard Law's Berkman Klein Center to help him respond to those Instagram lawyers, explaining to them in fairly great detail how totally full of shit their threat letter is in a letter from Kendra Albert,

The legal claims that your letters make are frivolous. Even worse, your overreach imperils Mr. Kruczynski’s First Amendment rights. Mr. Kruczynski’s domain name is not likely to cause consumer confusion, which Instagram would be required to prove in order to succeed on a trademark infringement claim. See Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008) (citing Borinquen Biscuit, 443 F.3d 116 (1st Cir. 2006)).

To establish likelihood of confusion, a trademark owner “must show more than the theoretical possibility of confusion.” Int'l Ass'n of Machinists & Aero. Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 198 (1st Cir. 1996). For courts to find a likelihood of confusion, it has to be shown that there is “a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.” Id. Given that Mr. Kruczynski’s domain has not even been launched, Instagram cannot show more than a theoretical possibility of confusion. Moreover, as Mr. Kruczynski’s website dontuseinstagram.com currently resembles nothing like the Instagram website, it is inconceivable that any reasonably prudent purchaser exercising ordinary care would confuse the two websites.

Even in the scenario that Mr. Kruczynski’s domain dontuseinstagram.com becomes live and operates in a way Mr. Kruczynski originally intended it to, Instagram will not be able to establish that there is likelihood of confusion in Mr. Kruczynski’s registration and use of dontuseinstagram.com under the First Circuit’s eight-factor test. See Oriental Fin. Grp., Inc. v. Cooperativa De Ahorro Crédito Oriental, 698 F.3d 9, 17 (1st Cir. 2012) (citing Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 15 (1st Cir. 2004)). Mr. Kruczynski did not intend to claim any associations with the Instagram mark and did not intend to compete with Instagram. In fact, Mr. Kruczynski’s domain would serve as a platform to criticize Instagram’s user privacy violations, not as a social media platform for users to share photos and accumulate followers. The goods or services provided by dontuseinstagram.com would be significantly different from those provided by Instagram, and the channels of trade and advertising would be very different as well. It is unimaginable that there would be evidence of actual confusion where Instagram users actually confuse Instagram with a website criticizing Instagram, starting from the domain name itself. Even assuming that Instagram has a strong mark that most people recognize, it is overreaching for Instagram to forbid others from registering or using any name that mentions Instagram without due regard of relevant laws.

The existence of a parked page on Mr. Kruczynski’s domain does not create trademark infringement where there previously was not any. See, e.g., Acad. of Motion Picture Arts & Scis. v. GoDaddy.com, Inc., No. CV 10-03738 AB (CWx), 2015 U.S. Dist. LEXIS 120871 (C.D. Cal. Sep. 10, 2015) (holding that the plaintiff failed to meet its burden of proving that a domain name registrar who operates parked page programs acted with a bad faith intent to profit from the plaintiff’s marks). In fact, the existence of the parked page is largely irrelevant to the discussion of trademark infringement here, and you are overstepping by demanding Mr. Kruczynski remove the parked page on his own registered domain.

Your claim of Mr. Kruczynski’s alleged trademark infringement is ungrounded in law. The non-infringing nature of the use would have been obvious had an attorney even glanced at the name of the site.

To the extent that these emails were sent using an automated process that merely checks to see if a domain contains the word Instagram, and then automatically requests the transfer of a domain to you if it does, such behavior plays on the threat of litigation to suppress potentially lawful speech. I am aware that there may be many domains registered with the Instagram mark in them, some of which may be used for phishing or other nefarious purposes. But that does not justify a “spray and pray” strategy where you automatically send notices of infringement without any human review. Such notices may serve to unlawfully intimidate critics, requiring them to find legal counsel.

That reply was sent back in November and it requests that Instagram retract the threat letter and provide "a clear statement that you do not intend to file suit over his ownership of dontuseinstagram.com." Somewhat optimistically, it also said that such a letter should "be accompanied by a discussion of what processes you will implement in order to ensure any messages you may send to domain owners will not attempt to intimidate lawful users of the Instagram wordmark."

Neither happened. Instead, Instagram just went silent. It's quite likely that the human being who received the response letter realized how bad an idea it was to send that original threat letter, even if automated, but has just moved on to threatening someone else. But Instagram deserves to be called out for its practices which can lead to real intimidation for people, unlike Paul, who don't have the ability to have a knowledgeable lawyer respond to the threat.

That's unfortunate, because it means that there are no consequences for sending out such bogus, censorial threat letters. Well, other than having a site like Techdirt call out your stupid threats.

Filed Under: brand protection, chilling effects, criticism, domain registration, don't use instagram, free speech, sucks sites, trademark, trademark bullying
Companies: facebook, instagram

Vancouver Olympics 'Brand Protection Guidelines' Almost Entirely Arbitrary

from the where-do-we-include-the-drake-equation dept

Marcus Carab writes "VANOC (the Vancouver Olympics organization) has a 22-page booklet on their site covering trademark issues around the Olympics.

Most of it isn't new, but I found the description of their method (starts on page 12) to be very interesting. They describe a rubric with six categories that they use to determine if any given reference to the Olympics is potentially infringing. There are a few things about the method that stood out to me (beyond the broader fact that they are essentially attempting to rewrite trademark law as they see fit):

• Each category is scored from 1 to 3, with a lower score being ideal. There is no option for zero in their ranking, and yet the final grading scale begins with "Unlikely to Infringe" rather than "Not Infringing"
• They offer a bunch of examples and walk you through the math, then they ignore the outcome in some of them. Seriously. A bakery called "Olympic Bakery" that has existed since 1965 scores a 10 out of 18 on their system ("potential infringement"). Almost as if they realized how ridiculous that was while writing it, they decided to say it falls under "unlikely to infringe" even though it very clearly doesn't by their own math. A few pages later, a Winter Festival scores a "potential infringement", but they class it as "likely to infringe" with no explanation given.

Mostly this is just the same old Olympic shenanigans, but I found this booklet quite illustrative of just how ridiculous things can get."

It sounds kind of like the way they judge some of the events in the Olympics themselves.

Filed Under: arbitrary, brand protection, olympics, vancouver