Monster Energy Buys A Brewery; Trademark Lawsuits Are Almost Sure To Follow

from the oh...oh-no dept

Did you all just hear that? That tiny, nearly silent series of screams you hear all around you? Well, that was the entire craft beer industry crying out in fear and pain. Why? Well, because Monster Beverage Corp announced that it is going to be a brewery.

Energy drinks maker Monster Beverage Corp (MNST.O) said on Thursday it had agreed to buy craft beer and hard seltzer maker CANarchy Craft Brewery Collective Llc for $330 million in cash, marking its entry into the alcoholic drinks market.

Monster said the deal would add alcoholic brands Cigar City, Oskar Blues, Deep Ellum, Perrin Brewing, Squatters and Wasatch brands to its beverage portfolio and not include CANarchy's restaurants.

If you're in the craft brewing industry and you're not dismayed at this news, then you don't know Monster Energy. This is the company that has taken trademark policing to caricature levels. If you need examples of this, they are legion. Monster Energy went after an autobody shop for using the letter M and the color green in its branding. Monster Energy opposed a teen's trademark application despite the branding being totally dissimilar. Monster Energy opposed the trademark for a pizza chain because it named itself Monsta Pizza. And on and on and on.

So why should this concern the brewing industries? Well, for starters, Monster Energy has attempted in the past to oppose and threaten liquor companies for the crime of having an "M" in their branding. Here is one brief snippet I wrote at the time in that post about Monster opposing a trademark application for Murlarkey Distillery:

To start, the two companies operate in different markets. Yes, both serve liquid for consumption, but one makes an energy drink, while the other is selling liquor, such as vodka. Those are distinct markets and not easily confused during the purchasing process.

With this acquisition, the above statement goes away in many respects. Suddenly, Monster is in the alcohol business. This lends weight to its ability to argue even more than it did before that there might be brand confusion in its attacks, even if those attacks remain frivolous. But even putting the Monster brand aside, take the brands in the acquisition itself. What does it mean, given that Monster now owns Oskar Blues Brewery, for Oscar's Brewing Company? Or any of the several different brews that are branded with the word "Oscar"?

And that's just taking one of the brands and taking the most obvious guesses as to where Monster Energy could get aggressive. As readers here will know, Monster goes well beyond the obvious targets and gets really, absurdly creative for who it thinks is infringing on its trademarks.

It's not a sure thing that this acquisition is going to be a nightmare for the craft brewing industry, but all of Monster's history of aggression sure points us in that direction.

Filed Under: brewery, craft beer, monster, trademark, trademark bullying, trademark threats
Companies: monster energy

Chia Cryptocurrency, Started By BitTorrent Creator Bram Cohen, Engaging In Obnoxiously Bogus Trademark Bullying

from the not-how-it's-done dept

It seems these days you can't mention anything to do with cryptocurrency without someone jumping in and insisting that cryptocurrency is a disaster for the environment. There are differing opinions on all of this, but a few years ago, BitTorrent creator Bram Cohen set out to build a more "eco friendly" cryptocurrency called Chia. The basic idea was that, rather than using a proof-of-work system -- which involves using up a ridiculous amount of computing power, it would use a proof-of-space system, looking at how much hard drive space you're allocating. After many years of development, Chiacoin finally launched a few weeks ago. And, to pretty much prove the old axiom that there's no such thing as a free lunch, while it may not be directly wasting CPU cycles, it's impacted the world differently: by destroying the global hard disc supply chain, driving prices for hard disks through the roof -- leading people to point out that even if it's not wasting electricity like Bitcoin, it may be wasting hard drives. Some may challenge the question of whether or not this is wasteful (those hard drives are doing something...) but there are multiple reports of running Chia on SSDs is wearing them out in ridiculously short periods of time -- even to the point that some SSD makers are saying that using their hard drives for Chia will void the warranty. Yikes!

All that said, this post is not so much about Chia's setup or its impact on the global supply chain for hard drives. It's about trademark bullying. You'd think that a company started by Bram Cohen -- someone all too frequently falsely accused of being responsible for music and video piracy from his BitTorrent days -- would be extra sensitive to coming across as an "IP bully" of any sort. And this is true of some of the other folks who work on Chia -- some of whom I know are Techdirt regulars.

But, for whatever reason, Chia Networks has decided to be an obnoxious trademark bully. Chris Dupres, another Techdirt regular, started a blog to cover news about Chia Networks and ChiaCoin called The Chia Plot. It's got a bunch of interesting articles about what's been happening on the Chia front.

And apparently the folks at Chia decided to threaten him with legal action.

Last week, "the head of IP for the Chia Network," Belle Borovik (who appears to be a recent law school grad), sent Chia a legal nastygram, insisting that the site violated Chia's trademark. Admittedly, the letter was at least somewhat friendlier that your typical cease and desist or threat letter. It thanked Chris for educating the public about Chia, and asked him to get a license to use the Chia name, which it offered up on a "royalty free" basis.

Chris,

I write to you on behalf of the Chia Network Inc. First and foremost, allow me to thank you for your efforts in educating and expanding the Chia community through your blog and discussions. We support open discourse and free exchange of information.

Still, it is important to Chia Network to protect its trademarks. Unauthorized use of Chia Network’s registered CHIA mark, or iits logos exposes community members to potential scammers, misleading and confusing them. Therefore, it is essential that all users of the CHIA marks, logos, or the Chia Network name obtain a royalty free permission to use the CHIA marks. Simply put, you may not continue using the CHIA mark in your domain name, or anywhere, without securing a written permission from Chia Network.

We must ask you to contact us immediately, and no later than May 28, 2021 by replying to this email, so that we may resolve this matter amicably, and you are able to continue to strengthen the community we all care about.

Except, that's not how any of this works. There is a very, very, very long line of cases, going back years, that say that websites about a trademarked brand, do not infringe on the trademark if they use the trademark in their URLs. Chris basically told them to pound sand, but did say he would clarify in his site's tagline that it was "an unofficial site." He also posted the legal threat and his response to his site.

And then, the Chia folks took away the "nicer" part of their threats, and... incredibly... became even more obnoxiously threatening and censorial. Beyond insisting that his changes were not enough and continuing to add to the false claims of trademark infringement, it also accused him of violating the GDPR by posting Belle Borovik's name in association with the letter that Belle Borovik sent to Chris. I only wish I were joking.

Dear Mr. Dupres,

It has come to our attention that your EU-registered website has recently engaged in a series of privacy violations under the General Data Protection Regulation Act (the “GDPR”) involving a Chia Network employee. To date, you have revealed our employee’s personal data, including their Name and Location, and aided in doxing behaviors of others directed toward this individual through your blog.

Despite this unbecoming behavior, you have reached out to us with the following inquiry regarding permissions to use the CHIA marks on your website:

I have added “unofficial” to the tag line of my blog to ensure that there is no confusion. Can you please confirm that this acceptable and that we are able to move on from here?

Unfortunately, adding the word “unofficial” is not enough to obviate the likelihood of confusion. Moreover, Chia Network cannot support violations of privacy laws, and cannot condone behaviors that target or endanger any member of the Chia community. This is precisely the reason for Chia Network’s vigilance in enforcing its trademark rights; the Chia Network guidelines make it easy for the community to remain connected, while maintaining a respectful and professional relationship with each other.

That said, Chia Network stands by its mission to support the Chia community, and is still willing to consider a relationship with your blog. Understandably, this can only happen if you remove all Protected Personal Information (“PPI”), including the doxing comments or references to any Chia Network employee, whether made by you or by others via your platform.

Once you have removed the doxing and PPI content from your platform, we can “move on from” there, with you obtaining a free license from Chia Network.

Sincerely,
The Chia Network Legal Team

That's uh, not how any of this works again. Chris again responded, pointing out how crazy this was, noting correctly that publishing the name of an employee who sends a threat letter is not a privacy violation (and noting that the site is registered in Canada anyway, and not the EU). Out of unnecessary courtesy, he still removed Borovik's name.

The latest is that Public Citizen Litigation Group's Paul Levy has stepped up to provide an official response from Chris to Chia Networks. And, if you're a long time reader of Techdirt, by now you should know that you basically never want to be on the receiving end of a Paul Levy letter. The letter is, in typical Levy fashion, worth reading. I was going to post just a snippet, but the whole thing is too good not to share:

Dear Ms. Borovik:

I write in response to your demands to Chris Dupres, contending that he has violated the trademark laws by using "The Chia Plot" as the name of his new web site about your company and by registering the domain name www.thechiaplot.net to be used as the internet address for the site. You contend that he needs your permission to use these names, that he needs to apply to you for a royalty-free license, and that, if he wants to resolve this situation on an amicable basis, he needs to submit his request to you immediately.

Dupres is not going to comply with your demand. Your company has no right to give (or withhold) approval for any and all uses of its unregistered trademark on web sites that discuss your company. What's more it is unreasonable for you to expect a journalist to ask for permission to use the company's name to talk about the company. Your attempt to condition his use of the name on his agreement to delete certain information from the site shows why no self-respecting journalist would give in to such a demand. See WCVB-TV v. Boston Athletic Associaton, 926 F.2d 42 (1st Cir. 1991).

Your assumption that Chia Network has a right to forbid use fits mark to denominate a web site as being about the company, or to demand the right to give or withhold such permission, is belied by longstanding precedent, set by series of cases decided by the federal courts more than ten year ago. Given the fact that your company is located in San Francisco, the decisions in Bosley Medical v. Kremer, 405 F.3d 672 (9th Cir 2005), and Nissan Motor Co v. Nissan Computer Co., 378 F.3d 1002 (9th 2004), are the most teling: Both cases squarely preclude the use of trademark law to stop Dupres's use of a web site posted at a domain name that uses your trademark as a site for non-commercial commentary about your company. Several cases in other circuits protect the right to use a domain name in the form www.trademark.com for a web site about the trademark holder against a variety of trademark claims. Utah Lighthouse Ministry v. Foundation for Apologetic Information and Research, 527 F.3d 1045 (10 Cir. 2008); Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); TMI v. Maxwell, 368 F.3d 433, 436-438 (5th Cir. 2004); Lucas Nursery and Landscaping Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004); Taubman v. WebFeats 319 F3d 770 (6th Cir. 2003).

Trademark law aside, the First Amendment protects Dupres's right to use your company‘s name to denominate, accurately, the subject of this web site. Any effort that your company made to invoke trademark law as a reason to shut down his site, or to alter its name, would be an invocation of government power that would be subject to First Amendment scrutiny and would violate the First Amendment.

You suggest that you believe that some of your customers might be confused by the name or domain name of the web site into believing that the site is sponsored by your clients. Just how gullible do you expect your potential customers to be? I daresay that even the proverbial moron in a hurry would recognize, immediately upon visiting The Chia Plot, that it is a web site devoted to journalism about your company rather than being sponsored by your company. Dupres's site expressly states that it is not affiliated with your company, indeed, it proclaims its independence.

Moreover, Dupres has helpfully provided viewers of his site with a prominent hyperlink to your site just as, for example, did the Shops at Willow Bend site at issue in Taubman, the web site attacking Bosley Medical Group at issue in Kremer, and the site condemning Jerry Falwell's homophobia at issue in Lamparello. As a result even if Internet users mistakenly looking for your company, rather than looking for information about your company, wandered onto The Chia Plot by name-guessing, they would be quickly disabused of any notion that the site belongs to or has the approval of your company. As this very letter is propagated around the Internet, readers will gain further information dissociating Dupres's news site from your own commercial site.

Finally, I note that one of your demand emails included the preposterous contention that Dupres violated European privacy rules by identifying you as the person who sent the demand email. Although Dupres took your name off his site as a friendly gesture, you have persisted in pursuing trademark claims that have no legal bass. Accordingly, your name will likely appear in stories written about your claims.

I am giving you until June 9 to retract your demand that Dupres stop using the word "chia" in the domain name for his web site and in the title of the site. Dupres is not willing to keep operating his web site subject to the threat of a claim for trademark damages. Consequently, failing a prompt retraction, a request for waiver of service could well be the next communication you receive on this topic

Whatever you might think of Chia as a cryptocurrency, it's silly legal threats -- both about trademark and (even more ridiculously) about the GDPR -- seem to raise questions about what the hell is going on over there...

Filed Under: belle borovik, bram cohen, chia, chris dupres, cryptocurrency, gdpr, hard drives, paul levy, trademark, trademark bullying
Companies: chia networks

Warner Bros. Bullies Airbnb Hobbit-Themed Offering Into Changing Its Name Over 'Hobbit' Trademark

from the napoleon-complex dept

We've covered intellectual property issues that revolve around Tolkien's Lord of the Rings properties before. By now, everyone should know that any use of or homage to those properties, or even coincidental usage, will typically result in angry letters from lawyers. What's even more fun about all of that is you get to play the game called, "Whose lawyers are going to write the angry letter this time?" Between the Tolkien estate and its IP management partners and Warner Bros., the studio behind the LotR films, they have managed to block an unrelated wine business from using the word "hobbit," bullied a pub named "The Hobbit" to get it to change its name before recanting said bullying, and got a Kickstarter project shut down for trying to create a real-world "Hobbit house."

This is where it's worth reminding everyone that Tolkien did not come up with the word "hobbit". That word already existed, though it meant something different than how Tolkien used it to name his race of diminutive folk. The Kickstarter example above is apropos to this post specifically, as it seems that Warner Bros. is at it again, having forced an Airbnb listing clearly designed to be another homage to Tolkien's hobbit homes in the Shire to change its name.

The Okanagan homage to middle earth that doubles as a popular Airbnb spot officially has a new name. It’s now the Second Breakfast Hideaway.

“And the h***** mountain hole is now a Second Breakfast Hideaway (I'm still full from the first one),” the AirBNB owners wrote in a May 22 post.

The popular Airbnb named for its likeness to the housing in J. R. R. Tolkien's Lord of Rings books went on the hunt for a new name following a threat from Warner Bros. which owns the trademark to the word hobbit. Christine Le Combe and her husband purchased the Halfling Hideaway, located roughly 30 minutes east of Osoyoos, last year and renamed it the Hobbit Mountain Hideaway. It's been a popular vacation destination since it opened in 2019. Earlier this week, Le Combe was contacted by entertainment media company Warner Bros. and was told the word “hobbit” is trademarked and they asked her to take down the listing.

Unfortunately, the source post doesn't bother to interrogate whether the takedown request from Warner Bros. is remotely valid. I would very much argue that it is not, considering that Warner Bros. use of the term "hobbit" is solely focused on movies and movie merchandise, both of which are a far cry from the hospitality and rental business. But Warner Bros. also has deep pockets and the folks behind this Airbnb listing likely do not, which is why trademark bullying works. The threat of Warner Bros. taking this far enough for it to see the inside of the courtroom is almost certainly an extinction level scenario for the former Hobbit Mountain Hideaway.

So, instead, a movie studio gets a rental property to change its name. And that sucks, no matter how positive the victims of this bullying want to be.

“Having to get out of my comfort zone and engage with the community has been a good experience,” Le Combe said.

“I really didn’t think that somebody would copyright the word hobbit and then try to hunt a person down if they use the word hobbit because it’s not like I meant any harm. The hobbit house is an homage to the favourite book series of a lot of people.”

It's almost as though at Warner Bros. there is some sort of all-seeing eye that scours the physical and digital worlds for any use of the term "hobbit", all in an effort to track and strike down those that would use it. If only there were some usable analogy I could reference for that without getting sued...

Filed Under: hobbit, hobbit hobbit hobbit, lord of the rings, tolkien, trademark, trademark bullying
Companies: airbnb, warner bros.

Publix Gets Social Media Accounts Advertising Its Sandwiches Taken Down For Some Reason

from the biting-the-hand dept

For sure, the most frustrating examples of dumb trademark disputes are when one party bullies into silence another party for doing something that actually helps the bully. If you need an example of this, you can look to the time Olive Garden tried to take down AllOfGarden.com, a site with a satirical take on the Olive Garden menu. That example is particularly instructive for two reasons. First, AllOfGarden was essentially a tongue-in-cheek love letter to the restaurant chain run by someone who was very much a fan of said chain. Second, Olive Garden eventually apologized and rescinded its threat, due in part to the public backlash and the fact that it must certainly have realized that the site, if anything, helped drive some measure of interest in the restaurant itself.

We will have to see if supermarket chain Publix ends up handling this the same way, because it has apparently bullied someone running social media accounts alerting fans to the availability of a particular sandwich into silence.

The account “Are Publix Chicken Tender Subs On Sale?” — with nearly 40,000 followers — has been dormant since March 11. One of its final tweets noted that the subs were, indeed, on sale, and added ominously: “This may be our last Tweet.” Since then, it stopped sharing updates altogether. An accompanying Facebook page also went silent.

A big clue about what happened: In another post, the Twitter account said it had received a cease-and-desist order from Publix objecting to a related text-message notification service. The account promised more details “later this week,” but never shared more information. Since then, dozens of hungry Twitter users have tweeted at the account asking where they went, whether everything was OK and earnestly asking which subs might be on sale.

So, who is behind the social media accounts and text messaging service? A 26 years old named Bryan Dickey who also works for marketing firm Postscript in California. According to Dickey, Publix contacted him upset that his texting and social media accounts were alerting the public as to when these chicken tender sandwiches went on sale. He had initially said he was going to keep his social media accounts running while taking down the text message service, but those socials have, again, since gone silent. To be clear, this was something of a commercial operation, though admittedly not much of one.

Dickey tweeted from his personal account earlier this month that Publix was objecting to a related text-message service he set up in January that allowed users to be notified about sub sales if they texted “PUBSUB” to a listed phone number. It wasn’t clear how Dickey was profiting from the service, but apparently that was too much for Publix. He said as early as January 2018 that he was making money off his Publix subs ventures and last year said he had made more than $5,000.

“Publix is bullying me with C&D’s for the SMS VIP club. Haven’t talked about it publicly yet. Basically all paths to profitability are legal red taped for now, but I can keep the socials running,” he said.

All the normal excuses for Publix's actions are trotted out in the Tampabay.com post by third parties on the chain's behalf. If the Twitter account or text service suddenly did something offensive, Publix would get the blame. If it didn't go after the use of its name in this case, someone else could argue that Publix had abandoned its trademark.

But as we've discussed before, there are other options beyond bullying to death something like this. Working out a way to make the service or social media accounts "legitimate" through cheap or free licenses alleviates the concern about trademark abandonment. Working out an arrangement would similarly allow some flavor of quality control over the content of these accounts.

Or, as Publix chose to do, it could silence activity that was actively promoting its own products, almost certainly leading to sales that would have otherwise not occurred.

Filed Under: bryan dickey, chicken tender subs, trademark, trademark bullying
Companies: publix, twitter

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

Public Backlash Leads To Backcountry.com Backing Down From Trademark Bullying

from the do-what-works dept

Trademark bullies, being the obviously frustrating entities that they are, rarely incorporate enough shame to allow for any retreat from their bullying ways. Still, occasionally you come across a trademark bully that actually feels enough public pressure to back down. Relatively rare as these instances are, it's worth highlighting when an informed public actually pushes back on a bully enough to get them to back down.

Meet Backcountry.com. The site sells all kinds of outdoors gear, with a focus on winter sports. As you might expect, the company also filed for trademarks for "backcountry" for clothing and apparel about a year ago. Despite that being a fairly generic term, particularly in the realm of outdoors gear, Backcountry.com then recently went on a trademark bullying spree.

The 23-year-old Utah e-retailer — founded by ski bums but owned since 2015 by private equity firm TSG Partners — this year deployed California’s IPLA Legal Advisors, the nation’s largest trademark-only law firm, in four lawsuits targeting small businesses that used the word backcountry in their name. The U.S. District Court lawsuits follow several years of the e-retailer filing dozens of lawsuits and protests with the U.S. Patent and Trade Office targeting businesses that have trademarked the word backcountry.

Backcountry.com, through a spokeswoman, declined to comment on the flurry of lawsuits.

The general public, however, did not decline to comment. In fact, the public commented very much after reports on these lawsuits and the public was not pleased. Facebook pages pledging to boycott Backcountry.com sprung up with thousands of members. A GoFundMe site was setup for Marquette Backcountry owner David Ollila, the sole entity to not cave and settle with the bully. Other community sites around the internet lashed out at Backcountry.com for bullying other businesses over a fairly generic term.

“This obviously didn’t resonate well with the market,” said Ollila, the Michigan entrepreneur behind Marquette Backcountry Ski who was sued in September by Backcountry.com for trademark infringement. “Looking at all the comments online, I see people saying that until this is rectified, they are not shopping there. I see this as a great wake-up call to the industry and awareness about what it takes to run a small business and what a fair playing field looks like.”

You see this from time to time, but the backlash from what is a fairly niche community made this all particularly sharp for Backcountry.com. Whereas we have seen plenty of instances in which trademark bullies simply dig in their heels, here the bully actually bowed to the public pressure.

“We have heard your feedback and concerns and understand we fumbled in how we pursued trademark claims recently,” Backcountry.com CEO Jonathan Nielsen wrote in an open letter posted on the retailer’s website, noting his company was dropping a federal lawsuit filed against the founder and sole operator of Marquette Backcountry Ski. “We made a mistake.”

Nielsen’s “letter to our community” — posted on the company’s website late Wednesday, a little more than three weeks before the retail industry’s Black Friday bonanza — said attempts to protect the brand involved actions “that we now recognize were not consistent with our values and we truly apologize.”

Is the timing such that this is less a company realizing it made a mistake and more that it's trying to save the sales it expects during its busy season? Sure, but so what? The point isn't whether Backcountry.com has turned over some new leaf or not, but is instead to highlight the power of public involvement. It wasn't the legal merits that changed the company's mind. It wasn't the pleas of its victims. It was the power of the customer that actually resulted in the company dropping these lawsuits.

Perhaps this should serve as some kind of a template for how trademark bullies can be dealt with in the future.

Filed Under: backcountry, trademark, trademark bullying
Companies: backcountry.com

Caterpillar Now Going After All The Cats For Trademark Cancellations

from the meowsers dept

A couple of weeks back, we discussed the story of Caterpillar Inc., famous manufacturers of tractor equipment, deciding to bully Cat & Cloud Coffee, makers of you'll-never-guess-what, all because the former had long ago trademarked "CAT" as a truncated brand. At issue specifically is Cat & Cloud's use of the word "cat" on clothing and merchandise it sells, with Caterpillar claiming there is the potential for public confusion with its own clothing and merch lines. This is, of course, plainly ridiculous. There is no overlap in the branding and nobody is going to confuse the tractor folks with the coffee folks.

Others pointed out that there are tons of other companies out there that sell apparel and/or merch while holding trademarks that incorporate the word "cat." If those other companies are allowed to exist, why not Cat & Cloud? Caterpillar Inc. heard you dear friends, but its response is probably not the one you were hoping for.

According to the US Patent and Trademark Office, Cat & Cloud is among 174 registered trademarks including the word "cat". Caterpillar has filed 125 cancellation petitions so far including one to internet sensation Keyboard Cat. You may have been one of the 150-million viewers of the viral video of a feline, clad in a blue shirt, playing the piano.

Charlie Schmidt, Creator of Keyboard Cat and www.keyboardcat.com spoke to us about his ordeal.

"I'm just a poor artist trying to you know, maintain my integrity! Who wants to hurt a tractor company just by having a cat!?"

So, yeah, Caterpillar has expanded its trademark bullying out to encompass more small businesses. It is again defending its actions by saying they are only targeted for apparel trademarks, but that still isn't good enough. It's virtually impossible to believe that all 125 trademarks for the apparel in question comprise uses that would actually cause any real public confusion. Instead, this is obviously a corporate legal team pulling out the legal shotgun and just spraying buckshot everywhere it can.

For Cat & Cloud, at least, its story is getting some public attention.

Customers including tech titan Guy Kawasaki, former Chief Evangelist for Apple and current Chief Evangelist for Canva, is getting behind the café, leveraging his millions of online followers to join the effort.

"Sometimes you have to stand up for something. For the principal of it. And this is one of those times."

Actress Sophia Bush has also weighed in on Instagram to help Cat & Cloud.

Now we just have to marshal forces for the hundred-plus other victims of Caterpillar's bullying, I suppose.

Filed Under: cat, cats, charlie schmidt, keyboard cat, trademark, trademark bullying
Companies: cat & cloud, caterpillar

Under Armour Can't Help But Issue A Cease And Desist For Tiny Clothier Cascade Armory

from the ready-fire-aim dept

Athletic clothing maker Under Armour has graced our fair pages a few times in the past, always for being on exactly the wrong side of the trademark equation. Between trying to torpedo tiny Christian companies like Armor & Glory, and ensuring that every member of the public is aware that its own executives don't have a sense of humor that they are aware of by suing Ass Armor, the mega-company has been quite busy making sure the entire world knows that only it is allowed to use the word "Armour." Notably important in all of this is that the company is exactly wrong in this claim, as trademark law nearly always comes down to whether customers will be confused by the use of words and trade dress, and it is not a platform for a single company being able to lock up a fairly common word.

This is a lesson that apparently hasn't stuck for the folks at Under Armour, however, as the company has recently fired off a C&D letter to another tiny clothier, Cascade Armory.

According to Source Weekly, a start-up clothing store in Bend, Oregon named Cascade Armory has received a cease and desist order from the gigantic corporation claiming that the tiny store's brand could cause confusion to the billions of dads and bro-dudes who wear Under Armour's ass-ugly athletic gear.

As you can see from the [below] picture, the logos of both companies share almost no similarities—other than the word "armor" which UA seems to have trouble spelling.

Here are the logos in question.

The first thing that should immediately jump out at you is just how insane any claim that there is the potential for customer confusion here would be. Cascade Armory isn't even using the word "armor", never mind the British spelling that Under Armour uses. On top of that, all of the dress and iconography is significantly different. Add to all of this that Cascade Armory isn't an athletic clothing maker, but a traditional one, and that should be the final nail in all of this. Under Armour can play make-believe pretending it lives in a world where it can tell everyone else on the planet that they cannot use any words that are even close to "armour" if it wants, but it simply isn't true.

And, yet, the company makes demands far outside its legal rights.

In the cease and desist order, Under Armour demanded that Cascade Armory abandon with prejudice its application for trademark and any other applications and registrations for marks comprised of or containing the term armory, armoury, armor, armour or any misspellings or variations thereof. The company demanded Cascade Armory permanently quit using, registering or applying to register the Cascade Armory mark and any versions containing the same versions of 'armory' or 'armor.' Also, they demanded that Cascade Armory deactivate its website and social media pages that contain the same words.

These demands are flatly obscene given the flimsy nature of Under Armour's basis for all of this. Of course, we've said many times that big companies play the trademark bully because it works, largely because it can scare the hell out of startups and small companies that don't have a comparable legal war chest with which to work.

While the owners of Cascade Armory, Alex and Diana Short, have no intention of kowtowing to Under Armour's bullying tactics, they also admit that a legal fight against the conglomerate would put their young business in peril.

Which is why companies like Under Armour get away with this nonsense. Why they feel the need to do so is an open question.

Filed Under: armory, armour, clothing, trademark, trademark bullying
Companies: cascade armory, under armour

Monster Energy Loses Trademark Opposition Against UK Drink Company, But May Have Bullied It To Death Anyway

from the winning-by-losing dept

A review of our stories about Monster Energy's trademark bullying ways might leave some scratching their heads as to why the company continues along these lines at all. After all, any review of those stories will leave one with the impression that Monster Energy seems to lose these trademark oppositions at nearly every turn. So, if that's the case, why continue with this losing streak?

Well, as we've explained previously, winning an opposition or lawsuit is only one of the real goals in trademark bullying. Other goals include making the opposition so painful and expensive so as to either push the victim into unreasonable changes or to simply drain the victim of cash and assets as they attempt to defend themselves. Likewise, such bullying serves as public notice to anyone else that might consider similar actions that would draw the bully's ire, chilling their willingness to do so. In this, Monster Energy's trademark bullying is often quite successful.

An example of this can be found in UK beverage company Thirsty Beasts, which recently won its case against Monster Energy's opposition to its trademark for the second time on appeal.

Dan Smith, from Newbury, created healthy drinks company Thirsty Beasts in 2018, and the US firm filed a legal challenge against him.

It claimed customers would confuse both Mr Smith's slogan - "Rehab the beast" - with its "Unleash the beast" line. The case, which was dismissed, cost Mr Smith more than £30,000 in legal fees. He said he and his wife had ploughed every penny they had into launching the business. After registering his first trademark in the UK in 2016, Mr Smith then filed the Thirsty Beasts logo. Billion-dollar company Monster Energy objected to his application, claiming Mr Smith's slogan was too similar to its own.

The UK Trademark Office ruled in favour of Thirsty Beasts, but Monster Energy appealed the decision.

And Thirsty Beasts won that appeal. The Trademark Office once again reviewed the material provided by the two companies, including the branding, company names, and logos, and rightly decided that there was no customer confusion to be had here. You can read the entire timeline of events for yourself on the company's website, but ultimately this story has a happy ending, right?

Well, again, winning the opposition isn't the only, or perhaps even primary goal, of the trademark bully.

"Financially it has crippled the company," Mr Smith said. He added: "We had savings set aside to boost the product, to do the marketing, to get that one drink out. Now we've burnt all of that, that and more trying to win this. We are two years behind where we want to be."

The entrepreneur now needs to raise £28,000 for a limited launch of the product in spring 2019.

Maybe the Smith family will be able to do that, maybe they won't. And that's the real harm of large corporate trademark bullies like Monster Energy. Even in losing, it might still ultimately win if its victim can't survive in business because of its bullying. And, again, Monster Energy can point to such an outcome should anybody else out there want to take similar innocuous actions.

Trademark bullying works. And on more than one front.

Filed Under: monster, trademark, trademark bullying, uk
Companies: monster energy, thirsty beasts

Hollywood Chamber Of Commerce Trademark Bullies Kevin Smith's Podcast Over Hollywood Sign

from the likelihood-of-confusion? dept

The Hollywood Chamber of Commerce is somewhat infamous for its constant trademark bullying over the famed Hollywood sign (you know the one). Its latest target is apparently the Hollywood Babble-On podcast that is done as a live show each week by radio/podcast guy Ralph Garman and filmmaker/entertainer Kevin Smith. Before the show this past weekend, Garman had tweeted out that it might be the last Hollywood Babble-On ever. In the opening minutes of their latest episode, Garman explains that they've received a cease and desist letter from the Hollywood Chamber of Commerce "re: unauthorized use of Hollywood stylized mark and Hollywood Walk of Fame mark."

While I haven't seen the full cease-and-desist letter, from what Garman said on the podcast, the issue is so ridiculous that the Hollywood Chamber of Commerce should be called out for blatant trademark bullying. You see, while this is the normal logo/image promoting the podcast:

At times, they've used other images, such as this one:

It's that image that is apparently part of the problem (even though it's not clear how often it was used). The Chamber of Commerce is using the Hollywood style lettering, which is an approximation of the famous Hollywood sign, and the star behind their heads (which it apparently believes is an implied reference to the stars on Hollywood's walk of fame), to argue that this is unauthorized use of their marks. Some trademark lawyers will likely disagree, but this seems like classic trademark bullying.

If you're unfamiliar with the podcast (and I'll confess to being a loyal listener from Episode 1 through the latest, and got to see the show once live at Kevin's invitation after he was on our podcast a few years ago), it's a fun (frequently not safe for work) show looking at some highlights from the week's entertainment news, mixed in with a series of re-occurring bits, frequently involving Garman's rotating cast of impressions. In short, it's two funny guys, who are both in show business and have been for many years, goofing off talking about show business, frequently mocking some of the crazier news stories coming out of that business.

In other words, there's no way in hell that anyone in their right mind thinks that this podcast is officially sanctioned by "Hollywood" as some sort of official Hollywood product. The whole thing is kind of gently mocking some of Hollywood's sillier foibles. Indeed, this seems like a perfect use case for the old standby in trademark law: the "moron in a hurry" test. And, to make it more relevant to the hobbies of choice of Ralph and Kevin, I think it could be argued that neither a drunk, nor a stoned "moron in a hurry" would ever face even the slightest "likelihood of confusion" that Hollywood somehow had endorsed the podcast, just because it briefly had images showing slightly askew letters and a star.

It remains one of the more frustrating aspects of trademark law that so many people believe that it means you get total control over the marks in question. That's not how it's supposed to work. It's only in cases where there is a likelihood of confusion that people would be confused and believe that the mark holder is behind (or otherwise endorses) the products and services in question. And here, that seems pretty difficult to believe. Of course, rather than fight these kinds of things out, it's frequently much easier to just pay up, which may be what the lawyers for the Hollywood Chamber of Commerce are banking on.

Filed Under: hollywood, hollywood babble-on, hollywood sign, kevin smith, likelihood of confusion, moron in a hurry, podcast, ralph garman, trademark, trademark bullying, walk of fame