By Harvey Anderson
Trademarks used for open source projects–like for the Mozilla Firefox browser–will often be misused. It can take the form of a website selling open source software that is normally distributed for free, using the trademark to promote other products and services, or using modified versions of the trademark. The problem is that these activities are deceptive, harm users, cause consumer confusion, and jeopardize the identity and meaning of the brand–not to mention being illegal.
The cases seem to fall into three different categories that I’ll nominally call the good, the bad, and the ugly. When we receive reports or identify problematic activities, we “exercise due diligence, care and prudence,” all of which means we analyze the reports and treat each case differently based on the intent and severity of the matter.
The Good. There’s a category of cases that involve good intentions but improper use of the trademarks. Typically, these folks really support the project, the brand, and the mission, and in their efforts to engage others and share their excitement about the products, they may have used the trademarks in a way that’s improper. In truth, we’re lucky to have this problem because it indicates people care about what we’re doing. This is almost always easily corrected with a phone call or short note. These matters are not troubling in my view, because they’re indicative of a user’s desire to embrace the brand in ways that are relevant and meaningful to them. Maintaining trademark protection (good trademark hygiene) and having supporters embrace the brand should not be mutually exclusive nor inconsistent. Trademark law as it exists today is technically more constraining, but I hope to see it evolve to recognize these complementary concepts. For further perspectives on trademark law, see a recent paper Tiki Dare and I wrote on this topic in the International In-house Counsel Journal.
The Bad. This category involves people who are intentionally trading on the brand for their own benefit. At the core, these cases are based on people or entities misrepresenting themselves as the true owner of the trademark. The problem may manifest itself as domain name hijacking, using the marks to promote other products, or manipulating search terms to acquire web traffic and users. Some calculations estimate that 2 to 7 million potential Firefox users per year are diverted to these fraudulent sites. This is especially offensive because these actors are trading on the value of a brand built by the community and ripping off users in the process.
The Ugly. These cases involve a clear intent to deceive, manipulate and steal from users in a highly organized and syndicated fashion. They’re a form of fraud, and frequently include other software products as well, and they seem to make a business out of charging for FOSS code and shareware. Often the identities of these infringers are intentionally hidden under layers of corporate obfuscation across multiple countries. When we can ascertain their identities, we notify them and first try to resolve it amicably. In response, we generally get the proverbial stiff arm. At times I wonder why we even bother with this step because if you’ve gone through the effort to set up an elaborate scheme to hide your identity and rip people off, why would you just stop if we say “please” and ask nicely. As an added bonus, these sites may also continue to charge the user’s credit card even after the user realizes the deception and cancels the subscription.
For Mozilla, at any given time there are 50 – 70 matters under investigation. Most often we hear about these cases because a community member reported the problem, so thanks to all of you who have sent links about sites you suspect infringe. The more information you provide us when you file the report, the easier it is to evaluate and respond appropriately.
When a trademark owner come across the bad and the ugly, and it can’t reach an accord with the person(s) responsible, legal avenues can be used. This may include legal action or administrative procedures where and when appropriate. For example, if a cease and desist letter does not work, the trademark owner might institute a Uniform Dispute Resolution Policy proceedings at WIPO (World Intellectual Property Organization) to capture an infringing domain name. In some jurisdictions, preliminary injunctions can be used to compel the infringer to stop. Surprisingly, sometimes a court order is not even enough.
These actions are not only expensive and time consuming, but they divert us from our primary purpose. Unfortunately, it’s an area where I foresee continued growth and continued efforts to defend the meaning of the brands. Having the support and help of our community makes our work easier and more worthwhile.
Harvey Anderson is VP and General Counsel of Mozilla Corporation.
Article originally published at hja's blog.