Last week Canonical sent a cease and desist letter to EFF staffer Micah F Lee asking him to remove the word Ubuntu from the URL as well as removed the Ubuntu logo from the site. Lee responded through an attorney who said that Canonical’s “request were not supported by trademark laws and interferes with protected speech.”
Though Lee was not required, by the law, to remove the logo he removed it.
There was heavy criticism of Canonical from the press and the Open Source community which supposedly forced the company to publicly apologize for the missteps.
While we believed the dust had settled, it did not. The entire episode raised some very serious issues over how companies can abuse the trademark laws to silence critics (though in this case it doesn’t look like Canonical had any malice.)
Lee who was backed by EFF so he had resources to fight back with Canonical and tell them that law is on his side. If there was an individual with no such resources, he would have caved in and shut down the website, even if Canonical had no legal grounds to stop him from doing so.
In a new blog post EFF says that Mark Shuttleworth was wrong on couple of counts when he defended that they need to protect their trademark.
EFF quotes Mark Shuttleworth:
[T]here are a number of trademarks around the Ubuntu name and logo which we are required to “enforce” or risk losing them altogether. … That means: … we actively monitor, mostly using standard services, use of the name and logo [and] we aim to ensure that every use of the name and logo is supported by a “license” or grant of permission.”
EFF while maintains that Shuttleworth did not mean any ill, also argues that he was wrong:
First, Canonical’s trademark “policy” does not and cannot trump the First Amendment. Imagine the impact on free speech if you needed a “grant of permission” from BP, Coca-Cola Amatil, or EFF before using one of their trademarks as part of speech criticizing their conduct. Fortunately, we don’t live in such a world. It is well-settled that the First Amendment protects non-commercial websites—like https://fixubuntu.com—that use trademarks to comment upon corporations and products. Whatever Canonical’s policy, no one needs to seek permission for “every use” of the Ubuntu name and logo.
Which means that anyone is free to criticize Canonical or Ubuntu using their name and logo, contrary to what Shuttleworth said.
The EFF explained why a trademark holder would worry about trademark. Here we have examples of ‘photoshop’ or ‘google‘ the terms which have become verb. However, when Google word was added in a dictionary Google argued that the term should not mean searching the web, instead it should mean searching the web using Google. That was the case where the brand Google was at the risk of dilution. That’s where companies step in to protect their trademark.
Second, Canonical is not “required” to enforce its mark in every instance or risk losing it. The circumstances under which a company could actually lose a trademark—such as abandonment and genericide—are quite limited. Genericide occurs when a trademark becomes the standard term for a type of good (‘zipper’ and ‘escalator’ being two famous examples). This is very rare and would not be a problem for Canonical unless people start saying “Ubuntu” simply to mean “operating system.” Courts also set a very high bar to show abandonment (usually years of total non-use). Importantly, failure to enforce a mark against every potential infringer does not show abandonment.
EFF quoted a court which explained that Shuttleworth and the team don’t have to go running around hunting on the web with its paralegal cannons.
The owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer.
We believe Mark Shuttleworth and Canonical when they say that the company did not intend to act like a trademark bully. This seems to be a case of mindless over-enforcement rather than malice. But this routine over-enforcement of trademark rights is unnecessary and feeds a censorship culture. As Judge Kozinski famously wrote, sometimes trademark holders must be “advised to chill.”
Lost in communication
Canonical needs to re-evaluate its communication. Lately most of the communication coming from Canonical is either hurting the open source community or hurting the image of Canonical.
Neither is good.