Ask HN: Get sued for trademark infringement over Github repo name? | Hacker News Reader

Ask HN: Get sued for trademark infringement over Github repo name?

8 pointsfeross12 comments

A few months ago I built a network security tool with a few friends at a hackathon. We won 1st place and I put the code up on Github under some throwaway name that we came up with while hacking. We didn't bother to check if the name was used by anyone else, because it's just the name of my own personal Github repo, right?

A week later, the developer of an open source project with the same name asked me to remove or rename my repo. He doesn't have a registered trademark, but he's been using the same name for a few years so he claims a "common law" right to it, which seems legit. But, I can't believe that someone would care about the name of someone else's repo.

He messaged me and my friends several more times. We ignored him since we had no intention to turn the code into a real product.

But today, he had an attorney send us this:

"...under the rights afforded to him under 1125(a) of the Lanham Act, Mr. ____ requests that you either rename or remove your project from Github, as well as any other places which use the trademark _____ to describe the project. Having another piece of open source software use this term creates unnecessary confusion in marketplace with Mr. _____'s prior use."

It's not like we can get sued for the name of our Github repo, can we?

Take the past of least resistance. It doesn't sound like you have a dog in the fight, so you should change it.

IANAL - Can he sue you? Anyone can sue anybody, for anything. Whether his claim is legit, or whether or not he would win, there's only one way to find out.

Scary lawyer letter is the first step any attorney would take. It's a shot across the bow. But, at this point, you don't know if that's all they got or not. The only thing worse than the feeling you get when you get a nasty-gram from a lawyer, is the feeling you get when you are named in an lawsuit.

You could do some game theory to figure out how much he might be willing to pay you to change the name, but that assumes he's a rational actor. Which could be a big assumption.

The OP's tone, seems more of a search for clarification on the legal basis, rather than genuine interest in defending the repo.

The legal base (non-existing trademark, so therefore unclear - only based on previous usage) seems foggy and would have to be decided in court. So either you get into an out-of-court agreement, or go to civil court and stand your case.

If there's any interest in keeping the name, you should probably just contact a lawyer and clarify with him.

But if you don't care, to the point where you can just rename the repo and let the other guy have it (which I'm assuming is the whole point of the letter...)

My move would be to keep save your project to a new repo, and just leave and empty readme to keep the name in-use. Even if you don't reply a number of times, that lawyering up (at least to me) looks like a dick scare tactics move...

Change your apps name. Not that big of a deal.

Steve

Sent from my iPhone

> It's not like we can get sued for the name of our Github repo, can we?

Why would you think you can't be sued for the name of your Github repo?

Because I'm not trying to compete with the other project or even release a product. I just want to be able to call my Github repo whatever I want to call it.

All that matters is a likelihood of confusion as to the origin or affiliation of your project. It doesn't matter if your tool competes with or is similar to the other project.

--

15 USC § 1125 (Lanham Act):

(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ...

shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

--

You can't call things whatever you want to call them. That's what trademarks protect against. You can't name your new stuffed animal Microsoft Furry even though Microsoft doesn't make stuffed animals, as it's likely to cause confusion that Microsoft created or sponsored them.

So, let me get this straight. It's legal for me to blog about Microsoft (to rant, complain, commentate, etc.). It's also legal for me to compare my competing product to a Microsoft product on a webpage (2x faster than X, etc.). It's even legal for me to write "microsoft" a million times in a row on an otherwise blank webpage.

But you're saying that it's illegal to both post code on a personal webpage (with authorship clearly marked) AND to include the word "microsoft" somewhere on the page?

Are there people stupid enough to actually mistake this code for Microsoft Windows?

You could include the word "microsoft" somewhere in the page. But not somewhere that might mislead people to think Microsoft created, sponsored, approved of or is affiliated with whatever the code is. Like the project name, for example. By doing so, you benefit from a perceived association that doesn't exist; you're trading on their good name. You have the text of the law right there.

Does maintaining a github repo constitute "commerce"? It certainly doesn't meet the dictionary definition of commerce, "the activity of buying and selling, especially at a large scale".

The legal definition of commerce has little relation to the dictionary definition. A Webster's dictionary is useless in a court room.

The definition of commerce used in the Lanham Act is explicitly "all commerce which may be regulated by Congress", which is extraordinarily broad, as the commerce clause of the Constitution is the basis of probably 90% of laws Congress passes. There doesn't even have to be interstate commerce involved, merely a substantial effect on it -- which is why Congress can regulate policy that affects businesses that engage in interstate commerce, even if the thing they're regulating isn't itself interstate commerce. They also regulate businesses that do not engage in interstate commerce but whose operation has an effect on interstate commerce as a whole.

Suffice it to say, there are lots of ways you can create a piece of software that is not directly sold across state lines but has an effect on commerce, and that subjects it to the Lanham act and all other federal commerce regulations.

Legal definitions are an incredibly murky area because they so often diverge from consensus. Thanks for your explanation. Learned something new today. :)

Thanks for the advice, everyone. Decided to rename the project.

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