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"IANAL, only an entrepreneur, but this should surprise no one even passingly familiar with trademark law. Failure to enforce your trademark's registration can expose you to claims that your mark is no longer "in use." "

I'm an IP lawyer (though this is not legal advice, of course).

This is absolutely not true in cases of what is known as "nominative use" like exists here.

Here, he is referring to the Tumblr product properly, and referencing their trademark'd product properly. He is not using their trademark to refer to another product, or confusing users about the trademark.

This is pretty much absolutely protected, and there is no real excuse for a C&D.

Fair enough! I'd probably still do it, mostly as a CYA matter. There's little downside and it takes too much time / attention to discern between the cases. If my attorney told me it was a waste of time I probably wouldn't.

Maybe I'm just a jerk. :P

This makes the OP's response all the more unproductive, though. Find an IP lawyer and pay him for an hour or two of his time to draft this response.

It's also unclear what Tumblr's precise complaint was. I'm just assuming it was the domain and only the domain.

" There's little downside and it takes too much time / attention to discern between the cases."

Thank you for so aptly explaining why making fair use an affirmative defense was/is not enough.

Nobody should have to pay an IP attorney 450 an hour (plus whatever retainer they will surely force you to pay to engage) because some large company has decided to be a dick.

Trademarks were created to enable consumers to identify the source of goods. Dilution came later, which the supreme court struck down (requiring actual dilution), and then congress readded in a weaker form (likely dilution).

Dilution was and always has been just a way for companies to snipe at each other and screw little guys through C&D. It has never helped consumers.

Eh, that's pretty pricey! Happy to recommend a good IP attorney who will charge less than that if anyone is looking, without requiring a retainer. :P

As an entrepreneur, I don't want to spend that $450 either, but I especially don't want to have to spend more later. I'm going to send a C&D and stop thinking about it. There's very little downside to sending one but a potentially big downside for not sending one. I'd do this if I were big, medium, or small.

If that makes me a dick, well, I'll cop to it, I guess!

Actually, I'll say personally that I'd first ask them politely via email and follow up with a C&D if they refused, but in a world where there were dozens of such things happening at any given moment, I'd no longer think it worth my time to ask each and everyone personally and just ask my attorneys to handle it. My point was that Tumblr's behavior was not outrageous, IMO.

Alas, I'm obviously in the minority on this.

" My point was that Tumblr's behavior was not outrageous, IMO."

So, I guess we'll agree to disagree. The fact that it may be more commonplace today does not make it less outrageous.

Outrageousness does not depend on how common something is, but society's view of it. To paraphrase an example from another ongoing thread as an example: If every airline starting throwing passengers out of the plane randomly, that doesn't make it less outrageous simply because it happens a lot.

Here, he is referring to the Tumblr product properly, and referencing their trademark'd product properly. He is not using their trademark to refer to another product, or confusing users about the trademark.

Dumb question from not-an-IP-or-any-sort-of-lawyer - which way does the presumption lean? There's nothing here

http://web.archive.org/web/20130603151032/http://istumblrdow...

that straight up says that the product is unaffiliated with tumblr or acknowledging someone else's ownership of the trademark. Also the site seems to make an implied claim about the reliability of tumblr. If you were tumblr, it's probably not going to earn you some sort of even-keeled citizenship award but it seems it's not utterly ridiculous you'd have your lawyers ask the other party to cut that crap out, please.

It's not a presumption, it's a test.

I'm too lazy to look up decisions at this hour to cite legal language, but wikipedia's definition looks correct enough at a glance:

The nominative use test essentially states that one party may use or refer to the trademark of another if:

1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).

2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).

3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.

So let's apply the test: You can't identify the tumblr service without using the tumblr trademark.

Only the minimum necessary to identify tumblr was used; words were used, not the font or symbol.

Nothing on the page suggests sponsorship or association with tumblr

It's not even a close case here.

The fact that Tumblr doesn't like it is completely irrelevant. The whole purpose of nominative fair use is to allow things like competitors to compare their product to yours. If this was a presumption that had to be overcome, Ford could never compare themselves to Toyota in commercials, because they'd just fling trademark lawsuits at each other.

The fact that he is making statements about the reliability of the tumblr service is exactly one of the things nominative use exists to allow.

It is in fact utterly ridiculous. Toyota and Dyson don't threaten Consumer Reports with trademark lawsuits when Consumer Reports makes reliability claims about their cars and vacuums. They don't do it when a guy posts about car troubles on his blog, or even if a guy makes opinion statements about the reliability of Toyota (or Ford or whoever)'s cars in general on his blog. This is because it would be ridiculous. It isn't less ridiculous because Tumblr is popular, or because it's an internet service. He's not even making claims. He is reporting a factual state of reachability to Tumblr from various points on the internet.

If you look, you'll see he's complained about Tumblr and their service reliability on their blog. Given that, it's hard to see this as anything other than Tumblr being pissy at someone with an audience that doesn't like them.

So bear with me for a moment, the wikipedia page lists as a pre-requisite for the test to apply

"Nominative use, also "nominative fair use", is a legal doctrine that provides an affirmative defense to trademark infringement as enunciated by the United States Ninth Circuit,[1] by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own."

It doesn't say 'you can name your product after the other product', not does my poopy layman's understanding of http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcase...

And even if you could, wouldn't it be a lot clearer if you took some steps to actively dispel even the possibility of confusion?

Neither Ford nor Consumer Reports publish an unidentified 'do toyotas break down a lot' magazine or website so this seems somewhat different.

Mind you, I completely agree that tumblr's heavy-handedness about it is completely silly, I'm just trying to understand how it's so obviously legally silly, as well.

Sure, so let's start simple. Wikipedia's definition is not perfect, and you are trying to hang your hat on a technicality that does not exist.

Your argument is about the domain name itself rather than the content. He has not named a product after another product. He does not have to call it "thestatusofvariousphotosharingsites.com". It is okay to name your website "walmartsucks" and talk about how much walmart sucks (though it's not okay to do that and then try to extort money from walmart, as one guy did). His website is about tumblr, the product. he can name it after tumblr, the product, as long as he does so in a way that confuses no one, and satisfies a bunch of other factors. Nobody is visiting his site and thinking "oh shit where are my photos". If there was some possibility of confusion, or if his website directed people to instagram, or any of a few other things (like tumblr was planning on expanding into what google tells me is a pretty competitive "is tumblr down" market), you may have a point. But it doesn't do any of this. It simply gives people the status of tumblr. He makes no money, he offers no non-substantiated facts, he dilutes no trademark. In this way, it isn't even an arguable case like "walmartsucks", because the domain name is literally a description of itself.

Yes, it would be a lot clearer if he added disclaimers, but that's again, completely irrelevant to whether it's necessary or required.

"Neither Ford nor Consumer Reports publish an unidentified 'do toyotas break down a lot' magazine or website so this seems somewhat different."

It isn't. It is, as they say, a "distinction without a difference".

The EFF has a page about this, btw: https://www.eff.org/issues/bloggers/legal/liability/IP

search for "Can I use a trademark in my blog's name or in the title of a blog post?"

and you are trying to hang your hat on a technicality that does not exist.

God, no, I'm just running with the thing and I'm appreciative of you taking the time to respond in detail.

Your argument is about the domain name itself rather than the content.

That's exactly right. That and some woolly idea that that the notion of 'confusion' figures in some important way in trademark law.

So when you brought up 'nominative use' I thought doesn't the whole confusion thing come up? Does it come before or after the test for nominative use?

If there was some possibility of confusion

To me, it seems at least conceivable that that's confusing. Maybe tumblr runs such a service, as a status indicator. It is, as you said, a statement of fact - you know, if you can't get to tumblr, please check istumblrdown and we'll tell you what's going on. So I have a harder time getting my head around the idea that istumblrdown is obviously unaffiliated with tumblr the way walmartsucks isn't affiliated with walmart. The EFF page you linked talks about confusion as well and I think that's, err, the source of my confusion.

> Failure to enforce your trademark's registration can expose you to claims that your mark is no longer "in use."

That's true, but C&Ds are not the only way to enforce a trademark. Tumblr could have granted him a license to use the trademark in exchange for a dollar a year. But they chose to be dicks instead.

Or maybe the recipient just freaked out because he didn't know how to dance to this tune and C&Ds seem like mighty and terrible things to someone who has never received one before?

Sending a C&D is fast, cheap, and requires almost no thought on Tumblr's part. Tumblr is optimizing for how they focus their time and attention, not how they treat folks using their name without permission. Why spend a few thousand dollars of attorney-hours going back and forth with every person who puts "tumblr" in their domain name when you can spend a small fraction of that and just reflexively send a C&D? Next up, freetumblrthemes.com, tumblrscripts.com, tumblrbots.com, themes4tumblr.com, officialtumblrthemes.com, etc.

Tumblr isn't being a dick. They're being prudent. This isn't an area of their business that is important enough to optimize relative to all the other things they might be working on, so you come up with reasonable defaults, delegate to your attorneys, and stop thinking about it.

But, hey, if you get a C&D you now at least know you have Tumblr's attention! Why not be contrite and reply asking for exactly what you propose? There's no downside. Indeed, you now know you're going to receive a prompt and unambiguous answer, whereas if you had asked for permission up front you most likely would've been ignored.

There is, however, plenty of downside to complaining that you received a C&D in public, particularly as a first rather than last resort.

Legal letters breed resentment. I was once threatened by a big business and promised myself never to use their services in the future. If only they had sent an informal email pointing out the error and suggesting a fix, but nope, it was a threatening legal letter through some third party with a short time limit for response. Just makes me angry thinking about it and this is now several years down the line.

You could be right. If you are, Tumblr will be the worse for it and you can feel vindicated. On the other hand, maybe that's a risk Tumblr is willing to take.

Who's to say the cost in attorney dollars and company focus of having dozens or hundreds of one-off conversations or more every month isn't greater than the cost of all this supposed resentment? Who's to say that the opportunity cost of addressing that resentment is too high to justify spending time on it? If you were Tumblr's CEO and believed either of these were true, would you still spend time fiddling with your trademark C&D process?

To be honest, I suspect Tumblr builds up more user "resentment" every time they change the placement of a button on their site than they have from all the C&Ds they've ever sent out.

I've received aggressive, company-and-livelihood threatening C&Ds from companies like Groupon, Facebook, and others of similar heft. Sometimes I complied, sometimes I didn't, and sometimes we reached an agreement. There's no reason to take it personally. Lord knows the other side isn't!

> There's no reason to take it personally. Lord knows the other side isn't!

That people abdicate their humanity whenever the word "business" is attached to what they're doing is pretty well the root of the problem.

Nobody is abdicating their humanity and the only "dehumanizing" thing I see is the implication that some people are.

Let's say you live above a popular bar. On Friday and Saturday nights it gets loud as folks line up to get in and then again as last call approaches. The first dozen times you go down and ask folks to quiet down because it's late and you're trying to slew. Some comply, some don't, and others are happy to comply if you buy them a drink.

Eventually, this becomes tiring and you see it's a poor use of your time even if most people are happy to comply.. You enlist the bar to help and they implement a "no tolerance" policy. If the bouncer can hear you talk you're out of the line and won't be getting in that night.

You are on a first date with someone and go to this bar. You talk too loudly and are told to leave. You're embarrassed and upset that this bar would embarrass you in front of your date. You try to appeal by explaining the situation. "Hey man, cut me a break. This is our first date, I didn't know the rules, and in any case we were barely whispering."

"Look, man, I don't know you. I get lines like that all te time and you're making my job harder than it needs to be right now. Come back tomorrow of you want, but neither you not your date are getting in. I need to be checking IDs right now, not debating you."

I'm sure you can and will nitpick the analogy, but here's my claim: even if you feel outraged at your treatment, even if it ruined your night and your date, nobody in the above scenario "abdicated their humanity," as you put it.

The bar owner is absolutely in the wrong for having set up shop below where people have to sleep without adequate soundproofing for their business. This is an abdication of their humanity. In order to remain in business without the cost of fixing that problem, they have abdicated their humanity a second time by treating their customers like shit.

In the example, people are outside the bar loitering or waiting to get in. How can you soundproof a sidewalk?

> Nobody is abdicating their humanity and the only "dehumanizing" thing I see is the implication that some people are.

Your taking a human relationships issue and deciding it based on narrow cost-benefit analysis is definitely dehumanizing. And that's exactly what you're doing by comparing attorney salaries against the cost of resentment.

Hint: if you have to say, "hey, it's nothing personal, it's just business" after somebody is badly treated, then dehumanization is exactly what's happening. It's obviously personal to the person you're saying that to. What that phrase says is that you've decided to treat them impersonally.

It's not my responsibility that they take it personally any more than it's my responsibility as the apartment owner, bar, or bouncer that the person being ejected from the line is taking it personally. As Tumblr, I have no relationship with the person in question. Why isn't it their responsibility to ask if they might use my name first? Why isn't it the loud-talker's responsibility to know the rules of the road (or sidewalk, as it were) before they hop in line?

A C&D does not have the force of law. If I build a service that piggy backs off another service without their permission, I shouldn't be surprised that their opening remark is a strongly-worded, "We don't know you. We don't have a relationship with you. We don't like that you're doing this. We don't feel the need to explain ourselves to you. Stop it, now."

If we want to talk about empathy and human-to-human interaction, the "human" thing for me to do (IMO) would be to apologize for stepping on that other person's toes and ask what I could do to make it work. The obnoxious thing for me to do would be to stop what I'm doing, set up a milk crate, and start shouting about how this other person is trying to censor me. I don't think it's inhuman to do that, but OTOH I shouldn't be surprised when the other person is suddenly less inclined to make nice.

In this case, I would not be saying the same thing if Tumblr's first move were something that carried legal force, in the same way that I think it'd be inappropriate if the first thing the bar did was call the police and file a noise violation rather than tell the person to leave.

>Why isn't it their responsibility to ask if they might use my name first?

Jesus, listen to yourself, you sound like a freeman on the land.

I have no idea what that phrase means.

My point was that I don't think someone else needs to ask my permission to use the my name or my company's name first, but likewise I don't think they should be surprised (let alone indignant) when I ask them knock it off, politely or not. This is doubly true if they're being a bit cheeky and they know it.

Honestly, if I'm running a site premised on integrating with another service in a particular way without that service's buy-in, I'm going to expect at some point they'll get in touch with me. If I'm doing something I know they won't like, I'm going to expect that contact will come in the form of something between a strongly-worded email and a C&D.

We're talking about a C&D here. This is not some life-ending legal apocalypse. He could simply choose not to respond. He could pay an attorney $100 for an hour of his time if he felt that was too big a risk and learn about nominative use.

I just don't think this rises to the level of moral outrage everyone else seems to think it does. I'm not defending Tumblr, but I don't think what they did was beyond the pale.

http://lmgtfy.com/?q=freeman+on+the+land&l=1

Ok, I'm not engaging with your hypothetical, so I'm just going to answer the relevant stuff.

A) This guy did not "build a service that piggy backs off another". Certainly not more than every other site-monitoring tool, none of which any reasonable site operator objects to. And if they do, there is a technical solution that is pretty simple.

B) The tone of that quote is totally dickish. You might not be surprised to get that, but this guy was surprised, and most people would be. As a fan of Tumblr, he made something for other fans of Tumblr. The proper human response to that is either "Thanks!" or "Thanks, but that's a problem because..." Not some sort of freak-out.

C) Your whole made-up interaction is pure fiction, unrelated to anything anybody has said. Your initial argument was about trademark enforcement, so I have no idea where any sort of "service piggybacking" is coming from.

D) Tumblr were jerks first, so this guy putting up a notice that is mildly jerky is not an unreasonable response.

Also, I just don't get why you're pursuing this so heavily. Given the way you were a) told you were wrong by an expert, b) are getting a lot of push-back on your arguments, and c) are getting downvoted, maybe you should take that a a sign to pause for a while.

You seem to have done some good stuff, but this vigorous defense of callous corporate intimidation is off-putting. Like Dylan said, you should really listen to yourself.

I'm not making a legal argument. I'm explaining why I think Tumblr's response is within the range of responses I'd expect were I the author of the site and why their response doesn't rise to a level that I think deserves unbridled moral outrage. The mechanics of trademark law are one of a few things which set the bounds of this range.

I'm not saying Tumblr's response was the most productive or the most appropriate, either, and I agree with you that Tumblr made a tactical mistake by alienating (at least) this one customer. Who cares? If Tumblr is being stupid they're being stupid and will pay for it by losing users and brand equity. They're not ruining this guy's life. Their C&D didn't have the force of law. It's a sternly worded letter from a company this fellow was annoying, even if Tumblr "were jerks first."

If he wanted to continue running the service he could've nominally pushed back. He decided he didn't want to and HN has, as usual, turned it into a moral outrage and concluded that Tumblr did what they did "because they are dicks." They might be dicks, but I think it's only tangentially related. Most companies would do something similar.

This is speaking as someone who at one point years ago was in a screaming match on the phone with the head of platform policy at Facebook after they deleted a policy-compliant application of mine with ~10MM monthly active users. Without warning. Protip: turns out screaming is also a tactical mistake, even if you were in the right.

Thanks for the reply.

I have not seen unbridled moral outrage. Certainly not from me or the original article. I did not see anybody say that they were ruining this guy's life. Including the guy. After long and deep experience he feels that Tumblr has contempt for their users, and he is now returning the favor.

I think the easy way to resolve the apparent distance between our opinions ("they are acting like dicks" vs "I would expect this") is that current corporate culture often sees it as ok to be dickish towards customers.

I also think the, "Who cares? If Tumblr is being stupid they're being stupid and will pay for it by losing users and brand equity," bit is self-contradictory. I think whole let-the-marketplace-decide thing is morally vacuous; it implies that anything profitable is good. But if you use that as a moral standard, you have to approve of discussions like this because discussing products and companies is how the market decides.

Also, I feel you on Facebook. I practically fell to my knees at a conference begging one of their platform honchos to start some sort of "trusted app" program so we could distinguish an actually useful product from all the viral horseshit. Ah well; now I have another kind of business that is on the "never do that again" list: big bets on other people's platforms.

"Next up, freetumblrthemes.com, tumblrscripts.com, tumblrbots.com, themes4tumblr.com, officialtumblrthemes.com, etc."

And, if experience is any guide, QuantumBlrk.org and any other completely unrelated but blindly automate-able "matches"…

Yes, naturally! I'm glad you're following me.

> Tumblr isn't being a dick. They're being prudent.

I strongly disagree. With any product where you're building a community, you must consider community action with every single action. Randomly threatening your fans is the opposite of prudent.

Further, sending a legal threat letter here is definitely dickish. The guy was trying to be helpful. When people are trying to be nice to you, you have to start out by being nice back.

They could have sent him an equally cheap form letter saying, "Hey, we love you, but we have to protect our trademark. We think your tool is great, and we want you to keep running it. But to do that, we just need you to sign this attached document that says that you agree that Tumblr is our name, and that you agree to be cool when using it. Please sign it and return it to us via email by $date." If the person doesn't reply, then the can send the threat letter.

The reason the guy didn't reply to Tumblr to try to work it out is already linked on the page: he's had enough of them.

>Or maybe the recipient just freaked out because he didn't know how to dance to this tune and C&Ds seem like mighty and terrible things to someone who has never received one before?

No. An actual lawyer has responded to this -- it was not even need to begin with (to protect their copyright).

So no reason to continue defending Tumblr's behavior.

They didn't chose to be dicks at all. For all intents and purposes, most trademark enforcement C&Ds are not just glorified spambots, but indeed have to be. When faced with a typical long list like "freetumblr", "tumblrthemes", "tumblrporn", and so on, a lawyer's time just isn't worth spending money on. Better to just deal with the ones who write back.

This is exactly the same situation that, in reverse, helps people win small claims court cases against multinationals (because a £150 product refund is cheaper than the legal cost to fight the case)

You say they didn't choose to be dicks. And then you describe them choosing to send threat letters to a lot of people because it's more convenient than figuring out who actually deserves them. That part, where they put their convenience over the feelings of people who are fans and users of Tumblr? That's dickish part.

They didn't have to do that. Nobody turned up with a gun and made them to it. They chose it, and they should own that choice.

He's (arguably) infringing, what's stopping him asking for a license? They're not being dicks at all, IMHO; if this is anything like other C&D letters I've seen it's probably very polite and explains in detail why they're asking him not to infringe on the mark.

Also, all the people downvoting jfarmer for providing an accurate and comprehensive explanation of trademark law - get over yourselves.

Except he's not accurate. He's merely repeating what he's heard that is also wrong.

The belief that you can prevent someone from even using your trademark in any way needs to be killed off.

I don't think "you can prevent someone from even using your trademark in any way." In this case, we're talking about a service piggy-backing on top of Tumblr using "tumblr" in the domain name.

I was mostly trying to divorce the actions Tumblr took from the moral outrage in the other comments by showing how what they did was not an EXTREME response, but basically the third-most-mild response after not responding at all and sending a less formal response.

The C&D could have been mildly worded for all we know. In any case, it's most productive to see a C&D as a strongly worded, "We don't like what you're doing. Please stop, now."

One is free to say "No, and here's why we won't" or even not respond at all.

This is speaking as someone who has received a much more serious C&D from Groupon and made it go away by doing nothing more than replying with a similarly-strong message. We can kvetch about the morality of it all day long, but in the mean time I went on doing what I was doing and the istumblrdown.com fellow shut his site down.

You imply as much when you suggest that they must send C&Ds to the guy. They don't. It does not hurt their trademark use. And if your intent was to suggest how they weren't being extreme, you did not make that clear in anyway.

The belief that you have to enforce a trademark to the point where you have to threaten even innocent use of that trademark needs to be shot down. It's an annoying meme that needs to die. Hell, even a lawyer is saying what I'm saying.

Vindicated:

http://istumblrdown.com/retraction/

Can you explain the reason for this though? It seems like the site is talking about the actual website Tumblr, I'm not confused about the brand in question. I'm not well informed from a trademark stance but it seems like as a consumer (and this response page) this site is not confusing the trademark at all. Was it previously using logos/wording saying that it was Tumblr?

Although confusion can figure into a trademark action, it isn't the only thing that can. The rule of thumb is that if someone is using your name you should at least attempt to enforce it, lest someone later try to use that lack of enforcement as evidence your mark is no longer "in use." You can read this as "jfarmer's rule of thumb" if you'd like

Perhaps I feel that Tumblr is meant to be a free place. And after all you can go to <anywebsite>.tumblr.com and to some people who don't know better - that's an official website by Tumblr.

You raise some great points and if they feel the need to protect their brand then I understand. But it was a website to HELP their users.

I appreciate that you're the OP and have the most sensible, measured reply to my comment, which was meant for other commenters on HN and not you. :D

Although I agree with you that the site helped their users overall, it's hard to say how Tumblr thinks of it. For example, they might not like that the domain has "Tumblr" in it but lacks the perceived aesthetic flair of Tumblr. That juxtaposition might cross some (non-legal) threshold for them.

I'm just speculating, obviously. My point is more that inside a company of any size, but especially one that's large enough, there are a whole set of concerns being balanced. If it's too hard to balance they're likely to choose the path of least resistance.

Who knows? I've done some work with software that integrated with Tumblr and my sense is that as an organization Tumblr really values control over all else.

Other companies have different personalities. Facebook is cold, calculating, and absolutely rational. They'll promote the shit out of you if it's advantageous and leave you hanging the second it's not. Google is passive-aggressive. Twitter is afraid of being intermediated.

But, yeah, if I were to describe the quality of Tumblr's personality it would be Mini-Me to Apple's Dr. Evil. What would Apple do if someone had a website called "isappledown.com?" That's what Tumblr would do.

You've gotta know the temperament of the animal you've decided you want to ride.

This is true.

But anyone can get a site at foo.tumblr.com and post anything. So there brand can be attached to absolutely anything.

Are they just supposed to send one to every website that says the word "Tumblr" in it?

It depends on what you mean by "says the word 'Tumblr' in it."

I'd give my attorneys carte blanche to send a C&D to the owner of any service using "tumblr" in their domain name, if that's what you mean. I'd ask them to create a template for me to ok and never think about it again, unless it seemed like they were spending too much money on it or other evidence that they were being overzealous came to my attention.

You are a bully. Do you realize that? Even though a C&D has no direct legal power, it abuses your position of having a nice fat legal fund, and will most certainly lead to stronger charges in any actual legal action.

Well, ok.