Trademark Law Does Not Require Companies To Tirelessly Censor the Internet

Over the past few days, EFF and one of our staff technologists, the talented Micah Lee, have had an illuminating back and forth with Canonical Ltd over the use of the Ubuntu mark. While we don’t believe that Canonical has acted with malice or intent to censor, its silly invocation of trademark law is disturbing. After all, not everyone has easy recourse to lawyers and the ability to push back.

That matters, because Canonical’s actions reflect a much bigger problem: a pervasive and unfounded belief that if you don’t police every unauthorized use of a trademark you are in danger of losing it. We hope that some clarity on this point might help companies step back from wasteful and censorious trademark enforcement.

First, some background. This particular story begins in 2012, when Canonical made the disappointing and widely criticized decision to integrate Amazon results into searches conducted through Ubuntu’s desktop dash (this meant that a user searching for one of her own files would receive results from Amazon). At the time, we argued that this default setting raised significant privacy concerns. A few weeks ago, Micah published a web site—at https://fixubuntu.com—that provided users with code to disable this privacy-invasive “feature.”

Canonical sent Micah a cease and desist letter asking him remove Ubuntu logo from his site and remove the Ubuntu word from the URL. We responded by letter explaining that Micah’s site was fully protected by the First Amendment. We also told Ubuntu that, although the law did not require it, in the spirit of compromise Micah would add a disclaimer and remove the Ubuntu logo. He did not agree to change his site’s URL – nor did he have to.

After Micah published an account of this dispute at his blog, the story was picked up by ArsTechnica, Wired, and Techdirt. Canonical responded (here, here, and here) explaining that it did not intend to censor Micah—which we accept—and that its actions were only motivated by a desire to protect its marks. Founder Mark Shuttleworth wrote:

[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.

We accept, again, than Shuttleworth meant well. But he’s still 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.

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.1 As one court explained:

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.

Quite simply, the view that a trademark holder must troll the internet and respond to every unauthorized use (or even every infringing use) is a myth. It’s great for lawyers, but irritating and expensive for everyone else. And when done clumsily or maliciously, it chills free expression.

For example, Ars Technica's article about this dispute includes a large graphic with the Ubuntu logo. Will Canonical “lose” this trademark if it doesn’t “enforce” it against Ars Technica? Of course not. Ars Technica’s use is not even arguably infringement. And even if it was, failure to respond to every last act of infringement does not result in abandonment.

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.”

1. See, e.g., Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1181 (9th Cir. 1988); Big Island Candies, Inc. v. Cookie Corner, 244 F. Supp. 2d 1086, 1095 (D. Haw. 2003) (“failure to sue other potential infringers does not constitute abandonment”); Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 766 (C.C.P.A. 1982) (“an owner is not required to act immediately against every possibly infringing use to avoid a holding of abandonment”); Chicago Bears Football Club, Inc. v. 12th Man/Tennessee LLC, 83 U.S.P.Q.2d 1073 (T.T.A.B. 2007) (the fact that the Chicago Bears tolerated fan sites using its marks was not relevant).