

Ubuntu shouldn't abuse trademark law to silence critics of its privacy decisions - micahflee
https://micahflee.com/2013/11/canonical-shouldnt-abuse-trademark-law-to-silence-critics-of-its-privacy-decisions/

======
chc
It isn't clear to me that they are using trademark law to silence critics.
IANAL, but based on my understanding of nominative use, I do not see how this
use of the logo qualifies. Let's look at the list of general criteria for
nominative use in the Wikipedia article linked in the OP:

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.

The use of the logo in this case is not necessary to identify Ubuntu. If the
site in question had just used the name "FixUbuntu", it is doubtful Ubuntu
would have cared. But not only do they have this vaguely official-sounding
domain name, they also had _the Ubuntu logo as the most prominent art on the
page_ and did nothing to disclaim the association.

In response to the complaint, the site has dropped the logo and has also added
a disclaimer. I'm betting Ubuntu will be OK with this.

~~~
aktiur
You are right this particular case would not necessary pass the test for
nominative use. But there are other legal protections available, especially in
the case of commentaries or criticisms, that could protect even in the case
where the logo was used.

See section "Commentary and criticism" on the page below

[http://www.dmlp.org/legal-guide/using-trademarks-
others](http://www.dmlp.org/legal-guide/using-trademarks-others)

~~~
chc
Yes, but I don't see how you'd think any of that would apply here. Right from
that page: "you should never festoon your website with a company's logo".

The fact that you are engaged in commentary or criticism does not
automatically protect you from claims of infringement. If this had just been
an entry on a blog, that would be one thing, but instead it was a standalone
website where the only branding was the name "Fix Ubuntu" and the Ubuntu logo,
and no attempt was made to disclaim the association. Surely you can see why
Canonical might be concerned.

(Again, none of this is meant to constitute legal advice — I'm just explaining
why I don't think Canonical was being unreasonable.)

~~~
aktiur
A trademark is a recognizable sign that identifies goods or services from a
particular from those of others. Protection was thus created to make unlawful
any use of the trademark that would be confusing for customers, for example if
you displayed one of your competitors' trademarks on your product - that would
be a trademark infringement[1]

The protection for trademarks is thus much more lax than the one that you have
with copyrights: trademarks are protected only for limited purposes, whereas
the protection is broader for copyrights.

The protection was extended in 1996 to forbid some uses of trademarks that
however would not be confusing to customers. The owner of the trademark is
able to sue someone that use its trademark in such a way for trademark
dilution - and not infringement. However, this dilution statute does not apply
to noncommercial uses of a famous trademark, such as for news reporting,
criticism, commentary, and parody.[2]

As fixubuntu.com doesn't sell any goods or services, there is no trademark
infringement. In addition, as it does not show ads nor link to commercial
websites, a court would most likely recognize it as non-commercial. If it is
still seen as a commercial venture, it would still be protected by the
"commentary or criticism" protection.

The fixubuntu.com website could hardly be said to be "festooned" with the logo
considered it was used only once. But removing it, despite what I said
earlier, was still prudent. Indeed, the problem with trademark law is that
even if you're not infringing or diluting, it is really hard to get a
trademark lawsuit dismissed quickly, and you could easily get dragged in a
long litigation you have the financial situation to fight.

For full disclaimer, IANAL, but I have a strong interest in law, have an
education in French public law (which is VERY different from american law) but
follows regularly the debate on the popehat.com website on free speech related
litigations.

[1]
[http://www.law.cornell.edu/uscode/text/15/1114](http://www.law.cornell.edu/uscode/text/15/1114)
As you can see in the definition of the trademark infringement for registered
trademarks, the use of the trademark has to be in relation with the sale of a
product.

[2]
[http://www.dmlp.org/sites/citmedialaw.org/files/15USC1125.pd...](http://www.dmlp.org/sites/citmedialaw.org/files/15USC1125.pdf)
See (a)(1) for the definition of trademark dilution and (a)(3)(A)(ii) or
(a)(3)(C) for the exceptions for non-commercial use; I think the fixubuntu
case would work for both.

~~~
chc
> _As fixubuntu.com doesn 't sell any goods or services, there is no trademark
> infringement._

If this rule actually existed, anyone could set up an Apple-branded site
dedicated to ranting about Jewish conspiracies. Do you actually believe that
sort of false endorsement would fly?

~~~
aktiur
_> If this rule actually existed_

I gave the link to the specific federal statutes oO

As for the case you're bringing, the criterion would be: it the website tyring
to get people to believe it is actually endorsed by Apple to injure its
reputation? In this case it is criminal impersonation, which is a usually a
state _criminal_ offense unrelated to trademark law.

Otherwise, if it's only criticizing the participation of Apple in a jewish
conspiracy, to use your example, it is pretty safe on the trademark front (and
even more if the webmaster was careful not to show ads or to link to a
commercial website).

However, depending on the actual content of the website, it could still
constitute defamation and Apple could thus sue, but again not in relation with
its trademark.

------
aragot
I sympathize with better default privacy settings too, however you must note
that they didn't ask you to remove all references to Ubuntu: They only ask you
to remove the logo and the domain name. You can understand they need to make
it clear in the cinsumer's mind what belongs to the official sphere of Ubuntu
and what doesn't. Also, before saying they're using it against privacy, we
should check whether they've asked to take down similar domains with no
correlation to criticism or privacy, and they answer is probably yes.

As kcorbitt says, the trademark law requires ongoing enforcement or the owner
will lose the legitimity. Have you checked whether they'd let you keep talking
about Ubuntu? IANAL, but wouldn't it be correct to keep a website named "Fix
Ubuntu" in a domain name such as privacywatch.com? This way they keep the
integrity of the brand for the consumers and you stay in the ecosystem.

------
kcorbitt
While I sympathize with your situation my understanding of trademark law is
that it's a sort of "use it or lose it" proposition. If they can't demonstrate
that they're making an effort to police their trademark then it can become
generic and they lose all exclusive rights to it. I think the best solution
here would be for you to choose another domain name.

[http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...](http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm#genericity)

~~~
moocowduckquack
It is commentary though, not imitation. You are allowed to comment on things
by name. If Shell, for instance sued shelloutsounds.org for the domain, I do
not think they would have much of a case and the same applies here. If
fixubuntu is using the word 'ubuntu' to mean the company Ubuntu, then the
other word is obviously 'fix' and you would be hard pressed to argue that it
isn't simply a critical statement rather than an infringing brand.

~~~
ewzimm
They say they are happy to have the commentary, but their policy states that
you cannot use ubuntu in a domain name or the ubuntu logo without permission.
This applies to everyone.

~~~
benologist
Ubuntu may not have the right to dictate usage of their name in a domain -
see: paypalsucks.org, microsoftsucks.org, ebaysucks.com, etc.

~~~
ewzimm
I've checked the requirements for dictating name usage:
[https://en.wikipedia.org/wiki/Uniform_Domain-Name_Dispute-
Re...](https://en.wikipedia.org/wiki/Uniform_Domain-Name_Dispute-
Resolution_Policy)

 _A complainant in a UDRP proceeding must establish three elements to
succeed:_

 _The domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights;_

 _The registrant does not have any rights or legitimate interests in the
domain name; and_

 _The registrant registered the domain name and is using it in "bad faith"._

 _In a UDRP proceeding, a panel will consider several non-exclusive factors to
assess bad faith, such as:_

 _Whether the registrant registered the domain name primarily for the purpose
of selling, renting, or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark;_

 _Whether the registrant registered the domain name to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name, if the domain name owner has engaged in a pattern of such
conduct; and_

 _Whether the registrant registered the domain name primarily for the purpose
of disrupting the business of a competitor; or Whether by using the domain
name, the registrant has intentionally attempted to attract, for commercial
gain, internet users to the registrant 's website, by creating a likelihood of
confusion with the complainant's mark._

In this case, I don't think that bad faith could be established, so Canonical
may have to adjust their policy to reflect certain use cases in domain names
to be completely accurate.

------
NateDad
Sensationalist BS. Canonical isn't trying to silence anyone. They have _the
same information_ on AskUbuntu.com, a site directly supported by paid
Canonical employees.

[http://askubuntu.com/questions/192269/how-can-i-remove-
amazo...](http://askubuntu.com/questions/192269/how-can-i-remove-amazon-
search-results-from-the-dash-or-disable-the-feature)

------
alextingle
None of these settings are relevant to 12.04, are they?

~~~
micahflee
Is 12.04 pre-Unity and Amazon ads? These start when the ads started.

~~~
alextingle
Hmmm. There are music & video search tabs in my (12.04) dock that do seem to
search out online. The music purchase links go to
[http://one.ubuntu.com](http://one.ubuntu.com) though. The video searches seem
to go to BBC iPlayer & YouTube.

Your settings tweaks don't work on 12.04 - any idea how I would go about
disabling this?

(The settings schema "com.canonical.Unity.Lenses" doesn't exist on my system.)

