Ask Slashdot: How Should Devs Deal With Trademark Trolls? 99
An anonymous reader writes: I'll start off by admitting that trademark infringement wasn't something that was on my mind when I released my first application. Like many other developers I was concentrating on functionality, errors, and getting the thing published. I did a cursory Google search and search of the app stores to make sure no other apps were using the same name, but that's about the extent of my efforts to avoid trademark infringement. After all, I'm spending hundreds of hours of my own time to make an app that I'm giving away with the hopes to make some ad money or sell paid versions down the road. Hiring a lawyer for advice and help didn't seem like a reasonable expenditure since I'm pretty sure my income per hour of coding was under $1 for the first year or two. Besides, it's something I do on the side because I enjoy coding, not for my main source of income.
My first app was published in early 2010. I followed up with a paid version, then a couple other small apps that perform functions I wanted on my phone. I continue to maintain my apps and offer bug fixes, user support, and the occasional feature request. My income isn't tremendous, but it's steady. Nothing to brag about, but also not something I'd willingly give up.
Earlier this year I got a notice from Google that someone had submitted a takedown request for one of my applications based on a trademark infringement claim." (Read on below for the rest of the story, and the question.)
Google basically told me to "work it out" with the complainant and cautioned that my app could be removed from the store. I reviewed the trademark, did some research, and basically determined that the trademark holder really didn't have a valid claim as far as I could tell. My app's description was using a common word, found in the dictionary, to describe it's functionality. Somehow the trademark holder had managed to secure a trademark for it, but as best I could tell, couldn't legitimately claim infringement when I used that word in a descriptive fashion. Google had no facility for me to rebut the claim, so I ended up trading emails with the trademark holder a few times. From what I could gather, he was trying to bully other developers into not using the term in question in an effort to do some lame attempt at search engine optimization to keep/force his app to the top. I personally found that concept to be ridiculous since Google is still going to add related apps to the search suggestion, even if the term only matches his application name and isn't mentioned in the description of any other app on the market. The fact that he has his picture plastered all over the internet and reminds me of Erlich from Silicon Valley didn't help me respect his claim any more than his refusal to discuss trademark law in favor of repeated demands for me to change the wording of my app's description. I eventually just stopped responding to him and haven't heard anything more since. I suppose I could be served with a lawsuit at any point, but I honestly believe it to be frivolous and I doubt a company of his size would waste the resources or chance a counter-suit.My first app was published in early 2010. I followed up with a paid version, then a couple other small apps that perform functions I wanted on my phone. I continue to maintain my apps and offer bug fixes, user support, and the occasional feature request. My income isn't tremendous, but it's steady. Nothing to brag about, but also not something I'd willingly give up.
Earlier this year I got a notice from Google that someone had submitted a takedown request for one of my applications based on a trademark infringement claim." (Read on below for the rest of the story, and the question.)
I figured that was behind me until I got a notice this afternoon that two of my other applications (free & paid version of the same app) had been removed from the Google store due to a different trademark infringement claim. This time around the trademark holder has a trademark for the name of my application, and I admit that at face value it seems more legit. Again, I've been doing some research and I'm not sure that one can legitimately claim infringement over a trademarked word being used as the name of a product that isn't in the same class. For example, Ford may have a trademark for the name "Raptor" that they use on a pickup truck, but I wouldn't expect them to be able to force me to stop using the name "Raptor" for a fishing lure that I'm selling. This time around I'm in the position of having my applications completely removed from the store and being asked to "work it out" with the trademark holder. I haven't heard back from this one yet, but I'm fully expecting a shakedown of some sort where I'll be asked to pay license fees. The trademark owner in this case is a pretty famous "personality" that is very well known in his market segment (which is not even close to my market segment).
I'm a developer, not a trademark attorney. From what I can gather, the two claims I'm dealing with are not real examples of trademark infringement and are based on the invalid concept that a trademark of a word means that the owner controls that word in all possible contexts. It seems to me that Google is agreeing with that stance and finding in favor of the trademark holder by default, and in this latest case, without any notice to the developer or venue for the developer to respond prior to applications being removed from the store.
I honestly feel like trademark trolls have found a way to game Google's system to screw over developers in hopes of stealing their hard work.
Is anyone else dealing with this or am I just unlucky enough to have 3 out of 4 of my apps pinged for alleged trademark infringement within two months after 5 years of existence on the market? Any advice for the "little guy" here? I can probably afford some advice from a lawyer, and may very well go that route, but I sincerely doubt I could afford defend myself against an actual lawsuit. Frivolous or not. It just doesn't make a lot of sense to throw a lot of money into legal defense when a couple good meetings with a lawyer would could very well wipe out the monthly income for the apps in question.
So what are the terms? (Score:3, Informative)
Nobody can help you unless you tell us what the terms are. Seriously, trademark issues are famously inexact, and being vague doesn't help one bit. It could be either way, honestly.
Should have registered the trademark yourself, that way there would never have been a problem, and if there was already a registrant, change the name of the damn software. I swear for some reason open source developers choose the dumbest names for products.
Re:So what are the terms? (Score:5, Insightful)
It all depends on what the "common English word" is. Apple. Blackberry. Chase. Delta. EvilCorp. Fire. ... You get the idea. (I couldn't resist EvilCorp. Sorry).
Even if he was explicitly clear, there are a few points.
1) None of us are attorneys specializing in trademark law.
2) Even if there are such attorneys here, they would say "But I'm not your attorney until you retain me, so I cannot answer."
3) If the guy is just asking for a word from the description to be removed, fuck it, remove the word. He doesn't have the funds to fight it. When he has the money to pay an attorney to deal with the USPTO, Google and the opposing party, that's when he has something to work with. If it's as weak as he implies, he could potentially get the trademark invalidated and then sue for damages from lost revenue by complying (but not admitting guilt) with the initial C&D in a timely and good faith manner.
That actual trademark attorney may just say at the initial consultation, "This isn't worth my time. File form xyz yourself with the USPTO to get it invalidated, and then go back to Google with it." I've heard lawyers say that plenty of times, when there isn't enough money to be had.
They may even direct him to a group like EFF or ACLU, who would take it on principle, or even another attorney who is already defending other targets of this troll.
As not an attorney, nothing above is to be considered advice of any sort. What follows is.
Contact an attorney. Get the free or few hundred dollar consult.
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We need a
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A lawyer can give advice and representation for free. A non-lawyer can not charge for legal representation services though. I am a little fluent in law procedure (which is actually the important part) and have represented many friends and family in court to some extent. I have spoken with DAs and have been in judge's chambers on other people's behalf. A lawyer can obviously offer free legal advice - it comes with consequences potentially but they can. They do pro bono work all the time. Depending on the nat
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I've had a number of nice conversations with attorneys over the years. They range from specific real cases and current news events, to totally hypothetical events. Frequently, you'll hear "it depends on the judge". Different judges have different opinions. One may side with you totally, while another will be annoyed that you even attempt to reference a particular thing. That's the biggest thing a local attorney who knows the judge will give you.
In his case, one judge may like that he had no intention
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'Apple' is a common word, too. But if you call your app 'Apple Mail', you are clearly violating trademar law and with good reason.
This is why we have to know the terms, it may not be a troll at all.
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'Apple' is a common word, too. But if you call your app 'Apple Mail', you are clearly violating trademar law and with good reason.
This is why we have to know the terms, it may not be a troll at all.
What does a California Design firm's trademark have to do with my USPS aided fruit delivery service?
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What does a California Design firm's trademark have to do with my USPS aided fruit delivery service?
Nothing. But the poster you responded to said "if you call your app 'Apple Mail'", not "if you call your post-office based fruit delivery service 'Apple Mail'".
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I honestly don't understand this post. Welcome to the modern world, intellectual property rights are not all that abstract. There part of your development process. Spend 10 minutes doing a TESS search to make sure your name isn't infringing on copyright. Saying you "don't have time because you're too busy developing" is like saying you don't have time for security or cross-platform testing. Trademarks are a real issue that needs addressing.
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...Spend 10 minutes doing a TESS search to make sure your name isn't infringing on copyright....
Copyright is not trademark. They are two different things.
My free advice is to pay no attention to anybody who knows so little about the field that they don't understand that.
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What, exactly, do you think TESS stands for anyway?
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I neither know nor care. The issue is still not copyright infringement, so AC's point is still valid.
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And my free advice is to pay no attention to an idiot who doesn't know what a TESS search is.
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Nobody can help you unless you tell us what the terms are.
Indeed. Knowing the actual trademarked term is the most important thing. The wording/conditions of the registration is the 2nd most important thing. The 3rd and 4th most important things are what country he lives in, and what country the registrant lives in. None of these are provided. He is calling the registrant a "troll" without providing any justification, he is getting infringement complaints from multiple parties, and he is checking for trademarks using google.com instead of uspto.gov. This is l
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Talk to a lawyer (Score:5, Informative)
Your only real options are to ignore this issue and have your apps disappear, or discuss this with a lawyer who specializes in US trademark law. And bring your wallet if you choose the second option.
Welcome to the world of doing business in the United States of America in the 21st century.
Is it fair? Not really. Is it reasonable? Not really. Is it reality? Yes.
Sorry about that, Chief! But that's the way the law currently works.
(I don't live in or do business in the USA. And I like it that way.)
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You on the other hand clearly have issues.
1. This guy is an App Developer. What makes you think he lives or does business in the US? His only contact with the US may be Google.
2. My experience is that most other countries are not better with it comes to trademark issues. Some have some more leniency with regards to copyright and patents, but trademarks
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In other countries, if you take a case to court and lose, you have to pay the other side's legal fees. That does mean that less frivolous cases go to court.
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Unfortunately this case is not even to the state of courts. His livelihood (or part of it ) is being denied without any court at all so far.
Even in losers pay areas, you still have to front the money and if you run out, are you still going to win? But more interesting might be the value of the app verses the costs of courts. If the app only generates $5k a year income, How do you justify a million or even 50k dollars in defense costs knowing you might lose and possibly have to pay their costs.
It also me
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This person who filed the trademark claim has already pulled the trigger; its too late to play nice.
This guy needs to talk to a lawyer, put his case together, with timeline, go after the trademark squatter, and seize the trademark; remember how well that worked out for the motherfucker who tried to hijack Linux as a trademark?
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Linus had some *very* good lawyers. And substantial financial support.
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(I don't live in or do business in the USA. And I like it that way.)
Not to argue, but if you ever clicked an "I agree to the terms and conditions" box, you'll find that your non-negotiable agreement has a clause that specifies a jurisdiction whose laws govern the non-negotiable "contract"
The state of Delaware is very common in these acceptance agreements. Presumably because their laws recognize a checkbox click as acceptance of a binding contract.
Perhaps this is not exactly doing business in the USA, but the overarching greed of American corporations affects us all.
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Such contracts are simply not valid in most developed nations outside of the US. I could agree to give up my firstborn in a clickwrap agreement, however that doesn't make it legal. Nice try, though. OT: perhaps Google could blacklist apps for just the jurisdictions in which the trademarks are valid.
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So?
They get a default judgement against you in Delaware, then whenever you do business in the US they can legally take your shit. If you don't do business in the US you're not doing business with a fifth of the world's economy, and that's a pretty high price to pay. Granted it's not a higher price to pay then your first-born, but if somebody has a trademark dispute you could get rid of simply by spending $1,500 on a lawyer in Delaware...
Frankly in an economy like the internet economy one world government, w
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clickwrap agreements are illegal in England. It's called coercive contracting and is one half step away from racketeering.
(I am a lawyer. I am not your lawyer. Retain the services of one in your own jurisdiction).
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Not to argue, but if you ever clicked an "I agree to the terms and conditions" box, you'll find that your non-negotiable agreement has a clause that specifies a jurisdiction whose laws govern the non-negotiable "contract"
The state of Delaware is very common in these acceptance agreements. Presumably because their laws recognize a checkbox click as acceptance of a binding contract.
Perhaps this is not exactly doing business in the USA, but the overarching greed of American corporations affects us all.
Delaware has had corporation-friendly laws and taxes for a long time, so many US companies are incorporated there. This makes Delaware their "home" state, even if their only presence is a mail drop at a law firm.
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He has a lot of options. The best one is to register his own trademark. Plus he could use compound names. Remember "Microsoft Windows"?
Register a company name, or whatever, and then just suffix it with the name you want to use. I your app is important enough register the name too.
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Did you ever wonder how Exxon ended up with such a lousy name? They did a world-wide search for the best name they could find that was available everywhere. IIRC someone in one country owned the name Esso, so they couldn't use that name in that country.
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Europe is just as bad, just different. We worked with a client that was working on a... massive. Beyond massive. Rollout of new content based on their IP. We worked on their coordinated app. In spite of a well-paid on retainer legal team that mostly dealt with IP issues (okay, Copyright, not Trademark usually), we still had our app pulled from the Apple Store without notice over a trademark in some stupid European country. (related onl
Lawyer (Score:5, Informative)
Seems like it may be worth your time to hire a lawyer just to write a letter. A letter with the legalese on why your app is not infringing sent to Google and the claiment may just resolve this for you. Very often a consultation is free and in the past on other issues I have been told by a lawyer for free that I don't need a lawyer.
Software Dev =/= Attorney (Score:5, Insightful)
You said it yourself. You are a software dev and not an attorney. Stop trying to play one. While you may have a significant disrespect or distaste for their very expensive profession, when you need one, you need one. IP infringement can be a VERY expensive thing to deal with. Do you have a spare million or so laying around just collecting dust that you don't care about losing? If the answer is no, then talk to an experienced attorney. It will cost you a few hundred to a few thousand to have them review your case and potentially put up a defense, but it's money well spent.
Unfortunately, IP trolls are a fact of life in tech these days. You have better odds of hitting the powerball than doing your own defense and winning though. Stick to what you do best and hire experts at what they do best when these guys come knocking at your door for stupid claims.
Re:Software Dev =/= Attorney (Score:4, Informative)
And it probably would not cost that much.
Most Attorneys charge a couple hundred an hour. For $400-500 you'd have an expert opinion on precisely how good their cases were, how to deal with those cases (paying another $250 for a lawyer's letter might work, for example), and you'd probably get a nice little lesson in registering trademarks and searching the uspto.gov website too.
Now if you're far from the US that could be a hassle, but OTOH if US Law is getting your business thrown out of the Google Play Store then it's kinda important you know what the fuck you're doing, and that means Skyping an American lawyer.
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Sure, just another $250 for a lawyer's letter. Because an app selling for $1 generates the sort of revenue for everybody that they can just throw several hundred dollars away.
Shit, I earn a healthy salary and I think $250 is too much. Lawyers are fucking expensive.
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Or from math. There is more than your C(++) skills ...
What about ? Hello Pascal!
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less than greater than
(slashdot eats these signs even in "plain old text" mode)
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Even if trial by combat became legal once again, it wouldn't be done with surprise sniping. Instead the litigants would have to fight it out at their municipal thunderdome or something.
Its lawyer time (Score:3)
I know you're afraid of the money... but this is why the legal system exists.
You can either personally educate yourself about trademark law, hire a trademark lawyer, consult with a trademark lawyer then inform yourself using their consultation as a baseline, pay the trademark troll, or you can change your name to something else
Those are your options. Google isn't going to get involved because that would take their time and money. They don't want to get involved.
So... you deal with it.
Totally sucks (Score:2)
Now, you are getting screwed, and he's not going to stop because he has rabid lawyers on his side and if he doesn't "defend" his trademark, he's going to lose it.
Is he over-reaching, well as we don't know what products and trademarks are involved, we don't know but it sure sounds like it.
How do you deal with this? Like it or not, lawyers. He's the big dog, and he's after you like a pitbull on a chihuahua. You NEED a lawyer to fight back.
(That really sucks as I don't like lawyers in
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Is he over-reaching, well as we don't know what products and trademarks are involved, we don't know but it sure sounds like it.
Why do you assume that? I know it is in line with most of our pre-conceived biases, but we've been told pretty much nothing about this case. I don't know the original poster, and I have no reason to accept what he's telling me is accurate - or even true.
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I don't know the original poster, and I have no reason to accept what he's telling me is accurate - or even true.
he could not even exist, it could be a machine generated article, and it wouldn't make a difference. people just discuss the content, which happens to be the perspective of this imaginary guy, the perfect internet stranger. whether he's telling the truth or not isn't relevant in the discussion, unless you want that to be the topic.
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Now, you are getting screwed, and he's not going to stop because he has rabid lawyers on his side and if he doesn't "defend" his trademark, he's going to lose it.
But the OP says that the app had been available for 5 years before the trademark infringement claim was made. So either the OP is not infringing because of prior use or the claimant has not been "defending" his trademark.
NewYorkCountryLawyer (Score:4, Insightful)
I can probably afford some advice from a lawyer, and may very well go that route,
I've never worked with him, but I suggest you start with NewYorkCountryLawyer [slashdot.org]. Ray's contact information is on his website, Beckerman Legal. [beckermanlegal.com]
but I sincerely doubt I could afford defend myself against an actual lawsuit.
That's all the more reason to consult an attorney now!
Why are you here? Talk to a lawyer FFS. (Score:2)
Why is this an "ask slashdot"? (Score:5, Insightful)
Why is this an "ask slashdot"? You are asking the wrong people.
https://www.eff.org/pages/lega... [eff.org]
mailto:info@eff.org [mailto]
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verfication of claim, and due diligence (Score:1)
Here are some thoughts, and yes I have been in your situation both as a developer, as a business consultant to other businesses under litigation, threat of lawsuit, threat of fines, both domestically and internationally, etc... yet, there is always an appeal process that one can do themselves as long as you are doing what you are doing "in good faith", "reasonable and prudent", "without intent to harm", and "not willful".
Always be armed with constructive thinking and ethics, and a few maneuvers to fend off
Give us details (Score:2)
You are saying you are using a simple word in the dictionary. Apple is a normal word in the dictionary. Try using it for selling computers, software or music. At least give us enough for an educated opinion - even though
Like all Legal issues, play the game or lose... (Score:2)
Trademarks may stink, but they're the law. If you come up with an app you want to protect in a business segment, the ONLY way to protect your use of that app name in stores and (if you managed to acquire it) the domain name is to get yourself a REGISTERED trademark on it for that market segment. You can do it yourself for a few hundred dollars (US only). Without it, others can make a [poor] copy of your work, legally take your domain name away, have your app removed from stores, and cause all sorts of pr
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Here's what you do... (Score:1)
99.9999% of the time you'll never hear from them again.
Trademarks (Score:2)
It's a fucklot easier to trademark a logo or device (think twin golden arches, the swoosh, the bite, the four colour wavy-pane*) than it is a word. Those devices are immediately recognisable just from their descriptions.
I have two: Blind Lady Justice In A Box, which I used for my civil advocacy, and my old DWE device I used for a line of public domain video collections on DVD. Both of which I have successfully defended in court.
*In case you missed the references: McDonald's, Nike, Apple, Windows
You blast them all over the internet. (Score:1)
Honestly you out full details of the trolls to all forums you can find and air their dirty laundry.
Everyone that protects these scum by not posting their name and address are as scummy as the trademark troll.
Lawyer up, fast. (Score:2)
I am part of a small independent app company as well, and we have been on the opposite side of this issue a couple times. It is just as common, particularly on Android, for low-budget teams (often in third-world countries) to purposely build a confusingly similar product in an attempt to make a few bucks before they get shut down. Honest developers face trolls on both sides.
Half our defense is what steps we've taken to work within our awful, awful system of IP law. Copyrights, trademarks, even a couple pate
I've run into similar trademark issues before (Score:2, Informative)
I work for a tech firm called Dolphin Computing. We sell computers. We were treated by a company called Dolphin Books whose primary business involved publishing books. They had a trademark on the word dolphin for use in publishing and for use in software. When we attempted to register the trademark they threatened to object to the registration. However in the process they proposed a solution that would be agreeable to them. They said if you agree not to use the trademark for anything other than computers we
government issued trademark (Score:2)
I don't see how you could believe you have sufficient legal expertise to use someone else's government issued trademark without their permission.
Go to USPTO and search it first (Score:4, Informative)
Two choices. (Score:1)
Trademark isn't Copyright (Score:2)
There's no such thing as a "trademark takedown". Whatever you were presented with from your hosting company (you said "google" but that's not clear) has no basis in law.
There' s also no copyright "takedown" although companies have created policies that react to "notice of alleged infringement" as if it's a takedown notice.
Still, not enough details to be useful. You need a good lawyer. You also need to tell the hosting company to put your content back up. Trademark violations are resolved in a court, not
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Dealing with trolls (Score:2)
Nothing at all (Score:2)
If the users need the trademark to identify your app, you already lost. Get place 1 on google and quality that distinguishes your program from the others. Then there's nothing left to fear.
Fuck trademarks, patents and other "i thought of something, now you're not allowed to think of it, too" stuff. (This does NOT include copyright, which describes the result of work instead of some thoughts everyone can have)