Trademarks – the Good, the Bad and the Ugly

On an all too frequent basis, we receive reports of websites selling the Mozilla Firefox browser, using the Mozilla trademarks to promote other products and services, or using modified versions of the Mozilla trademarks. The problem is that these activities are deceptive, harm users, cause consumer confusion, and jeopardize the identity and meaning of the Mozilla brands – not to mention being illegal. The cases seem to fall into three different categories that I’ll nominally call the good, the bad, and the ugly.  When we receive reports or identify problematic activities, we “exercise due diligence, care and prudence”  all of which means we analyze the reports and treat each case differently based on the intent and severity of the matter.

The Good. There’s a category of cases that involve good intentions but improper use of the trademarks. Typically, these folks really support the project, the brand, and the mission, and in their efforts to engage others and share their excitement about the products, they may have used the trademarks in a way that’s improper. In truth, we’re lucky to have this problem because it indicates people care about what we’re doing. This is almost always easily corrected with a phone call or short note. These matters are not troubling in my view, because they’re indicative of a user’s desire to embrace the brands in ways that are relevant and meaningful to them. Maintaining trademark protection (good trademark hygiene) and having supporters embrace the brand should not be mutually exclusive nor inconsistent. Trademark law as it exists today is technically more constraining, but I hope to see it evolve to recognize these complementary concepts. For further perspectives on trademark law, see a recent paper Tiki Dare and I wrote on this topic in the International In-house Counsel Journal.

The Bad. This category involves people who are intentionally trading on the brand for their own benefit. At the core, these cases are based on people or entities misrepresenting themselves as Mozilla. The problem may manifest itself as domain name hijacking, using the marks to promote other products, or manipulating search terms to acquire web traffic and users. Some calculations estimate that 2 to 7 million potential Firefox users per year are diverted to these fraudulent sites. This is especially offensive because these actors are trading on the value of the Firefox brand built by the community and ripping off users in the process.

The Ugly. These cases involve a clear intent to deceive, manipulate and steal from users in a highly organized and syndicated fashion. They’re a form of fraud, and frequently include other software products as well, and they seem to make a business out of charging for FOSS code and shareware. Often the identities of these infringers are intentionally hidden under layers of corporate obfuscation across multiple countries. When we can ascertain their identities, we notify them and first try to resolve it amicably. In response, we generally get the proverbial stiff arm. At times I wonder why we even bother with this step because if you’ve gone through the effort to set up an elaborate scheme to hide your identity and rip people off, why would you just stop if we say “please” and ask nicely. As an added bonus, these sites may also continue to charge the user’s credit card even after the user realizes the deception and cancels the subscription.

Many of you have sent us links about sites you suspect infringe. Thank you. At any given time there are 50 – 70 matters under investigation. Also, we now have a central place for everyone to report such sites. The more information you provide us when you file the report, the easier it is to evaluate and respond appropriately.

When we come across the bad and the ugly, and we can’t reach an accord with the person(s) responsible, we sometimes have to use legal remedies.  This may include legal action or administrative procedures where and when appropriate. For example, if a cease and desist letter does not work, we have instituted UDRP proceedings at WIPO (World Intellectual Property Organization). In some jurisdictions, we have filed and obtained preliminary injunctions to compel the infringer to stop. Surprisingly, sometimes a court order is not even enough. So far, we have been successful in the actions we’ve initiated. Recently we recovered a bunch of domains from a domain hijacker and in other actions, we obtained preliminary injunctions against web site operators engaged in fraudulent practices. In almost all of these cases, a community member reported the problem or it may even have been first reported in the media.

These actions are not only expensive and time consuming, but they divert us from our primary purpose. Unfortunately, it’s an area where I foresee continued growth and continued efforts to defend the meaning of the brands. Having the support and help of our community makes our work easier and more worthwhile.

9 Responses to Trademarks – the Good, the Bad and the Ugly

  1. sassyk says:

    Finally, an intelligent lawyer I can understand and who is rational, working to uphold the spirit of the law vs. the letter. Kudos.

  2. Is there any way you could tell us a bit about some ways that our contact with those in “The Good” category can go well or poorly? I’m curious whether there are ways we can better help guide these people into helping us with the project in ways that will prevent them from ever needing to get a call or a note from your team.

    i.e. Are they ever offended when you contact them? Do they ever express the opinion that our encouragement for them to participate in the community was not clear enough or misleading?

  3. Unsuspected says:

    Do you really have to use one of the most corrupted organizations on the planet, the World Intellectual Property Organization, to resolve these problems? It’s like using the MAFIA to combat crime.

    Your goals are noble, protecting your identity and brand and protecting ignorant users, but collaborating with an organization whose name itself is a contradiction in terms: there isn’t such a thing as Intellectual Property!

    An organization that works against the values that you and your company are so loudly promoting. For shame!

  4. Catherine Brady says:

    Daniel,

    Good questions. Right now we’re looking at our trademark policy and FAQ to see how we can make them more friendly, easier to read, and easier to understand how community members are able to use our marks.

    Those that I’ve contacted who’re fans of Mozilla and/or Firefox have responded right away and have been willing to work with me to make any necessary changes. They clearly want to do the right thing.

  5. Mozinet says:

    Did you receive my emails about the French translation of this post ?

  6. Pingback: about:mozilla — Firefox 3 and 3.5, marketing, trademarks, security, hybrid orgs, community store, Foundation priorities, and more… | Easy Firefox

  7. Sometimes it’s really that simple, isn’t it? I feel a little stupid for not thinking of this myself/earlier, though.

  8. Pingback: Helping Users Avoid Fraud Sites and Get the Real Firefox « hja’s blog

  9. Ronald says:

    If your life was a TV show what would the main story line be? What would be the supporting roles?

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