May 29, 2006
O'Reilly and the "Web 2.0" Trademark
By Eric Goldman
O'Reilly Media is a publisher of technical books. They also operate some technical conferences, including the "O'Reilly Web 2.0 Conference." They are in the process of registering a trademark in the phrase "Web 2.0" for
Arranging and conducting live events, namely, trade shows, expositions and business conferences in various fields, namely, computers, communications, and information technology, and
Organizing and conducting educational conferences, tutorials and workshops in the fields of computers, communication and information technology.
An Irish non-profit enterprise called IT@Cork announced the "it@cork Web 2.0 half day Conference." In response, the corporate parent of O'Reilly [update: this isn't correct--see below] sent a standard bigfoot letter claiming ownership of the phrase "Web 2.0." Once the C&D letter hit the web, a firestorm of controversy erupted, compounded by the fact that O'Reilly's principal, Tim, is on vacation, unreachable, and unable to respond to the controversy himself.
In my opinion, the real lesson here is that if your core customer base subscribes to the "information wants to be free" norm--which, I think, fairly describes many of O'Reilly's customers--then enforcing your trademark rights is a risky proposition. For a taste of how badly customers respond to IP enforcements that violate their norms, see here.
In a sense, I think companies catering to the IWTBF crowd have, by definition, fewer enforceable IP assets than other companies, because some legally enforceable assets simply aren't viable in the court of popular opinion. I think this is particularly true when the trademark is weak (as Marty says, "If you coin and promulgate a term, you can sell it as a buzzword or you can sell it as a brand, but under trademark law, it's virtually impossible to do both."), but I think the advice to tread cautiously applies more generally than that. I'm reminded of the collective guffaw when the original Napster sued to enforce its trademark rights in 2000/2001. It's not that Napster didn't have protectable trademark rights (it did), it was just the irony (and maybe the duplicity/"chutzpah").
But even if a company's customer base is filled with IP maximalists, trademark owners need to remember that sending a cease-and-desist letter has some risk associated with it. The decision to send the letter is not rote, and it should not be based on abstract fears about the hypothetical loss of trademark rights for inadequate policing. Ironically, I recently posted a link to Deborah Wilcox's article on when not to send a trademark cease-and-desist letter; her words seem very apropos.
UPDATE: The NYT story. In it, a representative of IT@Cork says that CMP's backdown illustrates the power of blogs to combat bigfoot letters.
UPDATE 2: Tim O'Reilly's response after his return from vacation. This response raises a number of issues. First and foremost, the relationship between O'Reilly and CMP wasn't clear to me at any point in this process. Second, I'm not comfortable with the idea that O'Reilly is trying to point the finger at CMP. At minimum, it appears that an O'Reilly employee knew what CMP was doing, so presumably a different course of action was possible. But I don't think O'Reilly was that far out of sync with CMP because it appears Tim still thinks that the Web 2.0 mark is worth protecting and that the rights cover Ireland. Finally, I'm not sure about his "shame on the blogosphere" angle--some people absolutely went overboard, but O'Reilly/CMP did make mistakes that the blog pounced on, and O'Reilly's efforts to provide interim info did little to clarify the issue or calm the matter.
UPDATE 3: Marty thinks that O'Reilly/CMP may have committed "self-inflicted genericide."
Posted by Eric at May 29, 2006 08:25 AM | Trademark
Marks are the least odious elements of Intellectual Property. While some people tend to gravitate toward an all-or-nothing conflict (Strict IP versus no-IP), the middle road is often a more sound path. Trademarks, more than any other IP element, walk that middle path.
For instance, the Web 2.0 trademark in question pertains only to conferences. The scope of the Mark is very specific and limited. This is the IP system working correctly.
To say that protection for Marks should not be granted often results from putting emotion over logic. The American IP system, and many others, is broken. Many elements of it (Patent, Copyright) do not work well. They stifle competition, they stifle innovation, and they stifle cultural development. TradeMarks, on the other hand, do not often do this.
Where does the line stop being drawn? No one can use a Mark, so therefore no one can have a unique product. There can be multiple restaurants bearing the Mark McDonald's -- this one selling latin american food, another "american" food, and a third is really a toy store. This the confusion we are talking about at its worse, but the confusion also works in less obvious ways.
It is also important to note that Marks can be lost -- both through the actions of the Mark holder, and through changes in Society. Two instances of this are both the mark Band-Aid and Aspirin. The protection on those marks is much less, or even non-existant, than what it was when the Marks were initially established.
Essentially, it@cork used the favorite weapon of everyone's least favorite patent-fiend -- SCO -- either wittingly or unwittingly. Yes, what happened was a classic example of (F)ear, (U)ncertainty, and (D)oubt -- better known as FUD.
Mr. O'Reilly was correct to be frustrated with the mob-mentality of the so-called "blogosphere." Facts were not checked. Truth was not sought. Knees were jerked.
It is no fun to experience those kinds of reactions. And, with the anonymity of the internet, people who visit such vitriol on their targets do it with much greater venom than they would are use in real life.
Still, I will say that form Cease and Desist letters are often not the best way to deal with an initial contact in these situations. Form letters are generally bad -- they are even worse from attorneys. I'd blame the attorneys for not being on top of the situation, but in reality it would have cost CMP or O'Reilly far too much to ensure that the attorneys were. In the end, the onus is on the corporate clients to make sure their legal departments do things in productive ways. Rely on your attorneys to provide counsel, but if you rely on them to communicate, be prepared for it to be none genteel.
Posted by: John at August 22, 2006 12:35 PM