The Mozilla Corporation was established “to support the Mozilla Foundation’s mission to ensure choice and innovation on the Internet by leveraging the economic value of Firefox which has resulted from its growing marketshare. By forming a commercial subsidiary, the revenue-generating activities of the new entity can provide funds to support development, testing, and productization of the various Mozilla open source technologies.” Basically, though its conception was not profit-motivated, Firefox turned out to be such a good and widely-used product that its use could be monetized.  It just made sense to make use of that revenue stream to help support the organization.

Mozilla is a respected and well-known organization. Its model is nontraditional and generative. Its software is open source and free to use, and others are free to distribute and modify them. All the content of its site is copyrighted under a Creative Commons license. Interestingly, most effective restrictions on what one can do with Mozilla’s software stem from Mozilla’s trademark policy. Mozilla is happy to let you do what you want with its software, but there are limitations to how you can talk about and brand what you’ve done.

Mozilla’s trademark policy adheres to the names of its products as well as the symbols used to represent them. The goal of the policy is to make sure uses of their marks are “non-confusing and non-disparaging.” The whole policy is an interesting read, but here are a few examples of some of the rules.

• “Mozilla encourages the use of its trademarks in marketing, fundraising and other publicity-related materials. That includes advertising stating that a person or organization is shipping or selling Mozilla products. Of course, any use of a Mozilla trademark is subject to the overarching requirement that its use be non-confusing. Thus, you can’t say you’re raising money for Mozilla when you’re actually raising it for a Localization Project, say that you’re selling or reviewing the Mozilla Firefox Internet browser when you’re actually reviewing a Community Edition of the Firefox browser, or use the Mozilla logos on the cover of your book or on your product packaging.”
• “Those taking full advantage of the open-source nature of Mozilla’s products and making significant functional changes may not redistribute the fruits of their labor under any Mozilla trademark. For example, it would be inappropriate for them to say “based on Mozilla Firefox”. Instead, in the interest of complete accuracy, they should describe their executables as “based on Mozilla technology”, or “incorporating Mozilla source code.” They should also change the name of the executable so as to reduce the chance that a user of the modified software will be misled into believing it to be a native Mozilla product.”
• “If you want to include all or part of a Mozilla trademark in a domain name, you have to receive written permission from Mozilla. People naturally associate domain names with organizations whose names sound similar. Almost any use of a Mozilla trademark in a domain name is likely to confuse consumers, thus running afoul of the overarching requirement that any use of a Mozilla trademark be non-confusing.”
• “You may make t-shirts, desktop wallpaper, or baseball caps with Mozilla logos on them, though only for yourself and your friends (meaning people from whom you don’t receive anything of value in return). You can’t put the Mozilla logo on anything that you produce commercially — at least not without receiving Mozilla’s permission.”

Mozilla’s use of trademark is somewhat progressive. One characteristic of Mozilla’s trademark policy is that it spends nearly as much time clarifying what uses of its mark are permitted, or ways exceptions can be made to some of the limits Mozilla has, as saying what people cannot do with the marks. From this it can be gleaned that Mozilla did not want its trademark policy to have a chilling effect on the use of its software. People tend to assume the worst when nothing is said about a certain kind of use, so Mozilla makes it very clear what can be done.

The history of Mozilla’s relationship to the RSS feed symbol is interesting. According to the “feed icon guidelines,” the feed icon started as a Mozilla trademark, used in Firefox, but Mozilla has independently given up its trademark on the symbol, putting it out for general use in relation to feeds. Mozilla offers some suggestions for use, but notes that these guidelines “are not legally binding.” Microsoft also uses this symbol in Internet explorer. This development has lead to standardization in this area between web browers.

As these examples show, Mozilla is not interested in preventing the use of their marks as such. Mozilla simply wants to make sure that users have a clear idea of what exactly is associated with Mozilla itself and what is not. Mozilla cannot control the quality of the work of others, so it does not want to risk being associated with shoddy workmanship. Even physically shoddy workmanship, in the case of the Mozilla products reproduced above.

Since Mozilla distributes its products for free, maintaining a reputation for quality is of particular importance. User backlash against a Mozilla software could be quick and conclusive. As this case shows, trademark has a specific and useful role in helping prevent user confusion and helping providers build a reputation for quality. A measured use of trademark benefits users by making it more likely that they will be able to predict the quality of what they use, and benefits providers by allowing them to benefit from the goodwill from the effort they put into creating a quality product – all without hindering competition or innovation.

Image courtesy of http://cssjockey.com.

Since Google.com’s inception in 1998, the search engine has quickly grown to become a part of the everyday vernacular.  A few years ago, both the Merriam-Webster and the Oxford English dictionaries added the term “google” to their official list of English words, as it had become clear that the world-famous brand name was more than just your garden variety “fanciful” trademark.  “Google” is widely used today as a verb, sometimes referring to use of the search engine itself — “Heyo, I googled that guy we met last night…Bad news…” — and other times simply a slang replacement for “to search for” — “I’ve googled all over the house for my shoes and can’t find them anywhere…” This use of “google” with a lowercase “g” has manifested a heap of issues for the company’s lawyers, as its induction into the realm of “generic” terms threatens to loosen their grip on the beloved trademark.

William Fisher’s “Overview of Trademark Law,” explains that “[a] word will be considered generic when, in the minds of a substantial majority of the public, the word denotes a broad genus or type of product and not a specific source or manufacturer.”  It is a phenomenon some have called “genericide,” whereby a trademarked term is legally demoted from “trademark” status.  Genericide has taken the corporate soul out of many former trademarks, most of which we don’t even recognize today as brand names: xerox, thermos, kleenex, rollerblade, band-aid, among countless others.

Many of these companies have taken action to prevent the demise of their trademarks, but to no avail.  An article from the LA Times points out that the lyrics of one of the most famous commercial jingles, the one created by Johnson & Johnson for their brand of sticky bandages known as “Band-Aids” — “I am stuck on Band-Aid brand ’cause Band-Aid’s stuck on me” — includes the word “brand” not just because it’s cute when little kids try to pronounce it: it was also a desperate effort to emphasize that “Band-Aid” is, in fact, a brand.  The same article points out that Xerox Corp. embarked on a similar campaign to reduce the frequency of their trademark “xerox” as used to refer to the act of photocopying.  Google, aware that it might soon fall into the same boat as the others, has begun shooting off C&D letters to websites like WordSpy who appear to be perpetuating Google’s non-brand-specific usage.  Here’s a screenshot of WordSpy’s official definition of the term:

Noteworthy is that this definition, unlike those located in the OED or Merriam-Webster, pushes the generic usage, adding the phrase “particularly by using the Google search engine” as a kind of afterthought.  Originally, no mention of Google (with a capital “G”) existed, until Google’s C&D letter requested that WordSpy remove or modify their definition “to make sure that when people use ‘Google,’ they are referring to the services our company provides and not to Internet searching in general.”  A special note now follows the WordSpy definition: “Note that Google™ is a trademark identifying the search technology and services of Google Technologies Inc.”  Despite their shout-out to the Google trademark, however, the site goes on to offer citations “illustrating the more general sense of the verb.”  What is more, WordSpy includes a slew of other new terms that have been inspired by “google as a verb.”  Some noteables:

“fridge Googling” – pp. Running an Internet search based on some or all of the contents of one’s fridge, looking for a recipe based on those contents.
—fridge Google v.

“googleability” - (goo.gul.uh.BIL.uh.tee) n. The ease with which information about a person can be found on an Internet search engine, particularly Google.  Also: Googleability, googlability, google-ability.
—googleable adj.

“googleverse” – n. 1. The products, services, and technologies belonging to or associated with Google Inc.  2. Web pages, newsgroups, images, and other content indexed by the Google search engine. [Blend of Google and universe]

and my personal favorite,

“googlejuice” – (GOO.gul.joos) n. The presumed quality inherent in a Web site that enables it to appear at or near the top of search engine results, particularly those of the Google search engine. Also: Google-juice, Google juice.

As with the definition of “google” itself, all of the above terms subtly push for genericness, clearly preferring to use the more general phrase “Internet search engine.”  Unfortunately for Google, in the face of this seemingly viral usage of its brand name in everyday speech, its lawyers really have no legal recourse.  Genericide is simply a social phenomenon with legal implications, manifested by a world where widespread communication leads to widespread notoriety.  I suppose today’s internet companies, if they wish to keep hold of their trademarks, ought to be careful what they wish for before dumping millions of dollars into becoming “a household name.”  Google must now struggle under the weight of its own astonishing popularity, or risk witnessing the end of legal protection for one of the world’s most recognizable trademarks.  One might argue that Facebook and Wikipedia are on the same course, though the terms so far have managed to refer only to their websites.  Still, the risk is in sight.  How many times have you said, “Dude, I got NO work done last night.  I couldn’t stop Facebooking,” or, “Seriously, Wikipedia that s***.”  The era of internet verbification has begun.  As a kind of ironic harbinger, Wikipedia itself even features a page devoted to the use of “google as a verb.”  I won’t link you, though.  Just google it.

In the first case, a French court “ruled that Google must refrain from using the trademarks of European resort chain Le Meridien Hotels and Resorts to trigger keyword ads.” The decided that Google was infringing on Le Meredien’s trademark by allowing its rivals to bid on the keywords “Le Meridien” for search results. In another case, “Louis Vuitton previously won a lawsuit… after [Google] allowed retailers selling fake LB wares to buy keywords like ‘Louis Vuitton replicas’ and ‘Louis Vuitton fakes.’”

The Internet has opened up unprecedented new business methods in many areas, but specifically in advertising. One of the primary benefits of online advertising is the ability to target advertisements to users based on specific characteristics. In general, this could be the user’s location or browser history. However, specifically for search engines, they can target advertisements next to the search results based on the search query. Google is famous amongst consumers for its products, such as Gmail or Google search or Google Earth, but its $116 billion market capitalization is based on its incredible ability to effectively operate its profitable advertising system. Through the aforementioned decisions, the French have shown that they are trying to apply outmoded regulatory models to the online world and that these models just aren’t translating well.

The purpose of trademarks is to avoid consumer confusion: use of a trademark “constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods.” If the advertisement used a trademark phrase, that would be trademark infringement. But if a knockoff manufacturer wants to show an advertisement when “Louis Vuitton” is search for, how is that possibly infringement? If I want to buy up all of the inventory for the keyword “Yale” with advertisements for another institution of higher learning 150 miles to the northeast, would that be trademark infringement (if I didn’t use its trademarked name)?

The problem is that courts and governments in general have the ability to restrict innovation without really understanding it. These cases remind me of when Senator Ted Stevens received an iPod as a gift from his daughter and changed his mind about legislation in front of him as chairman of the Senate Commerce Committee. If the French courts had advertised on Google, or at least were more Internet savvy, would they understand how their rulings were so out of touch with online advertising and modern technology? One would think that courts and government agencies like the USPTO would be able to turn to expert analysts, but maybe they aren’t doing so enough or effectively.

To be fair, it’s not just the French. I should really amend my first sentence to say that I feel sorry for governments around the world, but through a series of boneheaded decisions the French have led the charge in proving just how far governments are in over their heads. We’re seeing the same signals that we’ve seen before with other areas of intellectual property such as patents: the old ways of regulation don’t translate well to the online world. Is it reasonable to expect governments to become experts in all areas of technology? Maybe not, but if they’re going to continue to hold such power over progress, we should continue to seek solutions.

After finding out about the trademark history of Monster Cable, it became a bit more difficult to support this position. Some background should be given on Monster first. Monster Cable was founded in 1979 and primarily makes cables for audio products. They’ve expanded into making cables for other products as well, such as gaming consoles, computers, TVs, and cars. Basically, looking at their main site, you get the idea that their primary business comes from cables.  That, and for some reason, they also sell mints.

As a trademark, Monster Cable would most likely fall under the arbitrary/fanciful category since Monster has no relation to the cables themselves. As an arbitrary trademark, Monster would have strong trademark protection. At the same time, the protection arguably would not be so strong outside of cable-related products.

With this in mind, it was a surprise to find out how aggressive Monster has been in protecting its trademark on “Monster”. Monster Cable has over 70 trademarks on the generic word “Monster,” has filed over 190 actions at the PTO, and has pursued 30 lawsuits on trademark infringement. Here’s a list of some of the businesses they’ve pursued, either through lawsuits or through appeals to the PTO:

• “Monster Transmission” – a Florida company that makes automotive parts
• “Junk Food Monster” – A woman that sells tshirts that say “Junk Food Monster” on it to promote good eating habits. Her trademarks on “Crash Monster” and “Pollution Monster” promote similar good habits and have also been appealed. (Image taken from their file at the PTO)
  
• “Monster.com” – Website owned by Monster Worldwide, Inc. that offers employment-searching services.
  
•   “Slim Jim Monster” – Meat-snack sticks from ConAgra Foods.
   
• “Monster Mini Golf” – 18-hole indoor putting greens.
   

Monster Cables has also pursued large companies such as ConAgra Foods (the meat snacks above), Disney (their “Monsters, Inc” movie), and the Boston Red Sox (“Green Monster” food sold in the stadium).

Monster Cables defended its actions by stating that it had to defend its “famous” trademark since it had invested so many resources into developing the goodwill. In an open letter on their website, Monster Cables and its founder Noel Lee listed some of the trademarks that they owned in defense of their aggressive actions. Some of the trademarks were:

• “Monster” – Sporting goods
• “Monster attitude” – clothing such as sweatshirts, jackets, pants, tshirts
• “Monster music” – compact discs

I highly doubt that there was any consumer confusion between Monster meat-snack sticks and Monster cables. Given this, I didn’t expect any of these appeals or lawsuits to be very successful. Thus, it was even more surprising to find that Monster has been fairly successful at getting others to either settle out of court or to abandon their trademark applications. For example, the Discovery Channel’s “Monster Garage” settled and paid licensing fees to use the trademark. Also, of 87 opposition filings at the PTO, 20 eventually abandoned their claims. These abandonments may have been due to financial reasons. Thus, the most alarming aspect of all of this is Monster Cable’s attempts to construct barriers to competition through the control of the generic term “Monster,” and their actual success at doing so. Monster’s actions could cause other companies with legitimate trademarks to circumvent certain words out of fear of lawsuit. This would then raise search costs, since consumers cannot use certain words to find a certain product. This of course runs counter to the purpose of trademark law, which was meant to foster competition and to lower search costs, not raise them. 

However, there’s a silver lining to all of this, I think. The majority of Monster’s success was not from any court ruling, but from out of court settlements. In addition, in lawsuits and applications that persisted through the process, Monster was often forced to drop the case altogether. For example, in the Monster Mini Golf case, Monster Cable eventually gave up and paid the defendant’s legal fees. Furthermore, any lawsuits that Monster tries to pursue on some of their 70 trademarks (such as their trademark on clothing) will most likely not succeed; they’ve probably lost their rights to it through a lack of use. It seems then that the problem is not in trademark law, but rather a more general problem of litigation costs. 

Thus, my original hope of trademark law as being balanced and fair appears to be intact. While there still remains certain issues in litigation costs and with search engine liability in trademarks, monsters are unable to exploit their  trademarks to prevent fair competition in a court of law.