Trademarks are important. They allow businesses to build up value in their brands, and give us the ability to distinguish between competitors in crowded marketplaces. In theory, they are necessary to make sure that people are getting the products or services at the standard which they expect. Naturally, this system requires a means of legal enforcement for situations where a mark is used in a manner that causes confusion for consumers.
However, just as ‘apple’ is still a kind of fruit, and ‘Amazon’ is still the name of a rainforest, a trademark registration does not give the holder the power to control every use of that mark. Protection under trademark law only applies in specific circumstances – something that is vital in order to protect freedom of speech.
Sadly, there are many instances where companies and law firms scour the web to aggressively target any mentions of their trademarks that exist, whatever form they may take. This is something we have seen happen previously on WordPress.com with Janet Jackson.
Recently, we received another such claim of trademark infringement, this time regarding the WordPress.com site portacabincabins.wordpress.com.
In the claim, Portakabin Limited asserted that they had already been in contact with the owner of the site, which appeared to have resulted in its subsequent deletion.
This is what it currently looks like:
This is a standard page that is displayed when a user deletes their site, and it prevents any other users from being able to use that URL in the future. However, having had the site successfully removed, Portakabin still weren’t happy. In their notice to us, they demanded that we disable access to the holding page URL completely. To illustrate their point, they attached a scanned copy of a print-out of the above screenshot. (Why is it that lawyers insist on doing that by the way?)
We don’t believe that trademark holders automatically gain a right to every subdomain related to their brand on the Internet. Despite there being no actual content on the page, Portakabin were determined to prevent any reference to their trademark being made, including in the actual URL itself.
In this case, there is clearly no infringement from a page that indicates a site is not accessible. Even if the deletion notice was to be removed, or replaced with a 404 Not Found response, there would be no way to prevent users from getting to that page by typing the URL into the address bar.
Sorry Portakabin. For demanding the impossible, you’ve made it into our Hall of Shame.