Hall of Shame: Portakabin Demand the Impossible

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:

Portakabin Trademark Claim

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.

Transparency Report Update

We’re pleased to release our second, biannual transparency report and even more excited to announce a few new additions to the report.

In addition to updates to the data we provided on user information requests and government takedown demands in our inaugural report, our latest report includes:

  • Data about the intellectual property related complaints we received and how we responded.
  • Summary pages for each type of request we received, with notes on trends we’re seeing in the numbers.
  • A Resources page so you have easy access to our relevant policies, WordPress.com support documents, and third party information.
  • A Hall of Shame where we showcase some of the threats to freedom of speech and expression that we see and resist every day.

Our new intellectual property report includes data on both copyright and trademark complaints against our users. Copyright complaints are the most common. We carefully review the copyright takedown notices sent our way, and we’re proud to say that in the first half of 2014, we rejected 10% of copyright notices as abusive. “Abusive” notices are formally complete (including all of the information required by the DMCA), but are directed at fair use of content, material that isn’t copyrightable, or content the complaining party misrepresents ownership of a copyright. Some of these are highlighted in our Hall of Shame. In addition, we rejected 26% of the notice we received because they were incomplete.

We receive and respond to fewer claims of trademark infringement on WordPress.com. In this six month reporting period, we received 122 reports and removed content in response to only 15%.

Looking at trends in our data for government information requests and takedown demands: we saw increased volume across the board. We saw a 194% increase in government takedown demands and a 108% increase in government information requests. For the 2014 reporting period, we complied with 5% of the total takedown demands we received, and 16% of the information requests.

Russia again submitted the most takedown demands (35) of any country. Meanwhile, the United States continues to hold the lead in the number of information requests (17), most of which came in the form of a subpoena.

Information Requests

Information Requests Chart

Takedown Demands

Takedown_Requests_Chart

We received no National Security Requests during the first half of 2014, and remain unsatisfied with the level of detail that we’re allowed to report for our previous reporting period.

For a closer look at the data, check out each report in detail by navigating the menu at the top of the page.

Sorry Ms. Jackson…

Janet Jackson is a fine recording artist, but seems to have employed some overly aggressive lawyers, bent on removing or controlling all references to her name on WordPress.com. Here are a couple of examples of the improper takedown demands we’ve received:

  • Trademark infringement: The mention of Janet Jackson in a post about dinner conversation topic “What would your WWE Smackdown name be?”

“Picture Sacha Baron Cohen in, what else? his movie The Dictator. Elaborate General’s outfit, hat, etc. He walks in flanked by half a dozen sexy female soldiers inspired by the Janet Jackson Rhythm Nation video.”

(Here’s what our user thinks.)

  • Copyright infringement: An image of Ms. Jackson used in a Tim Howard meme:

janet-jackson-tim-howard

We rejected both of these complaints on the grounds of obvious fair use. Though we rejected their demands, we wanted to make sure they got at least a little promotion for their client, so we tried to use as many Janet Jackson song titles as possible (hopefully this doesn’t draw another takedown demand from them…) in our response:

“It seems like you believe the use of the trademark “Janet Jackson” is reserved all for you, but we were hoping you’d be open to some feedback because your attempt to control every use of the mark is pretty nasty. If you read up on nominative use, you’ll discover that it doesn’t really matter that “Janet Jackson” is used on this site. If you believe there are any other alleged infringements, would you mind submitting a notice again via our trademark form?

http://automattic.com/trademark-policy/

So excited to work with you going forward.”

 

Kern’s Kitchen’s Mean-Spirited Censorship Pie

Kern’s Kitchen, the company exclusively behind “the one and only Derby-Pie® chocolate nut pie,” asserted its trademark against 32 bloggers on WordPress.com who had the nerve to title their recipes “Derby Pie.” Between the link to trademark information displayed prominently on their site and the many lawsuits they’ve filed, it’s clear that they take this pie business seriously. They’ve rightfully earned their place in the Hall of Shame as The Most Litigious Dessert in America.

We pushed back as much as possible to keep the posts up, and reached out to each of our bloggers about the issue and suggested alternate recipe names, such as “Kentucky Derby Chocolate Pie” or “Mean-Spirited Censorship Pie.” Our friends at EFF joined in on the fun too and made this entertaining video about the case.

 

Bikram: (Not So) Hot Yoga

Over the years, founder of Bikram Yoga, Bikram Choudhury, has been under considerable public scrutiny for alleged sexual harassment. In what we believe was an attempt to censor critical speech, several different individuals (supposedly) submitted five DMCA notices against a single blog post that touched on these accusations. After we rejected the first four DMCA notices because we had good reason to believe that they were not the rightful authors of the content,  the fifth was submitted by a lawyer claiming to represent Bikram Choudhury. In his notice, he alleged that Mr. Choudhury’s name and photo were used in violation of his copyrights and the law. We rejected the final notice because his name is not copyrightable and we believed that the photo fell under fair use.

Dorra Slimming’s Slim Pickings

After a less than ideal experience with Dorra Slimming, our user took to her blog to post about it. The company sent us a complaint alleging that her post was infringing on the copyright protected Dorra Slimming logo. After looking at the post, the only instance of the logo we could spot was in this photo that our user took:

dorra

Because the photograph supports her criticism, we rejected the claim on the grounds of fair use.

New York, We Don’t Heart This

The New York State Department of Economic Developments holds a trademark over the iconic “I Love NY,” but we never expected them to go after someone using this logo to promote bicycling in their lovely state:

 

cropped-newnewibikenyc

We rejected the claim on the grounds of fair use.

Welcome to our Transparency Report

Automattic’s mission is to democratize publishing, and a fully informed citizenry is the foundation of any functioning democracy. We’ve always aimed to keep our users and the public fully informed about our policies for responding to government requests – and now, more than ever, candor in this area is vitally important.

In keeping with these principles, we’re pleased to release our first transparency report. This initial report summarizes the number of government information requests, takedown demands, and national security requests that we received during the second half of 2013. In addition to giving our users full transparency about the volume of these requests, we also hope that publicly reporting our data will help hold all parties (including us) accountable.

We’ll update this report every six months so that we can compare the volume of requests we receive over time. In future reports, we’ll include information about the volume of copyright takedown requests we receive and process under the DMCA. We’ll also update you on the actions we’re taking on the internet, in the courts, and in Congress, to defend our users and promote a free and open internet. So stay tuned to the “News” tab of the report!

A few highlights of our report:

Information Requests. For the second half of 2013, approximately 0.0001% of the 48 million sites that we host were subject to a government information request. Our policy is to notify you of any information request we receive regarding your account, so that you may challenge the request. The only exception is if we are prohibited by law (not just asked nicely by the police) from making such a notification. We also carefully review all legal requests we receive and actively push back on those that are procedurally deficient, overly-broad, or otherwise improper (i.e., targets non-criminal free speech). In other words, we’ve got your back.

Takedown Demands. Just as importantly, our transparency report includes takedown requests we received from governments around the world. Governments sometimes seek to remove WordPress.com posts that they deem to be prohibited by local laws, such as posts that they judge as defamatory or those that discuss illegal subject matter. We aim to promote freedom of expression around the world, and are also mindful of local laws that might impact that expression. When we receive an order to remove content, we may remove it in only those jurisdictions where it violates local law.

National Security. Finally, we’re reporting the maximum amount of information allowed by law about the number and type(s) of National Security Requests that we received. The disclosures we’re currently allowed to make are limited, and we’re unfortunately not permitted to paint a more truthful picture.

Share and Share Alike

Like all of our policy documentation, our transparency report is released under a Creative Commons Share Alike license (CC BY-SA 2.0) so that other sites can use and build on our work if they’d like.

We hope this report is useful to our users and that its data adds to the important public debate about the proper role of government in monitoring and policing activity on the modern internet.