Leave No Trace!

Earlier this year, we talked about the dangers of relying on third-party bots to chase down potential copyright infringement, and the ironic circumstances that ensue when the rights holder’s own content becomes a target. It’s a frustrating situation for everyone, but this kind of oversight is no surprise when automation is let off the leash. What’s even more shocking are cases in which this paradoxical level of enforcement is employed by humans, as we recently experienced with Subaru for America.

The car manufacturer is currently sponsoring a nonprofit organization, The Leave No Trace Center for Outdoor Ethics. For the uninitiated, “Leave No Trace” is the concept of enjoying the wilderness responsibly, with an eye towards conservation and preservation of natural beauty. A noble cause to be sure, but two WordPress.com users discovered the hard way that a corporation’s actions can sometimes speak louder than its words.

In the application for The Subaru Leave No Trace Traveling Trainer Program, it’s suggested that, among other things, applicants should be able to generate social media content via creating blogs, posting photos, and creating videos. This is exactly what Sam and Jenna attempted to do when they created this blog as part of their application process.

Surprisingly, however, Subaru was less than thrilled with this harmless use of the brand name, and accused our users of trademark infringement and cybersquatting. Apparently the legal department at Subaru wasn’t aware of their company’s sponsored initiative. Yikes!

We passed along the notice to Sam and Jenna with the understanding that we would not be taking any action against their blog as their content does not constitute trademark infringement. In good faith, though, our bloggers took the high road and removed most instances of ‘Subaru’ from their blog to appease the automaker’s demands.

While Subaru reminded us that it “aggressively protects its trademarks and other intangible assets,” it’s unfortunate in this case that they didn’t maintain that same level of overzealous enthusiasm for our users or the great outdoors.

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.