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Open-source trademarks

May 26, 2006

Kill the father!

The blogospheric lynch mob is out for Tim O'Reilly. His crime? Trademark enforcement.

A few years ago, O'Reilly and his business partner came up with a brilliant name for a new conference: the Web 2.0 Conference. They dutifully did what any companies would do when they coin a distinctive name for a new product: they began the process of registering "Web 2.0" as a trademark for their conference business. The conference turned out to be a great success, and it's become a very lucrative franchise. Now a non-profit Irish organization, IT@Cork, is promoting its own Web 2.0 Conference. Although the re-use of the term was done with complete innocence, it nevertheless clearly infringes on the trademark of O'Reilly and his partner - a valuable trademark - and O'Reilly's partner sent the company a perfunctory cease-and-desist letter in order to protect its property.

If you'd like to receive a similar letter, announce today that you're coming out with an operating system named Vista or a magazine named the New Yorker or a golf tournament named the Masters. Although all three of those are generic, descriptive, commonplace terms, they are also, when applied to a particular type of product, trademarks. In those contexts, they are the property of their owners, and you're not allowed to steal them any more than you're allowed to walk into my house and swipe my cutlery.

But don't tell that to the the mob. "O'Reilly," writes a typical blogger, "has just put himself on the fast track to reputation implosion."

In a nice gesture, O'Reilly's company has apologized to the Irish firm for not speaking with them personally before sending out the cease-and-desist letter, and it's granted them the right to use the term in their conference title this year:

In retrospect, we wish we'd contacted the IT@Cork folks personally and talked over the issue before sending legal correspondence. In fact, it turns out that they asked Tim to speak at the conference, though our Web 2.0 Conference team didn't know that. We've sent a followup letter to Donagh Kiernan, agreeing that IT@Cork can use the Web 2.0 name this year. While we stand by the principle that we need to protect our "Web 2.0" mark from unauthorized use in the context of conferences, we apologize for the way we initially handled the issue with IT@Cork.

That's not enough for the mob, though. To the mob, O'Reilly's response is just "a strong dose of deceptive corporate-speak that is the very antithesis of Web 2.0." The mob, you see, is feeling righteous and betrayed, and it won't be satisfied until it's tasted a bit of Tim O'Reilly's blood. I have no doubt that it will soon get its wish.

UPDATE: Paul Kedrosky, in the course of a sideways voyage up my fundament, dismisses my argument here as "studiously awry." The assumption that there can be only one legitimate view of this case staggers me. Anyway, here's how I responded:

Paul,

I have to sincerely disagree with your characterization of my argument in this case as "studiously awry." I'm not exactly sure what that means, but I don't think it's an apt description. O'Reilly et al. created a conference that they named the Web 2.0 Conference. At that time, hardly anyone was using the term "Web 2.0" - a few scattered references, perhaps, with various meanings - and no one was using it in the way O'Reilly et al. defined it. And certainly no one was using it for a conference - nor had anyone, I'll bet, even thought of using it as a conference name. "Web 2.0" was at that time purely a creation of O'Reilly et al. O'Reilly et al. had every right in the world, therefore, to get a trademark on the use of "Web 2.0" in a conference name, and they went through the prescribed, proper process to get that trademark. In the wake of their coinage, Web 2.0 has become a very popular term - with the meaning O'Reilly et al. came up with. To argue that because they came up with a term that became popular - that filled, apparently, a real need - they should now be somehow prohibited from using it as a trademark for a conference they invented is - wouldn't you grant this? - a little bit perverse. I would think that the fact that their invention has proved so valuable underscores their right to own it as a trademark for their conference. Now, you may disagree with this line of argument, but I fail to see how you can dismiss it out of hand as "studiously awry." I happen to believe strongly in people's right to control their intellectual property. Remember, we wouldn't be having this discussion at all if O'Reilly et al. hadn't created the term - in what has since become its common sense - as well as the conference.

Now, your other argument is that its use as a trademark offends your sensibilities. Clearly, it offends a lot of people's sensibilities. It doesn't happen to offend mine. Does that mean my sensibilities are illegitimate?

I'm sorry, but I think there are two sides to this question.

Nick

UPDATE 2: Cooler heads seem to have prevailed, at least for the moment. Bravo!

Comments

I'm not buying this. As much as I dislike it, the concept of "Web 2.0" is used by a huge range of people to describe a huge range of things*, most of which have nothing to do with Tim O'Reilly. Trademarking "Web 2.0" - or even "Web 2.0 Conference" - is pure enclosure, fencing the commons**.

*Which is one of the reasons I dislike the concept.
**Which, ironically, is another of the reasons I dislike the concept.

Posted by: Phil [TypeKey Profile Page] at May 26, 2006 08:56 AM

What about "companies and products that have the guts to say 'we suck'"?

Shouldn't O'Reilly be praised from the mob for engaging in conversation about its "suckiness", recognizing its failure to notice that Tim had been invited to speak, and doing the right thing at the end?

Posted by: ludo [TypeKey Profile Page] at May 26, 2006 09:15 AM

No, in this case saying "we suck" isn't enough. O'Reilly is going to have to stick himself in the eye with a sharp stick. Then we'll get a post from Steve Rubel saying "I love companies that stick themselves in the eye with a sharp stick."

Posted by: Nick Carr [TypeKey Profile Page] at May 26, 2006 09:24 AM

You have a point, but O'Reilly is in serious danger of "Web 2.0" becoming a Genericized Trademark...

Posted by: Matt at May 26, 2006 09:35 AM

Clearly Web 2.0 has grown beyond the conference, it has come to mean the new way we're using the Internet today - so with that in mind, I think your Vista analogy is too restrictive. I'd rather compare it to somebody coming out with another operating system and actually calling it an "operating system" ...

Posted by: Zoli Erdos [TypeKey Profile Page] at May 26, 2006 10:09 AM

Stop being an apologist for Tim O'Reilly. Web 2.0 has become part of the technology lexicon so for one guy to try to trademark it is ridiculous. If O'Reilly is really smart, he'd realize the true "value" of the phrase "Web 2.0" is the fact people attribute its origins to him (regardless of whether he actually created it), and there is tremendous cache in that. but to put a trademark claim on it is so anti-web 2.0, which according to o'reilly has much to do with community and collaboration.

Posted by: Mark Evans at May 26, 2006 10:34 AM

It's not O'Reilly that's chasing this but CMP, although Tim O'Reilly is taking the heat on the basis that he's supposed to "get it". Whatever "it" is. Something about conversations or whatever.

It might have gone a lot easier for all concerned if CMP, MediaLive and O'Reilly had actually spent some time working out how to go about trademarking something. Waiting until late March 2006 to make an application in the EU on the phrase "Web 2.0" (this is a conference in the RoI, after all) was not sensible. It should be relatively easy to demonstrate that the term is a generic, even for events.

Even in the US, they were confused. The USPTO database clearly shows an application for Web 2.0 being made in late November 2003 as a trademark for events. Yet, the following year, MediaLive was stating that the longer version was the claimed trade or service mark:

"MediaLive International, Web 2.0 Conference, ... and associated design marks and logos are trademarks or service marks owned or used under license by MediaLive International, Inc., and may or may not be registered in the United States and other countries."

Even today, the service mark noted on the conference's website is for Web 2.0 Conference (not just on the phrase Web 2.0). I guess they planned to have Web 2.0 Seminar, Web 2.0 Workshop, Web 2.0 Love-In as follow-ons. Whatever the plan, it looks as though MediaLive (and CMP) went the wrong way about doing it.

Posted by: Chris Edwards at May 26, 2006 10:42 AM

Matt's comment illustrates the kind of lack of understanding of trademark's that's endemic on the web. Use of a trademark outside its original sphere cannot affect its status. I can, for example, set up a company called "Hoover Shoes" without it affecting the status of Hoover's trademark on its name in the sphere of electrical goods. I can't, of course, use the company's registered trademarks (its logos), or act in such a way as to suggest that I'm associated with Hoover.

So O'Reilly can trademark "Web 2.0" in the sphere of conferences, and as long as it defends its trademark within that sphere it can continue to hold it. If I start up a magazine called "Web 2.0", as long as I don't use the same logo or pretend to be an O'Reilly publication, it affects O'Reilly not one bit - and O'Reilly has no claim for trademark infringement against you.

This actually illustrates the banality of the wisdom of crowds. This myth about genericization is repeated again and again across the blogosphere, and yet it's just simply wrong. The Wikipedia entry on trademark genericization, while generally accurate, is deeply confusing to anyone that doesn't know better.

And the Wikipedia "list of generic trademarks" is hilariously poor. It lists numerous trademarks as "generally acknowledged [by who?] to be generic" despite being " in use and... actively enforced by their trademark owners". I would seriously suggest that anyone that's tempted to use "Atari", "Altoid", "Hoover", or "iPod" - all of which Wikipedia lists as genericized - should start saving for their legal fees now.

Posted by: Ian Betteridge at May 26, 2006 10:42 AM

Mark,

As you well know, my official title is "Apologist for Tim O'Reilly." I can't simply stop. Now, you, on the other hand, might want to calm down a little and stop distorting the issue. We're not talking about some big, general trademark for "Web 2.0." We're talking about a trademark over the use of "Web 2.0" in a conference title, and let's remember that (a) this use of the phrase was created by O'Reilly and his team and (b) we wouldn't even be having this discussion if they hadn't created the conference with that title. It was their idea, and it's their property.

Are you suggesting that there should be some kind of ideological test for the granting of trademarks? And who would serve as the judge for ideological purity? The blogosphere?

Nick

Posted by: Nick Carr at May 26, 2006 10:46 AM

Nick - get the facts stright - Ireland isn't the 51st state and there is no trademark, only application for a service mark.

Posted by: Dennis Howlett at May 26, 2006 11:18 AM

Calm down, Dennis. I didn't say Ireland is the 51st state, servicemarks are trademarks (applied to services rather than goods), and you have rights over a claimed trademark while it is in the approval process. (And I believe, anyway, that the mark has in fact been approved - though I'm not sure about that.) If Ireland isn't covered by this trademark, then that's an end to it. Great. I'm arguing for the rule of property law. I don't want these kinds of questions to be adjudicated by mobs. Nick

Posted by: Nick Carr at May 26, 2006 11:44 AM

Nick, you are correct in that 1) companies have property rights and are in their legal right to protect them, and that 2) the blogosphere can become a lynch mob. However, I'd propose that CMP's C&D seems egregious considering the collaborative spirit behind the Web 2.0 movement: open-source, creative copyright, etc. The reason the blogosphere is up in arms is because of the massive irony behind legal strongarming and the Web 2.0 mindset.

Personally, I wouldn't burn the goodwill of my customers in exchange for the rights to exclusively use a buzzword as part of my brand...the revenue potential from the former is, in my mind, far more valuable than the latter.

Posted by: Eric Weaver [TypeKey Profile Page] at May 26, 2006 02:27 PM

Nick - I think you miss my point. Ireland is a soveriegn state within the EU, not part of Greater USA. They do things differently there, the same as they do around the EU. Resolving issues like this start with a bit of civility, not the application of US law and its apparent sledge hammer business practices as though it is globally understood and acceptable.

You are a self apologist for Tim - no problem with that. And in truth, I don't believe he had anything much to do with this.

But his employers most certainly do. And they should know better, especially having operated outside their borders for a number of years.

So please take off the US-centric shades and recognise there is a world outside the USA that doesn't dance to the US business tune. And doesn't take kindly to any suggstion it should be part of its legislative framework.

This is not trivial or, for that matter a troll's statement. It's about what 'we' see as common decency.

Posted by: dahowlett [TypeKey Profile Page] at May 27, 2006 12:33 AM

Nick,

Where do you get the information from that the trademark is for the use of 'Web 2.0' only in a conference *title*?

Tim O'Reilly has repeated this but I don't see that the trademark application is linited to use in a title.

So where does your information come from?

Posted by: David [TypeKey Profile Page] at June 7, 2006 07:15 PM

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