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Amazon trademark controversy: The company’s side, as unofficially presented by Paul Biba—TeleBlog regular and corporate lawyer
February 5, 2008 | 1:10 am
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By David Rothman
Moderator’s note: Experts from many disciplines read the TeleBlog. We don’t want them to pander to the crowd, and in this spirit we’re pleased to play up thoughts from Paul Biba, a corporate lawyer and much-valued TeleBlog regular, who defends Amazon’s trademark-related actions against Kindle News. Thanks, Paul! I’ve replied in a comment. – D.R.
Well, David, I’m really afraid that I disagree with you completely on this. As a corporate lawyer I have more than a little familiarity with trademarks and copyright matters and I think that Amazon was completely right.
As to trademarks, which “Kindle” is, the courts have held over and over again, with no equivocation, that if a trademark owner does not enforce their registrations then the owner will lose the registration and the mark will go into the public domain. There are many examples of this happening. Perhaps the most famous is “aspirin,” which started out as a trademark but the owner didn’t enforce it and so it passed into generic use. This is why you see companies like Disney forcing little mom and pop bakeries to stop using their trademarked symbols.
Nope, Amazon was correct in its actions, and if I had been on Amazon’s payroll I would happily have written the letter—and believe me I have written many similar letters in the past. The public always gets riled up about this—the big guy hitting on the little guy. But if the big guy doesn’t do this, and do it on a consistent basis whether the infringer be large or small, then the big guy loses his trademark just as those who owned these trademarks lost theirs: aspirin, cellophane, nylon, thermos, escalator.
Additional thoughts from moderator: We’d love to hear from other lawyers on the Kindle trademark issue, whatever their opinions (I’ll also be contacting Amazon itself). What’s more, we’re keen on publishing plain-English writings from attorneys on other TeleBlog-relevant matters, especially if they love the DMCA and copyright term extension,to both of which most people in our blog community have been vehemently opposed. Truth-seeking is best served by civil discussion among those with different viewpoints. Meanwhile a reminder: Paul’s his own guy and does not in the least speak for Amazon, nor is he offering legal advice.
Technorati Tags: trademark law,U.S. trademark law
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Comments:
Thanks for your candor, Paul. I continue—respectfully—to disagree:
1. The issue isn’t just legal–it’s also one of customer relations and morality. Amazon might make more money by showing more flexibility here. And speaking of issues, might this be a freedom of the press issue as well? If Kindle News can get in trouble because of its name, how about other independent publications in a similar situation? Later I’ll cite a notable example from IDG.
2. The Kindle isn’t like Aspirin, aspirin, whatever. You don’t need a TOS to use aspirin; you do to be a Kindle affiliate. Affiliates could simply be required to acknowledge publicly that Kindle is a trademark and that they’re not part of Amazon.com.
3. What about Kindleville.com? So you’d send a trademark-related letter off to the guy behind it, Joe Wikert, a Wiley executive?
4. Isn’t Kindleville, and wasn’t Kindle News, operating in the spirit of, say, IDG’s Macworld. Did Macworld, whose parent company is even named Mac Publishing, LLC, need authorization from Apple to start up?
5. I was aware, when I wrote the earlier post, that companies and other organizations must defend their trademarks or risk losing them. In fact, I’m critical of the founder of a certain public domain archive for not being more aggressive in this area. But again, I believe that if independent publications take care to acknowledge Amazon’s trademark, and avoid confusion with Amazon.com, then everyone’s interest will be served.
Will much appreciate your further thoughts!
Thanks,
David The Layman
This analysis was absurd. Now, if Kindle News were selling an ebook reader and calling it “Kindle News” that might cause some trademark confusion and Amazon would be right to go after it. But just because a news site contains the word “Kindle doesn’t” mean it creates confusion, anymore than “Apple News” or “Mac News” would create confusion there. MacNN.Com is not a threat to the Macintosh trademark, and neither was KindleNews.info to Amazon’s trademark.
As for aspirin, that’s just a silly comparison.
First, Aspirin is still a legal trademark in many parts of the world, including Canada. The trademark of aspirin has a very convoluted history since it was actually seized from Bayer by the Allies during WWI.
Second, Bayer lost the trademark to aspirin in large part because it didn’t market its product under that trademark name. Specifically, as you read Learned Hand’s decision, along with the pirating of aspirin, what seems to be decisive in that case is that Bayer marketed Aspirin as a brand name to chemists and physicians, but not to consumers. So chemists and physicians were aware of the trademark, but the term was used generically when those folks turned around and sold to consumers. In fact, Bayer marketing itself frequently used aspirin in a generic term — Hand cites one labeling of “Bayer– Tablets of Aspirin” for example.
So you could imagine that if Amazon started generically referring to ebook readers of all stripes as Kindles and referred to the Sony Kindle vs. the Amazon Kindle that it would clearly be diluting its trademark and establishing “Kindle” as a public domain term referring to an e-book.
This is completely non-analagous to a media use of the trademark to denote that its coverage is related to a specific set of products. If this analysis held, it would pretty much be impossible to do any sort of focused commentary on a trademarked product without permission of the trademark owner.
I’m not a lawyer. Having said that let me say this…
I thought the issue of the use of trademarks in domain names had been at least partially addressed (at least in the USA) by the ACPA (Anti-cybersquatting Consumer Protection Act)which makes it clear that trademark owners could only sue if the use of the trademark in the domain name was being used without a good faith reason for doing so. Many years ago this issue also came up with the whole “walmartsucks.com” case and all the other *sucks.com cases.
If you have a “kindle” web site and are linking to amazons’ Kindle stuff then there may be a problem with the perception of causing customer confusion. Affiliate sites may also have problems resulting from the language of their affiliate agreements.
Trademark law DOES NOT totally preclude the use of a trademark name in every instance. I may not be able to open up my own McDonald’s Restaurant but I can open a McDonald’s Shoes.
Corporations frequently have their lawyers sending out cease and desist kind of letters knowing that most of their targets will not likely have the resources to challenge them and will thus cave in right at the start.
Essentially this is yet another instance of where corporate influence over legislation has trampled the interests of society at large.
Without actually seeing the letter that amazon sent it is not clear at the moment exactly what tack they were taking in this manner.
Time will tell if they go after all the other Kindle community sites that use “kindle” in their domain names.
I understand Mr. Biba’s viewpoint, and he is wrong.
When I talk about Amazon’s ebook reader, and I call it the Kindle, I am not weakening the trademark. The trademark is not weakened until I refer to another manufacturer’s handheld device by that name.
What if the site KindleNews.info was a lumber industry site that discussed various specialty wood products? A site called KindleNews does not weaken Amazon’s trademark unless it discusses another electronic gadget referred to as the Kindle.
The true reason why Amazon’s corporate lawyers went after KindleNews was professional paranoia. The lawyers feared that a future lawsuit might be complicated by the existence of the site. This is paranoia because a plain text reading of trademark law
would
Were I the operator of KindleNews.info, I would fight Amazon. I would register KindleNews as my own trademark.
Now if we eliminate the word “Kindle” from all websites or blogs or Yahoo Groups, then we, the users of this wonderful device, would not be able to find all the good information flowing about this device and thus the “word of mouth” would slow down considerably. I personally think that Amazon is being incredibly stupid to pursue a policy that decreases sales or potential sales. As to saying that their trademark may become diluted down to the cellophane level, how about if I market a device called a “The”, trademark that device and then go after everyone who uses the word “the” in any context. Do you begin to see the absurdity? The Kindle has kindled my interest in reading. Oops, I guess I should not have used the lower case word in that sentence, it may violate the mind of a lawyer somewhere.
As another Kindle news website I just received a letter from Amazon. I will not be shutting my site down. I provide Real Owner Ratings that let you read reviews from only real Kindle owners. It filters out all others. And it gives you a more accurate rating from only Kindle users or owners.
I will continue to provide useful features to Kindle owners and great Kindle news coverage. I have contacted Amazon but have not yet received a response.
I am writing a post on this that will be up shortly.
[...] And thanks to TeleRead from providing coverage that let me see what others were saying (source). [...]