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Ask Slashdot: How Should Devs Deal With Trademark Trolls?
An anonymous reader writes: I'll start off by admitting that trademark infringement wasn't something that was on my mind when I released my first application. Like many other developers I was concentrating on functionality, errors, and getting the thing published. I did a cursory Google search and search of the app stores to make sure no other apps were using the same name, but that's about the extent of my efforts to avoid trademark infringement. After all, I'm spending hundreds of hours of my own time to make an app that I'm giving away with the hopes to make some ad money or sell paid versions down the road. Hiring a lawyer for advice and help didn't seem like a reasonable expenditure since I'm pretty sure my income per hour of coding was under $1 for the first year or two. Besides, it's something I do on the side because I enjoy coding, not for my main source of income.
My first app was published in early 2010. I followed up with a paid version, then a couple other small apps that perform functions I wanted on my phone. I continue to maintain my apps and offer bug fixes, user support, and the occasional feature request. My income isn't tremendous, but it's steady. Nothing to brag about, but also not something I'd willingly give up.
Earlier this year I got a notice from Google that someone had submitted a takedown request for one of my applications based on a trademark infringement claim." (Read on below for the rest of the story, and the question.) Google basically told me to "work it out" with the complainant and cautioned that my app could be removed from the store. I reviewed the trademark, did some research, and basically determined that the trademark holder really didn't have a valid claim as far as I could tell. My app's description was using a common word, found in the dictionary, to describe it's functionality. Somehow the trademark holder had managed to secure a trademark for it, but as best I could tell, couldn't legitimately claim infringement when I used that word in a descriptive fashion. Google had no facility for me to rebut the claim, so I ended up trading emails with the trademark holder a few times. From what I could gather, he was trying to bully other developers into not using the term in question in an effort to do some lame attempt at search engine optimization to keep/force his app to the top. I personally found that concept to be ridiculous since Google is still going to add related apps to the search suggestion, even if the term only matches his application name and isn't mentioned in the description of any other app on the market. The fact that he has his picture plastered all over the internet and reminds me of Erlich from Silicon Valley didn't help me respect his claim any more than his refusal to discuss trademark law in favor of repeated demands for me to change the wording of my app's description. I eventually just stopped responding to him and haven't heard anything more since. I suppose I could be served with a lawsuit at any point, but I honestly believe it to be frivolous and I doubt a company of his size would waste the resources or chance a counter-suit.
I figured that was behind me until I got a notice this afternoon that two of my other applications (free & paid version of the same app) had been removed from the Google store due to a different trademark infringement claim. This time around the trademark holder has a trademark for the name of my application, and I admit that at face value it seems more legit. Again, I've been doing some research and I'm not sure that one can legitimately claim infringement over a trademarked word being used as the name of a product that isn't in the same class. For example, Ford may have a trademark for the name "Raptor" that they use on a pickup truck, but I wouldn't expect them to be able to force me to stop using the name "Raptor" for a fishing lure that I'm selling. This time around I'm in the position of having my applications completely removed from the store and being asked to "work it out" with the trademark holder. I haven't heard back from this one yet, but I'm fully expecting a shakedown of some sort where I'll be asked to pay license fees. The trademark owner in this case is a pretty famous "personality" that is very well known in his market segment (which is not even close to my market segment).
I'm a developer, not a trademark attorney. From what I can gather, the two claims I'm dealing with are not real examples of trademark infringement and are based on the invalid concept that a trademark of a word means that the owner controls that word in all possible contexts. It seems to me that Google is agreeing with that stance and finding in favor of the trademark holder by default, and in this latest case, without any notice to the developer or venue for the developer to respond prior to applications being removed from the store.
I honestly feel like trademark trolls have found a way to game Google's system to screw over developers in hopes of stealing their hard work.
Is anyone else dealing with this or am I just unlucky enough to have 3 out of 4 of my apps pinged for alleged trademark infringement within two months after 5 years of existence on the market? Any advice for the "little guy" here? I can probably afford some advice from a lawyer, and may very well go that route, but I sincerely doubt I could afford defend myself against an actual lawsuit. Frivolous or not. It just doesn't make a lot of sense to throw a lot of money into legal defense when a couple good meetings with a lawyer would could very well wipe out the monthly income for the apps in question.
My first app was published in early 2010. I followed up with a paid version, then a couple other small apps that perform functions I wanted on my phone. I continue to maintain my apps and offer bug fixes, user support, and the occasional feature request. My income isn't tremendous, but it's steady. Nothing to brag about, but also not something I'd willingly give up.
Earlier this year I got a notice from Google that someone had submitted a takedown request for one of my applications based on a trademark infringement claim." (Read on below for the rest of the story, and the question.) Google basically told me to "work it out" with the complainant and cautioned that my app could be removed from the store. I reviewed the trademark, did some research, and basically determined that the trademark holder really didn't have a valid claim as far as I could tell. My app's description was using a common word, found in the dictionary, to describe it's functionality. Somehow the trademark holder had managed to secure a trademark for it, but as best I could tell, couldn't legitimately claim infringement when I used that word in a descriptive fashion. Google had no facility for me to rebut the claim, so I ended up trading emails with the trademark holder a few times. From what I could gather, he was trying to bully other developers into not using the term in question in an effort to do some lame attempt at search engine optimization to keep/force his app to the top. I personally found that concept to be ridiculous since Google is still going to add related apps to the search suggestion, even if the term only matches his application name and isn't mentioned in the description of any other app on the market. The fact that he has his picture plastered all over the internet and reminds me of Erlich from Silicon Valley didn't help me respect his claim any more than his refusal to discuss trademark law in favor of repeated demands for me to change the wording of my app's description. I eventually just stopped responding to him and haven't heard anything more since. I suppose I could be served with a lawsuit at any point, but I honestly believe it to be frivolous and I doubt a company of his size would waste the resources or chance a counter-suit.
I figured that was behind me until I got a notice this afternoon that two of my other applications (free & paid version of the same app) had been removed from the Google store due to a different trademark infringement claim. This time around the trademark holder has a trademark for the name of my application, and I admit that at face value it seems more legit. Again, I've been doing some research and I'm not sure that one can legitimately claim infringement over a trademarked word being used as the name of a product that isn't in the same class. For example, Ford may have a trademark for the name "Raptor" that they use on a pickup truck, but I wouldn't expect them to be able to force me to stop using the name "Raptor" for a fishing lure that I'm selling. This time around I'm in the position of having my applications completely removed from the store and being asked to "work it out" with the trademark holder. I haven't heard back from this one yet, but I'm fully expecting a shakedown of some sort where I'll be asked to pay license fees. The trademark owner in this case is a pretty famous "personality" that is very well known in his market segment (which is not even close to my market segment).
I'm a developer, not a trademark attorney. From what I can gather, the two claims I'm dealing with are not real examples of trademark infringement and are based on the invalid concept that a trademark of a word means that the owner controls that word in all possible contexts. It seems to me that Google is agreeing with that stance and finding in favor of the trademark holder by default, and in this latest case, without any notice to the developer or venue for the developer to respond prior to applications being removed from the store.
I honestly feel like trademark trolls have found a way to game Google's system to screw over developers in hopes of stealing their hard work.
Is anyone else dealing with this or am I just unlucky enough to have 3 out of 4 of my apps pinged for alleged trademark infringement within two months after 5 years of existence on the market? Any advice for the "little guy" here? I can probably afford some advice from a lawyer, and may very well go that route, but I sincerely doubt I could afford defend myself against an actual lawsuit. Frivolous or not. It just doesn't make a lot of sense to throw a lot of money into legal defense when a couple good meetings with a lawyer would could very well wipe out the monthly income for the apps in question.
You said it yourself. You are a software dev and not an attorney. Stop trying to play one. While you may have a significant disrespect or distaste for their very expensive profession, when you need one, you need one. IP infringement can be a VERY expensive thing to deal with. Do you have a spare million or so laying around just collecting dust that you don't care about losing? If the answer is no, then talk to an experienced attorney. It will cost you a few hundred to a few thousand to have them review your case and potentially put up a defense, but it's money well spent.
Unfortunately, IP trolls are a fact of life in tech these days. You have better odds of hitting the powerball than doing your own defense and winning though. Stick to what you do best and hire experts at what they do best when these guys come knocking at your door for stupid claims.
"Draw them in with the prospect of gain, take them by confusion." Sun Tzu
I can probably afford some advice from a lawyer, and may very well go that route,
I've never worked with him, but I suggest you start with NewYorkCountryLawyer. Ray's contact information is on his website, Beckerman Legal.
but I sincerely doubt I could afford defend myself against an actual lawsuit.
That's all the more reason to consult an attorney now!
Why is this an "ask slashdot"? You are asking the wrong people.
https://www.eff.org/pages/lega...
mailto:info@eff.org
It all depends on what the "common English word" is. Apple. Blackberry. Chase. Delta. EvilCorp. Fire. ... You get the idea. (I couldn't resist EvilCorp. Sorry).
Even if he was explicitly clear, there are a few points.
1) None of us are attorneys specializing in trademark law.
2) Even if there are such attorneys here, they would say "But I'm not your attorney until you retain me, so I cannot answer."
3) If the guy is just asking for a word from the description to be removed, fuck it, remove the word. He doesn't have the funds to fight it. When he has the money to pay an attorney to deal with the USPTO, Google and the opposing party, that's when he has something to work with. If it's as weak as he implies, he could potentially get the trademark invalidated and then sue for damages from lost revenue by complying (but not admitting guilt) with the initial C&D in a timely and good faith manner.
That actual trademark attorney may just say at the initial consultation, "This isn't worth my time. File form xyz yourself with the USPTO to get it invalidated, and then go back to Google with it." I've heard lawyers say that plenty of times, when there isn't enough money to be had.
They may even direct him to a group like EFF or ACLU, who would take it on principle, or even another attorney who is already defending other targets of this troll.
As not an attorney, nothing above is to be considered advice of any sort. What follows is.
Contact an attorney. Get the free or few hundred dollar consult.
Serious? Seriousness is well above my pay grade.