oh, some skeezy lawyer found another corporation willing to try to make money. bleh, the destruction of our society comes when we allow the lawyers, the moneychangers, etc, to take control
The duty to enforce a trademark often leads to some pretty dickish moves by companies and the lawyers they employ. The better solution, and something that every in-house lawyer should consider before sending off a c&d, is offering a simple licensing arrangement for $1/year for sites that use a brand's name but actually enhance the brand's business. That way they protect the trademark, reduce negativity, and increase the bottom line for their client.
So confused here. Does IKEA not realize this site's existence will drive/increase sales for them? Why are corporations so incredibly ignorant about what is good for them? I mean if anything IKEA should pay these guys for advertising, or send them free goods and do whatever they can to encourage the site. Instead they decide to shoot themselves in the foot.
Have you DEALT with corporate management?
They usually aren't.
Cory's quite likely likely wrong. IKEAHackers uses IKEA's name, it's not a parody (which would enjoy more leeway in many jurisdiction) and makes money by selling adverts. They even advertose this on their site: http://www.ikeahackers.net/advertise
Yes, they probably just want to cover costs and are huge fans, but they do misuse Ikea's trademarked name.
Nothing “bogus” about their claim.
The duty to enforce only exists where there is the possibility of dilution, confusion or tarnishment (and is grossly overstated even in those cases -- there is no parade of genericized modern, active trademarks anyone can point at that justifies the aggressive C&D policies of major mark owners). There was no possibility here -- Ikeahackers showed people how to hack their Ikea purchases; the use of the mark in this case was totally factual. Trademark does not cover such uses.
There is no parody defense for trademark. You're thinking of copyright.
Trademark, in fact, has no fair use, because it doesn't need one. Trademark only covers uses that are liable to result in confusion about the origin of goods and services. There is no trademark interest in factual uses (a site about hacking Ikea being called "Ikeahackers").
And if you don't affirmatively defend a trademark, which is what it sounds like IKEA was doing here, then you lose control of that trademark. As pointed out above that sometimes leads to actions which seem pretty dickish but which are required for the corporation to maintain control of the trademark. http://tcattorney.typepad.com/ip/2008/11/trademark-monit.html Since Ikeahackers has been around 8 years I would bet that Ikea is taking action now because their 10 year registration period is about to expire.
I'm shocked to see that Jules has a lawyer who advised him to take such a terrible deal.
Sadly the alternative is, they go to trial and win so now Jules is able to make a small amount of money on advertising but owe the Lawyer hundreds of thousands in legal fees.
Chad, the risk of genericization is grossly overstated, and in any event only exists when there is a competing use that leads to confusion, tarnishment or dilution.
Ikeahackers does not dilute, confuse or tarnish. it uses the mark in a factual sense, which is not something trademark holders are entitled to control. A failure to police factual uses of your mark -- even in commercial contexts -- is not dilution, it's just not being a censoring dick.
So crazy, this site clearly helps them sell with tons of ideas about how to adapt their goods. But they have to cease and desist them anyway, because letting them run would set a precedent for allowing others to use their trademark, eventually it would be public.
But this is the lazy solution - they should have just made an agreement with the lad, allowing him to use it for a nominal payment, all rights for the trademark reserved. He posts clearly on his site he has license/permission to use it, and Ikea suffers no risk of losing control of their mark.
There goes my idea for Klenexhacks and Xeroxhacks
No, lava, that's not true. There is no dilution risk in factual uses of a mark. Please see the remarks above before you let Ikea off the hook. The gross overstatement of the risk of genericization from a failure to threaten legal action in a way that stifles free speech is a triumph of trademark lawyers, in that it makes reasonable people say things like "they have to C&D them anyway". It's just not true as a matter of law.
Look at it this way: nearly every unauthorized use of every trademark passes without a C&D. Yet I bet you can't name three modern, active trademarks that have been genericized in law as a result of a failure to enforce. Trademark lawyers get paid by the threat, so the creation of the popular perception that a failure to send out these letters is doom for trademarks is pure self-serving BS.
It doesn't matter what you or I think about the riskj or genericization. If Ikea doesn't affirmatively defend their trademark they can lose rights to it. That is the simple fact of the matter. Maybe that risk is low but if you are Ikea is that a risk you want to run? And given that they let the guy continue using the mark as long as it is a non-commercial use I don't really think the censorship tag applies here.
No that's just absolutely, positively untrue.
Trademark protects you from uses that are misleading, diluting or tarnishing. Any genericization risk (even minute ones) can only arise from a failure to police against those uses.
"Ikeahackers" is a factual use. Trademark confers no right to control factual uses of your mark. Because "Ikeahackers" doesn't violate Ikea's trademark, it can never, ever (ever) (ever) lead to a loss of that mark.
But even if the entire Ikea C-suite and their counsel are deluded into thinking that this is true, they can avoid any risk, no matter how minute, just by sending Ikeahackers an email that says, "We notice you're using our mark. Without prejudice to our rights, we offer you a non-transferrable license to go on doing so."
While I'm not in favor of IKEA's policy and neither do I have anything against the website, the IKEA position seems to me to be legally correct.
The site uses the trademarked name within its own. This is not factual use in text, it's nomenclature and logo. This is exactly what trademarks are supposed to protect. It might be different if the site name was different, and if it merely described itself in text as being a site for people who want to hack IKEA furniture. Then it could just note that IKEA is a trademark of IKEA in the text. But this website uses the protected name directly in its own, with the intention of associating itself with the parent brand.
IKEA's lawyers have no doubt advised management that if they ignore any trademark violation whatsoever, they run the risk of losing their trademark entirely as other commercial interests can then argue that IKEA has chosen not to protect the mark and has allowed it to become generic or public.
Of couse the reasonable, intelligent thing would be for IKEA to specifically permit the site to use their name, since they are only providing IKEA with good publicity and higher sales anyway. That way they aren't ignoring the "violation" they are authorizing it, their trademark is safe, they don't piss anyone off, and everyone is happy.
Jules appears to be a "her" rather than a "him" as mentioned in the article. https://www.facebook.com/ikeahacker
Kleenex, Sheetrock, Scotch tape.
Every one of those trademarks is still standing.
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