Trademark | John Palfrey

I am curious to see how long Facebook leaves this app up after this WSJ article. Scrabulous, a Facebook app made by third-party developers, is an obvious knock-off of Scrabble. One might reasonably raise copyright and trademark issues related to it (perhaps the Scrabulous developers could withstand these complaints; query as to Facebook’s willingness to put itself in harm’s way, though, as potentially secondarily liable). Coming our way in the near-future, a new form of Web 2.0-fired dispute: there are very interesting issues brewing related to Facebook’s role as a platform for other applications and its policing function. Interoperability is a great thing, and Facebook has done well to open up its API. But when a controversy strikes over an app that is framed in Facebook, on which developers and investors have invested time and capital, and into which people have mixed their personal information, who decides whether the app stays or goes? The judge and jury are likely to be Facebook employees, at least in the first instance. Jonathan Zittrain has been teaching about this issue of Private Sheriffs for a long time, with more on this topic coming in his forthcoming book, The Future of the Internet — and How to Stop It.

David Hornik, famous as the VC at August Capital who made some of the first true web 2.0 investments, is actually a lawyer. And a good one. Not to mention a Harvard Law School grad. (Who now teaches at a business school.) He has the go-to post on the web 2.0 trademark controversy, in which a conference promoter (CMP) sent a cease-and-desist letter to an Irish non-profit with a plan to hold a conference using the term “web 2.0” in a manner that CMP believed violated their rights. Equally important, to be sure, is Tim O’Reilly’s summation/apology post (CMP works with O’Reilly on the huge conference with the relevant name.) The NYT piece, by Sara Ivry, is also good.

My view: this issue is another example of IP-law-gone-silly. And I agree with David when he writes:

“… I believe Intellectual Property needs to inform business decisions, not dictate them. Entrepreneurs should never take on risks that they don’t understand and appreciate fully. But that is not to say that entrepreneurs should never take on risk — they should just choose to take on that risk after fully exploring its scope. In some cases that risk is Intellectual Property risk (will my ability to enforce my trademark be diminished by my failure to enforce it in this instance?). In other cases that risk is pure business risk (will my long-time supporters turn on me if I enforce my trademark in this instance?). Or perhaps a mixture of the two.

“I am quite certain that had CMP fully appreciated the potential business risk of sending a Cease and Desist letter to it@cork, they would not have done so. More importantly, I am certain that if Tim O’Reilly had had the opportunity to consider and comment upon the risks of such aggressive trademark enforcement by CMP, he would have urged them to think better of it. But, alas, whoever ultimately made the decision to crack down on the use of the ‘Web 2.0’ service mark (I suspect it was a lawyer, not a business person) did not fully consider the ramifications of doing so and the result of that action have reverberated throughout the blogsphere.”

The big distinction here is between having IP rights (separate conversation: debating the merits of whether the scope and duration of the rights are too big) and seeking to enforce them — in every instance — against others who may possibly be infringing them. That’s where business people should call the shots, not the lawyers. The point is not that you shouldn’t have IP rights, nor that you shouldn’t ever enforce them. It’s that there’s an art to know when to press your case and when to use other tools at your disposal to get your way, whatever that might be — or even to make the decision to look the other way, or to give away your rights to embrace the community’s embrace of something to which you have the rights.

As an aside: likewise, what do you think that the PR firm in the Lance Dutson case in Maine would give for a do-over? Or Diebold? Alas, no mulligans in IP law (and related) enforcement matters.