Monday, October 31, 2011

Legos and the UDRP

Each day I receive an email from the WIPO arbitration center listing decisions under the Uniform Domain Name Dispute Resolution Policy, or UDRP.  The UDRP is the policy a domain name registrant agrees to upon registration of a domain name which binds them to arbitration for trademark-type disputes.  WIPO's arbitration center hears the most of these disputes, though a few other venues also handle them.  WIPO hosts an extensive resource center for viewing past decisions, notice about policy changes, statistics and substantive discussion and summary of trends in UDRP panel* decisions.

Over the past two years, I've been amazed (though not surprised) at how often Lego disputes come up.  The company is well known as an aggressive protector of their trademark rights.  A huge blow came in 2010 when the European Court of Justice (Europe's highest court) held that there are no trademark rights in the shape of interconnected toy bricks since the shape is necessary to obtain a technical result.  In other words, functionality is a bar to trademark protection.  The same is true in the US and elsewhere too.  The Supreme Court of Canada reached a similar result with respect to Legos in 2005.  As Techdirt noted a few years ago, the company " has built up a strong fan base, and a great brand, without having to resort to trademark tricks to eliminate competitors."  Remember, we're talking about the shape of the blocks, not the company's trademark rights in the name "Lego."  Which brings us back to the UDRP.

Since 2007, Lego, represented by Melbourne IT Digital Brand Services, has brought 175 UDRP proceedings before WIPO with the vast majority (170) from 2009 to present.  Many of these involve multiple domain names.  Most are highly legitimate claims against PPC ad farms, typosquatters and the like.  Others are just plain stupid: did you really think you could hang on to legobrand.com?  The source identification function of trademark law is well supported in the UDRP decisions, and there's breathing room for criticism, fan pages and other fair uses.  Still, out of the 175 decisions that appear in the search for "Lego" as complainant, Lego lost only one, legoworkshop.com, a site built for a Lego enthusiast's high school project.

174 - 1.  Not too shabby.  Most respondents didn't even reply, and some might have had pretty good arguments if their activities weren't (determined to be) in bad faith, such as legorumors.com.  Other decisions are more questionable.  For example, freelegoporn.com might have had a better chance if it weren't adult-oriented, and more like beer porn, i.e. glorifying cool things built with Legos, not hilarious sexual poses of Lego figures.  At the same time, there shouldn't be anything wrong with some adult humor at Lego's expense.  Indeed, that's what the respondent tried to argue:
"The most important point that I am going to make is the word lego is not what I am using in the domain name. It is LEGOPORN. LEGO is a latin word defined as to study or build. LEGOPORN is the building of comedic stop action animation pornography with dolls and the like. At no point did we even elude that we represented the lego corperation. We have not interest in selling their products and we never used the LEGO mark, as they put it. If you do a search on Google for the word LEGOPORN you will find 37000 hits. We are simply making a location that people can add links for their youtube their are 85 different videos and 844 different videos with the words separated. And they [the Complainant] are right, when that web domain name wasn't taken they had a perfect right to buying the name, but they choose not to. we at P N S enterprises had a perfect right to buy the domain name which we did. And finally this is a website for mature comedic entertainment. It is simply comedy like a southpark, family guy, or simpson T.V. show."
Nevertheless, the panel found in favor of Lego, stating that no one speaks Latin and the meaning would be lost on the vast majority of Internet users.  With the right representation (and spell check, grammar check, a translator, etc.), perhaps a stronger fair use or parody case could have been made rather than the Latin meaning pretext.  The page isn't indexed on the Wayback Machine, so who knows what was really there.  Regardless, there's plenty of Lego porn out there if you're interested - check out this gallery

In other cases, the respondent might have done better by bringing a declaratory judgment action in court or responding to the panel's decision by filing suit.  See UDRP § 4(k).  For example, legocufflinks.com resulted in a transfer, yet a strong argument over rights exhaustion could be made.  The panel didn't go there, however, and gave no credence to the site's disclaimer or the presence of Lego cufflinks being sold... all over the Internet, further relying on hypothetical initial interest confusion.  It reads like a lame and lazy way out of more complicated issues.  Oh well.

I didn't notice any cases involving legitimate resellers of Lego products, although they may simply have permission to use the trademark.  The decisions involving "store" or similar in the domain name tended to either redirect users to other sites or the respondent failed to reply.   In one of the failure to reply decisions, involving shop4lego.com, the panel favorably cites the Oki Data decision which represents the consensus view:
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, § 2.3 (emphasis mine)

Then there's the 11 year old who had to wait for his parents to respond when sent a cease and desist letter over "legosaurusrex.com".  Sorry kid, you lose.  All in all, the UDRP seems to be working as intended, giving legitimate rightsholders a quick and cheap way of resolving domain name disputes.  Some of the borderline cases are under-analyzed, leaving the loser to the expense of appealing in court.  Still, no system can be perfect.  What about a UDRP defense clinic?  I'm sure many attorneys or law students and professors would be interested in representing someone here and there.  However, there could be some sticky ethical issues, and finding a qualified attorney is only a Google away.  Interestingly, udrp.com is registered to a lawyer, not ICANN.

*The UDRP requires that panel resolve all disputes.  As I've noted before, there is often just one panelist.  This leads to slightly uncomfortable statements such as, "the panel [of one] finds it is properly constituted."  However, given the number of proceedings each year (over 2,000 this year so far), this is somewhat understandable since most (or all) of the panelists have other full time responsibilities.

Sunday, October 2, 2011

Book Discussion: The Penguin and The Leviathan

In The Penguin and the Leviathan, Yochai Benkler does a terrific job of synthesizing a wealth of cross-disciplinary research in support of the idea that collaboration isn't just the new competition, it's the driver of progress we've been ignoring for too long.   In many ways, this book felt like The Starfish and the Spider meets The Tipping Point via a trip through the Harvard Business Review.  Which isn't a bad thing at all.  Despite being a first edition, I did notice a bunch of typos.  Anyways, the title derives from the symbol of Linux, Tux the Penguin, and Hobbes' Leviathian.  A more contemporary mashup might be The Penguins' Leviathan as a nod to the equal, if not enhanced, power of new collaborative enterprises over centralized.

Benkler is able to follow his points through many fields of study and even examples like the 2008 Obama campaign don't seem quite so cliched given his mastery of the topic.  I enjoyed the historical references and challenge to the Industrial-era assumption that human motivation is rooted in selfishness.  As the author points out, "[w]e've all known intuitively, that we aren't really selfish and rational all the time."  The references to Adam Smith's Invisible Hand throughout the work made me think of the contrast between Smith's two major works, The Wealth of Nations and The Theory of Moral Sentiments, and this book and Benkler's The Wealth of Networks.  In other words, an academic view and a more (for lack of better word) human one.

The cross-disciplinary inquiry begins with the work of Richard Dawkins' seminal work The Selfish Gene and the history of the debate over whether our cultural predispositions or genes control us.  Ultimately, Benkler remarks that "we are not building a society for genes, but for people" and largely welcomes both approaches. 

Key takeaways for me include the idea that punishment often has the opposite of its intended effect, that businesses must "overcome the mind-set that asymmetric contributions amount to a free ride" and that 'good' and 'cooperative' aren't always synonymous. For the punishment discussion, the author relies on the story of an Israeli kindergarten that began imposing fines on parents who picked up their children late. Perhaps the fine or "punishment" wasn't severe enough but it wound up increasing lateness as parents began to see it as an option, or extension of the usual service. Like many examples in the book, framing and presentation seemed to be the key drivers of human reaction. 

Although Benkler has written extensively about open source software, a lot has changed since his last book in terms of the ubiquity of OSS, the number of participants and the models of participation.   Maybe I'm just looking for someone else to do the work of comparing and analyzing the structure of OSS communities that I should be spending more time exploring but I wanted to see more discussion of the topic. Nevertheless, a number of studies are noted on pages 181-86 while probing the question of why some contributors stay involved when they know that others are being paid for their contributions.  The simple answer is autonomy. The context-specific notion of fairness in those communities isn't enough to crowd out the inclusive nature and common good that everyone is working toward (and benefits from). Perhaps the distributed and faceless nature of the work helps keeps jealous impulse out of the way. 

At one point toward the end, Benkler asks the ultimate question: "The challenge is to find a way to motivate those who are self-interested to cooperate, without losing those who are more socially and intrinsically driven." The book spends a lot of time exploring this Zen koan of collaboration, or how to allow us to be both our individual and social selves at the same time. A few ideas and current implementations come to mind:
  • make features and services opt-in 
    • Facebook, for example, keeps learning the lesson that most users want control. At least, the most vocal users will create that pressure. Less creepiness is good too. Trust trumps trial and error.
  • tweaking recommendation engines
    • doing this objectively without compromising personal data is the billion dollar question
  •  defining group benefits in terms of individual effects on those benefits
    • in political campaigns, letting users interact with progress can be done by giving the option to share their effort (for the selfish, e.g. "I raised $xx toward the goal of $xxx), remain anonymous (for the intrinsically motivated, e.g. simply clicking "remain anonymous" gives a sense of fulfillment), start a new initiative (for the leaders, e.g. "We did it once, join me in doing it again")
  • related to the above idea, allow users to choose a different reward structure
    • included in this can be forms of reciprocity, such as donating your award/reward to another user whose contributions you admire, or a Ben Franklin-style "pay it forward" system as Benkler discusses
In short, this book is an important step in our understanding of how non-financial rewards affect human behavior. 

While distracting myself from writing this, I came across this essay adapted from Robert H. Frank's recent book The Darwin Economy which seems to argue that contrary to Adam Smith's view of self-interest leading to overall community good, the negative aspects of selfishness in markets have become too pronounced to tolerate further. Frank's tone is much more academic and prescriptive, suggesting that taxation of harmful (selfish, ruthlessly evolutionary capitalist) behavior could provide a remedy. I'll have to read Frank's book to better compare the two views, but a mashup of Benkler's collaboration medicine and Frank's tax therapy might already be underway in government as Obama recently proposed raising taxes on millionaires and the White House recently unveiled We The People, an online petition platform. We'll see...