Hey — take off that Mongols tattoo

As many people know, infamous Chicago crime boss Al Capone was ultimately brought to justice not because of all the bootlegging, murder and fraud he engaged in but because of a tax-evasion charge. Now the U.S. government is trying a similar tactic in its fight against a criminal biker gang called The Mongols: federal prosecutors say they want the courts to award them the rights to the gang’s name, and any imagery associated with it.

That way, federal authorities say, they could outlaw the gang in part by preventing them from using the name and imagery, and by seizing property and assets that carry the name or insignia — including clubhouses, motorcycles and even gang members’ clothing. This would allow any police officer “who sees a Mongol wearing this patch … to stop that gang member and literally take the jacket right off his back,” U.S. Attorney Thomas O’Brien told Reuters. (I wonder what they would do to this guy, who has the insignia tattooed on the back of his head).

This appears to be the first time that the police or the U.S. Attorney’s office have gone after a bike gang or any other criminal organization based on illegal use of intellectual property. Much like the Hell’s Angels and other popular outfits, the Mongols registered their name and their “patch” or insignia — a ponytailed character resembling Genghis Khan — as a legal trademark so that they could control the use of it.

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Your intellectual property tastes delicious

This has to be my favourite intellectual property dispute ever: according to reports from a variety of sources, including Associated Press and Haaretz, a group known as the Association of Lebanese Industrialists is planning to file a lawsuit against the state of Israel for “stealing” traditional Lebanese delicacies such as hummus (which is spelled about seven different ways) as well as baba gannouj, falafels and tabouleh.

As it turns out, of course, Lebanon doesn’t actually own the trademark to such dishes, but the head of the ALI says he’s planning to file something, and once he gets the rights he’s going to sue someone (it’s not clear who). The precedent, apparently, is the case that Greece launched to get the exclusive EU rights to the term “feta” cheese.

The only wrinkle in the Lebanese plan? A number of other groups — including the Palestinians — claim they invented the dishes Lebanon wants to trademark (The Guardian says that tabouleh was developed in Ottoman Syria, including what is now Syria, Palestine, Lebanon and Jordan). Can’t they all just sit down and talk this one over?

Craigslist vs. craigslist blogger, round three

The blogger that Craigslist sent a cease-and-desist letter to earlier this week isn’t going to back down quietly, it seems. He has published a response on craigslistblog.org to Jim Buckmaster’s recent post, in which he says that the ads were just to “cover some hosting costs.” He also says that with his misleading post, the Craigslist CEO has “tarnished Craig Newmark’s reputation forever,” and that Buckmaster should “do the right thing and step down today.” Gee, Tim — hyperbole much? (this post has since been removed, I presume as a result of legal counsel).

My earlier post on it and update follow:

Update:

Craigslist CEO Jim Buckmaster has posted an entry to the new Craigslist blog in which he apologizes for the “ham-handed” C&D letter described below, which the site sent to a blog called Craigslistblog.org. But Buckmaster also provides some more details about why the classified service went after Tim White’s blog; among other things, he says the blog was running misleading text ads with Craigslist’s name in them (the ads were apparently removed from the site before the blog post got a lot of attention).

To me, that changes things substantially. One of the principles behind domain-squatting cases is that in order to avoid such accusations, a domain should have been registered and used in good faith — in other words, not to generate revenue based on the potential misunderstanding generated by a similar domain name. It seems pretty clear that Craigslistblog.org was designed to do that, and so I am backing Craigslist on this one. Jim Buckmaster’s post, incidentally, is a nice example of how to apologize and still make your point.

Original post:

Seems like Craigslist is in some hot water over a blog. But not because its new official blog is really ugly, poorly-designed and difficult to use, which it is — although given the somewhat… er, “distinctive” look and feel of the classified site itself, it’s probably not surprising that the blog looks like my daughter’s fifth-grade class designed it using a version of Microsoft’s FrontPage from 1998 (Craigslist doesn’t have ads? Not to be outdone, the blog doesn’t have comments or an RSS feed).

In any case, it’s not Craigslist’s official blog that’s the issue — it’s a site called Craigslistblog.org, which was started up about a month ago by a guy named Tim White as a way of getting some discussion going about Craigslist, both good and bad. Then he got a rather brusque C&D letter from none other than Craigslist CEO Jim Buckmaster, which Tim has posted on his site. In no uncertain terms, it directs Tim to stop using the domain and the name Craigslist immediately or face legal action.

Tim,

We need you to stop using the infringing domain CRAIGSLISTBLOG.ORG immediately, and arrange for tranfer of it to us asap – using/selling/transfering infringing domains is illegal, and penalties up to $100,000 per domain can be applied.

Tim, however, responds that Jim has “gotten some bad legal counsel” and asks whether the company plans to shut down other sites with craigslist in the name, such as craigslistmap.info. Jim then copies Tim on a letter to Craigslist’s attorneys, in which he not-so-subtly mentions that the law firm does intellectual property work for “Google and a lot of other prominent companies.” As far as I can tell, Tim isn’t planning to back down.

Is Craigslist in the right here? I’m not a lawyer (although I sometimes play one on TV), but from my reading of past cases involving domain disputes, both WIPO rules and U.S. law require complainants to satisfy several conditions in order to win such a case. The first one — whether the domain name is confusingly similar — is a slam dunk for sure. But the other criteria are whether the defendant is making legitimate fair use of the name, and whether it was registered in bad faith (i.e. whether the defendant registered it with intent to profit from the confusion).

Those last two are a lot harder to answer, and I happen to think Tim has a pretty good case. Whether he can withstand a legal onslaught from Craigslist — which has about $60-million or so a year to play around with, as far as I can tell from the recent revenue numbers — is a separate question. It’s also interesting to note the anti-Craigslist comments on Tim’s post. I expect plenty of criticism of the classified site based on the contrast between its touchy-feely ethos and its actions.

Tim O’Reilly handles it well — almost

I hope Tim O’Reilly’s houseboating trip on Lake Powell was relaxing, because he came back to a boatload of stress as a result of his company’s association with a “cease and desist” letter that CMP Media sent to a (non-profit) IT group in Ireland for using the term Web 2.0 in relation to a conference. There’s more on the history of it all here if you’re interested. Tim has now posted a long dissertation on what happened and what he thinks of both the Web 2.0 trademark (which wasn’t his idea) and the blogosphere’s “pile-on” response.

I will say this — after reading it, Tim strikes me as just the kind of stand-up guy and all-around straight-shooter that my friend Paul Kedrosky described him as in a discussion we had about the whole mess. And he is right that the whole affair turned into an unpleasant kind of schoolyard pile-on that had a nasty tone to it, which is unfortunate. That said, however, I’m pretty sure Paul still thinks that applying for the trademark was a wrong-headed thing to do, and I do too — and not just because I helped organize the mesh Web 2.0 conference earlier this month in Toronto.

One of my fellow organizers, Stuart MacDonald, firmly believes that O’Reilly was right to try and enforce its trademark (although it hasn’t been approved yet), but I tend to agree with Rob Hyndman that Web 2.0 is not something that is really trademarkable. As Marty Schwimmer of The Trademark Blog notes in a short post on the whole controversy, “If you coin and promulgate a term, you can sell it as a buzzword or you can sell it as a brand, but under trademark law, it’s virtually impossible to do both.”

O’Reilly has done an amazing job of spreading the gospel — so to speak — of Web 2.0, and they are justifiably proud of that. But trademarking it at this point is a dumb thing to do, and towards the end of his post it seems like Tim is coming around to that way of thinking too. I encourage him, as Chris Messina and others have, to offer Web 2.0 up as a Community Mark and turn this sh*tstorm of negative publicity into something positive. I think James Robertson has a good perspective on the whole thing here, and Don Park makes a very good point on his blog.

The O’Reilly Web 2.0 debacle continues

As my fellow conference organizer (and yes, it was a Web 2.0 conference) Rob Hyndman notes in his latest post, we’ve had a bit of a debate going among the mesh gang about the whole O’Reilly trademark thing — and not just because we have kind of an interest in whether conferences can use the term. From a philosophical point of view, Stuart believes that O’Reilly should be able to trademark the term, since they were the ones to popularize it and build a conference business around it. As he put it, why should they not be allowed to somehow protect the value that they created?

My point is not just that it’s stretching things to say they “created” value in any meaningful sense by using the term Web 2.0 — although, as a commenter on the O’Reilly Radar blog notes, the term was used in a widely-publicized sense as early as 1999 — but more that I don’t see the point in trying to “protect” it, or how that benefits O’Reilly’s business. If anything, in fact, trying to protect that value by sending cease-and-desist letters to a non-profit group in Ireland has damaged O’Reilly’s brand, in the sense that it has got people re-thinking their commitment to the company. That just doesn’t seem very smart in a whole bunch of ways.

Now people are even starting to mutter about how there has been little or no response from the “FOO” camp, or friends of O’Reilly — and what response there has been, including the recent post from Cory “freedom fighter” Doctorow at BoingBoing, seems particularly mealy-mouthed and disingenuous at best. In the end, however, I think Cory seems to be making the same point I am trying to (although he dances around it), which is that it’s better for O’Reilly to be known as the pre-eminent Web 2.0 conference holder than it is to be known as the lawyer-mongering owner of that trademark. Way better, in fact.

Are people going to stop going to O’Reilly’s Web 2.0 conferences just because some non-profit group in Ireland uses the term? Hardly. But there might be people out there reconsidering their attendance as a result of all this ham-handed trademark bullshit. That’s the real issue for O’Reilly, it seems to me. Chris Messina was right in what he said in a comment on one of my previous posts: O’Reilly should make Web 2.0 a “community mark” — a Creative Commons-style public trademark — and put all this to rest.