from the don't-be-a-trademark-bully dept
Ah, this one takes me back to the early days of Techdirt, when the biggest nonsense we were writing about was giant corporate bullies threatening (or in some cases suing!) over so called “Sucks Sites” (that’s an article from almost 20 years ago!). The issue was that people who were upset with a particular company would register the domain of CompanySucks.com to (usually) put up a protest site. The company (and its lawyers) would then threaten to sue the individual for trademark infringement. There were some mixed rulings over those sites, but in general most have decided that sucks sites are not trademark infringement, and are protected under a variety of theories — including a lack of any possible confusion and because they’re nominative fair use.
You’d have hoped that, by now, big company lawyers would recognize all of this. Apparently not Facebook’s. Now, to be fair, as we recently discussed, for companies like Facebook, often they carefully police domains that make use of similar URLs in order to cut off sketchy phishing and scam sites. But it’s one thing to go after such scammers… and it’s another to go after someone who is obviously engaging in criticism.
Enter: DontUseInstagram.com, created by Paul Kruczynski.
The site now is designed to pretty much do what it says on the tin: give you reasons why you shouldn’t use Instagram. Whether or not you agree with that messaging, it’s clearly not infringing on Facebook/Instagram’s trademarks. Someone should probably tell Instagram’s lawyers. Because they sent a threat letter. In fact, they sent this threat letter before he’d even launched anything at the site, basically trying to intimidate him out of the site before he’d even done anything with it.
To Whom It May Concern,
We are writing concerning your registration and use of the domain name dontuseinstagram.com, which contains the Instagram trademark.
You are undoubtedly familiar with Instagram and its worldwide renown in providing photo sharing and editing services, online networking and related products and services through a number of channels, including through its mobile application software and its website available at Instagram.com. Instagram owns exclusive rights to the INSTAGRAM trademark, including rights secured through common law use and registration in the United States (Reg. Nos. 4,170,675 and 4,146,057) and internationally. Instagram is a global leader in photography software for mobile devices, with over 800 million monthly active accounts. Due to Instagram’s exponential growth and immense popularity, the Instagram brand, is frequently, if not daily, referenced in the media and pop culture. Its fame entitles it to broad legal protection.
We have recently discovered that you registered the domain name, which incorporates the famous INSTAGRAM mark. Instagram has an obligation to its users and the public to police against the registration and/or use of domain names that may cause consumer confusion as to affiliation with or sponsorship by Instagram, dilute the distinctiveness of its INSTAGRAM mark, or otherwise tarnish the mark. Accordingly, in addition to civil actions, Instagram and its parent Facebook have filed numerous proceedings pursuant to ICANN’S Uniform Domain-Name Dispute- Resolution Policy (http://www.icann.org/en/help/dndr/udrp) to secure the transfer of infringing domain names. Moreover, the Anticybersquatting Consumer Protection Act provides for serious penalties (up to $100,000 per domain name) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes another’s trademark.
While Instagram respects your right of expression and your desire to conduct business on the Internet, Instagram must take action to stop the misuse of its intellectual property. As you can imagine, various third parties around the world have attempted to wrongfully capitalize on Instagram’s reputation by registering domain names that include or are derived from the INSTAGRAM brand. Such names are confusingly similar to, dilutive of, and can tarnish the INSTAGRAM mark.
We understand that you may have registered dontuseinstagram.com without full knowledge of the law in this area. However, Instagram is concerned about your use of the Instagram trademark in your domain name. Accordingly, we must insist that you immediately cease using and disable either delete or transfer to Instagram any site available at that address. You should not sell, offer to sell, or transfer the domain name to any third party.
Please confirm in writing that you will agree to resolve this matter as requested. If we do not receive confirmation that you will comply with our request, we will have no other choice but to pursue all available remedies against you.
Instagram IP & DNS Enforcement Group
Kruczynski was able to line up the Cyberlaw Clinic at Harvard Law’s Berkman Klein Center to help him respond to those Instagram lawyers, explaining to them in fairly great detail how totally full of shit their threat letter is in a letter from Kendra Albert,
The legal claims that your letters make are frivolous. Even worse, your overreach imperils Mr. Kruczynski?s First Amendment rights. Mr. Kruczynski?s domain name is not likely to cause consumer confusion, which Instagram would be required to prove in order to succeed on a trademark infringement claim. See Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008) (citing Borinquen Biscuit, 443 F.3d 116 (1st Cir. 2006)).
To establish likelihood of confusion, a trademark owner ?must show more than the theoretical possibility of confusion.? Int’l Ass’n of Machinists & Aero. Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 198 (1st Cir. 1996). For courts to find a likelihood of confusion, it has to be shown that there is ?a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.? Id. Given that Mr. Kruczynski?s domain has not even been launched, Instagram cannot show more than a theoretical possibility of confusion. Moreover, as Mr. Kruczynski?s website dontuseinstagram.com currently resembles nothing like the Instagram website, it is inconceivable that any reasonably prudent purchaser exercising ordinary care would confuse the two websites.
Even in the scenario that Mr. Kruczynski?s domain dontuseinstagram.com becomes live and operates in a way Mr. Kruczynski originally intended it to, Instagram will not be able to establish that there is likelihood of confusion in Mr. Kruczynski?s registration and use of dontuseinstagram.com under the First Circuit?s eight-factor test. See Oriental Fin. Grp., Inc. v. Cooperativa De Ahorro Cr?dito Oriental, 698 F.3d 9, 17 (1st Cir. 2012) (citing Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 15 (1st Cir. 2004)). Mr. Kruczynski did not intend to claim any associations with the Instagram mark and did not intend to compete with Instagram. In fact, Mr. Kruczynski?s domain would serve as a platform to criticize Instagram?s user privacy violations, not as a social media platform for users to share photos and accumulate followers. The goods or services provided by dontuseinstagram.com would be significantly different from those provided by Instagram, and the channels of trade and advertising would be very different as well. It is unimaginable that there would be evidence of actual confusion where Instagram users actually confuse Instagram with a website criticizing Instagram, starting from the domain name itself. Even assuming that Instagram has a strong mark that most people recognize, it is overreaching for Instagram to forbid others from registering or using any name that mentions Instagram without due regard of relevant laws.
The existence of a parked page on Mr. Kruczynski?s domain does not create trademark infringement where there previously was not any. See, e.g., Acad. of Motion Picture Arts & Scis. v. GoDaddy.com, Inc., No. CV 10-03738 AB (CWx), 2015 U.S. Dist. LEXIS 120871 (C.D. Cal. Sep. 10, 2015) (holding that the plaintiff failed to meet its burden of proving that a domain name registrar who operates parked page programs acted with a bad faith intent to profit from the plaintiff?s marks). In fact, the existence of the parked page is largely irrelevant to the discussion of trademark infringement here, and you are overstepping by demanding Mr. Kruczynski remove the parked page on his own registered domain.
Your claim of Mr. Kruczynski?s alleged trademark infringement is ungrounded in law. The non-infringing nature of the use would have been obvious had an attorney even glanced at the name of the site.
To the extent that these emails were sent using an automated process that merely checks to see if a domain contains the word Instagram, and then automatically requests the transfer of a domain to you if it does, such behavior plays on the threat of litigation to suppress potentially lawful speech. I am aware that there may be many domains registered with the Instagram mark in them, some of which may be used for phishing or other nefarious purposes. But that does not justify a ?spray and pray? strategy where you automatically send notices of infringement without any human review. Such notices may serve to unlawfully intimidate critics, requiring them to find legal counsel.
That reply was sent back in November and it requests that Instagram retract the threat letter and provide “a clear statement that you do not intend to file suit over his ownership of dontuseinstagram.com.” Somewhat optimistically, it also said that such a letter should “be accompanied by a discussion of what processes you will implement in order to ensure any messages you may send to domain owners will not attempt to intimidate lawful users of the Instagram wordmark.”
Neither happened. Instead, Instagram just went silent. It’s quite likely that the human being who received the response letter realized how bad an idea it was to send that original threat letter, even if automated, but has just moved on to threatening someone else. But Instagram deserves to be called out for its practices which can lead to real intimidation for people, unlike Paul, who don’t have the ability to have a knowledgeable lawyer respond to the threat.
That’s unfortunate, because it means that there are no consequences for sending out such bogus, censorial threat letters. Well, other than having a site like Techdirt call out your stupid threats.