Further Reading Ubuntu bakes Amazon search results into OS to raise cash

Canonical's enforcement of the trademark for Ubuntu put egg on the company's face last week when it went after a website critical of its approach to user privacy. A website called " Fix Ubuntu ," which provides instructions for disabling an Internet search mechanism in the Ubuntu operating system, received a letter asking it to change its domain name and stop using the Ubuntu logo.

The website is run by Micah Lee, a technologist at the Electronic Frontier Foundation, and the EFF quickly informed Canonical that "the First Amendment fully protects the use of trademarked terms and logos in non-commercial websites that criticize and comment upon corporations and products."

Canonical founder Mark Shuttleworth admitted on his blog that the letter to Lee was a mistake. But he also claimed that his company must enforce its trademarks or lose them:

We do have to “enforce” those trademarks, or we lose them. That means: we have an email address, trademarks@ubuntu.com, where people can request permission to use the name and logo

we actively monitor, mostly using standard services, use of the name and logo

we aim to ensure that every use of the name and logo is supported by a “license” or grant of permission

The EFF accepts "that Shuttleworth meant well," but he is wrong about the requirement to enforce trademarks in every instance, EFF attorney Daniel Nazer wrote in a blog post yesterday. Shuttleworth seems to be operating on the common myth "that if you don’t police every unauthorized use of a trademark, you are in danger of losing it," Nazer wrote. "We hope that some clarity on this point might help companies step back from wasteful and censorious trademark enforcement."

Besides the fact that Canonical's trademark policy cannot trump the First Amendment, "Canonical is not 'required' to enforce its mark in every instance or risk losing it," Nazer wrote. "The circumstances under which a company could actually lose a trademark—such as abandonment and genericide—are quite limited. Genericide occurs when a trademark becomes the standard term for a type of good (‘zipper’ and ‘escalator’ being two famous examples). This is very rare and would not be a problem for Canonical unless people start saying 'Ubuntu' simply to mean 'operating system.' Courts also set a very high bar to show abandonment (usually years of total non-use). Importantly, failure to enforce a mark against every potential infringer does not show abandonment." A court decision three decades ago noted that "[t]he owner of a mark is not required to constantly monitor every nook and cranny of the entire nation and to fire both barrels of his shotgun instantly upon spotting a possible infringer."

Nazer pointed to the fact that our previous article included an Ubuntu logo. "Will Canonical 'lose' this trademark if it doesn’t 'enforce' it against Ars Technica? Of course not," Nazer wrote. "Ars Technica’s use is not even arguably infringement. And even if it was, failure to respond to every last act of infringement does not result in abandonment."

Nazer says the EFF takes Shuttleworth at his word when he says that Canonical didn't mean to act like a trademark bully. "This seems to be a case of mindless over-enforcement rather than malice," he wrote. "But this routine over-enforcement of trademark rights is unnecessary and feeds a censorship culture."

Sure, blame the new guy

According to Shuttleworth's blog, the mistake last week was caused by an inexperienced employee. Shuttleworth wrote:

In order to make the amount of correspondence manageable, we have a range of standard templates for correspondence. They range from the “we see you, what you are doing is fine, here is a license to use the name and logo which you need to have, no need for further correspondence,” through “please make sure you state you are speaking for yourself and not on behalf of the company or the product," to the “please do not use the logo without permission, which we are not granting unless you actually certify those machines," and “please do not use Ubuntu in that domain to pretend you are part of the project when you are not.” Last week, the less-than-a-month-at-Canonical new guy sent out the toughest template letter to the folks behind a “sucks” site. Now, that was not a decision based on policy or guidance; as I said, Canonical’s trademark policy is unusually generous relative to corporate norms in explicitly allowing for this sort of usage. It was a mistake, and there is no question that the various people in the line of responsibility know and agree that it was a mistake. It was no different, however, than a bug in a line of code, which I think most developers would agree happens to the best of us. It just happened to be, in that analogy, a zero-day remote root bug.

The Canonical founder asked observers to recognize his company's swift response to its error. "Within hours of the publication of a response to our letter, the CEO, COO, and legal team reviewed the decision, corrected the action, and addressed the matter publicly," he wrote. "I apologized the moment I was made aware of the incident. And I’m reassured that the team in question is taking steps in training and process to minimise the risk of a recurrence."