[Foundation-l] Wikipedia trademark being used incorrectly

[Rowan Collins]

NB: IANAL, the following is based on my understanding only, backed up
by articles from Wikipedia[TM], which officially "does not give legal
advice".

On Thu, 18 Nov 2004 13:37:55 -0500, Chitu Okoli
<cokoli at jmsb.concordia.ca> wrote:
> 1. I think the Foundation should indeed officially register the "Wikipedia"
> trademark (I was surprised to learn--correct me if I'm mistaken--that this
> wasn't done ages ago), so that it can easily defend any cases that might
> have to go to court.

I think the main reason this hasn't been done, is that there is no
such thing as *internationally* registering a trademark, and because
registration costs money. Thus there was some concern that proper
research be made into with whom it would be most appropriate to
register it (whether, for instance, it was possible to register in one
go for all EU countries) before setting off on the potentially very
costly course of registering it anywhere and everywhere. Especially
since, even without registration, there would be an extremely good
case that it was a trademark, since it is a neologism created solely
for one particular site.

Oh, and not to mention which trademarks to register - there's not just
Wikipedia, there's Wikimedia, Wikiquote, Wiktionary, Wikisource; and
alternate spellings used in some languages, like Vikipedio in
Esperanto and Wicipedia in Welsh (these would probably be covered by
their similarity to the original, but it all needs careful
consideration)


> 2. Once the trademark is registered, I really don't understand why "we have
> to protect our trademarks". I've always thought it was a good thing for a
> company when its registered trademark becomes a household commodity to the
> extent that it becomes synonymous with the generic item.

I think, in general this is *not* considered the case. If a trademark
is not used, or no action is taken to correct generic use of it, the
trademark becomes invalid - you can't just let everyone call it Coke
and then complain when someone else writes "Coke" on the label. From
my reading of http://en.wikipedia.org/wiki/Trademark, it is still
possible for this to happen even with a registered trademark - hence
the mentionned campaign by Xerox to stamp out the use (which they must
actually be quite pleased with) of "to xerox".

> For example, when I
> used to live in the southern USA, people could go to a restaurant and order
> a Coke. Then the waiter might literally ask, "What kind? Do you want a
> Pepsi, a 7-Up, Dr. Pepper, or Coca-Cola?" 
[...]
> A "Kleenex" includes store-brand tissues for wiping your nose, "Cutex" means
> any brand of nail polish, and "Vaseline" means petroleum jelly.

Yes, this happens often - see
http://en.wikipedia.org/wiki/Genericized_trademark If the owners of
these brands are not careful, they will lose the right to claim the
trademark, and it will become perfectly legal for your local store to
manufacture and sell "Better Value Kleenex". That's not something the
trademark owner will want to happen.

> In fact, for a while IBM advertised its products with the
> line, "Don't just get IBM-compatible, get IBM".

Yes, and note that they used [assuming you have the slogan right]
"IBM-compatible" - a phrase which uses "IBM" to refer to *IBM*
computers and nothing else - and highlighted the difference between
being *compatible with* their brand, and *belonging to* their brand.
This is quite clever, but is definitely not encouraging the
genericisation of the term "IBM", which would have been very bad news.

> The only threat I do see is when competitors make a product that is just as
> good for a better or comparable price, as in the case of 3M defending its
> trademark on "Post-It Notes". 

Yes, that is the entire purpose of trademarks, and as I say, you only
keep the right to defend the mark in extreme cases by being seen to
defend the mark in all cases.

> While that is a legitimate businesses threat,
> I would hardly think that there is any such risk in Wikipedia's case--though
> pursuing violators of the trademark seems to imply that this is the case.

Now you seem to be beginning to contradict yourself - just now, you
were urging the Foundation to register its trademarks. Presumably you
felt that there was *some* potential for abuse of it, else why bother
with that? Perhaps you just mean we should be lenient on people using
it casually - the problem being, as I say, that the nature of
trademark law means you can't be two-faced like that, you either
police your trademark or lose it.

> My point is that I find it hard to understand what the problem is if people
> begin to use "Wikipedia" to mean any generic wiki-based encyclopedia.

Well, I'm not sure "wiki-based encyclopedia" is what the term *would*
become if we allowed it to genericize. I can think of two main types
of site for which the term is, or could be, wrongly applied:
1) sites running the same collaborative editing software as
Wikipedia.org (e.g. infoanarchy.org, as started this thread). There is
already a generic name for these: "wikis"; and if they want to be more
specific "MediaWikis" or "MediaWiki installs" or somesuch.
2) sites using some or all of the content of Wikipedia.org, under the
GFDL (there has been at least one which called itself "a wikipedia";
it may have been thefreedictionary.org, I don't remember). These, of
course, are just "websites", "encyclopedias", or at most "mirrors of
Wikipedia".

Now, (1) is probably not too bad, although it could get a little
confusing; there was a question on the 'Help desk' of the English
Wikipedia the other day asking how to do something in a completely
unrelated website - because it was a wiki, the user had immediately
assumed it was "some sort of sub branch" of Wikipedia. And people
asking for changes on static mirrors are quite frequent. If [take the
extreme case] every site using a wiki *and* every copy of Wikipedia's
content became "a wikipedia", we'd get an awful lot more confusion
like this.

But allowing (2) could be even more risky. A lot of work is put into
spreading the word about Wikipedia, and the goal of it and the
Wikimedia Foundation - take Angela's recent radio interview, for
instance. If another site is also allowed to call itself "[a]
wikipedia", then they get free publicity, and siphon off people who
might otherwise become contributors; and if they run advertising for
profit and give nothing to the Foundation, they will actually profit
from our promotion work.

OK, I'm giving pessimistic views of what could happen, I know, but I'm
playing Devil's Advocate: if we allow "Wikipedia" to become a generic
trademark, this is what we risk. I don't see that the vague benefits
of people saying the word "Wikipedia" more often outweigh the cost of
them not meaning wikipedia.org when they say it.

> 3. Related to my previous point, I also think that the (TM) superscript is
> *semantically* ugly, if not aesthetically so, because of the corporate image
> it gives--so very un-free like.

Yes, that's certainly a consideration. It's like a Co-operative
Society having "Limited" in its name (e.g. the chain of shops known as
"the Co-op" in the UK is "The Co-operative Group (CWS) Ltd").
Technically, it just implies a certain legal status in terms of
liability (and some associated tax rules, etc, etc); but in people's
minds, it means its some kind of greedy corporation with fat-cat
shareholders. Indeed, my dad was a Limited company for a while; just
him. Similarly, "TM" probably makes some people think of multinational
corporations, for whom brand is everything, when in reality it just
means "please don't use this generically, it refers specifically to
this product/service/whatever".

> And I don't think chasing down violations of
> the trademark helps Wikipedia's image. I don't think it's necessary, if the
> Foundation has a legal registration in its pocket to pull out when it might
> really become necessary.

As you're probably bored of me repeating now, it *is* necessary,
because that's how [as I understand it] trademark law works. A legal
registration doesn't obviate the need to stop the term becoming
generic.

Sorry if this has ended up a bit verbose - one of the problems with
responding point by point to someone else's message like this is that
it makes it harder to restructure your own points. That, and I just
have a tendency to write messages that are a bit long-winded!

-- 
Rowan Collins BSc
[IMSoP]