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The protections afforded by intellectual property law have immensely benefitted technology companies, but that doesn't mean that they're not sometimes problematic. From ridiculous patent lawsuits to reverse domain name hijacking, IP is often a means to questionable ends.

Unfortunately, when it comes to trademark, some companies are making abuse all too easy.

Case in point: Tumblr's treatment of well-known Microsoft employee Danah Boyd's account. Yesterday, Boyd reported that the popular online publishing platform provider revoked her account subdomain, zephoria.tumblr.com, and handed it over to an internet marketing firm called Zephoria.

Following a post on her blog at zephoria.org, Boyd, who commands quite a large social media following, was contacted by Tumblr.

The company's CEO, David Karp, confirmed that zephoria.tumblr.com had been taken away from Boyd due to a trademark complaint. According to Karp, Boyd was notified by email about the complaint, but never responded.

According to Boyd's account, Tumblr president John Maloney indicated that her Tumblr subdomain was transferred to Zephoria a mere 72 hours after the notification was sent.

If this was an isolated incident, it would be easy to write it off as a mistake. But it isn't. As BetaBeat notes, Tumblr has quickly handed over account subdomains to trademark holders in the past, suggesting that the company is a little bit too eager to pull the trigger when it comes to trademark complaints. Unfortunately, it's hard not to call this apparent policy what it is: foolish.

If zephoria.tumblr.com was home to a spamblog, or otherwise questionable in nature, it might have been appropriate to move a little bit more quickly. But that wasn't the case. Here, Tumblr should have easily observed that not only was the account home to legitimate content, it was owned by a recognizable name in the social media world.

Unfortunately, incidents like these are only becoming more common. While companies like Tumblr may have an ethical and legal obligation to take IP complaints seriously, at the same time they should also remember that they're not judge and jury either.

In many cases, both parties in a dispute over a domain, subdomain or account name could have intellectual property rights that arguably give them a legitimate interest in the said domain, subdomain or account name. In other cases, the mere existence of some intellectual property right doesn't necessarily give one party the right to take a domain, subdomain or account name. There is plenty of room for abuse.

The bottom line: service providers should tread carefully when IP disputes come knocking. A little bit of common sense goes a long way. This means:

  • When a complaint is received, it should be thoroughly evaluated. Is it legitimate? Are there questions about the nature of the complaint?
  • The subject of the complaint should be given a reasonable amount of time to respond. When contact fails, alternative methods of reaching the party should be explored. In many cases, it isn't very difficult to track down another email address, phone number or Twitter account.
  • When in doubt, involve counsel. Few companies like paying attorneys, but it's often risky to assume that a complaint is valid and take adverse action against another party who may also have intellectual rights of their own. 
Patricio Robles

Published 28 April, 2011 by Patricio Robles

Patricio Robles is a tech reporter at Econsultancy. Follow him on Twitter.

2429 more posts from this author

Comments (4)

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Nick Armstead, SEO + PPC Consultant at Orantec

so if I choose a name on Tumblr I then need to have this name as a registered company to make sure I can keep it then?

over 5 years ago

Dave Wieneke

Dave Wieneke, Director of Digital Strategy Practice at Connective DX

Good post. Sometimes, trademark law can be unusually difficult to guess at.

This is both because digital nuances are still being codified. But also, some trademark courts rule without precedent. In these courts the last ruling doesn't have to match the next one.

If Danah Boyd made prior use of the mark, then she'd have a case to continue to use it, regardless of who holds the trademark.

But who is to judge? Where there's a close call, companies are best served if the *courts* are allowed to do their job. In this case, I agree that Tumblr's actions just put them in a more difficult position.

over 5 years ago

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Angela Hill, Incitrio | creative solutions for global brands

It's a bit naive to think that you should maintain your tumblr account just because you started it first. In this day and age, IP takes legal precedent...literally. If you have a blog name, it is your responsibility to trademark it properly so you can maintain control. Otherwise, it is fair game and tumblr did the right thing.

over 5 years ago

Dave Wieneke

Dave Wieneke, Director of Digital Strategy Practice at Connective DX

What's naive, is to assume that corporations who file marks get to sweep up equity established by their predecessors.

In the US, rights arise from use, not filing.

That's why first use is important. The US is not a "first to file country", its a "first to use country". Further her copyright interest in the title is automatic.

Registering a trademark allows the case to appear in federal court for its first hearing. It would make it hard for Boyd to force the registered user to abandon their mark, but her claim to continued use is reasonable and not naive at all.

over 5 years ago

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