9 ms·

Not sure I follow this completely... You start a project with the same name as a company, which owns the registered brand and are surprised when some 3rd party

by x0ner 11y ago

Not sure I follow this completely... You start a project with the same name as a company, which owns the registered brand and are surprised when some 3rd party complies with legal suggestions to make an adjustment? Seems kind of silly to expect that NPM would want to fight for your project name when you didn't seem to do your own due diligence when picking a name. Also, a bit backwards to go remove all your modules as well, therefore breaking builds.

gariany 11y ago
a) from what I understand, his project was there first. b) NPM shouldn't have to fight it unless they are requested to, the trademark claim was ridiculous to begin with. Regardless of the claim, enforcing it would have taken years... I'm not saying NPM shouldn't have comply with the request and rename the package but definitely could/should have handled this better. c) the guy wrote: "NPM is no longer a place that I’ll share my open source work at, so, I’ve just unpublished all my modules." I think it's pretty clear why we pull all of his modules.
- steveklabnik 11y ago
  > the trademark claim was ridiculous to begin with. npm's lawyers disagree with you, and they're lawyers. EDIT: cool HN, -2 for stating a fact. Sure, I don't disagree that this lawsuit is kind of silly, but npm's laywers don't think this suit is _frivolous_, which is what matters.
  - piotrkaminski 11y ago
    Layers tend to be conservative, and have also been known to make mistakes. I don't think it's crazy to question their decisions.
  - gariany 11y ago
    3 letters of a NPM developers package? for real?? I'm pretty sure the owners of Kik wouldn't care that that developer package is named Kik. I can find 1000s of mentions of Kik online which validates the trademark. Starting from @kik on twitter to an online project of a random student. Pursuing a NPM package names?????? for real?! If you've ever worked with lawyers you would have known that they would always be on the conservative (safe) side without understand the business implications.
  - hartator 11y ago
    If npm's lawyers were Apple lawyers, I think Apple stance on privacy might be different.
  - jsprogrammer 11y ago
    Sorry, but was there actually a lawsuit in this case? It sounds more like KIK emailed some people at NPM and NPM just said, "OK", then replaced a known module with some other thing. It's only a matter of time until NPM is socially engineered into replacing a module with something more malicious, if it hasn't already happened.
    - steveklabnik 11y ago
      There was a threat of a lawsuit. npm's lawyers decided that this threat was not frivolous.
      - chc 11y ago
        How do you know what they thought? It seems just as likely to me that they didn't see much merit in the complaint, but didn't think it was worth fighting since IP law is such a mess in the US that even clearly baseless complaints can drag on and become expensive.
        steveklabnik 11y ago
        Because npm stated it publicly on Twitter.
        chc 11y ago
        Huh, really? That's strange. I just checked both @npmjs and @izs and don't see any comment on the merits of the complaint now.
        steveklabnik 11y ago
        I follow a _lot_ of their employees on twitter, and by now, I don't remember which one had the best tweet about it tbh.
        steveklabnik 11y ago
        Further comment: turns out that npm lied about this. So I'm just straight-up wrong.
  - hyperpape 11y ago
    Given what I know about your politics and philosophy, I find it pretty funny that I have to say this: 1) As "just a fact" it's irrelevant. With some interpretation added, it contributed something. However... 2) As participants in a market economy, the lawyers' primary interest may not be the letter of the law or what is theoretically winnable in court, but what will give npm the least hassle. I'm not sure if that's the case in this particular trademark case, but we all know lawyers sometimes do counsel the path of least resistance. And maybe that's even wise. But it's worth being clear about that ambiguity, rather than just saying "lawyers said it, I believe it." P.S. I think your comment isn't super helpful but I didn't downvote you.
    - steveklabnik 11y ago
      My point is mostly that often, when it comes to law, lay-people talk about what they _wish_ the law was, rather than what the law actually is. And yeah, lawyers can be wrong too. But sometimes, things that seem common-sense aren't actually legally correct, and this is one of those cases. It does feel silly that a messaging company can threaten to sue over an unrelated software package, but that's just part of how intellectual property law works.
      - wolfgke 11y ago
        > My point is mostly that often, when it comes to law, lay-people talk about what they _wish_ the law was, rather than what the law actually is. That is why the law should be formalized such that correctness proofs for argumentations can be given and in doubt even be checked independently by a computer. Exactly because of the possibility of different opinions and wishes, coming up with such a high standard should be considered a maxim.
        steveklabnik 11y ago
        While I can appreciate this sentiment, I'm also not sure that removing any sort of interpretation is a good idea. Look at the horrible impact mandatory minimum sentencing has had, for example. Flexibility can be bad, but it can also be very good.
  - jonatanheyman 11y ago
    There's a huge different between an actual lawsuit and the threat of a lawsuit. Kik's lawyers were being bullies, and NPM caved in, instead of standing up for one of their users who seem to have contributed a lot to the community.
  - smsm42 11y ago
    > they're lawyers. Which means if they say "it's very serious threat" and the code gets deleted everybody would think they are serious lawyers even if the claim looked ridiculous - because you see, lawyers said it's serious and who are you to argue? On the other hand, if they ever say "it's ridiculous" and then they get sued, they could be fired or at least suffer damage to their reputation for not preventing it. Thus, there is exactly zero incentive for the lawyers - at least ones acting purely according to near-term incentives - to ever take even a minimal risk and declare anything like that ridiculous. They have all incentives to always react as if it was 100% genuine infringement - because that costs very little and has no risk. Some lawyers and companies are more civic-minded and reject some ridiculous requests and take risk because that's the right thing to do. But you can not require people to be heroes. On the other hand, we are not lawyers, so we have all the incentives to proclaim how ridiculous the whole thing is.
- poooogles 11y ago
  IANAL but looking at kiks trademark [1] I'm not so sure sadly. >Computer software for use with mobile devices, namely, computers, personal digital assistants (PDAs) and mobile phones for downloading, displaying, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing text, sound, images, audio files and video files Organising text is what Kik (the project) does, so it would infringe the trademark? 1 - https://trademarks.justia.com/858/93/kik-85893307.html https://trademarks.justia.com/858/93/kik-85893307.html
  - lucaspiller 11y ago
    This trademark doesn't cover the word "kik", but the whole design. They have other trademarks too, so maybe there is one that covers just the word.
- kelnos 11y ago
  Regarding (b), did NPM itself have any legal liability? If not, they could simply say "your beef is with the author of the package, but we'll of course comply with a court order that requires us to transfer ownership". (I suspect, though, that NPM might have some legal liability, and Kik [the company] could sue them regardless, which would suck for them.)
- larrik 11y ago
  His project is only 6 months old, it seems? Kik has been around for years (I used it a long time ago, before iMessage was a thing).
aioprisan 11y ago
Is that really silly? Coming up with a project name in an unrelated project in the technology space? That's akin to Ajax Detergent (https://en.wikipedia.org/wiki/Ajax_(cleaning_product) https://en.wikipedia.org/wiki/Ajax_(cleaning_product)) wanting all jQuery wiped off because there is a $.ajax() function in jQuery. Look, it even has a $! Chaching with every occurrence!
- overgard 11y ago
  It's not an unrelated technology space! Kik is a messaging platform. It's EASILY conceivable that they might want to publish a nodejs API. It's also easily conceivable someone looking to interact with their platform would type npm install kik. They're entirely in their rights to see this as stepping on their turf.
  - jhall1468 11y ago
    That. Is. Not. How. Trademarks. Work. A trademark gives you protection of a mark within a specific industry. "Software" is not a specific industry. They do not get wholesale ownership of the term. And if you blindly install a module, expecting it to be some official release without looking it up, you're an idiot.
    - johannes1234321 11y ago
      See class 9 of the Nice categories. If you claim a trademark For class 9 it includes "all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network." Also mind the way this practically works: A company will try to register a mark in as many categories as possible.
      - jhall1468 11y ago
        That's just incorrect. NICE Class 9 is far more extensive than that: "Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus." Computers programs are a part of 090373 which has a breakdown of ~100 subcategories. There are 45 Nice classes. Being in the same top-level class is not confusingly similar. Unless you think Kik Marine Compasses and Kik Instant Messenger might be confusingly similar.
hippich 11y ago
trademarks do not work this way. in order to infringe on trademark, you actually have to be in the same business. OP did not want to fight a legal fight, which is understandable. And NPM can on their own discretion to do whatever they want, and they prefer to avoid legal battles as well.

by x0ner 11y ago

gariany 11y ago

a) from what I understand, his project was there first. b) NPM shouldn't have to fight it unless they are requested to, the trademark claim was ridiculous to begin with. Regardless of the claim, enforcing it would have taken years... I'm not saying NPM shouldn't have comply with the request and rename the package but definitely could/should have handled this better. c) the guy wrote: "NPM is no longer a place that I’ll share my open source work at, so, I’ve just unpublished all my modules." I think it's pretty clear why we pull all of his modules.

steveklabnik 11y ago
> the trademark claim was ridiculous to begin with. npm's lawyers disagree with you, and they're lawyers. EDIT: cool HN, -2 for stating a fact. Sure, I don't disagree that this lawsuit is kind of silly, but npm's laywers don't think this suit is _frivolous_, which is what matters.
- piotrkaminski 11y ago
  Layers tend to be conservative, and have also been known to make mistakes. I don't think it's crazy to question their decisions.
- gariany 11y ago
  3 letters of a NPM developers package? for real?? I'm pretty sure the owners of Kik wouldn't care that that developer package is named Kik. I can find 1000s of mentions of Kik online which validates the trademark. Starting from @kik on twitter to an online project of a random student. Pursuing a NPM package names?????? for real?! If you've ever worked with lawyers you would have known that they would always be on the conservative (safe) side without understand the business implications.
- hartator 11y ago
  If npm's lawyers were Apple lawyers, I think Apple stance on privacy might be different.
- jsprogrammer 11y ago
  Sorry, but was there actually a lawsuit in this case? It sounds more like KIK emailed some people at NPM and NPM just said, "OK", then replaced a known module with some other thing. It's only a matter of time until NPM is socially engineered into replacing a module with something more malicious, if it hasn't already happened.
  - steveklabnik 11y ago
    There was a threat of a lawsuit. npm's lawyers decided that this threat was not frivolous.
    - chc 11y ago
      How do you know what they thought? It seems just as likely to me that they didn't see much merit in the complaint, but didn't think it was worth fighting since IP law is such a mess in the US that even clearly baseless complaints can drag on and become expensive.
      - steveklabnik 11y ago
        Because npm stated it publicly on Twitter.
        chc 11y ago
        Huh, really? That's strange. I just checked both @npmjs and @izs and don't see any comment on the merits of the complaint now.
        steveklabnik 11y ago
        I follow a _lot_ of their employees on twitter, and by now, I don't remember which one had the best tweet about it tbh.
        steveklabnik 11y ago
        Further comment: turns out that npm lied about this. So I'm just straight-up wrong.
- hyperpape 11y ago
  Given what I know about your politics and philosophy, I find it pretty funny that I have to say this: 1) As "just a fact" it's irrelevant. With some interpretation added, it contributed something. However... 2) As participants in a market economy, the lawyers' primary interest may not be the letter of the law or what is theoretically winnable in court, but what will give npm the least hassle. I'm not sure if that's the case in this particular trademark case, but we all know lawyers sometimes do counsel the path of least resistance. And maybe that's even wise. But it's worth being clear about that ambiguity, rather than just saying "lawyers said it, I believe it." P.S. I think your comment isn't super helpful but I didn't downvote you.
  - steveklabnik 11y ago
    My point is mostly that often, when it comes to law, lay-people talk about what they _wish_ the law was, rather than what the law actually is. And yeah, lawyers can be wrong too. But sometimes, things that seem common-sense aren't actually legally correct, and this is one of those cases. It does feel silly that a messaging company can threaten to sue over an unrelated software package, but that's just part of how intellectual property law works.
    - wolfgke 11y ago
      > My point is mostly that often, when it comes to law, lay-people talk about what they _wish_ the law was, rather than what the law actually is. That is why the law should be formalized such that correctness proofs for argumentations can be given and in doubt even be checked independently by a computer. Exactly because of the possibility of different opinions and wishes, coming up with such a high standard should be considered a maxim.
      - steveklabnik 11y ago
        While I can appreciate this sentiment, I'm also not sure that removing any sort of interpretation is a good idea. Look at the horrible impact mandatory minimum sentencing has had, for example. Flexibility can be bad, but it can also be very good.
- jonatanheyman 11y ago
  There's a huge different between an actual lawsuit and the threat of a lawsuit. Kik's lawyers were being bullies, and NPM caved in, instead of standing up for one of their users who seem to have contributed a lot to the community.
- smsm42 11y ago
  > they're lawyers. Which means if they say "it's very serious threat" and the code gets deleted everybody would think they are serious lawyers even if the claim looked ridiculous - because you see, lawyers said it's serious and who are you to argue? On the other hand, if they ever say "it's ridiculous" and then they get sued, they could be fired or at least suffer damage to their reputation for not preventing it. Thus, there is exactly zero incentive for the lawyers - at least ones acting purely according to near-term incentives - to ever take even a minimal risk and declare anything like that ridiculous. They have all incentives to always react as if it was 100% genuine infringement - because that costs very little and has no risk. Some lawyers and companies are more civic-minded and reject some ridiculous requests and take risk because that's the right thing to do. But you can not require people to be heroes. On the other hand, we are not lawyers, so we have all the incentives to proclaim how ridiculous the whole thing is.
poooogles 11y ago
IANAL but looking at kiks trademark [1] I'm not so sure sadly. >Computer software for use with mobile devices, namely, computers, personal digital assistants (PDAs) and mobile phones for downloading, displaying, transmitting, receiving, editing, extracting, encoding, decoding, playing, storing and organizing text, sound, images, audio files and video files Organising text is what Kik (the project) does, so it would infringe the trademark? 1 - https://trademarks.justia.com/858/93/kik-85893307.html https://trademarks.justia.com/858/93/kik-85893307.html
- lucaspiller 11y ago
  This trademark doesn't cover the word "kik", but the whole design. They have other trademarks too, so maybe there is one that covers just the word.
kelnos 11y ago
Regarding (b), did NPM itself have any legal liability? If not, they could simply say "your beef is with the author of the package, but we'll of course comply with a court order that requires us to transfer ownership". (I suspect, though, that NPM might have some legal liability, and Kik [the company] could sue them regardless, which would suck for them.)
larrik 11y ago
His project is only 6 months old, it seems? Kik has been around for years (I used it a long time ago, before iMessage was a thing).

aioprisan 11y ago

Is that really silly? Coming up with a project name in an unrelated project in the technology space? That's akin to Ajax Detergent (https://en.wikipedia.org/wiki/Ajax_(cleaning_product) https://en.wikipedia.org/wiki/Ajax_(cleaning_product)) wanting all jQuery wiped off because there is a $.ajax() function in jQuery. Look, it even has a $! Chaching with every occurrence!

overgard 11y ago
It's not an unrelated technology space! Kik is a messaging platform. It's EASILY conceivable that they might want to publish a nodejs API. It's also easily conceivable someone looking to interact with their platform would type npm install kik. They're entirely in their rights to see this as stepping on their turf.
- jhall1468 11y ago
  That. Is. Not. How. Trademarks. Work. A trademark gives you protection of a mark within a specific industry. "Software" is not a specific industry. They do not get wholesale ownership of the term. And if you blindly install a module, expecting it to be some official release without looking it up, you're an idiot.
  - johannes1234321 11y ago
    See class 9 of the Nice categories. If you claim a trademark For class 9 it includes "all computer programs and software regardless of recording media or means of dissemination, that is, software recorded on magnetic media or downloaded from a remote computer network." Also mind the way this practically works: A company will try to register a mark in as many categories as possible.
    - jhall1468 11y ago
      That's just incorrect. NICE Class 9 is far more extensive than that: "Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus." Computers programs are a part of 090373 which has a breakdown of ~100 subcategories. There are 45 Nice classes. Being in the same top-level class is not confusingly similar. Unless you think Kik Marine Compasses and Kik Instant Messenger might be confusingly similar.

hippich 11y ago

trademarks do not work this way. in order to infringe on trademark, you actually have to be in the same business. OP did not want to fight a legal fight, which is understandable. And NPM can on their own discretion to do whatever they want, and they prefer to avoid legal battles as well.