7 ms·

Let's use this as a case study: What (according to HN) should IKEA have done? On one hand, trademark preservation is important. On another hand, how many comp

by kourt 12y ago

Let's use this as a case study: What (according to HN) should IKEA have done? On one hand, trademark preservation is important. On another hand, how many companies would kill for a community of "Raving Fans" like this? And in addition to enthusiasm, the site seemed very high quality and thus complementary to Ikea's marketing.

cperciva 12y ago
Let's use this as a case study: What (according to HN) should IKEA have done? Buy the site and pay the owner to keep on running it. If it's owned by IKEA there's no trademark dilution problem...
- protomyth 12y ago
  IKEA could license the the site for $0 to use their trademark.
- jacquesm 12y ago
  > Buy the site and pay the owner to keep on running it. I think that would send the wrong signal to would-be copycats. I think the chosen solution, allow them to continue but non-commercially is a pretty good one. If it's a fan site then it should be non-commercial.
  - pan69 12y ago
    You can then sue the copycats, I guess.
  - Niten 12y ago
    I don't think it would send that message at all. IKEA Hackers wasn't just some site using the IKEA name, it was a high-quality and well-established community. If IKEA had purchased this establishment, I don't think a reasonable person would conclude they would give the same treatment to just any other trademark infringer. And even non-profit sites need money to pay for hosting.
lessnonymous 12y ago
Surely it's not hard to solve this one? Buy the site. Acquisition style. Now they keep the community, the fan base, the long tail, and the passionate founder. He gets to work on it full time and they get rid of other peoples ads.
- jacquesm 12y ago
  It's not that easy though. Setting precedent for infringement being rewarded with a buy-out might send all the wrong signals. If they did that a few thousand 'hack with Ikea' sites would jump up overnight. The problem with these suits is usually not the specific case at hand but everybody else that will use the opportunity if they no longer defend their trademark vigorously. And buying out a site like that would probably not qualify as defense but as reward. If the price was $0 or the former owner would pay a token fine and the site would then be run by the former owner but under the IKEA umbrella then it might work. But an actual payment for something that leveraged a brand would be a big mistake imo.
  - joering2 12y ago
    > Setting precedent for infringement being rewarded with a buy-out might send all the wrong signals. Just exactly what wrong signals did Google send when they bough Youtube? Unless we are blind and skip the fact youtube willingfully hosted 90% of ifringe content.
    - jacquesm 12y ago
      The analogy would be that google bought googletube, which they did not.
  - nasmorn 12y ago
    They don't infringe on anything IMHO. This is a fan site promoting the use of the companies products. This is not the same as using the tm to sell look alikes. If sites adding massive value to a brand over almost a decade can expect to be noticed and acquired how is that bad for ikea.
- 12y ago
newy 12y ago
Grant a trademark license at no cost.
aw3c2 12y ago
Can't a trademark owner give permission to someone to use it?
- drzaiusapelord 12y ago
  This is the obvious retort to the usual 'they had to do this, or else they'll lose the company' hysterics that so many corporatist types parrot. They could have easily just allowed him use of the name and if Ikea was ever in some kind of trademark lawsuit could have stated so. They chose not to for their own reasons, but the idea that business is forced to act this way and that Ingvar Kamprad is this grandfatherly old man who loves cheap furniture and not the ruthless head of a major world-wide corporation is asinine.
- arn 12y ago
  Our original TouchArcade.com logo had a space invader in it. Taito contacted us, liked our site, and gave us a free license. We later changed the logo to avoid that long term dependency. But that was very nice of them.
deleted 12y ago
[deleted]
nagrom 12y ago
Here's what I would do: I'd give them a revokable licence to use the Ikea trademark as long as only Ikea products were used on the site. That way I would expect to be able to defend the generic trademark argument. I'd get rid of their advertisers, give them referral links to replace that income and maybe eventually bring them in-house so as to control the content. All this would cost maybe one person per year, maybe one and a half. If I can raise a few hundred thousand dollars a year extra this way by heavily promoting products from the site, I can easily justify it. That shouldn't be too hard a target, given that Ikea is a massive multinational. That's maybe a few hundred extra sales per store per year. It's possible that Ikea considered something like that already and it doesn't make sense to do. It's not presented like that though.
guelo 12y ago
Tell their lawyers to chill out, leave the site alone, thank them for being fans, send them free IKEA furniture to hack on.
pdabbadabba 12y ago
Ikea should have done nothing, because the site's use of the mark probably did not infringe -- I suspect it was protected by the doctrine of fair use. In the trademark context the fair use defense is available when "use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, ... of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. s. 1115(b)(4). The use of the word "Ikea" on the site clearly is used merely to identify the goods being hacked -- it is "descriptive of and used fairly and in good faith only to describe the goods." The bigger problem, possibly, is that the site as a whole generally echoes the Ikea brand (thought not particularly strongly). This, in conjunction with use of the word "Ikea" could possibly give rise to the overriding possibility of confusion. At most, Ikea should have asked ikeahackers to tweak the design of the site a bit (maybe use some different colors). I am not a trademark lawyer, so I'm open to being corrected. But I think ikeahackers could probably have prevailed in court, especially after some design tweaks.
- pbhjpbhj 12y ago
  >But I think ikeahackers could probably have prevailed in court, especially after some design tweaks. // I disagree, especially in non-US courts, largely because of the "commercial" nature of the site. Any revenue makes it commercial, that doesn't obviate fair use but it makes extremely difficult to win on that claim. People arrive here because of Ikea's brand and products, they see Ikea livery and designs and then are forwarded to purchase other products to the gain of the site owners. The "New Kids" case fits quite well with the case in hand and recapitulates the test for whether nominative use is infringing or not. http://cyber.law.harvard.edu/metaschool/fisher/integrity/Links/Cases/newkids.html http://cyber.law.harvard.edu/metaschool/fisher/integrity/Lin... One might feel that the Volkswagenwerk AG vs Church case mentioned makes Ikeahackers a winner [see the footnote for key differences!] but the test stands that there is (ibid.) >"a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; [7] and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder." //
jacquesm 12y ago
Well, she gets to continue to run it so I don't see what the problem is. Their only condition is that it goes non-commercial which I think is fairly reasonable. They also talked with each other in a constructive fashion.
- kelnos 12y ago
  The problem is that she likely doesn't have the resources to run the site without ads.
  - jacquesm 12y ago
    My hobbies cost money too. And running a website at that level need not be expensive.
rm445 12y ago
I'm not interested in what IKEA should have done, according to their own interests, but in what they should be allowed to do. Someone ought to be perfectly entitled to run a site on a commercial basis, that discusses Ikea's products and mention's Ikea's name. The line is crossed when a reasonable person would think that the site officially represented Ikea. I don't know where the music would have stopped if this guy had chosen to fight. I don't blame him for not doing so, but I hope the outcome would have been that he was fully entitled to run his site as he chose, so long as he attempted to avoid anyone thinking the site was officially run by Ikea.
- jeroen 12y ago
  She, not he. The author is female.
__david__ 12y ago
> On one hand, trademark preservation is important. That seems reasonable, up to a point. To me it seems difficult to argue that point when the brand is already so large that some rinky dink site could never measurably impact the company's brand recognition/reputation.
noonespecial 12y ago
Thank their lawyers for the excellent legal advice, and then forbid them from sending the C&D because its such monumentally bad PR. Follow that up by instructing them to find an alternative way to deal with possible trademark issues. The best course of action from a legal perspective is often not the best course of action from a business perspective.
eps 12y ago
On third hand, how has heard of this site before today? This community of raving fans is less than a drop in a bucket for IKEA.

by kourt 12y ago

cperciva 12y ago

Let's use this as a case study: What (according to HN) should IKEA have done? Buy the site and pay the owner to keep on running it. If it's owned by IKEA there's no trademark dilution problem...

protomyth 12y ago
IKEA could license the the site for $0 to use their trademark.
jacquesm 12y ago
> Buy the site and pay the owner to keep on running it. I think that would send the wrong signal to would-be copycats. I think the chosen solution, allow them to continue but non-commercially is a pretty good one. If it's a fan site then it should be non-commercial.
- pan69 12y ago
  You can then sue the copycats, I guess.
- Niten 12y ago
  I don't think it would send that message at all. IKEA Hackers wasn't just some site using the IKEA name, it was a high-quality and well-established community. If IKEA had purchased this establishment, I don't think a reasonable person would conclude they would give the same treatment to just any other trademark infringer. And even non-profit sites need money to pay for hosting.

lessnonymous 12y ago

Surely it's not hard to solve this one? Buy the site. Acquisition style. Now they keep the community, the fan base, the long tail, and the passionate founder. He gets to work on it full time and they get rid of other peoples ads.

jacquesm 12y ago
It's not that easy though. Setting precedent for infringement being rewarded with a buy-out might send all the wrong signals. If they did that a few thousand 'hack with Ikea' sites would jump up overnight. The problem with these suits is usually not the specific case at hand but everybody else that will use the opportunity if they no longer defend their trademark vigorously. And buying out a site like that would probably not qualify as defense but as reward. If the price was $0 or the former owner would pay a token fine and the site would then be run by the former owner but under the IKEA umbrella then it might work. But an actual payment for something that leveraged a brand would be a big mistake imo.
- joering2 12y ago
  > Setting precedent for infringement being rewarded with a buy-out might send all the wrong signals. Just exactly what wrong signals did Google send when they bough Youtube? Unless we are blind and skip the fact youtube willingfully hosted 90% of ifringe content.
  - jacquesm 12y ago
    The analogy would be that google bought googletube, which they did not.
- nasmorn 12y ago
  They don't infringe on anything IMHO. This is a fan site promoting the use of the companies products. This is not the same as using the tm to sell look alikes. If sites adding massive value to a brand over almost a decade can expect to be noticed and acquired how is that bad for ikea.
12y ago

newy 12y ago

Grant a trademark license at no cost.

aw3c2 12y ago

Can't a trademark owner give permission to someone to use it?

drzaiusapelord 12y ago
This is the obvious retort to the usual 'they had to do this, or else they'll lose the company' hysterics that so many corporatist types parrot. They could have easily just allowed him use of the name and if Ikea was ever in some kind of trademark lawsuit could have stated so. They chose not to for their own reasons, but the idea that business is forced to act this way and that Ingvar Kamprad is this grandfatherly old man who loves cheap furniture and not the ruthless head of a major world-wide corporation is asinine.
arn 12y ago
Our original TouchArcade.com logo had a space invader in it. Taito contacted us, liked our site, and gave us a free license. We later changed the logo to avoid that long term dependency. But that was very nice of them.

deleted 12y ago

[deleted]

nagrom 12y ago

Here's what I would do: I'd give them a revokable licence to use the Ikea trademark as long as only Ikea products were used on the site. That way I would expect to be able to defend the generic trademark argument. I'd get rid of their advertisers, give them referral links to replace that income and maybe eventually bring them in-house so as to control the content. All this would cost maybe one person per year, maybe one and a half. If I can raise a few hundred thousand dollars a year extra this way by heavily promoting products from the site, I can easily justify it. That shouldn't be too hard a target, given that Ikea is a massive multinational. That's maybe a few hundred extra sales per store per year. It's possible that Ikea considered something like that already and it doesn't make sense to do. It's not presented like that though.

guelo 12y ago

Tell their lawyers to chill out, leave the site alone, thank them for being fans, send them free IKEA furniture to hack on.

pdabbadabba 12y ago

Ikea should have done nothing, because the site's use of the mark probably did not infringe -- I suspect it was protected by the doctrine of fair use. In the trademark context the fair use defense is available when "use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, ... of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin." 15 U.S.C. s. 1115(b)(4). The use of the word "Ikea" on the site clearly is used merely to identify the goods being hacked -- it is "descriptive of and used fairly and in good faith only to describe the goods." The bigger problem, possibly, is that the site as a whole generally echoes the Ikea brand (thought not particularly strongly). This, in conjunction with use of the word "Ikea" could possibly give rise to the overriding possibility of confusion. At most, Ikea should have asked ikeahackers to tweak the design of the site a bit (maybe use some different colors). I am not a trademark lawyer, so I'm open to being corrected. But I think ikeahackers could probably have prevailed in court, especially after some design tweaks.

pbhjpbhj 12y ago
>But I think ikeahackers could probably have prevailed in court, especially after some design tweaks. // I disagree, especially in non-US courts, largely because of the "commercial" nature of the site. Any revenue makes it commercial, that doesn't obviate fair use but it makes extremely difficult to win on that claim. People arrive here because of Ikea's brand and products, they see Ikea livery and designs and then are forwarded to purchase other products to the gain of the site owners. The "New Kids" case fits quite well with the case in hand and recapitulates the test for whether nominative use is infringing or not. http://cyber.law.harvard.edu/metaschool/fisher/integrity/Links/Cases/newkids.html http://cyber.law.harvard.edu/metaschool/fisher/integrity/Lin... One might feel that the Volkswagenwerk AG vs Church case mentioned makes Ikeahackers a winner [see the footnote for key differences!] but the test stands that there is (ibid.) >"a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; [7] and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder." //

jacquesm 12y ago

Well, she gets to continue to run it so I don't see what the problem is. Their only condition is that it goes non-commercial which I think is fairly reasonable. They also talked with each other in a constructive fashion.

kelnos 12y ago
The problem is that she likely doesn't have the resources to run the site without ads.
- jacquesm 12y ago
  My hobbies cost money too. And running a website at that level need not be expensive.

rm445 12y ago

I'm not interested in what IKEA should have done, according to their own interests, but in what they should be allowed to do. Someone ought to be perfectly entitled to run a site on a commercial basis, that discusses Ikea's products and mention's Ikea's name. The line is crossed when a reasonable person would think that the site officially represented Ikea. I don't know where the music would have stopped if this guy had chosen to fight. I don't blame him for not doing so, but I hope the outcome would have been that he was fully entitled to run his site as he chose, so long as he attempted to avoid anyone thinking the site was officially run by Ikea.

jeroen 12y ago
She, not he. The author is female.

__david__ 12y ago

> On one hand, trademark preservation is important. That seems reasonable, up to a point. To me it seems difficult to argue that point when the brand is already so large that some rinky dink site could never measurably impact the company's brand recognition/reputation.

noonespecial 12y ago

Thank their lawyers for the excellent legal advice, and then forbid them from sending the C&D because its such monumentally bad PR. Follow that up by instructing them to find an alternative way to deal with possible trademark issues. The best course of action from a legal perspective is often not the best course of action from a business perspective.

eps 12y ago

On third hand, how has heard of this site before today? This community of raving fans is less than a drop in a bucket for IKEA.