3 ms·

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 tr

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." //
- pdabbadabba 12y ago
  You may well be right about non-US courts, but I don't follow your argument under U.S. law. (Is there one? It actually isn't clear to me what you contend the outcome would be in the U.S.) As I read them, all three NKOTB factors that you quoted weigh in Ikeahackers's favor. 1- The product or service in question is not readily identifiable without use of the mark. 2- Ikeahackers uses no more of the mark than it needs to to identify the products in question. 3- It is a closer question whether the design of the site implies endorsement (for the same reasons as I noted with respect to likelihood of confusion), but some cosmetic changes to the site could probably solve this problem.
  - pbhjpbhj 12y ago
    I don't think IKEAhackers passes on 2 or 3. They use the mark in the URL and site design, which is more than is necessary to identify the origin of the goods mentioned on the site. They use the livery and typefaces (or look-alikes) and the site style matches IKEAs - eg the line drawn cartoons are close in style - and I'd say all these factors suggest an endorsement that is not clearly and prominently disclaimed (it is disclaimed on the site however). Now all that with no commercial aspects to the use (no advertising) and it's looking a bit thin on the plaintiff's side; but with the commercial use ... in short the use doesn't feel [!] purely referential (or "nominative" in the language of the US caselaw) to me.
- KingOfDos 12y ago
  > I disagree, especially in non-US courts, largely because of the "commercial" nature of the site. Just run a Foundation / Charitable organization (Stichting) under Dutch law, which is not-for-profit. It's possible to gain money with ads, or sell products. So you can pay the hosting. It's even allowed to give people a monthly income. As long it's not making profit (in the end you'll need 0). A Charitable organisation (Stichting) is always 'non commercial' under Dutch law. Just to mention Inter IKEA Systems B.V. is a company from The Netherlands. Not sure what would happen if someone would host IKEAhackers.net from The Netherlands. To sue someone in the USA over "intellectual property rights" is quite easy, our system works quite different. We're allowed to use someones name (Reclame Code Commissie), Dreft is allowed to make ads which say Ajax makes bad dish-soap. But this falls under another category, since IKEAhackers is not advertising for DealExtreme products. http://www.iusmentis.com/merken/grappen-parodie/ http://www.iusmentis.com/merken/grappen-parodie/ Frew quotes: > Verwarring alleen is niet genoeg. Verwarring met een origineel merk is alleen inbreuk als het gebruik ook commercieel is. > Ook nietcommercieel gebruik van een merk kan merkinbreuk zijn. Het gebruik moet dan afbreuk doen aan de reputatie van het merk. Hier loopt een merkparodie al snel tegenaan. Which says in English, that parodies are forbidden if "commercial use" and has "undermine the reputation". IKEAhackers is a non-commercial (ads to pay hosting is NON profit) parody, right? And gains IKEA customers. Would IKEAhackers.net be safer in The Netherlands?
vobios 12y ago
I am not a lawyer either, but this does not have to be a trademark infringement. IKEA can probably gain the control of the domain via ICANN's Uniform Domain Name Dispute Resolution Policy (see https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm). Based on what I see, the domain name was registered in "bad faith", shown by: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
- pdabbadabba 12y ago
  Yes, but note that "likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement" is also a component of U.S. trademark law capable of defeating the fair use defense. As I explained, I think that the case for this is weak, but not nonexistent -- though it could easily have been cured without surrendering the domain name or excising the word "Ikea."

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." //

pdabbadabba 12y ago
You may well be right about non-US courts, but I don't follow your argument under U.S. law. (Is there one? It actually isn't clear to me what you contend the outcome would be in the U.S.) As I read them, all three NKOTB factors that you quoted weigh in Ikeahackers's favor. 1- The product or service in question is not readily identifiable without use of the mark. 2- Ikeahackers uses no more of the mark than it needs to to identify the products in question. 3- It is a closer question whether the design of the site implies endorsement (for the same reasons as I noted with respect to likelihood of confusion), but some cosmetic changes to the site could probably solve this problem.
- pbhjpbhj 12y ago
  I don't think IKEAhackers passes on 2 or 3. They use the mark in the URL and site design, which is more than is necessary to identify the origin of the goods mentioned on the site. They use the livery and typefaces (or look-alikes) and the site style matches IKEAs - eg the line drawn cartoons are close in style - and I'd say all these factors suggest an endorsement that is not clearly and prominently disclaimed (it is disclaimed on the site however). Now all that with no commercial aspects to the use (no advertising) and it's looking a bit thin on the plaintiff's side; but with the commercial use ... in short the use doesn't feel [!] purely referential (or "nominative" in the language of the US caselaw) to me.
KingOfDos 12y ago
> I disagree, especially in non-US courts, largely because of the "commercial" nature of the site. Just run a Foundation / Charitable organization (Stichting) under Dutch law, which is not-for-profit. It's possible to gain money with ads, or sell products. So you can pay the hosting. It's even allowed to give people a monthly income. As long it's not making profit (in the end you'll need 0). A Charitable organisation (Stichting) is always 'non commercial' under Dutch law. Just to mention Inter IKEA Systems B.V. is a company from The Netherlands. Not sure what would happen if someone would host IKEAhackers.net from The Netherlands. To sue someone in the USA over "intellectual property rights" is quite easy, our system works quite different. We're allowed to use someones name (Reclame Code Commissie), Dreft is allowed to make ads which say Ajax makes bad dish-soap. But this falls under another category, since IKEAhackers is not advertising for DealExtreme products. http://www.iusmentis.com/merken/grappen-parodie/ http://www.iusmentis.com/merken/grappen-parodie/ Frew quotes: > Verwarring alleen is niet genoeg. Verwarring met een origineel merk is alleen inbreuk als het gebruik ook commercieel is. > Ook nietcommercieel gebruik van een merk kan merkinbreuk zijn. Het gebruik moet dan afbreuk doen aan de reputatie van het merk. Hier loopt een merkparodie al snel tegenaan. Which says in English, that parodies are forbidden if "commercial use" and has "undermine the reputation". IKEAhackers is a non-commercial (ads to pay hosting is NON profit) parody, right? And gains IKEA customers. Would IKEAhackers.net be safer in The Netherlands?

vobios 12y ago

I am not a lawyer either, but this does not have to be a trademark infringement. IKEA can probably gain the control of the domain via ICANN's Uniform Domain Name Dispute Resolution Policy (see https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm). Based on what I see, the domain name was registered in "bad faith", shown by: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".

pdabbadabba 12y ago
Yes, but note that "likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement" is also a component of U.S. trademark law capable of defeating the fair use defense. As I explained, I think that the case for this is weak, but not nonexistent -- though it could easily have been cured without surrendering the domain name or excising the word "Ikea."