FTFA: "Long story short, after much negotiation between their agent and my lawyer, I am allowed to keep the domain name IKEAhackers.net only on the condition that it is non-commercial, meaning no advertising whatsoever."
That could have been a lot worse. She gets to keep it, they don't see their brand diluted in any meaningful way or exploited commercially.
I count a whole pile of ad banners on the site, IKEA branding (including their colors and logos) everywhere. She really got off very light. And if she switches to another domain in time then there will be 0 harm.
Sounds like ikeahackers should just redirect all the pages on that site to a different domain name that doesn't use the IKEA trademark, and then serve advertising.
She should just turn this site into an Ikea attack site, pointing out the weird charitable foundation status that Ikea uses to avoid paying taxes, and then migrate all this content to another site that includes other manufacturers.
IKEA handled this admirably, if you think otherwise, you should attempt to qualify your opinion, otherwise it's meaningless and adds nothing to the conversation.
If you understand even the basics of trademark law, you know that if IKEA were to do nothing at all in this case, that they would risk losing their IKEA trademark.
That's a fairly big price to pay, just to allow someone else to make money using the brand name the company spent decades building.
The fact that they were even willing to negotiate shows the company actually cared about the individual and wanted to try to come to a compromise that would suit both parties without involving a lawsuit.
In the end the author of the website shows everyone that money is what's most important to them, and that's their decision.
just to allow someone else to make money using the brand name the company spent decades building.
Both you and jacquesm seem to have the opinion that this site is run by an opportunistic profiteer parasitically leeching off of IKEA. In reality it's a DIY community that is very supportive of the IKEA brand and probably makes very little money, which is obviously driven more by the hacks than simply the IKEA brand itself.
It's depressing that this ruthless capitalist paranoia is so systemic in our society (USA). We should view these situations as opportunities for collaboration, not competition. IKEA could have turned this into a huge positive for everyone by embracing it and making it somewhat official.
The fact that they were even willing to negotiate shows the company actually cared about the individual and wanted to try to come to a compromise that would suit both parties without involving a lawsuit.
Right...a C&D...so indicative of care and compromise. Never mind the bit about "give us your domain or we will take any legal action necessary." Her and her lawyer pushed for some small ground and IKEA eventually ceded it probably because it was a lot cheaper than a lawsuit. Furthermore, the "compromise" is still completely untenable for the future of the site, so it's still going to have to change the name, this only affords them some semblance of continuity during the transition.
In the end the author of the website shows everyone that money is what's most important to them, and that's their decision.
Why are you so supportive of a large corporation bullying an individual and simultaneously critical of that individual? What did IKEA show is important to them in this episode? Something other than money? What do you think the website owner should do instead? Close up shop and go back to a day job?
Sorry, I just don't find any part of IKEA's actions "admirable" here. "Relatively unsurprising in today's aggressively litigious and paranoid socioeconomic climate," maybe.
IKEA could have said "we love the community you've created. Here's a free licence to use the trademark within these rules; please also make the site look less like it is connected to IKEA; please also remove the advertising (but we'll use our charitable status to fund the hosting costs for you); oh, BTW, here are some sneak peeks into futre releases, some inside information from our designers about products you've featured; some stuff for prizes for competitions you can run if you like".
The request to stop advertising and stop using IKEA's name are exactly what happened.
The only things you are adding are:
(1) Suggesting a multibillion dollar coroporation license its trademark to a stranger on the internet for free.
(2) Suggesting a company that is being infringed on host the infringing website.
(3) Suggesting a company give away insider information and free product as some sort of reward for using their company name to make money for themselves.
I'm just trying to be playful when I say that you have the negotiating skills of a 12-year-old, but seriously, nobody on Earth would agree to those terms or suggest them outright.
Do this. Make a website called McDonald's burgers, use the McDonald's logo everywhere, and then put up a bunch of burger recipes and google ads.
Let me know when you get a bunch of free stuff from McDonalds and they start hosting your website. ;)
The infringement, if there is one, is of a quite technical nature.
>(1) Suggesting a multibillion dollar coroporation license its trademark to a stranger on the internet for free. //
Why not? It's not like someone's suggesting to hand over the trademark itself.
IKEAhackers is a fan site that is promoting IKEA - and has been widely, for several years - at no cost and probably countable benefit to IKEA. Why not reward your fans for doing marketing for you?
The equivalent for McDonalds - McDoHackers - would have a series of outstandingly good reviews of McDonalds meals, it would give menu suggestions for meals at McDonalds. The minimal advertising would be for cupholders for your car that only fit McDonalds drinks, or for carry bags that let you buy more McDonalds food, or for companies that will deliver McDo for you so you can eat more McDonalds rather than buy other people's food (or make your own). Terror of terrors ... yes McDo would probably use the extra revenue you brought them to sue you as well, but that doesn't make that the ethical line.
> If you understand even the basics of trademark law, you know that if IKEA were to do nothing at all in this case, that they would risk losing their IKEA trademark.
What do you base this statement on? The only cases that I've heard about where a company lost their trademark were nothing like this one, at all.
I'm not clear on whether there will be 0 harm. Is it allowed to permanently redirect IKEAhackers.net to a new domain, where ads may be served? If so, why is that importantly different from the current situation?
If not, can the site stay up, and is Jules going to be able to invest the necessary time, without ads?
As the first commenter on the article says:
your site HELPED developers and designers create new
products, and not only that, the last catalog was nearly a
tribute to YOUR BLOG! Telling us how we could use our
creativity with their products to make our homes our own –
isn’t that what IH is all about?
I'm going to guess the input from the content of the site is worth much more to the designers and developers at IKEA itself than any possible damage from brand dilution or commercial exploitation.
Redirecting the domain is probably a grey area, that as long as it doesn't draw too much attention, can probably go under the radar.
The big difference from the current situation is that he/she will need to redo the website to stop using IKEA logos and the IKEA name. I mean if you look at the site, it would be very difficult for someone to determine whether or not this was actually a branch, offshoot, or official project of IKEA, of which it is none.
They are making money by using someone else's name, and that's the problem.
I'm sure IKEA loves the idea of people experimenting with their furniture, but every company on the planet knows you can't give your trademark away, or you lose it.
I don't think they handled it perfectly. Why would they need to ask for a domain transfer? The domain itself isn't necessarily related to their brand (for example, it could refer to a person named Ikeah Ackers or something). I understand asking for an end to ad revenue, and I think it's obvious that pulling in revenue while using someone else's trademark will result in this, but I would not have taken kindly to their demands if I were in that position.
The resolution is OK but they must know that you can't break even on $0 revenue, so it's a death blow to this brand in the long term. It gives her time to rebrand and relaunch.
The domain name could refer to a person named Ikeah Ackers. However, given the contents of the site, it is clear that the domain name refers to IKEA. I am not a lawyer, but I have been involved in a trademark-related domain legal proceeding. I lost the domain name, but learned some valuable lessons. To make the long story short, I believe this is what ICANN would refer to as using the using the trademark in "bad faith" under Uniform Domain Name Dispute Resolution Policy.
More specifically, "Evidence of Registration and Use in Bad Faith" can be demonstrated that "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" (see https://archive.icann.org/en/udrp/udrp-policy-24oct99.htm). In this case, it seems that the domain name holder is using the IKEA name to attract users for commercial gain. In a UDRP proceeding, IKEA would most likely be able to gain control of the domain name.
On a side note, the site is great. I am glad I found out about it.
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.
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.
> 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.
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.
Agree with this as well. This type of community is a gold mine for Ikea and is not something a marketing department can whip up overnight. I am sure Ikea could have lowballed the site owner and he'd still be happy.
Right now the majority of the OBL's on the site are to what appears to be his Amazon store:
Ikea could redirect all 18,000 of those links to Ikea.com product pages instead of his personal amazon store.
In addition that type of community that the webmaster built is gold! 100s of thousands of comments, a huge Facebook Page, a very well done Pinterest page along with other social media accounts all for the taking.
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.
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.
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.
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.
>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.
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." //
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.
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.
> 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/
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?
>A Charitable organisation (Stichting) is always 'non commercial' under Dutch law. //
That's really interesting. Perhaps then on can set up a charitable organisation to bankrupt your competition and flip it to be a regular company ... even giving things away can be commercial as that can effectively destroy another companies market.
Just not making a profit doesn't make you a "charity" in UK. You have to have different company structure, different accounting; different terms and operating conditions apply.
>We're allowed to use someones name (Reclame Code Commissie), Dreft is allowed to make ads which say Ajax makes bad dish-soap. //
That's pretty standard it's in UK and USA (15 USC 1115(b)) law too usually it goes along with reporting and parody exclusions and parallels copyright in this respect.
IKEAhackers.net isn't a parody. Parody means comic entertainment. If the hacks comprised throwing away the instructions and having at it with a nail gun then perhaps you'd qualify as a parody site.
>Not sure what would happen if someone would host IKEAhackers.net from The Netherlands. //
I don't think that matters. If you're addressing people in a country (and they're arguably addressing people in all countries that IKEA operate in) then there's likely to be redress against [alleged] IP infringements allowed for in the country where those people reside.
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).
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".
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."
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.
> 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.
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.
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.
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.
There is a picture at the top of the post with a female character in it. The amount of "he"s in this thread is probably a good indication of how much time a reader spends looking at such things.
I read the text, never looked at the image, but now that I have looked at it, it seemed like just an illustration anyway, not a picture representative of the author.
What is the benefit to Ikea (or other companies with armies of lawyers who like to threaten loyal customers) by sending cease and desist letters to sites like this?
Without passing judgement on this example, there's at least a hypothetical risk that if you don't continuously defend your trademark, you could lose it! http://en.wikipedia.org/wiki/Generic_trademark
There's no genericisation happening on that site. It's a fan site. It's like saying that "ikeasucks.com" is going to lead to genericisation of the mark, there's no chance as the trademark is only being used to refer to what the company uses it for. On a general point you can defend your mark as much as you like it can still take the elevator to, or get hoovered up by genericisation by the public - google it on Bing if you don't believe me. ;0)
Strictly speaking ikeahackers.net is using the mark in a commercial way (because of the advertising) and so by UK/EU TM law seems to be infringing. There does also appear to be a strong possibility of confusion - the site is very "on message" for Ikea IMO and uses their livery and it's own design to imitate well the Ikea style.
From the sites perspective they can use a different [distinct!] name and make clear they're not legally associated but only a fan site, acknowledge Ikea's RTM in the footer for example and disclaim association. That seems sufficient to differentiate and avoid possibility of actual confusion (though they could still be sued of course). Adding in products from other suppliers would help here too ... that of course is bad for Ikea, but they're the ones pointing the gun at their own feet.
From Ikea's point of view. License the site, pay the content creator a nice fat salary to carry on and thank them sincerely for marketing your products so well for you. It can't possibly be cheaper in lost good will and lawyers salaries to sue "Jules".
This is an amazing cultural reference point for modern western thinking. I mean, no longer do you actually build something out of real materials like wood: rather, you take the notwood chipboard+plastic laminate available in an over-marketed unit shipped half way around the world in volume, modify it, then post to the internet about how to do it. Finally, people respond with anecdotes like the comment here ... http://www.ikeahackers.net/2014/06/balcony-bar.html ... this is going to be some hardcore retro content in another twenty years.
To be fair, Ikea can be the cheapest source of some raw-ish materials like mirrors, glass tabletops, metal poles, even some forms of solid wood. Why not take advantage of their economy of scale - do you know the alternatives haven't travelled just as far?
I wonder had Jules turned over the domain to them (or might still, given the intention to transfer the site to a new domain) if IKEA would have just made it a blind redirect to their main site, or just killed it to prevent the next Jules from having it.
I almost thought they would start their own DIY community, but running a community is a ton of work and I doubt it would increase their sales by a large enough percentage to warrant it.
I say it was handled quite badly, IKEA doesn't need the extra revenue but the site dominates a growing niche that IKEA might no longer be wishing to be associated with as they try and push upmarket....
Dumb idea all round to act like this, and good luck to IKEAHackers.net
The guys behind ikeahackers should escalate this to higher positioned managers within Ikea, until they have a chance to talk to someone who will understand and appreciate the idea behind the website.
No legal action would ever be taken by a company like this without the appropriate managers being 100% aware of the situation. Even if they claim later publicly that they did not know once the backlash starts up. Lawyers don't just act on lowly minions talking to them, someone with specific powers must authorize the action.
This is true but not necessarily entirely correct either. IKEA probably has a legal department handling things such as trademark issues, knockoffs etc; that department may have very little contact with marketing or much-higher-ups.
It's unlikely nobody would be aware of this if this was over "months of negociations", though. Still, I think this is a case where a lot of bureaucracy has clouded what should be a very clear cut case. It's possible if a reasonable top-of-the-chain higher-up is told about all this and it is clearly demonstrated that (assuming this is at all what the site owner wants) IH could be acquired or affiliated and the whole thing could turn from bad PR to good PR, they would tell legal/laywers to sod off.
So when you do something with the IKEA brand and furniture all kinds of 'reasonably considerations' that would flow from brand being owned by the mothership go right out the window.
Likely the only kind of employee the brand company has is IP lawyers.
For anyone arguing this was the right decision... the bottom line is that now Ikea has made me very aware that they care more about the brainless legal bullying of corporate business than applauding a patron who loves their goods.
I can only imagine being an artist, finding someone has created a site about my work, and then deciding that I should attempt to sue or censor that person.
It's alarming to me that we allow corporations to control how and how we are not allowed to use words. Trademarks should be limited to preventing people from selling similar products using your company name. They shouldn't be a way for companies to control related culture.
Well, I imagine she's actually making money with her original content - and then they're saying she can't, because it happens to refer to their "unique braand".
FTFA: "Long story short, after much negotiation between their agent and my lawyer, I am allowed to keep the domain name IKEAhackers.net only on the condition that it is non-commercial, meaning no advertising whatsoever."
That could have been a lot worse. She gets to keep it, they don't see their brand diluted in any meaningful way or exploited commercially.
I count a whole pile of ad banners on the site, IKEA branding (including their colors and logos) everywhere. She really got off very light. And if she switches to another domain in time then there will be 0 harm.