Posted in Menacing Monopoly

Google intimidates parody site into closing its doors

Typical behavior from the Monster of Mountain View. TechDirt reports:

We’ve been disappointed in the past to see Google descend into the land of trademark bullies, and had hoped that the company had learned its lesson. Unfortunately, it appears that the company still will dip into trademark bullying when it really should know better. The latest came in response to some pranksters setting up a (quite amusing) parody site called, playing on the fact that Google recently purchased Nest, the makers of internet connected thermostats and smoke detectors. The site was clearly mocking Google’s expansion into… well… everything, with fake product announcements for things like Google Trust, Google Hug and Google Bee (your personal drone). The whole thing was clearly parody, and while it was clearly making a statement about how integrated Google has become into many people’s lives, you would have hoped that Google’s trademark lawyers would have a sense of humor and let it go.

They did not.

Instead, Google’s lawyers sent the people behind the parody site a threatening letter, indicating they would take legal action if the site was not taken down. The creators of the site turned to the Electronic Frontier Foundation and JBB in Germany for help. On May 16th, the EFF sent Google a letter pointedly reminding the company that U.S. copyright and trademark law protects parody and satire, and explaining why the domain name for the parody site would not be transferred to Google:

Dear Google Trademark Team,

The Electronic Frontier Foundation represents the Peng! Collective in connection with your complaints regarding the above-listed website.

We reviewed with dismay your email of May 8, 2012, asking that Peng! revise the site and transfer the domain name to Google. Instead of a cease and desist, we would have expected you to take a page from Linden Labs and issue a “proceed and permit” letter instead.

The site is a pure political commentary. Indeed, its launch has long since been recognized as such by a variety of news organizations. U.S. authorities consistently support the basic notion that trademark law does not reach, much less prohibit, this kind of speech regarding a matter of substantial public concern.1 Simply put, The Lanham Act regulates only economic, not ideological or political, competition… Competition in the marketplace of ideas is precisely what the First Amendment is designed to protect.Koch Ind. v. John Does 1-25, 2011 WL 1775765, D.Utah (May 9, 2011).

First, use of the Google name and logo on the site is fully protected by the nominative fair use doctrine. See, e. g. Century 21 Real Estate Corp. v. Lendingtree, 425 F.3d 211, 218-221 (3d Cir. 2005); New Kids on the Block v. New America Pub, 971 F.2d 302, 308 (9th Cir.1992). Indeed, courts have noted that nominative fair uses are particularly likely to be found in parodies. Mattel v. Walking Mountain Prods., 353 F.3d 792, 80 n.l4 (9th Cir. 2003).

Second, given the content of the site, and the ample publicity the spoof has generated, all of which recognized as satirical and parodical commentary, it is difficult to imagine that any Internet user would be confused.

Third, the site is sheltered by the First Amendment, see LL. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987); Cliff Notes v. Bantam Doubleday Dell Publishing Group, 886 F.2d 490, 495 (2d Cir. 1989); CPC Int Inc. v. Skippy Inc., 214 F.3d 456 (4th Cir. 2000); Mattel, Inc. v. MCA Records, 296 F.3d 894, 906 (9th Cir. 2002). Again, there is nothing on the site that would lead consumers to purchase goods or services based on a mistaken affiliation.

Finally, my client’s action is entirely noncommercial and, therefore, statutorily exempt from the Lanham Act. See 15 U.S.C. 1127, 1125; Bosley Med. Inst. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005); aubman v. WebFeat.s’, 319 F.3d 770, 774 (6th Cir. 2003); CPC Int’! V. Skippy, 214 F.3d 456, 461 (4th Cir. 2000).

Nonetheless, Peng! feels confident that it has accomplished its initial purpose of raising awareness about and commenting on Google privacy policies. Accordingly, it has revised the site to discuss the parody, and Google’s response to it. As a practical matter, we believe that revision has largely met your demands. However, we also believe it is important for Internet users to have a full document of the hoax and Google’s response, and that such documentation be housed in the most logical place, at the existing domain name. Therefore, my client is not willing to transfer the domain name.

I sincerely hope this ends this matter. If you have further concerns, please direct them to my attention.

Best regards,

Corynne McSherry
IP Director

The site is archived by the Internet Archive, so it is thankfully still available to view. For now.