Saturday, 31 May 2014

Zazzle & the Pi trademark fiasco: A communication problem? Or something more?

So Zazzle have listened to reason - or listened to their angry designers - and are reinstating pi products, having made a decision over the pi trademark claims.

Maybe that was going to happen anyway? The (eventual) message from Zazzle was that they removed designs while they "evaluate the complaint". Was it all just part of the process?

It certainly shows the importance of communication.

Up until this forum post, designers had no confidence that any kind of review was being considered. Emails were sent which first claimed "the mathematical symbol pi is a trademark" (it isn't); further emails said legal action by "Pi Produtions" meant there was nothing Zazzle could do; further emails claimed they'd had no choice but to remove any and all "confusingly similar" designs under the Lanham Act.

It just looked like Zazzle were shrugging their shoulders and saying "sorry, nothing to do with us, you can take legal action if you like".

So even if a review was taking place, and was always going to happen (which I doubt), designers were not notified, and had no indication it might take place.

I've received the original standard Content Review email in the past; many designers are familiar with them.
But the same email is sent for both of the following situations:
  • Individual designs which have been complained about - Zazzle are extremely unlikely to review these
  • Zazzle pulling down all designs related to a topic in response to a DCMA - Zazzle may review this as an overall decision
I'm not convinced a review was going to happen, or that reinstatement was inevitable. Zazzle just simply don't want hassle. If they're threatened by a DCMA and think it's remotely credible, they'll pull down all designs in order to avoid a lawsuit. If designers and store keepers make a big noise and threaten legal action in response, they'll review it to avoid a potential lawsuit and a bad reputation.

To be clear: I don't think Zazzle responded to the logical argument that you simply cannot trademark a mathematical symbol. I think they responded to the noise designers made themselves to look like a bigger hassle.

So I don't mind that it looks embarrassing that my previous blog post is picking up attention from the wider internet - and some people are talking about it - just as Zazzle have reinstated pi-related designs.

Without blog posts like that, as part of a wider uproar, Zazzle may have just sat on the decision and allowed the trademark claim to stand, which would have set a worrying precedent for other sites to do the same.

Yes, sites like Zazzle have to be very careful about intellectual property, and often act on the side of caution to avoid a lawsuit. They can't instigate a full-scale review for every single design which gets a trademark infringement complaint.

But they must also have a process for recognising claims which are clearly fraudulent, and do not deserve action. I have no doubt that all print-on-demand sites receive these on a regular basis, and that dumb claims are rejected on a regular basis too.

To quote the original email:
It has been brought to our attention that the mathematical symbol “pi” is a registered trademark, U.S. Registration No. 4473631.
The mathematical symbol pi is not a registered trademark.

Some loser was granted a trademark which included the pi symbol, and threatened Zazzle into believing all existing designs using the pi symbol are "confusingly similar" to his. This, clearly, is a claim that should have been thrown out straight away.

As a designer I'm glad I can relax and get back to doing what I should be doing - designing.

But the whole episode shows how even spurious cases can get taken seriously, with wider implications for everyone.

As for Paul Ingrisano, it seems he's very experienced at this game - having cleverly negotiated with Reebok to withdraw their opposition to his current attempt to trademark "I <3" after inserting a clause to specifically exempt the trademark from all basketball-related apparel.

I wonder how long before we see this whole situation repeated.

[Thanks to all the other Zazzle designers who talked and posted about this subject, and got in touch about the situation.]

3 comments:

  1. I'm happy it was resolved too. I understand they wanted to pull everything right away - but it was handled badly. IF they intended to evaluate it they should have created a special takedown notice for the products an given us more information. Hopefully this will go into their next meeting under 'how should we have handled this'.

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  2. I sent an email to Zazzle for each product that was removed and of course stated that you cannot trademark a Greek letter of the alphabet that is used a mathematical symbol. I'm glad that they re-instated the products.

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