Sticky business in WordNet land
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Just a quick pointer to this fun post by Toma Tasovac, which discusses the removal of a term from WordNet, the best known and most widely used lexical database for English. Apparently DuPont, the huge chemical company, expressed displeasure about the entry for Teflon (oops, I mean TeflonTM), which did not indicate its status as a registered trademark.
Christiane Fellbaum's mail to the WN-USERS mailing list indicates that, although DuPont had not yet actually requested removing the term, the WordNet folks "settled" by offering to do so as "the simplest solution". Tasovac suggests to DuPont that they follow up this clear success by following his generously contributed outline for setting up a Division for Lexicography, Trademark Enforcement and World Domination. He concludes, "I have three more killer tips for how to rule the world by means of lexicographic black magic, but they are patented and trademarked. I am willing to discuss business propositions with DuPont representatives in strictest confidence."
Erin McKean said,
February 20, 2012 @ 12:34 pm
I wish WordNet hadn't caved … in the US, at least, dictionaries are under no obligation to call something a registered trademark. It is the responsibility of the trademark owner to maintain their trademark … but they tend to do it by sending vaguely threatening letters to mild-mannered reference editors. The Lanham Act is very explicit in regulating only *competing* uses of a trademark, not mere mentions!
Dick Margulis said,
February 20, 2012 @ 1:38 pm
When will we ever learn? The lawyers are just doing their job by sending out their nastygrams. They have NO EXPECTATION that anyone will comply with their request. The request itself is evidence that they are vigorously defending the mark. When a publisher receives such a letter, the appropriate response is to drop it in the circular file. (This suggestion does not apply to commercial entities attaching confusing brand names to their own goods, such as handmade stuffed bears clad in authentic clan tartan—when your family name happens to be McDonald—that you decide to call McBears. In such cases, consult an attorney rather than ignoring the letter.)
Soris said,
February 20, 2012 @ 2:33 pm
One might propose, Dick, that it should also be part of those lawyers' jobs to know which uses of trademarks are and are not infringing. Then they could vigorously defend those trademarks by fighting the people who are actually doing something worth fighting, rather than relying on the barbaric principle of novit enim dominus qui sunt eius!
Andy Averill said,
February 20, 2012 @ 3:07 pm
The idea that corporate lawyers who send trademark-enfringement letters are only making empty threats would come as news to all the people who have tried to use the word Oscar over the years, for example in the title of a blog. Here's what the Academy of Motion Picture Arts and Sciences says on its website:
>>>The marks “OSCAR®” and “OSCARS®” (as related to the Academy’s motion picture award) may not be used in the title or subtitle of any magazine, online or digital publication, commercial web site, stage production, video, television program or motion picture not produced by the Academy.
And apparently they mean business — I know of at least two cases where people have had to change the titles of their blogs.
Svafa said,
February 20, 2012 @ 3:17 pm
@Soris: On the other hand, if the lawyers limit the cease and desist orders to only those legitimately violating the trademark, then they will have less work to do and thus make less money.
GeorgeW said,
February 20, 2012 @ 3:36 pm
The first 6 hits on a search of the NYTimes for 'telfon' yielded only on referring directly to the trademarked material. The others referred to Tom Brady's (NFL quarterback) "Teflon layer,' Vladimir Putin's "Teflon persona," "Teflon Don" John Gotti (twice) and Brazil's "Teflon leader" da Silva.
All were capitalized, none were marked as a trademark.
Dick Margulis said,
February 20, 2012 @ 4:24 pm
@Andy: There's a clear distinction between titling my blog "The Bad Writing Oscars" and saying that the annual Bulwer Lytton awards are the bad writing Oscars. The first would be infringing. The second would be protected. However, I would expect to get a letter in either case. Just because someone passed the bar doesn't mean she can make logical distinctions in the real world.
Martin J Ball said,
February 20, 2012 @ 6:40 pm
Now I know why there's been no more King Oscars of Sweden since the 19th century ….
J.W. Brewer said,
February 20, 2012 @ 7:13 pm
Mr.(?) Tasovac's assertion that DuPont "does not descend from French aristocracy" bespeaks a possible failure to have googled the company's founder and namesake Eleuthere Irenee du Pont de Nemours and/or his dad. The trouble here is that we apparently don't have a copy of whatever actual communication WordNet received (at least I didn't see a link to that communication), so we don't actually know what change(s) DuPont initially requested (other than that it was not entire removal of the entry), what grounds they gave for the request, or how jerky/aggressive/threatening (or not) the overall posture was. Trademark owners' behavior in this area seems to range along a fairly wide spectrum of jerkiness-v-politeness, so one doesn't necessarily want to presume the worst (or to presume its absence . . .). There have been instances in which excessively aggressive initial communications have backfired on those who sent them after they were widely posted on the internet, but as i said, we just don't really know what happened here or how much time/effort/energy WordNet put into analyzing their options before deciding that deleting the entry would mean they didn't have to think about it any more.
The nearest hard-copy dictionary I have to hand (an old American Heritage I got during the '78-'79 academic year) does specify Teflon as a trademark, fwiw, although I don't know if that was for risk-management or lexicographic grounds. (Disclaimer: way back when I got this dictionary my father was employed by DuPont, although he has now been off their payroll for almost a quarter-century and I have no predisposition to think them any better or worse than the average large U.S. corporation when it comes to this sort of thing – although they may have a folk memory of having been the company that lost the U.S. trademark rights to the word "cellophane," which was still a famous cautionary tale about the risks of genericization when I first studied trademark law circa 1990.)
Laura Heymann said,
February 20, 2012 @ 9:51 pm
If a bit of self-promotion is OK: I've written about this problem from a legal perspective, noting the problems that arise when courts fail to recognize the playful ways in which we use trademarks. I'd welcome any comments.
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1744303
Dan T. said,
February 21, 2012 @ 7:48 am
If the blog is about the Occupy Oakland movement, and its name includes "Oscar Grant Plaza" (the name the Occupiers have relabeled a plaza in Oakland, after a person killed by the police), would that be an infringement on the Academy's rights to "Oscar"?
Jerry Friedman said,
February 21, 2012 @ 2:55 pm
@Dan T.: It has to be "as related to the Academy’s motion picture award" for the Academy to consider it an infringement.
Ron Butters said,
February 21, 2012 @ 3:07 pm
It is my understanding that DuPont had no legal standing to threaten WordNet (if indeed they threatened at all), though they may have been prudent (and not merely arrogant or blundering) to raise the issue with WordNet. Trademark owners, to be totally safe, must also protest when dictionaries to not give them proper credit. (Dictionaries are sometimes cited in TM infringement cases). But WordNet could have simply ignored the letter they got from DuPont, and that would have been an end to it.
On the other hand, I disagree somewhat with Erin: one could well argue that WordNet was not fulfillng their scientific duty, given that TEFLON is a registered trademark and well-known to be just that. A dictionary maker ought to report that aspect of the meaning of the word And its etymology). In fact, most dictionaries do; see, e.g., NOAD1:
Tef•lon n. trademark for POLYTETRAFLUOROETHYLENE.
adj. able to withstand criticism or attack with no apparent
effect: "The head of the crime family is known as the
Teflon Don because of his acquittals in three previous trials."
It is not illegal for a dictionary to report facts of usage, nor would DuPont be able to win a lawsuit against them. A dictionary has a free-speech right to report that TEFLON is in common metaphorical use. DuPont only has legal rights to block infringement of their mark by someone who would apply it or some highly similar word to a similar product or service, so as to create confusion in the marketplace. That is why DOVE ice cream and DOVE soap cannot sue each other. (There is also a portion of trademark law pertaining to what is known as "dilution"–in which a TM owner can claim that someone else's use of their mark as the name for an unrelated product or service weakens the value of their mark, but, again, I don't think any dictionary definition has ever been found by a court to be using a defined TM as a name, so again the dictionary maker would not be legally vulnerable for merely reporting what it finds to be scientifically true.)
Of course, one might legitimately ask how much responsibility a lexicographer has to identify every TM as such. For example, I know of no dictionary that identifies "Delta" as a registered TM, though it is the name and TM of an airline and a faucet manufacturer. One rule of thumb might be to identify coined terms, and if one overlooks a live TM (as apparently WordNet did) correct the situation, not by leaving the word out entirely, but by showing that it has an alternative use.
Kevin Russell said,
February 21, 2012 @ 3:24 pm
As J.W. Brewer hints at, this sounds like it has to do with genericization rather than with DuPont thinking WordNet was trying to horn in on its sales.
If the public consistently uses a trademarked word to apply to anything of the same class, regardless of who makes it, the company's legal monopoly on the word vanishes in a puff of smoke, like it did for aspirins, elevators, and zippers. DuPont is now officially terrified that this is happening to "teflon", and has joined the makers of bandaids, kleenexes, and xerox machines on the parapets in their desperate stand against the forces of language change.
I don't know if DuPont scared that a court might use WordNet's entry as evidence that genericization had already happened or whether they're honestly deluded about WordNet's influence over the masses. Either way, you're not going to cheer their lawyers up just by pointing out that WordNet isn't trying to mislead the public by selling a competing product.
Brett said,
February 21, 2012 @ 10:36 pm
@Kevin Russell: "Aspirin" did not lose its trademark status not through the usual process you mention. Bayer actually gave up the trademark as part of the German reparations for World War I!