AS if…? [now with edits]

Apparently Sew Fast/Sew Easy has extended the Yahoo terms of service campaign. It seems that now it is objectionable to either use the acronym SNB, or to use a “stitch and bitch” phrase in the description text, not the title, of a Yahoo group. It’s not absolutely clear. Yahoo groups who happened to have old content in their messages or files that contained some variant of “stitch and bitch” were targeted. So were groups who had complied with earlier demands to remove “stitch” and “bitch” from their group titles, but for whom Yahoo had failed to update subject line tags or the description text in Yahoo Groups search results. Thus, for example, a group’s message subject line still read [stitchandbitchYourTown] when in fact the group had already voluntarily changed its name to [SNBYourTown] — so the group got another demand to change their name from Yahoo.

This is reminiscent of a claim made in 2002 by Alice Starmore’s agent, Alexander Muir, that using Herself’s initials was sufficient to “denote” the ALICE STARMORE trademark, which was apparently a bad thing.

(No, it didn’t make sense to me at the time, either; Starmore was not using AS as a trademark, so far as anyone knew.)

Since that last bit about “AS” isn’t applicable anymore, I’ll just meander off the main subject a little and point out that silencing critics by flexing one’s intellectual property rights is by no means an Internet innovation. Even if the goal of litigation is ostensibly to protect one’s state-granted rights, there are certain cases where eliminating (or attempting to eliminate) a source of criticism must have been an extra bonus.

For example, in the 1970s the Church of Scientology sued Cyril Vosper for publishing a book critical of Scientology. Vosper had been a Scientologist, and became disillusioned with its teachings. In the meantime, he had access to a number of the Church’s writings, and in writing his book, he included a number of extracts of the Church’s works, bulletins, and letters, which were protected by copyright, just like anybody else’s literary works. Some of these extracts were very substantial excerpts, so when the church sued Vosper for copyright infringement and breach of confidence in an attempt to get an interlocutory injunction (an injunction before trial preventing further dissemination of the book), the English Court of Appeal had to deal with the question of whether too much had been taken by Vosper for his book to qualify as a fair dealing:

Counsel for the plaintiffs says that what Mr Vosper has done is to take important parts of Mr Hubbard’s book and explain them and amplify them. That, he says, is not fair dealing. Counsel for the defendants says that Mr Vosper has, indeed, taken important parts of Mr Hubbard’s book, but he has done it so as to expose them to the public, and to criticise them and to condemn them. That, he says, is fair dealing.

It is impossible to define what is ‘fair dealing’. It must be a question of degree. You must consider first the number and extent of the quotations and extracts. Are they altogether too many and too long to be fair? Then you must consider the use made of them. If they are used as a basis for comment, criticism or review, that may be a fair dealing. If they are used to convey the same information as the author, for a rival purpose, that may be unfair. Next, you must consider the proportions.

To take long extracts and attach short comments may be unfair. But, short extracts and long comments may be fair. Other considerations may come to mind also. But, after all is said and done, it must be a matter of impression. As with fair comment in the law of libel, so with fair dealing in the law of copyright. The tribunal of fact must decide. In the present case, there is material on which the tribunal of fact could find this to be fair dealing. (Hubbard et al. v. Vosper)*

Everyone studying copyright (well, in countries drawing heavily on Commonwealth jurisprudence) reads this case in law school, this passage is frequently quoted in Commonwealth cases dealing with copyright and fair dealing for the purpose of criticism — particularly by the defendant in copyright infringement suits, because the Court of Appeal determined that there was fair dealing, and that the equities did not weigh in favour of an interlocutory injunction. (If you want the court to do your “dirty work” — stop an infringer by issuing an injunction — you need to have relatively “clean hands” yourself. Injunctions are usually a form of equitable relief, meaning that it’s within the court’s discretion to grant or refuse them, based on the facts of each case, the conduct of the parties, and the court’s impression of what would be fair in the circumstances.)

Of course, the SFSE affair isn’t about copyright, it’s about trademarks. As another example, in Canada, Michelin sued the Canadian Auto Workers union for copyright and trademark infringement. Around 1994, CAW had used Bibendum (you know… the Michelin Man!) in pamplets and posters intended to convince Michelin employees in Nova Scotia to join the union. One depiction of Bibendum showed the jolly huge fellow about to squash a worker with his foot.

The result of this lawsuit was a lengthy, reasoned decision thoroughly setting out the meaning of “use” of a trademark in Canadian law (“use” is a many-faceted term). In the end, it was determined that CAW had neither infringed Michelin’s Bibendum trademark, nor depreciated Michelin’s goodwill in the mark (depreciating the value of the goodwill in a trademark is actionable, even if the impunged use is not a confusing use). The attempt to recruit union members, even using a parody of Michelin’s trademark, was not the sort of commerical activity resulting in a “use” that would attract liability.

CAW was held liable for copyright infringement in their portrayal of Bibendum, though. (Not surprisingly, the application of the Charter right of freedom of expression was also argued, and seriously considered and analyzed by the court. It was determined that CAW’s freedom of expression was not infringed by the enforcement of Michelin’s copyright.)

These were lawsuits dealing with print. The Internet, and subsequent litigation, has brought us the US Digital Millennium Copyright Act and Internet service providers’ terms of service. When I say “us”, it really does mean all of us who use US-based service providers, even if we aren’t in that country ourselves — laws governing Internet operators have far-reaching results.

The DMCA operates to give ISPs an “out” in the case of copyright infringement, if the ISP complies with the notice and takedown regime set out in the statute. IIRC, upon receipt of a proper notice of allegation of infringement, the ISP must notify the alleged infringer and take down the material within certain time limits in order to avoid pecuniary liability. The alleged infringer, under the DMCA, has a certain time limit to respond to the allegation with a counter-notification, and if done correctly, the ISP must restore the content and the complainant must then take court action to get it removed again.

Many ISPs, like Yahoo and eBay, have built the takedown procedure into their policies. However, the DMCA applies to copyright only, not trademarks. So to cover themselves, ISPs treat other intellectual property rights the same way they treat copyright — except for the counter-notification. So, if the allegation is trademark infringement, it’s harder to get your content restored, even if the allegation is unfounded.

The easiest solution for individuals is to vote with your wallet, so to speak. If you don’t like an ISP’s policies, move to an ISP with policies you do like. Which reminds me of Canada: if the last proposed amendment to the Canadian Copyright Act hadn’t died on the order paper when the government fell, we might have our own mini-DMCA system in place by now. Except it would have been a notice-and-notice regime: the ISP would have to notify the alleged infringer of the allegation, and retain information about the alleged infringer’s identity for a set period of time. The bill with this amendment will probably get reintroduced at some point; I don’t know if there are plans to beef up the notice-and-notice system. As it is, it’s so… Canadian. “Hello, sorry to bother you, but someone told us you’re infringing their copyright, so we’re just passing along the message. You might want to think about doing something about this. Thanks!”

Anyway. Moving to a new ISP is easier said than done, especially when you’re talking about switching from a service that provides nearly idiot-proof mailing list facilities. But imagine: Yahoo thought that knitters formed an important enough demographic group to specifically reference them on their Groups homepage. What if it were possible to move every major (>100) knitting group from Yahoo, and over to somewhere else? Would Yahoo notice, or bother to react?

*As an aside, I hesitated to put up that quotation from the decision, because certainly someone who wants to infringe copyright might engage in study at the Google School of Law and find this, and claim that it justifies, oh, I don’t know, scanning a pattern from a book and sticking it up on their blog with a few comments, and claiming that’s a fair dealing. But this is a classic passage that captures the balance the court must strike between copyright and fair criticism, by a famous English jurist. So, in case you’re self-medicating: judges aren’t stupid. They can tell the difference between real criticism and a lame excuse to distribute copies.

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24 Responses to AS if…? [now with edits]

  1. in grad school (for counseling psychology) all my cohort and members of the preceding one pushed me to go on to law school, citing my (to them) incomprehensible fascination w/ the legal wranglings we were subjected to in our law and ethics for mental health professionals course; our instructor went so far as to suggest that i should “browse the stacks” in our library’s legal wing, a tactic i believe he employed to engage my extra energy and dissuade me from asking my esoteric legal questions, thereby driving the class freakin’ nuts each week. anyway, i’m enjoying beyond measure your laying-out of the legal picture of the whole SFSE debacle, so my thanks to you! cheers, velma

  2. LissaKay says:

    Take a look at Airset.com as an alternative group site.

  3. j. says:

    Google Groups has been suggested at freetostitchfreetobitch.org (in the forums).

    I’m not certain about LiveJournal — I just saw a post about someone being required by LJ to rename a community containing a “stitch and bitch” variant in the title.

    Those are all free services, so you get what you pay for, and you have to take the TOS as they come.

    There’s also the option that requires funding — finding an ISP that will resist threats, and setting up a board. That’s actually what happened in the case of the Knitting Beyond the Hebrides mailing list. It started as a Yahoo group, got shut down by AS twice, and was then moved to a server run by a member. No more shutdowns or threats from trademark owners.

  4. mamaloo says:

    So, where might be a good alternative to Yahoo’s Groups services? Google’s Groups? (Or is that Gmail’s Groups?)

  5. j. says:

    I’d need some clarification of “competes with their brand.”

    In a broad sense, not only do Pepsi’s products compete with Coca-Cola’s products, but their brands compete as well since consumers may align themselves with one or the other as an expression of their personal style. Maybe that’s not a great example. Um… Rickard’s Red and Wellington County. Guess and Parasuco. Jasmine and Alesse. Anyway, the point is that business competitors engage in branding because they are in competition. In this case, with whom is SFSE competing? Who’s the business competitor?

    I’m about to edit the post in view of the info above (and by e-mail).

  6. LissaKay says:

    Erin: How does the presence of Yahoo groups for knitters to organize and schedule meeting compete with their brand? Their brand being not the sewing store or lessons, but an online discussion board focused on sewing? Further, their claim to first use of the phrase is totally false. It would be like trying to trademark “quilting bee” or something like that.

    Everyone: I finally got SFSE to point out to me exactly what was “infringing” about our site. It turns out that it is Yahoo at fault mostly … I had edited our group description back in January during the last round of this nonsense, but when you search the Yahoo group directory, our group comes up in the old form, with the SnB phrase still on there. I wrote back to SFSE and told them to yell at Yahoo, and leave us the hell alone. I haven’t heard back from them on this yet. But they were still really pushing the “List your group on our forum and all will be well!” thing. I called the store again today, and the girl that answered said she was supposed to make that suggestion to anyone that called in regards to this, as well as direct them to the email address on the notice.

    They have some sort of agenda that goes beyond protecting their trademark …

  7. I love the “You would do the same” line in the response letter from SFSE. No, doll, no sane business person would do what you’re doing. I wonder if this is actually about getting rid of the evidence of their massive mistake – delete old board and discussion threads that reference SnB, delete groups who discussed it, eventually they can scrub the whole internet clean of this debate and one day a new generation of knitters WILL NEVER KNOW that Meyrich didn’t coin the term.

  8. Erin says:

    They can not claim SNB but they can prevent anything on a website that competes with their brand. This is the trademark law in the US and as a lawyer I would recommend them do the same. Please do not shoot the messenger.

  9. Elisabeth says:

    From what I last heard, the letters SnB are NOT the problem (this information came down from “on high” so I’m pretty sure it’s accurate). However, people are having a helluva time figuring out why they are in violation of the trademark.

  10. LissaKay says:

    I am wondering if SFSE isn’t trying to stake a claim for trademark on the concept of online organization of IRL needle crafting social groups. In their knee-jerk form letter reply, they try to push us to their site to list our SnB groups.

    I have emailed and called both SFSE and Yahoo (be nice if you call SFSE, the person who answers the phone is just a clerk in their store). But I have not gotten any further response than the form letter from SFSE.

  11. Birdy says:

    You know what? I think they just went to this site and emailed everyone on it.

    http://www.stitchnbitch.org/snb_groups.htm

    Our yahoo group in San Antonio does have “stitchnbitch” on the main page. It’s in the from of a link to stitchnbitch.org. Can they do that can they tell you you cannot write these phrases on personal websites and correspondence? What if we put trademarks symbols on them? These people are at the point where they are harrassing ordinary knitters.

    This is making me mad.

  12. Deepa says:

    And in the midst of all the brouhaha, Debbie Stoller’s crochet book, still using the disputed term in all its unabbreviated glory ‘Stitch n Bitch’, came out some weeks ago and is selling briskly.

    Bite me, SFSE.

  13. fillyjonk says:

    Okay, what I don’t get about this is:

    How is it financially hurting this SFSE group if a small group of knitters in, say, Bozeman Montana, decide to call their bimonthly meeting “Stitch and Bitch”? It’s not like they’re pirating some SFSE product and undercutting them, it’s not like they’re taking SFSE patterns and photocopying them and distributing them…I do not see how a corporation can claim “harm” on the part of what are basically non-profit, non-commercial groups who happen to choose to use the same (and obvious, because they rhyme) terms as SFSE has?

    I could kinda sorta see it for the concept of a “Stitch and Bitch CAFE” but from the way I’m reading what goes on, they just want to take the freedom to use “Stitch and Bitch” away from everyone who would use the term publically.

    I really, really hope some savvy judge laughs this thing out of court. Because if SFSE succeeds, what’s to stop any other sleazy company from deciding they want “ownership” on some other commonly used name or phrase?

  14. Shelby says:

    Well thank goodnes my name isn’t Shelby Norma Brewster. Changing all my id and training my friends and family to call me by a different name would be quite a chore.

    Stupid greedy SFSE.

  15. Amy says:

    Good god, I had hoped this was quieting down and would be resolved. Yahoo needs to have a bit more of a critical eye when it comes to these cease and desists. The groups should leave Yahoo and start their own lists elsewhere as clearly Yahoo isn’t interested in anything to do with customer service.

  16. deety says:

    I thought it was pretty funny that they wanted people to use their message board instead of a mailing list. Yes, SFSE, groups with hundreds of members can easily organize in one message board thread. And they’re so likely to want to move to the boards of people who attacked them.

    Is there any way that they can actually get in trouble for making such stupid infringement claims?

  17. Cassie says:

    Apparently “knitting” is covered under their trademark. As well as “and.” So we’ll have to change the name of the craft to Yarning With Many Sticks.

    Also, glad my cousin Susan Natalie Bmumble got married, because otherwise she couldn’t initial anything!

  18. caro says:

    Oh lord. When will it end?

  19. stephanie says:

    Maybe since we can’t use Starmore’s initials we could just add another “S” to the end. That way everyone would still know who we were talking about. :)

  20. j. says:

    Do those Yahoo notices even identify the disputed trademark usage? That Yahoo e-mail that was copied to freetostitchfreetobitch.org didn’t actually give a clear basis for the complaint — it gave instructions for changing the title of the group, implying that it was the SNB portion of the group name that was the target.

    The standard response that they’re sending out (as posted in that LJ thread) invites people to regroup on the SFSE website. Seek and destroy — the best way to drive up your membership.

  21. j. says:

    Well, for infringement of a registered or unregistered mark, there needs to be some likelihood of confusion, at least. Somebody who thinks that an SNB branded item or service is affiliated with SFSE, perhaps? Is SNB confusing with STITCH AND BITCH CAFE?

  22. Jenn says:

    And apparently they are not just after the letters either, my first group was always an initial only group and was shut down back in January. My new group, Fort Worth Knits was notified today as well – the words stitch and bitch do not appear anywhere in the description either. I guess they just hate everyone!

  23. Chris says:

    Ack. Where will it end? We must remove those letters from the alphabet?!

  24. Janice in GA says:

    In your opinion, can they claim that using the initials SnB violates their trademark??? Sounds ludicrous somehow, but this whole thing has been one of the biggest hoo-hahs I’ve seen since Buck was a calf. Jeezopete.