Dumb question from not-an-IP-or-any-sort-of-lawyer - which way does the presumption lean? There's nothing here
http://web.archive.org/web/20130603151032/http://istumblrdow...
that straight up says that the product is unaffiliated with tumblr or acknowledging someone else's ownership of the trademark. Also the site seems to make an implied claim about the reliability of tumblr. If you were tumblr, it's probably not going to earn you some sort of even-keeled citizenship award but it seems it's not utterly ridiculous you'd have your lawyers ask the other party to cut that crap out, please.
I'm too lazy to look up decisions at this hour to cite legal language, but wikipedia's definition looks correct enough at a glance:
The nominative use test essentially states that one party may use or refer to the trademark of another if:
1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.
So let's apply the test: You can't identify the tumblr service without using the tumblr trademark.
Only the minimum necessary to identify tumblr was used; words were used, not the font or symbol.
Nothing on the page suggests sponsorship or association with tumblr
It's not even a close case here.
The fact that Tumblr doesn't like it is completely irrelevant. The whole purpose of nominative fair use is to allow things like competitors to compare their product to yours. If this was a presumption that had to be overcome, Ford could never compare themselves to Toyota in commercials, because they'd just fling trademark lawsuits at each other.
The fact that he is making statements about the reliability of the tumblr service is exactly one of the things nominative use exists to allow.
It is in fact utterly ridiculous. Toyota and Dyson don't threaten Consumer Reports with trademark lawsuits when Consumer Reports makes reliability claims about their cars and vacuums. They don't do it when a guy posts about car troubles on his blog, or even if a guy makes opinion statements about the reliability of Toyota (or Ford or whoever)'s cars in general on his blog. This is because it would be ridiculous. It isn't less ridiculous because Tumblr is popular, or because it's an internet service. He's not even making claims. He is reporting a factual state of reachability to Tumblr from various points on the internet.
If you look, you'll see he's complained about Tumblr and their service reliability on their blog. Given that, it's hard to see this as anything other than Tumblr being pissy at someone with an audience that doesn't like them.
"Nominative use, also "nominative fair use", is a legal doctrine that provides an affirmative defense to trademark infringement as enunciated by the United States Ninth Circuit,[1] by which a person may use the trademark of another as a reference to describe the other product, or to compare it to their own."
It doesn't say 'you can name your product after the other product', not does my poopy layman's understanding of http://cyber.law.harvard.edu/metaschool/fisher/domain/tmcase...
And even if you could, wouldn't it be a lot clearer if you took some steps to actively dispel even the possibility of confusion?
Neither Ford nor Consumer Reports publish an unidentified 'do toyotas break down a lot' magazine or website so this seems somewhat different.
Mind you, I completely agree that tumblr's heavy-handedness about it is completely silly, I'm just trying to understand how it's so obviously legally silly, as well.
Your argument is about the domain name itself rather than the content. He has not named a product after another product. He does not have to call it "thestatusofvariousphotosharingsites.com". It is okay to name your website "walmartsucks" and talk about how much walmart sucks (though it's not okay to do that and then try to extort money from walmart, as one guy did). His website is about tumblr, the product. he can name it after tumblr, the product, as long as he does so in a way that confuses no one, and satisfies a bunch of other factors. Nobody is visiting his site and thinking "oh shit where are my photos". If there was some possibility of confusion, or if his website directed people to instagram, or any of a few other things (like tumblr was planning on expanding into what google tells me is a pretty competitive "is tumblr down" market), you may have a point. But it doesn't do any of this. It simply gives people the status of tumblr. He makes no money, he offers no non-substantiated facts, he dilutes no trademark. In this way, it isn't even an arguable case like "walmartsucks", because the domain name is literally a description of itself.
Yes, it would be a lot clearer if he added disclaimers, but that's again, completely irrelevant to whether it's necessary or required.
"Neither Ford nor Consumer Reports publish an unidentified 'do toyotas break down a lot' magazine or website so this seems somewhat different."
It isn't. It is, as they say, a "distinction without a difference".
The EFF has a page about this, btw: https://www.eff.org/issues/bloggers/legal/liability/IP
search for "Can I use a trademark in my blog's name or in the title of a blog post?"
God, no, I'm just running with the thing and I'm appreciative of you taking the time to respond in detail.
Your argument is about the domain name itself rather than the content.
That's exactly right. That and some woolly idea that that the notion of 'confusion' figures in some important way in trademark law.
So when you brought up 'nominative use' I thought doesn't the whole confusion thing come up? Does it come before or after the test for nominative use?
If there was some possibility of confusion
To me, it seems at least conceivable that that's confusing. Maybe tumblr runs such a service, as a status indicator. It is, as you said, a statement of fact - you know, if you can't get to tumblr, please check istumblrdown and we'll tell you what's going on. So I have a harder time getting my head around the idea that istumblrdown is obviously unaffiliated with tumblr the way walmartsucks isn't affiliated with walmart. The EFF page you linked talks about confusion as well and I think that's, err, the source of my confusion.
Maybe I'm just a jerk. :P
This makes the OP's response all the more unproductive, though. Find an IP lawyer and pay him for an hour or two of his time to draft this response.
It's also unclear what Tumblr's precise complaint was. I'm just assuming it was the domain and only the domain.
Thank you for so aptly explaining why making fair use an affirmative defense was/is not enough.
Nobody should have to pay an IP attorney 450 an hour (plus whatever retainer they will surely force you to pay to engage) because some large company has decided to be a dick.
Trademarks were created to enable consumers to identify the source of goods. Dilution came later, which the supreme court struck down (requiring actual dilution), and then congress readded in a weaker form (likely dilution).
Dilution was and always has been just a way for companies to snipe at each other and screw little guys through C&D. It has never helped consumers.
As an entrepreneur, I don't want to spend that $450 either, but I especially don't want to have to spend more later. I'm going to send a C&D and stop thinking about it. There's very little downside to sending one but a potentially big downside for not sending one. I'd do this if I were big, medium, or small.
If that makes me a dick, well, I'll cop to it, I guess!
Actually, I'll say personally that I'd first ask them politely via email and follow up with a C&D if they refused, but in a world where there were dozens of such things happening at any given moment, I'd no longer think it worth my time to ask each and everyone personally and just ask my attorneys to handle it. My point was that Tumblr's behavior was not outrageous, IMO.
Alas, I'm obviously in the minority on this.
So, I guess we'll agree to disagree. The fact that it may be more commonplace today does not make it less outrageous.
Outrageousness does not depend on how common something is, but society's view of it. To paraphrase an example from another ongoing thread as an example: If every airline starting throwing passengers out of the plane randomly, that doesn't make it less outrageous simply because it happens a lot.
I'm an IP lawyer (though this is not legal advice, of course).
This is absolutely not true in cases of what is known as "nominative use" like exists here.
Here, he is referring to the Tumblr product properly, and referencing their trademark'd product properly. He is not using their trademark to refer to another product, or confusing users about the trademark.
This is pretty much absolutely protected, and there is no real excuse for a C&D.