FOSS project website takedown over legal threat. What can be done?

February 6, 2008 7:24 PM

Webhost takes down open source project website in response to legal threat from small company with similar name, similar product. What can be done?

A friend of mine administers an open source project whose website was taken down by their webhost after the host received a threatening notice from a small company with a similar but not identical name and a similar but not identical product.

Let's, for example, say that the open source project's name is "Recipitome" and it's a software application that manages recipes. The small company's trademarked identity is "MegaRecipitome" and they make a hardware recipe manager. The company does preexist the open source project.

This strikes me as Coke being able to take down any domain containing the word "OK", but perhaps this is standard in trademark law.

Being a small open source project, obviously there is no money for legal representation.

Is anyone aware of or has anybody had a similar situation with a project or website? If so how was it resolved?

It's pretty crucial for this project to retain it's identity. Any strategies or suggestions for restoring and then protecting their website in the future?

Thank you in advance.

posted by _aa_ to law & government (10 comments total)

This sounds like it has an easy solution: host it on Sourceforge or Google Code. Sourceforge provides actual file hosting space that you can use to display the old website basically verbatim. Google Code's sites are more structured, but very easy to set up. That won't do anything to help if your friend is personally legally threatened, but I expect both of those entities are less likely to be intimidated by vague legal mutterings than a small hosting company, if that's what's going on. The other obvious solution, of course, is to change the name.
posted by gsteff at 7:32 PM on February 6

It's pretty crucial for this project to retain it's identity...

Phoenix became Firebird became Firefox. No harm done.
posted by popechunk at 7:37 PM on February 6

I believe that contesting a domain name is a trickier process than emailing a notoriously-censor-happy webhost. Host it on SourceForge, or get a VPS from someone who cares, and point the domain there.
posted by tmcw at 7:47 PM on February 6

Nearly Free Speech dot net, or laughing squid may be a suitable host if you explain the situation to them.
posted by iamabot at 8:07 PM on February 6

The Software Freedom Law Center may be able to help the developers pro bono.
posted by brett at 8:11 PM on February 6 [1 favorite]

Recipitome to MegaRecipitome is vastly different than Coke to (any domain with) OK (in it).

If the name is as similar as your example and the work the two organizations do are the same or similar the complaint is valid under UDRP so the domain would be in jeopardy. Now if the Mega corp wanted to go further and pursue TM issues I think they might have a case.

Obviously without knowing exactly what the products/names/domains really are it's quite hard to say.
posted by FlamingBore at 8:20 PM on February 6

IANA intellectual property lawyer (nor a lawyer at all) but from what little I've read about trademark regulations and litigation, if the situation is similar to what you describe it sounds to me like the company has a real case. If the products are both advertised over the web, do the same thing, and simply have different underlying technology it's pretty feasible that they're competing with each other within the same market which is the scope that's considered for trademarks.

Especially if like in your example the open source product's name is the same as the company's product's name minus a prefix. In the example you gave it would seem understandable to me if someone mistook "Recipitome" to be a free product released to promote "MegaRecipitome". The way there's often a "Lite" version of a software product.

In fact, in that case, as a software engineer who has contributed to open source projects, I would say that your friend would be acting unethically to keep putting out a product under that name. In any case he ought to work very hard, on his site and anywhere on the web the open source project is mentioned, and maybe even with a notice in the UI of the product itself, to make sure that no one confuses his product and the company's.
posted by XMLicious at 12:15 AM on February 7

Just change the name of the software. If the other guys have a trademark and lawyers, even if their wrong it will be expensive to find out. Obviously it would be more satisfying to fight it, but life is short and the world is full of assholes.
posted by doctor_negative at 12:49 AM on February 7

Phoenix -> Firebird -> Firefox, no harm done
Ethereal -> Wireshark, no harm done
Recipitome -> HyperGumbo, no harm done
posted by flabdablet at 1:02 AM on February 7

While it's questionable that they should be able to cause your host to shut down your site, they may have a valid trademark claim. It's probably not worth the hassle to fight it.

Other FOSS projects that have changed names because of trademark problems (off the top of my head):

Chimera → Camino
Gaim → Pidgin

Commercial software that's changed names because of trademark problems (off the top of my head):
Transit → Transmit
Hydra → SubEthaEdit
Rendezvous → Bonjour
posted by Asymptote at 2:13 PM on February 7