What are my intellectual property rights here?
February 1, 2010 8:04 PM   Subscribe

Years ago, I modified - okay, hacked - a very popular open source image editor, gave it a name and released it to the world. For the same amount of time, there has been a shady, profiteering copy-cat website taking credit. What are my rights?

In 2006, I rearranged the popular open source GIMP graphics editor to work and act more like Photoshop. It was mostly just renaming and rearranging menu commands and bundling in Photoshop-like filters. You may or may not be surprised how much work actually went into it (I honestly don't know how to code). Call it a labor of love.

I released it as Gimpshop in hopes of giving people a viable, free Photoshop alternative. I also ruffled some feathers, mainly GIMP's core developers, but that's another story.

Not more than a few days after the OS X version was released and spread virally, someone who isn't me bought "Gimpshop.com", put up a site with hot-links to the files on my site and began advertising - LOTS of advertising. Soon, there were donate buttons, my name in the site's title and much more - making it look like my website.

I asked that the owner stop hot-linking my files (and draining my bandwidth), so he hosted them somewhere else. I questioned his motives and he said he was just a fan and that the site was a "fan-site".

It has been five years, the software has stagnated (due in no small part to my becoming discouraged by this one profiteer who trumped me, stole much of my traffic and bumped my site down to the second result when you search for "Gimpshop"). I assumed the guy would just give it up as I sadly let the project stagnate, but that hasn't happened.

Now, I'm finally feeling it's time to release a new working version of Gimpshop for OS X Snow Leopard along with the source. Do I have any grounds for taking the Gimpshop.com domain or preventing this guy from profiting from my name and work?

Thanks in advance and no, you are not my lawyer.
posted by plasticbugs to Computers & Internet (26 answers total) 13 users marked this as a favorite
Well, in theory you could trademark the name "GIMPShop" and then take the doman under the UDRP, but you would really need to talk to a lawyer. You might want to register 'gimpshop.net' in the meantime. Google ranks domain names high in search results, right now 'gimpshop.com' is the #1 result

Also, "gimpshop" in general might infringe on Adobe's trademarks too. If you wanted to, you could try to contact them and see if they have a problem with it, but that might cause problems for you too.
posted by delmoi at 8:13 PM on February 1, 2010

Best answer: I'm only going to comment on the domain name "gimpshop.com" issue. IIRC, these days, domain name disputes can be adjudicated by an expedited administrative proceeding through ICANN. This allows for resolution of limited situations that involve a bad faith registration of a domain name made with intent to profit commercially from another's trademark - which, given your summary, is what seems to be happening. The elements are basically: (1) the challenged domain name is identical or confusingly similar to a common law or registered TM*; (2) the domain name holder has no rights or legitimate interest in the domain name; and (3) the domain name has been registered and is being used in bad faith. See UDRP para 4.

*I frankly don't know if it the ICANN adjudicative resolution mechanism is broad enough to cover non-registered trademarks (and I'm assuming that you don't have "Gimpshop" registered), but it's a starting point.
posted by Pontius Pilate at 8:18 PM on February 1, 2010

Best answer: I am not the OP's lawyer. This is not legal advice.

This is an interesting and complicated case. You definitely need a lawyer. I would suggesting contacting the EFF, as they may be able to refer you to a reduced-fee or pro bono attorney. I would not contact anyone, including the alleged squatter or Adobe, before consulting counsel of your own.
posted by Conrad Cornelius o'Donald o'Dell at 8:22 PM on February 1, 2010 [3 favorites]

Best answer: Beyond the EFF there's also the Software Freedom Law Center (SFLC). I think they'd be interested in hearing from you.
posted by pwnguin at 8:31 PM on February 1, 2010

plasticbugs, I would take a different tactic-

I would re-launch under an entirely new name- one that you can get the domain for. think of a new name, trademark it, get the website, etc. -prepare beforehand.

gimpshop was REALLY popular when it came out, and I think it would be even doubly so today. Right now, as it stands, I think you might run afoul of Adobe- and even if you're in the clear legally, Adobe filing a suit against you would be enough to wipe you out anyway (whether or not iwho's right or who's wrong).

get a new name- GIMPer? PhotoGIMP? and move on from there....
posted by unexpected at 8:50 PM on February 1, 2010

If I were you I would consider rebranding your software. What's in a name? Pick something cool and reserve that domain before any squatters can nab it. Put "(formerly known as Gimpshop)" under the new name and that should clear up any confusion. I also want to say that I'm a big fan of your "hack," personally, and a new release for Snow Leopard makes me giddy with joy (no matter what you call it). Thanks for sharing your software with the world!
posted by The Winsome Parker Lewis at 8:50 PM on February 1, 2010 [1 favorite]

nthing rename.

But you might also see if a friendly lawyer -- the EFF and SFLC are your friends -- might send the passer-off a C&D basically demanding, at very least, a big ol' disclaimer that the site isn't owned by you, associated with you or authorised by you, and that no donations go to you.

The issue of passing off for the software is complicated (not just because of Adobe's trademarks here) but the squatter's also exploiting the goodwill of your name as author, and that could be covered under the right of publicity.
posted by holgate at 9:24 PM on February 1, 2010

If you make your new version too similar to the look-and-feel of Photoshop, and make yourself too easy to locate, Adobe might come after you!
posted by Chocolate Pickle at 9:37 PM on February 1, 2010

holgate, the right of publicity cause of action is not appropriate here - the infringer is not exploiting the name, likeness, etc. of plasticbugs as an author, but rather exploiting the name of the derivative product that plasticbugs created ("Gimpshop").

And as to The Winsome Parker Lewis' suggestion of including "formerly known as Gimpshop" in the product title - again, I am not sure that's a good way to go. A lot of trademark doctrine essentially hinges on whether or not there is consumer confusion as to who is the source of the product or service. The fact that a newly-renamed product was previously known by a different name does not necessarily mean that its current iteration is created by a new author / company - e.g., a company that owns / manufactures a product may decide to change its name even without a change of ownership of the product. So adding "previously known as Gimpshop" may actually create consumer confusion to the detriment of enforceable trademark rights, because the name change does not compel the conclusion that as of now, the product is being manufactured by a different entity.

All in all, though, I'd urge you to talk to an IP lawyer. This is not a problem with an immediately obvious solution, so AskMe - though ordinarily an excellent resource - might not be the best place to turn.
posted by Pontius Pilate at 9:46 PM on February 1, 2010

Response by poster: This is all great advice. Thanks so much. I'll almost definitely be contacting the EFF, the Software Freedom Law Center and possibly ICANN to see what they can do for me.

I have considered changing the name, but don't mind putting up a fight when I feel I've been wronged.

Regarding Gimpshop's menu layout matching Photoshop's: The legalities greatly concerned me when I first started the project. In performing my due diligence, I found a highly publicized case involving Lotus and Borland where a menu layout was copied and a lawsuit was brought. The court's ruling found that "the menu structure ... was a "method of operation" that could not be copyrighted."
posted by plasticbugs at 10:09 PM on February 1, 2010 [1 favorite]

Replace the files that they hotlinked to with something less desirable. Use your imagination.

Create new links on your site. Repeat.
posted by mallow005 at 10:25 PM on February 1, 2010

Oops, saw that he stopped hotlinking... Just get gimpShop.org or something. Post on your website that you did not create nor do you endorse gimpshop.com, that it is stealing traffic from you and profiting off your work. Just get the word out to the open source community and blackball the other guy.
posted by mallow005 at 10:27 PM on February 1, 2010

The court's ruling found that "the menu structure ... was a "method of operation" that could not be copyrighted."

Perhaps so. Do you have a million dollars to spend on lawyer's fees in order to reach such a ruling? Adobe does.
posted by Chocolate Pickle at 10:53 PM on February 1, 2010

Response by poster: @Chocolate Pickle: I'm just saying that copying Photoshop's menu naming conventions and layout was a risk I was willing to take, especially in light of a well-known US Supreme Court ruling that says I'm 99.999% in the right.

Would they take me to court in an attempt to overturn a Supreme Court ruling? I doubt it. Would they issue a cease & desist instead. That's far more likely. Would I have a leg to stand on. You bet your ass I would. Of course, dealing with a C&D would necessitate another call to the good people at the EFF.
posted by plasticbugs at 11:17 PM on February 1, 2010

They don't have to push it to a court decision. They only need to push it until you give up because you've run out of money. Lawsuits are often a war of attrition, and they've got more money than you do.

That's why the "Golden Rule" usually applies: he who has the gold makes the rules. Justice has little to do with it. (And with that, I will cease to post about this.)
posted by Chocolate Pickle at 11:33 PM on February 1, 2010

Without reference to your legal question, which it seems to me only a lawyer could begin to answer, I just don't like the idea here.

You're taking an open source program and modifying it. That's within your rights. But that means what you release is also open source. Anyone else could modify it on top of what you've done, give it a slightly different name, and there you are. In fact, if you were to press your case against this guy, that's very well within his range of strategies.

It's axiomatic that anyone can take a program like GIMP or Firefox or Open Office and offer it for download. If they are a large place like CNET, and you have advertising on everything, which actually funds the service ... you don't object to that, do you? It's only the way he focuses specifically on your iteration.

So to prevent him doing what anyone else is doing seems unethical at some small level, particularly given that you yourself are both building on the work of the GIMP team and the PhotoShop brand and code. At least in a spirit of the enterprise sense.

Thus I much prefer the idea of you simply reclaiming the name by starting a new site (dot org, dot net, it doesn't matter). Make sure it has good SEO factors so that it competes with the original. Perhaps put "Official GIMPShop Site" in the sitewide title (and keywords like "Download" where appropriate). As long as it's buried on your personal site it's going to have lower PageRank regardless of anything else you do. And here's where all those other download sites come in handy -- you can create new linkbacks, raising your PageRank further. Then go through this list of folks who link to the other guy and ask them (where appropriate) politely to link to your official site instead. That will reduce his PageRank (at least by the next Googledance).
posted by dhartung at 11:56 PM on February 1, 2010

Response by poster: @dhartung: You raise some very good points. As the GIMP is GPL'd, any code based on its source is free (free to distribute, free to modify, free to give away) by definition. I COULD charge money to distribute Gimpshop, but choose not to. Anyone else can redistribute Gimpshop and charge a "distribution" fee for it, that's their prerogative. That's where ad revenue would fit in, as shady and profiteering as it is.

I'm still not sure where, in a legal sense, the name of the project fits into the GPL, though. Who owns the name? Especially when it's a bastardization of another project's name. That makes me think changing the name is in my best interest. Especially if I can differentiate it enough visually from GIMP in the next go-around.

I'll still be contacting the EFF to hopefully get their take on the whole thing. There's lots of moving parts here and I don't want to make any hasty decisions.
posted by plasticbugs at 12:55 AM on February 2, 2010

There's another wrinkle here: estoppel and/or laches.

These are equitable legal doctrines which prevent plaintiffs from sitting on their rights by denying them relief when a significant amount of time has passed or they have explicitly or implicitly waived their rights.

This has apparently been going on for four years now. Failure to defend for a number of years what might arguably be a trademark may prevent you from attempting to do so later on. The theory is that if you really cared about this, you should have done something about it earlier, and letting things slide this long is tantamount to giving your permission for the other party to do whatever it is they're doing. These doctrines--or something like them--do apply in IP cases, particularly trademark.

I'm not saying that this is going to be a problem here, but it's something you definitely want to take up with whatever legal counsel you wind up procuring for yourself.
posted by valkyryn at 5:39 AM on February 2, 2010

Yes, anyone has the right to redistribute GPL'd software. However, the owners of gimpshop.com are giving the impression that the site they operate is your official site and are purporting to collect donations on your behalf which don't actually go to you. This seems clearly fraudulent. They might also be violating the GPL in some way, eg. not distributing the source code.

I don't think you can do much to protect the name itself if it's not trademarked. But that's not exactly the issue here. dhartung has some good suggestions about how to establish your site as the real source of GIMPshop.

Good luck, plasticbugs!
posted by nangar at 6:04 AM on February 2, 2010

A small way to get your site recognized as "official" via search might be changing the web address on the Gimpshop wikipedia article
posted by sarahj at 7:25 AM on February 2, 2010

Ah, the Link Farm. I'm not a lawyer, let alone yours, but I think this:

there were donate buttons, my name in the site's title and much more - making it look like my website.

is highly problematic. The PayPal screen for donations simply lists "Gimpshop" under "Purpose", and the title of the site, as you say, represents it under your name.

Have you considered getting in contact with folks like John Gruber at Daring Fireball and Leo Laporte over at TWIT? They have a field day with stuff like this, and can probably do more on the publicity front that trying to game PageRank.
posted by mkultra at 7:45 AM on February 2, 2010

(btw, a million thanks for GimpShop!)
posted by mkultra at 7:45 AM on February 2, 2010 [1 favorite]

Best answer: I'm still not sure where, in a legal sense, the name of the project fits into the GPL, though.

It doesn't. Copyright law (which covers the source code) and Trademark law (which covers the name) are two completely separate facets of IP law and have entirely different rules and procedures. The fact that it's GPL code really has nothing to do with anything here. A related example is Redhat. They make money by selling Redhat Enterprise Linux, which is comprised of free software under the GPL and other licenses. In theory, anyone has the rights to freely re-distribute this software, but Redhat owns the rights to the registered Redhat trademark which they restrict the use of such that you can't just freely copy Redhat Enterprise Linux, you have to remove all references to the name, resulting in things like CentOS. A similar thing goes on with Firefox, whereby you can only distribute something called "Firefox" if you compile the code exactly as released from Mozilla without modifications. If you want to distribute a modified Firefox you are entirely within your rights under copyright but you have to rename it because Mozilla controls the Firefox trademark. This caused Debian to have to rename Firefox to Iceweasel in their distro because they needed the ability to modify certain aspects of Firefox to meet their packaging standards.
posted by Rhomboid at 8:00 AM on February 2, 2010 [1 favorite]

Also, I think it's probably impossible now for you to file any claims on the un-registered Gimpshop trademark, because the other party has been using the mark for a number of years uncontested. Unlike patents where you can sit around silently for years while everyone violates your patent and then suddenly emerge and demand compensation (the so-called submarine patent), if your trade mark is used in a significant and unauthorized way and you don't try to stop it you can lose your rights to the mark; similarly if you don't use the mark for a period of time it also expires for non-use.
posted by Rhomboid at 8:17 AM on February 2, 2010

By the way, if you do rename can you take the word "Gimp" out of it? You could call it GNUShop or something. That name is so immature and ridiculous. Think about how it sounds to tell someone who's not a hardcore computer user to "Just download GIMP" (or Gimpshop) to modify some image :P.
posted by delmoi at 6:04 AM on February 3, 2010

I'd look into whether the service the other guy is using to collect donations cares that he's pretending to collect donations to you. Calling their attention to it might dry up his pleasant revenue stream for a bit.
posted by zippy at 12:36 AM on March 11, 2010

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