Not This Again: Facebook Threatens To Sue Guy Who Registered 'DontUseInstagram.com'

from the don't-be-a-trademark-bully dept

Ah, this one takes me back to the early days of Techdirt, when the biggest nonsense we were writing about was giant corporate bullies threatening (or in some cases suing!) over so called "Sucks Sites" (that's an article from almost 20 years ago!). The issue was that people who were upset with a particular company would register the domain of CompanySucks.com to (usually) put up a protest site. The company (and its lawyers) would then threaten to sue the individual for trademark infringement. There were some mixed rulings over those sites, but in general most have decided that sucks sites are not trademark infringement, and are protected under a variety of theories -- including a lack of any possible confusion and because they're nominative fair use.

You'd have hoped that, by now, big company lawyers would recognize all of this. Apparently not Facebook's. Now, to be fair, as we recently discussed, for companies like Facebook, often they carefully police domains that make use of similar URLs in order to cut off sketchy phishing and scam sites. But it's one thing to go after such scammers... and it's another to go after someone who is obviously engaging in criticism.

Enter: DontUseInstagram.com, created by Paul Kruczynski.

The site now is designed to pretty much do what it says on the tin: give you reasons why you shouldn't use Instagram. Whether or not you agree with that messaging, it's clearly not infringing on Facebook/Instagram's trademarks. Someone should probably tell Instagram's lawyers. Because they sent a threat letter. In fact, they sent this threat letter before he'd even launched anything at the site, basically trying to intimidate him out of the site before he'd even done anything with it.

To Whom It May Concern,

We are writing concerning your registration and use of the domain name dontuseinstagram.com, which contains the Instagram trademark.

You are undoubtedly familiar with Instagram and its worldwide renown in providing photo sharing and editing services, online networking and related products and services through a number of channels, including through its mobile application software and its website available at Instagram.com. Instagram owns exclusive rights to the INSTAGRAM trademark, including rights secured through common law use and registration in the United States (Reg. Nos. 4,170,675 and 4,146,057) and internationally. Instagram is a global leader in photography software for mobile devices, with over 800 million monthly active accounts. Due to Instagram's exponential growth and immense popularity, the Instagram brand, is frequently, if not daily, referenced in the media and pop culture. Its fame entitles it to broad legal protection.

We have recently discovered that you registered the domain name, which incorporates the famous INSTAGRAM mark. Instagram has an obligation to its users and the public to police against the registration and/or use of domain names that may cause consumer confusion as to affiliation with or sponsorship by Instagram, dilute the distinctiveness of its INSTAGRAM mark, or otherwise tarnish the mark. Accordingly, in addition to civil actions, Instagram and its parent Facebook have filed numerous proceedings pursuant to ICANN'S Uniform Domain-Name Dispute- Resolution Policy (http://www.icann.org/en/help/dndr/udrp) to secure the transfer of infringing domain names. Moreover, the Anticybersquatting Consumer Protection Act provides for serious penalties (up to $100,000 per domain name) against persons who, without authorization, use, sell, or offer for sale a domain name that infringes another's trademark.

While Instagram respects your right of expression and your desire to conduct business on the Internet, Instagram must take action to stop the misuse of its intellectual property. As you can imagine, various third parties around the world have attempted to wrongfully capitalize on Instagram's reputation by registering domain names that include or are derived from the INSTAGRAM brand. Such names are confusingly similar to, dilutive of, and can tarnish the INSTAGRAM mark.

We understand that you may have registered dontuseinstagram.com without full knowledge of the law in this area. However, Instagram is concerned about your use of the Instagram trademark in your domain name. Accordingly, we must insist that you immediately cease using and disable either delete or transfer to Instagram any site available at that address. You should not sell, offer to sell, or transfer the domain name to any third party.

Please confirm in writing that you will agree to resolve this matter as requested. If we do not receive confirmation that you will comply with our request, we will have no other choice but to pursue all available remedies against you.

Sincerely,

Instagram IP & DNS Enforcement Group

Instagram, Inc.

Kruczynski was able to line up the Cyberlaw Clinic at Harvard Law's Berkman Klein Center to help him respond to those Instagram lawyers, explaining to them in fairly great detail how totally full of shit their threat letter is in a letter from Kendra Albert,

The legal claims that your letters make are frivolous. Even worse, your overreach imperils Mr. Kruczynski’s First Amendment rights. Mr. Kruczynski’s domain name is not likely to cause consumer confusion, which Instagram would be required to prove in order to succeed on a trademark infringement claim. See Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008) (citing Borinquen Biscuit, 443 F.3d 116 (1st Cir. 2006)).

To establish likelihood of confusion, a trademark owner “must show more than the theoretical possibility of confusion.” Int'l Ass'n of Machinists & Aero. Workers, AFL-CIO v. Winship Green Nursing Ctr., 103 F.3d 196, 198 (1st Cir. 1996). For courts to find a likelihood of confusion, it has to be shown that there is “a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.” Id. Given that Mr. Kruczynski’s domain has not even been launched, Instagram cannot show more than a theoretical possibility of confusion. Moreover, as Mr. Kruczynski’s website dontuseinstagram.com currently resembles nothing like the Instagram website, it is inconceivable that any reasonably prudent purchaser exercising ordinary care would confuse the two websites.

Even in the scenario that Mr. Kruczynski’s domain dontuseinstagram.com becomes live and operates in a way Mr. Kruczynski originally intended it to, Instagram will not be able to establish that there is likelihood of confusion in Mr. Kruczynski’s registration and use of dontuseinstagram.com under the First Circuit’s eight-factor test. See Oriental Fin. Grp., Inc. v. Cooperativa De Ahorro Crédito Oriental, 698 F.3d 9, 17 (1st Cir. 2012) (citing Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8, 15 (1st Cir. 2004)). Mr. Kruczynski did not intend to claim any associations with the Instagram mark and did not intend to compete with Instagram. In fact, Mr. Kruczynski’s domain would serve as a platform to criticize Instagram’s user privacy violations, not as a social media platform for users to share photos and accumulate followers. The goods or services provided by dontuseinstagram.com would be significantly different from those provided by Instagram, and the channels of trade and advertising would be very different as well. It is unimaginable that there would be evidence of actual confusion where Instagram users actually confuse Instagram with a website criticizing Instagram, starting from the domain name itself. Even assuming that Instagram has a strong mark that most people recognize, it is overreaching for Instagram to forbid others from registering or using any name that mentions Instagram without due regard of relevant laws.

The existence of a parked page on Mr. Kruczynski’s domain does not create trademark infringement where there previously was not any. See, e.g., Acad. of Motion Picture Arts & Scis. v. GoDaddy.com, Inc., No. CV 10-03738 AB (CWx), 2015 U.S. Dist. LEXIS 120871 (C.D. Cal. Sep. 10, 2015) (holding that the plaintiff failed to meet its burden of proving that a domain name registrar who operates parked page programs acted with a bad faith intent to profit from the plaintiff’s marks). In fact, the existence of the parked page is largely irrelevant to the discussion of trademark infringement here, and you are overstepping by demanding Mr. Kruczynski remove the parked page on his own registered domain.

Your claim of Mr. Kruczynski’s alleged trademark infringement is ungrounded in law. The non-infringing nature of the use would have been obvious had an attorney even glanced at the name of the site.

To the extent that these emails were sent using an automated process that merely checks to see if a domain contains the word Instagram, and then automatically requests the transfer of a domain to you if it does, such behavior plays on the threat of litigation to suppress potentially lawful speech. I am aware that there may be many domains registered with the Instagram mark in them, some of which may be used for phishing or other nefarious purposes. But that does not justify a “spray and pray” strategy where you automatically send notices of infringement without any human review. Such notices may serve to unlawfully intimidate critics, requiring them to find legal counsel.

That reply was sent back in November and it requests that Instagram retract the threat letter and provide "a clear statement that you do not intend to file suit over his ownership of dontuseinstagram.com." Somewhat optimistically, it also said that such a letter should "be accompanied by a discussion of what processes you will implement in order to ensure any messages you may send to domain owners will not attempt to intimidate lawful users of the Instagram wordmark."

Neither happened. Instead, Instagram just went silent. It's quite likely that the human being who received the response letter realized how bad an idea it was to send that original threat letter, even if automated, but has just moved on to threatening someone else. But Instagram deserves to be called out for its practices which can lead to real intimidation for people, unlike Paul, who don't have the ability to have a knowledgeable lawyer respond to the threat.

That's unfortunate, because it means that there are no consequences for sending out such bogus, censorial threat letters. Well, other than having a site like Techdirt call out your stupid threats.

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Filed Under: brand protection, chilling effects, criticism, domain registration, don't use instagram, free speech, sucks sites, trademark, trademark bullying
Companies: facebook, instagram


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  • This comment has been flagged by the community. Click here to show it
    identicon
    Anonymous Coward, 23 Apr 2021 @ 9:46am

    Probably doesn't help that instagram is one of the internet's biggest sources of malware. FROM THE GODDAMN OWNERS!

    Signing up/using instagram gives them carte blanche in the TCs to install whatever the hell adware/malware they feel like. And this includes software that scans your hard drive (whilst idle to hide the activity 'natch) then takes whatever juicy documents/notes/juicy stored browser passwords it feels like and ships the date back to HQ for resale. Despite this being illegal. In every single damn country on Earth.

    reply to this | link to this | view in chronology ]

    • This comment has been flagged by the community. Click here to show it
      identicon
      One is nearly zero, for small values of zero., 23 Apr 2021 @ 9:55am

      Re: "Despite this being illegal."

      Oh, an oldthinker, both for the notion of "illegal" and that corporations aren't immune to the very notion.

      Have you been reading here long, AC? -- Cause Maz is a flaming corporatist who believes that legal fictions are "persons", because a legal doctrine created out of thin air by lawyers makes them so. -- You cannot logically rail at corporations and not at Maz for supporting them. So you're probably just yet more astro-turfing to make it look as though corporations are disliked here.

      reply to this | link to this | view in chronology ]

    • icon
      Stephen T. Stone (profile), 23 Apr 2021 @ 10:05am

      Extraordinary claims require extraordinary evidence.

      Where is yours?

      reply to this | link to this | view in chronology ]

    • icon
      Rico R. (profile), 23 Apr 2021 @ 10:51am

      Re: Don't think that's true

      Unless you have evidence otherwise, I don't think Instagram installs malware. It defies common sense. What social media site is going to install malware on the devices of their userbase? Doesn't sound like a way of winning new users over. You also claim:

      Signing up/using instagram gives them carte blanche in the TCs to install whatever the hell adware/malware they feel like.

      Assuming "TCs" refers to "Terms and Conditions", I looked into Instagram's terms of service. There is no reference to malware in the current terms of service. But in an earlier revision from 2017, the word malware only appears once:

      You must not interfere or disrupt the Service or servers or networks connected to the Service, including by transmitting any worms, viruses, spyware, malware or any other code of a destructive or disruptive nature. You may not inject content or code or otherwise alter or interfere with the way any Instagram page is rendered or displayed in a user's browser or device.

      This states that YOU agree not to use Instagram to spread malware or use it to interfere with Instagram. It's NOT saying that Instagram is going to install malware and you can't interfere with that installation.

      Unless you have evidence I'm not seeing, I don't think Instagram is installing malware.

      reply to this | link to this | view in chronology ]

      • identicon
        Annonymouse, 23 Apr 2021 @ 12:20pm

        Re: Re: Don't think that's true

        You invoked common sense with media companies.
        Common sense is not the same as good sense.
        The vast majority of us are not social media companies who have a completely different world view than the rest of us.

        Social media companies have historically done a number of dumb, stupid to outright malicious things in the past and will more than likely continue such well into the future. This is no doubt due to the absolute lack of accountability or meaningful repercussions.

        A classic example is the SONY DRM rootkit bricking people's PCs because they wanted to play a SONY CD on their PC.

        reply to this | link to this | view in chronology ]

        • icon
          Stephen T. Stone (profile), 23 Apr 2021 @ 12:51pm

          Social media companies have historically done a number of dumb, stupid to outright malicious things in the past and will more than likely continue such well into the future.

          Has any social media company ever knowingly and intentionally installed malware on the device of one of its end users?

          reply to this | link to this | view in chronology ]

        • icon
          PaulT (profile), 24 Apr 2021 @ 12:22am

          Re: Re: Re: Don't think that's true

          "Social media companies"

          "A classic example is the SONY DRM rootkit"

          Your classic example of a social media company doing something is a non-social media company? Hmmm....

          I can understand the example if you're just talking about how bad corporations are as a whole, but it seems pretty stupid to single out social media and not provide any evidence or relevant examples for what you're claiming.

          reply to this | link to this | view in chronology ]

        • icon
          Scary Devil Monastery (profile), 26 Apr 2021 @ 5:51am

          Re: Re: Re: Don't think that's true

          "A classic example is the SONY DRM rootkit bricking people's PCs because they wanted to play a SONY CD on their PC."

          ...for which Sony took a beating, both in the fiscal sense and - more importantly - to the fact that decades down the road people are still referring to Sony's rootkit.

          Social media is a different animal. Instagram, Facebook, twitter...these live or die by the convenience and evaluation of their user base. They don't have a hardware lock-in like Sony and remain one bad set of user reviews away from becoming the Altavista of tomorrow.

          In other words I very much expect social media to be incredibly careful not to drop anything harmful on their user base. For the same reason I don't expect my choice of car vendor to make self-exploding automobiles.

          One thing is to be cautious and careful. Another to be such a paranoid fscknut as to expect major corporations to be fanatically devoted to their own destruction.

          reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 24 Apr 2021 @ 12:20am

      Re:

      Cool, your evidence for this should be a slam dunk case in court, possibly a class action worth many millions to many millions of users.

      Can we see your evidence or your court filings?

      reply to this | link to this | view in chronology ]

      • icon
        Scary Devil Monastery (profile), 26 Apr 2021 @ 5:54am

        Re: Re:

        "Can we see your evidence or your court filings?"

        Given how incredibly easy such evidence would be to come by, I'm sure tomorrow's headline will read "Instagram indicted under the Computer Fraud and Abuse Act" now that you've informed our mysterious AC that this option exists.

        reply to this | link to this | view in chronology ]

  • This comment has been flagged by the community. Click here to show it
    identicon
    One is nearly zero, for small values of zero., 23 Apr 2021 @ 9:47am

    So, zero consequence.

    Well, other than having a site like Techdirt call out your stupid threats.

    A lawsuit that your main point is it's NOT going to succeed is your key morning piece?

    You desperately need to find enough substance that there ever CAN be dissent, Maz.

    reply to this | link to this | view in chronology ]

    • This comment has been flagged by the community. Click here to show it
      identicon
      One is nearly zero, for small values of zero., 23 Apr 2021 @ 9:50am

      Re: So, zero consequence.

      The screen name is an actual statement that the "mathematicious" take seriously: more than anyone else, they now make systems "with no referent in reality".

      reply to this | link to this | view in chronology ]

  • icon
    spamvictim (profile), 23 Apr 2021 @ 12:22pm

    Artificial Stupidity

    I would bet serious money that no human looked at that initial letter before it was sent out. It is totally generic, and it is not signed by anyone.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 23 Apr 2021 @ 2:38pm

      Re: Artificial Stupidity

      ... not signed by anyone.

      Nah, the signatures were deleted to protect the signers from being sent down the black hole of Spammer's Hell, wherein they get the same treatment they've been giving others.... in spades. To the nth degree. You just know that if they start getting that kind of treatment, they'll blame sites like Techdirt, and then Mike's legal "fun" starts all over again. Probably not the best idea, I'm sure.

      reply to this | link to this | view in chronology ]

    • icon
      Tanner Andrews (profile), 25 Apr 2021 @ 10:02am

      Re: Artificial Stupidity

      It is totally generic, and it is not signed by anyone.

      That is actually fairly common. I see quite a few letters ``signed'', if you can call it that, only by the name of the firm. No hand-written anything, and not always including the disclaimer that no attorney has yet looked at any part of the file.

      Of course no attorney has looked at it. The term ``spray and pray'' seems appropriate in such cases; they are playing the numbers. It is no better than debt collectors.

      Assuming they pay 55 cents for the postage, and the investment in paper and envelopes is lost in the noise. If they send a few hundred of these letters, and one responds usefully (e.g. sends money), the operation is paid for. Here, if one of the recipients response without instructing them to go pound sand up their butts, they can report back to the client success in protecting the valuable mark.

      In the mean time, they gain deniability. No one at the firm sent the letter, and no one is liable for prohibited practices. Think of it as a win all around.

      Well, yeah, it does tend to reinforce the idea that some law firms are populated by sleazy individuals, but other than that it is a win all around. And I have not heard of any mandatory bar association actually leaning on law firms that do this sort of thing, so you may presume that sleazy activity is at least implicitly endorsed by the respective states and their bars. So maybe it is not a win for the ``real'' lawyers out there, but for everyone involved with the sending it is a win all around.

      reply to this | link to this | view in chronology ]

  • icon
    That Anonymous Coward (profile), 23 Apr 2021 @ 3:46pm

    I guess being a tech mogul makes your skin hyper thin.

    reply to this | link to this | view in chronology ]

  • identicon
    Bobvious, 24 Apr 2021 @ 3:22pm

    Misread the name

    I thought it was Don Stagram merely including his middle name, Tusein, in his website URL, Don Tusein Stagram dot com. It seems he's the relative of Kelvin Stagram, https://independentaustralia.net/life/life-display/burning-our-koalas-australias-shame,13484 and https://www.reddit.com/r/ImaginaryMindscapes/comments/gyh360/bubbly_planets_by_kelvinstagram/

    reply to this | link to this | view in chronology ]


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