Photo Credit: Crackberry.com 2010

NPM, Azer Koçulu, Kik and the law.

Kik’s legal threats were probably empty, but they’ll keep happening until we build better trademark definitions.

There’s been an interesting series of events on the Internet, raising questions about the culture of open source, community management in hosting platforms, and the role of trademark (and intellectual property) protection in both. If you don’t know the story, here’s some background and here is the account of events by npm, Azer, and Mike Roberts (Kik’s CEO). There are a lot of interesting issues involved in this case, but only two really interesting legal questions — both of which come from Kik’s assertion of trademark.

Before jumping in, it’s important to say that all of the actions taken were legal, by virtue of NPM’s Terms of Service and community management authority. As with most digital platforms, the broad community and content management authority afforded to platform administrators entitled NPM to take whatever action they deemed necessary, by whatever process they deem adequate. It’s worth us all asking ourselves whether that amount of due process is enough for us in communities we help build, but that’s not a legal issue.

The two legal questions are:

(1) Intermediary liability. Kik, though mostly playing nice, made it clear in emails to both Azer and npm that they could take legal action if something wasn’t done. There’s not a lot of law to suggest Kik would have been able to hold NPM responsible for trademark protection within its naming conventions on its own platform. In other words, it’s not clear whether Kik could have legally compelled NPM to rename the ‘kik’ module, because it’s not clear whether companies need to police their hosting platforms for potential trademark violations.

Here, NPM agreed to make the change requested without a legal request, before Kik had submitted any conflicting modules, on the assumption that users would find it confusing. They exercised valid community management authority, avoiding the legal question entirely — still, had push come to shove, it’s not clear that Kik could compel npm to rename or remove the module through legal action.

(2) Digital trademark. Similarly, Kik made a more direct threat to Azer based on their pre-existing trademark for the word ‘kik’. Trademark protections are limited by a number of things, but most relevant here, the conventionality of the term (the “artful, fanciful, and suggestive” test) and similarity of trademarked products (the “likelihood of confusion” test). Here, both Kik messenger and the kik module are code, but there’s no suggestion that Azer’s kik module had anything in common with Kik’s messenger application, other than the name.

‘Kik’ is not a particularly common use term, so there’s an interesting claim based on the uniqueness of the name. Conversely, trademark law will allow two, different things to co-exist with the same name, so long as they’re not confusingly similar. The interesting, under-interrogated question is: confusingly similar to who? Increasingly, it’s impractical to say that just because two things are code, they will be confusingly similar to a reasonable person.

Here’s a hypothetical: Let’s say there are two separate software applications, both called FreeTable. One is a popular restaurant reservation app; the other is an app that delivers educational content about how to refurbish furniture. Interpreted one way, both are software applications that offer commercial services via smartphone and web interfaces, so are very similar; viewed in a different way, they reach different audiences who use them to do completely unrelated things, so are very different. If a court were to apply the former logic (or set of assumptions about what a “reasonable person” knows), only one application could use the name — if a court applied the latter logic (or a different set of assumptions about what a “reasonable person” finds confusing), they could both use the name.

Historically, two products that did very different things would rarely end up in the same place, so this wasn’t really an in issue — but when everything comes down to search terms, questions about confusing similarity become much harder. The reasonable confusion test in trademark can’t help but become a political determination, as it becomes less clear what reasonable confusion looks like in different digital spaces.

Underpinning either decision, there’s a separate question about how far brick-and-mortar trademark protections apply in digital hosting platforms. Digital platforms create more spaces for us to store, host, and publish ideas — and we shouldn’t assume that it’s in the public’s interest for trademark holders to be able to police the way we name things in those spaces. Could, for example, Kik also prevent people from naming their profile Kik on Facebook? Or naming blog posts Kik on Medium? What about a publicly accessible Google Drive folder?

As our services continue to digitize — and the tools we use to build and store our ideas become increasingly public — it’s critical that we also define the limits of how far trademark extends. In order to do that, we’ll need clearer guidance on how to represent functional differences, ways to assess brand size and character (potential for confusion), and how responsible platforms are for enforcing those limits.

Here, NPM decided to make the change, which was within its rights — regardless of whether they or Azer actually violated Kik’s trademark. Most of the dialogue hasn’t focused on the trademark threats, instead focusing on ownership rights in open source ecosystems and whether Azer’s removal or NPM’s republication were allowed. The answers are yes and yes: Azer’s under no obligation to preserve or contribute to access — and NPM can publish openly licensed code (even without their administrator rights) as it chooses. These events evoke community management (and culture) issues more than legal ones. Still, this kind of decision (and authority) are all the more reason why open source communities and hosting platforms should build participation models for community governance and dispute resolution mechanisms.