First off I want to say how much I appreciate everyone who has weighed in on this debate, both for making their perspective known and also for keeping things civil and above board (at least as far as I can tell). This being the internet—and also, ultimately, a legal dispute—I suppose I’d be deluding myself by thinking that the collegiality can last forever, but I’m still hopeful. I will certainly continue to give it my best shot and expect to be called out if I miss the mark.
For those who haven’t been following this closely (and let’s face it, it isn’t exactly “Who Shot J.R.”): A couple of weeks ago I called for a debate over whether it is appropriate for a single entity to obtain a federal trademark for the term “Legal Hackers.” I filed an extension of time to oppose the pending trademark registration for that term, and I set out my position on the matter.
Since my last post, a few things have happened: For one, Eric Mill and Josh Tauberer filed an actual notice of opposition to the mark and wrote about their reasons why. Attorney Jason Gershenson then joined me by filing his own extension of time to oppose. The issue picked up some publicity via the fantastic Five Useful Articles newsletter and, via 5UA, on Techdirt. It also carried a small head of steam on Twitter for awhile via the #LegalHack tag. Finally, Yana Welinder of the Wikimedia Foundation helpfully offered her (draft) article Hacking Trademark Law for Collaborative Communities as a potential source of a solution.
Last week Phil Weiss of Legal Hackers, LLC penned a response. In his post at legalhackers.org, he defended the group’s decision to seek federal trademark protection over the term “Legal Hackers” but announced two concessions to the criticism (hopefully taken as constructive) that I and others have recently levied. First, drawing (I think) on Welinder’s suggestions, he announced that:
“We are licensing to the general public the word mark “Legal Hackers.” And we are inviting you to help us decide what the restrictions on that term are (if any). We want to work with anyone interested to build a collective standard for this community. We have published a git repository of that license, and we invite you to help us edit it, here: http://legalhackers.org/the-otl/”
Second, he stated:
“We are starting the process of distributing governance of Legal Hackers LLC. This will be a long-term discussion that will hopefully distribute a significant portion of the organization’s governing authority to a collective of chapters of a certain size. This will certainly take some time and effort to coordinate, but we are shooting for a January 1, 2015 shift.”
I heartily applaud both of these decisions. I think the OTL is a creative and novel approach, and I certainly support anything that engages the legal hackers community. That said, I think the OTL misses the point and my position on the Legal Hackers trademark remains unchanged for reasons I’ll discuss shortly. Relatedly, and perhaps more importantly, I remain unconvinced that Legal Hackers, LLC is committed to growing a robust and open movement due to the disconnect between the inclusive-sounding messaging on the Legal Hackers Website and the decidedly exclusive bits of legalese contained in the Legal Hackers Chapter Organizing Agreement.
I’ll start (and eventually end) with the Trademark. Despite some of the statements in the Legal Hackers blog post, I don’t think that use of the term “Legal Hackers” by those not affiliated with Legal Hackers, LLC is necessarily harmful to the movement. Phil’s article mentions “some problematic uses of the Legal Hackers name” including “groups that capitalize on the goodwill of calling themselves ‘Legal Hackers’ solely to attract members and sell a product,” “groups that squat on a Legal Hackers name on Meetup without doing anything” (a fairly minor sin), and “groups that use the name in a completely different, not-so-savory way (e.g., ‘let’s hack the 9th Circuit’s docket!’)” (something that will be hard to control with or without a registration). But, uncharacteristically for a lawyer, he doesn’t provide citations or specific examples of any of these “problems.” I don’t necessarily doubt that some of these things have happened, I just haven’t seen where.
And I don’t think it matters. In spite of these “problems,” the act of legal hacking, as well as the legal hacking movement, seems to be flourishing. As Phil noted, new chapters of legal hackers and/or innovation groups are opening around the world, and SXSW organizers just announced that it will host a legal hacking panel at the 2015 SXSW Interactive festival. I personally believe that part of the reason that legal hacking is on the rise is the lack of many barriers to entry for interested hackers, and a registered trademark, even with an open license, still represents an unnecessary hurdle to consider.
The bottom line is that for reasons I described in my last post, I still think “Legal Hackers” is, at best, descriptive. As I mentioned before, “hacking” is a term that has been used to describe an activity at least since the 70s, and “legal hacking” merely clarifies the type of hacking being done.
Trademark law is clear that “marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness.” Trademark Manual of Examining Procedure 1209.01. And acquired distinctiveness generally doesn’t apply to a descriptive mark until it has been used in commerce for at least five years (see TMEP 1212). (Interestingly, Josh Mill’s and Eric Tauberer’s opposition goes further, arguing that Legal Hackers is generic and therefore could never be subject to trademark protection).
So what’s the harm in allowing a registered trademark on the term “Legal Hackers," even if it is descriptive, if that term is being licensed to the general public via the OTL mentioned above? I can think of a few things.
First, despite Phil’s assurances that there will be a broad governance group that controls the direction of Legal Hackers LLC, my understanding is that as of today it is still a single member LLC that is 100% owned by Phil Weiss. I have no reason to doubt that Phil intends to hold himself (and the LLC) to the decisions of the voluntary governing body he has set up,
but legally he has no duty to do so [clarification: Phil noted on Twitter that the LLC has a formal board of managers through which LLC activity is controlled] (though as a practical matter, his reputation would be on the line if he changed course).
But the bigger issue is that as the owner of a registered trademark, Legal Hackers LLC would gain a legal presumption that the mark is valid and distinctive, and that presumption would shift the (expensive) burden of proof onto any defendant accused of misusing the mark. That means that the LLC would be in the driver’s seat for establishing the brand identity of the Legal Hackers name due to its ability to determine, even within the confines of the OTL, what uses it does and doesn’t want associated with the term.
That isn’t a bad thing if you agree with the LLC’s approach. But a person who currently describes herself as a legal hacker would, if the term were trademarked, take on that brand association whether she likes it or not.
For me, as someone who describes myself as a legal hacker, I don’t currently have a clear sense of what the Legal Hackers™ brand is. As I alluded to above, on the one hand there is the messaging on legalhackers.org which purports to foster “a global movement of lawyers, policymakers, technologists, and academics who explore and develop creative solutions to some of the most pressing issues at the intersection of law and technology.”
On the other, there is language in the LH Chapter Organizing Agreement which reads to me like an attempt to hoard intellectual property rights, shift IP infringement and other risk on to individuals who organize Legal Hackers chapters, and force those organizers to abide by top-level decisions around messaging and sponsorship. I have expressed some of my reservations about the contract here and also did so in an earlier post.
While it is true that, under the OTL, a person no longer has to sign the Organizing Agreement in order to use the Legal Hackers name for certain purposes, that name still carries a brand message. And, for now at least, that message is inconsistent at best.
If there is one thing that we lawyers can probably agree on its that words matter. Right now the words that Legal Hackers, LLC uses to promote their activities on its website and in the media are at odds with the words it uses to form legally binding relationships with its chapter organizers. I may not mind calling myself a Legal Hacker™ if it means associating myself with the brand messaging on the website, but I don’t want any part of a group that embraces the brand messaging of the contract.
I’ll admit this is a fine line to draw. But I’ve always told my clients that your legal documents are an important part of your brand. No matter how much your marketing says “welcome, come on in,” your customers and partners will respond if your legal documents say “enter at your own risk.”
Of course this can still be fixed. Legal Hackers LLC is a young entity, effectively a startup, and learning and adapting is part of the game. My guess is that they didn't actively intend for their contract to be so one-sided—perhaps the business and corporate work that the authors do on a day-to-day basis informed the language? Besides, the issues that crop up when you’re trying to build something like this are relatively complex and largely unprecedented. It can be tough to get this stuff right the first time (witness Ms. Welinder weighing in with a law review article to try to move things along). In any event the contract they provided feels more like one meant to govern a business to business relationship where each party is likely to carry commercial insurance as a buffer against the sort of risk shifting in the agreement. Individuals typically don't carry the sorts of insurance policies that would cover IP liability, which makes the Legal Hackers language too overbearing for a business-to-individual agreement.
Okay. This post has gotten long but I want to close with a proposal for Legal Hackers LLC: I obviously feel strongly about this topic but I think there are probably more productive uses of everyone’s time and attention than carrying out a fine-point debate on trademark law. For me to formally oppose the USPTO registration will at least cost me $300 in filing fees plus lots of work and energy over the next several months.
Rather than pay that money to the USPTO, I hereby offer to give it to Legal Hackers LLC to compensate it for the application fee it paid back in April if the LLC agrees to promptly abandon registration number 86247678. That will take the immediate pressure off of everyone involved, and it will allow Legal Hackers to assemble its governing body (as long as we’re nitpicking language, I would prefer the term “steering committee”) and decide how to move forward not only with the trademark but with the contract and, more broadly, the movement (a movement I very much intend to be a part of). Perhaps they could use the time and money to register a trademark in their LH Shield logo (which seems distinctive) or find another term to add to “Legal Hackers” to make it less descriptive. To make it official, I’ll put an October 31 deadline on this offer but am willing to consider an extension.
I have also spoken with a few other people who are willing to chip in to make up the $300 so it doesn’t all come out of my pocket. To that end, I have created an (admittedly silly) Indiegogo campaign to collect funds. I will use the first $300 to either file my own formal opposition to the mark or, if they agree to abandon their registration, to reimburse Legal Hackers LLC for their original filing fee (I’ll personally cover the shortfall if I raise less than $300). If I raise more than $300, I will give the next $300 to Eric Mill and Joshua Tauberer to reimburse them for the filing fee from their own formal opposition (which hopefully will be mooted).
If I raise more than $600, I will donate the balance to the Cornell Legal Information Institute to support free and easy access to the law.
And, of course, I hope to continue the discussion / debate on Twitter, so please chime in using the #LegalHack hashtag.