A leading candidate has emerged for the next EFF Takedown Hall of Shame induction: the Dervaes Institute, which is claiming broad ownership rights over the term “urban homesteading” — a term commonly used to describe a social movement dedicated to achieving more self-sufficient, sustainable living in cities. Last year, the Institute managed to register the term as a trademark (in connection with “educational services” such as blogging) and it is now sending takedown requests and warning letters targeting individuals and organizations that have been using the term for years.
The Dervaes campaign raises two related issues.
First, as explained in more detail in a letter EFF sent today on behalf of three of the targets (Kelly Coyne and Erik Knutzen, authors of The Urban Homestead: Your Guide to Self-Sufficient Living in the Heart of the City, and their publisher, Process Media), the legal claims are baseless. Even assuming the registration is valid — there are reasons to question it — the term "urban homesteading" is commonly understood to refer to a popular movement and related set of practices. Our clients — and anyone else — are free to use it in that descriptive sense, and that is exactly what they did.
Second, this dispute highlights the increased danger of granting rights in descriptive marks such as this one. Time was, the registration of this kind of mark might have had limited impact, because sensible mark-owners would think twice before bringing legal action and, short of such action, most legal users could ignore any improper threats. In the Internet context, however, individuals and organizations rely on service providers to help them communicate with the world (YouTube, Facebook, eBay, Blogger, etc.). A trademark complaint directed to one of those providers can mean a fast and easy takedown given that those service providers usually don’t have the resources and/or the inclination to investigate trademark infringement claims. Moreover, because there is no counter-notice procedure, the targets of an improper takedown have no easy way to get their content back up.
Coyne, Knutzen, and Process Media found themselves in just that situation. The Dervaes Institute sent a complaint to Facebook and, as a result, Facebook promptly took down the pages for Coyne and Knutzen’s book. When the publisher protested, Facebook politely suggested that the publisher take the matter up with the Institute and get back to Facebook when the matter was resolved. Of course, in most instances, takedown targets will lack the resources to persuade a trademark owner to withdraw a complaint, much less take legal action if necessary. We're glad that Coyne and Knutzen thought to call EFF for help.
We are also glad to see that our clients are not alone in fighting back against the Dervaes Institute's misguided campaign. Today has been declared an Urban Homesteader’s Day of Action, itself organized through Facebook, that promises “to blanket the web with the words urban homestead and urban homesteading through blog posts, web pages, and articles.” The Dervaes Institute should recognize that this is one community that will not be intimidated, cease its heavy-handed tactics, and take steps to repair the damage it has caused.