Canon's new slogan

Canon are at it again and this time they’ve sent a take-down notice to a fan site called Canonfilmmakers.com. The owners of the site have posted some information about the issues on their blog. The exact details of why Canon wants them to take down the website aren’t clear, but what is clear is that the reasons have something to do with claims that the Canonfilmmakers.com website is infringing on Canon’s trademark. I took a look at the website and the only reason I could immediately see why they would claim infringement is the use of the word “canon” in the domain name of the website.

This is not the first time Canon tries to shut down a fan site. A few years ago they also tried to shut down Canonrumors.com, though the owners of that site were later able to work something out and keep the site online. I believe they removed the Canon logos from the site and included a statement saying the site was not affiliated with Canon in any way. Canonrumors.com remains online to this day. Fake Chuck Westfall, who’s blog was also being targeted by Canon lawyers two years ago, has written about this on his blog where he lists some more examples of Canon’s legal attacks and ill behavior towards customers.

A screenshot of the Canonfilmmakers.com website

In the case of Canonfilmmakers.com there was no use of the Canon logo, and no claims being made that the site was affiliated with Canon and I don’t see where there could be any confusion in that regard. You’d have to have a very low IQ to take that site as an official Canon website.

And yet this doesn’t stop companies like Canon from intimidating innocent fans and customers on the Internet. A post on The Blog Herald mentions the issues Canonfilmmakers.com are having, and also details how other companies (the smarter ones) treat these kinds of issues completely different:

The real problem with fan sites isn’t merely the legal aspect of them, it’s that virtually every company and creator has a different set of rules as to what fan sites can and can not do.

For example, where Canon is obviously out to try and stamp out every site that uses their mark, no matter how genuine their intentions, Star Trek actively links to interacts with fan sites in their community and Blizzard entertainment, the makers of World of Warcraft, even provide an official fan site kit to help fan sites get started and provide clear licensing terms.

In short, no two communities have the same set of rules. Where one artist or one company may routinely go to war with fan communities, often times pushing the boundaries of what the law actually says they can do, others may offer licenses and do everything they can to nurture them.

Trademark law doesn’t so much exist to protect the rights companies have to their trademarks but more to protect consumers:

Trademark law is designed to fulfill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the expectations of consumers as to quality and other characteristics.

The problem is that companies, such as Canon, abuse these laws and go out to intimidate people for no good reason. They’ll mention how the use of the word “Canon” in the domain name may confuse people and lead them to think the site is an official Canon website, but that is just bullshit. Canon Inc. didn’t invent the word “canon” and can’t prevent people from using that word, especially not when people need to use it to talk about their products. I mean, if you run a camera club for Canon users, how else will you be able to indicate your club is specifically for Canon users if you can’t use the word “canon” anywhere? How would you run a magazine specifically for Canon gear? Jon Connor, one of the owners of the Canonfilmmakers.com website, made a funny video showing just how difficult things can become when you can’t use a trademark when talking about it:

The purpose of trademark law was certainly not to limit free speech or to limit the way in which people can express themselves. Here’s an example of a case where this is made very clear:

Some courts have recognized a somewhat different, but closely-related, fair-use defense, called nominative use. Nominative use occurs when use of a term is necessary for purposes of identifying another producer’s product, not the user’s own product. For example, in a recent case, the newspaper USA Today ran a telephone poll, asking its readers to vote for their favorite member of the music group New Kids on the Block. The New Kids on the Block sued USA Today for trademark infringement. The court held that the use of the trademark “New Kids on the Block” was a privileged nominative use because: (1) the group was not readily identifiable without using the mark; (2) USA Today used only so much of the mark as reasonably necessary to identify it; and (3) there was no suggestion of endorsement or sponsorship by the group. The basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services. When the above conditions are met, such a use will be privileged. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992).

That sounds logical, right? That “the basic idea is that use of a trademark is sometimes necessary to identify and talk about another party’s products and services.” If I want to run a website where I talk only about Canon gear, I should be able to use the word “canon” to talk about their product in all communication and that includes in my domain name and meta data in my webpages. The domain name is what people use to find your site on the Internet, and if you’re running a website for film makers specifically using Canon gear, it makes sense to me to let that be clear immediately to everyone by including it in the domain name, which gets indexed by search engines and will help you reach those film makers using Canon equipment more easily. In the same way, if I want to start a fan club for Canon DSLR users specifically, I should be able to call it the Canon DSLR Fan Club so that it is immediately clear what kind of fan club it is. How else can I communicate to people that the fan club is specifically for users of Canon gear if I can’t use the word “Canon”? How can you start any fan club if you’re not allowed to use the trademarks, and as a result, are not allowed to say what your fan club is for??

Let’s look at nominative use a bit more:

Nominative use may be considered to be either related to, or a type of “trademark fair use” (sometimes called “classic fair use” or “statutory fair use”). All “trademark fair use” doctrines, however classified, are distinct from the fair use doctrine in copyright law. The nominative use test essentially states that one party may use or refer to the trademark of another if:

  1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute).
  2. The user only uses as much of the mark as is necessary for the identification (e.g. the words but not the font or symbol).
  3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.

Furthermore, if a use is found to be nominative, then by the definition of non-trademark uses, it can not dilute the trademark.[2]

With the above 3 points in mind: Canonfilmmakers.com wouldn’t be able to effectively run their community website if they couldn’t use the Canon trademark in their communications to exactly identify the type/brand of gear they cover or specialize in, so therefore, their use of the word “Canon” in their name (including domain name) is justified (1). They used only as much of the trademark as was necessary, in their case just the word “Canon”, no use of the Canon logo (2). And they did absolutely nothing to suggest that they were being sponsored or endorsed by Canon themselves (3).

So I don’t really see why Canon would insist that Canonfilmmakers.com take down their website. It’s not like their trademark was being diluted or misrepresented in some way or otherwise being abused. On the contrary, you could argue Canonfilmmakers.com only added value to Canon’s products.

What happens when you're being stupid about protecting your trademark. Photo is (c) Anthony Dunn Photography.

I absolutely hate it when people and/or companies abuse the law to unnecessarily limit, attack or intimidate others like in this case with Canon. Often it’s the case that these kinds of threats are being sent out by lawyers even while they know that they don’t really stand a chance in court, but they do it anyway just to see if the victim (yes victim) gets scared and allows him/herself to be intimidated by their threats. Similarly, a while ago I also got a Cease and Desist letter from Amazon/dpreview where they claimed I was infringing on dpreview’s rights. I replied and after more than a year I have yet to hear from them. These companies shouldn’t forget that the victims can also take legal action against them when they make groundless threats of infringement:

Various jurisdictions have laws which are designed to prevent trademark owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.

Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action.[17] In this situation, the party receiving such a threat may seek from the Court a declaratory judgment; also known as a declaratory ruling.

I’m sad that I am not the owner of Canonfilmmakers.com because I would have loved this opportunity to defend myself against these claims made by Canon, assuming that their infringement claims are based on the domain name (because so far that’s the only reason that seems likely to me if I look at the website). We need to stand up against this kind of abuse of trademark and copyright laws because if we don’t, it will only get worse in the future. As a photographer, I love that I can have certain rights to my work under copyright law, but I’ll be the last one to abuse those laws for something that I shouldn’t be doing (like in the Amazon/dpreview case where they clearly tried to influence my criticism). I respect their copyrights, but they’re not going to stop me from exercising my right to free speech.

There are many other websites out there using the Canon brand name in their domain name such as Canon-Questions.com and even ACanonLawyer.com. A simple Who-Is lookup reveals thousands more of which hundreds are really related to Canon. So it seems that when Canon’s lawyers have nothing to do, sending out take-down letters to fan sites could give an impression that they’re working hard to earn their money. You may think that this is a silly idea, but these kinds of things really happen. I was told by a lawyer (yes really) a while ago that since it is often the case that they get paid for every letter that they send out, it doesn’t always really matter to them whether the claims they make in those letters are valid or not, and if their client’s position is strong, weak or groundless. They get paid for sending out a letter, so they do it and it’s another $100-$200 earned. Especially if the other party is just a simple person with limited resources where they can have some kind of expectation that he/she will let him/herself be intimidated by the threats made in the letter and give in to the demands. I’ve been the victim of this myself so I know what I’m talking about.

I really hope that the owner of Canonfilmmakers.com lives up to his name (Jon Connor) and decides to fight back and lead the resistance against Canon Inc. He will be doing the entire Canon community and the global population in general a really big favour, especially so when he wins and makes the details public.