The social media outrage machine was cranked up to 11 yesterday after photo-sharing site Twitpic announced it was shutting down. The reason? According to Twitpic founder Noah Everett it was because Twitter warned Twitpic that if it didn’t withdrawal its request for a federally-registered trademark, Twitter would revoke the site’s access to its API, thus disallowing Twitpic photos to appear in Twitter streams and effectively destroying most of the value the company provided.
At first glance, it sounds like Twitter is the big bad bully here, using its scary legal team and ample financial resources to box out a small startup. But before turning Twitter into a scapegoat, I wanted to talk to a trademark expert to see if there might be more to the story than Twitpic’s farewell post suggests.
According to Ed Timberlake, a trademark and copyright lawyer at Timberlake Law in North Carolina, Twitpic already has a trademark: it’s called a “common law trademark” and it’s assigned to any symbol indicating that a product comes from a particular source. Because Twitpic has been operating and providing a service under that name since 2008, this trademark is protected by US law as long as the hypothetical infringer is offering the same kind of service.
“If I developed an photo-sharing app called Twitpix,” Timberlake writes in an email, “Twitpic, Inc. would send me a mean letter and, ultimately, likely would be able to stop me. Were I to start using a similar name in connection with very different services, for instance, Twitspicks brand oil-refinery services, then Twitpic, Inc. would likely have a much more difficult time getting a court to stop me.”
Meanwhile, Twitter told Twitpic it could continue operating under its name and continue accessing its API. What irks Twitter, however, was Twitpic’s application for a “federally-registered trademark.” That means the federal government has essentially given its stamp of approval to your trademark, signified by a little “®” next to the brand name. And while Everett claims Twitpic lacks the “resources to fend off a large company like Twitter to maintain our mark,” Timberlake suggests that even if Twitpic had all the money in the world to defend itself, Twitter would have a good chance of blocking the federal registration. He explains:
Twitter owns four federal trademark registrations for TWITTER, two of which (registration numbers 3619911 and 4422235) include goods and services close enough to what Twitpic describes in its trademark registration application that it’d be plausible for Twitter to assert that they’d be damaged by federal registration of Twitpic as a trademark for a photo-sharing app…
…Nobody (as far as any of us remember) was using a twit + anything trademark in connection with any kind of social sharing app before Twitter. Under these circumstances, it doesn’t seem unreasonable for Twitter to take the position that they wouldn’t object to Twitpic using Twitpic as a trademark, but would object to federal registration of Twitpic as a trademark for a photo-sharing app (particularly, one dependent on Twitter’s API).
In other words, because Twitter has a valid case against Twitpic’s federal registration of its trademark, and because it was more than willing to allow Twitpic to operate under its common law trademark, it’s unfair to say Twitter, with its big swinging bag of money, is being a “bully.”
So why is Twitpic so threatened by Twitter that it’s shutting down its service? Yesterday, Everett told me “it is a matter of principle.” But as I noted in that article, Twitpic has lost a great deal of relevance since Twitter launched its own photo-sharing mechanism. Is it possible that Twitpic was looking to sell off its remaining assets, and a federally-registered trademark was a stipulation of any potential sale? It’s possible, but pure speculation — I asked Everett this question two hours ago but have not heard back yet.
In any case, despite how much fun it is to get angry at big companies, in this situation, using Twitter as a scapegoat just doesn’t fly.