Mozilla's trademark enforcement experience

Anthonia Ghalamkarizadeh's talk at the 2013 Free Software Legal and Licensing Workshop concerned her work fighting against infringements of Mozilla's trademarks; Anthonia is a lawyer at Hogan Lovells International LLP, a company that the Mozilla Foundation retained to act on its behalf. The talk also illustrated some of the ways in which trademarks can be valuable to a free software project.

Mozilla's trademarks and trademark policy

Even within the context of the Legal and Licensing Workshop, trademarks are not commonly discussed, so Anthonia began with an explanation of trademarks. A trademark is an identifier of origin, she said. With a well developed trademark, consumers receive a clear and consistent message about a specific product. A trademark provides protection to a brand that extends in two directions. The trademark owner benefits by being able to prevent others encroaching on its brand. Trademarks also benefit consumers by ensuring that particular brands may be used only for a very specific product; trademarks thus function to ensure that consumers get what they expect.

How does trademark protection extend into the world of open source, where the products are designed to be freely modified rather than stable? Anthonia's talk answered that question via a case study: "I will show one example of trademark enforcement where we've protected Mozilla's trademarks from a set of very bad actors indeed and protected users on a massive scale."

Mozilla owns a number of trademarks—for example, those relating to Mozilla, Firefox, and Thunderbird. While use of Mozilla source code is governed by the Mozilla Public License (MPL), the use of the trademarks is governed by the Mozilla Trademark Policy (MTP). The MTP says that the community may use the trademark to identify the "unmodified official binaries" that Mozilla distributes free of charge.

Third parties are free to modify the source code according to the terms of the MPL, but they can't use Mozilla's trademarks to designate the modified work. Third parties can also distribute Mozilla binaries for a fee, but, again, they are not allowed to use Mozilla's trademarks to designate those binaries. The latter policy was greatly expanded in 2009, adding detailed language and examples. In doing so, "we spelled out what we learned from the case I will show you now."

The bad guys: subscription traps

Starting in 2007, a number of "subscription trap" web sites flourished in the German online market. These web sites employed generic, innocuous-looking URLs and purported to provide various open source programs for free. The deception took place via landing pages that targeted popular open source programs such as Firefox. These landing pages emphasized the trademarks and the fact that the software was freeware, and de-emphasized any indication of fees required for downloading. Thus, the user was lulled into the false belief that there were no associated costs.

Anthonia showed an example of one such landing page for Firefox. The page resided under a domain that included the name "firefox" and the page made heavy use of the trademarked Firefox name and logo. The page contained the message "Einfach anmelden und Firefox herunterladen"—simply register and download Firefox.

A well-informed user might be aware that you do not need to register to download Firefox. However, many people are not so well-informed. Consequently, people fell into the trap, registering with their full personal details—name, address, phone number, email address, and birth date. Having registered on these sites, the users then promptly received an invoice for the (supposedly free) program that they downloaded.

Users were lured to the landing pages in a variety of ways. One avenue was the use of squatter domains with names that included Mozilla trademarks and typo domains based on the trademarks (e.g., "firefx" instead of "firefox" in the domain). The operators of the download sites employed search engine keyword advertising (such as Google's AdWords), so that when users performed web searches based on Mozilla's trademarked names, the results would include the squatter and typo domains containing the landing pages.

Another avenue by which people arrived at the landing pages was via affiliate sites. The download site operators would enter into commercial arrangements with popular web sites so that those web sites would include links recommending that the user download or upgrade (say) Firefox. Clicking those links again led to the landing pages.

When the user received an invoice, they were typically confused since there had been no clear indication of any fees during the download process. Only when going deep into the small print on the central download sites might the user find that the sites stipulated a fee for use of the download service—a fee of €190 for a two-year "subscription" was typical. In this manner, tens of thousands of users were deceived and felt they had no alternative than to pay the fees demanded, and the operators gained millions of euros.

Mozilla fights back

In many cases, Mozilla was alerted to these subscription traps by reports from users. Mozilla verified that the central download sites were unlawful and searched for the associated landing pages. As a first step, it then filed domain disputes against the infringing domain names. In Germany, domain disputes can be filed without cost and are dealt with quickly and efficiently. The disputes were all resolved in Mozilla's favor, giving them control of all of these domains.

As a second step, Mozilla might then send cease-and-desist letters, but if the timing was urgent, it would instead immediately file for a preliminary injunction. Quick action was needed because German law specifies that such injunctions must be filed within four weeks after a rights owner first notices an infringement. The timeline was made tight by the fact that Mozilla sometimes had to do difficult research to identify the fraudsters, who, for obvious reasons, did not make information that identified them easily available. Filing for preliminary injunctions in Germany is especially worthwhile because they are cost-efficient and generally granted within a few days. When this happens, the other party is not notified: it is then up to the applicant (Mozilla, in this case) to notify the respondent (the download site operator).

With the injunction in hand, Mozilla could then decide whether to send a cease-and-desist letter before serving the injunction. Of course, the fraudsters rarely responded to the letters, so Mozilla then served them with the injunctions. Because a preliminary injunction is a temporary measure, further action is required to make the injunction final and binding. In most cases this can be done by obtaining an agreement that the respondent accepts the injunction as final and binding. Many of the respondents made such an acceptance.

However, in one case, against one of the two largest criminal operations, Mozilla decided to follow up with a main action, including a claim for damages. Mozilla was fully successful in the action. The defendants have appealed, and that appeal will be heard in a few months.

In the case of the other of the largest criminal operations, the German criminal prosecutor's office brought criminal charges. These charges were the first of their kind in Germany and Mozilla joined the legal proceedings as a civil plaintiff. Such proceedings can be joined with two aims in Germany. First, it is possible to aid the criminal prosecution. In this case, the German prosecutor's office had focused on criminal fraud against consumers. To this, Mozilla added the "exotic" topic of trademark infringement, encouraging the prosecutors to add trademark infringement to the charges and providing evidence supporting that charge. (German-speaking readers can find a summary of the case in this Süddeutsche Zeitung article; others can try Google's translation of the article.)

The second reason to join a criminal prosecution is to obtain a judgment on civil claims against the defendant. In this case, Mozilla did achieve such a judgment, and the criminal prosecution resulted in all of the defendants being convicted and heavily fined or imprisoned. (German-speaking readers can find the anonymized ruling on openJur.)

Why fight?

In explaining why Mozilla fought back against the fraudsters, Anthonia returned to the two protections offered by trademarks: protecting the reputation and values of the trademark owner and protecting users from confusion and fraud by conveying a clear message about a product's origins.

In order to protect its trademarks, Mozilla must ensure that those trademarks are only ever used for the software that is produced by the Mozilla community and distributed without charge. When trademarks are used to distribute software in violation of those standards, there is a risk that users will be disappointed, and the value of the trademarks will be diluted. Anthonia cited the following text from the Mozilla Trademark Policy:

Anthonia noted a number of lessons that had been learned from these court cases. First of all, software projects need to have coherent trademark and enforcement strategies and follow up on enforcement. Mozilla carefully looks at infringements. For honest mistakes, Mozilla sends a nicely worded letter that refers to the trademark policy. In cases where trade abuse is clearly intentional, it follows up with strong enforcement.

The second lesson is that strong safeguarding of trademarks is not a contradiction with free availability of source code. To emphasize that trademark policy and source code licensing are separate things, Mozilla separates the license and the trademark policy into two documents, the MPL and the MTP. This makes it clear to users and developers that the freedom of code is a separate thing from the use of the trademarks; for this reason, the MTP has very detailed examples explaining what is and is not acceptable use of the trademarks.

The third lesson is that timing and consistency of enforcement is important. If the trademark owner waits too long, or lets too many instances of abuse pass unnoticed, then the value of the trademark is diluted.

In response to questions at the end of the talk, Anthonia touched on a couple of other topics. Some web sites offer download services where free software is provided via "download wrappers". As we described in an earlier article, the user is asked to download an installer that installs not only the free software, but also a browser toolbar, malware, or adware. Asked whether Mozilla was doing anything about such practices, Anthonia noted that, where those services are using the Mozilla trademarks, they are being pursued. Another question concerned whether Mozilla had approached the search engine companies to prevent its trademarks being used by third parties in fraudulent search engine keyword advertisements. Anthonia responded that Mozilla had done this.

As noted in Stefano Zacchiroli's keynote speech at the same conference, there is much skepticism of trademarks in the free software community, although their value is coming to be appreciated. The story that Anthonia presented provides one clear example of the value of trademarks for a free software project and illustrates some practices—for example, providing detailed trademark policies and ensuring that third parties cannot use trademarks in search engine advertisements—that other free software projects might be wise to follow.