Wikipedia is a registered trademark, owned by Wikimedia Foundation. A New York Times article says “nearly every time Wikipedia has come to a fork in the road where the project could have chosen to impose more restrictions on who could edit what — even insist on a bit of expertise — it has chosen not to. That has made all the difference.”
Is Wikipedia a trademark? Why, or why not?
© 2009 Pamela Chestek
3 responses to “http://en.wikipedia.org/wiki/Starfish#Regeneration”
Are you suggesting some analogy to naked licensing? Failure to maintain quality control resulting in abandonment?
Or does it really matter since the “source” is still Wikipedia, one unitary “place” to find out information on the web?
I agree that the uniqueness of the “place” on the web is a large component of the Wikipedia sole source significance. But current trademark doctrine doesn’t really support that theory: “Appellant asserts that domain names are inherently distinctive because they can only be associated with one entity or source at a time. The simple fact that domain names can only be owned by one entity does not of itself make them distinctive or source identifying.” In re Oppedahl & Larson LLP 373 F.3d 1171, 1176 -1177 (Fed. Cir. 2004).
And the exercise of control is in part how we identify ownership (not just the absence of it in the case of naked licensing): “A product is not truly ‘genuine’ unless it is manufactured and distributed under quality controls established by the manufacturer.” El Greco Leather Products Co. v. Shoe World, 806 F.2d 392, 395 (2d Cir.1986), cert. denied, 484 U.S. 817, 108 S.Ct. 71, 98 L.Ed.2d 34 (1987) (sale of goods manufactured under contract but after contract cancelled); “Federal law may preclude state law that is inconsistent with or frustrates the objectives of the federal law. The Lanham Act gives a mark owner the right to control the quality of goods associated with his mark.” Mobil Oil Corp. v. Virginia Gasoline Marketers and Automotive Repair Ass’n, Inc. 34 F.3d 220, 226 (4th Cir. 1994) (discussing preemption of Virginia Petroleum Products Franchise Act by Lanham Act); “Regardless of their being related companies, only one is the owner. Whether the relationship is that of licensor/licensee or parent/subsidiary, the one entity which controls the nature and quality of the goods sold under the mark is the owner.” In re Wella A.G. 787 F.2d 1549, 1554 (Fed. Cir. 1986) (determining proper owner of trademark application); “Therefore, the distributor may rebut the presumption in favor of the manufacturer, and courts look to various factors when determining which party has the superior right of ownership, including: . . . (3) which party maintained the quality and uniformity of the product. . . .” Sengoku Works Ltd. v. RMC Intern., Ltd. 96 F.3d 1217, 1220 (9th Cir. 1996) (competing claims of ownership between manufacturer and distributor). And it can’t be of just how the mark itself is used, but has to be about the quality of the services: “In order for its family’s use of the service marks to be deemed use by CNAF, CNAF must control not only the use of its marks, but also the ‘nature and quality of the … services’ associated with the marks.” CNA Financial Corp. v. Brown 922 F.Supp. 567, 574 (M.D.Fla. 1996). So some law would suggest that if the “owner” isn’t controlling the quality of the services, it isn’t really the owner.
There are ways to argue under traditional trademark doctrine that Wikipedia should not be considered a mark. But of course it has trademark significance, and famous to boot. I just think control doesn’t have that much to do with trademark significance, whether as an indicia of ownership or of abandonment.
I am not sure the domain name analogy fits; I think Wikipedia is more like Encyclopedia Brittanica—many people contribute, but we as the public recognize all that material as coming from one source. Or perhaps like Amazon.com—-we know they sell books by many authors, but “Amazon.com” is recognized as one unique source for those goods.
As far as the control question, I agree that it is in most instances today an irrelevant concept. With so many products coming from licensees, most people do not really assume that the TM owner is controlling the quality of every product that bears its name and yet still recognize the TM as having TM significance.
Interesting exam question—have any other good ideas??