Tim Lince

The news that image hosting website Twitpic is closing down due to a trademark dispute was largely reported uncritically, with the resulting ‘big versus small trademark owner’ narrative a familiar one for those working in IP. However, Twitter’s response highlights how a speedy PR operation can turn around perceptions.  

Writing on the Twitpic blog, company founder Noah Everett explained that it was recently approached by Twitter - a company it relies on as part of its business model - and told it must abandon its trademark application for TWITPIC or risk losing access to Twitter’s API. It concluded: “Unfortunately we do not have the resources to fend off a large company like Twitter to maintain our mark which we believe wholeheartedly is rightfully ours. Therefore, we have decided to shut down Twitpic.”

Much of the resulting media coverage took a ‘Twitpic is shutting down because Twitter killed it’ angle, but Kristie D Prinz, attorney-at-law at Prinz Law Office, told World Trademark Review that she questions this rationale and argues that the platform could merely have been rebranded: “Twitpic absolutely had the option of rebranding, and could have done it in such a way, no doubt, that it would have received the maximum amount of publicity for the rebranding effort, and lost very few customers. I've had clients who had to rebrand multiple years into building a business because they were unaware of the existence of a conflicting trademark, and while they were unhappy with the news that they had a trademark problem, I encouraged them to look at the discovery as a positive for the business that they did not continue using a bad mark and that they should try to make the most of the rebranding effort by generating as much publicity over the rebranding as possible. Companies do it all the time - many times with very positive results.”

She adds: “I have found no record to date of any lawsuit being initiated by Twitter against Twitpic, so there is no evidence to suggest that Twitter intended to sue Twitpic for trademark infringement for its past use of the mark if it discontinued its use of the mark. It's very possible that Twitpic could have completely avoided incurring additional legal costs by simply dropping the trademark application and rebranding.”

Drilling down into the trademark dimensions of the case, she argues that Twitpic could also have approached Twitter in advance of filing a trademark about the possibility of entering into some sort of co-existence agreement, as Twitpic had done with another trademark owner. Instead “Twitpic brought the issue to Twitter's attention by filing the trademark application, forcing Twitter to formally oppose the application.”

Having taken the decision to close Twitpic, the trademark opposition is cited as the motivation for this action. For its part, Twitter put out a statement of its own, suggesting that it wasn’t playing the ‘trademark heavy’: “We're sad to see Twitpic is shutting down. We encourage developers to build on top of the Twitter service, as Twitpic has done for years, and we made it clear that they could operate using the Twitpic name. Of course, we also have to protect our brand, and that includes trademarks tied to the brand.”

Perhaps, then, there were also non-trademark-related reasons that influenced for the decision to close Twitpic. Alexa shows that Twitpic’s overall internet ranking has dropped from 1,000 a year ago to 2,500 in recent months, while Google Trends reveals a very steep decline of people searching for ‘Twitpic’ on Google compared to the heights of July 2011 (just before Twitter introduced its own native image hosting capability). In a competitive environment such as this, Prinz argues that “publicly blaming the closing of a business on a trademark dispute that arguably does not even exist attempts to shift the blame for the failure of a business onto a third party rather than allowing blame to focus on the business model or mistakes of the founders and the company generally”.

World Trademark Review contacted Twitpic for comment but has yet to receive a reply.

Whatever the contributory reasons for Twitpic’s decision, it’s another story that casts trademark enforcement in a negative light. Yet, while many article reads will have been registered before its perspective was out there, Twitter was quick to respond and (in addition to being reported itself) a number of stories online have been subsequently tweaked to include the Twitter perspective. In this respect, it highlights the benefits of a responsive PR team, able to put out a very different trademark message once a story breaks.

Comments

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RE: Responsive PR is a must when media cries ‘trademark bully’

I was also disappointed by the uncritical reporting, and my thoughts were exactly the same as Harley's: that TwitPic was failing, and looking to point the finger of blame elsewhere (http://blog.patentology.com.au/2014/09/so-whats-real-reason-twitpic-is.html).

It seems that TwitPic got the outcome it was hoping for, though. It has just announced (on Twitter, of course) that it has been acquired by a mystery saviour, and will live on past 25 September: https://twitter.com/TwitPic/status/512705809696837632

I hope, for the acquirer's sake, that TwitPic's PR stunt has not damaged the relationship with Twitter, which is really more generous than it needs to be in allowing third parties to use and benefot from its trade marks.

Anonymous user, on 18 Sep 2014 @ 23:40

RE: Responsive PR is a must when media cries ‘trademark bully’

This entire discussion reminds me of the distributor in some country crying the blues to its licensor that the counterfeiters have stolen the market and thus the distributor's sales have gone down and thus the distributor can't make his promised minimum sales. While sometimes true, the story is often used as an excuse for simply marketing badly or some other reason unrelated to fakes. Sounds like Twitpic was on the way to an unsustainable result and took advantage of the Twitter issue to offer a reason to close other than the model simply didn't work.

Harley I Lewin, McCarter & English LLP on 15 Sep 2014 @ 16:07

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