A federal trademark law firm has filed a lawsuit against the American Civil Liberties Union (ACLU) and the Electronic Frontier Foundation (EFF) for a total of $100.3 million in trademark costs, claiming that the groups are violating copyright law.
The plaintiffs claim that the EFF and the ACLU have engaged in a “massive campaign” to use trademark litigation to pressure Google and Facebook into giving up their trademark rights, which are used by many companies, including Netflix and YouTube.
In the suit, filed Thursday, the law firm, Latham & Austin, describes how the EFF has used trademark litigation as a “bait and switch” strategy to force companies to hand over their trademark to copyright holders in order to avoid liability.
EFF, the group says, has also used the lawsuit to pressure tech companies into allowing them to “pursue legal action against third parties who infringe their intellectual property,” in the same way it used trademark lawsuits to try to compel Apple to hand back its patent portfolio.
The suit, which is seeking to invalidate the trademarks used in the case, also claims that the two groups have engaged “in a massive campaign to bully the courts, threaten the integrity of courts, and intimidate Congress into passing legislation.”
EFF’s attorney, John Rakove, says in a statement that the lawsuit “was launched to defend our users’ rights to free speech and to protect intellectual property and the intellectual property of others.”
The group’s lawsuit is based on a lawsuit filed in June 2015 by the Electronic Privacy Information Center (EPIC), which claims that Google and the American Chamber of Commerce are abusing the use of its trademarked “Tess” mark for “a political purpose” and for infringing on the patent rights of others.
EFF has previously called on Google and other tech companies to abandon the use to sue other companies for trademark infringement, and has been outspoken about the need to fight back against attempts by tech companies and big media companies to sue companies for copyright infringement.
EFF is the same group that sued Facebook over its use of the term “FaceTime,” which was used in ads during the 2016 election.
Google, in turn, recently joined the chorus of tech companies suing over the use in ads.
EFF’s lawsuit cites the company’s use of “FaceTimes” in ads on Facebook and YouTube, as well as in advertisements for its own products, and claims that “Google is using trademark litigation and other tactics to harass and intimidate petitioners in order gain an unfair advantage over petitioners.”
The lawsuit seeks to invalidating Google’s trademark registrations, including those of the “Tress” mark.
Google and Microsoft are also listed as defendants in the lawsuit.
The case is scheduled to go to trial on August 6, 2017.
EFF Senior Staff Attorney, Laura Voisin, told Ars that the suit represents the first time that a large-scale lawsuit has been filed in the US against large technology companies.
“This is not the first trademark case that EFF has filed against Google, Microsoft, or Apple.
We filed a similar lawsuit against YouTube, which was dismissed in 2014,” she said.
“In each case, the plaintiff in each case is a private citizen who is not using the mark to target anyone.
This case is an important first step in challenging the use and misuse of trademark and copyright law to suppress speech.”
EFF also filed a separate lawsuit against Facebook in 2016, which ultimately was dismissed, but Voisins said that the Facebook case highlights how the tech industry and big tech companies are using trademark law to attack the rights of the general public.
“Facebook was the first major social network to use a trademark to fight the Stop Online Piracy Act (SOPA), and it was the only major social networking site to be forced to pay a large sum of money for using a trademark,” she told Ars.
“While the SOPA and PIPA bills passed both houses of Congress, Facebook, Microsoft and other companies were able to use their trademarks to fight SOPA because their use of a mark would have allowed them to effectively sue a lot of websites for infringing their trademarks.”
EFF said in its lawsuit that “the companies’ use of trademark lawsuits has been widespread” and that they have used them “in more than 100 states, the District of Columbia, the U.S. Virgin Islands, Puerto Rico, Guam, and several foreign jurisdictions.”
EFF has also filed lawsuits in the past against Microsoft, Google, and other big tech firms.
“We will continue to file these types of lawsuits until the companies pay the legal costs and take other steps to end the use by big tech corporations to abuse our trademark laws and copyright laws,” Voisine said.