Psion Netbook trademark case continues: targets those "profiting" from misuse

Further details of the Psion netbook trademark case have emerged, thanks to a number of statements from the legal team, Origin, supporting the UK company.  The situation came to light last week, with several UK sites reportedly receiving cease & desist letters regarding their use of the term "netbook", a term which Psion trademarked back in the 90's for use on a range of sub-notebook devices.  While the devices themselves are no longer in production, Psion does still hold the trademark and produce accessories for the line; according to their legal representation, they're not in fact targeting fan-sites and bloggers using the term "netbook" but those making "a direct, financial profit" from its use.  

Full legal correspondence after the cut

While that includes manufacturers who use the term "netbook" in their promotional material, Origin and Psion are also using it as justification to target blogs and fan-sites that feature adverts that refer to the budget ultraportables as netbooks.  When challenged with the fact that often these adverts are contextually (and automatically) placed by Google AdWords or other systems, and not subject to control by the site admins, Origin has suggested that it would rather work with the retailer featured than the site.

Unsurprisingly opinions are still mixed regarding the ongoing situation, with some seeing it as Psion's legal right to defend their trademark while others question why it has taken so long into the current netbook lifespan for them to act.  Interestingly, Origin report that all of the initial sites contacted with cease & desist letters have since responded and agreed to work to delete the offending trademark.

Statement One:

I just wanted to address a mistaken assumption made by some of your readers (including journalists in more countries than I now care to count).

When you said in your 23 December blog that I'd written to 'some netbook enthusiast sites' asking them to cease and desist using the 'Netbook' registered trade mark, many readers assumed that these letters had gone to people simply commenting on the tech scene.  One of your early posters, called Andy, even said:  "Why go after a bunch of bloggers? It's not like they're profiteering off the name."

Andy makes a fair point.

Here are the facts.

We have sent letters out solely to those making a direct, financial profit from use of the 'Netbook' trademark.

95% of all letters have been sent to retailers and manufacturers using the 'Netbook' trademark (including the very largest players in this space.  You'll no doubt be aware that few portable manufacturers in fact use the 'Netbook' term at all.  For example, Asus, a pioneer in this space, does not to any appreciable extent – it's an Eee PC.  Not an Eee PC 'Netbook'.  But it's a different picture in retail and our over-riding priority is to persuade the retail community to adopt a different term.)

5% have been sent to websites that have sponsored advertising or other for-profit links that include the prominent use of the 'Netbook' trademark and a link to a retailer or manufacturer using the 'Netbook' trademark.

0% have been sent to straight blogs, tech enthusiasts sites or review sites – i.e. with no prominent 'Netbook' related sponsored advertising or other 'Netbook' related for-profit links.

Attached is a screen grab (pictured right) from the site, whose letter you used.  As you can see, it falls in that 5% category.  (He can of course easily remove the 'Netbook' related sponsored advertising or other 'Netbook' related for-profit links, if he wishes to).

When we started this project for Psion, we drew a firm distinction between entities profiteering off the 'Netbook' name, and those not doing so.  Neither we, nor Psion, thought that it would be fair, proportionate or sensible to start this process off by writing to those not profiteering financially and we have not done so.  Journalists and bloggers obviously have to use some term to refer to the new class of ultra-low cost portables – we'd rather they didn't use 'netbook' now that they're aware of Psion's registered trade marks, and we hope that they too will transition to whatever term becomes the legitimate generic.  But are we about to start a wave of lawsuits against journalists and bloggers? The answer is an emphatic 'no'. Our priorities lie elsewhere and always have done.

I'll obviously need to send clarificatory emails out to those journalists who got the wrong end of the stick, but if you wanted to post something yourself first, please let me know and I'll hold off a day or so.  (Not exactly a scoop, but just a professional courtesy.) I have, for example, just received a mail from Der Spiegel in Germany asking for urgent clarification, after reading a posting in the UK's Guardian. I do need to give them both all the facts asap.

There is of course a legitimate and important question centered on the extent to which corporations can influence or control the language we ordinarily use.  If your readers are really interested in the words they use, then perhaps they might give some careful thought to why they started using the term 'netbook' in a generic way in the first place. If you're aware of substantial 'generic' use that pre-dates Intel's 2008 marketing efforts to promote its Atom processor, I'd be interested to learn of it.

Incidentally, we have started to receive direct responses from recipients of our letters.  So far, all have agreed to use a different term. I think that's because, when you really look carefully at the merits of the situation, both legal and ethical, Psion has a fair point.

Most retailers and manufacturers in my experience respect others' registered trademarks – after all, they are frequently their own most valuable assets.  But there's obviously quite a mountain to climb here.

Anyway, best wishes for the Christmas season.  If you have any follow-up questions at all, feel free to let me know.

Statement Two:

Thanks for posting my response.

Just a couple of further points of clarification.

First, Psion has been using the 'Netbook' trademark continuously since 1999 – perhaps in recent years the extent of use has not been that great, but Psion is still actively supplying 'Netbook' accessories and also providing maintenance and support to existing 'Netbook' users.  Registered trademarks aren't just for protecting multi-billion dollar brands.

Secondly, where a blogger uses context sensitive advertising that is completely outside of its control (so it has no knowledge at all whether a 'Netbook' related advert will be placed in its blog site), then we're taking the view that we need to focus on working on persuading the featured retailer to adopt a term other than 'netbook'.  So if any recipient of one of our letters is in that position, if they want to let me know, that would be helpful all round.  Although we can't accept that use of 'netbook' in a generic fashion is legitimate, our priorities lie elsewhere.