DC updates its open data terms of use: Round 2

Over the last few months DC has worked with the open data community to revise its outdated terms of use agreement. Here’s where we stand today, after DC’s second revision posted earlier today.

Background: Do I need a lawyer to hack?

Back in September I asked Do I need a lawyer to hack in DC? on the Code for DC blog. I had discovered that in exchange for access to the District’s data, civic hackers (including myself) were agreeing to very odd terms including not taking any legal action against the District. Imagine if the data reveals actual injustice. We’d have given up the right to use the legal system to make things right! See the Code for DC post for more on why I think these terms were bad policy, but in short: data isn’t “open” if it can only be used on capricious terms. Open government data must be license-free.

What’s been revised since then

The District’s Office of the Chief Technology Officer (OCTO) immediately engaged with me, Code for DC, and others in the open government community to fix these problems. To their credit, several OCTO staff members spent several hours talking through these issues with me on multiple occasions. They have really been putting in the effort to get this all right.

Little more than a week after my blog post, DC posted its first update to the terms, which Alex Howard covered here. That update removed two of the clauses that I noted were problematic:

• the agreement not to take legal action against the District
• the indemnification clause

The removal of those two clauses were major improvements. But the rest of the updated terms, in the parts I cared about, were incoherent. They had intended to retain a requirement to attribute the District in all uses of District data, they explained to me, but the legal language they used to say it made no sense.

In a new update to the terms posted today, which followed additional conversations with OCTO, there were two more great improvements. These terms were finally dropped:

• agreeing to follow all “rules”, a very ambiguous term
• the requirement to attribute the data to the District in all uses of the data (it’s now merely a suggestion)

The removal of these two requirements, in combination with the two removed in September, makes this a very important step forward.

One of my original concerns remains, however, and that is that the District has not granted anyone a copyright license to use District datasets. Data per se isn’t protected by copyright law, but the way a dataset is presented may be. The District has claimed copyright over its things before, and it remains risky to use District datasets without a copyright license. Both the September update and today’s update attempted to address this concern but each created more confusion that there was before.

Although today’s update mentions the CC0 public domain dedication, which would be the correct way to make the District data available, it also explicitly says that the District retains copyright:

• The terms say, at the top, that they “apply only to . . . non-copyrightable information.” The whole point is that we need a license to use the aspects of the datasets that are copyrighted by the District.
• Later on, the terms read: “Any copyrighted or trademarked content included on these Sites retains that copyright or trademark protection.” Again, this says that the District retains copyright.
• And: “You must secure permission for reuse of copyrighted … content,” which, as written (but probably not intended), seems to say that to the extent the District datasets are copyrighted, data users must seek permission to use it first. (Among other problems, like side-stepping “fair use” in copyright law.)

With respect to the copyright question, the new terms document is a step backward because it may confuse data users into thinking the datasets have been dedicated to the public domain when in fact they haven’t been.

A notice of opposition to the Legal Hackers trademark application

Today Eric Mill and I filed a notice of opposition (text pasted below) against Philip WeissLegal Hackers LLC’s “Legal Hackers” trademark application. We wanted to take a moment to put our filing in context. PhilipThe folks behind Legal Hackers LLC helped to found the legal hackers community, and this is something Eric and I are both thankful for. We’ve been participants in DC Legal Hackers events and truly appreciate the work that Philipthey and our chapter leaders Jameson Dempsey, Rebecca Williams, and Alan deLevie put into building the community.

Our filing with the USPTO shouldn’t be taken as criticism of what Philipthe folks behind Legal Hackers LLC are trying to do. Strengthening the community by creating branding and setting norms are natural and important next steps. We don’t oppose a trademark generally, but we do think this particular trademark that Philipthey applied for, “Legal Hackers,” is not subject to trademark protections under current law, and that this is for good reason.

Trademark law, by our understanding, does not permit the trademarking of a phrase that simply has the meaning of the services being offered. “Apple” would not be a permitted trademark for a company that sells apples (although it is permitted for a company in an unrelated industry). These are called “merely descriptive” or “generic terms.” We believe “legal hackers” is a generic term. That is, it means what it says: people who use computers to address legal issues. Further, this is an essential feature of the services proposed to be provided under the trademark. Philip wasThose folks were possibly the first to put the two words together in that way, but that in and of itself is not sufficient to confer legal ownership over the term.

We also think that this is good policy. Eric and I are legal hackers. We have been legal hackers since before “legal hackers” was first spoken. And though we certainly don’t imagine a future of Philip filing trademark infringement lawsuits against us, we think the trademark would be stifling.

Please see the full filing below (and also linked above) for a more complete explanation of our thinking. (Also see John Grant’s earlier blog post about the trademark for more background.)

——

October 15, 2014

Notice of opposition to trademark application (serial number: 86-247,678; mark: Legal Hackers; published in TMOG: Sep 16, 2014)

Introduction

(1) On April 9, 2014, Philip Weiss on behalf of Legal Hackers LLC (legalhackers.org), a limited liability company formed in New York, filed an application to trademark “Legal Hackers” for services related to “law and technology,” including a portal, website, videos, community events, and competitive events. The application asserts first use of the term in 2012. This is a notice of opposition to the trademark application.

About the petitioners

(2) Mr. Tauberer is an entrepreneur who has worked in the field of law and technology for nearly fifteen years. He has launched two successful companies, Civic Impulse LLC [footnote: The company, formed in the District of Columbia, produces the website www.GovTrack.us.] and POPVOX Inc. [footnote: Mr. Tauberer is no longer actively involved in this company.], which gather information on bills before the U.S. Congress, statutes, and other legal information and use modern technologies, including creating websites, to make the information more accessible to the public at large. He also performs consulting services related to law and technology for clients that include the Council of the District of Columbia and the Office of the Law Revision Counsel in the U.S. House of Representatives. He has attended several meetings of the DC Legal Hackers, a chapter of the movement that Mr. Weiss helped to found. He holds a Ph.D. in linguistics from the University of Pennsylvania.

(3) Mr. Mill is a software developer who also works in the field of law and technology. Mr. Mill has built numerous applications, search engines, and data services related to this field, especially in the area of congressional and regulatory data. Mr. Mill also attends meetings of the DC Legal Hackers. Mr. Mill and Mr. Tauberer organize a yearly community event related to law and technology.

Our claim

(4) Our opposition rests on our belief that “Legal Hackers” is merely descriptive of the services offered by the applicant (TMEP 1209.01(b)) and, further, that the mark is a generic term that fails the test in TMEP 1209.01(c)(i).

Standing

(5) We stand to be harmed by the trademark of “Legal Hackers.” We believe that the relevant public may understand “Legal Hackers” to primarily refer to the genus of services we have been offering throughout our careers (including well before Mr. Weiss began to use the term) and that the trademark of “Legal Hackers” would impinge our ability to describe the services we offer to potential clients and employers.

Background

(6) “Hacker” is a homograph. A homograph is a word that is spelled the same but has multiple unrelated meanings. For example, “mouse” is a homograph with two meanings: a computer peripheral and a rodent. Hack is the same way, but with even more distinct meanings. One of the oldest uses of the word “hack” is in the phrase “legal hack,” in the sense of a lawyer for hire, which dates at least to the 19th Century. To “hack” is to cough, or to chop. A “hacker” may be a cybercriminal. The Oxford English Dictionary lists at least 10 unrelated meanings of “hack”, “hacker”, and “hacking.” The definitions most relevant to this opposition include:

(7) “hacker. n. A person with an enthusiasm for programming or using computers as an end in itself”

(8) “hacking. n. The use of a computer for the satisfaction it gives; the activity of a hacker.”

(9) Note that these definitions are not the definitions related to computer crime. Although the definitions above and the definitions related to crime both involve computers, the definitions are distinct. In fact, historically, “hacker” was first used in the sense quoted above and was only later used to mean a criminal. It was the meaning of “hacking” in (8) above that the U.S. House Majority Leader invoked when he hosted the “Congressional Facebook Developer Hackathon” in 2011 in the U.S. Capitol.

(10) There is another meaning of hack which is to pervert something’s original purpose to creatively solve a problem, often through technology. Rube Goldberg machines are hacks. Putting folded-up newspapers under table legs to stop a table from shaking is a hack. This form of the word is often combined with other words to restrict the meaning to a particular subject area. There is a website called “IKEA Hackers” devoted to the repurposing of IKEA products. They suggest turning a pillow into a small child’s costume. The Home Depot used the Twitter hashtag “#HDHacks” in marketing messages to promote do-it-yourself projects. The petitioners, Mr. Tauberer and Mr. Mill, are widely known as “civic hackers”: we use technology to solve problems in the civic space (e.g. government).

(11) Among individuals in the software industry, the definitions of hack quoted and described above are near-universally known and extremely commonly used.

Merely descriptive

(12) Mr. Weiss’s application is to trademark “Legal Hackers” for a variety of services related to “law and technology.” “Legal Hackers” is merely descriptive of these services.

(13) A mark is considered merely descriptive if it describes or immediately conveys knowledge of a feature of the specified goods or services.  For the population interested in services related to law and technology, many will be aware of the definition of “hacker” quoted above, specifically that it relates to an enthusiasm for computers. Many will also understand the word “legal” to mean that which is related to the law. By combining these two words, the mark “Legal Hackers” describes and immediately conveys the feature of “law and computers,” which is a predominant component of the services described in the application (“law and technology”). (To the extent “computers” and “technology” are distinct, we note that a merely descriptive term need not describe all of the services and may describe a set of services of which the application’s services are a subset. (TMEP 1209.01(b)).)

(14) In fact, the official Twitter account for Legal Hackers NYC, an organization run (in part) by Mr. Weiss, describes the organization as “us[ing] technology and the creativity of the hacker ethos to address legal deficiencies.” The “hacker ethos” refers to the definition in paragraph (10) above, that is, a spirit of creatively solving problems. The mark “Legal Hackers” merely conjoins the two most important words from the organization’s own description. A term could hardly be more immediately descriptive than being an extract from the words used to actually describe the services.

Generic

(15) The mark is, further, a generic term for the services offered. We claim that the mark is generic, and not only merely descriptive, because the term not only invokes features of the services but is demonstrably understood to have that meaning by the intended population. For the population interested in services related to law and technology, many are aware of the definition of “hacker” quoted above, specifically that it relates to an enthusiasm for computers. They are further aware that this term is often, in common usage, combined with a second word to restrict its meaning. (See “IKEA Hackers” and “civic hackers” above.) A “legal hacker” is thus a natural phrase that would be understood to mean someone who creatively solves legal problems using technology. This is the genus of the services described in the application.

(16) Although Mr. Weiss may claim the first use of the mark, that he used it first is not relevant to whether the intended public would understand the mark to have this meaning. (It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic. TMEP 1209.01(c)(i)) If “hackers” can be combined with “IKEA” and “civic,” it can also be combined with “legal” and be understood as related to “law and technology.”

(17) This can be seen in the use of the mark by individuals unaffiliated with the application to refer to individuals working on law and technology. ABA Journal, the journal of the American Bar Association, referred to four lawyer and policy professionals as “legal hackers” in an August 2014 article. The article additionally used the phrase “legal hacking” to refer to that which the four legal hackers do:

“The panelists agreed that the future for legal hacking was bright, and they were optimistic about the possibilities for technology to increase access to justice.”

To be sure, the panelists were not saying that the future of Legal Hackers LLC is bright but that the future of combining law and technology is bright.

(18) “Hackcess to Justice 2014,” a recent community event unaffiliated with Mr. Weiss or his company, is a play on the words “hack” and “access.” The event described itself as for those interested in “improving access to justice through technology.”

(19) That “legal hackers” has been used naturally in every-day speech by individuals unaffiliated with the application to refer to law and technology demonstrates that it is a generic term. That those individuals have modified “legal hackers” according to the rules of English, by adding “-ing”, or with a poetic license, as in “Hackcess,” demonstrates that the term has a readily understood meaning relating to “law and technology” and independent of the services provided by Legal Hackers LLC.

Summary

(20) Our opposition is based on our belief that “Legal Hackers” is merely descriptive, and, further, a generic term, for the services offered by the applicant, based on the common usage of the terms “legal” and “hacker” among those interested in technology services, and the common usage of the compound phrase “WORD + hacker” to restrict the meaning to a subject area.

(21) We would not oppose an application in which “Legal Hackers” is combined with another word, such as “Society,” “Alliance,” or “NYC,” which would remove the merely-descriptive and generic nature of the term.

Joshua Tauberer, Ph.D.

Eric Mill