The post-Burning Man headaches for BMOrg continue to mount. If you believe in karma or physics, then you understand that for every action, there is an equal and opposite reaction. If you threaten legal action towards the people who create your global following, you should consider the risk that something might come back to bite you in the ass. Such as, your own words, and proof of the motives behind your actions.
At least, that is what’s being threatened, by some Canadian Burners who appear to have little defense left to them but the “nuclear option” of revealing the truth.
There are as many people at Burning Man from Canada as from Nevada. 20% of Burners are international, and more are from Canada than any other country. It’s 6-7% of the Burner population. Canadian Burners have spent decades building up our culture by throwing burns all across their vast country. Someone has legally owned the Canadian trademark “Burning Man” for many years, and BMOrg are suing them even though they appear to have registered no trademarks of their own in that country. Perhaps they think that Canada is just another part of America?
We covered the beginnings of this dispute earlier in the year: Canada Draws Battle Lines For Burner Culture. As per usual, naysayers came out to accuse us of click-bait and fear-mongering.
Well, fear not, nay-sayers. The Battlespace has now gone to Def Con 1, with this email last night to Burning Man’s Regional Contact mailserv:
stop your malicious lawsuit or WIKILEAKS!
Hi, I’m sure many of you will remember me, I was one of the founding members of the Regional Network, acting as Vancouver RN rep 2001-2006, while also being a member of the Media Team, & working as the first editor of the Regional Contacts section of BurningMan.com.
Burning Man is suing the non-profit Burn BC Arts Cooperative for $35,000 over trademark infringement. I am not involved in Burn BC or any of their events, but I feel strongly that Burning Man is acting as a corporate bully in this situation, attacking long-time community members & artists.
In response, if Burning Man does not drop this frivolous lawsuit immediately, ALL Regionals List & Media Team correspondence, as well as one-on-one communications I had with Burning Man senior staff, including Larry & Marion, will be made publicly available on WikiLeaks, all correspondence from 1999-present, This means that all of your names, the names of persons in your posts, legal issues that were discussed, etc. will be in the public domain. Hopefully this information will help Burners fight trademark infringement cases by showing the evolution of Burning Man’s deceptive practices using volunteers to build corporate brand value under the false guise of community.
What could be there in 15 years’ worth of correspondence, that could in any way harm this non-profit, which organizes an annual week of dancing and debauchery in the desert? What could be juicy enough that they would send it to Wikileaks? Why should this even be a threat, something to use as leverage against the giant BMOrg behemoth?
It is not for me to speculate – draw your own conclusions. But to all those who accuse Burners.Me of making stuff up and crazy conspiracy theories, consider that this is going on – and it’s nothing to do with us. We just have multiple sources who provided us with a copy of the email, which is the intellectual property of its author. If there was nothing of note in there, why would Burners even make such a threat? The Canadian Burners, who legitimately owned the trademark, and seem to have taken all the right steps legally to renounce their ownership so that there can’t be any dispute, are still getting pursued by Burning Man. For how much? Forty grand. What difference is that going to make to a company that spent $1.43 million on lawyers last year?
I asked Bhak Jolicouer, who first contacted me about this story, what’s up? 1076 pages of legalese to demand the cash, that’s what up. It seems Burning Man have been busy in their spiteful pursuit, since June when the arts collective formally relinquished all rights to the disputed marks in their territory. This is an example of the “it’s not enough that we win; everyone else must lose” mentality that runs this corporation. Most non-profits I know of, don’t sue other non-profits, then ask their donor community to buy $150 scarves so they can keep this kind of bullying up. In fact, it’s rare to see these sort of tactics from for-profit companies, unless they’re Apple or Samsung or Microsoft.
Burn BC released our marks “Burning Man” and “BC Decompression” back to the public domain with the attached letter filed on permanent record.
I told them that if they register with the Canadian Intellectual Property Office, then they owns these marks. Burn BC can’t agree to a demand that is not even part of this frivolous litigation. I had asked for a list of marks they own and Burn BC would have agreed not to register those marks, no list was provided.
He said he would get back to me by the end of the day.
There has been no response, and again, no list provided.This is AFTER: We released our marks, deleted all references, and removed myself and Burn BC from any online groups or lists that are “Burning Man”.The case has no merit.
But if Burn BC does not participate in the hearing and offers no defence; then any claim Decommodification LLC makes regardless of accuracy or merit will be awarded.It seems they are now asking for damages, claiming Burn BC hurt their ability to control the good will of Canadians, and are seeking legal expenses, and a court order for Burn BC to turn over BurnBC.Org and BurningManArts.ca over to Decommodification LLC.They are looking for damages of $40,000 against the non profit Burn BC Arts Cooperative (Created by a founding member of the Vancouver Burning Man Community, and other long time Burners), and are not content to just let it go. They know full well this will mean the end of Burn BC, and seem content to push frivolous litigation wasting the resources of the Canadian Federal Courts.They had NO need to take it to the courts, as all they had to do was file an opposition with CIPO.
Burn BC had no intention of using any mark that had not been approved by CIPO.
Now we have no desire to use it at all, even as Public Domain under section 13(1B) of the Canadian Trademark Act.If the judge awards damages, Burn BC receives the bullet to the head.I was surprised as anyone with this post by …one of our founding members, he has a great heart and contributed countless hours of service to the free and open community spirit that was our Burning Man Community and our Burning Man Culture.~ Bhak Jolicoeur (AKA Napalm Dragon)
Lover of Chaos and Cacophony, Art and Beauty.
The non-profit Burn BC group suggested that if BMOrg wanted to own the marks in Canada, then they should register them in Canada. Which to me seems like a very good point. Instead of doing that, BMOrg is trying to shake down a non-profit collective for $40,000. That’s 2 tickets in a Safari Camp to them. OK, we get it: BMOrg forgot to register trademarks in their biggest export market for 30 years. Why not simply register them now? Why pursue and punish Burners, when the matter is clearly settled? The answer is “mentality”. The way THEY think about US.
Welcome to the new, non-profit culture we are teaching to newbies and spreading around the globe. Gift us your art, so we can monetize it and sue non-profits.
This case may take a number of twists and turns, if they find enough financial backing from the community to take BMOrg on, there could be all kinds of documents produced in a courtroom under discovery laws. Not to mention the public release of 15 years of correspondence between the two charities and their volunteers.
As always with this blog, comments are encouraged. Anyone from BMOrg is welcome to come here and inform the community about what’s going on, as is anybody else with knowledge of these events. Thanks to our multiple anonymous tipsters for sharing this leak.
[Update 9/18/14 5:46pm]
the Burner who wrote the email to the Regionals list has responded to our request for comment, elaborating further on their motives:
A couple of Corrections.
NO ONE has ever registered TM rights in Canada. It’s been in the public domain.
We pulled it out and put it back.
There’s no need to continue a law suit, and it’s questionable they have any right to.
We didn’t renounce ownership, we released back to the public domain so no one has exclusive rights to it here.
We didn’t relinquish “all rights” we relinquished exclusive rights.
And the emails Jody wants to release are not between Burn BC and BRC.
They are 15 years of internal BORG correspondence.
[Update 9/18/14 9:06pm]
1. For purposes of this Agreement, a trademark consists of any sign, or any combination of signs, capable of distinguishing the goods or services of one person from those of another, including personal names, designs, letters, numerals, colors, figurative elements, or the shape of goods or of their packaging. Trademarks shall include service marks and collective marks, and may include certification marks. A Party may require, as a condition for registration, that a sign be visually perceptible.
2. Each Party shall provide to the owner of a registered trademark the right to prevent all persons not having the owner’s consent from using in commerce identical or similar signs for goods or services that are identical or similar to those goods or services in respect of which the owner’s trademark is registered, where such use would result in a likelihood of confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any prior rights, nor shall they affect the possibility of a Party making rights available on the basis of use.
3. A Party may make registrability depend on use. However, actual use of a trademark shall not be a condition for filing an application for registration. No Party may refuse an application solely on the ground that intended use has not taken place before the expiry of a period of three years from the date of application for registration.
(b) notice to be given to an applicant of the reasons for the refusal to register a trademark;
(c) a reasonable opportunity for the applicant to respond to the notice;
(d) publication of each trademark either before or promptly after it is registered; and
(e) a reasonable opportunity for interested persons to petition to cancel the registration of a trademark.
A very short summary of what happened, with a little info on trademark law and surely many mistakes. This is based on information shared publicly by Bhak and some of the legal filings he shared directly with me a while back. I am an attorney.
1. The BMOrg forgot to register the trademarks in Canada, which is not a signatory to the treaty that makes registration reciprocal in most countries.
2. Burn BC, an unnoficial regional organization and perhaps mostly Bhak’s alter-ego, had been using the trademarks without the BMOrg’s permission but with its awareness for a while.
3. Trademark law: registration is only one piece of the puzzle. If an entity uses a trademark, generally words or a symbol, it can pretty quickly get the right to prevent other people from using it for the same purposes. Example: If I open up Pantsless Santa’s Light Sick and Feather Hut and run the business for a year or two, I will gain trademark rights to that business name and nobody else will be able to capitalize on my success.
4. More trademark law: Trademark registration basically gives you those rights, and even more, in advance. But if someone else is already using a trademark, nobody else can register it. Example: A local entrepreneur named Hairy Larvae decides that he wants to open up his own Pantsless Santa’s Light Stick and Feather Hut, and attempts to register that name as a trademark. He won’t be able to. It’s already my trademark, even though I haven’t registered it.
5. Burn BC applied to register the Burning Man trademarks on the grounds that it represents the Canadian burner community. Part of the argument is based on the idea that the Canadian community as it has developed over the years has a culture distinct from the corporate American TITD. This is an interesting argument and probably has some merit, but it is not pertinent to this procedural and legal account.
6. The BMOrg opposed Burn BC’s registration attempt, as far as I can remember on the grounds that the above argument is bunk (it might or might not be), that the BMOrg, through its official affiliates, already had the unregistered trademark rights (it does, unless – at minimum – the above argument is valid), and that Burn BC does not represent any separate Canadian burner community that might have trademark rights (this is a coffin nail for Burn BC). I apologize if I have this all wrong – I may well.
7. Burn BC “released the marks into the public domain” and withdrew its registration application, I believe with the intent that they only be used for noncommercial/burny purposes. This was a nice gesture, but a. It might not have any rights to release (see above), and b. Trademarks don’t quite work that way – you either maintain control of them or lose all rights to them.
8. The BMOrg is seeking revenge against Bhak for challenging their authority and forcing them to incur a ton of legal fees, maybe as much as $100k worth based on the amount of paper that’s been generated.
9. The BMOrg is acting like a bag of dicks. Bhak’s theories might or might not hold water in court, but he has acted in good faith with the purpose of promoting what he believes are the best interests of Canadian burners. This is not some kind of frivolous power grab. He doesn’t deserve this.
http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/vwTrdmrk.do?lang=eng&status=OK&fileNumber=1683813&extension=0&startingDocumentIndexOnPage=1Their application is “FORMALISED” which just means it’s been received and is waiting to be EXAMINED. It takes 12-18 months to reach examination. “Formalised” is just a fancy way of saying “entered in the system” and while it’s being applied for, no one else can file an application for the same.After 12-18 months, if the examiner deems the mark unregisterable they reject the application. If they don’t notice anything, it’s APROOVED which means Decommodification LLC has rights to use it as an official Trademark while it gets ADVERTISED for opposition. But until it’s REGISTERED after the ADVERTISED and OPPOSITION phases, they cannot assign licence to it, and they cannot enforce it, and they cannot transfer, or sell it.
During opposition it gets advertised in a public journal for 60 days at which time anyone can oppose it for any valid reason listed under section 30. http://laws-lois.justice.gc.ca/eng/acts/T-13/section-38.html
Burn BC released it’s marks based on Section 13(1B) of the Canadian Trademark Act.
Which would fall under section 38 (1B) as an unregisterable mark. It’s kind of like what happens when a mark falls out of trademark into public domain when its “Naked Licensed”, which is generally how it was used in Canada up until around 2009 or so.
2: having been used widely under “Naked Licencing”
3: and generally arbitrarily enforced as a Cultural or Community MarkIn consultations with lawyers they all said it’s already Public Domain, and about the only way anyone can register it is if no one opposes any applications with CIPO. In other words someone is trying to issue and enforce in Canada something they have never had Registered Rights to enforce in Canada.So no one was stealing anything. Burn BC was just recognizing our rights as Canadians and the work we’ve done as a Distinctly Canadian Burning Man Culture, and offering an opportunity for Canadian Burners to step up to the plate and defend those rights. But it became clear, that people wanted NO ONE to have exclusive rights to our Culture and Community here. So we released the marks under a section of the trademark act that says “no mark that interferes with the development of the arts shall be registered.“