Why I Oppose the “Legal Hackers” Trademark Registration

I’m not sure when exactly I started thinking of myself as a legal hacker. I certainly have been rejecting much of the conventional wisdom around law practice since I became a lawyer, and I’ve tried more than a few “hacks” in my day to improve my own legal workflows (some successful, some not).

Legal Hackers LLC can tell you exactly when it first used the term “legal hackers”: April 1, 2012 (the date on their federal trademark application). As I said in my previous post, Legal Hackers LLC’s Phil Weiss has been instrumental in establishing the idea of legal hacking as an organized movement rather than a dispersed set of individual thinkers. He helped organize one of the first legal hackathons while at Brooklyn Law School in 2012, and he and others formed the NY Legal Hackers meetup group to capture and maintain some of the momentum of the movement coming out of that event.

As I also said before, I don’t know Phil personally, but I have tremendous respect for the work he and other early organizers of the legal hackers movement have done to bring a collective voice to the movement and help inspire others to form legal hackers groups around the world. I am one of the inspired, having been introduced to what I’ll call the “formal” legal hackers movement by way of the Seattle Legal Innovation and Technology Meetup where I was encouraged to form a similar group in my home town of Portland.

In the process of starting up the Portland group, I reached out to legalhackers.org to ask for resources for starting up and promoting a new group. Even though I’m a lawyer, the response I received surprised me:

“Hi John,

Thanks for reaching out. Happy to provide a form press release as well as a quote.

Before we get to that , however, did we ever square away legal hackers paperwork? There is a short organizer contract that covers a TM license and some baseline expectations.”

To which I replied, admittedly snarkily:

“How lawyerly 😉 Send it on over–I’d be happy to take a look and get it back to you.”

There are actually many things in the contract I received that trouble me. It calls for all IP created or presented at a local event to be granted to Legal Hackers, LLC via a royalty-free (though, to be fair, nonexclusive and non-commercial) license and allows for broad use and distribution of that IP. It also sets forth a number of “Rules” that strike me as paternalistic and unduly restrictive; I think they would work better as guidelines or suggestions. Finally it shifts a tremendous amount of legal risk from the LLC to the individual Chapter Organizers, holds Organizers to an unfairly high standard of conduct, and creates significant potential for personal liability for an Organizer to the extent that I could never imagine signing it myself. You can read (and annotate) the contract itself at Law Genius if you are so inclined.

But I’m under no obligation to sign the contract… unless (the contract claims) I want to refer to myself or the group I’m organizing as “Legal Hackers.” Which leads to the debate I called for regarding the appropriateness “Legal Hackers” trademark.

I think it is at best counterintuitive, and at worst bad for the movement, to have the term “Legal Hackers” tied up in ownership by a single individual or entity (update: Phil commented on my earlier post to clarify that he is but one of four managers of Legal Hackers, LLC so the mark would not be under the control of a single person).

From a trademark law standpoint, I think the term “Legal Hackers” is descriptive and therefore should not be eligible for protection on the primary trademark register. In reviewing the application record at the USPTO, the examining attorney did not raise the descriptiveness issue, although such oversights are not uncommon.

I don’t think anyone would deny that the term “hacker” has been in use since well before April 2012 to describe a certain type of activity (the earliest Urban Dictionary entries date to 2003 and reference pop-cultural use of the term relating to computer hackers at least as early as 1982 (Tron) and 1983 (War Games)).

Since then, “hacker” (or “hack” or “hacking”) has been used to near-ubiquity to describe innovation in just about any thing or activity you can think of: Ikea, Gardening, Running, Walking, apparently even Sex (thanks Buzzfeed). In fact I challenge you to think of some activity and run a Google search on that activity plus “hack.” Any of these categories are simply descriptive of the activity being hacked–I can’t see how “Legal” is any different.

Beyond the formal legal argument, however, I think having the term “Legal Hackers” under trademark protection is a bad idea. For one, the notion that someone could tell someone else they can’t call themselves a Hacker of any sort seems inappropriate, if not unheard of. I can see a legitimate argument that “my hack is better than your hack,” or “I’m a better hacker than you are,” or even “your hack isn’t truly a hack because it’s something most people would normally do so it isn’t hack-worthy.”  But I can’t find legitimacy in a claim that “your hack isn’t a hack because I own the term “Hack” and I get to say what is or isn’t one.” Or, “You aren’t a hacker because I control the term “Hacker” so I get to say who is and who isn’t.” Taken further, the idea that the ability to bestow or withhold the “hack” or “hacker” label would carry the weight of federal trademark law is preposterous.

Next there is the potential for unintended consequences: Those who control Legal Hackers LLC may turn out to be kind and benevolent rulers. Again, I have no doubt that they have the best interests of the movement at heart. But things change. What happens if control of the group passes to less benevolent leaders? Or what happens if Thompson Reuters, or Lexis, or Bloomberg offers them half a million bucks for the business? Or two million? I don’t think anyone would argue against the ridiculousness of the notion that a company like Microsoft or Google could get to determine who is or isn’t a computer “hacker.” Is legal hacking any different?

Finally, I don’t think that clamping down on IP use is a good way to build and further a movement. I can’t speak for Phil or the other managers of the LLC, but as I understand their motivations they want to ensure a certain degree of quality and consistency among those groups who wish to refer to themselves as “Legal Hackers.” While this is an admirable goal in theory, I think it is a solution in search of a problem.

My experience and observation have been that the best way to grow a grassroots movement is to give participants a sense of ownership in that movement. Tying up the movement’s name under a federal trademark (and, getting back to the contract, requiring intellectual property assignments back to the parent organization) does the exact opposite. I think that growth and messiness come hand-in-hand: If your goal is the former, you’ll need to accept and even embrace some of the latter. By trying to keep things too tidy, too controlled, I think that the folks behind Legal Hackers, LLC are doing the larger community a disservice and missing out on opportunities. Of course no one asked me.

So that’s my two cents. As I said in my earlier article, my position on this is not set in stone. I recognize that there will be other perspectives and am open to the possibility that those points-of-view may change my own. I again invite anyone who is interested to participate in the debate, including rebutting any or all of my statements above, by using the #LegalHack hashtag on Twitter.

I also called for potential solutions and will offer the following:

My issues with the proposed trademark registration end at using “legal hacker” as a standalone term. If Legal Hackers LLC were to instead seek protection for something like the “Legal Hacker Alliance” or “Legal Hackers Association” I’d have no beef. The existence of one formal legal hackers group would not preclude the existence of non-participant legal hackers, or even a competing group, and I think it would allow the managers at Legal Hackers LLC to pursue their goals as I understand them.

Agree? Disagree? Have a different proposed solution? Please join the conversation.