Makenosound

A couple of years ago, inspired by Jan Tschichold’s design for the Penguin Classics book series I built a theme for the fledgling blogging platform that was Tumblr. I did it for free, for the love of it. Others seem to really love it too—as best I can figure out there are about 10,000 installs of the original theme and according to Tumblr there are 21,814 people using the “Recycled” version David Cooper built from my original code.

Unfortunately, and perhaps inevitably, the other day I received a request from a lawyer representing Penguin Books asking me to take the theme down. The full text of the request sent to me is below:

Dear Mr. Wheeler,

I write on behalf of Penguin Books Limited, owner of the PENGUIN word and design marks.

As I believe you know, our client recently wrote to Tumblr, Inc. requesting that its Penguin Classics Recycled theme, which you designed, be removed from its web site. A copy of our letter to Tumblr (without the lengthy exhibits) is attached.

Tumblr has complied with our request, and we understand that you assisted Tumblr in effecting the changes it made to the theme.

Our purpose in writing to you is to ask for your continued cooperation. Your web site at makenosound.com currently makes the Penguin Classics Recycled theme available - for example, at http://makenosound.com/dump/penguin-classics-v1.2.1.txt. We request that you refrain from disseminating this theme and that you remove it from your web site(s) or modify it in accordance with the changes made on the Tumblr web site.

Please let me know if you have any questions. We appreciate your cooperation.

Technically they’ve only asked me to take down the “Recycled” version and I could probably get away with leaving the original up for a while yet, but I have better things to do than deal with lawyers more than once so I’m going to assume they’ll come after the original theme eventually and just take it down. The email also included a copy of the letter sent the Tumblr making essentially the same request. You can view the letter in its entirety here, I’ve pulled out the most relevant paragraphs:

The design of Tumblr’s Penguin Classic Recycled theme, as indicated by its title, misappropriates our client’s trade dress. Tumblr has taken, among other things, our client’s distinctively shaped white shield against an orange background, and its various penguin representations in the same forms used by our clients. The inevitable effect of this misappropriation is to reap the benefits of the marketing magnetism of our clients’ valuable trade dress and our clients’ reputation.

The Penguin Classic Recycled theme is bound to cause confusion. The public will mistakenly believe that the bloggers who use this theme, their blogs, and the opinions expressed therein, are connected with, or endorsed by, our clients. This is especially so because Penguin Book Limited and its U.S. affiliate each has a Penguin blog. http://thepenguinblog.typepad.com and http://us.penguingroup.com/static/html/blogs. Tumblr’s Penguin Classics Recycled them therefore infringes our clients’ rights and constitutes trademark infringement and unfair competition.

Never mind that the theme probably falls under fair use, Penguin’s claim that “the public will mistakenly believe that the bloggers who use this theme, their blogs, and the opinions expressed therein, are connected with, or endorsed by, our clients” is absolutely ludicrous. I’m fairly certain noone is confusing any of these people with the official Penguin Blog.

In any case, I believe it’s absolutely the wrong decision from Penguin. I built the theme because I love their book designs, and the people who installed it did so for the same reason. Using the theme was a way for people to show their affection for the Penguin brand, not to “reap the benefits of the marketing magnetism of our clients’ valuable trade dress.” All takedown notices like this do is make people angry at the pettiness of the claimant. Wonder how that helps the value of Penguin’s precious reputation.

I could probably redesign the theme, along the lines of the way newly-named “Panda Classics Recycled” has, but this whole incident has left a rather bitter taste in my mouth and I’m not sure I can be bothered just now.

Thanks to everyone who used and enjoyed the theme while it was out there, it was great while it lasted!