Tampa FL — Oxebridge has successfully shut down a legal maneuver by lawyers representing the International Organization for Standardization (ISO) which would have made it illegal for any company, consultant, certification body or person to use the term “ISO 9001” without paying a royalty.
Allegedly in response to Oxebridge’s posting of the Working Draft and Committee Draft of ISO 9001:2015, ISO sent Oxebridge a cease-and-desist letter demanding the files, and related links, be removed. The letter then included additional demands surrounding any usage of the term “ISO 9001” and even attempted to chill free speech.
Oxebridge had originally posted the Working Draft (WD) and then removed it when requested by ISO Legal Adviser Holger Gehring. A month later, Oxebridge added links to sites that still hosted the file, which were apparently not contacted by ISO, or were hosting the file with permission. Oxebridge then received a copy of the CD and was invited to publish it for “public comment” by an ISO Member Nation mirror committee representative. Oxebridge then received confirmation of the legality of the posting from ISO/TC 176 Secretary Andy Kwong, who wrote (emphasis added):
…an enquirer could get hold of a copy of CD 9001 via their member body. It would be up to the MB to decide whether the consultation is open to the general public at that stage or just to the national mirror committee.
Regardless, Mr. Gehring wrote again to Oxebridge, saying [sic], “you making big mistake.” Because of what he called “odd, gangster-like phrasing,” Oxebridge VP Operations Christopher Paris began to suspect that Mr. Gehring was not a lawyer at all, and so responded by requesting a formal Digital Millennium Copyright Act (DMCA) takedown notice, pointing to the Oxebridge website which says it will honor validated DMCA-compliant requests.
Rather than provide the DMCA notice, ISO instead hired New York law firm Carter, Ledyard and Milburn. They then sent a formal cease-and-desist letter, the entirety of which may be read here. (PDF – 71 kb)
“The C&D was incredible,” said Mr. Paris. “It not only demanded us to remove the CD version, which we had already done, but also the links to the WD file hosted on third party sites where it was presumably being published with permission. It then claimed copyright over a parody image of the ISO logo on the Chinese communist flag, and claimed trademark over the term ‘ISO 9001.’ ISO demanded we stop using the phrase, stop providing consulting services, and surrender every penny we have every made selling ISO 9001 consulting services since 1999. In short, they wanted us to go out of business entirely.”
Oxebridge’s lawyers reviewed the claim and found it unprecedented. Not only had ISO never filed a trademark on the term “ISO 9001,” it’s sudden claim of restricted use would have prevented any organization from using the term in selling any support service or material. This would have affected ISO 9001 certification bodies, accreditation bodies, consultants, contract auditors, book authors and nearly anyone using the term “ISO 9001.”
“This would have have had global implications, and threatened the entire industry, in every country on the planet,” said Mr. Paris.
In its response, Oxebridge made the case that ISO’s efforts were punitive, in response to the recent “Public Call” document which asked ISO to temporarily suspend development on 9001:2015. Oxebridge provided evidence of multiple other parties who were not only distributing the Committee Draft, but earning revenue from doing so, unlike Oxebridge which offered the draft for free. One registrar, DNV, gave a seminar in which the presentation included entire slides of the CD and stripped out the ISO trademark notice, replacing it with its own attribution; the event included an entrance fee.
Despite the claims of ISO that whether or not it pursued other “infringers” it was within its right to exercise its claim against Oxebridge, the law has determined otherwise. Trademark holders cannot punitively pursue frivolous infringement claims against only select individuals, but must show evidence that they are not engaged in what is called “selective enforcement.” Because ISO had allowed the DNV webinar in 2013, as well as a previous one in 2007, to stand without harm, this diluted their argument. Because it has allowed consultants, auditors and book authors to publish materials using the term “ISO 9001” for over a quarter of a century, Oxebridge argued ISO had not done due diligence in asserting its trademark.
Oxebridge then provided ISO a list of alleged “infringers” that, if their suit against Oxebridge was successful, they would then have to pursue, or have the Oxebridge case overturned. This included nearly every consultant currently working on the ISO TC 176 committee, responsible for drafting the 9001 standard, including TC 176 Chair Dr. Gary Cort, as well as other famous figures within the Quality Management profession.
ISO and their lawyers then dropped the complaint entirely.
As to the matter of the Chinese flag image, Oxebridge argued that editorial satire is a protected form of free speech, an interpretation upheld repeatedly by the US Supreme Court.
Oxebridge is currently reviewing legal options to recoup the expenses associated with the ISO action.
Photo credit: Corbis (licensed)