One man’s three-year fight with Twitter

Losing battle ... Jason Boyce and Twitter stumbled upon twitter as a product name almost simultaneously, but Boyce’s slowness to register a trademark ultimately cost him victory in a long running stoush.

In March 2006, Jason Boyce was thumbing his way through a thesaurus looking for a name for his new business. Less than 12 months earlier he’d bought his first computer and was teaching himself how to make websites.

“I wanted an original name for an Australian website that was about highlighting Australian products and businesses and helping them get online,” Boyce says. “I thought about calling it Typhoon and was looking through the ‘ts’ when I came across Twitter.”

There were no Australian businesses or websites using the name, so Boyce went ahead and registered it. But 12,000km away, Jack Dorsey was in an all-day brainstorming session with a group of developers and tech entrepreneurs. He was working with a company called Odeo, which specialised in podcasts, and suggested the idea of a service enabling users to send short messages to a small group of people. They called it “twttr”, based on the nomenclature of a short message service technology and at 9.50pm on March 21, 2006, Dorsey sent the first “tweet”. (In a sign the group understood the enormity of what had been created, the 17th tweet ever sent was one of the developers writing: “Oh, this is going to be addictive”).

As the group worked up the prototype for use within Odeo, they also adopted the name Twitter, partly because of its similarity to the “twttr” term, as well as its definition of “a short burst of inconsequential information” and “chirps from birds”, which is exactly the sort of message Dorsey envisioned being sent on the service. His team secured the Twitter.com domain name and by October 2006, launched the first Twitter website to make the software more broadly available.

Boyce continued to work on his website twitter.com.au part time, securing a small contingent of advertisers, unaware that on the other side of the world Twitter.com had secured investors and had become the star software application at the 2007 South by Southwest Interactive conference.

“In early 2009, my mum told me she’d seen a story about a site called Twitter.com on Oprah, and I started to notice traffic to my domain going up,” Boyce says. “I had 20 or 30 customers at the time so I decided to secure Twitter as a trademark so I could protect my business.” But Boyce’s moves to secure the trademark came just a little too late.

“When you file for a trademark there is a three-month period during which time people can object to your claim,” an intellectual property specialist lawyer with the firm Jisrch Sutherland IP, Blair Beven, says. “Twitter.com came along and opposed Jason’s claim for Twitter.com.au and ultimately won on the basis that the names were sufficiently similar so as to lead to confusion.”

Beven pushed back, arguing the company Twitter.com did not have a commercial presence in Australia as tweets could not be bought or sold but in March 2012, IP Australia handed down a judgment rejecting Boyce’s claim.

“Part of the challenge is when people start up a business they register their business and their domain name but don’t think to register a trademark,” Beven says.

“If Boyce had registered the trademark when he launched the business it would be a different scenario.”

Boyce describes the trademark case as time consuming, saying he’d like to put it behind him.

“I’m going to continue to use the Twitter.com.au domain name because that where my business is based,” he says.

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