by Daniel D. Stuhlman
Trademark Violation -- Cease and Desist
Reid Goldsborough in his article, "Dealing with Internet 'Nastygrams'" [Goldsborough, Reid. Teacher Librarian v. 31 no. 1 (October 2003) p. 40] writes about receiving a cease and desist letter telling him to not to use "Electronic Coin Collector's Survival Guide" as the name of his web site. The three page letter from a lawyer claimed that his client wrote a book with a similar title and demanded that the name of the web site be changed.
I received one of those 'nasty' letters on Oct. 22, 2003 via e-mail demanding me to stop violating a trademark. I don't want to mention any of the names, because the Internet makes it very easy to search keywords find potential violations. I'll call the writer of the e-mail to me, Person A and the alleged registered trademark, "MH." Goldsborough does not quote his letter, but I assume the lawyer sent some kind of proof of ownership. Person A just made threatening statements and never sent any kind of proof of ownership. Person A has the same first name as the business in his signature, claims he owns the trademark and is not a lawyer.
How did I get mixed up in this and what is the Jewish library question here? In June 2002 the Association of Jewish Libraries held its annual convention in Denver. They got permission to use a catchy name playing on the moniker "mile high" associated with the city. I am the editor of the Newsletter of the Judaica Library Network of Metropolitan Chicago. The national convention chairperson wrote an article about the convention and it was published in the Fall 2002 issue. She used this catchy convention name in her title of her article. Person A wanted me to remove this mark.
At first I was going to write him a nasty return letter, but something told me to investigate. I contacted the author of the article. She knew that "MH" was a mark owned by someone. The convention had obtained the rights to use the mark. She consulted her husband, who is a lawyer for a large food company and his specialty is trademark violations. Her husband gave her the legalize to write to Person A. She wrote to Person A, telling him that he had no legal grounds for his claim. I consulted two of my lawyer friends. They said Person A was wrong and I should not even respond to him.
I was still curious about the legalities of copyright. Many years ago I made a library exhibit on early copyright protection for Hebrew books. Haskamot (rabbinic approvals and approbations) were written by prominent rabbis or colleagues approving of the legal opinions published in the book. In the books of the 15th, 16th, and 17th centuries the government had few or no copyright laws. The haskamah told the readers not to copy this work. Sometimes they gave a period (between 5 and 25 years) and sometimes threatened excommunication if the work was copied without permission.
United States Code Title 17 covers copyright. Copyright covers tangible works including: literary, musical (including any accompanying words), dramatic (including any accompanying music), pictorial, graphic, sculptural works; motion pictures, sound recordings, and architectural works. Copyright protection does not extend to any idea, procedure, titles, words or systems.
US copyrights are administered by the Library of Congress. Trademarks are registered by the United States Patent and Trademark Office (USPTO).
Trademarks and service marks are intangible assets. They represent what makes a company unique. While the blue IBM and Coke bottle are widely recognized trademarks and corporate symbols, any company of any size can create a corporate symbol. Large companies have departments dedicated to protecting the corporate intangible assets. A trademark is a word, phrase, symbol, design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods and products of one party from those of others. A service mark identifies and distinguishes the source of a service rather than a product. A company that does business across state lines may register there trademark with USPTO. Companies not engaged in interstate commerce may register with the county or state. The symbols TM and SM may be used by companies to alert the public to a claim of protection. By themselves they do not grant any legal rights. The federal registration symbol "®" may be used only after the USPTO actually registers a mark, and not while an application is pending.
Copyright and trademark violations are not criminal unless it is systematic and covered by other laws. In order to prove a violation the company must prove a loss, damage, or confusion in the public's eye from the accused party. If a company used a well advertised company symbol without permission, this would be easier to prove than use of the symbol of a small company. An example of confusion is: if I used "Sears Knowledge Management" as my company name, the Sears company would be correct in a claim that I was violating their rights. Even though Sears does not offer knowledge management services, the public could be confused and believe that my company was affiliated with Sears. If I had a trademark Sefer-man Books on my products, a company that sold Safer-Man security products would not be a violation because the products would not be confused.
I checked the registry of trademarks and found "MH." It is not a trademark; it is a service mark. At the time of the AJL convention the application was pending. The company that had the mark sold Judaica books, sound recording, and gift items from a store and a web site. "MH" was not registered to the Person A. Person A was not the name or the lawyer on the application.
Confident that I did nothing wrong I followed the advice given to me and did not correspond with Person A. The author did send messages to Person A. She sent a message saying that Judaica dealers and librarians should work together to promote Jewish learning. After many days of exchanging e-mail, she concluded that Person A was meshugah and we should just ignore him. She asked me to remove the "MH" from the index and the title to her article. This change took less time than all the research, correspondence or discussion of the event. What could have been a positive relationship turned to a bitter memory of someone who wasted my time. Person A had no legal right to ask me to do anything about the "MH." He never told me his last name, never showed any proof that he had the legal right to ask me to remove the "MH," never gave me a suggested remedy, and never followed the intent or letter of the law.
Luckily I was able to use the research in the copyright and trademark law in the class I
was teaching. It was just coincidental that the topic I had assigned for the week's discussion
concerned copyright and ethics in the on-line retrieval business. I now understand why the
periodical Information Outlook gave me a release form to sign that included a warrant that
the author was responsible for any possible copyright or other legal violations.
©2003 by Daniel D. Stuhlman. All rights reserved.
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