This reminds me of a story Mad Magazine's Dick DeBartolo likes to tell.
He did a 'The Empire Strikes Back' Mad Magazine edition in 1980. George Lucas sent him a personal written letter telling him how much he enjoyed the issue.
A little bit later, Lucasfilm's legal department also sent Dick a threatening legal letter informing him that Mad Magazine was infringing on 'The Empire Strikes Back' copyright with the issue they had released.
Dick opened his desk drawer and took out George Lucas' personal letter praising the issue, made a copy of it, and mailed it back to Lucasfilm legal.
The Empire Strikes Out - I actually had that issue when I was a kid. I loved Mad but throw in Star Wars and I cried like a baby until my mom bought it for me!
Back in the day, a C&D was a private affair. As a lawyer, you would give someone the big blast and, right or wrong, you could not really embarrass your client because you were basically writing to an audience of one. Today, if you screw up on the law or are tone-deaf in how you say things, you and particularly your client will find yourselves on public display as potential objects of ridicule. That is what happened here.
Writing a good C&D is an art and it is amazing how much more effective something can be if it communicates truly and well without taking on a needlessly stiff and formal tone. Because, in the end, there is always a purpose behind these things. Trademarks are intended to protect brand origin and if someone who is not the brand owner makes misleading use of a mark to palm off the phony for the real, well, people can understand that and even sympathize with the plight of anyone who has felt ripped off in that way. The art lies in being able to make the legal points without sounding like a bully or an ass. It can be and is done every day when people who are truly infringers do things wrong and find themselves getting slammed. But those C&Ds tend not to find their way into public view.
Here, the C&D was absurdly wrong on the law and tone deaf to boot. Kudos to the IMAX and Ars execs for finding a way to handle the thing in the end as a class act and not as a low-brow fight. Speaking even as a lawyer, it is really nice to see.
Well, colour me surprised. This is the first c&d I have come across that actually improves my opinion of the entity releasing it. Thank you for posting this.
It really is excellent. I have to wonder why they aren't all like this. It costs no more to write a nice letter like this one than a mean one as is the standard, and surely they'd realize this approach gets better results!
Some of the better lawyers do work like this, when possible. This is not the only example I've seen, though I can't seem to find easy examples offhand as it's been a while since I saw one like this.
The sad thing is that a lot of people demand an aggressive lawyer and some even brand themselves this way, especially on TV ("we'll _fight_ for you!") so you end up with lots of "attack dog" lawyers, sadly.
A lot of engineers write needlessly aggressively too. Our own Linus Torvalds is famous for it. I too am guilty of this from time to time. It's not a problem unique to lawyers -- humans like to display their power, real or perceived, to "enemies," and it takes a conscious effort to overcome that tendency.
I have to agree with this. I used to be overly aggressive (I still have a tendency towards this state of being), but I've found its completely counter productive. I recently had a major service completely stop working, and I couldn't get hold of the remote development team to fix it.
I had my manager escalate to half the world, but we only did it to get their attention as it literally stopped the Australian side of the business cold - it was an existential threat to our business, and I wasn't about to let it happen. However, once the development team started working on the issue (with upper management on their case), I deliberately ratcheted down the pressure.
I did this by stopping all emails from being cc'ed to managers, and I acknowledged that the team working on the project were under pressure but that my only goal was to get a fix and frankly I wasn't interested in blame, only a result. When I took out the managers from the email I also told the devs that I appreciated their work, and from this point I'd work with them cooperatively, and that I would give them space to deal with the problem without constant distractions from managers asking for updates.
The dev team worked on the issue and fixed it a few hours before the start of the business day and I verified the fix. Then I sent an email to their team acknowledging the fix, and the effort they had put into it - only at this point I copied all the orginal managers to the email.
Yesterday I discovered the dev team had done a review of every case I'd ever opened to them, found some additional problems which they fixed without me asking, and then ensured all open cases got a status update and were being actively worked on.
You capture more flies with honey than you do with vinegar. And I felt pretty good!
I agree it's excellent, but I don't know how you can say
>It costs no more to write a nice letter like this one than a mean one as is the standard
when the letter includes a literal offer to transfer cash to its recipient to cover their redesign costs. So yes, it does cost more than any other type of letter :)
> Any reference to their brand is not a trademark issue.
Well, no, this is not true. Someone at a theater who uses the IMAX brand but does not have IMAX technology (maybe they use some no-name or in-house big screen technology) could do so by referencing the brand (ie. IMAX wording, IMAX logo, etc) in which case it'd be a trademark infringement. They'd be tying the IMAX brand to a non-IMAX screen in what I assume would be an unauthorized manner (I highly doubt IMAX would authorize its use).
Not all references to their brand are trademark issues but there are certain cases where references to the brand are trademark issues.
Or something between the two. I find Ars claim "The single reference to IMAX in the story..." a little disingenuous; the title of the article and even the URL slug includes the reference to IMAX.
Not that IMAX's response was justified, and I applaud them for backing down, but if Ars is going to be so indignant, they should at least be more accurate.
Ars has largely lost its way over the last year. There's been a strategic change behind the scenes from their management. Their articles (which used to be excellent, and a few still are) are now usually tabloid fodder. The previous focus on SHTEAM (science, history, technology, engineering arts and mathematics) is all but gone - instead, replaced with more and more click-bait and trashy headlines.
If there's something meaningful in this article, it's lost on me.
Or the stream of articles of how someone recorded someone else doing something. 18 months ago, Ars was only interested in history, engineering and the arts. Now it's mostly tabloid.
>Any reference to their brand is not a trademark issue
True, but I can kind of see IMAX's point. In the context of the original use IMAX was used as a generic name for a very Large, high quality display. They don't want to become Kleenex or Xerox so they need to curtail those kinds of uses or they lose their mark.
1. The subject of the Ars interview that started all of this didn't use IMAX as a "generic name", he likened the experience of using SteamVR to that of having an IMAX screen in your home.
2. IMAX has already apologized and acknowledged that they didn't have a valid argument after all.
2. IMAX has apologized to Ars for giving them a hard time for quoting it. It wouldn't surprise me n the least if they seperately sent a letter to Steam saying 'please stop saying that, even though you meant well.'
No, it is not. Please see Nominative Use (alt: "Nominative Fair Use"), which an affirmative defense that basically boils down to a party being directly allowed to make a competitive comparison between their product/service and another trademarked product/service. This looks like about as textbook a case as it gets too. First, here is the quote:
"It’s like saying, 'I have an IMAX theater in my house,'" he told Machkovech. "It’s so much better that we can get away with a cumbersome setup."
To satisfy Nominative Use:
- Only the minimum amount of the mark necessary can be used, which is certainly the case here, it's just the plain text mark "IMAX" and not the special logo or font or whatever.
- Can't suggest any sponsorship. Also satisfied here, his comparison in no way suggests that IMAX Corporation endorses SteamVR.
- The product/service being compared has to be uniquely identified by the trademark, which is definitely the case here ("IMAX" names a unique technology/experience).
A trademark is for preventing consumer confusion around a specific product/service, not to control all speech, opinions, and competition regarding said product/service. Genericization is an entirely different process. He's not using "IMAX" to refer to VR in general (or at all), he's saying "My SteamVR product is competitive with/superior to the IMAX(TM) Experience" which is entirely permissible and indeed critical for a functioning market. IMAX Corp could of course argue that no, "SteamVR sux IMAX rox" without infringing on his trademark either.
I don't believe this is protected by trademark law. Kleenex cannot sue you because you used "kleenex" to refer to a tissue, unless you are selling the tissues.
That's the point. If your mark becomes generic it weakens it in legal terms, and makes it much harder to recover damages or register new derivative trademarks. From a trademark owner's point of view, having your trademark go generic is extremely undesirable because it erodes the mark's economic value, and it's the job of the lawyers to put their client's interests above all other considerations like short-term popularity on the Internet.
I understand weakening of a mark, but nowhere in trademark law does it say "you can sue over uses of your mark that threaten to make it generic". The law only says something like "if people use your mark to sell their product and you do not sue, then you might lose your mark".
Just because someone is articulating someone else's perspective on an issue, doesn't mean that they're excusing their actions or sympathizing with them. Lawyers can get itchy trigger fingers over the Kleenexing of brand names, and understanding why that is can be enlightening. I don't think the person you're responding to was saying that the IMAX lawyers were right all along and Ars was wrong, and I don't think the numerous other people in this thread that have gotten downvoted to the bottom of the Marianas Trench for saying similar things intended their comments to be taken that way either. There is nothing evil about trying to understand the reasoning of people you disagree with. I seriously question the intellectual honesty of the people who did the downvoting though, they should be ashamed of themselves no matter where they stand on the issue.
It's not so much the lawyers but the law. The law says that for trademarks, you have to make an effort to defend it or else you lose it. The degree to which making an effort is necessary is not entirely clear, so they have to make a paper trail to that end, even if it means being aggressive and then apologizing afterwards.
No no no. There is no point of the law that is so unclear as to make anyone think a reference to a traemanrk in a 3rd party quote in a piece of journalism is infringement.
This was either stupidity or laziness. Probably both.
I think dnautics was responding to the general claim "I'm left with the impression that in many instances lawyers only get in the way." and may not have been commenting on this specific instance.
There's selection bias at play here - how often have you heard someone gossipping about a reasonable legal demand politely offered, which they complied with? Makes for a dull read.
The relevant legislation is codified in 15 U.S. Code § 1125 (c), which states:
Subject to the principles of equity, the owner of a famous mark that is
distinctive, inherently or through acquired distinctiveness, shall be
entitled to an injunction against another person who, at any time after
the owner’s mark has become famous, commences use of a mark or trade name
in commerce that is likely to cause dilution by blurring or dilution by
tarnishment of the famous mark, regardless of the presence or absence of
actual or likely confusion, of competition, or of actual economic injury.
Note that it says "commences use of a mark or trade name in commerce" - use of the trademark in an article that cites it in a quote, or even uses it colloquially, is not going to apply.
The lawyer who sent the cease and desist letter fundamentally misunderstood the law, and frankly I'd be concerned they were giving me incorrect counsel. A lawyer who holds such a fundamental misunderstanding of trademark law is, in my mind, a material risk to any business who needs to protect their trademark, and I'd be getting rid of them as soon as possible. I'm not even talking about the PR blunder here: I'm talking about the fact that they are incompetent, and you never want incompetent legal advise.
Could be. Still, the original letter appeared to come directly from a lawyer with an @imax.com email address, and she holds the title of Chief Administrative Officer and Corporate Secretary:
Should CEO come out and apologize? What do people recommend? If I were the boss, and found my company's action took the wrong way, would I, the CEO, not get involved in the public apology?
This makes one wonder if its a bot sending out these IMAX letters/flagging things for IMAX to send letters to and their lawyer just blindly sends them out without much thought.
It's absolutely automated. Whole companies specialize in it (Cyveillance is one - look them up) and routinely patrol the web looking for any use of trademarks and then automatically sending out threats.
I worked on a site selling second-hand goods and there were around a dozen robots patrolling the site every day, completely ignoring the robots.txt (but fetching it in order to specifically look at disallowed links first). They homed in on any trademarks and kept fetching the pages repeatedly.
They became such a bandwidth hog that I had to block their IPs (whole CIDR blocks) - if you blocked the user agent, they immediately re-fetch with a faked IE or Mozilla UA and then used that to trawl the site.
Once they have their 'evidence' of the mark use, they would post (regular snail mail) automated threats with the offending web pages printed and the TM terms highlighted. Typically demanded money (but not always) plus a promise never to use the TM ever again and destroy all computer records containing the TM.
Thankfully the shop owners just ignored them as, like the article points out, it's perfectly legitimate to use a trademark in context. Besides in the country concerned it was a trading description offence to incorrectly describe the goods (fines and loss of license to trade in second hand goods). (i.e. if it is a genuine Gucci handbag, you describe it as that but if it is a fake, you must not mention Gucci. Enforcement officers checked regularly that the rules were followed - surprisingly logical and sensible and trumps any nonsense from an automated TM enforcement bot).
Is there really a bot smart enough to scan an article, then not only complain about the direct mention of IMAX (which is easy enough), but also be able to connect that mention of IMAX with a virtual reality system? I find that unlikely, unless the IMAX people had a specialized bot written just for them.
I'd certainly believe that an automated system found the article in the first place, but my instinct is that a human actually sent the letter.
I'd say they (or an outside company they contract with, more likely) probably have a bot that flags articles, but it's ultimately reviewed by a human. I'm sure it is possible though; the letter was completely generic and mentioned nothing specific about the article besides its title and author.
I worked on a site selling second-hand goods and there were around a dozen robots patrolling the site every day, completely ignoring the robots.txt (but fetching it in order to specifically look at disallowed links first). They homed in on any trademarks and kept fetching the pages repeatedly.
Sounds like exceeding authorized access to me. That's grounds for jailarity, nowadays.
So is selling counterfeit goods, so I'd guess they figure it's mutually-assured-destruction. And of course it's a lot easier to prove that someone is selling counterfeit goods from your brand than for them to prove that you intentionally wrote a web crawler to exceed unauthorized access. And IIRC it's considered legal to exceed unauthorized access in order to report a crime (I think that's been the case a few times with people who've hacked into computers and then reported child porn they've found to the Feds, which is kinda moral hazard IMO because it'd be very easy for a hacker to frame someone that way).
robots.txt files are not mechanisms for authorizing access; they are guidelines designed to instruct user-agents on relevant resources. They essentially say to the user-agent "the content marked as 'disallow' should not be crawled for indexing purposes for unspecified reasons"
Adhering to a robots.txt file is not mandatory, though it does make you a good netizen/curries favour with server admins.
People have actually gotten into trouble for accessing subdirectories which aren't accessible via links from the site's index page. But I'm not sure if that extends to robots.txt, at least as it pertains to stuff which is intended for public consumption. Otherwise people who host sites containing illegal content would just put the entire site in robots.txt.
There is no possible way that somebody actually sends out nastygrams to everyone who says "IMAX" on the Web, or even "Gucci" for that matter — otherwise HN would be getting threats any day now, since I just used both. More likely your site was targeted because it looked like a potential outlet for counterfeits or something.
Yet another reason not to listen to the lawyers who like to make fights out of issues they don't understand. Companies need to protect their trademarks, and they need lawyers who know when their trademarks are legitimately under threat.
But the lawyers cannot really know, because that becomes up to a judge later on. There is no clear algorithmic formula to decide if they were sufficiently defensive in the eyes of the law. They have to make a best effort at defending the trademark, so in general the best strategy is to err on the side of overagression and apology. If someone says, hey, you were lax in defending your trademark, down the line, they can point and say, nu-uh, we we were so aggressive a C-level officer had to issue an apology!
I think IMAX achieved a counter-effect of people actually realizing that a VR headset would have a widescreen field of view larger than IMAX could ever have. It's only a matter of time until the big screen, highly immersive theater experience will not be seen as an IMAX.
This seems like a possibly appropriate, but almost certainly non-constructive, response to the original demand, but useless in this thread; I have downvoted it. Granted that they made a mistake in their original aggression, this seems like the best possible next step to take.
He did a 'The Empire Strikes Back' Mad Magazine edition in 1980. George Lucas sent him a personal written letter telling him how much he enjoyed the issue.
A little bit later, Lucasfilm's legal department also sent Dick a threatening legal letter informing him that Mad Magazine was infringing on 'The Empire Strikes Back' copyright with the issue they had released.
Dick opened his desk drawer and took out George Lucas' personal letter praising the issue, made a copy of it, and mailed it back to Lucasfilm legal.
He never heard from them again.