Overly agressive protection of slogan?

[Ed Hansberry]

<a href="http://www.sfgate.com/cgi-bin/article.cgi?file=/chronicle/archive/2002/03/29/BU173196.DTL">http://www.sfgate.com/cgi-bin/article.cgi?file=/chronicle/archive/2002/03/29/BU173196.DTL</a><br /><br />I am all for protecting intellectual property, be it code, slogans, logo's or designs. However, sometimes a corporation goes just a <i>little</i> too far in protecting their name, jingle or catch phrase. Palm did it last year when they went after fan sites that dared use the word "palm" in their URL. Once they realized their mistake, they quickly reversed course and welcomed these fan sites to use their name, but not before losing some of the more prominent ones.<br /><br />Obviously, Intel has spent billions of dollars on their "Intel Inside" campaign. "Because of this, Intel argues, the linguistic construction '(Blank) Inside,' whether concerning state-of-the-art technology or a centuries-old spiritual practice, should uniquely belong to the chipmaker. <br /><br /><img src="http://www.sfgate.com/chronicle/pictures/2002/03/29_t/bu_yoga2_t.gif" /><br /><br />Now they have turned their arsenal of attorney's on a group of people in California that is helping prisoners. "Yoga Inside began with gang members in Southern California juvenile-detention facilities. The "inside" refers to incarceration. "But it has a double meaning," Stephens said. "It also refers to taking yoga within you. At no point in time was there a connection to Intel. It never even crossed my mind." <br /><br />Now, if this were some technology or manufacturing company using this slogan, Intel should vigorously defend their property, but this is a little non-profit group actually trying to help make society a better place by aiding in the reformation of gang members in juvenile detention. I'd rather they had "Yoga Inside" versus "Hate Inside." Wouldn't you? Now that Intel has shown they will defend their property, perhaps it is time to back off of this particular case before they experience "Backlash Inside."

[JornadaJ]

Are you kidding me? I can understand is someone was using "(whatever) Inside" with some real resemblance to Intel. But this, this strikes me as some people at Intel having WAY too much time on their hands.

[bandersnatch]

This is a bad sign. I always watch companies for when it looks like the lawyers have started to run the show. The same thing happened with Real when their license agreeements for use of their technology becamse so restrictive, even the developers started to tell them to get lost. Somebody high up at Intel should have looked at this case before it even happened and shot it down. Instead, this could be a firestorm for them.

Sheesh...going after a program to help teach peace to inmates? Baaaaaad move.

[EllenBeeman]

Not the first time this sort of thing has happened with Intel. Samsonite did a very clever "Samsonite Outside" ad campaign a few years ago, and got into legal difficulties with Intel over it.

---Ell

[isrjt]

pathetic

[Steve Bush]

So, are you guys just as annoyed when Microsoft goes after site owners with Microsoft in their URLs to make them change? Or how about Microsoft going after the makers of Lindows? Does that annoy you as a cheap legal move?

[James Bond]

Or how about Microsoft going after the makers of Lindows? Does that annoy you as a cheap legal move?


Lindows is a non-word that sounds like Windows, an established product in the same line of business. Ever seen fake brands (sold on NYC's streets and 3rd world countries) like Reebak, Ann Tylor, Panasoanic? Same with Lindows. But Yoga Inside versus Intel Inside? Absurd.

[Steve Bush]

And Windows came along after MIT's X Windows, which is in the same line of business. True? Also, it does not necessarily have to be in the same line of business. "Toys R Us" has won every "R Us" trademark case they've filed, regardless of the line of business that the company was in.

[Jason Dunn]

So, are you guys just as annoyed when Microsoft goes after site owners with Microsoft in their URLs to make them change? Or how about Microsoft going after the makers of Lindows? Does that annoy you as a cheap legal move?


I don't know what Microsoft does with companies that have Windows in the name - I know that I had to "license" windowsce.kensai.com from them, but it was just me signing a document - zero cost. I have mixed feelings about it. On one hand, I don't like companies trying to rule with an iron fist over any aspect of the Internet. On the other hand, I know they have to protect their trademarks. If they did what Palm did - "Change your name or we'll sue you" than I disagree very strongly. If they did a licensing thing, like they did with me, then I don't see a problem with it. A lot has to do with their approach and attitude.

The Lindows thing is a little different - it's a commercial product I believe - but ultimately Microsoft gave them far more free publicity with the lawsuit than it they had just ignored them, and they'd fade into obscurity like most things Linux. :roll:

As for this Intel thing: Intel is going to rue the day they did this. They're going to get a big publicity black eye over this. One more reason why I prefer AMD.

[Steve Bush]

Jason,

Palm's email to the website owners said that they must EITHER change their URL (to palmos******.com, for example) or license the name, just as Microsoft did with you and Chris DeHerrera. But of course you guys will always twist it around to insinuate that what Palm did was EVIL and what Microsoft did (which was the exact same thing) was not. Try starting a website with "Microsoft" in the URL and see if you don't get a letter from Microsoft's legal department.

Also, you do the same thing on the "Intel Inside" incident. In this case, Intel is BAD to do this but Microsoft going after Lindows (after Microsoft "borrowed" Windows from MIT's X Windows) is justisfied.

It's one thing to be "Microsoft fans" but it's another thing to lack common sense.

BTW, it should be spelled "aggressive" not "agressive."

[Jason Dunn]

I suppose I should have know this was a set-up eh Steve? :evil:


Palm's email to the website owners said that they must EITHER change their URL (to palmos******.com, for example) or license the name


I wasn't aware they had the option to license it. Changing an URL is a very big deal when people are used to coming to your site for something. Did they offer the option to license the palmwhatever.com after the fact? I'm just wondering why so many Palm people I know (many were at Mobius 2001) changed their URLs to something completely different if it were as simple as you say?


Also, you do the same thing on the "Intel Inside" incident. In this case, Intel is BAD to do this but Microsoft going after Lindows (after Microsoft "borrowed" Windows from MIT's X Windows) is justisfied.


You seemed to have mis-read what I wrote, so I'll try again. Intel is persecuting a non-profit group that has NOTHING to do with computers. Microsoft is going after a company who's releasing a commercial Linux Windows emulator. Like I said, if I were Microsoft I would have just ignored them, but I can see more logic in Microsoft's move than Intel's.

[Chubbergott]

Hmmmmm, I can see how people would confuse Windows with Lindows. I mean, c'mon, they sound so alike!

I tried baking some bread with flower the other day.... all I got was crushed petals in the oven! Just nobody buy your wives any flour on their birthday.... I know! Easy mistake to make! But it won't go down well.




Hehe.... and the comment about all things Linux fading to obscurity? Certainly explains a few things :roll:


PS. Someone had better point microsoft to http://www.window-masters.co.uk and http://www.replacementwindows.info because someone could be needing to upgrade their OS and and up with unwanted Double Glazing. Now that would be a pane (sorry, pain).

[Duncan]

This is all really a matter of simple common sense.

1) Intel is a trademark - 'Inside' is a description. If Intel want to have 'Intel Inside' registered as a trademark - fine - but it doesn't take away from the fact that 'Inside' is descriptive.

2) Microsoft is a trademark. 'Microsoft Office' is also a trademark - but 'Office' is descriptive - not a trademark of itself - thus we can have 'WordPerfect Office' etc. MIT may well have had a trademark 'X Windows' - but the 'Windows' part is purely descriptive - as it is in the trademark 'Microsoft Windows'. Indeed - isn't there a GUI for Linux that is 'Something Windows'? MIT would not have had a case for claiming 'Windows' as a trademark.

3) Bearing in mind the above - MS has no case against 'Lindows' unless they can prove that they are deliberately trying to confuse people (very unlikely) - as would be the case against 'Reebak' et al.

Toys R Us can claim that no part of their name is purely descriptive and that anyone calling themselves 'Something R Us' is very likely to be trying to claim association.

Windows CE is a trademark when it has the 'CE' added.

'Palm' is a trademark because it is not purely descriptive (evocative yes - descriptive - no). That is not to excuse what they did - but it was their right.

Having a website with 'Windowsce' in it - implies a site ABOUT Windows CE. Provided that site makes it clear they are not official MS has no cause to worry (indeed - they seem to realise it is perfectly heathy). Getting someone to sign to sue the name is, again, common sense - a very poor or insulting site could harm MS. They don't look for sycophancy BUT they would be daft not to cut out the openly agressive!

Having a site with 'Microsoft' in it's URL implies a site sponsored by Microsoft. Not something I could ever see MS agreeing to! With Palm it was different - 'Palm' is simultaneously the company, the hardware and the OS...

Admittedly I'm speaking only in terms of the UK trademark law here - for the US it may be different. Plus there are always exceptions - as McDonalds have found when pursuing certain Scottish businesses... and it can be argued that 'Windows' when used alone is likely to be associated, by the greater majority of people, with MS Windows - thus other companies need to be very careful to add their name to the front of 'Windows' to avoid possible trademark infringement by default. This is not uncommon - Snoopsoft Dashboard, for example are always that (and never just Dashboard) becasue other companies use the term Dashboard (descriptively).

Thus - Intel are being very, very stupid. Unless US trademark law is very badly written (I believe that efforts have been made to ensure that Trademark law is similar all over) 'Inside' cannot be a trademark when used in a purely descriptive sense.

Sorry for the long post but I thought some simple legal facts might be in order - quite where Intel's lawyers got their training is anyone's guess...!

[Steve Bush]

Having a site with 'Microsoft' in it's URL implies a site sponsored by Microsoft. Not something I could ever see MS agreeing to! With Palm it was different - 'Palm' is simultaneously the company, the hardware and the OS...
Actually, Palm is the company, Palm Powered is the hardware, and Palm OS is the operating system. So, just like Microsoft is OBLIGATED by U.S. trademark law to defend its name in EVERY instance, so is Palm.

[Duncan]

Hmmm... I did point out that Palm is on solid legal ground (if on morally dodgy) in their actions. You are right to point out the three differences in the use of 'Palm' BUT 'Powered' and 'OS' are both descriptive (or Palm could sue MS for 'Windows Powered'!!). 'Palm' is the active identifier that matters legally. I cannot create an OS called 'Palm 2000' or a piece of hardware called a 'Palm PC' (as MS realised) or created a company called 'Palm Unlimited' without breaching the trademark 'Palm'.

Yes Palm is obligated to protect their trademark (they could have done it in a much better way though). I was merely pointing out that for them it is a slightly different situation. A judge would need to consider whether www.palmisgreat.com is a site trying to pass itself off a part of Palm Inc. (fraud) or is a site about Palm (trademark infringement). Then we have other grey areas - if www.yourpalm.com was about do-it-yourself palmistry and Palm had not specifically copyrighted 'Your Palm' and/or 'yourpalm' - Palm could not claim trademark infringement. Even with the name copyrighted - Palm's case would not be clear cut as in this case 'palm' (lower case) would be purely descriptive - exactly why McDonalds failed to prosecute McDonald's Chip Restaurant (an Aberdeen Chip Restaurant run by a Mr. McDonald!!).

Of course the obligation to defend trademarks is much overused. Intel have no need to pursue 'Yoga Inside'. If another company tried to use the failure to prosecute 'Yoga Inside' against Intel, the simple argument would be that it was obvious that no trademark infringement was intended.

With regard to the fan websites the law does require that Palm and MS do SOMETHING - but a simple request to register would have been ebnough!

[Ed Hansberry]

Thus - Intel are being very, very stupid. Unless US trademark law is very badly written (I believe that efforts have been made to ensure that Trademark law is similar all over) 'Inside' cannot be a trademark when used in a purely descriptive sense.

Sorry for the long post but I thought some simple legal facts might be in order - quite where Intel's lawyers got their training is anyone's guess...!

In "Intel Inside" the word "inside" is part of the slogan and not merely an adjective, and thus you can trade mark it, and that is a fact. Just like any other corporate slogan, like Coke's "The Real Thing" or Nike's "Just Do It." Intel is 100% within their rights to do what they are doing.

I just question why they are doing it. Due to the way our trademark laws are written, you must defend your rights or lose them. Intel has done that. They would be able to back off though without setting a precedent given this is a very small organization, non-profit, and is for the community.

If I am not mistaken, the company that ownes Kleenex lot their trademark on that name because they didn't defend it decades ago. Or maybe it was Lego's, which may be why they are so adamant they are referred to as "Lego Building Blocks" and not just Lego's. :?:

[Duncan]

Ed,

As I said - 'Intel Inside' is a trademark (BTW - technically you don't 'trademark' something - something IS a trademark and can be registered or copyrighted to protect it's status) - 'Inside' is not.

Just as 'Just Do It' is a trademark while 'just', 'do' and 'it' are not. So - I can give my company the trademarks 'I do it' or 'Just do something' without fear of trademark infringement. Indeed - 'The Real Deal' is a trademark - but Coke have never pursued a case against it!!

At no point did I say that you can't have a descriptive term (not adjective - they may be the same thing in grammar - but legally they are different concepts) as part of a trademark - you just can't claim exclusive rights to the use of that term. Mark my words - Intel KNOWS they can't win legally - they also know that the legal system will let anyone with money bully anyone without...

[zylark]

In a room with two lawyers there are at least three opinions

... and none of them make any sense :D

[Duncan]

I can't argue with that!! Thankfully I'm not a lawyer - just someone who, once in a while, deals with them on behalf of others (so I can tell you about trademarks, just don't turn to me for advice if you kill someone :( )

[Rob Alexander]

have 'WordPerfect Office' etc. MIT may well have had a trademark 'X Windows' - but the 'Windows' part is purely descriptive - as it is in the trademark 'Microsoft Windows'. Indeed - isn't there a GUI for Linux that is 'Something Windows'? MIT would not have had a case for claiming 'Windows' as a trademark.


According to an article I just read, 'Windows' is a registered trademark and that is the basis for the Lindows suit. It said that Microsoft was turned down three times for registering the trademark, but then they were finally granted it, though some have wondered how since, as you say, it is descriptive. (If you look on your Windows 2000 or XP box you'll see that both 'Microsoft' and 'Windows' each have a separate (R) symbol, indicating that each is separately registered.)

In denying Microsoft's preliminary injunction to close down the Lindows folks, the judge said that he questions the legitimacy of Microsoft's 'Windows' trademark. Among the things he mentioned were their lack of adequate protection for the word by allowing numerous products and web sites to use "win" and "windows" in their names.

None of this is in any way a decision, just the statement the judge made in saying he would not shut down Lindows without discovery and a full hearing. But it does raise an interesting question in that the 'Windows' trademark may well be lost as a result of Microsoft's persecution of Lindows. That would be wonderful poetic justice since you know that MS isn't really suing because of the trademark, but is just trying to kill the product before it really gets started. How many people might run Linux if it could natively run Windows programs? That's a genuine threat to their monopoly.

Anyway, it certainly does illustrate the need in the American system to vigorously protect a trademark, perhaps even to a ridiculous degree as in this case. If Intel doesn't attempt this, someone could come along later and say that they didn't protect their trademark. If they do this and lose, then the Yoga folks get to use the name, but Intel cannot be accused of failing to protect their trademark. The other side is that consumers are much more vigorous in holding a company accountable for its actions these days, so there's a very fine line they have to walk down. They have to protect their trademark enough to have been seen to be doing so, but not so vigorously as to tick off their customers. Not an easy task!

[Ed Hansberry]

In a room with two lawyers there are at least three opinions

... and none of them make any sense :D


Careful careful... one of the PPCT admin's is a lawyer.... :lol:

[Will T Smith]

This is an excellent case for the ACLU.

This harkens back to the "3-peat" days as if somehow one could patent English. These cases are not new. They are obstructionist techniques used to burn $$$ from potential competitors.

Only an INTENTIONAL and explicit attempt to exploit an established trademark is considered a violation.

[PocketExpert]

This reminds me of Deutsche Telekom, who claimed the colour magenta as their intelectual property. Amazing what companies think of being their property. Btw. they lost the case :lol:

[Chubbergott]

This reminds me of Deutsche Telekom, who claimed the colour magenta as their intelectual property. Amazing what companies think of being their property. Btw. they lost the case :lol:


Indeed. I think it's British Telecom who are trying to lay claim to the hyperlink!

[Stefan]

Just to get this right:
If someone wears legal a sticker '******** inside' on his head, he is probably a Intel manager?

[Duncan]

Rob Alexander,

Yes - I'd forgotten that MS finally got the 'Windows' trademark acknowledged (though if I recall they had to fight tooth and nail to get it!) BUT, if memory serves, they were awarded it on the grounds of association (as I mentioned in an earlier post - if a descriptive term is universally recognised as if it were the full trademark then it can be treated as such...) AND there were some limits (I believe, though I stand to be corrected on this, that others who used 'Windows' prior to the trademark being acknowledged were able to continue to do so). As you so rightly point out though - the award of the trademark is on fairly dodgy grounds - big own goal for MS coming up...?

As I've said before - US law may allow things that could not happen here in the UK, or maybe not...

[Take1]

I gues the 'No Fear' trademark holder can now go after any 'no parking', 'no smoking', 'no loitering' signs? When you hijack a commonly used word in the English language and make it 'yours' in whatever context/market that exists, something is wrong.

[AlGardner]

AMD ("PR department" OG) 1 - 0 Intel