To bring attention to a legal problem a friend of mine is having I decided to blog in order for those of you out there with some legal-understanding to remark on the following email conversation and letter.
http://alpha.memetic.org/~adama/observer-tm.txt
http://alpha.memetic.org/~adama/observer-tm.pdf
I’m asking mostly for clarification and advice here, as we see it; as the company didn’t own a registered trademark in the EU and they then decided to pursue that AFTER they’d already threatened Adam. I believe all their complaints to be invalid as they’re pursuing trademarks after threats have already been made. I also believe this makes their trademark invalid as it was pursued purely for the purposes of litigation.
Thoughts, advice and all comments welcome 
Contact the SFLC?
But in mail 2, Adam already states that he will rename the product?
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>Based on the last point alone, I’m going to rename ObserverNMS over the next few weeks, once I think of an appropriately awesome name.
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So umm, I don’t know why they haven’t mailed him back “Thanks for understanding”.
As a side note, you might want to remove or obfuscate the e-mail addresses.
We later decided not to rename, as doing so would cause way too much hassle, especially as they had no claim to the trademark in the EU. (a CTM request by them had been denied by the EU at that point).
We thought that any effort we put into changing the name of the project (we have a lot of people who track SVN, so coordinating changing that would be a bit of nightmare) would be better spent on actual coding…!
As Hylke suggests, contacting SFLC is likely your best bet:
http://www.softwarefreedom.org/about/contact/
has the contact details. They will provide legal advice from Real Lawyers (TM).
You need a new name.
adama is up the creek with no paddle, having signed a written agreement of Mon, 09 Nov 2009 stating “Based on the last point alone, I’m going to rename ObserverNMS over the next few weeks, once I think of an appropriately awesome name” there is very little legal support for the subsequent “We later decided not to rename, as doing so would cause way too much hassle”. They now do hold trademark and you (I presume) do not have the funds for a legal contest.
Tough luck, and a warning to get legal advice before responding to legal situations. If you must respond (which is rarely the case, whatever impression of urgency you feel), then send a holding “we thank you and are reviewing”.
Ohshi,
an email is not a contract. The phrase you mention could be understood even as an ironic one.
On the other hand, “Observer” is a too generic name to even be registered in EU without a logo and a specific scope to apply that trademark to.
Take into account that in EU legislation, common words can not even be used as a trademark.
That said, in the case a trademark could be registered with that name, they can only require you to rename your software if: a) both names (trademarks) are on the same topic (in this case software) and b) on the same type of product (so both products compete against each other and share the same target market) so a misleading could occur. And even in that case, the name they chose is too generic to even win their allegations in a court.
May the force be with you and good luck.
Kraptor.
adama,
Did you had taken the name before they registered their own?
If you can prove that you used the name before, you don’t even have to worry about changing the name in some EU countries (and maybe they are who are infringing your “trademark”).
In some countries in the EU, you don’t even have to apply for a trademark (although is desirable), fill a patent or register an invention to be protected by intellectual property rights (like here in Spain): you only have to have a way to prove that you used that name or invented something before.
Here in Spain, to avoid taxes in filling patents (they are too expensive for many people) is common practice to autosend yourself a certified burofax (that has legal value and a description of the content) with the appropriate content so you can protect yourself in court.
Well, and I want to say that I am not a lawyer either.
We used “Project Observer” from 2006, and “ObserverNMS” from about 2008.
I originally planned to change the name because a UK company owned the mark, but it seems defunct (they didn’t contest Network Instruments’ CTM registration this time), so there was little point. Also, the email specified without prejudice, so i wasn’t making an agreement.
adam.
kraptor, no, of course it is not a contract. It is (as I stated) a written agreement and carries substantial weight – the other party could claim to have acted (e.g. invested in the correction of their EU trademark) on the basis of it.
The issue of it being a common word has already been settled if, as the other party claims, they have a valid registration.
The denial that Memetic is an entity is also invalid, given that “entity” is according to a legal definition and not any other definition adama might choose.
In the final reckoning, the other party appears to have the determination to litigate. The only options open are a) to change the name or b) pay for professional legal representation.
@Adam
One thing I can say is you shouldn’t be soliciting advice on the web or responding to entities who are in threat of taking legal action against you. A couple of times you have implied that you may have thought you were in the wrong and were going to change your projects name. Those statements can be used against you even if they are taken out of context.
As part of the ethos of the Open Source/Free Software community it is hard not to be open and transparent but having been part of the GNOME Foundation Board, a legal non-profit entity with legal responsibilities, I quickly learned that there are just some things that have to be handled confidentially.
As others have noted, get advice from a Lawyer – the SFLC being the logical choice. They will tell you what the best course of action is and advise you on what you can safely make public without compromising your case.
Actually, none of those alledgedly helpful organisations (EFF, SFLC, FSFE) have bothered to reply to my emails (with the exception of the EFF, who told me to go to SFLC, who ignored me), neither this time nor the first time was contacted by them.
It’s also notable that until a May of this year they didn’t really have any software which overlapped with us, they made Traffic Analysis software. They didn’t start doing actual infrastructure monitoring until this year.
I also still don’t see why they insist on trying to address things to “memetic”. It literally is nothing. It’s like addressing something to hotmail. I am especially impressed by their persistent belief that they should be threatening an innocent domain name.
My point above means that I think they made the initial threat based on the fact that they were working on a bit of software which overlapped with us, but were too stupid to check if they actually owned the trademark in europe or not.
I will give what little advice I have…
…ignore them until (IF) they start litigation.
I run a website that has been threatened with legal action 16 times in the last year*.
Odds are, they are not going to fight you. The tone of their letter suggestions they are actually trying to avoid litigation as the time/cost/risk isn’t worth it.
I’ve gotten similar PDFs stuffed in my mailbox, along with a physical letter boutique lawyer who printed out the offending webpage, which didn’t print very well, but he didn’t seem to mind…
Boutique lawyers are pretty harmless — at most they will send you a poorly worded (but sometimes nasty) cease and desist. They do not want to fight you; they want to intimidate you so that they can make some easy ($$$) from the person paying them to write the letter.
Alternatively, if you feel like a jerk and you’re in the right, you can respond casually (but carefully) to the boutique lawyer. They are not interested in wasting their time, so they will not go beyond writing stupid letters.
* Mostly for “defamation” and “libel.” It’s a UGC-powered site. Go figure.