Internetworkers: http://www.ibiblio.org/internetworkers/

["Gina Norman" <gina.norman AT nortelnetworks.com>]

Title: RE: [internetworkers] [Not a joke] AOL is suing me!

To me this looks like a case of AOL-MSN turf war, with Josep as the civilian casualty.  I don't think they'd have been upset if you'd been taking about instant messaging and how cool it was in general, I think where they're torqued is that you're referring to a competitors service (MSN Messenger Service) as Instant Messaging (which AOL has trademarked).

In other words, you're telling people how Scott Facial Tissues are the best Kleenex there is.  The main differences are:

1) "Kleenex" has officially fallen "into the public domain" *because* Kimberly Clarke _didn't_ go after people who were using "kleenex" generically!

2) "Kleenex" is (obviously and, I'd say, arguably) a more "unique" term than Instant Messenger and is/(was at one point) more defendable as "trademarked."

An important thing to remember is that from a legal perspective (correct me if I'm wrong Thomas), a requirement for successfully defending a trademark in court is that you have, in fact, pursued those who were using your trademarked term "incorrectly."  If AOL didn't do this, there'd be no way "Instant Messenger" could survive a trademark challenge.

FWIW, I do think it's ridiculous, and I agree with Dallas that the biggest problem is probably the way the capitalization and the grammar make it seem like you're using "Instant Messenger" as a stand-alone noun, rather than, using something like "instant messaging tool".

My $02, YMMV.

-Gina

Gina Norman
Senior Manager, Global Web Governance
ginanorm AT nortelnetworks.com
919-905-4801 (ESN 355)
http://www.nortelnetworks.com

> -----Original Message-----
> From: Shea Tisdale [mailto:shea AT sheatisdale.com]
> Sent: Thursday, March 20, 2003 10:49 AM
> To: Internetworkers: http://www.ibiblio.org/internetworkers/
> Subject: Re: [internetworkers] [Not a joke] AOL is suing me!
>
>
> I would argue that instant messenger is so common a
> descriptive term for the
> various generic "real-time communication services" that they
> would easily
> lose the trademark if it went to court.
>
> Are you going to change it?
>
> ----- Original Message -----
> From: "Josep L. Guallar-Esteve" <jlguallar AT maduixa.net>
> To: "Internetworkers: http://www.ibiblio.org/internetworkers/"
> <internetworkers AT lists.ibiblio.org>
> Sent: Thursday, March 20, 2003 10:33 AM
> Subject: [internetworkers] [Not a joke] AOL is suing me!
>
>
> > Hi,
> >
> > This is not a joke.
> >
> > AOL are complaining about me using plain descriptive
> English words. First
> I
> > was in outrage. Then, I read again:
> >
> > This is insane, abusing and inmoral. Oh, wait. We are
> talking about AOL
> and
> > Lawyers in the same sentence, so it makes perfect sense.
> >
> > Anyway, I do not want to drop perfect descriptive English
> words to please
> > insane, inmoral and abusing delusions of ownership by a corporation.
> >
> > Next time, what will it be? Someone copyrighting the word "the"?
> >
> > "Dear Sir,
> >
> > Ron & Mor, attys for The THE, inc, informs you that you are
> using their
> > trademarked word "the"(c) (tm)  in your pages. Please
> remove it from your
> > pages or changed it by "(definite article in English goes
> here)" or pay a
> > licensing fee of
> >
> > BK$ 32.12
> > (thiry-two and 12  Bork Dollars)
> >
> > per a usage of 100 "the""(c) (tm) word.
> >
> > Best regards,
> > Ron & Mor, Attys for The THE, inc"
> >
> >
> > ----------  Forwarded Message  ----------
> >
> > Subject: Need your help: AOL whines about trademark on your pages
> > Date: Thursday 20 March 2003 08:31 am
> > From: Paul Jones <pjones AT metalab.unc.edu>
> > To: jlguallar AT maduixa.net
> >
> > ---------- Forwarded message ----------
> > Date: Tue, 11 Mar 2003 11:50:09 -0500 (EST)
> > From: Paul Jones <pjones AT metalab.unc.edu>
> > To: Josep L. Guallar-Esteve <sinner AT metalab.unc.edu>
> > Cc: labratz AT metalab.unc.edu
> > Subject: AOL whines about trademark on your pages
> >
> > We just got a letter from Arent Fox, attys for AOL, telling
> us that your
> > page at http://ibiblio.org/sinner/video/messenger_en.html
> misuses the
> > words "Instant Messenger" their trademark. They are asking that you
> > instead use the generic term "real-time communication
> service" which is to
> > my mind confusing and opaque. I see from your pages that
> you are actually
> > referring to Microsoft Messenger so you would be in compliance and
> > accurate if you simply dropped the "Instant" from the pages.
> > Could you do that? If not, could you drop me a note telling
> me that you
> > plan to protest the claim of AOL to "Instant Messenger" in
> your use of the
> > phrase?
> > Also if you send me a snail-mail address, I will send you a
> copy of the
> > Arent Fox letter.
> >
> >
> ==============================================================
> ============
> >                              Paul Jones
> >                     "Gort! Klaatu barada nikto!"
> > http://www.ibiblio.org/pjones/ at the Site Formerly Known As
> MetaLab.unc.edu
> >   pjones AT ibiblio.org   voice: (919) 962-7600     fax: (919) 962-8071
> >
> ==============================================================
> =============
> >
> > -------------------------------------------------------
> >
> > --
> > http://www.ibiblio.org/sinner/     Linux User # 89976
> > Running on Mandrake Linux 9.0 - Kernel  2.4.19smp  Linux
> Machine # 38068
> >
> >
> > ---
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