It's the real thing
lettersofnote.com
lettersofnote.com
Pretty soon, and without any nefarious intent on my part, my "Sun Computer" Web page ascended above the official "Sun Computer" corporate website in the search engine listings.
Shortly thereafter I received a registered letter from a team of corporate lawyers who threatened to sue me for disregarding Sun's proprietary ownership of the word "Sun". My explanation that there is an astronomical body with that same name, and that my page provided information about said astronomical entity, fell on deaf ears.
For some reason, the corporate lawyers couldn't bring themselves to simply say that my Web page was above theirs in the search rankings and I needed to do something about it. Instead, the correspondence was phrased entirely in threatening legalese, in terms of proprietary trademarks and public deceit. I finally figured out what the problem was, and renamed my page "Solar Computer". Problem solved.
Names matter.
Yes, that's one of the ironies -- Sun Microsystems argued that my use of the phrase "Sun Computer" directly interfered with their legitimate commercial interest. And, based on the search engine rankings, they were right.
That said, names don't matter more than your product. Pick a good name, but remember to put your products first...
Not just names--companies often wind up stuck with lots of things they started with, and there's no reason for it other than inertia.
A well-known counter example, of course, being the company formerly known as Apple Computer, who changed their name after 30 years of being in business.
Point being, Sun would not have been harmed by changing or dropping the 'microsystems' part of the name, which is a silly made-up word that didn't even represent their actual business (software, and physically large servers/workstations). It just never occurred to anyone, or the bureaucracy kept it from happening.
What makes your point much more evident, they should have changed it when everybody stopped using the word.
I suppose in the ruthless calculus of business, maybe you're correct, but there's a lot of things like nostalgia and familiarity etc. A familiar name is not, I think something to be trifled with, even if it "doesn't make sense" when viewed dispassionately...
[My former company/subunit used to be called "XXX Electron Devices" which I thought was so neat and cool, unique even. It was an old company and I imagine the name dated from long ago when people weren't quite sure what to call that newfangled stuff... They later brought in the corporate image consultants who changed it to the more conventional but infinitely more boring "XXX Electronics" instead. Blah.]
I was unable to find the word 'microsystem' in any dictionary; if it was in common use as recently as 30 years ago, it seems unlikely that I would not be able to find any trace of it today. Therefore, I reiterate my assertion that 'microsystem' is a silly word that the people at Sun made up for their company name, until proven otherwise :)
Wikipedia does have an entry for 'microsystem'[1], but it says the term is not generally used in the United States and does not seem to have anything to do with what we're talking about (much more recent category of technology than existed at the time that Sun was founded).
I suspect even in-house legal depts think in terms of billable hours...
Minor quibble. I think you mean "Streisanding", i.e. referring to the Streisand Effect.
I've had it a few times where people who disagreed with something I wrote or did start their statement with "Surely you understand that [you shouldn't do what you did]". No, surely I don't, that's the reason we have this disagreement in the first place.
I believe you will agree that this is just another way of saying, "I believe you will agree that..."
Also I'm confused about the disagreement between your first sentence and your second one. I think you're saying that it's effective but that you loathe it nevertheless.
There are ways to combat it, one of which is to mirror their language back at them. Another is simply to be completely non-reactive emotionally and completely non-compliant.
> We believe you will agree that it is undesirable for our companies to make simultaneous use of "the real thing" in connection with our respective products.
I read that like Coke thought the publisher didn't necessarily realize there was a dual usage of the slogan, and that once they did they would immediately agree with the only obvious conclusion which is that it's bad for business. And if the publisher did previously realize, this is simply pointing out that they were acting in bad faith with respect to Coke and stupidly with respect to themselves.
And of course the publisher's reply was that they weren't competing in the same market and therefore there was no confusion over the slogan. Not sure if it was a trademark, but that's how trademark law works today. In fact Coke is required to defend its trademarks.
In summary, someone who does something you don't like doesn't necessarily do so because they consciously disagree with your position. Hanlon's razor, more or less.
I agree that depending on the circumstances, meta-language about the argument being had is a kind of bullying - "Let's be reasonable about this." - but it also hints as to the weakness of the bully's position.
Today this communication might be delivered via email or some other near instantaneous form of communication which I think it more likely to lead to escalation. It's so easy to respond without thoroughly considering your response. While it certainly isn't prudent to act emotionally with legal matters, that certainly doesn't mean that people don't do it.
I guess I just think it's interesting how technology has in some ways gotten ahead of people in terms of having healthy social interactions with other people.
Can any lawyers confirm?
Was "It's the real thing" trademarked? And furthermore, trademarks are only usually enforced among competitors. Apple Computer can't sue Apple Dry Cleaning for trademark infringement. Well they can, and occasionally do, but it isn't a given that they will win. Usually you have to show damages, and Apple Computer isn't damaged in any way by having a dry cleaner use the name of a popular fruit. Similarly, I don't think Coca-Cola lost anything by having the phrase "it's the real thing" associated with a literary work.
My question for the lawyers: Does a letter like this count as "defending a trademark"? Or would Coca-Cola have had to actually take these publishers to court over it?
Word Mark IT'S THE REAL THING
Owner (REGISTRANT) The Coca-Cola Company CORPORATION DELAWARE ONE COCA COLA PLAZA Atlanta GEORGIA 30313
Registration Date December 7, 2004
Goods and Services IC 032. US 045 046 048. G & S: Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks].
FIRST USE: 19421231. FIRST USE IN COMMERCE: 19421231
If it was up to me, I would allow only for trademarks in synthetic, non-english words. E.g "Soylent" or "Pepsi" or "McBurger". Not for actual english words ("Windows") or phrases.
You should be able to use the phrase outside that context. Of course you might have fun time in court defending that right.
While Coke may be asserting they own the trademark for "It's the Real Thing", they're being a little oblique with the fact that they only have it for soft drinks and not printed publications. So it seems Coke is trying to bully the publisher when the publisher seems to know that they are in a different classification. They are pretty much saying this in a sarcastic way in their reply.
cf: "Lies: and Lying Liars Who Tell Them (A Fair and Balanced look at the right)" http://www.amazon.com/Lies-Lying-Liars-Tell-Them/dp/04522852... - was sued by Fox News because they own "Fair and Balanced." The suit was thrown out, because it's selling a book, not the news.
I suppose a court might find that using it to describe, say, bourbon, would be an infringing use, even though CC does not claim alcoholic beverages. More so if the packaging or flavor was intended to mimic a cola.
But you could market your new line of toilet paper or watches or hippo-hide whips as The Real Thing, and Coke would have no more of a leg to stand on than they did with the book publisher.
It's also appropriate to note that the company claiming the trademark must actually use it reasonably often -- you can't claim "Softer than a cloud" for your waterbeds and then not use it for some number of years. That one will be trickier, though.
One one hand it protects the interest of the registering company, by preventing competitors from benefiting from their marketing.
On the other hand, it protects the public by protecting the public against confusion about the origin of a product or service.
E.g. if Dirt-T-Water Inc. starts selling poor quality unfiltered tap water and market it with "it's the real thing", it'd benefit from Coca Cola's marketing and harm Coca Cola's brand, but the reason for that is that it would capitalize on peoples trust and expectations of the Coca Cola brand by confusing some portion of them into associating the two.
Whether or not the public would be confused is also a key test in most jurisdictions as to whether or not a trademark has been violated.
So unlike many other form of protection for corporate assets, trademark protections - when not overreaching - often very directly aligns with public interests.
I'd actually say that the public is as likely to be misinformed by the owning company's marketing as it would be from the copycat company's in this case. It's not like saying "it's the real thing" makes coca-cola "the real thing", or saying "100% agnus beef" makes whatever BS the sell at McDonalds good to eat.
Sure, there might be some confusion if Dirt-T-Water starts marketing it's stuff with "it's the real thing". But that would be minimal anyway, because the two products would have different logos (by law) and different names (by law).
At best they would benifit subliminally from those buyers that buy their stuff because the slogan reminds them of something.
"Just do it", for example, is extremely recognizable as Nike, whose brand is associated (deservedly or not) with high quality. If you put "Just do it" on a shoe ad, people will assume (reasonably) that it's made by Nike. Without trademark protection, it would be easy for another business to exploit Nike's reputation to pass off shoddy goods.
It wouldn't literally prevent all cases. It would allow for damages to be awarded to victims, paid for by the perpetrators, which would deincentivize manufacturers from attempting to deceive customers. Contract law provides precisely the same protection here as trademark law, except it's better, because damages can be awarded to the people who were actually deceived and potentially harmed. Also, the great side effect is you don't have all the ludicrous results of trademark law, like ownership of letters, words, phrases, shapes, and colors.
Except if you don't have that, or its equivalent, the system can't work.
Whether the mechanism is based on contracts or ownership, the end result is that the only kind of soda which can have that bottle shape and that kind of logo design is the one made by this specific company. Otherwise, it's too confusing, and fraudulent misrepresentation is too easy.
Specific colors, words, shapes, and patterns are how human brains distinguish things. They have to be distinct and recognizable for people to differentiate between different kinds of product, especially when they're different varieties of the same basic thing.
It seems you're getting hung up on specific terms, such as 'own'. That's not how the law works: Broad concepts are whittled down into specific terms of art in each individual branch of the law, which is what has happened to the concept of 'ownership' when applied to trademarks. It's a very different thing from owning a car, but there are certain vague similarities that justify the re-use of the concept.
I'd frankly like to avoid the headache of pursuing damages and just have that dealt with between the companies who want to go to the trouble of trademarking something so I can just buy what I want.
http://en.wikipedia.org/wiki/Laches_(equity)
This is a strong legal basis for abandoned works infact being safely usable. If somebody sleeps on their rights for 10/20/30 etc years, and the waits for a big payday to act, its not equitable and in good faith.
For example, there was once a restaurant named "McDonald's", owned by someone named McDonald. The restaurant existed before there was a McDonald's chain of restaurants, and the restaurant name corresponded with the owner's name. Notwithstanding all that, the corporate giant McDonald's was able to force the owner of the restaurant to change the name on the ground that the original name would mislead the public.
EDIT: I researched this further, and it turns out there have been several "McDonald's" restaurants that came to the attention of the corporate giant -- some legal actions succeeded, some failed:
http://en.wikipedia.org/wiki/McDonald's_legal_cases
Defenses of everyday phrases like "It's the real thing" can only succeed if the plaintiff can show there is a real probability of public confusion or injury to commerce or reputation -- it's not enough to say that the phrase is in wide use. A counterexample is Apple Computer and Apple Music (the latter owned by the Beatles). In this case it was decided that, because they were in different businesses, there was no great likelihood of public confusion.
Until iTunes was released.
That's a bad example because Apple Computer eventually did enter the music business, with itunes, contrary to an earlier court's ruling that they stay out of that industry.
I think they ended up just paying Apple Music a ton of money. So that's basically a case of infringing trademark, but having enough money to pay off the company whose mark you're infringing. As we all know, enough money solves any problem.
I would argue that that makes it a good example -- they eventually crossed the line and the issue had to be revisited. BTW thanks for posting and correcting the example.
> I think they ended up just paying Apple Music a ton of money.
That makes it a perfect example -- originally there was no issue or conflict, but eventually the two entities collided.
> As we all know, enough money solves any problem.
So it seems. I think it's a perfect example of how these things sort themselves out, because over time, it visited both extremes -- not an issue, then very much an issue.
This wasn't a one time thing, by the way. There were a whole bunch of suits between the two companies over the years, I think starting way back in the 70s.
It's interesting how Apple Music was initially the big company in the dispute, and Apple computer the little guy getting pushed around. Watch how over the years, the power dynamic completely reverses itself, until Apple, inc. (no longer Apple Computer) is the one calling the shots.
(Okay, found a link. It's "Apple Corps", not "Apple Music", by the way.)
(http://en.wikipedia.org/wiki/Otorohanga)
> In 1986, the town briefly changed its name to "Harrodsville". This was a protest in support of a restaurateur, Henry Harrod of Palmerston North, who was being forced to change the name of his restaurant following threatening lawsuits from Mohammed Al Fayed, the owner of Harrod's department store in London.
> As a show of solidarity for Henry Harrod and in anticipation of actions against other similar sounding businesses, it was proposed that every business in Otorohanga should change its name to "Harrods". With support of the District Council, Otorohanga temporarily changed the town's name to Harrodsville.
They would then reserve the right to pursue non-licensed infringement of the trademark.