I knew I shouldn't have checked my mail. :)
On Wed, 9 Aug 2000, Faustus von Goethe wrote:
> [Alec Said]
>
> >If you think someone
> >doesn't have a right to trademark a terms, like say Snakemen because it is
> >too generic or Thor because he is a Norse god, use the term and then
> >defend yourself *if* someone is silly enough to attempt to claim you are
> >using their trademark. The nice thing about this is 1) you're likely to
> >win, 2) you're likely to be able to force them to pay your costs &
> >3) you're even likely to be able to win punitive damages for their
> >bringing such a suit against you.
>
> Just an interjection here. Alec all your arguments assume the small company
> has the money, cash flow, and chutzpa to go to court to defend themselves
> against a 40 Billion Dollar a year corporation.
Sure, but if you want to use someone else's trademark you have to be
willing to defend your actions in court. This is true under the current
law and the proposed language doesn't change that fact. Kal was arguing
that the new language required companies to prove someone doesn't hold a
"frivolous" or generic term trademark -- which is completely inaccurate.
That is solely what the portion of my response you quoted above was
referring to. The examples he provided could be brought just as easily
under today's trademark law. If you think someone doesn't have a right to
trademark a term today, your behavior would be exactly the same as under
the proposed language. And you still better be damn well prepared to
defend yourself in court.
> We under the OGL are going to be the smallest shoestring companies in a
> market dominated by a giant. NONE of us will have anything like the cash
> flow to even get close to a court of law against these guys. Something more
> has to be on the line for the GIANT than just a little money for them to not
> dominate the industry.
Which is why people under the OGL who are interested in developing a
product line should be in support of the proposed language. WotC really
doesn't need the language to protect them against abuses by OGL companies;
they sort of have those HASBRO lawyers available. WotC can afford to take
(or just threaten to take) the small guys to court to defend what might be
somewhat uncertain prohibitions on the use of trademarks. The little guys
(that's most of the people on this list who intend to publish under OGL I
assume) can't; especially given the uncertainty of a case. The proposed
language removes that uncertainty so that if some other OGL publisher
attempts to use my, yours or someone else's trademarked product line, the
costs of court action are reduced due to the strengthening of the
trademark holders position. You & Kal keep using the "compatible with
..." mantra as if *only* D&D and maybe D20 are going to be tacked on at
the end. If the OGL has anything beyond extremely limited success, this
is unlikely to be the case. Creating a license that protects these little
guys and doesn't provide protection to WotC would be both difficult and
not in WotC's interest. I'm willing to grant WotC this protection since
they are also making such protection available to me and everyone else
wanting to publish under OGL (and in fact to games that aren't published
under OGL as well).
> Something like a test case on a substantive trademark issue.
>
> The main point that I think Kal is trying (rather bravely) to make is that
> the clause in the OGL will provide another layer of lawsuits before the
> GIANT gets close to a substantive trademark issue - something they might not
> want defined.
Nothing Kal has said indicates anything of the sort to me. If that's what
he's been attempt to say, he's been unsuccessful. Certainly none of his
examples revolve around that issue in any meaningful way.
> Rather than suing under the trademark laws, the GIANT will first try to sue
> for violation of the OGL. In your disussions, you need to maintain
> awareness that (for all of us) any single lawsuit against the GIANT will
> without a doubt put us out of business - win or lose.
I need to maintain such awareness? It's your side of the argument that
hasn't recognized that fact as far as I can tell. The language in the
proposal primarily strengthens the position of trademark holders with
regard to preventing the use of their trademark. It does this for *ALL*
trademark holders, regardless of their size. It does not really expand
when they can bring suit or threaten to bring suit against someone for
using a trademark. The _only_ way it expands the possibility of suit is
as a by-product of strengthening the trademark holders case by removing
need to show dilution or tarnishment. The trademark holder still needs to
show they hold a valid trademark -- which means the "frivolous" type case
that Kal refers to is no more winnable under the OGL than it us under
current law. It is impossible for someone to sue under OGL using the
proposed clause without invoking trademark law at least to the point of
demonstrating they hold a trademark. As the USPTO will tell you, only the
courts have the ability to determine who has a right to use a trademark,
so no one can simply state "I have registered this trademark with the
PTO" and have that be the end of the matter.
> BUT if it is a lawsuit involving a substantive trademark issue (such as
> whether "Works with ..." is OK, then the GIANT might at least think twice
> before pushing the issue to court.
Might, but probably not, since you've already explained that the small
time OGL publisher doesn't stand a chance in court against the GIANT. It
sounds like you want WotC to bring about such a test case. Expecting the
people who have the most to lose in a case to bring a test case is not
extremely productive.
The proposed language does very little to chance the actual realities of
the current situation. The biggest change is in strengthening
restrictions on the advertising use of trademarks (which I thought was the
only matter Faust was arguing about), it doesn't impact the variety of
internal trademark uses (which is what Kal has primarily been posting
about) in any substantial way. As I said, I'm not opposed to the attempt
to limit advertising in this fashion. Most of my posts have been attempts
to clean up what have been misconceptions about what trademarks are and
what they protect (begining with the rather paranoid statements concerning
how the proposal would prevent the use of common words and proper nouns.)
Also trademarks are not the Intellectual Property that they refer to,
which seems be getting confused in some of these posts. They are a means
of identifying that intellectual property, but whether or not you can
legally use someones trademark isn't going to effect whether or not you
can legally use their copyrighted material. Using the TSR "Drow" example,
just because someone might be able to prove that WotC can't use trademark
law to prevent the use of the word "Drow" to refer to elves, does not mean
that their particular concept of "Drow" is available for everyone to use.
Confusing copyright and trademark law is frequently a problem, but they
are entirely separate matters. Or in the other common example, if I try
to claim a trademark on "Snakemen" and am unsuccessful in maintaining that
trademark, that does not make my race of snakemen available for everyone
to use if the material was published within the closed content of an OGL
product.
later,
alec
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