The Legal Battle
[size=9] The Legal Battle
The phone is more important to a business than having an internet presence. Many businesses order special 800 numbers. There is a finite number of 800 numbers available, and an even smaller number available that spell out interesting words. Why aren't businesses taking each other to court over 800 numbers? Because there is no reason for a "Lanham Act" for 800 numbers. Businesses simply choose another 800 number if the one they want is already taken. Everybody with 800 numbers manages to get along with one another without the need for llitigation.
Porsche® feels that if they fail to chase away those who allegedly use their mark in commerce, that they stand to lose protection granted to them by the courts. Although Kleenex® has become a household term for "facial tissue" (and Xerox® for "photocopy") and doesn't get much protection from the courts, it is very unlikely that Porsche® will replace the household term for "car". Using that excuse as a reason to prosecute hundreds of people shows Porsche® lacks a common sense understanding of trademark law, and shows law firms are more than happy to pillage their clients even when nothing will happen to their clients' trademark protection.
As you read the following letters, you may ask yourself why Porsche® didn't send a friendly letter saying, "We've noticed you recently registered a domain name and if you mention Porsche® products, please provide a link to our site along with a disclaimer showing no affiliation". They could also send a slightly stronger letter saying, "We noticed you recently registered a domain name and we will be keeping an eye on you to ensure you don't use our mark for commercial purposes". Of course, the law firm decided the best approach would be to make all kinds of false accusations, demands, and threats.
This is the person from the firm hired by
Porsche® who's resposible for sending the letters.
Jana L France
Winona State University B.S. Paralegal 1981
William Mitchell College of Law J.D. 1990
Photo is a Parody, not to be taken seriously.
Quick links to index into each of the letters:
Letter #1 received from law firm
Response to Letter #1
Letter #2 received from law firm
Response to Letter #2
Letter #3 received from law firm
Response to Letter #3
1st letter from the law firm representing Porsche®
FISH & RICHARDSON P.C.,P.A.
October 29, 2002
3300 Dain Rauscher Plaza
60 South Sixth Street
Minneapolis, Minnesota
55402
Telephone
612 335-5070
Jana L. France
(612) 337-2576
Scream Technologies
P.O.B. 97893
Las Vegas, NV 89193
Re: Trademark Rights of Dr. Ing. h.c. F. Porsche AG
Our Ref.: 11291-978001
Dear Sir or Madam:
It has come to our attention that you recently registered PORSCHEV8.COM as a domain name with Register.com, Inc. We represent Porsche Cars North America, Inc., a wholly owned subsidiary of Dr. Ing. h.c. F. Porsche AG ("Porsche"). Porsche Cars North America, Inc. is the exclusive distributor of PORSCHE® automobiles in the United States and is charged with enforcement of Porsche's trademark rights in the United States. As you are likely aware, Porsche has used its PORSCHE® mark in the United States for decades in connection with its world-famous automobiles and related products. Furthermore, Porsche is the owner of numerous federal trademark registrations for the PORSCHE® mark. Examples of such registrations are enclosed for your reference.
Given Porsche's substantial investment of time, money, and effort in promoting its PORSCHE® mark, and the widespread recognition and acceptance of its products offered under the mark, it is likely that consumers would be confused as to the source of any products or services you were to offer in connection with the PORSCHEV8.COM domain name. In addition, it is likely that consumers would mistakenly believe that Porsche is affiliated with you or your organization, or has sponsored or endoresed your products or services. Therefore, your unauthorized use of PORSCHEV8.COM could constitute a violation of the federal Lanham Act, as well as applicable state unfair competition statutes.
Furthermore, Section 43(d) of the Lanham Act, also known as the Anti-Cybersquatting Consumer Protection Act, makes it unlawful for any person to register, traffic in or use a domain name that is identical or confusingly similar to, or dilutive of another's mark, if such person has a bad faith intent to profit from the other party's mark. If a court were to find that your registration of PORSCHEV8.COM is a violation of Section 43(d) of the Lanham Act, the court could order you to transfer or cancel the domain name. In addition, the court could order you to pay Porsche its damages and attorneys fees, including statutory damages in an amount up to $100,000 per domain name.
Because it is possible that you were unaware of the significant liability you would incur if your registration of PORSCHEV8.COM was found to be a violation of the Anti-Cybersquatting Protection Act, we wanted to bring this matter to your attention now, before any signifcant financial investments have been made in connection with the domain name, in order to give you the opportunity to voluntarily discontinue any plans that you may have to use the domain name. In addition, because Porsche would prefer to settle matters of this nature amicably without resorting to expensive, time consuming litigation, Porsche is willing to forego any claim under the Anti-Cybersquatting Consumer Protection Act (with respect to the PORSCHEV8.COM domain name) if you agree to the terms set forth below, namely that you not use or transfer this domain name, and you allow the registration to expire at the end of its natural term.
However, if you do not agree to the terms set forth below, or if you begin use of the PORSCHEV8.COM domain name after receipt of this notice, we will have no choice but to recommend that Porsche consider any and all available legal remedies in order to prevent these acts of infringement and preserve the considerable goodwill associated with Porsche's marks, including without limitation the initiation of a civil action under the Anti-Cybersquatting Consumer Protection Act asserting a claim for damages and an award of attorneys' fees. Therefore, if you wish to resolve this matter amicably, please sign and date the enclosed copy of this letter at the spaces provided and then return it to us within the next thirty days.
Sincerely,
Jana L. France
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Response to the First letter from the law firm representing Porsche®
Scream Technologies
P.O.B. 97893
Las Vegas, NV 89193
Wednesday, November 20, 2002
Fish & Richardson P.C., P.A.
Jana L. France
3300 Dain Rauscher Plaza
60 South Sixth Street
Minneapolis, Minnesota
55402
Re: Alleged Trademark Rights Infringement
Ref: 11291-978001
Dear Jana L. France:
It is an honor to correspond with those who represent Porsche Cars North America. It is true, that the domain name PorsChev8.com has been purchased recently from Register.com, Inc. While it is admirable for your firm to protect the interests of Porsche®, the PorsChev8.com site has no intention of infringing upon the rights lawfully held by Porsche®.
As any typical web user can see, there is no chance of confusing the official site of Porsche® Inc. with this site. Although the two letter clusters "Pors" and "Chev" and the #8 do contain common letters, existing case law on domain names that contain the word "sucks" states that it is unlikely for the average user to confuse the "sucks" site with the official company site. For example, the site "Sucks.com" owns "MicrosoftSucks.com" and the court decided in favor of Sucks.com. Please read the article at:
http://news.com.com/2100-1023-268666.html?tag=rn Of course, Porsche® already owns PorscheSucks.com (and others) to prevent anti-Porsche® people from lawfully owning those types of domain names.
Please provide evidence (including the jurisdiction) that Porsche® Inc. owns or is affiliated with "Pors Chev 8, Inc.". If that is true, then your firm is correct in its allegation of infringement. If you lack such evidence, there is no infringement.
Perhaps your firm earns money from Porsche® by muscling domain name owners into selling and abandoning sites in an effort to limit peoples' right to free-speech? With existing case law supporting free-speech motives from the people at Sucks.com, coupled with the recent activities of your firm and Porsche® when it comes to domain name acquisition, it's quite likely the courts would NOT support your firm's position in this case. The domain name PorsChev8.com is NOT for sale or acquisition.
News of this incident would likely generate horribly bad public relations for Porsche®. If your firm agrees to drop the issue and notifies this site of said agreement, representatives from this site will refrain from making this issue "public" with posts on news-related sites, "Sucks.com", and other related anti-corporate sites. You have 30 days to comply.
To maintain a friendly relationship with your firm and Porsche®, changes have been made on the site to show it is not associated with Porsche® in any way. If your firm would like the site to consider making more changes to the content of the site, please submit those suggestions to the above mailing address.
Sincerely,
PorsChev8.com domain name lawful owner.
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2nd letter from the law firm representing Porsche®
FISH & RICHARDSON P.C.,P.A.
December 18, 2002
45 Rockefeller Plaza
Suite 2800
New York, New York
10111
Telephone
212 258-5070
Scream Technologies
P.O.B. 97893
Las Vegas, NV 89193
Re: Trademark Rights of Dr. Ing. h.c. F. Porsche AG
Our Ref.: 11291-978001
Dear Sir or Madam:
We have now had an opportunity to review your letter dated November 20, 2002, regarding the above-identified matter. For the resons set forth below, we find the arguments presented in your letter unpersuasive and without merit. Therefore, we reassert our demand that Scream Technologies discontinue any plans to begin use of the PORSCHEV8.COM domain name and immediately execute the written agreement enclosed with our letter dated October 29, 2002.
It is clear from the arguments presented in your letter that you are unfamiliar with the area of trademark law. You assert that "the PorsChev8.com site has no intention of infringing upon the rights lawfully held by Porsche®." Intentions of a website (or the owner of the site for that matter) are not relevant to the issue of trademark infringement and trademark dilution. Nor would Porsche's ownership or affiliation with "Pors Chev 8, Inc." have any relevance to the issues at hand. Porsche doesn't have to prove that it owns "Pors Chev 8, Inc." to succeed in a civil action against Scream Technologies. The relevant issues would be whether consumers are likely to be confused as to the source of any goods or services provided in connection with the domain name, whether consumers are likely to believe that Porsche is affiliated with, sponsors, endorses or is otherwise connected with the site linked to the domain name, and whether use of the PORSCHEV8.COM domain name dilutes the distinctive quality of Porsche's famous mark.
If you were to consult with a lawyer who is experienced in the area of trademark law, he or she would tell you that the marks in question need not be identical in order for there to be a likelihood of confusion between two marks. Moreover, many cases have found that when a junior user adopts a mark that incorporates 100% of a senior user's mark confusion is more likely because consumers will naturally assume that the senior user has expanded its usage of its mark. Despite the fact that you continue to refer to your domain name as "PorsChev8.com", consumers are likely to pronounce your domain name "Porsche V8 dot com" rather than "Pors Chev 8" since "Pors Chev 8" has no logical meaning. Whereas, "Porsche V8" has significant meaning due to the fame of the Porsche® mark and the fact that "V8" is a generic term used to describe an engine with 8 cylinders in a "V" configuration. Therefore, confusion between Porsche's marks and the PORSCHEV8.COM domain name would be more likely.
With regard to the remainder of your statements, we fail to understand the relevance of any case law involving the word "sucks" since this word does not appear in the PORSCHEV8.COM domain name. Further, we fail to understand why you believe that Porsche is trying to limit free-speech merely because it is trying to protect the substantial goodwill associated with its marks. The Porsche® mark is famous and extremely valuable because of the significant goodwill Porsche has built over the last 50+ years due to its own hard work. No one has the right to trade on that goodwill for its own commercial advantage. Moreover, there is no reason why you need to use Porsche's marks in your domain name in order to publish your opinions about Porsche or its automobiles.
Despite the fact that we believe that Porsche has a very good case of trademark infringement, trademark dilution and cybersquatting against Screaming Technologies, Porsche would prefer to settle matters amicably without resorting to litigation. Therefore, we reassert our request that Screaming Technologies discontinue any plans to begin use of the PORSCHEV8.COM domain name and immediately execute the written agreement enclosed with our letter dated October 29, 2002. (A copy of which is enclosed for your convenience).
If Screaming Technologies does not agree to the terms set forth in the enclosed agreement, or if Screaming Technologies subsequently begins use of the PORSCHEV8.COM domain name, we will recommend that Porsche aggressively pursue all available legal remedies, including an award of attorneys' fees and increased damages under 15 U.S.C. Section 1117(b) and/or statutory damages under Section 1117(d) in view of Screaming Technologies' use of "PORSCHEV8.COM" after receipt of notice of Porsche's rights in the various PORSCHE marks. To show you that Porsche is serious about enforcing its intellectual property rights, we are enclosing for your information a copy of a judgment we received in Dr. Ing. h.c. F. Porsche AG v. KMS & Co., Corp., 1:00-CV-1487-RLV (N.D. Ga. 2001), in which the court awarded Porsche $228,124.01 under the Anticybersquatting Act.
Very truly yours,
Jana L. France
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Response to the Second letter from the law firm representing Porsche®
Scream Technologies
P.O.B. 97893
Las Vegas, NV 89193
Thursday, January 2, 2003
Fish & Richardson P.C., P.A.
Jana L. France
3300 Dain Rauscher Plaza
60 South Sixth Street
Minneapolis, Minnesota
55402
Re: Alleged Trademark Rights Infringement
Ref: 11291-978001
Dear Jana L. France:
SLAPP suits (Strategic Lawsuit Against Public Participation) are "might-makes-right" and unethical as they prey on lawful citizens that are powerless against the bankrolls of heavy-hitting, large corporations. This site is completely in the right as there simply is no cybersquatting and / or trademark infringement involved. Unfortunately in today's world of scum sucking, bottom feeders it doesn't really matter who's right and who's wrong. All that matters to you is what does it take to become a partner in the firm. Your firm has a mission, to pirate domain names from lawful domain name owners while exploiting two of the most worthless pieces of legislation ever created, The 1996 Trademark Dilution Act and The Anti Cybersquatting Consumer Protection Act. Instead of getting involved with big-risk cases, your firm targets the easy ones, people who spend $35 on a domain name. Your heartless firm doesn't really care what's right and wrong since it's just interested in pillaging from Porsche® and other clients regardless of the facts. Sure, some situations require the protection from the courts, however matters such as this are simply exploitation of both your client Porsche® and the lawful owner of this domain name. Is this the best you can do to achieve life's most personal goals? If you really cared about making this world a better place, you would really look at the facts of each case you are involved in and decide to pass on those who really are in the right.
Is the site to be abandoned and your firm simply moves on to victimize the next person who ends up in the crosshairs of a domain name search, or do we go to court? That decision will be made once your reply to this letter is received. This gives you one last chance to come up with a better agreement to be signed, and to state your case clearly. All cards will now be on the table in an effort to see clearly through this matter. Hopefully you too will lay your cards on the table so that a proper determination can be made. Thus far, all you have presented is a vague position on the allegations, many threats, and many insults, all without merit of course.
In each of your letters you used the word "amicably" quite often. Amicable means "exhibiting friendliness or goodwill". Of course you and your client would be friendly if this site was unconditionally abandoned, however, the threats and the one-sided position of abandonment is not exactly "friendly", nor does it show any "goodwill" on your part.
Your letter mentioned a judgment of $228k that was awarded to your client. Please provide the transcript and other details since the judgment by itself doesn't explain anything about the facts of the matter. A proper example for you to follow can be found at
http://www.pravel.com/Porsche%20Court%20Order.htm. In this case, your client lost against defendant "porsch.com" for its use of the "porsche.net" and "porscheclub.net" domain names because:
1) The court recognizes the importance of using domain names instead of relying on everybody to memorize IP addresses, and there are a limited number of those available, and everybody is allowed to attract visitors to their sites by using similar domain names.
2) Your client failed to show it had suffered, or was threatened by actual injury traceable to the defendant.
3) The allegation from your client that failure to have "porsche.net" would make people think Porsche's brand name is not as great as they first thought is a moot point.
4) The Lanham Act proscribes the importation of goods that have a false designation of origin, so your client's claim simply didn't apply.
5) The court cannot presume that congress intended the Trademark Dilution Act to operate in a way that so blindly ignores traditional notions of fair play and substantial justice.
If you compare this matter to that matter, you will see that your client would lose this case as well.
Your claims of trademark infringement and cybersquatting either involve the domain name itself, or the content of the site. Since the site contained nothing but an e-mail link to "BoardAdmin@PorsChev8.com" at the time this started, you probably don't care to challenge the site content but instead want to concentrate on the domain name itself. However, since a site's "good faith" intent is always the deciding factor, the site content actually plays a major role in deciding a case. More content has been added to the site so you can see the site has had "good faith" intentions since the beginning.
Cybersquatting:
Cybersquatters are those who hijack domain names, often to be used for pornographic sites. "'Cybersquatters' is a term used to refer to those who register a domain name with no intention to use it, but instead to offer it for sale". Companies either pay the hijackers so that they are not associated with pornography, or so that they can use the domain name for their own business reasons.
This site is not involved in cybersquatting as it really has a legitimate purpose. Granted, there are those who buy domain names in an effort to make a profit some day, but what's wrong with that? It's a legitimate business based on creativity and risk, like all other businesses (except legal firms of course). Do you consider yourself to be "above" that type of business? Those who choose that line of business shouldn't be punished. Should you be punished for the underhanded work you perform? That is why the courts have been ruling in favor of the defendants in these types of cases lately.
Trademarks:
Trademarks were not designed to reward the intellectual property owner with an exclusive right to exploit their creations. Instead, the laws were designed to prevent somebody from putting a Porsche® mark on a Yugo and selling it to the general public as a Porsche®. As you pointed out the importance of your client's "widespread recognition and acceptance", trademark laws were designed to protect the image built by the trademark holder from being exploited. You want to protect your client from "products or services" that may infringe upon your client's trademark. This site doesn't offer "products or services" of any kind, so how could there be trademark infringement? How could a domain name possibly infringe upon a trademark without being attached to a product or service? Perhaps site content could, but that's only when the trademark holder's fonts and symbols are used.
You failed to understand the previous explanation of the "sucks.com" domain name. "Microsoft" is not a word in the English dictionary. Therefore, any reference to that word is a reference to the trademark, plain and simple. The court decided that Microsoft corp. does not have exclusive ownership to all domain names that include the trademark (microsoftsucks for example), but instead, that the only test used in court is whether or not the domain name owner has "good faith" intent, and if the typical web surfer can tell the difference (not to mislead). Although you previously, and foolishly said that intent was "irrelevant", pretty much all cases involving the internet and trademark allegations come down to "intent". The court decided that since the average web surfer could tell the difference between the parody and Microsoft's legitimate site, and that the defendant registered the name with "good faith" intent (not to cybersquat), that Microsoft had no claim. The court does not unconditionally grant your client Porsche, exclusive rights over all letter combinations of a domain name involving the mark.
In Playboy Enterprises, Inc. v. Terri Welles, et al., No. 00-55009, 162 F.3d 1169 (9th Cir., February 1, 2002), (
http://www.phillipsnizer.com/int-art256.htm) it was decided that "defendant Terri Welles' use of plaintiff's trademarks Playboy and Playboy Playmate of the Year...appearing on her web site neither infringe nor dilute those marks". How could this be! -- you ask yourself. You said, "there is no reason why you need to use Porsche's marks in your domain name in order to publish your opinions about Porsche or its automobiles". The court ruled that there is no other way to "accurately describe" Playboy and its magazine without using the trademark. The same is true about your client, there is no other way to "accurately describe" your client's cars without using the trademark. The court held that it would be "absurd" to use long terms that accurately describe the trademark without using the trademark. It was stated, "searchers would have a much more difficult time locating relevant websites if they could do so only by correctly guessing the long phrases necessary to substitute for trademarks". Therefore, "www.Cars Designed And Built By a German Company And Engines With 8 Cylinders Designed And Built By an American Company.com" would be absurd.
You feel that your client has ownership of anything appended to its trademark in an effort to reserve everything in case your client chooses to expand in unforeseen directions. Although your assumption of the site's domain name meaning of "Porsche V8" is wrong, if your client wished to expand in this direction, it would have reserved the domain name well before it was purchase for use with this site.
In all internet-related cases that involve trademark allegations, the following are important:
1) Whether or not the domain name owner has "good faith" intent.
2) Whether or not the site is confusingly similar.
3) Whether or not the site shows affiliation.
4) Whether or not the site has a legitimate purpose (where cybersquatting comes in).
As will be explained below, the site has had "good faith" intent since the beginning.
Sites that have confusingly similar domain names would be "porsch.com" without the "e", "porche.com" without the "s", or even "porrsche.com" with an extra "r". Granted some companies have won in cases like this, but your client has lost. Sites that have confusingly similar content have been allowed providing they are a parody and the typical web surfer can tell the difference. The only way you could win with the confusingly similar issue is if you can prove the site is seriously trying to imitate your client's sites in an effort to draw people away (show proof of damage).
The disclaimer shows beyond a reasonable doubt that there is no affiliation with your client.
As will be explained below, the site has a legitimate purpose.
The "good faith" behind PorsChev8:
You feel that the domain name "PorsChev8.com" is supposed to be pronounced as "Porsche V8" because Pors Chev 8 "has no logical meaning". Aside from the fact that there exists no law that stipulates domain names must have "logical meaning" to Ms. Jana L France, there really is logical meaning (intent) behind the domain name. PorsChev8.com is a forum (chat / message board) for people to discuss ways of building hybrid project cars using Porsche® cars and Chevrolet® V8 engines. Each of these elements were chopped to one syllable, and then blended together to create a hybrid of all 3 elements, to reflect the hybrid nature of these cars.
If your client plans on putting Chevy V8 engines into each one of their cars, then yes, your firm probably has a leg to stand on. Although you will want to claim that the site's intent was to prevent Porsche from "expanding" into pushing V8 designs in their cars, the typical web surfer is most likely to think of 4 cylinder designs for Porsche® as V8 designs are much more common with Chevy's big-block and small-block motors. Clearly, anytime a "V8" is mentioned, people think of Chevy, or possibly even Ford, very rarely would one think of Porsche®. If Porsche® "purists" are not happy with people building these hybrid cars, Porsche® is perfectly capable of manufacturing affordable, high-horsepower motors all on its own. Since this is not a business model that Porsche® chooses to pursue, there is no affiliation, competition, or even trademark infringement.
Granted, this site involves the discussion of your client's automobiles, but it has nothing to do with the manufacturing or marketing of vehicles, the things your client does with its trademark. Besides, there is no way (other than being "absurd") to discuss the application except to use your client's trademark, which the court determined is perfectly fine. Granted, your client's name is contained in this domain name, but that was purely a coincidence. The reason why that domain name was chosen was to represent the blending of the 3 elements. This site is not engaged in any commercial activities (which potentially makes the Lanham Act apply), nor does it offer any goods or services that could possibly be confused with your client. Its purpose is simply newsworthy, which is given much more latitude when it comes to "fair use" of trademarks.
The site's "good faith" or "bad faith" intent is very important in deciding these types of cases. All documentation, including e-mail messages and the involvement with chat board software producers will be provided should this matter go to trial to prove the legitimate purpose and "good faith" of those involved.
Now it is time for you to show your hand. If you choose to pursue this matter, please explain specifically why you feel this site has done something wrong. If you wish to put together a new agreement that states you will forego all litigation providing the site continues to avoid cybersquatting and refrains from using your client's fonts and symbols, it will be signed immediately. If you truly believe in settling this amicably, you will give it serious consideration.
Sincerely,
PorsChev8.com domain name lawful owner.
CC:
Laura Malone
Porsche Cars North America, Inc.
980 Hammond Drive, Suite 1000
Atlanta, GA 30328
USA
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3rd letter from the law firm representing Porsche®
FISH & RICHARDSON P.C.,P.A.
January 15, 2003
3300 Dain Rauscher Plaza
60 South Sixth Street
Minneapolis, Minnesota
55402
Telephone
612 335-5070
Dear [edit]:
We have received and reviewed your letter dated January 2, 2003, regarding the above-identified matter and do not find any of your arguments persuasive.
First, you hardly fall into the category of "lawful citizens" that are powerless against "the bankrolls of heavy-hitting, large corporations." Nothing you are doing is lawful. Further, rather than accept responsibility and change your behavior after being told politely why it is unlawful, you attempt to pass the blame on everyone but yourself. With no support for your positions under any statute, case law or logic, you attempt to generate sympathy by casting all of the blame on the Trademark Dilution Act, the Anticybersquatting Consumer Protection Act, Porsche, Fish & Richardson and me personally.
I have already stated Porsche's case very clearly and as a courtesy have attempted to provide you with information about the U.S. Trademark Law. You appear to have elected to analyze the law on your own without the benefit of competent legal counsel. As a result, rather than offering any rational arguments to rebut the numerous cases I have provided to you in support of Porsche's position, you quote single sentences from cases having no relevance to the facts or issues of your case.
The case you site involving the "porsch.com" domain name is irrelevant to your case. The issue in that case was whether Porsche had the right to bring an in rem action against a number of domain names (rather than against the owners of those domain names) under the Trademark Dilution Act.1 Porsche has never threatened to bring an in rem action against you. In the event that it becomes necessary to initiate a civil action against you, we would sue you in personam so we could request damages. Futhermore, contrary to the allegation made in your letter, Porsche prevailed in this action. Therefore, this case is irrelevant.
With regard to the Microsoft and Playboy cases, neither case stands for the propositions you allege, nor do they support your position. Moreover, both cases are consistent with Porsche's position. Therefore, I am not going to waste further time commenting on these cases. I would like to point out, however, that we are not arguing over whether you can accurately describe Porsche's automobiles. We are arguing over whether you have the right to adopt and use a domain name that incorporates Porsche's mark and use that domain name in connection with information services provided via the Internet. Futhermore, we have never asked you to abandon your website.2 You are free to operate the site under any domain name you choose provided that it does not infringe upon the rights of others. For instance, you could operate the site under the name "[personalname].com".
Your admission that porsch.com, porche.com and porrsche.com are all confusingly similar to Porsche's mark, but "porschev8.com" is not confusingly similar is rather interesting. Even more remarkable are your admissions that the trademark laws were designed to prevent a third party from putting the Porsche® mark on a Yugo, and your site is devoted to assisting third parties in building cars using Porsche's automobile and Chevrolet's engines under the "porschev8.com" domain name and presumably, while the Porsche mark still appears on the modified automibiles. Further, your statement that your domain name was created by blending together Porsche's mark, Chevrolet's mark and "V8" is an admission that you are attempting to trade on the goodwill of two famous brands. Your logic is unusual to say the least.
I have given you the agreement Porsche would like you to sign. You will note that no where in the agreement does Porsche ask you to take down your website. Porsche has no objections to third parties operating websites relating to its automobiles provided that it does fairly and without infringing and/or diluting its trademark rights. There are numerous websites that do this such as,
www.rennlist.com. If you would like assistance as to the types of uses that consitute fair uses, we would be happy to provide you with this information. Further, if there are any legitimate changes that you would like to suggest to the agreement, we would be happy to consider them.
Otherwise, unless you immediately cease all use of the PORSCHEV8.COM domain name and execute the agreement enclosed with our prior letters, we will recommend that Porsche aggressively pursue all available legal remedies, including an award of attorneys' fees and increased damages under 15 U.S.C. section 1117(b) and/or statutory damages under section 1117(d) in view of your continued use of "PORSCHEV8.COM" after receipt of notice of Porsche's rights in the various PORSCHE marks. Therefore, we strongly recommend that you seek the counsel of a competent trademark lawyer.
Very truly yours,
Jana L. France
_______________________
1 The action was filed prior to the enactment of the Anticybersquatting Act and involved an in rem claim under the Antidilution Act. Although the court found that there is no right to bring an in rem action under the Antidilution Act, by the time the court's decision was rendered the Anticybersquatting Act had been enacted and the court allowed Porsche to proceed in rem under the Anticybersquatting Act.
2 We recognize, however, that you are more likely to get sympathy from third parties if you can allege that Porsche is making all sorts of outrageous demands. However, your posting of our correspondence on your website has served as a double-edged sword because people can see for themselves that Porsche's position is reasonable.
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Response to the Third letter from the law firm representing Porsche®
Scream Technologies
P.O.B. 97893
Las Vegas, NV 89193
Friday, February 7, 2003
Fish & Richardson P.C., P.A.
Jana L. France
3300 Dain Rauscher Plaza
60 South Sixth Street
Minneapolis, Minnesota
55402
Re: Alleged Trademark Rights Infringement
Ref: 11291-978001
Dear Jana L. France:
We have received and reviewed your letters and find that practically every one of your allegations are wrong and completely off-point. We believe you have absolutely nothing for a case, and we will prove it with this letter. The Lanham Act and existing case law state that certain internet sites are exempt from prosecution by trademark holders providing:
1) They are a parody of another
2) They are for newsworthy purposes (fair-use)
3) They are not involved in commerce (non-profit)
4) They have a legitimate purpose (not cybersquatting)
5) They have good-faith intent
It appears as if you don't pay too close attention to detail when it comes to mailing letters. Your letterheads are from different States (New York and Minnesota) making it difficult to figure out where to send the replies. In addition, you incorrectly addressed your previous reply, causing unnecessary delay, when you sent it to a consultant that has handled some of our technical issues. You used his name in several places knowing it would be published on this site, violating his privacy and causing undue stress. Not only are your actions juvenile and malicious, but there is no guarantee your future correspondence will be received if you continually fail to pay attention. Although you may feel you should be given two gold stars for your research, unfortunately for you the LLC's inventory list doesn't have any boxes of gold star stickers. Please address future correspondence correctly by using the LLC and address that have consistently appeared at the top of our replies, the same one that was used to register PorsChev8.com.
We have been trying to get to the root of the matter in order to resolve this quickly. It's likely your position is innacurate and contrived in an effort to pillage from your client Porsche. As a result, you have made many false allegations that must be explained.
Please refrain from "helping" by suggesting we seek a competent attorney. That's like viewing someone's painting and saying, "you really should take some art classes". Granted, you work for a prestigious law firm, however that doesn't mean your word is gospel. In fact, it's likely the partners in your firm (and your client Porsche) will demand your resignation after this is read.
The Lanham Act:
As previously mentioned, this "Act" which was passed in 1999 (about the same time you were hired by Fish & Richardson), is a jacked-up piece of legislation designed to reward business for campaign contributions. It's sad to see that your firm exploits this legislation in order to make a buck. As stated at
http://www.bitlaw.com/internet/domain.html:
In response to intense lobbying from trademark owners and famous individuals, Congress passed the Anticybersquatting Consumer Protection Act in November of 1999.
The text of the Lanham Act can be found at
http://www.bitlaw.com/source/15usc/index.html
Before we get started with the details, keep in mind that a sharp distinction is made throughout the Lanham Act between those using domain names for commercial purposes or "commerce", and those using domain names for non-profit or "fair use" purposes. Seeing how there are NO commercial activities going on with this site, including a LACK OF "products and services", simply put it is IMPOSSIBLE for you to prove the domain name is being used for commerce.
§1114. Remedies; infringement; innocent infringment by printers and publishers:
(1) Any person who shall, without the consent of the registrant--
(a) use in commerce... [emphasis added]
There is no point in reading the rest of 1114.1.a because it only pertains to "use in commerce". The other parts to section 1114 discuss those using trademarks "in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services...", and also those who are "solely in the business of printing the mark". Clearly, none of those apply to this site.
§1125. False designations of origin and false descriptions forbidden:
(a) Civil action.
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce... [emphasis added]
There must be a "connection with...goods or services" for this to apply, and clearly there are no goods or services being offered on this site. Goods are "products", and services involve "performing work". Providing information (links) and a forum for people to discuss issues are NOT "services". Even if you choose to skip past these parts and go right to part "a", you'll notice it says, "or approval of his or her goods, services, or commercial activities by another person". Part "b" starts off with, "in commercial advertising...". Can you see how the Lanham Act is tailored for commercial entities?
Section 1125.b deals with the importation of products, which clearly doesn't apply here.
Section 1125.c.1 is something you may want to jump on.
(c) Remedies for dilution of famous marks.
(1) The owner of a famous mark shall be entitled...to an injunction against another person's commercial use in commerce of a mark... [emphasis added]
Once again it's limited to "commerce".
Here's a section you should pay close attention to, section 1125.c.4:
(4) The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary. [emphasis added]
Part (A) makes it perfectly legal to discuss options that Porsche® owners have when it comes to using their existing engines or replacing their engine with a Chevy. Part (B) pretty much is the nail to seal the coffin. Part (C) is equally damaging to your "strong case".
Here's where "intent" is discussed, section 1125.d:
(D) Cyberpiracy prevention:
(1)(A) A person shall be liable...if...that person
(i) has a bad faith intent to profit from that mark...and [emphasis added]
Since this site has a good faith intent, and since there is no profit (commerce), "cyberpiracy" simply isn't an issue with this site. Since the "and" appears at the end of section (i) and the first part doesn't apply, there's no reason to read section (ii).
Section 1125.d.1.b.i is very long:
(B)(i) Cyberpiracy prevention:
(1)(A) In determining whether a person has a bad faith intent...a court may consider...
Each one will be addressed here:
(I) the trademark...in the domain name
As previously explained, the domain name is a "chopped" form of your client's trademark, blended with chopped forms of "Chevy" and "V8". "MicrosoftSucks.com" contains the trademark "Microsoft", but the court didn't give Microsoft corp. rights to all other appendages to their trademark because of free-speech reasons. You alleged that "Pors Chev 8" should be thought of as "porsche V8". Let's entertain your allegation for a moment.
"porsche" + "v8" = "porschev8.com"
"microsoft" + "sucks" = "microsoftsucks.com"
You said, "many cases [do you mean 'many courts'?] have found that when a junior user adopts a mark that incorporates 100% of a senior user's mark ..." The court doesn't agree with you since "Microsoftsucks" incorporates the mark just as you explained. The reason why the court ruled in favor of MicrosoftSucks is because the site was for newsworthy & parody purposes, which outweighs the interests of trademark holders. You said, "With regard to the remainder of your statements [regarding 'microsoftsucks.com'], we fail to understand the relevance of any case law involving the word 'sucks'". On one hand, you fail to see the relevance when a junior user (MicrosoftSucks) adopts a mark, but on the other hand you show how relevant it is when a junior user (PorsChev8) adopts a trademark. Which is it?
If you're not convinced that PorsChev8 is made up from the 3 different elements, more background will be provided for you. Not too long ago, there existed a Yahoo chat group called "porchev" that was shutdown. PorsChev8 was created to pick up where that chat group left off. Unfortunately, someone already registered "porchev.com", yet another person involved with putting Chevy V8's into Porsche's, so we thought of adding the "8" to blend the 3rd element into the double arrangement of Porsche® and Chevy. We then thought that the owner of that site may get angry, as if we were trying to prey on those who add a single digit, an "8", as they seek his site. This is likely to happen since he deals with Chevy "V8" engines. Maintaining the blending of the 3 elements idea, we decided to insert an extra character, an "s", into the middle to make it harder to stumble on our site when people were looking for his site. We felt it was also different enough from "porsche.com" as two extra characters would need to be typed for an accident to happen -- highly unlikely. In addition, Porsche is quite happy with, and better known for its 4 and 6 cylinder designs so nobody would think your client has expanded into V8's, let alone those from Chevy. Yes, it is a coincidence that your client's name is fully contained, but the intent was of "good faith". That is why, from the start, we have capitalized the domain name.
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person
This deals with cases like "madonna.com", which involves a person's legal name -- clearly doesn't apply here.
(III) the person's prior use...of the domain name in connection with the bona fide offering of any goods or services
There are no goods or services, so this doesn't apply.
(IV) the person's bona fide noncommercial or fair use of the mark in a site accessible under the domain name [emphasis added]
This site is noncommercial and is protected by "fair use".
(V) the person's intent to divert consumers...that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site [emphasis added]
You said, "you assert that 'the PorsChev8.com site has no intention of infringing upon the rights lawfully held by Porsche®.' Intentions of a website...are not relevant". It appears as if the Lanham Act doesn't agree with you and that you are completely wrong. As previously stated, there was no intention to divert customers away from your client's normal sites. There is no commercial gain, nor was there intent to tarnish your client. To ensure there is no affiliation with your client, the disclaimer on the site removes all doubt.
(VI) the person's offer to transfer, sell, or otherwise...for financial gain without having...intent to use the domain name in the bona fide offering of any goods or services, or the person's prior conduct indicating a pattern of such conduct
There never was an offer to sell, in fact our first reply indicated that the site is NOT for sale. Although we don't think there is anything wrong with those who purchase domain names so they can sell them back for a profit, we have never participated in those activities.
(VII) the person's provision of material and misleading false contact information...or the person's prior conduct...
The contact information was accurate since you were able to contact us with your first attempt. If you continue to send documents to other addresses as you have just done, instead of using the correct contact information, you will be sued for malicious behavior.
(VIII) the person's registration...of multiple domain names which the person knows are identical or confusingly similar to marks of others...or dilutive of famous marks of others...without regard to the goods or services of the parties
We have shown the origin of the domain name and how unlikely people could be confused. Those who register "porche.com", without the "s", potentially could fall into this category. Seeing how Chevy is well known for its V8 engines, not Porsche®, it is highly unlikely that the typical web surfer is to think the domain name is confusingly similar.
(IX) the extent...within the meaning of subsection (c)(1) of section 43
This section deals with the "commercial use in commerce of a mark or trade name", which clearly doesn't apply for a non-commercial site.
MOST IMPORTANTLY, section (ii) states:
Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful [emphasis added]
We firmly believe that our domain name constitutes fair use because it's solely for newsworthy and non-profit purposes, and we firmly believe our actions are lawful because case law and the Lanham Act support us and you have failed to show we've done anything unlawful.
Jana L France errors:
Feel free to number these in your reply and show how these are false statements, if at all possible.
1) You wrote, "...it is likely that consumers would be confused as to the source of any products or services you were to offer in connection with the PORSCHEV8.COM domain name."
A domain name is simply a mapping to an IP address, not a product or service as that is what site content is for. Please provide a detailed list of the products or services being offered with this site that you plan on listing in your claim. There are NO PRODUCTS OR SERVICES at all so how could you successfully argue someone would be confused by nonexistent products and services?
The site looks nothing like your client's web site, it is not confusingly similar, does not prey on those who are looking for your client's site, is not posing as your client's site, and is not misleading web surfers. As already pointed out, the disclaimer removes all doubt and there are links provided to your client's site as a courtesy should there be anybody who accidentally ends up here while looking for your client's site.
2) You wrote, "...it is likely that consumers would mistakenly believe that Porsche is affiliated with you or your organization."
Just exactly how many cars has your client produced with Chevy V8's? It's not "likely" at all. The disclaimer ensures beyond a reasonable doubt that there is no affiliation between the two.
3) You wrote, "Section 43(d) of the Lanham Act...makes it unlawful for any person to register, traffic in or use a domain name that is identical or confusingly similar to, or dilutive of another's mark, if such person has a bad faith intent to profit from the other party's mark."
Actually, you are wrong. It says, "Any person who, on or in connection with any goods or services or any container for goods uses in commerce any work, term, name, symbol or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact which is..." [emphasis added]
Do you want to explain just exactly where the words "domain name" appear in that quote? It doesn't talk about domain names, but rather, the usage of a physical trademark to be placed on a product (goods) or associated with a service. Not to mention the fact that the section you misquoted is restricted to those using the site for commercial purposes. Since this site simply talks about people doing conversions, and offers no services, you have nothing! There is no "cause of mistake" or "deception". It is highly UNLIKELY web surfers would be deceived or mistaken when they come to this site.
Even by your own admission "if such person has a bad faith intent to profit from the other party's mark", you confess that intent is truly significant. Although you continue to claim that the "Microsoftsucks" case is irrelevant, as can be seen at
http://news.com.com/2100-1023-268666.html?tag=rn, the court decided in favor of Microsoftsucks because "The respondent registered the domain name with the intention to link it to a free-speech site". Even if you attempt to claim "junior using a senior's mark" nonsense, the Lanham Act shows the site is exempt from prosecution if the site is either a parody, non-profit, or otherwise for newsworthy (fair-use) free-speech purposes. That is why the courts rule the way they do for sites such as this one.
4) To further your nonsense about a junior's usage of a senior's mark, you said, "consumers will naturally assume that the senior user has expanded its usage of its mark."
If this mark is so similar and confusing as you claim, and consumers are likely to assume Porsche has expanded in this direction, why didn't your client reserve it in the first place? How many years can your client ignore a domain name before it's obvious the domain name is not confusingly similar? Since "V8" is such a common term associated with cars, one would think this domain name would be at the top of the list. How many hundreds of domain names has your client purchased that were thought to be "confusingly similar", yet they didn't think this one was close enough to bother with registering? If your client didn't think it was worth $15 per year to reserve it, or if they didn't think of it at all after spending the last couple years of fighting every Tom, Dick and Harry out there over domain names, how can you claim its all of a sudden confusingly similar?
5) You said, "we fail to understand why you believe that Porsche is trying to limit free-speech merely because it is trying to protect the substantial goodwill associated with its marks".
Your client has gone after hundreds of domain name owners, none of which were using the trademark to manufacture and distribute cars -- which is what your client uses its mark for. Your firm and others are responsible for sending threatening letters to ISP's in order to get them to drop chat boards and e-mail lists.
6) You said, "No one has the right to trade on that goodwill for its own commercial advantage".
You are, for the most part, correct. However, your point is moot (off-point) since there is no commerce involved here.
7) You said, "Despite the fact that we believe that Porsche has a very good case of trademark infringement, trademark dilution and cybersquatting".
Just what exactly is your "very good case" all about? You have been asked to show your hand, explain the evidence and show how this evidence is wrong, but you continue to fail to do so.
You went on and on about how wrong we were in citing the "in rem" case found at
http://www.pravel.com/Porsche%20Court%20Order.htm as you failed to read beyond the one-sentence "opinion" section. The very next section titled "Facts" explains that:
Because an Internet protocol number can be difficult to remember, each web site usually has an alphanumeric "domain name"... Those who hope to find a particular web site rarely will know the right internet protocol number off hand, and will rely instead on its known or expected domain name... Companies often discover that NSI already has assigned some of those domain names to others... The Court cannot presume that Congress intended the Trademark Dilution Act to operate in a way that so blindly ignores traditional notions of fair play and substantial justice...
Actually, there were 5 different issues that were explained to you in the last letter that show why the case is relevant. You were so quick to blurt out "in rem" and "irrelevant" that you failed to understand the significance of that case and how the facts were considered by the court. It likely the professors at William Mitchell College of Law would be ashamed to see that you rarely read beyond the first sentence in your actual practice.
9) You said, "Nothing you are doing is lawful".
According to the Constitution, all citizens are innocent (lawful) until proven guilty. In addition, you failed to show how anything we're doing is unlawful. Your opinion is therefore inaccurate, contrived, and malicious.
10) You said, "rather than accept responsibility and change your behavior..."
Where did this come from? We're not being responsible? We are simply trying to get to the bottom of this issue, while you continue with nonsense and false allegations. Who are you to say our "behavior" of discussing the conversion of Porsche's into Chevy's should be changed?
11) You said, "after being told politely why it is unlawful".
First, your attitude has been NOTHING even remotely close to being "polite". Do you consider threats, scare tactics with big numbers and demands to be "polite"? Besides, you have failed to show that what we are doing is unlawful.
12) You said, "you attempt to pass the blame on everyone but yourself".
Just what exactly should we be blamed for? Thus far, the blame is on your firm for pillaging your client, and your client for hiring firms like yours to go after hundreds of other people.
13) You said, "With no support for your positions under any statute, case law or logic".
Clearly your statement is completely wrong. We have provided many cases, plus a detailed explanation of case law and statutes to support our position. Perhaps you are making such a statement of nonsense in an attempt to distract from the onslaught of proof we have provided.
14) You said, "You appear to have elected to analyze the law on your own without the benefit of competent legal counsel".
Instead of stating your contrived opinion, feel free to analyze, refute, and comment on each of these points. You would call yourself competent, legal counsel, correct?
15) You said, "rather than offering any rational arguments to rebut the numerous cases I have provided to you in support of Porsche's position".
Name one case you've cited that is similar to this situation. The only thing you offered was a copy of the "judgement" your client received in some non-related case -- but you failed to include the court's opinion or any other facts about the case!
16) You said, "With regard to the Microsoft and Playboy cases, neither case stands for the propositions you allege, nor do they support your position".
How can you claim they don't stand for the propositions we allege when we quoted statements directly out of the text of the case? They clearly support our position.
When the "in rem" case was mentioned in the previous letter, we gave you 5 different issues that supported our case from that. Instead, you simply stated that this matter couldn't be "in rem" and wrote off that case as irrelevant. Just because you failed to understand the case and the point the court was making doesn't make it irrelevant.
The Playboy case determined that her usage of Playboy's trademarks "are permissible nominative uses necessary to allow Ms. Welles to accurately describe herself and the content of her site". The court went on to say, "the product being described is not readily identifiable without use of the trademark". How else can a Porsche® be described without the use of the trademark? That is why the domain name "www.CarsDesignedAndBuiltByaGermanCompany..." would be "absurd" as the court ruled. The court added, "only so much of the mark is used as is reasonably necessary to identify the product". Perhaps "www.porschecarsofamericachevyv8.com" would be an example NOT considered to be "reasonably necessary", although that domain name is presently available... Finally, the court said, "the user of the mark does nothing that suggests sponsorship by the owner of the mark". Clearly, this applies to this matter because this site has a disclaimer that insists there is no sponsorship by the owner of the mark. Therefore, if these conditions are met (which they are in this matter), the court would rule similarly that this site is engaging in lawful behavior.
The court stated, "Plaintiff's trademark dilution claims failed because a nominative use is exempt from anti-dilution laws, as such a use refers to plaintiff's own product and therefore does not create an improper association between plaintiff's mark and the product of another". Surely you cannot claim you still fail to see the relevance here.
The court added, "She did not, however, use the fonts or symbols PEI uses in connection with those marks -- she used only the words themselves". Our domain name doesn't use fonts or symbols (graphics) that your client uses, but rather the site only uses the words themselves.
[T]here is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the "nude model selected by Mr. Hefner's magazine as its number-one prototypical woman for the year 1981" would be impractical as well as ineffectual in identifying Terri Welles to the public.
There is no practical way to identify your client's products without using its mark.
The court held that, "Welles had satisfied the second prong of the test by only using so much of the marks as is reasonably necessary to identify herself.". We have only used a portion of your client's mark to reasonably identify the marriage between Porsche® cars, Chevy engines, and the V8 variety.
"Lastly, the Court held that defendant satisfied the third prong of the nominative use test by ... posting a disclaimer on her site, disclaiming any current affiliation with plaintiff." As stated many times throughout, we have a disclaimer stating there is no affiliation with your client.
Searchers would have a much more difficult time locating relevant websites if they could do so only by correctly guessing the long phrases necessary to substitute for trademarks... We hold that nominative uses, by definition, do not dilute the trademarks.
17) You said, "Moreover, both cases are consistent with Porsche's position".
Just exactly how are the "in rem" and Playboy cases consistent with Porsche's position? Did you even read those cases beyond the first sentence?
18) You said, "Therefore, I am not going to waste further time commenting on these cases".
It appears as if you choose not to "waste time" on these cases because they put an end to your position. Please, feel free to "waste time" on trying to show how those cases are irrelevant.
19) You said, "We are arguing over whether you have the right to adopt and use a domain name that incorporates Porsche's mark and use that domain name in connection with information services provided via the Internet".
As stated in the Lanham Act, there is no argument when sites are non-commercial. Therefore, we clearly have the right to use your client's mark in our domain name as proven in the microsoftsucks case. It was odd that you admitted that this site is for "information services" as compared to being used for "commerce". We thank you.
20) You said, "we have never asked you to abandon your website".
Perhaps using your own words will prove otherwise.
if you begin use of the PORSCHEV8.COM domain name after receipt of this notice, we will have no choice but to recommend that Porsche consider any and all available legal remedies in order to prevent these acts [emphasis added]
[agreement] I hereby agree that: (1) I will not use the PORSCHEV8.COM domain name either directly or through a third party for any proprietary rights...
(3) I will not transfer the PORSCHEV8.COM domain name registration to any third party; and
(4) I will not renew the PORSCHEV8.COM domain name registration and will allow the registration to expire at the end of its natural term;
Therefore, we reassert our demand that Scream Technologies discontinue any plans to begin use of the PORSCHEV8.COM domain name.
...unless you immediately cease all use of the PORSCHEV8.COM domain name...
If this isn't what one considers to be abandonment, what is?
21) You said, "
