Microsoft demands http://linux.de removes slogan

The German branch of Microsoft has demanded that our collegues at the German Linux Web site remove their slogan "Where do you want to go tomorrow?". They have complied by blacking out their slogan, but Microsoft's legal position appears tenuous: A search on Altavista for that phrase produced over 400 hits, and ... this trademark is pending for Cybernet Systems Corporation of Michigan anyway..

Which part did they violate?

Thanks for the citation, it was definitely informative (Where did you get it, btw?). Now my question is what did www.linux.de violate?

The important phrases seem to be:
"...in connection with the sale, offering for sale, distribution, or advertising of any goods or services or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive"

and
well, actually, the second one is a reprinting of the first in a different tense (corrent me if I'm wrong) in order to indicate those who make the infringement rather than those who use it.

Anyhow, linux.de doesn't seem to qualify for:
sale
offering for sale
distribution

of any goods or services. Can they be called advertising for it? It looks like it, I guess. Is this the one that qualifies? Or do you say that it's the "likely to cause confusion, or to cause mistake, or to decieve" part?

Btw, is "Where do you want to go tomorrow?" a "colorable imitation" of "Where do you want to go today?" What is the legal definition of colorable imitation? Do you know where it can be found? Can you find a dictionary definition of colorable imitation? I'm not used to that sort of language, so I'm curious to know what it means.

Thanks for the info.

Backing down.

Where is it trademark infringement? Last I checked MS had "Where do you want to go today?" trademarked, not the slogan in question. Sure they're similar, but the criteria for trademarks is "Is it's use likely to cause confusion between products?", and there's no way Linux will ever be confused with an MS product.

Look at it this way:

If Pepsi had their cans EXACTLY as they are now, but put the Pepsi logo in the Coca Cola font (and I'm not talking about the swoosh here), it'd be no contest -- Coca Cola would win the ensuing lawsuit. But! You say, "It says PEPSI, not Coca-Cola! how can that be confusing"?

Answer: Doesn't matter.

Here's part of the reason:

http://www.law.cornell.edu/topics/trademark.html

Under state common law, trademarks are protected as part of the common law of unfair competition and registration is not required. See Unfair Competition. States' statutory provisions on trademarks differ but most have adopted a version of the Model Trademark Bill (MTB) or the Uniform Deceptive Trade Practices Act (UDTPA). The MTB provides for registration of trademarks while the UDTPA does not.

---

And here's the kicker:


The Lanham Act of 1946. ( http://www.law.cornell. edu/lanham/lanham.act.html#15usc1114 [cornell.edu])


Sect. 1114. Remedies; infringement; innocent infringement by printers and publishers
(1) Any person who shall, without the consent of the registrant--

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) hereof, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

(2) Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act or to a person bringing an action under section 43(a) [15 USCS Sect. 1125(a)] shall be limited as follows:

(A) Where any infringer or violator is engaged solely in the business of printing the mark or violating matter for others and establishes that he or she was an innocent infringer or innocent violator, the owner of the right infringed or person bringing the action under section 43(a) [15 USCS Sect. 1125(a)] shall be entitled as against such infringer or violator only to an injunction against future printing.

(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of title 18, United States Code, the remedies of the owner of the right infringed or person bringing the action under section 43(a) [15 USCS Sect. 1125(a)] as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.

(C) Injunctive relief shall not be available to the owher of the right infringed or person bringing the action under section 43(a) [15 USCS Sect. 1125(a)] with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter or violating matter where restraining the dissemination of such infringing matter or violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic communication is customarily conducted in accordance with sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter.

(D) As used in this paragraph--

(i) the term "violator" means a person who violates section 43(a) [15 USCS Sect. 1125(a)]; and

(ii) the term "violating matter" means matter that is the subject of a violation under section 43(a) [15 USCS Sect. 1125(a)].


So there you have it. Most other countries' trademark laws follow the Lanham Act; this was all settled down around the time of the Geneva Copyright Convention.

According to the letter (and spirit) of the law, Linux.De was indeed infringing a trademark.

Also, the Michigan guy who's trying to register Where Do You Want To Go Tomorrow? ... well, he's still waiting for the patent to file. And by the look of it, he ain't going to get it.

Simon