IDG and 'Trademark Dilution' For Dummies

Patrick Mochel writes " I'm on a local Linux Users' Group mailing list here in Portland, OR. Sometime in the recent past, someone sent a message to the list proposing that there be published a "For Dummies" book detailing how to use the infinitely complicated sendmail. One way or another, the people at IDG caught wind that this person had used "SMART_HOST for dummies" in the subject line of an email and sent the following message back to him. The list has been in an uproar since." I've attached a few messages from a mailing list below. IDG is the mega corporation that runs LinuxWorld (the website and the expo) as well as publishing many books including the 'For Dummies' series that this is talking about.

Date: Thu, 28 Oct 1999 10:26:37 -0700 (PDT)
From: Michael Plump
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To: [e-mail]
Subject: [PLUG] PLUG: Cease and Desist (this means you David Welton)
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Heh. On 10/23/1998 David Welton made a post with the subject "SMART_HOST for dummies". Apparently IDG Books didn't like that so much. They found the post in the PLUG archives and emailed the owner of skylab.org (a fictional character named Joe Dietz) telling him to remove the page.
Anyone got advice about what I should do? Ignore it? Reply asserting that I'm not responsible for the content (am I?). Or...?

----------------------------------------------------------------------
Michael Allen Plump | Snorks + Kr0n =3D yip yip yip! |

[e-mail]
"Salsa jazz music reminds me of the time my grandpa ate his left ear."
--Joe Dietz

---------- Forwarded message ----------
Date: Thu, 28 Oct 1999 12:26:11 -0500
From: Isabelle Drewelow
To: [e-mail]
Subject: your web site
October 28, 1999
Joe Dietz [e-mail]
BY E-MAIL
Re: Smart_Host for Dummies
Dear Mr. Dietz,

IDG Books Worldwide, Inc. ("IDG Books") is the publisher of the well-known and well-regarded "...FOR DUMMIES" series of reference books and products.

It has come to my attention that you are using the subtitle "Smart_Host for Dummies" in a chat room on your Web site at: [link ] While we wish you every success in your work, we must raise certain issues with respect to your use of IDG Books' federally registered trademark.

As you probably know, IDG Books publishes and distributes globally a line of reference books known as the "...FOR DUMMIES" series. This series has been in existence since 1991 and has been translated into 38 languages. In addition, there are many other successful FOR DUMMIES products including calendars, audio books, musical compact discs, toys, games, and clothing.

IDG Books has made a substantial investment in promoting the identification of this trademark to its distributors and customers, and currently has registrations in many countries.

Because of the significant efforts that IDG Books has undertaken to promote and protect its trademarks, and because of the potential for confusion and/or dilution, we trust that you can appreciate our concerns. For your information, dilution is a relatively new area of law which requires the owner of a trademark to protect it against "erosion" and/or dilution. Some famous examples of trademark dilution are Kleenex tissues, Scotch Tape, Xeroxing and Aspirin, as these marks were not protected by their respective owners and, today have become almost generic terms. At IDG Books, our goal is to prevent such "generalization" from happening to our trademarks.

Therefore, we hope that this matter can be resolved quickly and amicably. Accordingly, we request that you change "Smart_Host for Dummies" to a non-infringing title and provide IDG Books with written assurances that you will refrain from using its trademarks in the future. We look forward to hearing from you by November 10th , 1999.

Very truly yours,

Isabelle Drewelow
Trademark Coordinator
IDG Books Worldwide, Inc.

(Note: It is really a mailing list, and not a chat room, but the fact that they think it is a chat room scares me even more)

Re:Here is my potential reply... comments?

Yes. This is very good, and along the lines of what I was thinking, but I would expand on this statement:

-------snip--------
That message is really nothing more than a suggestion that someone publish a book entitled "Sendmail for Dummies".
-------snip--------

Here's my version:

-------snip--------
That message is really nothing more than a suggestion that someone, either IDG or another publisher, publish a "...for Dummies" style book. As you know, your name recognition is exceptional, thanks to the great series of books that you have published.
-------snip--------

RP

Suggested response

I suggest a response along the following lines:

Dear Ms. Drewelow,

Thank you for your letter of October 28. While we understand that it is your job to defend your trademark, we feel that you are asserting an overly broad right to a common phrase in the English language that was in wide use before IDG ever existed as a corporate entity. We do not choose to use the phrase "XXX for dummies" because IDG made it popular; it was a popular phrase before IDG existed as a corporate entity. For this reason, your task of preventing the dilution of the term is probably hopeless; the term is quite diluted already since so many people use it without thinking of IDG books in any way.

While the courts have limited commercial speech, we are not engaging in for-profit activity here and freedom of speech is an important value to us. As private individuals we do not believe that you, or the Congress, has the power to stop us from using the phrase "for dummies" however we choose. We therefore respectfully decline your request.

We assure you that we will not compete with IDG by publishing a book with "... For Dummies" in the title, and we will not in any way imitate the "look and feel" of your "For Dummies" book series.

Re:Here is my potential reply... comments?

If you're going to send that, then I suggest reading "Civil Actions for Dummies"... several times... all six thousand volumes.

In case you haven't noticed, these people are attorneys. They are paid hundreds of dollars an hour by corporations like IDG just to stomp on people like you. Just writing that letter probably cost IDG a cool $300. If you get pissy with them, then they will drop the hammer on you.

They honestly don't give a shit if you're polite to them or not. What they care about is protecting and preserving the intellectual-property rights of their client, IDG. Snippiness is completely irrelevant to them.

If you want to avoid a long, prolonged flamewar with a lawyer -- and when lawyers flame, they do it in ways that your pocketbook will feel -- then I suggest writing back a polite, professional letter.

This is not Usenet, and you do not get style points for creative flamage.

Ulysses for Dummies

This isn't the first time IDG's lawyers have gotten too big for their britches. See the parody site Ulysses for Dummies [bway.net].

(The page linked to here is a description of an e-mail exchange with IDG's lawyers; at the bottom of that page is a link to the "offending" site.)

Nonsense: IDG does not have to do this

They are demanding that a comment with the title "SmartHost for dummies" be stripped from the archives of a mailing list. Do you think that the 1st Amendment has been repealed?

Now, if someone produced a book with a yellow cover called "SmartHost for Dummies", yes, that would be a trademark violation.

Very poor

Why do you feel the need to respond to them so immaturely? What they sent to you seemed polite in every way. Honest mistakes happen all the time; most mature adults have learned to repond to them graciously rather than in a childishly antagonistic way. I'd suggest politely pointing out that they were mistaken in that it was just a message title (as well as a request for such a book to be published) and not a chat room. Do you really expect to gain sympathy from anyone above the age of 12 by displaying such juvenility?

Cheers,
[e-mail]

Re:Here's the law in question ...Sorted!

Looks like the key sections are 1125 [cornell.edu] and 1114 [cornell.edu].

• 1125(c) Remedies for dilution of famous marks
  • (1) The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to ...etc
  • (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.

1125(c)4(B)... They haven't got a leg to stand on.

Re:They don't have much choice, do they?

Perhaps I'm giving the US legislature too much credit, but I won't believe that "failing" to take action agains this kind of use of a trademark (it's a conversation, not a publication -- that it was logged on the web doesn't change that) could possibly loosen the trademark holder's grip on the mark.

I think what happened must be that this Isabelle Drewelow, who sent the cease and desist order, didn't understand the nature and intent of the web page she had found by typing "for dummies" in the AltaVista search field. She must have though there was genuine trademark infringement going on.

The best course of action would be to respond calmly, politely and informatively (even dropping the sarcasm). Not everyone who doesn't grok the 'net deserves our ridicule. (Whether such people should be cruising it in search of trademark violations is another matter.)
--

Re:Here is my potential reply... comments?

#include

For the most part I agree with your statement. However, while, as previously stated I'm not a lawyer, I'd have to say that common carrier status is really, really tough here because we are talking about a mailing list. AOL lost this battle at least once already.

Although there is recourse. He could simply claim fair use, which is protected to some extent under trademark laws. For example, I could write a review in magazine about a Corvette, or even compare, say a Dodge Viper to a Corvette, and neither DaimlerChrysler nor General Motors could sue me for trademark infringement because I was reviewing their respective products. Even if I stated that I thought that GM should produce say a "Corvette Lite" which would be low-end version of the Corvette to combat the Mustang, for instance would not be infringement for the same reason. This line of reasoning could be easily extended into saying that the author of the message thought that IDG should produce a "Sendmail for Dummies (R)" is the same thing.

You do have to see it from their point of view, though. Xerox (R) has had the same problem for years because people say "why don't you xerox a copy of that for me." When things become common usage, the company can lose their trademark rights. The message from IDG mentions Aspirin. Aspirin used to be a trademark of (I think) Bristol-Meyers but they lost that because people began referring to any headache pills as aspirin. Now anyone and their mother can all their product aspirin.

AOL is a trademark of America Online, Inc. Dodge, Viper and DaimlerChrysler are trademarks or registered trademarks of DaimlerChrysler Corporation. Corvette, GM and General Motors are trademarks or registered trademarks of General Motors Corp. Mustang is a trademark for Ford Motor Company. IDG and ...For Dummies registered trademarks of IDG Books. Bristol-Meyers is a trademark of Bristol-Meyers-Squibb. Xerox is registered trademark of Xerox Corporation. Sendmail is a trademark of Sendmail, Inc. and/or Eric Allman. Surak is a trademark of Paramount Pictures. Please don't sue me, I'm very poor. :)

Noncommercial use is NOT dilution, period.

15 U.S.C. s 1125(c) governing dilution provides at subsection (4)(B): "The following shall not be actionable under this section: . . . Noncommercial use of a mark." End of discussion.

Hopefully this can be easily resolved ...

First off, I just want to say that this is the most reasonable lawyer-letter I have ever seen. No threats. No references to "treble damages."

They explained the issue in non-threatening, plain english, and requested -- not demanded -- that the site be changed.

Such civil behavior should be commended! Especially in this day and age.

What is at issue here is the 1996 Federal Trademark Anti-Dilution Law -- the sort of law that makes lawyers' eyes dance with visions of long trials and big paychecks. It's a very vague law.

This law provides special protection to "famous" trademarks -- and the definition of "famous" is left to be battled over in court.

In summary, you are perfectly free to start a company to manufacture "Apple Golf Balls" without infringing on Apple Computer's trademark, because, basically, Apple's holds the trademark for the word "apple" in computer products/services, but they never manufactured golf balls. That's why "Clue Computing" can coexist with Hasbro's "Clue" game. Clue Computing trades in computer products/services, while Hasbro trades in board games. Trademark ordinarily refers to the combination of a mark, and a specific trade.

Under the new law, this does not apply to "famous" trademarks. So, you could not start marketing "Kodak Golf Balls", because the court would rule that since the trademark "Kodak" is so deeply associated with the Kodak film company, the word "Kodak" on other products, such as golf balls, would create market confusion. If you saw "Kodak Golf Balls" in a store, you would probably think, "When did Kodak start manufacturing golf balls?"

What IDG is claiming is that their "... for dummies" trademark is now so famous that anything in the world with "... for dummies" will cause market confusion with their line of books, etc.

Whether this is true or not would be a matter for the courts to decide. However ...

One provision of the 1996 law states that in order for use of a famous trademark to be dilutive, the defendant must make commercial use of the mark. I don't think that IDG would be able to prove this, because I don't think that it happened.

They were under the mistaken impression that the "... for dummies" title was the name of a chat room. If this was the case, then they MIGHT have a case, if they could show that the person who created the chat room was attempting to draw in readers, by using the public association between the "... for dummies" trademark with the idea of a tutorial book aimed at beginners, and was providing a tutorial work on Sendmail.

However, this was a simple message in a message thread, where the author idly wishes for a "Sendmail for dummies" book, that does not exist. There's no commercial use of the mark. The author of the article wasn't using the mark to draw in readers, or to sell products.

So I think that IDG isn't justified in pursuing the matter.

Reference:

http://www.tms.org/pubs/journals/JOM/matters/mat ters-9904.html

New book

I guess now is as good a time as any to mention my ironically titled manuscript, hitting the shelves at a store near you next week:


"The complete idiot's guide to copywright law for dummies in a nutshell in 21 days and 24 hours."


Let the cease & desist orders begin :)

Re:no more for me...

I am against IP laws, but not trademark laws.

I am *completely* against mis-use of the trademark laws, and a lawyer who so blatantly misrepresents them should be disbarred. Trademark law is available on-line, so even non-lawyers like us can discover relevant sections at this site. [cornell.edu]

Check out Sect 1125, in particular the very end:

(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.

This qualifies under both (B) and (C) as *non*-actionable.

They don't have much choice, do they?

Much as I dislike this sort of "picking on the underdog", as I understand dilution, IDG doesn't have much choice. According to the law (again, as I understand, and IANAL) IDG has two options: they can defend their copyright against any and all comers, or they can lose their right to stop anyone from using the copyright -- even blatant abuses (someone else writing and publishing a For Dummies book, for example).

This is exactly the sort of zero-discretion legislation that's making things so much fun in the workplace and school. "Hi, we're human, we can think, but would prefer not!"

And, besides, you have to admit that this is a very polite message. "We understand why you're doing this, but we can't let you do this, and here's the reasons why. Can we be amicable about this?" (Well, amicable for lawyers, anyways.)

I can't wait

I'm waiting for their upcoming "...for Fucking Morons" series.

Moderate me down. I'm off-topic and using foul-language.

Re:I'm with IDG on this one.

The point being that the author of the post was referring to IDG`s `..for dummies` series when he wrote it. So IDG don`t really have anything to complain about, as they would have realised if they`d actually read the article. This is probably some generic mail that gets spewed out every time their search engine gets a hit on "for dummies".

Here is my potential reply... comments?

Hi. It was me who got The Letter.

Here is what I am probably going to reply with. [skylab.org]

Any comments on that?

I agree with them... to an extent

I do see their point... but what they're trying to do is restrict the use of '...for dummies' in conversation, i.e. in common speech. The use of '...for dummies' in the mailing list does not smack of deliberate infringement - simply of using the phrase to indicate the level at which the content is aimed.

In other words, '...for dummies' has become incorporated into our language to some extent. It's pointless to try to combat that by preventing people using it as a generic term in their everyday lives.

I could suggest that general use of the term amounts to free advertising, but I'm sure IDG regards trademark erosion as too great a threat to consider that an advantage.

SA.

Re:Why does this not surprise me?

Fair Use and Parody both apply to copyrights, not trademarks.

Surfing the net and other cliches...

Slashdot in trademark violation

Take a look at the subject of this news story.
'IDG and 'Trademark Dilution' For Dummies'. And this is alot more like a chat room than the mailing list.

Here's what you do...

...change the name of the forum to "Hitchhiker's Guide to Sendmail". (With the words "Don't Panic" in the subject line in large friendly letters.)

Maybe Douglas Adams isn't such an asshole.

--JT

This isn't unprecedented for IDG

A rather less politely-worded letter was sent to the maintainer of Ulysses for Dummies [bway.net], a spoof of Joyce's novel, early last year. The hilarious and thorough reply [bway.net] concluded, 'Frankly, we're going to keep the site just as it is, and the successful IDG Books " ... for Dummies" series will just have to learn to live with it.'

A website that violates every trademak

Point idg to

this [fuckingsucks.net] or maybe this [fuckingsucks.net] or quite possibly this [fuckingsucks.net].

You get the picture.

Fill in ad-infinitum with the trademark of your choice and send the resulting url to any lawyer who is giving you a hard time, and tell them to shut down that site first.

Re:Here is my potential reply... comments?

oh .... but you have to include a URL to this slashddot thread ....... just so they can see what PR-dummies they are ....

Re:Here is my potential reply... comments?

First, I'm not a lawyer. So please ignore anything I have to say.

That aside, I really doubt these folks want a fight. They are legally obligated to protect their trademark. What are they going to get out of suing you? Bad publicity and lawyers fees?

So give then an excuse to back off. That way, they can say they did their bit to defend their trademark, and they leave you alone.

The obvious excuse is to invoke common carrier status. Point out that you do not create this content, you are simply providing a medium to disseminate it. If you start editing/deleting messages, you just lost that status. Which would be very bad from a liability point of view, because it would open you to lawsuits just like this one.

You might also want to remove the reference to "trigger-happy lawyers". No need to antagonize 'em. Don't assume they're the enemy until they prove it.

It's pre-diluted.

I'm sorry, but "...for Dummies" was in the vernacular before 1991 - that's what made it popular. It's a pre-diluted trademark.

This doesn't make the need for them to defend it less pressing, naturally. It does make their defense of it more reprehensible, in my eyes:

"That phrase you used to use? Stop using it. It's ours, now. Thank you."

DO NOT REPLY! for Dumies...

Ignore them. Many of the other comments seem like good advice. They will look closer before they want to take it to the next level then realize their mistake.

If you remove it you are essentially agreeing that you did something wrong.

No matter what you do, DO NOT send that written assurance. Once you send them that they will actually gain legal grounding to prosecute you in a court of law. (If you happen to slip up in the future)

Besides, after all the backlash they get from this article they may think twice about it.

Too bad the "...for Idiots" books are doing a good enough job of diluting their trademark. (For a while I thought they were published by the same group)

Re:Here is my potential reply... comments?

Yes, I would even be more polite.

Reason: Lawyers don't like to be insulted. Although others feel they would not be nearly as polite, I caution you to be even more so. Both security and lawyers DO NOT have a sense of humor.

First: change the subject.
IDG has too many lawyers will probably be offensive. Maybe "Trade mark problem" or something that is just a topic and not a statement.

Second: It's good up to the point of since anyone else who published that title would get a rather nasty letter from IDG's trigger-happy lawyers)
Again, this is insulting. Yes I'm being paranoid, but if you don't want to go to court, you should be paranoid.

The rest looks good. But again, others will probably disagree with me and say "tell them to blow me" but if you just want to be left alone, I would be as serious as possible. Politely tell them the mistake, and see if you can work things out. If you want to make a scene, then you better becareful or they will sue you.

Steven Rostedt