Trademark infringement claim: "100 BOOK CHALLENGE"
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All of this is "I am not a lawyer."
I just received the following letter: Warning: PDF
My initial feeling is that they actually have a case. They have a product (see http://www.americanreading.com/products/100bc/) called "100 Book Challenge" and they sell it. They have a registered trademark for it. Groups on LibraryThing with the same name, and somewhat similar conceptual domains, could be a potential problem.
I say this having completely ignored numerous letters of this type, but with no case. Authors send us letters saying we have to take down books because they didn't get royalties. Publishers tell us to take down reviews for copyright infringement because they don't like the review. We've even had people demand personal details on members because they don't like a review. All this we ignore, as they have no case, and if they raised an actual case—they never do—we'd pay lawyers to swat it down again. This situation is, I think, different.
As a member-created group, we disclaim responsibility, but I believe once the matter is brought to our attention, we can become responsible. I very much doubt they've sent notices to members.
For now, I have renamed the "100 Books Challenge" for 2009 and 2010 as "Ten-times-ten Books Challenge."
1. If someone can tell me they have no case, and my lawyer agrees, I'll fight this tooth and nail.
2. If not, I don't think renaming these two groups is a major price to pay for not being sued. Trademarks are about words, not ideas. We can rename the group "Read 100 Books" or "1000 Squared Books Challenge," etc.
Off the top of my head, I'd say they're probably in the right. They also didn't seem to be that rude about it. Despite the fact that it's a user-created group, I'd say, especially with the Challenge groups having quite high prominence on the site (through better Groups tab and the fact that they're regularly being recommended to new members as a gateway to interaction on the site), that it may be politic to pick your battles and just rename this group to something that doesn't pee on anyone's parade. Save your energy for those annoyingly rude authors that send you letters telling you to remove their birthdates or the works that members have catalogued.
How close does a name have to be to count as infringement? Is 100 Book Challenge the same thing as 100 Books Challenge?
It depends on whether there's a chance of confusion. Lexis (a legal database company) sued Lexus when the cars were first introduced. In that case the courts decided that the public was unlikely to confuse a legal database company with a car manufacturer. The chances of confusion are much higher in this case. I suspect the lack of/addition of an 's' is not difference enough.
I am not a lawyer, but I work with lawyers in real life.
Lawyers are expensive so unless LT has a friend or member who has trademark expertise and wants to do the work for free or cheap, I'd say rename them all "Square Root of 10,000 Books Challenge" and move on.
We've got more important ponies we'd rather have you sweating over :)
Mind you, I am not a member of any of these groups.
2> They also didn't seem to be that rude about it.
I know it's probably just standard legal-speak, but starting their claim off with "As you may be aware" seemed pretty condescending (if not outright accusatory.)
So is naming my thread merry10's 100 Book Challenge going to infringe?
Is LT selling a product called 100 Book Challenge? Does LT predicate their marketing on the 100 Book Challenge?
Isn't the thread entitled 100 Book Challenge 2010 anyway?
I respect intellectual property, but a casual user group's use of three words used in a perfectly ordinary way should not infringe. Is there a Twilight group, an HP group? Should their names be changed?
Will the 1001 Books To Read Before You Die group also infringe?
Hope some IP experts can shed light on this.
I am not a lawyer, and neither am I member of the groups, but...
The concepts are not unrelated. I reckon they have a case. Finding out how good their case is could be a very expensive process, regardless of the outcome.
It's not going to take a major change to the group name to remove the problem.
If it were my call, I'd be changing the name.
IANAL, but I think they probably have a case, and it's not worth the energy to fight.
"I Dare You To Read 100 Books in 2010"
"Dare To Read: 100 Books in 2010"
"Book Challenge: 100 Books in 2010"
"I'm Going To Read It: 100 Books in 2010"
"Read A Book Challenge: 100 Books in 2010"
"Book Challenge Countdown: 100 Books in 2010"
"10 Books A Month Reading Challenge"
"100 Books In A Year Reading Challenge"
I was thinking the same thing as Merry in post 7. Even if you change the group name, all of the threads under that group will still have some mixture of 100 Book Challenge in the title. Is that infringement as well? Is there a way to change all of the names of all of the threads?
I would think a forum where individuals get together to discuss things would not be able to be considered trademark infringement. We aren't here to make money or to sell anything. We are here to discuss things that are already out in the market (books).
The Whole thing is just weird.
Makes me glad I am doing the 1010 Category Challenge this year instead. :)
Oh wait there isn't a 1010 Category company is there?
I'm not a lawyer but I've worked as an executive in a small company where these type of cases came up.
I don't think it matters if they have a case or not, it matters that they are willing to go to great length to protect their copyright (and rightly so). They are also not being jerks about it (from the PDF) so I think it would be very wise of LT to change the name of the group instead of spending tons of money on what will become a "pissing match" where only the lawyers win.
I think that at this point, after sending the letter, if there is no action they HAVE to sue you otherwise it would constitute as not protecting their copyright and would act against them when a legitimate claim comes up (remember Johnson & Johnson suing Bob Geldof and "Band Aid" for copyright infringement?).
"Sit Around Reading 100 Books While I Buy 100 Books Challenge"
"2010: Add a zero to the end and take away the twenty books challenge"
This is not legal advice, but general information about trademark law:
The touchstone of trademark liability is if there is consumer confusion. Similar products, similar markets, and so forth. Here there are some similarities (books, encouragement of reading), but also some significant differences (children's books and reading level classifications sold, as opposed to a general (adult) audience Internet discussion group without selling or classifying books; no educational market).
There are two additional issues one might wish to consider.
First, fair use protects use of words in their English-language appropriate context. You can still use "apple" to describe apples, despite the computer company's famous and ever-expansive line of products. I would certainly want to look into the potential fair use defenses available in the appropriate circuits.
Second, you should look closely at the marks themselves. A wordmark can cover many things, but can't foreclose ordinary English language usages (see above). But, after registration for a certain amount of time some kinds of challenges to the validity of the mark are not permitted. Logo marks and the like are probably not really a problem here, and some of their marks must be for that. You can search the actual marks at http://www.uspto.gov/trademarks/index.jsp .
eta to clear up one confusion from an earlier comment: They do *not* "have to sue". "Policing the mark" is important to maintaining the mark, but that doesn't require suing in all cases. If they police it (send a letter) and a reasonable argument back is made, then they could just let it go. Happens all the time.
Um, I'm not a lawyer, but I thought copyright and trademark were two different things, yet some people on this thread seem to be using copyright as though it were synonymous, which is confusing.
I'm not a lawyer either, but I think copyright and trademark (and patents) are ways of applying a similar concept. Just to different kinds of things.
17> I was one of the "some people" and I have gone back and corrected my post to say trademark instead of copyright.
Similar concepts perhaps, but not the same law. The rules/legalities aren't the same for all three, are they?
(I'm not from the US, so I may be completely out to lunch on this.)
Probably not the same law here either, but the similar-concepts thin is probably how non-lawyers could get confused.
Here is the best description I found of the two...
Sometimes it's difficult to remember that copyright and trademark, while they are both intellectual property, refer to different things. According to the US Copyright Office FAQ, copyright "protects original works of authorship including literary, dramatic, musical, and artistic works such as poetry, novels, movies, songs, computer software and architecture. Copyright does not protect facts, ideas, systems, or methods of operation, although it may protect the way these things are expressed."
While copyright covers expressions of ideas, trademark covers logos and brand names. The US Patent and Trademark Office says that "A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name."
"As we are sure you will appreciate then, our client is concerned with the use of the 100 BOOK CHALLENGE designation... in connection with it's discussion group... which encourages people to read at least 100 books in the year 2010."
that statement is... it makes me... ick. i'm totally disgusted that a user-created group that simply ENCOURAGES reading could ever be seen as a copyright infringement.
i would say that they don't have a claim they can win but one that they will fight nonetheless. LT is not selling a product that is infringing on their business, nor is LT saying something like "So you bought something from American Reading Company and you want to do more? check out this thread!"
the designation 100 Books Challenge seems pretty vague, but then again so does Band Aid.
do you mind if i send the letter and related info to my lawyer uncle who deals with patents? i can at least get you a free legal opinion...
I don't know IANAL but as the example above, the words and numbers have a meaning beyond the companies product. Also, this is a user generated group, and there are others 25, 50, 75, 250. While I can understand them dotting some 'i's' by sending this (3 years late!) I can't imagine them really wanting to have a court battle when their product does not really overlap the intention of the group.
Very true. Keeping the legalities straight in my own (unrelated) line of work is bad enough. :)
another thought: when someone bothers to trademark something like 100 BOOKS CHALLENGE, they often will also get the trademark to related designations as a way to thwart competitors. that would be something to look into in this case.
"Read More Than 99 Books But Less Than 101 Books In 2010 Not Affilliated In Any Way Shape Or Form With Read 100 Books Challenge Inc Don't Sue Don't Sue".
Well I am a member of the 2010 and 2009 groups and am bummed at the change.
Changing it to Ten Times Ten, removes it from the other # book Challenge threads, so it makes it harder to find. Its like hiding or burying it. The ones with numbers sorts to the top of the list. It used to be at the top of my groups, and so was an easy way to click into it.
Plus if you see the other numbers: 25, 50, 75, 200 you are not going to search for 100 by using words.
Also I see the URL still says 100bookchallenge as does the group ID. Are you going to have to change those too ? There are a lot of links that use the 100bookchallenge URL, will they stop working or all be changed automatically or have to be changed by the link maker ?
I am not a lawyer and don't want to see LT get sued, but can you change it to 10 squared or 10 x 10 or something with a number in it ?
also you might want to put the URL of this thread at the top of the 2 group pages with your note. It still says See XXX
100 books: 2010 Challenge
Challenge: 100 books in 2010
I supposed you could change all the number groups to the same format if sorting together is important.
Something odd has happened. There appear to be 2 Ten time Ten book groups.
This is the real group:
Without the message
This is the second one created yesterday ??:
In advance of the problem and change today ??
IANAL either, but this doesn't sound kosher to me. A user-created group is not the same thing as a product. I hope you at least consult with a lawyer before just deciding the give up.
In my opinion, those people are just a bunch of sissy-britches spoil-sports. Sheeesh!
Disclaimer, I am not a member of the group, but I do read some of the threads.
Maybe take out the word Challenge:
Read 100 Books in 2010
still leaves in the number for sorting purposes.
Surely they don't have a registered trademark on 100 and/or on Books!
A lot of the IANAL comments here--insisting that the letter-writer shouldn't win--remind me of the time I was drinking coffee with two non-lawyer friends, when, in the midst of a story, one of them exclaimed, "In my opinion that's a contract!" I stifled a laugh, and managed not to respond, "Your opinion--on this matter--isn't worth the time it took to frame the words."
40:There's an old lawyer saying. "In this life you don't get justice there's just the law."
Condescend much? Seriously, since you are an attorney, what is your considered opinion? Maybe you could offer serious advice.
I stand by my comment above, though. ;>)
100 Books in 2010? I think it should be as close as possible to the original.
40> I believe Tim was asking for our opinion, which is why he created the thread in the first place. I am assuming that he most have known, since this a book cataloging site and not a law site that most of our thoughts would purely be conjecture.
>42 Boobalack:, Practicing in a vastly different field from IP, I am woefully aware that I am ill-equipped to offer "serious advice" on this matter. Based on extremely limited, third-hand knowledge of trademarks, I'd suggest that the matter brought up by the letter-writer is not entirely frivolous.
There is another saying; "Free legal advice is worth every penny you pay for it."
So, a million members, a dollar each... hell of a 'fighting fund'.
I, too, think #44 hit the target right on.
Thank you #47. That was my uninformed opinion, too.
A very long time ago, one could be sued for claiming one product was better than another. My Daddy used to joke that he was going to build one car, name it the "Ever," and sue the first care manufacturer who claimed his car was better than ever. The point to this long story is that people sometimes get trademarks for the sole purpose of such fraud. Proving it can be difficult, if not impossible. Le sigh.
*heavy, heavy sigh*
The price of success is lawsuits. IANAL, but I think Tim's prudent name-changing might make these trolls go away.
(Couldn't resist using the acronym. It's too cute for words.)
This is not advice. Noone should act solely on the basis of this statement. (As if anyone would!!)
It is my opinion that the correspondent's client has a legitimate concern about dilution of the trademark given that the mark was registered before LT started and both parties are trading in the book services sector.
How about changing it to either 99 or 101 book challenge, since I think the "challenge" part is important in keeping it related to the other challenge groups.
If it's just a case of changing the group name then I'd say go ahead and do it. Though I think I also prefer _Zoe_'s option (see msg 44) than the Ten-times-ten that it has currently been renamed to.
Or take Zoe's and add the last part to it ?
100 Books in 2010 - I Challenge You
I am not a lawyer.
There's a legal test used for Trademark claims, called the "Moron in a Hurry Test."
Basically, would a moron in a hurry mistake the LT "100 Book Challenge" group as being a product of/endorsed by American Reading, or some such thing. It's discussed in depth at TechDirt (in fact, you can forward that CAD to Mike Masnick to get him to post a blog entry on it, complaining about how baseless it is).
The purpose of a U.S. trademark is to protect the consumer from, e.g. buying an "Apple" computer, only to not get a computer made by Apple. However, that doesn't mean that Apple has a monopoly over that word or phrase, and thus, you can buy apple sauce or Apple Bottom jeans with no problem from Apple.
The true case would be if your 100 Book Challenge was in fact in the same market as theirs. If their trademark only applied to, say, racing mules, and your usage of it applied to orthodontics, then you'd be in the clear, as just because they have a trademark on "100 Book Challenge," it does not mean that they can stop EVERYBODY ELSE from saying "100 Book Challenge."
Their claim that it will cause consumer confusion is (a) bullshit (is that the legal term?) (b) could possibly be averted by saying "This group is not associated or endorsed by the blah-de-blah company", and (c) is probably a baseless claim as according to their letter, their program is to "assist and facilitate children's reading and learning," which wouldn't apply to you, as none of your members are under 13, and as such, are at least teenagers, not children (though I would look to see the rest of their trademarks to ensure; it looks like it covers from pre-K to 12th grade).
They're probably sending this same nastygram to other people who are trying to encourage people to read 100 books, and put it in the form of a challenge to the results of a google for "100 book challenge" (which includes GoodReads).
What they're most likely doing is aggressively protecting their intellectual property, by trying to prevent it from becoming "common," and hence, losing their right to it, and using bullying tactics to ensure that people pay for their overpriced method of encouraging children to read.
I'd ask a real lawyer, were I you, but it seems like they're just being overprotective of the term "100 book challenge," and have no real case here, since you're not in a competing business.
"100 Is The Number Of the Books That Ye Shall Challenge In 2010. Thou Shalt Not Challenge 99 Books, Nor Shall Ye Challenge 102 Books. 101 Is Right Out. Amen."
**key the music**
100 books to read on the wall
100 books to read
Take one down
read it, its gone
99 books to read on the wall
99 books to read on the wall
99 books to read
Take one down
read it, its gone
98 books to read on the wall
98 books to read on the wall
98 books to read
Take one down
read it, its gone
97 books to read on the wall
>58 skittles: Would it in fact be ad infinitum? What happens when you get to zero books on the wall, do you start to put them up again?
edit: wish I could type properly.
Additionally, by this reasoning, one couldn't have groups named after other trade names, including sports teams, universitiesand other social websites.
Excuse the typos, writing this on my PDA.
There have been some great suggestions for names here. Well done, everyone. My favourite is "Read More Than 99 Books But Less Than 101 Books In 2010 Not Affilliated In Any Way Shape Or Form With Read 100 Books Challenge Inc Don't Sue Don't Sue".
So this company is selling something, right? Well, I for one will make sure that I never buy it. And I'll stomp my foot, swing my ponytail and stick out my tongue, just to prove I'm serious.
First, I wonder how many LT members had never heard of American Reading before this thread? I hadn't so I did a search on them.
I also searched for 100 Book Challenge and they were not the first to appear....hmmmmm, and neither was LT.
Seems other places have groups/projects that use the same 100 book challenge as the LT group, here are a couple of links--wonder if they've been asked to cease and desist as well??
http://www.goodreads.com/group/show/28120.100_Book_Challenge_2010 - 59k
I do like this one's take on it, they just added the + to the 100--that seems simple enough :)
I too had never heard of this company before this topic and was wondering about all the blogs out there doing the 100 book challenge did they all get letters too?
debavp, was this the one you meant?
that's it--jeez i'm a right ditz sometimes :) Thanks for catching it staffordcastle!
Is 100 Book Challenge the same thing as 100 Books Challenge?
Sounds pretty damn close to me
Lexis (a legal database company) sued Lexus when the cars were first introduced. In that case the courts decided that the public was unlikely to confuse a legal database company with a car manufacturer.
I am a lawyer*, which is probably why I constantly confuse "Lexus" and "Lexis"!
*not, I hasten to add, an intellectual property lawyer
This is honestly way over my head, and I'm not a part of either of those groups, but this situation/thread has brought up some interesting points.
If the group's NAME can get it into trademark-infringement trouble, where does it stop? So one company brought one group to our attention.... Can we turn a blind eye to all the OTHER groups, just because a company hasn't officially said anything about it? The hundreds of Twilight groups, Harry Potter groups.... If there is a group called "Harry Potter" or somesuch, are we supposed to change that name now too?
I do understand the company's point, but it brings up the question of where does it end? Are we supposed to not reference ANY book by name in a group name, for fear of this happening again? 'Cause.... that's a tad rediculous.
If we were talking about the product, we'd be completely protected. Even assuming someone trademarked a book title (which I've never seen, although we once got a letter about a trademark in a book title), you could still talk about it until the cows come home.
I am a lawyer (currently retired from active practice, and I was never really into IP when I was practicing), but I'm from the Philadelphia area, and the first thing that jumped out at me was the letterhead.
I don't know anything at all about "Camille Miller" (the signer of the letter), but this firm is one of the most prestigious in Philadelphia and is well-known and respected nationally. They're especially heavily involved in insurance litigation and I'm not sure that IP is one of their particular specialties, but they're not generally the type of firm that I'd consider "trolls" (a word used by one previous poster on this thread).
I'd go with your original gut feeling on this one, that LT might have some exposure, and not waste a lot of time and money fighting Cozen O'Connor.
Oh no, they've gotten to CurrerBell. How much did they offer you, CB? How much did it take to get you to SELL YOUR SOUL, hmmm...?
And I used to have such respect for you too. Sigh.
From Message 3
*100 Books Challenge (probably too similar)
From Message 10
"I Dare You To Read 100 Books in 2010"
"Dare To Read: 100 Books in 2010"
"Book Challenge: 100 Books in 2010"
"I'm Going To Read It: 100 Books in 2010"
"Read A Book Challenge: 100 Books in 2010"
"Book Challenge Countdown: 100 Books in 2010"
"10 Books A Month Reading Challenge"
"100 Books In A Year Reading Challenge"
From Message 13:
*Sit Around Reading 100 Books While I Buy 100 Books Challenge"
*2010: Add a zero to the end and take away the twenty books challenge
From Message 14:
*The 99+1 Book Challenge
From Message 15:
*e^πi + 99 Books Challenge
From Message 20:
*C Book Challenge
From Message 31:
*"Read 100 Books in 2010"
From Message 33:
*"Read More Than 99 Books But Less Than 101 Books In 2010 Not Affilliated In Any Way Shape Or Form With Read 100 Books Challenge Inc Don't Sue Don't Sue" sic
From Message 35:
*100 books: 2010 Challenge
*Challenge: 100 books in 2010
From Message 39:
*Read 100 Books in 2010
From Message 43:
*100 Book Double-Dog Dare
From Message 44:
*100 Books in 2010
From Message 53:
*99 or 101 book challenge
From Message 55:
*100 Books in 2010 - I Challenge You
From Message 57
*"100 Is The Number Of the Books That Ye Shall Challenge In 2010. Thou Shalt Not Challenge 99 Books, Nor Shall Ye Challenge 102 Books. 101 Is Right Out. Amen."
From Message 58 (see clever lyrics)
From Message 62/64
*100+ Book Challenge
I don't know how close is too close, but let's go for something without 100 and Challenge, unless the construction is very different, like "I challenge you to read 100 books!"
i don't think i'd give up so easily... i mean, i don't think you should drag this out into legal hell either, but there are easy steps you could take to stand your ground. ok, changing the challenge name might be easier than doing anything else, but i don't like LT being harassed by trademark happy capitalists (which is how it feels to me).
would they be happy if you added the abovementioned addendum "not affiliated with blah blah blah"? are they actually going to be satisfied with a slight name change?
like others have said, i would consult a lawyer even if it is only to find out where you really stand. you may save yourself a headache now and if something like this arises again you will know what’s what up front.
"100 books in 2010" should be fine. I like the "100" nature of the group. It's so square. But ... whatever...
You don't really need to do anything until January 25th according to the letter. Why did you change the name of the group so quickly?
ETA: And you're a business. Don't you have a lawyer on retainer?
ETA: And you're a business. Don't you have a lawyer on retainer?
Lawyers cost money. Like $300/hr.
let's go for something without 100 and Challenge
Let's not. The 100 is important. I don't think they can prevent anyone else from using the phrase "100 Books".
I'm wondering if the word 'Challenge' is really important. Could it be changed to something like
2010 Target: 100 books
or something similar?
"Ten Squared Printed Works of Fiction Or Non-fiction Gauntlet Throwdown". Clear as a bell.
But seriously, i'll add to the chorus for "100 Books in 2010".
>83 Belladonna1975: Oh good! because 99 books in 2010 would be just annoying. Not that I may get anywhere near that number, but 100 is so aesthetically pleasing.
This was the first letter from them, right?
The 2009 group was "100 Books Challenge for 2009" while the 2010 group was "100 Book Challenge 2010." It went from Books to Book. They've trademarked the exact phrase "100 Book Challenge" not the individual words or concept. The other group was around for a year without them saying anything and they do not reference it in their letter. But within 3 weeks of creating the new group using the word Book instead of Books, they sic the lawyers on you. I think all you'd have to do is change it from Book back to Books and they could go pound sand. If you want to be nice though you could call it "100 Books in 2010 Challenge." I think it's important to have both "100" and "Challenge" in the group name.
The bigger question that FicusFan asked in Message 34 is about the URL for the group. The lawyer cites the URL http://www.librarything.com/groups/100bookchallenge2010. Is that something that can be changed or not? I don't think the lawyers will be satisfied if you just change the name of the group and not the URL. If it can be changed, great. If not, I'd see if the lawyers would be satisfied if you changed the name of the group and added a disclaimer. If they won't go for it, get your lawyer's advice.
Even though we seemed to have moved on from the issue of whether to agree to their demands or not, I'd like to just draw attention to the last line of the letter:
"permanently discontinue all use"
You can't guarantee that. Especially the "ALL" part as noted earlier in this thread.
For me the word challenge is of little importance & I'd rather see it called "Read 100 books in 2010" or something similar. For the sake of consistency - for those whom consistency is important - all threads with a number and the word challenge could be changed to a similar title: "Read 50 books in 2010" etc.
I think it is important to remember that anyone making such claims may have a different agenda than the obvious, simple publicity being one. I personally would hate to see major changes done without the benefit of obtaining a simple legal opinion.
I find it interesting & possibly relevent that www.100bookchallenge.com (which seems to be an older address) redirects to the American Reading Company website (www.100bookschallenge.com on the other hand, goes nowhere.).
100 Reads in 2010
100 Books, So Little Time
And lastly, The 100 Club (or would those 700 people get all up in your business then?)
#70, Camille Miller is the chair of their Intellectual Property Practice Group and co-chair of their IP Litigation Practice Group. They've got more than 20 attorneys in that Practice Group, nationally, so, while it's certainly not their leading area of expertise, it's a strong practice area for them. She is not a general practice lawyer dabbling in this area.
While it sounds like they are simply policing their claim, it's certainly not something to mess around with.
Also, as may have been noted elsewhere, they've been using the name since 1998.
All of this makes me wonder whether any other potential landmines might be lurking in other group names.
(I am a lawyer though specializing in a different area of the law and my comments here should not be construed as legal advice.)
"100 Books in 1 Year"
"100 Books: How Long Can/Could/Will It Take?"
replace 100 with any number
I saw many listings with "100+ Books Challenge" when I did a search... how different is that from the kiddie book company trademark infringement claim? Does that name 'pass the test'?
Okay, so can we move to the question of group renaming?
Zoe's in #73 is the clearest IMO (although I love some of the other more obtuse suggestions).
Disclaimer - I've not made it to the 100 yet but hopefully will eventually graduate there from the 50 so I'm not entirely disinterested.
I really don't mind a name change: it does seem the easiest way to stop any potential argy-bargy (real or threatened), and hell, it's just a name. So long as we're clear in the new title what the group is about.
I'm happy to go with what seems to be the majority so far: bring on "100 books in 2010"!
Getting Site Talk to rename the group seems a little unfair though. I'd put the question to the people IN the group.
#99, I believe that the 2010 group with the name in question has 5 members.
Anyone actually in the group have a view on any of the suggested (re)names?
And here's the thread for the group members who should be debating: http://www.librarything.com/topic/81403
#102, thanks for posting that, KingRat. I was looking at this group (which has only 5 members, to my surprise):
#103> Hey, can't we combine groups nowadays? This might be a chance to do test that out! I'd say it was just a case of one group creator not realising the other group had already been created.
I'm with BookLizard in #89. Call it "100 Books in 2010 Challenge".
(Oh, wait, I never do these challenges. Let's call it a suggestion from a dispassionate observer.)
Now we have tagging on groups, I don't think it's entirely necessary to include the word challenge in the name. I'm still in favour of Zoe's suggestion of 100 books in 2010.
As per Noisy's post above, I am not a member of that group so do not have a vested interest but think this option remains closest in spirit to the original.
Edit to make a little more sense
"1 Legal Challenge In 2010"
Admittedly, it loses something without the 100 and the Books, but at least it keeps the Challenge. And it's accurate.
Why necessarily "100"? Do them one better: "101 Book Challenge". (A silly milli-reader longer - 101!)
Tell them to go fuck themselves, then change the group name to:
"100 Books Challenge: LEGAL DISCLAIMER: This group has nothing to do with the product called 100 Books Challenge owned by the company American Reading. Anyone who is confused by this is obviously retarded or acting with malicious intent."
Alternatively, you could say: "This group thoroughly endorses all products called 100 Books Challenge produced by American REading."
Then send them a huge bill for your marketing and advertising services, along with a letter from a lawyer threatening legal action if they don't pay up.
Meruhcans and their lawyers. Jeez.
Being a member, I posted in the other thread, and will post here that of the options, I prefer 100 Books in 2010. The challenge is not really needed.
I kinda like XxX Book Challenge ... but that might give people the wrong idea (thats read 10x10 BTW :P)
I looked up "challenge" in a thesaurus, and I saw this word: "defiance."
100 Book Defiance, anybody?
Also, does a name change change the URL of the group?
Also, also, I looked up their marks in USPTO. Here are links:
http://tess2.uspto.gov/bin/showfield?f=doc&state=4002:s44eg0.2.1 (educational services, namely a reading program for pre- kindergarten through secondary school students and a program for assessing the level of difficulty of books as part of a reading program.)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:mq3qgc.3.1 (Children's books; Skill cards featuring reading exercises; Folders; Printed curriculum materials for school administrators, teachers and adults to conduct a reading program and to teach reading to students from pre-kindergarten through secondary school.)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4009:mk4jqr.2.1 (children's educational software; educational software for tracking reading skills.)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4006:cvfdpu.2.1 (Children's books; Skill cards featuring reading exercises; Folders; Printed curriculum materials for school administrators, teachers and adults to conduct a reading program and to teach reading to students from pre-kindergarten through secondary school.)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4004:85nlr7.2.1 (children's educational software; educational software for tracking reading skills.; Children's books; Skill cards featuring reading exercises; Folders; Printed curriculum materials for school administrators, teachers and adults to conduct a reading program and to teach reading to students from pre-kindergarten through secondary school.)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4007:3l0njq.2.1 (children's educational software; educational software for tracking reading skills.; Children's books; Skill cards featuring reading exercises; Folders; Printed curriculum materials for school administrators, teachers and adults to conduct a reading program and to teach reading to students from pre-kindergarten through secondary school.)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4010:n4cp5o.2.1 (educational books, namely, books for children that assist them learning how to read.)
http://tess2.uspto.gov/bin/showfield?f=doc&state=4005:9kokaq.2.1 (skill cards featuring reading exercises; folders; printed curriculum materials for school administrators, teachers and adults to conduct a reading program and to teach reading to students from pre-kindergarten through secondary school.; educational services, namely, a reading program for pre- kindergarten through secondary school students and a program for assessing the level of difficulty of books as part of a reading program.)
Now, again, I'm not a lawyer, but it seems that they're REALLY bullying over this matter and being overly aggressive in protecting their intellectual property. I don't see how the LT group, which I assume is a group in which each member is challenged to select and read 100 books in no set order or curricula or reading level within 365.25 days, and discuss the books they read. There are no incentives, prizes, or commendations other than self-satisfaction or animated GIFs posted by others.
I doubt that even a moron in a hurry would be confused by this, and assume, after reading the DESCRIPTION of the group, that it had anything to do with an educational program designed to encourage children to read.
I still say that LT doesn't need to succumb to this as LT is not in a competing market with American Reading Company.
Also, also, also, it seems odd that nobody's mentioned anything about Trademark infringement here: http://www.goodreads.com/group/show/28120.100_Book_Challenge_2010
But, GoodReads is MUCH lower on the Google results than is LT.
Also, also, also, also, w.r.t. TM infringement, there would be a stronger case if a group was called "Facebook 2010" or "GoodReads 2010" or maybe even "Amazon 2010" as LT is in the same/similar market as these sites.
Here is the reply I recieved when I contacted American Learning Company's CEO by email:
As a fellow reader and celebrator of communities such as the one at
Library Thing, I was reluctant to ask you to stop using our name. We
haven't asked the 50 Book or 75 Book Challenges to do so, but
LibraryThing.com appears to be a commercial website. We are a group of
urban educators who started a reading company 12 years ago to help
ensure all children learn to read, regardless of neighborhood. For the
first 5 years, our company was called 100 Book Challenge. We have
invested so much time, money and energy in our brand. To see our exact
name pop up on Google from a Library resource company was concerning. I
hope you'll understand our position and forgive us.
CEO, founder, 100 Book Challenge, American Reading Company
Her email is: jhileman AT americanreading.com should anyone else wish to express their displeasure - politely of course.
It seems like she doesn't really understand what LT is--a "Library resource company"? I wonder whether there's any hope of having the whole thing dismissed as a misunderstanding, especially if more members write to express their concern.
114: maybe someone should politely ask them if this is really the sort of publicity they want?
I always encourage folks to submit these kinds of C&Ds to the Chilling Effects Clearinghouse, http://chillingeffects.org/ .
Notice: I am affiliated with Chilling Effects &, among other attorney/researchers, do research based on the database, looking at the character and nature of publicly available details. (Personal identifying information is redacted.)
115> LT does sell resources to libraries. So that actually makes a kind of sense.
But from the looks of message #114, it looks as if they're only worried about the exact phrase "100 Book Challenge". In which case, "100 Books Challenge" might just be the simplest way to go.
But the 100 Book Challenge group doesn't sell anything or make a profit.
lquilter's link is interesting: "Trademark rights protect consumers from purchasing inferior goods because of false labeling. If no goods or services are being offered, or the goods would not be confused with those of the mark owner, or if the term is being used in a literary sense, but not to label or otherwise identify the origin of other goods or services, then the term is not being used commercially." No one is accidentally going to give money to LT for the 100 Book Challenge when they were actually looking for the American Reading Company's 100 Book Challenge program.
Likewise, the part about nominative fair use:
"To invoke this defense, the defendant must prove the following elements:
* his/her product or service cannot be readily identified without pointing to the registrant's mark
* he/she only uses as much of the mark as is necessary to identify the goods or services
* he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant"
As we've seen, it's not that easy to come up with other phrases that get the idea across this simply (Though if "100 Books Challenge" were considered sufficiently different, that would be fine).
What I got from the letter from American Reading Company is they have spent 12 years building an identity.
Trademark law as has been pointed out needs to not be confusing. Changing Book to Books does not stop that confusion.
Renaming the forum to any of the many names suggested can stop the confusion.
The "2010 Read 100 Books LT Forum" without any mention of challenge, or something that has the Year, and LT displayed and still no mention of challenge would I think set out to do what ARC has asked, and the market they play to should not confuse the issue. Especially if Challenge is no longer displayed. Their request seems reasonable. And in the spirit of the community of LT, trying to encourage all forms of readers, why can not LT be the bigger person in the playground and concede the point?
They were here first, they are working on a shoe string it would seem and trying to do something good. Let them have their little piece!
From There website:
To ensure every student is reading on or above grade level.
Our strength is in our diversity.
American Reading Company is setting a new standard for reading achievement in the classroom and in the home. We are helping improve reading scores for schools and school districts. We are helping to improve self-esteem and confidence of young aspiring readers and providing tools and resources to help teachers and administrators succeed.
Created by teachers, curriculum specialists, and literacy activists, American Reading Company’s systematic approach to fostering independent reading is turnkey, intuitive, and proven.
These seem like nice people!
LibraryThing, however, does sell things and, one hopes, make a profit. Since "100 Book Challenge" is being used within LT, though not in an official capacity, my personal layperson's opinion is that the "no goods or services are offered" defense doesn't work.
Really, since we now have group tagging so that the group can still be easily identified as a challenge, what's wrong with "100 Books in 2010"? Or even "Challenge Yourself: 100 Books in 2010"?
I'm as opposed to unwarranted IP grabs as the next person, but this really doesn't seem to be entirely unjustified.
As a member of the group, I'm happy with "100 Books in 2010" or something similar. The word "challenge" isn't important to me.
It's the principle of the thing, though. Trademarks are here to help the consumers, as I and Zoë said above. To bow to this sort of unjust request would be to set a horrible precedent. LibraryThing does not appear to have any overlapping business with American Reading (as all of their trademarks pertain to children's education, which LT and the 100 Books Challenge group do not do), and as such, should not have to change the name.
It would be similar, though, not the same, if somebody started a business that sold book-related knickknacks for the purpose of decorating the room in which you kept your books in your home or place of business, and called them "Library Things." People aren't going to confuse baubles with book catalogs, no matter how much of a moron, or in how much of a hurry, and as such, that usage of the term would be allowed, and even trademark-able.
This is how there are companies like Apple Inc., Apple Bank, Apple Corps (the music guys), the Apple Cup (sporting event), the Apple Daily (newspaper), Apples to Apples (card game), and Apple Bottoms (clothing line), which are all separate entities unrelated to one another.
What Tim SHOULD do, is file for a trademark for "100 Books Challenge," under the current usage as it has w.r.t. LT. Then, he can say to ARC, "take it up with the USPTO, THEY granted me the ®."
despite the other suggestions that I've made
I would "vote" for either:
100 Books in 2010
Challenge Yourself: 100 Books in 2010
Challenging Myself: 100 Books in 2010
Yes, I know that trademarks for similar words can exist in different domains -- the question is whether "challenging yourself to read 100 books in a year" is sufficiently different from "challenging students to read 100 books in a year" that nobody could possibly confuse the two. And, not being an IP lawyer, that's not something that I find self-evident.
>123 aethercowboy:, To bow to this sort of unjust request would be to set a horrible precedent.
The entire issue here is whether this is an unjust request, and that is not determined by anybody's personal opinion (unless someone here wants to fess up to being a federal judge)--it's determined by the law and the courts. It isn't about the principle of the thing; it's about exposure to liability. And in that regard, it makes sense to listen to one's own retained business counsel in preference to the objections of the effectively anonymous (though intelligent, articulate, and well-meaning) denizens of the internet.
I've read the description as given to USPTO and available on their site, and I find the two programs to be vastly different.
ARC's 100 Book Challenge involves buying a kit for your class (which runs in the 1k's), and having your students select from a list of books categorized by the reading level indicated through the program. In addition, the school that participates in the program also has various read-ins, and other related events. Likewise, the students get incentives/prizes, like little medals and baubles and whatnot. The target demographic is pre-K to 12th grade.
LT's 100 Books Challenge is free, noncommercial, and open to all LT members, paying or not. LT does not get a dime extra if 10, 100, or 1000 people participate. It's not officially sanctioned by LT. It's target demographic is everybody that is an LT member and wants to challenge themselves to read 100 books in a year. Due to the COPA, this means that people who are participating in the 100 Books Challenge are at the very earliest, in 6th grade (unless they've been held back a few grades, but then the likelihood that a 13+ year old in 6 (or less)th grade would be using LT to challenge him- or herself to read 100 books in a year is very low. Likewise, there's no limitation. If I want to read "The Cat in the Hat" or "Everybody Poops" followed by "The Cat Who Walked Through Walls" and "Gravity's Rainbow", I can. I don't get a medal. I don't get a frilly banner. I don't get a free pizza from Pizza Hut (oops, wrong program). At most, I get a congrats message from another user, and maybe a gaudy animated GIF.
Granted, I'm not an IP lawyer, just an armchair IP enthusiast, but I believe that if one were to present a description of the two programs to a disinterested third party, the only similarity they would find is that they both challenge somebody to read 100 books.
I really like your last two suggestions. It would allow all the challenge groups to use the same name format and make them easy to find as a group in search!
again, i don't see how LT is infringing upon them. yes, LT sells something related to reading: a catalog tool. all you have to do is look as far as what requires a paid account to see that they are NOT selling the forum, especially member-created threads. someone can sign up for LT and not catalog a single book and they are still free to use the forum. conversely, a user can pay to catalog 5000 books and never once even look at the forum. it seems extremely clear that there isn’t any actual market competition between ARC’s program (again, marketing actual products to children and teachers) and a bunch of LTers aiming to read 100 completely random books of their individual choosing for no purpose other than to see if they can and to talk about it with others.
as for LT being a “Library resource company,” here i am assuming they are referring to LT for Libraries, which has almost no relation to the LT forum, and certainly not this particular challenge thread.
i get that they do good by encouraging children to read and that they deserve their slice of the monetary pie that is protected from infringement. but they don’t deserve to suggest legal action against an organization that isn’t actually competing with them. when LT starts selling us reading packets and calling them 100 Books Challenge, i will personally call ARC and inform them their intellectual property is in danger. until then, i think they need to chill. and we need to set a precedent that we won’t be bullied.
of course, this is my very unlegal-savy opinion. when i worked at a law firm i looked at dead people's property deeds and dead people, in general, are much easier to deal with.
I used to be a zombie hunter to pay for college. Dead people are not always easier to deal with...
i correct myself: dead people are easier to deal with when it comes to property, be it physical or intellectual. they are much much harder to deal with when it comes to snacking on brains....
Vegan zombies are worse!
It's all about GRAAAAAAAAAINS to them...
We now return you to our regularly scheduled thread.
Regarding #114 – it sounds like they just don't understand what LibraryThing is, or that the 100 Book Challenge group is just that – a discussion group.
Is it worth Tim contacting Jane Hileman directly to explain those two points, and then establish exactly what it is that she's objecting to? (IANAL, so there may be legal reasons why this is a bad idea.)
Or … put a sticky at the top of the group threads noting that the group isn't affiliated with the ARC program, but that we enthusiastically endorse what they do (as a couple of people have noted, they do seem like a good company).
Just my 10¢ (rounded up to cover currency conversion costs).
Reasonable people, attorneys, and judges will disagree on these matters -- one reason why trademark litigation is so expensive is that it is not as predictable and obvious as one might like.
While I would personally be disinclined to change the name of the discussion group,* I'd like to suggest a possible name change. It seems to me that "challenge" and "books" and "100" are all core elements and are individually descriptive and therefore usable. But mixing up the order and varying should clear up any confusion, as can additional punctuation.
So, "100 Book Challenge":
* change book to books (which didn't cause a problem in previous years)
* change the order: "challenge 100 books"
* add punctuation: "challenge: 100 books"
* add 2010 as appropriate: "2010 challenge: 100 books" or "challenge: 100 books in 2010"
* add a disclaimer to the description. I would *not* add "an endorsement" of any sort of their product.
* Again, this is not legal advice, even though I am an (intellectual property) lawyer. (Not as nice an acronym as IANAL: IAAIPL. Or, TINLAETIAAIPL.) I haven't examined the particulars closely enough to render it qualified as "advice".
>133 aethercowboy: Tell your wife to beat you tonight. That was the worst pun in living memory.
1> I am not a lawyer, but from my experience with legal issues in the USA, and with copyright issues, this letter is actually quite friendly. From the information available in the letter, and from the second link, I would safely wager the house and my art collection that you would lose a challenge, hands down. Check with your legal counsel, of course, before taking a layman's advice.
The other issue to consider is the possibility that you may end up paying their legal fees on top of your own, if you lose. If their counsel is 350/hour for litigation, you will be swallowing tens of thousands of dollars, for a title to a book reading challenge. Do the math.
In the future, I would suggest doing a trademark search before using any phrase for the LT site, just to be safe. (These folks were nice. The next group may not be so nice.) This is the advice given to me by my stateside legal representative, in matters such as these.
(Edited to change 'copyright' in third paragraph, to trademark, as it was pointed out that the reference was incorrect, which it was.)
In the future, I would suggest doing a copyright search before using any phrase for the LT site, just to be safe.
That seems like a pretty big step. "Before creating a new group on LT, please do an exhaustive search of the USPTO, as well as your local Patent/Trademark office." How many users are honestly even going to (know how to) do that?
This kowtow manner towards rights a person does not hold over a word, phrase, or other presumed imaginary property will only strengthen the challenge groups Chilling Effects and the EFF and other parties who are actively fighting for the rights and freedoms of people to not have to fear massive litigation from money-hungry conglomerates or misguided companies.
It seems that either (a) ARC doesn't realize that they don't own a monopoly of the phrase "100 Book Challenge," or (b) they have no understanding of its use w.r.t. LibraryThing.
I would hate to live in a country where our very rights to free speech were limited by intellectual property laws.
140> Were this a case of simple usage, I might agree, but these folks have invested time and money to market this very phrase and to create product recognition around it. They have a financial interest in the phrase and have used it, as opposed to just owning it. I don't see their claim as being unreasonable, and I may be wrong, but I don't think the courts would find much merit in a claim made for free speech in connection with a trademark.
As for checking the phrase before using, it is rather simple to check with google. I typed in 100 Book Challenge, and lo and behold:
(Edited to change 'copyright' in first paragraph, to 'trademark,' as it was pointed out that the reference was incorrect, which it was.)
#138 -- "In the future, I would suggest doing a copyright search before using any phrase for the LT site, just to be safe" -- To be clear, this group was started (as most groups are) by an LT member, not a LT employee. I would not want LT employees to have to use their valuable time screening group names to see if the phrase chosen by the member who started it infringes upon somebody's copyright (I'd rather see them developing new features and maintaining the site's functionality). Nor do I think you're going to have any luck convincing members who start groups to run that sort of search, when many don't even search to see if there is already a similar LibraryThing group.
Edited to note that aethercowboy is faster on the draw than I am -- post #140 was not up when I started composing this.
When I googled 100 Book Challenge, the very first thing to pop up was that company's product.
It's frustrating being on this end of IP laws. Just think if someone came along with a similar-to-LT service called LibraryThang or LibraryThings or some such.
>144 readafew: Never let the facts get in the way of people spouting off their opinions, or just talking to ... I dunno.
In fact, what the hell am I posting for?
>138 K.J.: Do you mean that Tim and Abby et al. should do a search every time a member of the site creates a new group before allowing the group to be created? Because . . . wow, that would be a big change to the way group creation has worked up 'til now.
Assuming that changing the name of the group is the easiest/cheapest solution, I'd just put in my hope that there's some logical connection with all the challenge groups--I started with the 50 book challenge and have joined the 75 book challenge in 2009 and 2010. I don't know if I'll move to the 100 book challenge--whatever it will be called--but I think the connection between these groups should be respected in some way.
144> Yes, it is. That will teach me to prepare dinner in the midst of doing the LT thing.
I believe that the trademark holder has a legitimate fear that the force of his trademark may be diluted by Library Thing's use of it. We accepted copyright and patent law with the founding of our country so as not stifle inventiveness; I should think that trademark rights would be similar in motivation albeit potentially longer lasting.
I wonder a little bit about the reservation of the phrase given that it seems to be a kind of common usage (as suggested by lquilter after "Second" in message 16 above).
I wonder somewhat more about whether someone, taking notes, has called this attorney to ask what would satisfy her. The attorney may not be forthcoming, but I have settled things with attorneys, albeit as an agent of the government, just by talking through things (and keeping good notes and putting things clearly in anything I wrote about the circumstances).
138> Do you mean that Tim and Abby et al. should do a search every time a member of the site creates a new group before allowing the group to be created?
It was just a suggestion, and no, I do not advocate this, although if I didn't want any further issues to pop up on a site that might fall back to me, I would take some additional steps to keep myself out of the view of litigators. It is what my counsel recommends to me, and I know that he gives me advice to protect me from the extremes, not the everyday. It is up to me to find a happy medium with which I am comfortable, and still covers his responsibility to inform me of 'what might happen.'
On A Related Note:
I was on a distant (US) library website looking for their listing for a YA book that apparently "not loaned out"... don't understand, don't need to understand.
But as I was looking on their website I noticed a link at the bottom of the page to "Good Reads"!! Looked for a LT link & could not find one.
In righteous indignation, I clicked, expecting "Goodreads".... No, it was the library's listing of links to the NYTimes book reviews & some other sites about books..... but not GR & not LT!! It linked to Powell's City of Books & NPR stories on books... and a few other non-book links.
But after this 'trademark' incident at LT, I thought it rather funny.
And I won't divulge the library or the link.... but I can't believe I found the ONLY library site with a Good Reads page!!
How about "100 Books or Bust!" Or (if you're really whimsical) you could use the anagram "100 Bologna Heckle"
I like one of bluesalamanders' suggestions in post #53.
I'd call it the 101 Books Challenge (or the 101 Book Challenge, if you prefer).
I'd like to keep the name of this challenge set up just like the other challenges. If anyone asks what the "extra" (101st) book is for, we simply smile and say, "...to avoid a lawsuit".
Tim, all you'd have to do is just change one digit of any offensive group or thread name.
I think that the "Challenge" threads are becoming a branding of sorts for LT now. Much interaction takes place on those groups/threads. They are a place where new members can begin to feel comfortable and interact with other members.
Let's go for consistency in the name of our challenges. Let's also change the original name quickly so the threat of a lawsuit does not interfere with our fun on LT.
ETA: I hope we never reach 1,001 Books, or we'd be in for another lawsuit. :)
I'm not a member of that group, so have no vested say. But, SqueakyChu's solution sounds to me like the best of the choices available.
I did some more research at USPTO.gov.
Apparently, the following groups are also using "trademarked" names:
* The Green Dragon (used for tea, beer, furniture/sculpture, a restaurant, essential oils, web technology, headwear, footwear, and coffee)
* Book Talk (used for educational digital media)
* Site talk (used for non-downloadable electronic newsletters used in real estate)
* Bug Collectors (used for electronic insect traps)
* Off-topic (used in electronic entertainment)
* Writer-Readers (used by a publisher ("writers and readers"))
* I See Dead People's Books (could be confused with "The Books of I See Dead People"; used in toys/games, clothing, audio/visual recordings, and posters/calendars/etc.)
* Combiners! (used for toy action figures, similar to Transformers)
* Flash-Mob Cataloging (Flash Mob, used in audio/video recording, clothing, online retail, and entertainment services).
Likewise, any groups named after universities, schools, businesses, and other social networks would also be using trademarked names.
Do you see how ridiculous the original claim is, now?
I'm sorry, but I don't see the original claim as being ridiculous. As a business, they have the right to keep their trademark 'pure'!
If you had a company called aethercowboy & you found another company using that term for a newsletter or other business use, even casually, you might not like it. If they came out with a networking tool called aethercowboy and they trademarked it, you might have a problem on your hands, even if you may have used it longer than they have.
I know that having the user name "skittles" could be a problem. The candy company could come after me & ask me to stop using it. They might have a problem stopping me because I've been using it a long time. They haven't stopped me before. I don't use any of their slogans in addition to my name. And it is a protocol driven IT name given to me by a company I used to work for.
They need to protect their trademark, or they can lose it. The letter to Tim & the subsequent actions of ARC & Tim/LT will help to protect that trademark.
They have the right to protect their trademark, no matter how we feel about it.
The candy company could come after me & ask me to stop using it
There's certainly the chance we could confuse you with a small, sugar coated chewy delicacy ... ;-))
155 > They have the right to protect their trademark, no matter how we feel about it.
They do not, however, have the right to block ordinary English uses of common phrases, or other defensible uses of their mark or the things they have trademarked. They have the right to argue about whether something is covered in the scope of their
#155, skittles, this is probably the best post of this whole thread, in terms of summarizing why this is important.
They are protecting themselves. They don't want to end up like aspirin, escalator, thermos, yo-yo, and zipper, that is, trademarks which have lost their legal protection over the years.
I've long thought that kleenex and xerox were in danger of that. I recall seeing the commercials from Xerox company talking about how people don't actually xerox, they photocopy.
Wikipedia has a great list of companies whose products, such aspirin (formerly a Bayer trademark) that have lost their trademarks, along with another list of trademarks that are often used as generics at: http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks
#157, I certainly believe in standing up for one's legal rights. However, how many memberships will LT have to sell to get its attorney to defend this?
Sadly, this is the key fact about the American legal system.
I personally would rather have a LibraryThing with a slightly renamed 100 Book Challenge, such as 99 Books Plus Challenge, than have no LibraryThing at all because it has bankrupted itself defending this.
Um, do you even understand U.S. trademark law?
First off, trademarks, as has been said umpteen times before, are for the purpose of CONSUMER PROTECTION. It protects an academic entity from coming to LibraryThing, thinking they can give Tim $3k and get a program for their school that will help kids read, and instead getting a talk group. It protects people from buying inferior confections called Skittles made by some fly-by-night chocolatier that is not Mars. It protects fans of NFL teams from buying tickets to a football game of the Aether Cowboys, probably. It protects students from paying $30k per year to Harvard University in Kalamazoo, MI.
I have an established usage of aethercowboy. I use it on one of my blogs (and it was already taken by a spammer on one of the other blog providers I use), I use it as a username on a lot of online services (including Spore!), and I even used it as a title for a novel I wrote last year (c.f. The Aether Cowboy).
If I applied for a trademark on aethercowboy, I'd have to specify a business. They way things are going, it would most likely be software-related. If, then, the very next day, somebody started a Steampunk Western publisher with the same name, I would just smile and wave, and be glad that somebody else takes an interest in the same things that I do. I would not fear losing my trademark, as there can be very little consumer confusion between a book publisher and a software company.
If a company were to try to trademark aethercowboy, for it to be a threat to me, they'd have to trademark it in a business I competed with (being a user of a webpage or online service?), and if they tried to apply for said trademark, the system should reject such a claim, as the term is already being used in that application of it by an entity other than themselves.
If they trademarked "aethercowboy" in an alternate business, they couldn't make me stop using it, as even if it was for network technology, my usage of this name as a username was well established prior to their trademarking, and consumers are very unlikely to get confused thinking that I represent to company (and if they did, I'd be a kind person and tell them where to go with a disclaimer or something so that the company didn't have to lose their trademark).
That's like Apple telling Washington state to stop selling apples, as Microsoft has a large business presence there, and they don't want consumers to get confused and think they're buying Apple computers, when they're actually buying apples from Washington.
If Mars sent you a C&D, you could change your username, but I doubt that many consumers would get confused and think that you were in fact the name/face/whatever of that particular fruity candy. You could just cite a love of the sport of the same name, or casual chess games, or the last Victorian Courtesan, and I'm sure everybody could get on their merry way.
Yes, business have every right and duty to protect their trademarks, and they do so through C&Ds and litigation for companies that actually compete with them. As lquilter says (whose posts, I'd argue, are the best of this tread, as she actually has expertise in this field, and works with/for an organization that is constantly fighting for our, the consumer's, rights), they don't hold a monopoly on the words itself.
You could probably get away with having your own "100 Book Challenge," and as long as you didn't sell it to schools, or design it for children to read through incentive/whatever, could get away scot-free (no offense to any Scots out there!). You could have people read Opus 100 and the 99 books by Asimov that came before that, or read Burgess' Ninety-Nine Novels, and then the 99 novels he discusses.
ARC cannot prevent people from challenging themselves and others to read 100 books, except in cases in which consumer confusion will arise.
I would agree with ARC if LT had an academically targeted program of the same name, but until then, I find this C&D to be misguided and ridiculous, no matter how nice a letter it was.
Jacob's argument is compelling. It's even possible it would stand up under legal scrutiny, though I can't say that with authority because...IANAL (still makes me giggle).
But in the larger view, would I-the-user want LT to go all lawyery at $Ouch an hour to fight some misguided people who think they own a phrase that they don't?
Nope. Those dollars are better spent elsewhere. Which is why the trolls at ARC splashed out for lawyers who are tops in their fields, in my opinion; why should the smaller business lawyer up if there is a cheap'n'easy solution? Same reason most civil lawsuits are settled out of court...why spend the bucks if you don't absolutely have to?
While I agree with myself (one would hope this is the case), I do understand the importance of not depleting LT's funds to defend against frivolous or misguided lawsuits.
I agree that Tim made the right decision from a business standpoint, if not from a "principle of the thing" standpoint.
I just hope our fair (US) senators and congresspeople pass a bill soon that makes plaintiffs responsible for all court costs associated with frivolous and misguided intellectual property lawsuits, and that our brave commander-in-chief signs it, to prevent the common-place extortion that happens to underdogs daily. Anyone know that status on that, or do I need to kick my run for Senator from Texas into the next gear?
Double-clutch and upshift, dear Jacob, and I'll move back to Texas long enough to vote for you.
Just waiting for Kay Bailey Hutchison to step down to run for Governor..., or wait 'till 2012. There's probably some paperwork I need to fill out too.
My feeling on this matter (as neither a lawyer nor an expert in law) is that if you want a trademark you can protect, then don't use common words arranged in a common order. They could have called their product "CentoChal" or something that can be unambiguously protected. I see their so-called trademark as no more entitled to protection than "5 mile run" or "10 items or less".
Trademark law is intended to stop you calling your product by a name that is likely to be confused with a similar product. It is not intended to stop people using language.
First, Tim's right, change the name and move on. He shouldn't be wasting LT resources on this issue.
Second, everyone who objects is right also. It is a matter of principle, and the name shouldn't have to be changed. It doesn't hurt to debate the merits of the case among ourselves, but most of us probably realize that in an actual court of law the ruling could easily go either way. A loss could put Tim out of business.
I dropped a note to ARC expressing my personal opinion that this action was more harmful to their own reputation than anything else, and made it very clear that I was not working for LT, but was merely a user of the site. I received a form letter that assumed I was a LibraryThing employee. I would have hoped that people who plan to help children read could actually read themselves, but since they couldn't read the group description I probably shouldn't have expected them to read my email. That's just one more demerit to their reputation in my book.
>164 aethercowboy: Actually, your biggest problem is you're not eligible. One must be 35 to run for the Senate.
Mama Hutch will be Gov. No doubt. The deal got done some time back.
Nuts! It's actually 30. 35 for head honcho. I could run for House, but, seriously...
Oh well. Looks like this cowboy will have to wait until 2012, no matter what.
And what'll I tell Kinky!? He wants to have that governorship so badly!
The only thing they need to read nowadays is the number of 0's on those checkies our already underfunded schools are giving them.
30? They let THIRTY YEAR OLDS run for national office?!? Good God! *shivers at the idea of whippersnappers running things*
Kinky! ROFL I went to high school with his muuuch younger sister. He's about as politically serious as the Repulsivecan health care bill, except about animal rescue, which he's really passionate about.
25 year olds, in the House!
He's also is a proponent of same sex marriage. Was it, "Same-sex couples have every right to be as miserable as the rest of us"?
A line I truly treasure. I can't imagine being as miserable married to a man as I was married to those two women. It's simply not possible.
maybe Tim should just offer ARC every cent that he makes off 100 Book Challenge and get them off our backs... how exactly do you write a check for $0? could we get one of those great big Publisher's checks?
The question isn't so much whether Tim profits, it's whether their brand is diluted/damaged.
i know. but i don't think it is.
eta: i know my thoughts are not legal opinion. but i truly think, legally, that LT does not infringe upon them.
eta (again): wouldn't their brand only be diluted if they lost sales to LT? as aethercowboy (and others) pointed out, the point of a trademark is to protect consumers from buying products under a branded name that are not actually of that brand. inversely, they would also protect companies from loosing the sales that go to the infringing brand. since neither of these principles is being violated, how is LT diluting their brand?
No. That was a follow up to Richard and my discussion about Texas politicians. (170 and 171 were the last exchange).
Oh. It just seemed like such a non sequitter after #174. (<Brooklyn joke>Then again, how did a nice Jewish boy end up a Texan?</Brooklyn joke>)
Absurd. I'd be damned before I renamed a user created thread because it contained common english words that remind a company of their trademark. This is probably why I don't own a company.
That's handy for that book you can't quite finish, no matter how hard you try.
Okay, time to vote:
Vote "yes" if you like it. "No" if you don't. Don't vote if you are indifferent.
Vote: 101 Books Challenge?
Current tally: Yes 19, No 41, Undecided 1
Vote: How long should the polls run?
Current tally: Yes 31, No 30, Undecided 4
The question and the possible answers have no connection to each other ?
And you didn't answer the question. If you are going to be doing nothing on LT.com next week, then this will get swept under the rug.
Depends on what I can get done today. I should probably close it out, as they're sending follow-up emails and Fedexes.
Thats such a bummer that they are harassing you and picking on LT. But the bad Karma fairy will be visiting them eventually.
I wonder if they would read this thread if they were sent a link to it?
Sending a follow-up mail less than a week later is a bit much imo especially after setting a date of Jan 25th. They've just lost any goodwill I might have had left towards them. Not that they will be affected by that as I'm not American.
Well, yes and no. I asked a clarification: If they were willing to license the name, presumably for links back and a clarifying statement about the trademark on our about page.
They should have taken me on that. They sell things, so their website needs a high Google score. They have a Google pagerank of 4, not much better than a personal blog. We have an 8, equivalent to the Boston Globe, Chicago Tribune and L.A. Times and only one step down from the New York Times.
Anyway, the responded that no, they wouldn't license, and have I agreed to stop using the term...
If you're changing the name for legal reasons, 101 Books Challenge would still be way too close, I think. Two very slight changes make it similar enough that they could claim potential "confusion in the marketplace." Whether you are really in the same goods & services is another matter, but if a not-small legal firm feels it has a good case on that, probably not worth a fight.
I am not a lawyer, but I used to run trademark searches in a corporate setting and have *some* training. Singular and plural forms are nearly always treated the same; searchers routinely add a wildcard to account for this when they do their due diligence work.
I'm not in the group and indifferent to the name, but I do care about Tim not being distracted with legal mess!
They are probably sending you this letter not so much because they think that the LibraryThing group will be confused with their product, but because if they ever have a real challenge to their trademark from a company selling a similar product, they will need to show that this name is not commonly used for other things and is in fact a distinctive mark (we can certainly argue about whether this is already a commonly-used term and whether they would win in a suit against LT).
While something like this may seem silly, the protection of trademarks is important for all businesses. LibraryThing probably has a trademark on its name and might want to protect that mark at some point. A company that attempts to protect its trademarks is not engaging in harassment.
I am a lawyer but am not providing legal advice on this situation. This is general information and my thoughts about trademarks.
Yes. If you don't defend your trademark, at least notionally, it risks losing it's legal force, as "elevator," and other terms have done.
So I didn't see anyone mention it, but doesn't it matter that these are user-created threads on a public message board that is free to use? To me it is less an issue of trademarking and more an issue of suppressing speech. Their "trademark" is a common phrase made of normal English words, and they have no right to keep people from using it in general conversation. Or do they? If I was talking about a "100 Book Challenge" inside of a building, would they owners of the building be responsible for trademark infringement? Can you even prosecute speech for trademark infringement? I am just curious, because the whole conflict makes absolutely no sense to me.
>202 jlelliott:: They could certainly argue that it is a name being sponsored, used, and approved by a commercial enterprise that is associated with LibraryThing's product. It would be an interesting legal case, though, and the details would likely matter, such as the difference between a group name posted on a main page versus a passing use of the phrase in a single post.
If you talked about a "100 Book Challenge" in a building, that speech wouldn't remain in the building and be associated with that building's features, so that's different from this phrase being posted on the LT website. Almost all written and spoken words are "speech" for constitutional purposes and trademark laws do limit speech in some respects. Also, many trademarks are made of normal English words. A trademark does not have to be a made-up word like "Xerox." For example, I'm sure Nike has trademarked "Just Do It." That doesn't keep anyone from saying "Just Do It" in normal conversation, but it does restrict the use of that phrase in other ways.
Just for clarity, I should point out that the name "1000 Squared Books Challenge" would actually evaluate to one million books. I agree that it would certainly be a challenge but it might be raising the bar just a little too high.
>204 DovSherman: Good point! I suspect that those of us who noticed this assumed that it was a classic Tim typo. He might have meant the Square Root of 10,000 or even 10.00 Squared.
What about using words other than challenge. I open my thesaurus and have,
So the 100 Book Dare of 2010?
Or We defy you to read 100 or more books in 2010?
Still think the teachers are entitled to make the name be changed, in a significant way.
Lawyers cost money. Like $300/hr.
And we're worth every penny. Cheap even. :D
> 206 There are already polls up, and a clear favorite. #187, 188, 189. Tim just needs to make the change.
I am a lawyer, but I am not an IP lawyer. I did consult informally with an IP lawyer I work with.
I think that "100 Book Challenge" is too generic to be trademarkable to begin with unless it is in some special font, or has some sort of special design. And unless LT is copying that special font, they don't have a leg to stand on. You can't trademark what would normally be boring English words and phrases, and 100 Book Challenge seems like a pretty boring English phrase.
(Edited to change some incorrect language that lquilter pointed out.)
In the USPTO.gov database, each registered trademark for ARC is associated with an image. Most of them are a book in the middle of a sun-like circle with the words "100 Book Challenge" written around the inside of the circle. The others are "100 BOOK CHALLENGE" (in caps) plus any subsequent branding, in what appears to be Times New Roman (e.g. #78726380).
My links to them above have all expired, so you're on your own for searching USPTO.gov.
> 209 -- You can't copyright what would normally be boring English words and phrases, and 100 Book Challenge seems like a pretty boring English phrase.
That's almost right (excepting the common misuse of "copyright" for "trademark"). You can get a trademark on generic English phrases & words, but you cannot foreclose the ordinary English-language uses. I've already stated my opinion that this is a descriptive use within ordinary English language. The fact that it is the same as their trademark is a an indicator of the weakness of the original mark, due to its lack of originality and uniqueness. Not all marks are equally strong!
> 199 Whether you are really in the same goods & services is another matter, but if a not-small legal firm feels it has a good case on that, probably not worth a fight.
"Probably not worth a fight" is something only Tim can determine, but a cease-and-desist letter is in no way an indication that anybody has determined they have a good case, or that they're willing to fight.
People in this business send out lots of these as a general policing strategy, whether meritorious or not; many of them are never followed up on. At a panel I was on a couple of years ago a concededly high-protectionist attorney said that in his experience most (I think he said 90%, but it was anecdotal) C&Ds were bullshit. The single qualitative study that I'm aware of that looked at the validity of trademark notices found close to 50% were weak marks, defensible fair uses, or in some other way a poor claim. My own studies have looked more at copyright, but I think we can state with certainty that (a) people will police their own claims with more vigor than legal accuracy; and (b) there's nothing wrong or socially destructive about that strategy so long as people don't generally over- (or under-) estimate the seriousness of those claims.
As I understand Tim's post, he's decided to change the name. Is there now a reason to continue discussing this matter? Is Tim likely to revisit his decision based on any of the factors discussed here?
Not at all intended to be snarky, just curious. Are we now in discuss and debate mode, or in solve this thing mode?
> 212 I think we've moved on to the discussion and debate mode. Maybe someone should start a Pro and Con thread :-)
One thing that's odd: Nobody else with "100 book(s) challenges" are talking about receiving C&Ds, or otherwise altering their content.
I suppose it'll be clearer after 01/25/2010, but if it's still the same after that, doesn't it seem a little stilted, or biased? You would think that someone trying to protect their intellectual property would cover all the bases, and not just LibraryThing.
So, are we due for another lawsuit threat if we happen to create a group called 144 Books in 2010?
A dozen dozen? I should think that 100 is really such a poor number too. Shouldn't we do something like 122 books which is just about 1 every 3 days?
The really adventurous could do 365, but at that kind of count, I would have to do Comic Books to make it myself, and I stopped reading Comics a long time ago...
365 divided by 3 books to read in 2010?
Read (two times the square root of 2010) books
Read the Year divided by 20 in Books!!
The 8 books a month in 2010 challenge!!
2 to the 7th power book marathon!!
Yeah, I know the naming is over... I just had to add some more ideas!!
Just because somebody on GoodReads made a group named that doesn't mean that everybody else has to stop. I doubt that the proprietor of said group filed for a trademark.
But, if they did, and through some miracle, it got through:
"Gross Books in 2010"
211> there's nothing wrong or socially destructive about that strategy so long as people don't generally over- (or under-) estimate the seriousness of those claims.
There's nothing wrong with threatening to beat the hell out of someone as long as people don't generally over- or under- estimate the seriousness of those claims. Many smaller sub- or micro- cultures in our society do so on a regular basis, without problem. Our society disapproves, in part because in larger society it's hard to properly estimate the seriousness of those claims.
I recall one Polish guy who was forced by his wife, terrified by the C&D into believing the FBI were going to storm their house, to take down his website with Lovecraft texts despite the fact that the copyright on most of Lovecraft's texts is questionable to non-existent in the US, and sure non-existent in life+50 Poland. How many people can tell the difference between a C&D demanding the takedown of Twain's Tom Sawyer and Twain's Letters from Earth?
In this particular case, I agree that the trademark is weak; whether that means it will fall in court, and whether it's worth it for Tim to dispute it, is another matter.
While I agree with your sentiment, you're blurring copyright with trademark. Copyrighted works have a definite lifetime before they go public domain, while trademarks can last as long as they're being used in a non-generic business application, essentially.
220> I was talking about C&D's in general.
I'm not sure life of the business use is all that much less definite than life of the author plus 70 years provided that someone hasn't retroactively extended it again.
Here's a handy set of criteria used in determining what's PD in the US:
> 219: We don't disagree, I believe. I identify two serious problems with the current IP regime for CDs:*
(1) so long as people don't generally over- (or under-) estimate the seriousness of those claims. -- People do in fact tend to overestimate the seriousness of claims, and take an "all IP is sacrosanct" approach; this is a triumph of the content industry's marketing, IMO, which talks about copyrights like lawnmowers and increasingly, trademarks like copyrights. A FUD strategy.
(2) ... And, the FUD / reverence strategy is enormously successful in part because the consequences of screwing up are so dire -- the systemic problem of grossly disproportionate damages, especially in copyright.
... I doubt you could find anyone *more* critical than me of the business acumen of the content industry, the ethics of certain recent policing practices, and the injustices that too regularly result from these issues--I've spent the last ten years of my life explicitly working in this area out of strong conviction. But aggressive policing and totaliing views of IP has unfortunately become the norm, and many people and businesses believe, rightly or wrongly, that to be competitive they have to behave this way. So even when a C&D is, IMO, substantively flawed, and does lead to a wrong and socially unproductive outcome, the perpetrators aren't really ethically equivalent to perpetrators of violence.
* And lots of other problems for the IP regime more generally ....
I like "Challenge of 100 Books". It's got a bit of a royal quest feel to it.
Here is a blurb about a trademark infringement suit involving something common--smiley faces, in this case on cookies.
>225 carlym: But in that case it's cookies vs. cookies--the two companies are selling very similar products.
The boat has sailed here on whether it's fair, just, or legally defensible, I think--the group has been renamed, hasn't it?
Thank goodness I'm only aiming for 75 books this year.
Well, I came to this whole issue very late, obviously, but my group name suggestion would have been:
The Read 99 Books and Then, What the Heck, Read Another One Challenge
So, is there any evidence that anyone ever assumed LibraryThing or the group had anything to do with American Reading Corporation, like they claimed?
Well, in the PDF Tim posted, they pretty specifically claimed to be the legal counsel for ARC. I believe that in and of itself can get you in hot water if you lie about it. They also didn't try to hit LT up for money or anything. They simply said "stop using the trademark."
I know the PDF came from American Reading Corporation, but they made the standard claim of confusion: that using their trademark would confuse the consumer into believing that LibraryThing or the group was sponsored by ARC. Is there anyone who was actually so confused, possibly somebody who posted to the boards about it?
231> Ah, I see. I wasn't confused by LT, but I was rather confused by your question. :D
I've changed the name everywhere I found it, as a group name, or a topic name, where it was referring to the actual challenge. The name stays here, since we're discussing it.
From the polls, the name is now 100 Books in 2010.
Thanks for everyone's input!
231> I will add that seeing "100 Book Challenge" at LT enforced what I already assumed - that the name wasn't trademarked. That isn't what you're asking but it is a closely related issue.
From that standpoint, I think they do have a case. I think it's a silly trademark, but that's besides the point.
You should send them something back stating that you have change the name as a courtesy, but their claims of infringement are ridiculous. You were not selling or endorsing anything but reading and the discussion board would have likely contained some of the books used in their program. Since you would not want to provide their company with any free advertising you have changed the names. Now people will be able to find their letter instead and the discussion about that which shows how petty their company is.
FYI: If a trademark includes words then it would also be a copyright on those words. A copyright is not a trademark since a copyright is only for the words. When discussing the words in a trademark the terms copyright and trademark are both applicable.
>237 StormRaven: Presumably because they were googling 100 Book Challenge and came across this thread.
Now people will be able to find their letter instead and the discussion about that which shows how petty their company is.
Shouldn't the tag have been changed as well? http://www.librarything.com/groups/tag/100+book+challenge
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