
IMAX apologizes to Ars for its trademark retraction demand - quadyeast
http://arstechnica.com/tech-policy/2015/06/imax-apologizes-to-ars-for-its-trademark-retraction-demand/
======
fraXis
This reminds me of a story Mad Magazine's Dick DeBartolo likes to tell.

He did a 'The Empire Strikes Back' Mad Magazine edition in 1980. George Lucas
sent him a personal written letter telling him how much he enjoyed the issue.

A little bit later, Lucasfilm's legal department also sent Dick a threatening
legal letter informing him that Mad Magazine was infringing on 'The Empire
Strikes Back' copyright with the issue they had released.

Dick opened his desk drawer and took out George Lucas' personal letter
praising the issue, made a copy of it, and mailed it back to Lucasfilm legal.

He never heard from them again.

~~~
smhenderson
The Empire Strikes Out - I actually had that issue when I was a kid. I loved
Mad but throw in Star Wars and I cried like a baby until my mom bought it for
me!

[http://tinyurl.com/njzurw9](http://tinyurl.com/njzurw9)

------
grellas
Back in the day, a C&D was a private affair. As a lawyer, you would give
someone the big blast and, right or wrong, you could not really embarrass your
client because you were basically writing to an audience of one. Today, if you
screw up on the law or are tone-deaf in how you say things, you and
particularly your client will find yourselves on public display as potential
objects of ridicule. That is what happened here.

Writing a good C&D is an art and it is amazing how much more effective
something can be if it communicates truly and well without taking on a
needlessly stiff and formal tone. Because, in the end, there is always a
purpose behind these things. Trademarks are intended to protect brand origin
and if someone who is not the brand owner makes misleading use of a mark to
palm off the phony for the real, well, people can understand that and even
sympathize with the plight of anyone who has felt ripped off in that way. The
art lies in being able to make the legal points without sounding like a bully
or an ass. It can be and is done every day when people who are truly
infringers do things wrong and find themselves getting slammed. But those C&Ds
tend not to find their way into public view.

Here, the C&D was absurdly wrong on the law and tone deaf to boot. Kudos to
the IMAX and Ars execs for finding a way to handle the thing in the end as a
class act and not as a low-brow fight. Speaking even as a lawyer, it is really
nice to see.

------
mathattack
Reminiscent of the famous Jack Daniels cease and desist.

[http://brokenpianoforpresident.com/2012/07/19/jack-
daniels-l...](http://brokenpianoforpresident.com/2012/07/19/jack-daniels-
lawsuit-the-full-scoop/)

~~~
janfoeh
Well, colour me surprised. This is the first c&d I have come across that
actually improves my opinion of the entity releasing it. Thank you for posting
this.

~~~
mikeash
It really is excellent. I have to wonder why they aren't all like this. It
costs no more to write a nice letter like this one than a mean one as is the
standard, and surely they'd realize this approach gets better results!

~~~
logicallee
I agree it's excellent, but I don't know how you can say

>It costs no more to write a nice letter like this one than a mean one as is
the standard

when the letter includes a literal offer to transfer cash to its recipient to
cover their redesign costs. So yes, it does cost more than any other type of
letter :)

It still sounds pretty good.

~~~
hobs
That's true, but it would almost definitely be a lot cheaper than paying more
laywers.

Non-legal remedies are almost ALWAYS what people want.

------
comrh
But they didn't even understand the problem???

> Unfortunately in this situation we acted too quickly without truly
> understanding the reference to our brand.

Any reference to their brand is not a trademark issue. That is the point of
the whole article in Ars to begin with!

~~~
stonemetal
>Any reference to their brand is not a trademark issue

True, but I can kind of see IMAX's point. In the context of the original use
IMAX was used as a generic name for a very Large, high quality display. They
don't want to become Kleenex or Xerox so they need to curtail those kinds of
uses or they lose their mark.

~~~
morganvachon
1\. The subject of the Ars interview that started all of this didn't use IMAX
as a "generic name", he likened the experience of using SteamVR to that of
having an IMAX screen in your home.

2\. IMAX has already apologized and acknowledged that they didn't have a valid
argument after all.

~~~
anigbrowl
1\. That is arguably how marks become generic.

2\. IMAX has apologized to Ars for giving them a hard time for quoting it. It
wouldn't surprise me n the least if they seperately sent a letter to Steam
saying 'please stop saying that, even though you meant well.'

~~~
xoa
>1\. That is arguably how marks become generic.

No, it is not. Please see Nominative Use (alt: "Nominative Fair Use"), which
an affirmative defense that basically boils down to a party being directly
allowed to make a competitive comparison between their product/service and
another trademarked product/service. This looks like about as textbook a case
as it gets too. First, here is the quote:

 _" It’s like saying, 'I have an IMAX theater in my house,'" he told
Machkovech. "It’s so much better that we can get away with a cumbersome
setup."_

To satisfy Nominative Use:

\- Only the minimum amount of the mark necessary can be used, which is
certainly the case here, it's just the plain text mark "IMAX" and not the
special logo or font or whatever.

\- Can't suggest any sponsorship. Also satisfied here, his comparison in no
way suggests that IMAX Corporation endorses SteamVR.

\- The product/service being compared has to be uniquely identified by the
trademark, which is definitely the case here ("IMAX" names a unique
technology/experience).

A trademark is for preventing consumer confusion around a specific
product/service, not to control all speech, opinions, and competition
regarding said product/service. Genericization is an entirely different
process. He's not using "IMAX" to refer to VR in general (or at all), he's
saying "My SteamVR product is competitive with/superior to the IMAX(TM)
Experience" which is entirely permissible and indeed critical for a
functioning market. IMAX Corp could of course argue that no, "SteamVR sux IMAX
rox" without infringing on his trademark either.

------
iMark
Nicely defused with a letter than appeared to come from a human being.

I'm left with the impression that in many instances lawyers only get in the
way.

~~~
dnautics
It's not so much the lawyers but the law. The law says that for trademarks,
you have to make an effort to defend it or else you lose it. The degree to
which making an effort is necessary is not entirely clear, so they have to
make a paper trail to that end, even if it means being aggressive and then
apologizing afterwards.

~~~
djrogers
No no no. There is _no_ point of the law that is so unclear as to make anyone
think a reference to a traemanrk in a 3rd party quote in a piece of journalism
is infringement.

This was either stupidity or laziness. Probably both.

~~~
kbenson
I think dnautics was responding to the general claim "I'm left with the
impression that in many instances lawyers only get in the way." and may not
have been commenting on this specific instance.

------
tux3
Props to them for the sensible response after realizing their mistake, this is
all too rare.

~~~
serge2k
I don't think it is that rare to realize that pissing off a (actually
respected!) large internet publication is a mistake.

------
opcvx
_IMAX sized_. Interesting phrase. I wonder if I can now legally use it in
marketing, publishing, reviews..., since I will be quoting the company itself.

~~~
chris_wot
The issue is one of trademark dilution.

The relevant legislation is codified in 15 U.S. Code § 1125 (c), which states:

    
    
      Subject to the principles of equity, the owner of a famous mark that is 
      distinctive, inherently or through acquired distinctiveness, shall be 
      entitled to an injunction against another person who, at any time after
      the owner’s mark has become famous, commences use of a mark or trade name 
      in commerce that is likely to cause dilution by blurring or dilution by 
      tarnishment of the famous mark, regardless of the presence or absence of 
      actual or likely confusion, of competition, or of actual economic injury.
    

Note that it says "commences use of a mark or trade name in commerce" \- use
of the trademark in an article that cites it in a quote, or even uses it
colloquially, is not going to apply.

The lawyer who sent the cease and desist letter fundamentally misunderstood
the law, and frankly I'd be concerned they were giving me incorrect counsel. A
lawyer who holds such a fundamental misunderstanding of trademark law is, in
my mind, a material risk to any business who needs to protect their trademark,
and I'd be getting rid of them as soon as possible. I'm not even talking about
the PR blunder here: I'm talking about the fact that they are incompetent, and
you never want incompetent legal advise.

------
waterlesscloud
General Counsel sends out complaint letter, Chief Marketing Officer sends out
apology.

~~~
vermontdevil
Doubt that high up. Probably one of the underlings or a contracted law firm.

~~~
morganvachon
It's in the article itself, yes it was "that high up":

"This morning, we were sent a follow-up e-mail offering an "IMAX-sized"
apology from IMAX Chief Marketing Officer Eileen Campbell."

~~~
waterlesscloud
I think GP means the General Counsel didn't personally send the first email,
which might well be the case.

~~~
morganvachon
Could be. Still, the original letter appeared to come directly from a lawyer
with an @imax.com email address, and she holds the title of Chief
Administrative Officer and Corporate Secretary:

[http://cdn.arstechnica.net/wp-content/uploads/2015/06/ars-
te...](http://cdn.arstechnica.net/wp-content/uploads/2015/06/ars-technica-
letter.pdf)

~~~
phonon
G. Mary Ruby's been there since 1987, and is a former General Counsel (amongst
other things).
[https://www.imax.com/corporate/management/](https://www.imax.com/corporate/management/)

So not an intern, that's for sure.

------
hyperbovine
I guess you would call this "Destreisanding".

------
fweespeech
This makes one wonder if its a bot sending out these IMAX letters/flagging
things for IMAX to send letters to and their lawyer just blindly sends them
out without much thought.

~~~
pascalmemories
It's absolutely automated. Whole companies specialize in it (Cyveillance is
one - look them up) and routinely patrol the web looking for any use of
trademarks and then automatically sending out threats.

I worked on a site selling second-hand goods and there were around a dozen
robots patrolling the site every day, completely ignoring the robots.txt (but
fetching it in order to specifically look at disallowed links first). They
homed in on any trademarks and kept fetching the pages repeatedly.

They became such a bandwidth hog that I had to block their IPs (whole CIDR
blocks) - if you blocked the user agent, they immediately re-fetch with a
faked IE or Mozilla UA and then used that to trawl the site.

Once they have their 'evidence' of the mark use, they would post (regular
snail mail) automated threats with the offending web pages printed and the TM
terms highlighted. Typically demanded money (but not always) plus a promise
never to use the TM ever again and destroy all computer records containing the
TM.

Thankfully the shop owners just ignored them as, like the article points out,
it's perfectly legitimate to use a trademark in context. Besides in the
country concerned it was a trading description offence to incorrectly describe
the goods (fines and loss of license to trade in second hand goods). (i.e. if
it is a genuine Gucci handbag, you describe it as that but if it is a fake,
you must not mention Gucci. Enforcement officers checked regularly that the
rules were followed - surprisingly logical and sensible and trumps any
nonsense from an automated TM enforcement bot).

~~~
Karunamon
_I worked on a site selling second-hand goods and there were around a dozen
robots patrolling the site every day, completely ignoring the robots.txt (but
fetching it in order to specifically look at disallowed links first). They
homed in on any trademarks and kept fetching the pages repeatedly._

Sounds like exceeding authorized access to me. That's grounds for jailarity,
nowadays.

~~~
jalfresi
robots.txt files are not mechanisms for authorizing access; they are
guidelines designed to instruct user-agents on relevant resources. They
essentially say to the user-agent "the content marked as 'disallow' should not
be crawled for indexing purposes for unspecified reasons"

Adhering to a robots.txt file is not mandatory, though it does make you a good
netizen/curries favour with server admins.

~~~
smitherfield
People have actually gotten into trouble for accessing subdirectories which
aren't accessible via links from the site's index page. But I'm not sure if
that extends to robots.txt, at least as it pertains to stuff which is intended
for public consumption. Otherwise people who host sites containing illegal
content would just put the entire site in robots.txt.

------
mathattack
Yet another reason not to listen to the lawyers who like to make fights out of
issues they don't understand. Companies need to protect their trademarks, and
they need lawyers who know when their trademarks are legitimately under
threat.

~~~
dnautics
But the lawyers cannot really know, because that becomes up to a judge later
on. There is no clear algorithmic formula to decide if they were sufficiently
defensive in the eyes of the law. They have to make a best effort at defending
the trademark, so in general the best strategy is to err on the side of
overagression and apology. If someone says, hey, you were lax in defending
your trademark, down the line, they can point and say, nu-uh, we we were so
aggressive a C-level officer had to issue an apology!

~~~
andybak
Agreeing there is a grey area isn't the same as accepting any absurdity as
reasonable. This was as dumb as any trademark claim I've ever heard.

Oh. Maybe apart from this: [http://www.neatorama.com/2009/03/10/logo-fight-
remax-vs-reha...](http://www.neatorama.com/2009/03/10/logo-fight-remax-vs-
rehava/)

------
davesque
Nice. Well done, IMAX!

~~~
javajosh
Yes, but it just brings them back to 0 in my book.

------
crunkykd
I think IMAX achieved a counter-effect of people actually realizing that a VR
headset would have a widescreen field of view larger than IMAX could ever
have. It's only a matter of time until the big screen, highly immersive
theater experience will not be seen as an IMAX.

------
serve_yay
Dinguses.

~~~
JadeNB
This seems like a possibly appropriate, but almost certainly non-constructive,
response to the original demand, but useless in this thread; I have downvoted
it. Granted that they made a mistake in their original aggression, this seems
like the best possible next step to take.

