WNI Lawyers Crack Down on Use of "WebTV" in Users' Sites
By Net4TV Voice News Staff (May 7, 2000)
PovertyStricken had already decided to leave WebTV, and was saying his goodbyes to his many friends (see
PovertyStricken Leaves WebTV Forever) in his newsgroup and mailing list. The future of his WebTV Utility site, considered one of the most useful tools of all by many WebTV users, was up in the air. Since he wouldn't be online any more, he wouldn't be able to maintain it, but several people had offered to take it over so it would still be available to the WebTV user community.
All of that changed on Friday, May 5,when he received a letter from WebTV Networks Inc's trademark lawyers.
May 5, 2000
Mr. Jeffrey Roberts
(address)
(address)
povertystricken@WEBTV.NET
Re: webtvutility.com
Dear Mr. Roberts:
We represent WebTV Networks, Inc. in various trademark matters. Our client recently came across your web site at http://www.webtvutility.com and wants to thank you for supporting WebTV® products and services. WebTV is a great product and we are happy to see that others feel the same way.
The primary reason for our letter, however, is regarding the name "webtvutility.com." You may not know this, but this name is actually a misuse of the registered trademark, WebTV. Since "webtvutility.com" includes the WebTV brand name and the web site uses "WebTV" as the leading brand in the name of the overall site, people viewing this site are likely to think that it has some affiliation
with WebTV Networks, Inc.
We are contacting you to request that you please change the name of your web site and domain name to something that does not include the WebTV trademark. It is still possible to refer to the WebTV name on your site by using phrasing such as "programs for WebTV" or "about WebTV," but the name "WebTV"
should not be the most prominent name on your site or in your domain name, nor should the WebTV logo be
displayed on your site since this could cause confusion with WebTV Networks, Inc. products and services
or look as though WebTV Networks endorses or sponsors this site.
We understand that it will probably take a couple of weeks to change the name of your site and
to register a new domain name, however the earlier the changes can be made the earlier you can inform
people of your new name. After you select a new domain name for your site, please delete the old domain
name with your domain name registrar or disable the domain.
WebTV appreciates your cooperation in using its trademarks properly.
Please let me know if you have any questions.
Yours very truly,
(attorney)
(law firm)
[Note: names edited by Net4TV Voice at the request of PovertyStricken]
Trademark Background and Protection
Unlike copyrights, which occur on the creation of an artistic or created work and exist whether or not
they are enforced, trademarks must be declared and defended, or they are lost and can be used by anyone.
For example, "Aspirin" was a trademark of Bayer for acetylsalicylic acid (A.S.A.), and still is in
Canada and some other countries. But the trademark protection was lost in the US and it is now the
generic name for the drug. In the 1970s, Pepsi tried to claim that the term "Coke" had become generic
for "cola drink," but lost the case. Keeping a tradename from becoming generic is also the reason that
Kimberly-Clark insists on the use of the words "Kleenex® Tissues" rather than just "Kleenex," and Xerox
Corporation will object to the term "to xerox" rather than "to photocopy."
But the aggressive steps that some companies take protect their trademarks, especially against their
fans, can lead to very hard feelings. Disney's lawsuits against small daycare centers who have Mickey
Mouse and Goofy painted on their walls have brought it negative publicity. Star Trek, the Simpsons,
Winnie the Pooh, and Lego have all aggressively pursued their fans who have posted sites on the Net
which displayed their logos, trademarks and art, and "anti" organizations have formed from these
composed of some of the companies' former admirers.
WebTV's Trademarks
In the case of WebTV, this letter to Jeff Roberts is puzzling -- not because WebTV doesn't own the
trademarks, but because there are many, many domains with "webtv" contained in their names, and some
have even been featured in WebTV's own suggested sites (especially in the old "Explore" section that is
no longer a part of the WebTV homepage). A search for domains or company names containing "WebTV" in the
NSI WhoIs
Database turns up over two hundred -- and only five of those are owned by WebTV Networks Inc.
There even is a company in New York doing business under the name "WebTV.com" (although they don't have
the domain name -- WebTV Networks owns it). One would think that WNI's attorneys might first pursue
infringing commercial sites and companies before turning to WebTV user sites.
WebTV's own trademark enforcement to date has also been very uneven. In 1997, when ProActive
Electronics, an early WebTV community site and home of the original ProActive WebTV Forums, encouraged
WebTV users and others to make compatible sites by offering a banner with a TV that flashed "WebTV
Aware," WebTV insisted that it was a trademark violation (fixed by changing it to "Web TV Aware"), and
WebTV Networks also has sent legal letters to other WebTV users insisting that they take down WebTV
logos from their personal sites. On the other hand, the commercial site "webtvsearch.com" has been
promoted heavily by its creator within WebTV's newsgroups. In 1999, when the question of trademarks was
raised with an executive of the Canadian company that owns the site while Net4TV Voice was preparing an
article, the executive replied "we've talked to them and they don't mind."
What Does This Mean To You?
When Jeff posted the letter in a newsgroup in his goodbye post, one of our readers wrote to us:
If I'm reading that "attorney's letter" right, then isn't every private
mailing list, webring, personal site, chat room, message board, etc.
that include the word "WebTV" guilty of trademark theft? I co-moderate a
webtv users mailing list; I operate a webtv webring. I even include
webtv-friendly pages, using the word "webtv" in the title, graphic
headings, and throughout the page. So, if these guys actually demanded
Pov to dismantle webtvutility.com, what's next?
Could you imagine the reaction if the attorneys demanded every page,
mailing list (eGroups had 100's of webtv-related mail lists), webring,
etc. be stripped of webtv logos and references?
It's a valid question, and one that should be of concern to any WebTV user who uses the WebTV logo on a
webpage, or the name "WebTV" in the domain name or page title. The question is more one to be directed
to WebTV itself rather than to trademark law -- WebTV has the lawyers to send the letters, and it is
unlikely that any WebTV user is going to challenge Microsoft's legal intrepretation in court over their
homepages. Many users have assumed that, since they never heard WebTV make any statement about the use
of their name or logo by their users, despite their opportunity to do so in the WebTV Terms of Service,
Page Builder instructions, Help Center, or Club WebTV, it was okay for them to use it to show their
support for the platform and there are literally thousands of users' homepages with some WebTV
trademarks on them.
Some companies do allow specific uses of their trademarks by their users, and as long as the use is
licensed, the trademark can still be protected. Three years ago, WebTV had a badge "I Watch WebTV" that it officially provided and allowed users to place on their sites, but this is no longer offered. Net4TV allows specific uses of its trademarks for linking back to Net4TV, and provides banners for users who would like to display them. AOL even has taken a tolerant position with some of its critics in terms of trademarks. When the critical site, www.aolsucks.org, was threatened by an AOL employee, an AOL VP wrote the site owner an apology.
Net4TV Voice hopes that WebTV Networks Inc. will communicate their trademark policy clearly to their users, and will
provide them with guidelines on when and how they can express their support for the company on their
websites.
For Jeff, however, it was the last straw. The site will come down, and he will not allow anyone to take
it over. He wrote to Net4TV Voice (who had also offered to host and maintain his site):
Thank you for your most gracious offer, however after hearing from WNI,
I choose not to endorse, support, or aid in their service.
I have removed the site entirely, and have placed the domain
cancellation through. Additionally, I am using a friends terminal. I
have cancelled my account effective 30 minutes ago.
I am so deeply saddened that I had to leave on such distasteful terms,
however that's the way of WNI. Please know, that although I hold nothing
but contempt for WNI, I hold its users dear to my heart.
