Our first reply:
Collins and Associates
120 East De La Querra St.,
Suite #2
Santa Barbara, Ca.,
93101-7251
805-730-1333
Fax: 805-730-1337
Some days ago we, at TrixiePixGraphics, began receiving emails from a woman who identified herself as "Claire Teeter". She emailed us repeatedly, using two different email accounts, eatfreshveggies@hotmail.com, and claire.teeter@collins-assoc.com. The woman seemed demanding to us, and repeatedly asked for the mailing address of our company. She was told, repeatedly, that it was the same address it had been for some years, and it could be found on the page which is accessed from our home page under the mysterious-looking link titled "CONTACT US". We even provided for her a link. All she had to do was click one button in her email reply from us. But the woman apparently didn't want to use that link, writing back again and bluntly demanding our address, and we ended up actually typing out the address for her and emailing it back to her. We were also forced to inform her twice that an unincorporated business has no president (she insisted on knowing who it was). But she apparently didn't take that hint either, as your letter was addressed to "President". We also found it odd that, through a total of five emails, the woman wouldn't tell us what she wanted or the name of the company she represented. We were so put off by her demeanor, which seemed bossy and rude to us, that we filed her emails under "harassment", because we felt sure we would have trouble with the woman or her associates in the future. And sure enough....
The following letter was received on 2-08-02. It refers to the depiction of a product (known throughout the industry as a "Kirby Morgan Bandmask") which is, according to the following letter, manufactured by Laguna and Haley Corporation, and Morgan Diving Corporation, (formerly Kirby Morgan Dive Systems Inc.).
The letter demands that we cease and desist trademark/service mark infringements by referring to the diving mask in our key fob and t-shirt-graphic images as a "Kirby Morgan" and/or a "Kirby Morgan Bandmask".
We had no idea your client held a trademark on the name of their wet hat; in retrospect, it seems reasonable that they do, and we don't doubt your client's trademark is valid. Your assertion that you are "sure" we knew the product name was trademarked is defamatory, because it suggests that we knowingly violated what is in effect Copyright law, when no such thing occurred and you have no reason to believe it did.
We wholeheartedly respect anyone's right to their trademarked products as well as all Copyrighted materials. We're pretty sensitive about that ourselves.
We would like to advise you that you would have evoked in us, however, a far more sympathetic mood had you chosen to act more like reasonable human beings, instead of bulldozing jackasses.
I used Kirby Morgan Bandmasks off and on in the raising of 131 wrecks in the NE Pacific. I found the hat to be utterly inferior and totally unacceptable, opting, instead, for either an AGA or a Miller full helmet, depending on the work to be done. Additionally, one of our divers suffered a catastrophic failure of a Kirby Morgan Bandmask, as the entire faceplate simply fell out at depth without warning, due to a failure of the single clamp screw which holds the faceplate assembly on the mask body. We were never able to ascertain if the screw was original equipment. We're sure you're also aware of the extreme discomfort many divers experience when wearing the Kirby Morgan, especially at shallower depths.
Because of our experiences with the Kirby Morgan Bandmask, we want you to know that we resent your assertion that we are in any way "endorsing" your client's product by the depiction of the mask. The mask was used in our work. Therefore it has been included in photo-documentation of our work.
You "demand" that we turn over to you all stocks which may feature the image of the Kirby Morgan Bandmask. The image we use is a personal photograph taken with my camera, of my property, by an employee working for me, to which I alone hold the Copyright, and is not "your property", nor shall it ever be construed as yours, nor do you have the legal right of ownership to any other snapshot taken of any other privately-owned Kirby Morgan Bandmask by any other diver in the country. Your demand is outrageous and we will not dignify it with further acknowledgement.
Again, your obnoxiousness has served to turn us from a willing and apologetic ally, to a suspicious and disgusted enemy. My God, do you really have so little to do? Does Laguna and Haley Corporation, and Morgan Diving Corporation, (formerly Kirby Morgan Dive Systems Inc.) agree with what we can only refer to as your "Penny-Wise and Dollar Stupid" handling of this minor matter? A simple email from a polite and courteous employee in your office would have been sufficient to voice your concerns and objections. As it stands, we think you're barking-mad, and we feel we must begin to arm ourselves against whatever ulterior motive you may be considering. Is this really the image Laguna and Haley Corporation, and Morgan Diving Corporation is paying you to cultivate? Frankly, based on the actions and demeanor of the law firm this company hired (you), we find ourselves wondering about that company as well. Are you merely trying to justify your existence to your client with smoke and mirrors?
Ford Motor Company makes Fords. Anytime someone references their Ford, it's free advertising for Ford. We have an image of a Camaro somewhere on our site, and (oh, the horror), we refer to it as A CAMARO. You can nit-pik yourselves right into a coronary event, if that's your aim.
Good Grief,
[Trixiepixgraphics]
TrixiePixGraphics.Com
2-8-02
CC: Internet
BCC:
PS: Further emails from Claire Teeter are unwelcome and will be considered harassment. Put it on paper, on your letterhead, or don't bother. [END]
And here's a copy of the email we received
directly from the manufacturer on 02-09-02,
after we wrote the above letter:
Sat, 9 Feb 2002 19:52:07 EST
From: KMDSI@aol.com
To: trixiepixgraphics
Subject: From Kirby Morgan Dive Systems,Inc.
TrixiePixGraphics.Com
POB 3718
Kent, WA98089
Dear [sir]:
We apologize for upsetting you in regard to your use of images and trademarked names of our products.
We agree that a better way to approach this matter may have been for us to contact you directly to
resolve this matter. We do not mean to be obnoxious and are sorry that you have taken the necessary
legal wording of our attorney as an affront. You are welcome to offer your opinion, along with your
images of our products, in any truthful and legal manner that you wish. We are not going to attempt
to teach you the law, but consider the following: You take a picture of a Mickey Mouse doll that
you have purchased. You own the doll. You own the picture. You may place the photo of Mickey Mouse
on your web site along with a written account of what you wish to say (within certain legal limits)
in an editorial manner. That is OK and within the law. You put the image on a key fob or T-shirt.
Or, you offer to do so for money. The Disney folks will not allow you to do that, and legally so,
since they own the rights to the object (product) that you photographed and are offering to sell
(in any form). You may not offer images of Mickey Mouse without Disney's permission. You may not
offer images of our products for sale without our permission. Yes, a Ford is a Ford, but you cannot
legally sell Ford T-shirts or key fobs without their permission. You may be doing so now, but
that does not make it legal. And one day, if they so chose, Ford will send you a letter that will
make our attorney's letter to you look like a love letter. And if you chose to say disparaging
things to Ford's customers about Ford's products in retaliation for their letter, they have the
legal right to litigate for interference with trade. If you are selling an image of a Camaro and
are using the name Camaro on a product you are selling you should contact the owner of that
product and name, General Motors, for permission to use what they legally own.
We offer the above in a positive manner and recommend that you consult with a person educated
in intellectual property rights to avoid possible future conflicts with others on your
products and services.
We appreciate you withdrawing your offer to sell images of our products on T-shirts and key fobs.
We have no ill feelings toward you or your Company and wish you success in your business. Once
again we offer our apologies for upsetting you.
Sincerely,
William Bev Morgan
Kirby Morgan Dive Systems
And, again, our final reply back to Kirby Morgan:
Bill Morgan
Kirby Morgan Dive Systems,
Thank you for a more reasonable communication.
We've had our attorneys work on this matter all weekend. You've cost us a few bucks. Based on their advice, and our own research, we are reinstating our products kf-42 and ts-65. Please read on:
Since we are retired divers, our artistic bent will always lean toward the marine environment and diving endeavors. Since divers wear diving apparatus, and since Kirby Morgan makes diving apparatus, your equipment will necessarily be included in some of our work, as it has been in magazine articles regarding commercial diving that I have published around the world since 1980. We are also entitled, under "fair use", to label a photo or artwork as to what it depicts. In the case of the above-referenced works, a Kirby Morgan Bandmask happens to be in the shot, and we have labeled it as such. Other equipment is also included in the shot, as is the sky and the deck of a barge and a length of umbilical hose and a weight harness and a wetsuit and a davit and some trees. To demonstrate that we are not singling out the Kirby Morgan Bandmask, we have labeled all the items in the image. The law states very clearly that we may do this.
We are well within the law because:
(1) We did not mention your product's name any more than was necessary to describe it.
(2) the Kirby Morgan Bandmask is incidental to the shot.
(3) We have prominently posted notice that we do not endorse your product(s) and that you do not endorse ours, or our depiction of yours.
(4) We sell nothing that competes with your products, nor do we attempt to; hence, there is no "confusion" as to who offers the product you manufacture.
(5) We are allowed, by law, to mention your product in other ways, in other places, though we have chosen not to do so, preferring to keep mention of your product to a bare minimum---only what is required to describe it.
(6) We have purposely elected NOT to use any special lettering or trademark graphic owned by Kirby Morgan, even though we probably could do so in order to help viewers understand what the product is. We have referred to the item as a Kirby Morgan Bandmask, which is exactly what it is. A Big Mac is a Big Mac. A Ford is a Ford.
We're sorry you object to what is very clearly spelled out by case law. For your convenience we have excerpted the follow short passages for your reference:
In Patmont Motor Werks, Inc. v. Gateway Marine, Inc., the court applied the nominative fair-use defense in the Internet context. Defendant used plaintiff’s GO-PED mark as a part of the postdomain path in its URL,"www.idiosync.com/goped." Defendant also used the GO-PED mark on its website in connection with the resale of plaintiff’s motor scooters bearing the GO-PED brand. Addressing plaintiff’s claims of infringement, dilution, and unfair competition, the court recognized the nominative fair-use defense and found that defendant’s use of the GO-PED mark to describe the items it offered for sale did not constitute trademark use. First, there was no viable way for defendant to identify the goods it offered without using plaintiff’s mark. Second, defendant used the mark only to the extent necessary to convey information about the brand of the product. It did not use the GO-PED logo or any distinctive lettering. Third, defendant’s use of the mark could not be construed to indicate sponsorship or endorsement by plaintiff. The court held as a matter of law that use of another’s mark as a postdomain path in a URL by itself does not suggest endorsement, while use as a domain name itself might. The court thus granted defendant’s motion for summary judgment on plaintiff’s trademark claims and vacated an earlier preliminary injunction.
A recent case illustrates another district court’s apparent leniency on this nominative fair-use factor. In Bally Total Fitness Holding Corp. v. Faber the owner of the federally registered marks BALLY and BALLY TOTAL FITNESS sued defendant who operated a "Bally Sucks" website dedicated to complaints and commentaries about Bally’s health-club business practices. Defendant’s website featured the word "sucks" superimposed over Bally’s logo (consisting of the words BALLY TOTAL FITNESS and a stylized "B") and stated "Bally Total Fitness Complaints! Unauthorized." Defendant sought summary judgment on plaintiff’s trademark infringement, dilution by tarnishment, and unfair-competition claims.
In its likelihood-of-confusion analysis, the court considered defendant’s intent in selecting the mark. It rejected plaintiff’s argument that defendant used more of the mark than necessary when making his commentary. It held that "[a]n individual who wishes to engage in consumer commentary must have the full range of marks that the trademark owner has to identify the trademark owner as the object of the criticism." This finding arguably conflicts with the fair-use cases generally holding that use of the plaintiff’s mark in its logo form is more than is needed to comment on the mark.
Conclusion
As these cases show, the basic tenets of both the descriptive and the nominative trademark fair-use defenses apply in cyberspace just as they do in more traditional contexts. We can expect to see more cases like these, where defendants will argue, and courts will continue to recognize, that the fair-use doctrine is alive and well on the Internet.
The above represents only a very small portion of the material that is available to you in your research of this matter, and upon which we made the decision to reinstate our products with small revisions. Again, we submit to you that the letter from your attorney was not only outrageous, but very poorly informed. We regret that your subsequent letter did little to soothe our nerves in this matter. We feel that you were, perhaps, misled, legally, but also that, in our opinion, your company may be just a little predisposed to bullying.
If you have any concerns with our products in the future, we invite you to immediately email us, and provide a legitimate legal argument for your concerns. It is our most heartfelt desire to help YOU protect YOUR trademark. You built it. You deserve whatever benefit you may derive from it. By the same token, you cannot prevent the world from referencing, where needed, as allowed by law and common sense, your products. You cannot prevent a man from selling a picture of his son hitting a homer in Little League because the bat manufacturer has not been offered a cut. You cannot stop a photographer from selling his pictures of a salvage operation because one of the divers happens to be wearing your mask. This is not only illegal, it is counter-productive to a degree that boggles the mind.
Again, if you have any legitimate legal concerns regarding our products, please voice them by email immediately. We'll consider them carefully and meticulously. We want to address them and correct or resolve them just as quickly as possible. I think you'll find people to be far more accommodating when approached with reason, logic, and some semblance of manners, as opposed to the bedroom manner of a 10,000 pound gorilla. The gorilla may have to be called in later---but why wake him up before finding out if Tweetie Bird can accomplish your goals first? We're all in business to make money--- ---and in our case, at least, to promote honesty, fair play and good will. We just want to make people laugh, and to, perhaps, provide them with some shreds of art. None of us wants problems. When problems do occur, we all want to solve them just as quickly, as effortlessly and as amicably as possible. Yet how much have both of us been forced to spend on this matter to date? And why?
In the absence of any legitimate legal concerns, we ask not to hear from you again.
Regards,
TrixiePixGraphics.Com
2-10-02
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