IMAX apologizes to Ars for its trademark retraction demand (opens in new tab)

> Any reference to their brand is not a trademark issue.

Well, no, this is not true. Someone at a theater who uses the IMAX brand but does not have IMAX technology (maybe they use some no-name or in-house big screen technology) could do so by referencing the brand (ie. IMAX wording, IMAX logo, etc) in which case it'd be a trademark infringement. They'd be tying the IMAX brand to a non-IMAX screen in what I assume would be an unauthorized manner (I highly doubt IMAX would authorize its use).

Not all references to their brand are trademark issues but there are certain cases where references to the brand are trademark issues.

Exactly. I wonder how would this go down if the writer of the article compared IMAX directly instead of quoting a source.

>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.

Just another day of lawyers inventing crimes to seem relevant and needed.

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

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).

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.

I love how the C&D letter is used as a selling point on the book's Amazon page: http://www.amazon.com/Broken-Piano-President-Patrick-Wensink...

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.

There's selection bias at play here - how often have you heard someone gossipping about a reasonable legal demand politely offered, which they complied with? Makes for a dull read.

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!

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

U of Oregon has had a similar with ducks and mice: https://en.wikipedia.org/wiki/The_Oregon_Duck#Relationship_w....

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

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.

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

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.