A trademark cease-and-desist for Rockbox's Tetrox
| From: | =?iso-8859-1?Q?Bj=F6rn?= Stenberg <bjorn-AT-haxx.se> | |
| To: | rockbox-dev-AT-cool.haxx.se | |
| Subject: | Tetrox renamed to Rockblox, for trademark reasons | |
| Date: | Tue, 19 Sep 2006 23:23:48 +0200 |
Hi all. We received a "Cease and Desist" letter from a law firm representing The Tetris Company, which holds the trademark "TETRIS". They claim our "Tetrox" plugin infringes on their trademark "Tetris" and demand we remove it. After consulting US and Swedish lawyers, I have decided to abide them by renaming Tetrox to "Rockblox". Old members will remember this was the name of the plugin that Tetrox replaced. The issue here is that trademark law is what I call a "soft" law. We do not use the word that they have registered, and yet a judge may still find us infringing. They reason is that a word/mark is deemed infringing if there is "likelyhood of confusion". That likelyhood can only be decided by a court, and going to court in the US costs a truckload of money even if you win. In short: It's not worth it. In addition to the trademark claim, they also claim copyright on 'features' of the game. However, the lawyers agree with me that those claims are nonsense so we can safely ignore them. -- Björn
Posted Sep 20, 2006 21:50 UTC (Wed)
by etrusco (guest, #4227)
[Link] (1 responses)
Rockblox is so much a better name! ;-)
Posted Sep 21, 2006 0:16 UTC (Thu)
by rknop (guest, #66)
[Link]
Posted Sep 21, 2006 7:09 UTC (Thu)
by amd (guest, #37690)
[Link] (3 responses)
Posted Sep 21, 2006 7:37 UTC (Thu)
by bignose (subscriber, #40)
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They don't; each country gets to make their own laws. What happens, though, is that the US has for a while now been pressuring each country individually to implement laws friendly to US corporations, under the premise of "Free Trade Agreements".
Posted Sep 21, 2006 7:38 UTC (Thu)
by pphaneuf (guest, #23480)
[Link]
They don't. That's what our lawyer told us when we received a similar letter (we're based in Canada).
Note that the letter that we received had another letter attached, which basically we'd be nice boys and stop doing anything remotely looking like Tetris, telling us that there would be no lawsuits or anything if we signed that letter and sent it back.
Our lawyer told us that while the cease-and-desist has to be issued by a lawyer in the same country as the recipient, as a general rule, that (in Canada, at least) signing the attached letter and returning it, though, would be considered a contract, and would be applicable!
So we just ditched it in a garbage can and never heard from them again.
Posted Sep 21, 2006 13:03 UTC (Thu)
by zabriska (guest, #29486)
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1. If you participate in an activity that could infringe a trademark in more than one country, you may be liable for infringement in each country. The trademark holder can sue you in the country in which the infringement occurred; they do not have to come to your country to sue you.
2. If you put a download on a Web or FTP server that is accessible in a country (even if the server is not located there), then you may incur liability in that country.
3. In the United States, a trademark does not have to be registered to be claimed.
a. In this case, the trademark holder must be able to prove in court that there is a pattern and history of use that establishes and maintains the mark.
b. Unregistered or "common-law" trademarks are recognized in state law in the US. I do not know if they are recognized under Federal (US national) law.
4. At least in the United States, a trademark holder must actively defend a trademark to keep it. Agreed that many lawyers overreact on this one, but a holder who does not "call out" possible infringers risks losing the mark.
5. If you are found to be infringing a trademark in another country and there is a trademark treaty between your country and country of infringement, that obviously works to the holder's advantage. However, a court decision in another country may be held to be persuasive in another if the laws (or applicable elements) are similar. Admiralty (sea) law is an example: American, British, and Canadian courts commonly cite each other's decisions. It is in the holder's interest to first litigate in the most favorable country.
May not be worth $0.02, but there it is...
Posted Sep 22, 2006 6:11 UTC (Fri)
by gvy (guest, #11981)
[Link] (1 responses)
See e.g. http://www.atarihq.com/tsr/special/tetrishist.html
Posted Sep 23, 2006 20:10 UTC (Sat)
by bagder (guest, #38414)
[Link]
Posted Sep 22, 2006 14:34 UTC (Fri)
by dmarti (subscriber, #11625)
[Link] (1 responses)
Comments on the Quinn case from Rick Moen, plus links to trademark background articles.
As the saying states, "necessity is the mother of invention" (or something like that, free translation from Portuguese...).A trademark cease-and-desist for Rockbox's Tetrox
But I wouldn't dare saying it rocks :-P
I always just think that "necessity is a mother."A trademark cease-and-desist for Rockbox's Tetrox
I still do not understand why US laws apply to all the countries all over the world...A trademark cease-and-desist for Rockbox's Tetrox
> I still do not understand why US laws apply to all the countries all overAll countries must implement US-friendly laws
> the world...
A trademark cease-and-desist for Rockbox's Tetrox
IANAL, but I think there is more to this subject than the previous two replies have addressed:US law does not apply everywhere, but...
If they have forgot that Tetris is an invention of Russian programmer, if they want to go forward and *really* back their claims that they even have anything in the trademark or features, they better *think* in the first place -- what are they painting themselves into.Fscking american companies! :-E
The Russian who invented it is called Alexey Pazhitnov (http://en.wikipedia.org/wiki/Alexey_Pazhitnov) and he is a co-founder of the company named Tetris that nowadays seem to mostly deal with sending C&D-letters all over the world.Fscking american companies! :-E
Yes, The Tetris Company does have aggressive lawyers. Right now their business model seems to be licensing Tetris-brand Tetris for phones, so they just need to keep enough cease and desist letters in the air to scare the cell phone carriers away from offering off-brand Tetris clones.
A trademark cease-and-desist for Rockbox's Tetrox