Unauthorised use of the Registered Trade Mark "Yellow Pages"

I guess it had to happen sooner or later

I just had an email from one Sue Cremer, Personal Assistant at Piper Alderman which promotes itself as the "Best Professional Services Firm in South Australia 2007"

They claim that this posting last year Endangered Species - Australian Yellow Pages infringes their client's trademark by my "use" of their trademark and that the posting might mislead poor widdle you to believe that I have an association with their client, Yellow pages or Sensis.

Now it beats me how I am "using" their trademark beyond "quoting" it in a series of screen shots to demonstrate that their search tools are really not up to snuff. I am certainly not pretending to be a business directory or to provide phone numbers and other details to anyone who uses my site, and if I HAD a business relationship or "association" with the companies I would expect that it would damned quickly have been severed for publicly giving them a zinger.

But I'm always interested in learning something new so here's the challenge; what's their problem?

Oh, and at the end of their pdf attachment they invite me to signal my co-operation by writing the same on the letter and faxing them a copy back. Right, like I'll sign up to fix an unspecified example of an unspecified infringement to satisfy a company that already has more money than god and spends too little of it on putting together a decent web strategy.

Or could it be that they just don't like being criticised and are trying to use an irrelevant piece of law to shut me up? Nah, that would be unprincipled and stupid, I might blog about it, couldn't happen.

Update

This is what they sent

This is what they got back.

Please explain in what way I am infringing the use of the trademark. I am not conducting any business as a telephone book, telephone directory, business directory or any other kind of telephone number search tools, nor am I attempting to pass myself off as the "yellow pages" I do not offer search of the yellow pages or anything like it, nor do I attempt to sell advertising, listing or any other kind of service as yellow pages or anything of that kind.

The page to which you refer is a criticism of the efficacy and adequacy of the Yellow Pages search tools on the date specified and in doing so demonstrates the efficacy by quoting (via screen shot) the points that I wish to make. No reasonable person could possibly mistake my blog for the Yellow Pages and even if they did, could not possibly find any such service there.

Under fair use provisions I am entitled to "quote" from a source and identify that source correctly so that there is no doubt about the point, intention or organisation to which I refer. I do that, and no more.

Furthermore you suggest that my "use" of the trademark Yellow Pages or a mark which is substantially identical or deceptively similar to your clients registered trade marks, infringes your clients trade mark rights.

Can I ask you to be specific please? What "use" of the trademark itself am I making, or is the trademark I am using substantially similar or deceptively similar to your client's? Or perhaps it is all three. Then we come to the term "use". Please be good enough to specify the "use" to which I am putting this actual, or similar or deceptive trademark and whether said trademark is the actual one, or some similar or deceptive one.

Finally you suggest that such use is "likely to mislead members of the public into believing that there is an association between your organisation and our clients."

I would be fascinated to learn from you the nature of the "association" implied, expressed or entailed in the article to which you refer. Please specify both the kind of association and the specific language used to imply that that would be likely to lead people to that assumption.

Frankly, that is absurd on its face and indicates that you have not bothered to read the article that you refer to. At no point do I claim to have such an association (beyond that of interested user), nor do I hint, imply or invite the reader to assume such a relationship. However, if you can specify the precise language to which you refer I will be more than happy to reconsider.

I am, however, critical of the product/ service being offered by Yellow Pages as inadequate to the environment in which it is being offered. Could it be that your clients are not happy with that criticism and, rather than engage with me about it, or responding to the criticism as they are both entitled and enabled to do in the comments on the posting, they have resorted to using your offices and an irrelevant piece of law in an attempt to intimidate me into shutting up and going away?

Comments

[Johnnie Moore]

In my head I'm imagining the energy with which you wrote the original post, and now this one.

And then I'm imagining what's happening inside the head of the person who sent you this letter.

Then I'm wondering, who would be more likely to sustain their enthusiasm for a fight?

My money's on you, Earl. What they've sent you is small, nasty and mean. It is also now part of the meaning I will make when I hear about YellowPages.

[Jon Husband]

'Tis somewhat surprising (well, not really ... ). It's actually sad.

I'd bet that most high-schoolers, if given your initial post as a case study. would be able to sort out that you are not "using" their trademark and that, as a response to the issues posed in the case study, would suggest developing a more effective and responsible service. nopot seeking to squash "your widdle blog posting".

It's such a nice, clear, short and succinct example of how corporations with money think and act as if they are more powerful than a thinking ex-customer armed with a keyboard and hyperlinks ... but it's so much harder to shut people up now than it was a decade ago. Previously, they could ignore and not respond ... now it's somewhat harder and more costly to do so.

[David S. Isenberg]

This is a classic "chilling effect." It's kind of like when the Harvard book store recently declared that students could not write down the prices of products they sold because it violated their intellectual property rights.

[Earl Mardle]

Hi Guys,

Yep, yep and yep. Just updating with my reply and a copy of their letter.

[Jon Husband]

I clicked through to read the letter from the law firm.

From the wording (and your elaboration makes it clear, i think) nobody actually read the blog post or if they did thought that a polite but peremptory letter from an actual official big-pants law firm partner would have the chilling effect to which David refers. But as you point out, chilling what, exactly ? Your competition for them ... ha ha ... criticism of their service ? You're allowed.

if you ever need to cite a classic case, check out www.untied.com (one of the original "blogs" re" customer complaints), referring to United Airlines. I am certain that United Airlines would have liked to have shut down that site at least 9 years ago.

I hope boatloads of people stop by and drive this post up the pop charts.

[Earl Mardle]

Hi Jon

Yeah, I found it very odd to send this boilerplate crap that tries to cover all the exits by specifying nothing.

Hello, officer? Someone just committed an offence against me. No, I can't specify what offence nor tell you how they did it, I just want them stopped"

Well, it worked in the DDR for a generation, why not Australia in 2007? Anyone want to make the case for a difference here?

As for the pop charts, 'twould be nice, although I'd have preferred it on the basis of the original post. Still, it would be fun to watch the law of unintended consequences go to work.

Interestingly if you Google yellow pages Australia the post comes up on the second page, which is what someone from said YPA was probably doing and had a little fit.

Incidentally, compare this little effort with the response to my shot across the bows of The Flight Centre a couple of years ago. At least Skroo Turner had the wit and the cojones to front up here and post a response defending his company.

[Saltation]

This is standard practice when attempting to get unfavourable publicity voluntarily taken down. Wheel out lawyers, crank out official-sounding threats.

Trademark protection prevents you adopting or infringing their commercial identity in order to compete with their existing or likely market.
Game over.

It does NOT provide protection against reviews or commentary on the trademark holder.

You've already responded to them, but should they come back to the party, I suggest the above potted summary could be a useful shortNsharp "fuck off" notice.

I suggest you also add something along the lines of:

"It is clear your claims have no basis in law. Your persistence in pressing them implies two possibilities:
1. your lawyers have no knowledge or understanding of the laws they cite
2. you and your lawyers are attempting to mis-use the legal framework for your own commercial gain.

It is possible BOTH possibilities are the case. If so, I strongly recommend you purchase a legal dictionary and look up the important term: 'Vexatious Litigant'.

If you still do not understand how the courts view vexatious litigation, I recommend you read various of the cases where the court has found the plaintiff vexatious.

Thank you and goodbye."

[Earl Mardle]

I'm waiting to find out whether they have found THIS post and how they feel about their unsolicited (pardon the pun) correspondence being posted as it happens.

I wonder too how their will clients will feel about the discussion that they are NOW being associated with.

And god help them if David I decides to link to it.

I did think of an alternate approach to the FO letter; I could offer to sell them the space currently occupied by the offending posting, and this one, and any subsequent ones.

Now, what would it be worth? And does that constitute a shakedown or would that have to have been the original intention of the original post?

Questions, questions.