Somebody correct me if I'm wrong, but as I remember the case, OCLC had only wanted the hotel to acknowledge the trademark in some kind of a notice in the advertising, etc. The hotel never responded to OCLC's repeated requests (which seem to me, at least, to have been perfectly reasonable and harmless to the hotel), so OCLC felt they had to file suit.
Seems to me that they got what they wanted in the settlement, i.e. acknowledgement of the trademark. Also isn't the hotel making a charitable donation as a part of the settlement? If they had responded to OCLC's original request, they probably would have 'saved' that money!
FRANK DRAKE
CHICAGO
-----Original Message-----
From: Samuel Trosow <strosow@uwo.ca>
Sent: Nov 25, 2003 3:45 PM
To: law-lib@ucdavis.edu
Subject: Re: [NetGold] TRADEMARKS: CASES: It is Safe to Return to Your NewYork Hotel Late in the Morning Some
The better question would be whether there was really a legitimate TM
infringement claim here in the first place or whether it has long been
in the public domain (I'm speaking only of the trademark here, not about
OCLC's copyright in updated versions of DDC)? When was the last time you
saw a TM notice actually posted with respect to the Dewey Decimal
Classification System? Do you see it on the shelves of the public
libraries that use it? Don't you think the mark Dewey with respect to a
system of classification has long since become generic? And even if
there is such a surviving TM, their claim of consumer confusion in this
particular case was quite a stretch.
I won't repeat the lengthy posts I sent a few weeks ago about this whole
issue except to say that OCLC's claim was tenuous, both in terms of
their claims of confusion as well as dilution.
Clearly, they thought better of proceeding since they must have
understood they were on such tenuous grounds and that they would be
placing any claim of TM ownership at risk, such as it is.
Sam Trosow
University of Western Ontario
Mary Louise Wilker wrote:
> This has been pointed out before, so lets not make OCLC the villan in
> this. Anyone who holds a trademark has a duty to defend the trademark
> against infringement. If they don't the trademark is dilluted and can
> pass into the public domain. So they can't just shrug their shoulders
> and let it slide if they want to maintain their trademark.
>
> Mary Lou Wilker
> Library Director
> Warner Norcross & Judd
> 900 Fifth Third Center
> 111 Lyon St. N.W.
> Grand Rapids MI 49503
> fax 616-222-2236
> phone 616-752-2236
>
>
>
> >>> "David P. Dillard" <jwne@astro.ocis.temple.edu> 11/25/03 12:13PM >>>
>
>
> This case and the defense of trademark rights by OCLC for a copyright
> scheme that has seemed to be a public method of organizing so many
> libraries, not only came as a great shock to many, but also leads one to
> wonder what any database protection legislation passage will find OCLC
> doing to enforce their newly one protections should this database
> protection become law.
>
>
> Sincerely,
> David Dillard
> Temple University
> (215) 204 - 4584
> jwne@astro.temple.edu
> <http://groups.yahoo.com/group/NetGold/>
> <http://www.edu-cyberpg.com/ringleaders/davidd.html>
> <http://www.kovacs.com/medref-l/medref-l.html>
>
> ---------------------------------
>
> On Tue, 25 Nov 2003, Sam Trosow wrote:
>
> > I'm glad to see that OCLC has backed off of its over-reaching
> position and has
> > settled this matter on such positive terms. I'd like to think that
> the strong
> > outpouring of concern from the library community over OCLC's tenuous
> tactics
> > had some postiive influence in this resolution.
> >
> > Sam Trosow
> > University of Western Ontario
> >
> > "David P. Dillard" wrote:
> >
> > > Date: Tue, 25 Nov 2003 06:50:21 -0500 (EST)
> > > From: David P. Dillard <jwne@temple.edu>
> > > Reply-To: NetGold@yahoogroups.com
> > > To: NetGold <NetGold@yahoogroups.com>
> > > Subject: [NetGold] TRADEMARKS: CASES: It is Safe to Return to Your
> New York
> > > Hotel Late in the Morning Somewhat Dewey Eyed
> > >
> > > TRADEMARKS: CASES: It is Safe to Return to Your New York Hotel Late
> in the
> > > Morning Somewhat Dewey
> > >
> > > OCLC and The Library Hotel Settle Trademark Complaint
> > > <http://www.oclc.org/news/releases/20031124.htm>
>
> <snip>
>
>
>
>
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