Certainly your theory explains why The Library Hotel gave OCLC everything
they were asking for, after many months of ignoring them, no question.
Or, maybe not.
Possibly the fact that it's OCLC that got what they wanted, and the Library
Hotel didn't, means that it wasn't OCLC that backed down.
Lis Carey
-----Original Message-----
From: Samuel Trosow [mailto:strosow@uwo.ca]
Sent: Monday, December 01, 2003 10:03 AM
To: Carey, Elisabeth; law-lib@ucdavis.edu
Subject: Re: [NetGold] TRADEMARKS: CASES: It is Safe to Return to Your
New York Hotel Late in the Morning Some
I stand by my comments. It's just as likely that the OCLC realized that
they stood much to lose by actually litigating their claim of consumer
confusion and trademark dilution. You can't discount the liklihood that
they recognized the very real risk that (1) their claim of consumer
confusion was a bit of a stretch given the marked differences in
services offered by the hotel; (2) the strong possibility that an attack
on the mark on the grounds of genericism would succeed.
Sam Trosow
Carey, Elisabeth wrote:
> Given that The Library Hotel and OCLC reached a settlement that gives OCLC
> what it was asking for--acknowledgment of OCLC's ownership of the
mark--plus
> a sizable donation from The Library Hotel to OCLC
> <http://oclc.org/news/releases/20031124.htm> I'm mystified by your
> conclusion that OCLC, or anyone else involved "understood that they were
on
> such tenuous grounds".
>
> What this looks like, in fact, is that The Library Hotel finally talked to
> some trademark lawyers, who advised them that they were on such thin ice
> that, despite winning against OCLC in the public relations war, they were
> going to lose in court.
>
> Lis Carey
> Testa Hurwitz & Thibeault
> 125 High Street
> Boston, MA 02110
> (617)310-8273
> careye@tht.com
>
> -----Original Message-----
> From: Samuel Trosow [mailto:strosow@uwo.ca]
> Sent: Tuesday, November 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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