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More Trouble With AOL And GAIM
Well, AOL is at it again. In 1998, I wrote a program called GAIM which provided Linux users with a way to participate in AOL's Instant Messenger (tm) service. GAIM is one of the best examples of Open Source software in action, because even though I have not personally coded on it in years, momentum as continued through multiple maintainers to make it one of the best instant messaging programs available. From its humble beginnings as a two-week long project I started to teach myself GTK programming, to today where it is included in virtually ever Linux distribution, FreeBSD, and others, it has shown how even highly non-technical software can benefit from the Open Source model. We even receive numerous requests to port it to windows, because people like it more than the native AIM client in windows.
In July of 1999, I received a letter from AOL's Legal Representation requesting that we remove their AOL trademark and logo from our web site and product name, which we promptly did. Now, in 2001, the same firm has sent us notice requiring that we change the name of the product (that they clearly have known for almost 2 years) because they believe GAIM's name to be confusingly similar to the AIM trademark that they applied for in 2000, almost two years after gaim was released. We have until June 29, 2001 to prepare a response to their charges. Similar notices have been sent to the owners of the "AIMY," "KAIM," "wmGAIM," "TAIM," "phpaim," "blaim," "libfaim," "jaim," "eaim," and "maim" projects.
We have consulted with an attorney who believes we stand on a strong foot for the following reasons:
- "gaim" and others are not confusingly similar to "aim."
- Since AOL has been aware of our name for over two years and has not expressed any concern at the use of "aim" in the name of the product even while expressing concern over their AOL trademark and logo, they may have implicitly given us license to use it.
- AOL's trademark was filed for nearly two years after GAIM was first released. Unlike patents, it is sometimes permissible, however, to pursue a trademark since "first commercial use."
We are nearly out of options at this point, however, for the gaim project. We either will have to have some legal defense for gaim and the other projects, or will be obliged to change names.
If anyone out there is a lawyer, and is willing to take on this project to support these projects, please contact us by sending e-mail to gaimdefense@marko.net. We have a lawyer who is willing to do the requisit trademark research and send a letter for $500, so if you feel strongly enough that you are willing to contribute money to the project, please contact us and let us know that too.
Unfortunately, in the legal world, it's not just sufficient to be right, you have to have the finances, determination and other resources to fight the battle. There is always a balance tha requires picking and choosing the battles so important that you are willing fight, and those that you choose do not wish to spend resources defending. The question is, do the 40,000+ gaim users out there believe strongly enough that the defense of the "gaim" name is an important battle to fight.
I develop jaim (now JAM) at http://aerob.net/jam/ and I just caved to AOL and changed the name. I don't have time to fight them or anything, and I think the software is more important than the name. (even so, the jam page isn't even fully updated yet)
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June 18, 2001
/. boys!)
VIA E-MAIL
Joshua Harding
vaxgeek
RE: Notice of Infringement
Dear Mr. Harding:
We represent America Online, Inc. (AOL), with respect to its intellectual property matters. Our client is the owner of federal Registration Nos. 2,423,368 and 2,423,367 for its mark AIM (hereinafter, the AIM Mark) and operates the most widely-used interactive online service in the world. Our client has made extensive use of its AIM Mark in interstate and international commerce in connection with the advertising, promotion, and sale of its Internet and computer-related goods and services. Due to our clients widespread use, advertising, and extensive marketing, its AIM Mark has become very famous and many consumers recognize the mark as a distinctive symbol of our clients goodwill. Our client also uses the mark AIM.COM in connection with providing information via computer networks. As a result, consumers associate the mark AIM, when used in a software name or internet related service, with our clients high quality products and services. It has come to our attention that you are distributing an online communication software product using the AIM Mark at several web sites. Our client is concerned that your unauthorized use of its famous AIM Mark in this manner is likely to confuse consumers and, in addition, dilutes the distinctive qualities of the AIM Mark. We assume you similarly do not wish to mislead consumers and we request that you discontinue use of any name(s) that incorporate our client's marks, or marks confusingly similar to them. Additionally, the proprietary software used to operate the AIM service is owned solely by AOL and unauthorized distribution of our client's software, or derivatives thereof, is strictly prohibited. Our client would like to resolve this matter amicably and has asked that we contact you to confirm that you will cease using any names or marks that infringe upon the AIM Mark. We also ask that you contact us to discuss the possible copyright issues set forth above. We hope you appreciate AOL's interest in protecting its valuable intellectual property and we ask that you respond to this letter by June 29, 2001. We look forward to hearing from you and hope to resolve this matter promptly.
James R. Davis, II
202/857-6169
davisr@arentfox.com
Arent Fox Kintner Plotkin & Kahn, PLLC
1050 Connecticut Avenue, NW
Washington, DC 20036-5339
Phone 202/857-6000
Fax 202/857-6395
www.arentfox.com
(ps. i submitted this last week. little (rejected) after it, thanks
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If you want to use paypal for donating to the gaim defense fund, use "paypal@linux-support.net" as the recipient. All funds donated here will go to the defense, and anything left over if we are unable to pursue the defense will be refunded as much as possible with the paypal system.
People have asked which lawyer it is that we have found to do the letter, and it is Russel Balch of Akridge & Balch who has some experience dealing with legal issues related Free Software.
The trademarks were not given approval until 2001-01-23.
Kaim started more then a year before that and Gaim started in 1998.
If a company abandons a trademark for 3 years it is considered lost.
In 1999 AOL sent us a legal letter asking us to remove the aol images and name from our applications, they did not in any way refer to the aim name as one of the things we had to remove. By doing this they showed that they did not have a vested interest in the name which can *void*there trademark application which states that they first started using it back in 97 when it wasn't until recently that they cared about it. Also by not telling us to remove the name then, they were in essence giving us the right to use the name.
Gaim and Kaim can be argued are different enough from the word aim to be ok.
The reason that they sent us the notice of infringement was that they fear that kaim and gaim would "dilute" the aim name, when in fact both of our applications are superior to the official AOL linux client. In that regard you can argue that their clients were diluting the trademark and we would boosting it!
But even with all these things going for us this is a pure case of the big bad company beating up on the loyal fans. Here we had given our sweat and tears making an application to connect with and in the end promoting them. They have made it harder and harder to do this and for me this is the last straw.
As of the next release of Kaim it will have a new name. You can submit name ideas to kaim-developer@lists.sourceforge.net Submit a funny name and a real name. :) For those of you who have
been using Kaim we thank you. Kaims current status is very stable.
Because of that I will be fixing up the last few bugs and releasing the
next version as 1.0 To bad it can't be called Kaim.
The official kde aol client kit is being revamped as a jabber client. The Kaim development team will most likely move over and join the kit team. Kaim has done what Iset out to do. It is a stable aim client with a clean interface. But that was then this is now. Next comes the Jabber client. If you are trying to decide what im server you should go to Iwould recommend jabber. Did you know you can run your own jabber server? Heck jabber is so much better then aim it isn't funny. This probably isn't the end of aol's attack so get out now. Be part of the resistance! Get yourself and others away from aim. Here are two links to jabber sites.
http://www.jabber.org/
http://gabber.sourceforge.net/
Oh and one last thing... Hehe I don't mean to start something, but in a way (not really, but you get what I mean) it is now kinda illegal to have kaim and gaim on your computers. So stick it to the man and where is your mirror?
If you wish to contact me you can do so at icefox@mediaone.net
Do you changes clothes while making the "chee-chee-cha-cha-choh" transformation sound?
Linux AOL Instant Messenger? Do you think AOL would find that too similar. Would people think of AOL when they saw "LAIM"? I would.
While there may be a host of technical issues militating to the contrary, AOL's case for seems fairly strong on the merits. Trademark rights are not created by registration, but by prior use. The purpose of registration is to give constructive (legal presumptive) notice to those who do not have actual notice of a trademark claim. The absence of a registration has no impact when the defendant had actual knowledge of the plaintiff's trademark use. None.
With all due respect to counsel for the defendants, likelihood of confusion appears to be a slam-dunk. The two names have substantially the same appearance, substantially the same sound and suggest essentially the same thing. The prepending of a "G" almost certainly does not change the sense in which the marks are tangibly similar. The two products do essentially the same thing, almost feature for feature.
Of course, likelihood of confusion is an intensely fact-based inquiry, based on many factors, some of which do not clearly militate for a plaintiff's verdict, so an advocate may be able to muddy things up.
I think the strongest argument for the defense is an acquiescence by AOL, permitting the use of GAIM for so long without taking action. Still, that's a tough row to hoe as well.
One thing to seriously consider -- why do we CARE what it is called? Find some pithy name and refer to it as the product that no longer sounds like and is unaffiliated with "AIM," and be done with it.
Name doesn't matter. Regardless of the formal names, for me, "G"-AIM was AIM for Gnome, as "J"-AIM was AIM in Java. I suspect many others took that association away with them as well. Whether or not AOL would win, I think this makes a very attractive case for a jury.
In short, this isn't a front worth fighting. Why let the other guys fight the good fight where they can win? Why not find a middle ground, get AOL to behave by saving them some legal fees and get some useful concessions on the other side.
Sun Tzu suggests fighting where the enemy is weakest. AOL seems to have this one right. Do we?
Clearly AIM is not the genus. Instant Messaging, perhaps, but certainly not AIM.
IANAL but I thought that you could not trademark an acronym.
Of course you can trademark an acronym, sure as you can say International Business Machines, National Broadcasting Corporation, and General Electric.
AIM can stand for so many things, that their argument holds no water. (even when ignoring that the GAIM has been using the same name for two years) Off the top of my head, the alliance between Apple, IBM and Motorola was called the AIM alliance well before AOL Instant Messenger came out.
Right you are! Consider ABC, when used for a television network, a chain of pizzerias or for a chain of liquor stores. The IDENTICAL mark can be used for non-competing goods, and be very strong, even famous (not the legal term of art here) in their respective arenas.
This is the essence of likelihood of confusion. It is not just the designation, but the manner and purposes for which it is used that determines whether there is an infringement.
Of course, a wildly diluted acronym can be weakened by broad, shared use. And some acronyms might well become one and the same with their particular meaning. (A.I. for artificial intelligence, perhaps; maybe even IM for instant messaging.)
AIM does have one other interesting attribute, however -- it's a common english word.
And one that would be generic for pie or flavors of fruit roll-ups. However, for computers, or for records, Apple is arbitrary and as strong as Xerox.
If I remember from high school, this alone limits the scope of the protection granted by the trademark.
Only if it describes the underlying goods and services. Even then, the mark is registrable and protectable if it has attained "acquired distinctiveness." Examples of acquired distinctiveness are "International Business Machines" and "Steak & Ale"
Here is the list from the Acronym Finder:
AOL Instant Messenger , Abductory Inductive Mechanism , Abrams Integrated Management , Abridged Index Medicus , Accunet Information Manager (AT&T) , Accuracy In Media , Acquisition Information Management , Action Item Master , Active Inert Missile , Ada Interactive Monitor , Adaptive Internetwork Management (Ungerman Bass) , Administrators In Medicine , Advanced Idea Mechanics , Advanced Industrial Management , Advanced Informatics in Medicine , Advanced Information Management , Advanced Integrated Multiplex , Advanced Integration Module (Cisco) , Advanced Inventory Management (Telco Research) , Advanced Isolation Methods , Advanced ISR Management , "Adventures In Ministry, Inc. ", Aeronautical Information Manual , "Aether Intelligent Messaging (Aether Systems, Inc.) ", Africa Inland Mission , African Index Medicus , AFSATCOM IEMATS Microprocessor , Aid to Injured Motorcyclists (legal organization) , Air Inflation Module , Air Intercept Missile , Airborne Intercept Missile , Airlift Import Manager , Airman Information Manual , Alarm Indication Message (Lucent) , Alarm Interface Module (Telabs) , Alternate Input Method (OS/2) , Alternative Investment Market , Ambulatory Information Management Association , American Indian Movement , American Institute of Management , Amplitude Inter-Modulation distortion , Analog Input Module , Antenna Interface Module , "Apple, IBM and Motorola ", Application and Interface Module (Com21 cable modem) , Application Interpreted Model , Armored-Infantry-Mechanized , Army Information Management , Artificial Intelligence in Medicine (journal) , Artificial Intelligence Markets , ASAS Interface Module , Asian Institute of Management (Manila) , Associate In Management , Associate In Ministry , Association for Information Management , Association for Integrative Medicine , Association for Interactive Media , Association française pour les applications de l'Informatique à la Médecine , ATC Initiatives & Measures , ATM Internet Mode , ATM Inverse Multiplexer (ATMF) , Auroral Ionospheric Mapper , Australian Institute of Management , Authoring Instructional Material , Authorizing Instructional Media , Automated Information Management , Automated In-line Mailer , Automated Inserting Machine , Automatic Identification Manufacturers , Automatic Insert Machine , and Automatic Interrupting Motor-operated
Amen. How about GNA ("Gna's Not AIM")?
But seriously. How about gM, for "gnu messenger?" I don't think General Motors could sue, because your client is probably not easy to confuse with a car :)
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These are referred to as "SMACKS!". The companies know most developers and small companies would rather switch than spend money to fight. The intent is to get you and anyone like you to go away for the price of an on-staff attorney.
Would they win in court? Hard to tell this is a very disputed area of law, and the courts are not helping. (IANAL) They can make TM claims, and may win, so they have little to lose. If nothing he may be able to claim GAIM as copyrighted material. Public domain however, does put that on short leash, at least in the case of violations.
If you have the money, desire, or can get the ACLU, FSF, etc. to hear your case you may wish to fight as long as they will. AOL, like Microsoft, GM, etc., has deep pockets and a long outlook on things. This could be tied up for years. You can have fun with it or call it a day and give it a different name.
While many people tell you: "fight fight fight" it is easy to say when you are not getting a second mortgage to ensure the $100k you forked out in legal fees to date are not lost. If however, you cannot get free help or have just as deep a pocket...sometimes be right doesn't help.
Life is not fair, but consider the alternative.
While I applaud your good sense in this quote, I still have to do so reservedly. What AOL is doing here is harrassment, and changing the name will merely give them a green light to continue harrassment as an effective tactic.
If a good legal team that can defend them at minimal cost to the project cannot be found, then your advice is probably the best. On the other hand, what they are doing now, seeking to find such a defense team if at all possible, is definately called for as well. No need for them to cave immediately. Far better to put out the word as far and as fast as possible as to what is happening, and solicit aid. There are many possible ways it could be forthcoming. If it is not, they can still change their name next week...
"That old saw about the early bird just goes to show that the worm should have stayed in bed."
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Friends don't let friends enable ecmascript.
Could you create a competing television network to NBC, and call it ABC?
Analogies suck.
AOL should go from fighting GAIM to endorsing it. They own Nullsoft that came up with WinAmp and also created gnutella (though they were quick to whisk that away). It's not the end of the world for a huge company to endorse open source software that uses its services.
I know it may not be the perfect solution, but AOL could register "GAIM", give money to the GAIM developer(s) (maybe even hire them). I know that was the basis of their April Fool's joke (very funny - read it at http://gaim.sourceforge.net. If AOL needed to keep something private they could make a proprietary module to load into GAIM (and other open source products that give AOL functionality). The module could have a clause that it could only be used in conjunction with open source products so that MSN couldn't use it.
Yeah, I know, not perfect, but at least then AOL would be sponsoring an excellent Linux client that is far superior to the Java crap they promote.
"The universe seems neither benign nor hostile, merely indifferent." --Carl Sagan
Well, which is cheaper, paying $500 for a lawyer to give you an opinion (which still doesn't mean you've gone to court and won or settled with AOL-- which will require a lot more than $500) or simply changing the name? I'd rather send you money so that you could develop good GPL software rather than waste time and energy in court on the name-- a battle I can only half-heartedly support since it's like rooting for the underdog, but not a battle about which I'd be overly optimistic. Go with GNOME Instant Messenger (GNIM?) and be done with it.
I do not have a signature
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