More Trouble With AOL And GAIM

Mark Spencer, author of the well-known GAIM instant messaging client, wrote the following account of how large, lawyer-laden AOL is dealing with software projects with names similar to its AIM service. Trouble is that (among other things) AIM wasn't registered as a trademark when GAIM appeared. Does anyone believe that the two are "confusingly similar"? It reminds me of Parker Brothers objecting to clue.com -- is the Air Force next? Update: 06/25 10:53 PM by T : Russell Balch of Akridge & Balch will be representing the GAIM project; if you're interested in helping the GAIM authors in this legal fight, Mark writes: "We've set up an account on paypal ("paypal@linux-support.net") for contributions. Left over money or all of it if we can't get enough to pay for the letter will be refunded as much as possible through paypal."

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.

Comments

jaim developer

[VAXGeek]

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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the acutal letter

[VAXGeek]

June 18, 2001

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 /. boys!)
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