New Legal Threat To GMail

wellington writes "Google is facing a renewed threat of legal action from a company that claims to own the intellectual property rights to its GMail e-mail service. Independent International Investment Research, a British company that specialises in research and has several leading City investment banks as clients, argues that it launched "G-Mail web based email" in May 2002."

Comments

Yeah, but...

[killmenow]

Google's is called GMail BETA

G?

[SuperJason]

So they claim that they own the G?

Re:G?

[Pius II.]

The German telecom already owns the T. They sued everybody who had a T in their trademark or web adress. That includes owners of domains such as "t-beutel.de" ("tea-bag.de"). They also have a trademark on the colour magenta (yes, the M in CMYK) and have been known to sue people using it in advertisements (a common practice for magazines where you pay per colour used).

Re:G?

[southpolesammy]

Guess that means that Sesame Street is going to have to start paying royalties....

Fair's fair...

[Anonymous Coward]

Google should give them 50% of the profits from GMail.

Let's see, a free email service generating $0 profit. 50% of $0 equals $0.

Settled.

Re:Fair's fair...

[Professeur Shadoko]

zero ?

and what about the ads ?

free != zero-profit.

Re:Fair's fair...

[bleckywelcky]

You joke, but IIR is already estimating how much their should receive for the mark. Looking at their website: www.iirgroup.com and navigating through their press releases, you can find this one entitled GmailTM web-based email trade mark valuation report. Guess how much they are estimating? Directly from the PDF: $48million to $64million. How did they arive at this number? Well, Google's annualized revenues are $3,224million. And they pulled 0.5% out of the air as a "conservative" royalty rate (because we know that all of Google's revenues are due to ads placed in GMail), which gives us about $16million. And then they feel they deserve 3x to 4x that amount, and tada! We arrive at $48million to $64million. Now that is the most solid reasoning I have ever seen.

Already done

[Dopefish]

I've actually already patented the use of single letters in front of "Mail", so they're both screwing me over.

AMAil
BMail
CMail
DMail
etc.

ALL MINE!

Yeah, I'm Amazon.com. This whole "Dopefish" thing is just an alias.....

Intellectual property rights to GMail?

[Itchy Rich]

Surely this is just trademark infringment at most. The summary seems to infer that general IP rights to the service are involved, rather than just the name.

Re:Intellectual property rights to GMail?

[stienman]

A trademark is intellectual property (IP).

IP encompasses several "properties", some of which are:
Copyrights
Patents
Trademarks
Trade Secrets

So the GMail service is accused of being in violation of the intellectual property of some other company.

-Adam

Attack ONE!

[screevo]

Steve Ballmer hires a minion to launch the first volley in the Internet War of 2005

Sounds legitimate

[brucmack]

Sounds like they have a legitimate claim here... They did launch a web-based email service called GMail well before Google. The fact that they've been negotiating with Google for the past 15 months would indicate that they also brought their claim to Google early on. I wonder why Google hasn't just paid them to license the name? Wouldn't they rather use some of their excess money reserves than risk a tarnished name?

Re:Sounds legitimate

[kubrick]

It's the X Window System, not X-Windows as you claim.

Re:Sounds legitimate

[Saeed al-Sahaf]

It's a frikken G and a dash. The fact that Google would have to pay a company to use a G is just ridiculousness.

Yes, but had it been the other way around, you know very well that Google would not have been "good" and just looked the other way.

Aaarrgggh!

[gowen]

intellectual property rights to its GMail e-mail service.

Look, if you keep using the catch-all phrase "Intellectual Property" to cover distinct ideas, no one will ever get smart about the differences. This is about a trade mark "GMail" -- only the *name* is the important thing here.

And they did register that trademark long in advance of Google.

Re:Aaarrgggh!

[AKAImBatman]

try marketing your Micro-soft operating system and see how long that "but we had a hyphen!" argument holds up.

You might be able to get away with it if you use significantly different styling for the logos. e.g. Microcenter could cause brand confusion if they styled their brands in such a way as to make the consumer believe that they were a Microsoft company.

However, a judge would probably find that you were attempting to cause brand confusion based on the shear popularity of the Microsoft mark.

In this case, however, my understanding is that Google didn't learn of the mark until a month after they launched their service. In addition, the two services operate in different markets. So Google has a strong case in that the two services are unlikely to be confused, and that Google has been using the mark in good faith.

Doesn't matter. The Firebird database is a niche item, but they'd still have won a trademark case with Mozilla Firebird.

I wish people would stop repeating nonsense like this. As with many legal threats, there was no court case. Since there was no court case, there was no determination of brand validity. Since there was no determination of brand validity, there is no legal precident steming from the issue.

The most that could come out of it is that if Firebird (database) ever went to court over their name again, they could claim that Mozilla decided to settle because they believed in the validity of Firebird's claims. (In reality Mozilla just didn't want any trouble, so they picked a truely unique name.)

Vague Summary

[aussie_a]

Wow, yet another vague summary, that can definitely be misleading. Having first read the summary, I thought it was about a company claiming to have created the code and/or services of Gmail only to have google steal it. But no, the company is merely sueing for trademark infringement. Way to go slashdot! The word "TRADEMARK" could have been mentioned somewhere in the article, would have cleared it up a tiny bit. But I guess Slashdot gets more pageviews (and ad views) by confusing its readers.

rumors

[Anonymous Coward]

I heard that Google is planning on calling it's personalized homepage GSpot...

Re:rumors

[earthloop]

They wouldn't do that. Nobody would be able to find it!

Re:rumors

[dustinbarbour]

Easy... with you palm facing upwards, reach into the vagina with one or two fingers (3 or 4 after she's given birth to 3 kids). Now curl your fingers towards you in a "come here" motion. Woopee! You've found the G-Spot. What you're looking for is the continuation of the clit once it enters the body. Wanna be hardcore? Suck on her clit who=ile performing this "come here" motion and she'll be screaming your name in no time.

The penis is a terrible tool to stimulate the G-Spot with. There are certain positions in which penile penetration can stimulate the G-Spot, but many women find them uncomfortable. So get in there with those fingers!

Re:Why so long

[Enigma_Man]

If you RTFA, you will see that the company is a small company, and was involved in communication with google over the span of 15 months or so, before jumping right into litigation. That sounds like the right thing to do, IMO, rather than just sue immediately. The company is a small one, and they say they don't have the big money that Google has to bring a law suit just to protect their name.

-Jesse

'Intellectual property'

[Ed Avis]

The summary for this story is another good example of why the phrase 'intellectual property' should be avoided.

The company does not 'claim to own the intellectual property to GMail'. It has a trademark claim. This is completely different and unrelated to any copyright interest, patent held, or trade secret. Lumping them all together as 'intellectual property' which can then be 'infringed' in some vague way just muddies the issue.

From TFA...

[Foobar of Borg]

He [Mr. Smith] said he was "reluctantly" considering taking legal action against Google, which could involve his family trust selling shares in the group to fund the claim.

"I feel it is up to me as the founder and the major shareholder. We're not going to sit on the sidelines while a company uses our intellectual property rights," he said. "We're confident that we have the funding available to us and we're girding our loins," he said.

As much as they may have a case, I always find the "we don't want to, but they are forcing us" argument funny. Not because of the company itself, but because I can imagine some IP lawyers saying, "Yesss! They are being forccced to! Hisss!" as their forked tongues flick from their mouths and they rub thier greedy paws together with reptilian glint in their eyes.

Re:From TFA...

[PhysicsPhil]

As much as they may have a case, I always find the "we don't want to, but they are forcing us" argument funny. Not because of the company itself, but because I can imagine some IP lawyers saying, "Yesss! They are being forccced to! Hisss!" as their forked tongues flick from their mouths and they rub thier greedy paws together with reptilian glint in their eyes.

One of the problems with owning a trademark is that you must defend it or lose it. Unlike copyright, trademarks can be invalidated in court if they become diluted through other people using it. If these guys want to continue to have rights to the GMail trademark, they are forced to litigate.

Re:From TFA...

[SirGeek]

As much as they may have a case, I always find the "we don't want to, but they are forcing us" argument funny. Not because of the company itself, but because I can imagine some IP lawyers saying, "Yesss! They are being forccced to! Hisss!" as their forked tongues flick from their mouths and they rub thier greedy paws together with reptilian glint in their eyes.

Since when do reptiles have paws ?

Re:G-Mail?

[/ASCII]

Gmail and G-mail are too similar to be separate trademarks. Fortunatly for Google, a trademark is only valid in a specific domain, and Google have never tried to trademark the term Gmail for a stupid mail-based service that no-one would want, so they should be safe.

gmail.com

[bookemdano63]

But they never bother spending the $10 to register gmail.com?

Obligatory Simpsons quote

[wootest]

'Nobody snuggles with Max Power. You strap yourself in and feel the "G"s!'

Stupid issues

[LiquidCoooled]

If a trademark is worthy of a multi million dollar claim, then it should be higher in the search engine listings than the news about the lawsuit.

It just feels wrong otherwise.

What!?!

[ifwm]

"We're not going to sit on the sidelines while a company uses our intellectual property rights"

Has anyone even heard of these idiots?

YOU PUT A G IN FRONT OF MAIL.

Don't try to act like it's the light bulb, you snaggletoothed limey.

Re:Two letters

[slapout]

Good point. I wonder why the other company didn't register the gmail.com domain.

In the credits at the end of the lawsuit...

[mikael]

This lawsuit has been brought to the attention of your lawyers by the letter G, and the numbers 0 and 5.

GMail = Google Mail

[salimma]

Note that Google's Mail service is now accessible at mail.google.com? Pretty much all the g-prefixes have been removed.

So they'll probably settle if necessary and just go on with Google Mail. Big deal.

Re:GMail = Google Mail

[cabjf]

Except that all the email addresses end with "@gmail.com." If google changed it to "@google.mail.com" or some similar name, everyone with a gmail account would have to change their email address.

Repeat after me: There's no such thing as "IP"

[Anonymous Coward]

There is nothing called "Intellectual Property".

Either you say:
Trademark
Copyright
Patent

But "Intellectual Property" is not a term you can use intelligently, only as a way to further the company propaganda-machine. This example clearly shows it is not suitable for intelligent readership. I heard this from RMS last time he visited Norway.

The letter 'G'

[Baric]

'mail' is a generic term. G is just a letter, devoid of any meaning beyond a possible abbreviation. In this case, it's a legitimate abbreviation for 'Google'. This reminds me of IBM trying to trademark the number 2 to stop vendors from making PS/2 compatible computers called "PC/2" They lost. Intel tried to trademark the number 386 & 486. They also lost. I'm not a google apologist or anything, but I think the litigants don't have a case

Re:The letter 'G'

[Anonymous Coward]

I have always been under the impression that from trademark disputes there need a few conditions regardless of the simililarity of the name:
1. Serve the Same Market Segment
2. Possible Confusion

and perhaps

3. Intent to create confusion

A look at www.gmail.co .uk shows that this form of "Gmail" is only availible to those that sign up for this special Consentius program which is only availible on the coperate level (unless after 10 minutes I missed the a link or any info...)

So in comparision we have Googles "Gmail" which is free, public, only email, and is very clearly marked on every page as comming from Google

On the other, we have this "G-mail" which is tied into a coperate program which I assume costs a decent amount of money and is clearly not from Google.

I don't see how they have much of a case since it would be nearly impossible for anyone to actually confuse the two services or substitute Gmail for "G-mail"

Re:Sounds like bull

[DJ Rubbie]

Interestingly, this British Company had to pick May of 2002 as the claimed launch date for their service. Take a look at the whois information for whois g-mail.com

Registrant:
                Google Inc. (DOM-1287346)
                1600 Amphitheatre Parkway
                Mountain View CA 94043
                US

Created on..............: 2002-May-20.
Expires on..............: 2008-May-20.
Record last updated on..: 2004-Nov-01 09:49:32.

gmail.com, on the other hand, has been registered for a little while (since the 90's), wish I can find out since when it was transfered to Google.

This company does not own gmail.co.uk or g-mail.co.uk either.

Use it or lose it.

[tomstdenis]

I could write a program to combine suffix/prefix combos to common words like "mail", "net", "service", "video", "sound", "conference"

Then sue everyone 3 years afterwards?

The fact they never even bought a domain name for the service [or advertised it broadly] suggests they're not seriously impacted by Googles actions because it's their own ineptitude that crippled any chance of making it big.

Tom

Qmail

[erroneous]

It's always interesting to turn these stories around and wonder how slashdot would react if the litigant were a beloved cause-celebre and the plaintiff a moustachioed villain.

Like, for instance, if Microsoft released a mail product called "qmail".

Seriously, do you think the same people would be posting "it's just a letter Q!"

I doubt that was their intention

[Marc2k]

The article makes it seem like this company's "GMailTM web-based email" service doesn't even exist. Phrases like: "The idea was that", "it launched "G-MailTM web based email" in May 2002", etc. all talk of this 'service' in the past tense, there's no speak of whether or not this product still actually is still in existence. Granted, they still own the rights to the trademark, and one of the stipulations of owning a trademark is that you police yours. Still, why would a company with a deceased (presumably, because let's face it..this company would be suing Google whether or not they still actually maintained the service) product/service sue a company, instead of merely not policing their TM, and releasing it "back into the wild"?

Oh, that's right. Money. I'm guessing it went like this:

• Trademark name.
• Run mediocre project into the ground.
• Begin talks with Google to try to get them to give you money, since you still own the trademark to a product that does not still exist.
• Fail.
• Send out press release to major news media, stating that you're going to sue Google, because there's no such thing as bad press.
• 
  
  Also, I'm kind of miffed that this keeps getting called an "intellectual property struggle". G'fuh? I remember back in the old days, we used to call them "trademark disputes". I wasn't aware that changing the first letter of a well-known contraction for "electronic mail" was a rigorous intellectual task. If that's your claim to fame, you're an idiot.
  
  

Re:Fight Google?

[MOBE2001]

I don't think they can fight Google...

Yes they can. They just need the right law firm. Google has a lot of money and everybody wants a piece of it. The IP hoarders deserve to be constantly at each other's throats, IMO. If you live by the sword, you will perish by the sword. Well, you will at least get hurt. Didn't Oracle have to pay 100 million US dollars or so to settle an IP-related suit just recently? Companies are like kids fighting over who the toys belong to. When will they wake up and grow up? It is obvious that the IP laws are stupid. So isn't something done about it? Answer: Greed.

I say let them rip out one another's throats. Problem is, the lawyers benefit immensely from this crap. And as long as lawyers are making both the laws and a shitload of money, we (the public) will continue to pay the price. In the meantime, the rich gets richer and the poor gets shafted. Sorry for being so cynical.

Re:Two letters

[justforaday]

...humans have a HUGE oral tradition.

I sure wish I could get some of that oral tradition...

mods: funny?!

[dunkelfalke]

it is not funny, it is sad truth here in germany

Re:mods: funny?!

[Conanymous Award]

Yes, but it's tragicomical to the point where even /. moderators don't know whether laugh or cry... A perfect example of "intellectual property" gone wild.

Re:mods: funny?!

[Nasarius]

He's talking about Deutsche Telekom.

Because they can't be found

[msobkow]

IIIR has no website which can be located by Google, Yahoo, or any other search engine that I've used.

All that comes up are some investor reports like OneSource, which reports them as having a whole seven employees.

Trademarks are not automatically international, and the mere presence of the "G" before "Mail" is not a trademark. Trademarks are either specific spellings (with/without hyphens), logos, icons, color combinations, etc.

The lawsuit sounds like basic "trolling for dollars", legal style.

In germany is already Google Mail

[ccozan]

Since a few months they changed the logo on the top left to a "Google Mail" logo, no longer "Gmail". So has a court ruled. See http://mail.google.com/mail/help/images/googlemail .gif
You can see that the domain serving the service is not gmail.com but mail.google.com.

So i think, this UK company has seen the success of this action in Germany and tries to profit in the same way.

Sincerelly, i don't really care how is it named, "Google Mail" makes more sense to me, even if i pronounce it as "geemail".

Sesame Street should cover this shit.

[mcc]

If Sesame Street really wanted to prepare children for the modern world, they should warn about things like this. That way maybe we wouldn't have mixups like this all the time.

<BIG BIRD> Hi, kids! This is the letter G! Lots of things start with G! And they are all the wholly owned property of Independent International Investment Research PLC of Britain.

<MAN IN LARGE FOAM "G" SUIT> G!

Re:Fight Google?

[Pig Hogger]

Answer: Greed

Good day, sir.

I am John William Babbittworth, of the law firm Thompson, Richards, Williamson, Heresford, Babbittworth, Jones and Spencer law firm.
We represent the interests of Independent International Investment Research, which has exclusive trademark rights to all words beginning by the letter "G"...

Re:Fight Google?

[mollymoo]

The IP hoarders deserve to be constantly at each other's throats, IMO.

The IP in question is a trademark (awful journalism banging on about 'owning the intellectual property rights to the GMail service'). I take it you think Linus is an IP hoarder too, because Linux is trademarked.

This seems like a perfectly straightforward trademark dispute to me. No glaring flaws in this area of intellectual property law that I can see. This kind of dispute does not deserve to be lumped in with the ridiculous patents and copyright excesses we've seen.

Google owns the GMAIL mark, at least in the US

[SegFault]

According to the US Patent and Trademark Office, the "GMAIL" mark has been assigned to Google, who applied for the mark on April 2nd, 2004. The Trustees of the "Smith Trust", Shane Smith and Karen Griffith, applied for the same "GMAIL" trademark on April 3rd, 2004, one day after Google Inc. The "Smith Trust" has not been assigned the trademark by the US PTO, and the latest rejection of their application was June 11th, 2005.

Perhaps someone else can post the equivalent info from the UK?

See Google's GMAIL trademark assignment:
http://assignments.uspto.gov/assignments/q?db=tm&s no=78395746
and the Smith Trust's application status: (rejected)
http://tarr.uspto.gov/servlet/tarr?regser=serial&e ntry=78395931

Re:Google owns the GMAIL mark, at least in the US

[canajin56]

Here is the UK trademark website. If you search it, you'll find the earliest application is from Google, Inc. on April 14th, 2004. Karen Griffith applied on October 4th, 2004, almost half a year later.

So there you go. In the USA, Google applied first, and with an earlier date of first use to boot. Google quickly followed up and applied in the UK as well. These guys, supposedly BASED in the UK, didn't bother for another 6 months. Further, their only reference in their UK application was to their US application. If that application was rejected, the UK one will be too, I would imagine.

Instant Karma

[Frankie70]

I am going to repost all the +5 modded comments
from here onto this topic.