Message No. 159 was left on 09-14-88 11:36 To....... : Bruce Wilson From..... : Tom Marshall, Esq. Subject.. : Your September 6, 1988 Letter Message Area #1 "Electronic Mail" Bruce: I am in receipt of your letter dated September 6, 1988 addressed to Thom L. Henderson, System Enhancement Associates. Please call me at 201-993-5779 to discuss. ô{Û*=J!ºSÄôÉ|g '¹ÕY3¿·2ܯ+þ are If you are serious, and the republication of a "form" with fill in the blanks seems to indicate such, please provide me with the name and address of the person in the Iowa Bar Association that I can correspond with to lodge a formal complaint about your conduct. Frankly, I am appalled that anyone who calls himself an Attorney at Law would write such a letter, let alone distribute such across the BBS community, encouraging others to flood SEA with such letters. I doubt seriously that the USDC for Southern Iowa would look favorably on such actions(.) Very sincerely, Thomas M. Marshall, Esq. 89 Patriots Road, Morris Plains, NJ 07950 - 201-993-5779 of 201-326-1892 (voice); 201-326-9870 TBBS/SEAdog. =========================================================================== Bruce L. Wilson 677 - 61st Street Des Moines, IA 50312 (515) 277-4904 (voice) (515) 280-9107 (data) September 20, 1988 Mr.Thomas M. Marshall, Esq. 89 Patriots Road Morris Plains, NJ 07950 Re: System Enhancement Associates v. PKWARE. Dear Mr. Marshall: Regardless of the merits of your client's claims, this matter has been a public relations disaster for it from the beginning. The most probable reason for that is the unquestionable performance superiority of Mr. Katz' programs, leading people to feel it's been a matter of "if you can't beat 'em, sue 'em;" and that flies in the face of the American tradition of freewheeling individual enterprise that's been particularly evident in the development of personal computers and just about everything, hardware and soft- ware, associated with them. Nowhere is it more evident than in the shareware industry's image of an individual programmer with an idea, working alone, who's able to market his or her product, without access to a commercial distribution network or major in- vestment of time or money, through a voluntary network of other computer hobbyists. Nevertheless, we do have a body of law which defines rights to "intellectual property," including computer programming, and there's no reason to believe that someone gives up all or any part of those rights by choosing to market his or her product as "shareware" instead of through "commercial" channels. Nor are the rights of a shareware author in any way superior to those of the author of a "commercial" product. I've withheld judgment on the major issue of copyright infringe- ment from the beginning of this litigation. Not being a mathe- matician or programmer, I don't know if it would be possible to duplicate the operation of a file compression/extraction program without duplicating the program itself; and I've seen conflicting comments from others who claim to have knowledge/expertise in this area. If, in fact, your client's copyrighted source code was used without its permission or in violation of the terms of any valid license, then Mr. Katz should certainly be held accoun- table. Your client could very possibly have had a legitimate complaint of unfair competition, as the term is commonly understood rather than in the strict common law sense ("palming off"). A user's legitimate expectation is that every arc file extraction program will be able to extract the files contained in every file collec- tion with an "arc" extension. However, Mr. Katz added a compres- sion technique which no one else had, thereby creating an incom- patibility between the arc files which his program produced and the unarcing programs produced by your client or anyone else un- able to duplicate his program's performance. There can be no doubt this created confusion in the marketplace and, in fact, continues to cause occasional confusion. An argument could cer- tainly be made that, given the superior performance of Mr. Katz' programs with respect to the common compression methods and the likelihood of their use for that reason, the new method was added and used by default for the express purpose of driving your cli- ent from the market. It seems strange that this aspect wasn't emphasized in your complaint, given the extent of the resulting controversy, including the banning of arc files created by Mr. Katz' programs from many bulletin board systems until the opera- tors of those systems were simply overwhelmed by them, but pos- sibly that's because of the necessity of conceding the perfor- mance superiority of Mr. Katz' programs to make the allegation. (Although it's been rare and I can't cite a specific example at this time, the incompatibility has run both ways. I have, in the past, been aware of an arc file or two which Mr. Katz' program rejected as having an invalid archive format but which your cli- ent's program was nevertheless able to handle.) The one aspect of this litigation with which I've taken issue from the beginning and which seems to have now come to the fore as THE issue is your client's blanket claim that every usage, alone or in combination with other words or word fragments, of the three letters "arc" in that particular permutation infringes its alleged trademark. To quote from the file "ARC-SUE.DOC," which is presently making the rounds in the file "SEA-PK-S.ARC" and which I've been told is accurate: One of the Plaintiff's principal complaints in this litigation was that Defendants infringed Plaintiff's Trademark "ARC" by using, throughout their computer programs and accompanying user manual, the term "ARC." Defendants used this as a verb, as an adjective, as a noun. These improper uses of Plaintiff's trademark have the effect of confusing the public as to the source of the computer programs and of diluting Plain- tiff's protected trademark. *** Computer file compression means that by using PKWare programs, files are quickly re- duced in size and thereby take up less sto- rage space. This process, sometimes called ARCing, crates ARCHIVE files. *** PKPAK is the program that compresses files. This shrinking process is often re- ferred to as archiving or ARCing . . . *** PKUNPAK is the program that reconstructs or extracts archived files. A shorthand term for this process is UNarcing. User Manual, Plaintiff's Exhibit 65 at page 3. The misuse of Plaintiff's trademark ARC continues through- out the User Manual, where Defendants use ARC as a noun, an adjective and a verb. There is no legitimate reason for using Plaintiff's mark in this manner. It confuses the public as to the source of origin of this product (a computer user pursuing this manual could easily associate the PKWare programs with those dis- tributed and licensed by SEA which legitimately use the trademark ARC). Further, this misuse dilutes the u- nique and distinctive value of the ARC trademark by making it appear to be a commonplace equivalent for archiving or compressing files. Such uses clearly in- fringe Plaintiff's trademark and are an attempt to de- stroy SEA's valuable property right. The foregoing argument is bullshit, has been widely recognized as such in the national bbs community, and that recognition is be- hind the latest, and most intense, wave of protest. The fact of the matter is that "arc" IS "a commonplace equivalent for archi- ving or compressing files" and that its use "as a verb, as an adjective, as a noun" (not to mention adverb, preposition, pre- fix, and suffix) is pandemic. Few, if any, people to whom the subject's of interest had the slightest inkling that "arc" as a "word" was anything else before this litigation began, although they knew there were differences, including origin, between your client's programs on the one hand and Mr. Katz' programs on the other, or between the two of them and someone else's programs which served the same purpose. In hundreds, if not thousands, of computer bulletin board messages from one end of the country to the other (none of which were entered by the defendant), I'd yet to see "arc" used in a way which even remotely suggested its trademark status before this litigation began; and it's wide- spread use in the generic sense has continued, notwithstanding this litigation. Your client's fatal mistake may have been in adopting a logical, common word for its file compression technique. Webster's Se- venth New Collegiate Dictionary (copyrighted in 1965, which, I believe, is prior to your client's alleged trademark use) lists three relevant words in the English language: archival, adj.: relating to, contained in, or constitu- ting archives. archive, n.: [F & L; F, fr. L archivum, fr. Gk arche- ion, government house (in pl., official documents), fr. arche, rule government]: a place in which public re- cords or historical documents are preserved; also: the material preserved -- usu. used in pl. archivist, n.: a person in charge of archives. Your client then compounded its potential problem by using the logical "nickname" for that word as the file extension of the files its creation program created. Taking the foregoing defini- tions, the function of your client's program, and the file exten- sion together, it's obvious that "arc" was meant to be descrip- tive rather than an arbitrary, distinctive trademark, putting the present trademark claim on very shaky ground, indeed. This is in striking contrast to the "ZOO" family of file compression and ex- traction programs. "Zoo" may be a common English word, but it's certainly not one with any recognized relationship to document storage, nor is it one which lends itself to being combined with other English words or word fragments to describe its operation as readily as "arc" does. Mr. Katz did a better job of develo- ping a distinctive mark than your client simply by appending his initials to the descriptive term. There also seems to be a very real question with respect to any right to trademark protection at all because of common use of the term before your client adopted it as the name of its product, as Loren Jones put it in his September 8 letter to Mr. Henderson ("I watched as ARC (a term clearly a carry-over from CP/M days...con- trary to your delusions of originality) came on the scene."). O- thers have similarly alleged that your client merely adopted a name (and file extension) in common use at the time on other than MS-DOS operating systems. These allegations may or may not be true, but they certainly raise further questions in many minds as to whether "ARC" should have been allowed registration as a mark in the first place and to the legitimacy of your client's present position. The matter with respect to Mr. Katz appears to be settled by the cross-license agreement and judgment on consent implementing it: 5. No Trademark License: After the effective date of this Agreement, PK agrees not to distribute or of- fer for license any program that carries a trade- mark, tradename or filename including the letter combination "ARC" or any other trademark, tradename or filename the use of which may be confusingly si- milar to any of SEA's trademarks, or the use of which may be likely to cause confusion or mistake or to deceive with respect to SEA's programs. PK agrees to forthwith abandon any applications it has pending to register in the United States Patent & Trademark Office any of its trademarks containing the letter combination "ARC". However, a judgment on consent is NOT to be confused with a judg- ment on the merits and does nothing to resolve the issue with respect to anyone other than Mr. Katz, something which your cli- ent may not fully comprehend if recent reports of his comments in Infomat Magazine and elsewhere are correct. The matter of whe- ther "arc," in all its forms, is, in fact, your client's trade- mark is still as wide open as it was before this litigation began and will remain so until a judgment on the merits is rendered. Not even trial and intermediate appellate court decisions would achieve absolute finality. That would only come with a decision by the United States Supreme Court (unless an action could be certified as a class action with respect to a sufficiently broad class, in which case an unappealed trial court decision or what would otherwise be an intermediate appellate court decision could be dispositive). As I've said once already, this litigation has been a public re- lations disaster for your client. The present widespread outrage running through the bbs community has been caused by the explicit attempt to enforce what many, not just I, feel is an unenforce- able claim that your client has an absolute right to every use of the three letters "arc," notwithstanding that it managed to force Mr. Katz to capitulate on the issue as pat of the "settle- ment" package. Adding fuel to the fire of public opinion is the feeling that Mr. Katz was bullied into settling by the prospect of the ruinous cost of mounting a successful defense rather than by the merits of your client's allegations as a whole. Were your client's trademark claim enforceable and were your client to en- force its claim effectively, it would indeed be faced with the necessity of instituting a multiplicity of actions in virtually every judicial district in the land, as widespread as the "mis- use" of its "trademark" has become, something which might have the effect of "leveling the (financial) playing field" a bit. Unfortunately for the bbs community as a whole, the trademark claim has been inextricably entwined in the action against Mr. Katz with issues which are extraneous to its resolution. (The contempt action doesn't really have anything at all to do with the original allegations. It's merely an attempt to impose sanc- tions for an alleged failure to comply with the terms of the "a- greement" and order implementing it.) It also seems unlikely that any future litigation against an author of "arc-compatible" programming would be any "cleaner" with respect to the trademark issue than the original action against Mr. Katz, given the weak- ness of your client's position on this one issue and probability of loss if your client actually has to litigate it alone. (Your client's "policy statement" with respect to use of the term has been seen as not being so much designed to ease concerns as to protect its trademark claim by making it so easy for someone to be licensed to use it that no one will find it economically fea- sible to challenge it, whether that's a fair characterization or not.) Which brings us now to the letter and text file which you seem to find objectionable. Unfortunately, there appears to have been a burst of line noise as you were entering your message, but it looks like you simply started over and nothing was actually lost. The applicable portion is reproduced below for your review: ... 201-993-5779 to discuss. ô{Û*=J!ºSÄôÉ|g '¹ÕY3¿·2ܯ+þ are If you are serious, and the republication ... Although it may have been diluted by the increasingly litigious nature of our society, we do nevertheless have a tradition of caustic comment on matters of public interest which is older than the Constitution itself. Some of the writings of our "Founding Fathers" might well be found actionable today, notwithstanding the nearly absolute freedom of expression they intended to embody in the Constitution. A measure of the effectiveness of such com- ments may well be the degree of outrage they're able to engender in both their intended target and the general public. (Remember that the work over half a century of the great American editorial cartoonist J. N. "Ding" Darling is part of our heritage in this land of the Des Moines Register.) The text with which you apparently take issue was phrased in a deliberately exaggerated manner to attract attention, which it obviously has, and make the foregoing points, in which it may or may not have succeeded, just like a good, biting editorial car- toon. Others have seen the humor in its approach even if you and your client haven't been able to, nor, I guess, would I really expect you to find such mockery amusing any more than would the victim of a particularly stinging editorial cartoon. It's a mix- ture of fact and opinion. Were it otherwise, it would be too ea- sily dismissed and be ineffective. Putting the verbiage aside, the fact of the matter is that I, myself, have neither product nor service which could be arguably said to infringe your cli- ent's alleged trademark at this time, but I certainly wouldn't hesitate to have one, since I don't think your client's claim would hold up in court. Like many other members of the bbs com- munity, I have, indeed, used "arc" as a generic term for a par- ticular method of file compression, just as "aspirin" is the ge- neric term for acetylsalicylic acid and "thermos" is the generic term for vacuum insulated containers. (It may be unfortunate, even unfair, that the success of a product can be the undoing of its own trademark in this country, but that's the way it is.) I will, in fact, continue to use "arc" and all its derivatives as generic terms, regardless of whether, in your opinion, that con- stitutes an infringement of your client's alleged trademark until and unless directly prevented from doing so, but that seems high- ly unlikely in the absence of an arguably infringing product or service. From a public relations standpoint, the best thing your client could do would be to (1) abandon "arc" itself to the public do- main or (2) gratuitously assign it to a recognized, widely ac- cepted, standards-setting body and then emulate Mr. Katz (or, if you prefer, McDonald's) by adopting a customized version as its mark to designate its own products which implement the standard (such as "SEARC" and "SEUNARC"). Sincerely, Bruce L. Wilson