When it comes to trademarks and patents, you have to admit that Microsoft has taken it on the corporate chin. First it was the Stac Electronics settlement, which resulted in Microsoft coughing up $120 million for infringing on Stac's data-compression patents. Then Microsoft ponied up another $90 million to quell Wang Labs' claims of patent infringement over object linking and embedding (OLE) technology.
Still, the news hasn't been all bad for the world's biggest software producer. Microsoft more than made up for any loss of face by throwing a full nelson on Scanrom Publishing, a one-person Long Island software publishing house. In naming a CD-ROM that included the Jewish Book of Knowledge, excerpts from the Torah, music, cookbooks, and folklore "The First Electronic Jewish Bookshelf," Scanrom stubbed its toe on a Microsoft trademark claiming ownership of the word "bookshelf." Microsoft's Bookshelf, you recall, is a collection of standard reference materials, including a dictionary, thesaurus, world almanac, encyclopedia, ZIP-code directory, and the like.
Amazingly, Scanrom founder Irving Green wasn't aware of Microsoft's trademark, which is emblazoned all over its packaging. The first Green heard about it was in February, when he received a cease-and-desist letter from Microsoft lawyers--after he'd shipped several thousand CD-ROMs. Green estimates it will cost at least $100,000 to change the CD-ROM and its packaging. While that's pocket change to Microsoft executives, to Green it's real money that he simply doesn't have.
You'd think that one of Green's options might be to change the name of his CD-ROM to something less competitive--"bookcase," for instance. Sorry. Been there, done that, says Allegro New Media's Barry Cinnamon, publisher of CD-ROMs such as the Allegro Reference Series Business Library. At one point, Allegro's CD-ROM sported the tagline "The ultimate business bookshelf," but Microsoft said no can do. How about changing the tag from "bookshelf" to "bookcase," countered Cinnamon. No dice, said Microsoft. In other words, say Microsoft lawyers, if you are publishing a CD-ROM or any other interactive electronic reference material and you suggest that there's a book-anything in your digital closet, expect to receive a registered letter postmarked Redmond.
Interestingly, the term "bookshelf" was originally registered in 1987 by Ampro Computers for its "computers, computer programs and manuals sold...for use in data base management, word processing and data processing." In 1988, Microsoft challenged Ampro's trademark, claiming the term "is the common descriptive name for a library, portfolio or collection of books...and therefore in the public domain and available for [Microsoft] and other commercial users to use fairly to describe their goods." After some haggling, Microsoft ended up buying the rights to the "bookshelf" moniker from Ampro. I leave it to you to decide if Microsoft has changed its mind about whether or not the term is in the public domain and available for others to freely use.
Green hasn't thrown in the towel yet. He's currently winding his way through Patent and Trademark Office (PTO) procedures, filing both a "petition to cancel" Microsoft's trademark claim as well as a "notice of opposition" to recent changes Microsoft has proposed to the terms of the claim. Green points out that the original Ampro trademark, which Microsoft has relied upon for the past few years, applied to computer hardware. Only recently has Microsoft moved to change the definition of the trademark to cover computer software that contains a collection of interactive works.
It's little wonder that Microsoft is roughing up Scanrom. It's called "precedence," particularly when there are bigger fish to fry. This includes IBM, which produces (and sells through Counterpoint Publishing) a $99.00 disk-based product called "The Health Care Reform Bookshelf" that provides the text of Clinton's Health Security Act of 1993, annotations, budget predictions, and competing pieces of legislation. Likewise, BusinessWeek magazine presents an interactive electronic version of its "Business Bookshelf" on America Online. Unless I've missed something, Microsoft has yet to go after either IBM or McGraw-Hill (publisher of BusinessWeek). By establishing legal precedence, Microsoft will have a better chance of taking on those outfits when the time is right.
When patents are registered, concerned third parties can object. Unfortunately, that's not the case with trademarks. To oppose a trademark, a "damaged" party must file suit against a trademark holder or applicant with the PTO. That action is then heard by a PTO review board, which bases its decision on evidence and depositions provided by the involved parties--no juries, no witnesses, no Judge Itos. In short, there's not much you and I can do to protest trademark injustice.
The lesson to be learned in all of this is to name products carefully. Never take anything for granted--even seemingly innocuous terms can be trademarked. (A recent search on the name "Bob," for instance, turned up 26 pages of Bob-related trademarks--including one for "Bob Dylan" and, naturally, another for Microsoft's new interface software. As with "bookshelf," Microsoft obtained the rights to "Bob" from another company.) If nothing else, as Irving Green would certainly agree, a few hundred dollars for a trademark search is money well spent.
Jonathan Erickson
editor-in-chief
Copyright © 1995, Dr. Dobb's Journal