From:
J. Michael Huget
Butzel Long, Attorneys and Counselors
734-995-3110
huget@butzel.com
Counsel to Crain Communications, Inc.
To:
Mr. Jeremy Bisdorf
Jaffe Raitt Heuer & Weiss PC
201 South Main Street, Suite 300
Ann Arbor, MI 48014
May 8, 2007
Re: Story Worldwide, Inc. and POST-ADVERTISING AGE
Dear Mr. Bisdorf:
As you know, we are counsel to Crain Communications, Inc. (“Crain”), which has asked us to write you on its behalf. We respond here to your letter of March 19 in which you identified Story Worldwide, Inc. (“Story”) as your client and the owner of several ADVERTISING AGE-related URLs: post-advertisingage.com, post-advertisingage.net, postadvertisingage.com, post-advertisingage.org (collectively, the “Domains”).
We restate for the benefit of Story, Crain’s broad, longstanding use of ADVERTISING AGE in connection the advertising industry [sic]. Crain owns Advertising Age. Advertising Age is the world’s leading brand for news and insight on marketing, advertising and media. To protect its valuable brand, Crain has twice registered the ADVERTISING AGE trademark with the United States Patent and Trademark Office (“USPTO”) for ADVERTISING AGE, Reg. Nos. 273,431 and 2,465,499. See Exhibit A. Both registrations are incontestable. Over the years, Crain has spent several hundreds of thousands of dollars to promote its publications under this unique and valuable mark.
Additionally, platforms under the ADVERTISING AGE mark include the weekly publication and real-time Web site; electronic newsletters; live events and conferences; streaming video, audio webinars, podcasts, blogs and more, all in the field of advertising and information relating to the advertising industry. Across all platforms, Crain under the ADVERTISING AGE mark delivers over 1 million weekly impressions to its audience of over 318,000 advertising industry professionals. By virtue of this usage, Crain has also generated considerable goodwill and common law rights in the ADVERTISING AGE mark, beyond and in addition to its rights as a Registrant with the USPTO.
In addition to Story’s improper registration of the Domains, described in my letter of March 14, we have learned that Story is currently using an ADVERTISING AGE-related trademark in connection with its advertising-related services: ADVERTISING IN THE POST-ADVERTISING AGE. See Exhibit B. This usage likely raises a likelihood of confusion in the marketplace due to fact that Story uses Crain’s mark in its entirety in connection with advertising-related services. In light of Crain’s longstanding use and the congruence between these two marks, Story’s use of ADVERTISING IN THE POST-ADVERTISING AGE suggests that Story’s services are offered by, affiliated with or somehow sponsored by Crain. They are not. This usage violates the Lanham Act, 15 U.S.C. § 1114 and 1125(a) and damages Crain’s valuable and unique asset.
We are also aware that Story has applied to register ADVERTISING IN THE POST-ADVERTISING AGE and MARKETING IN THE POST-ADVERTISING AGE with the United States Patent & Trademark Office. See Exhibit C. Crain believes that the registration of these marks for the goods and services identified by Story would damage Crain and be inimical to its superior rights to use the similar ADVERTISING AGE mark in connection with similar and/or closely related goods.
Finally, in addition to Story’s likely violation of Crain’s trademark rights, we observe that Story’s website reproduces without authorization at least one article from Advertising Age. See Exhibit D. This work is, of course, protected by The Copyright Act. The Copyright Act, 17 U.S.C. § 101 et seq., provides that the owner of a copyright has the exclusive right to control the reproduction, distribution and display (among other things) of the underlying work. As the owner of the copyright to Advertising Age, Crain has the exclusive right to reproduce, display, distribute and publish the articles contained therein, rights that Story trammels.
Story’s efforts to build a business by capitalizing on the goodwill and intellectual property developed by Crain over the last seventy years is improper. Crain, therefore, demands that Story promptly 1) transfer to it all ADVERTISING-AGE-related Domains; 2) cease using any ADVERTISING-AGE-related trademarks; 3) affirmatively abandon all ADVERTISING-AGE-related trademark registration applications; and 4) remove all Advertising Age content from Story’s website, including without limitation, the referenced articles.
Your March 19 correspondence indicated that your client would be interested in engaging in face-to-face discussions with respect to the Domains. In light of Crain’s newly acquired knowledge of Story’s knowing, aggressive efforts use [sic] and register ADVERTISING AGE-related marks, there is nothing to discuss at this time; Story is infringing and Crain demands that that infringement cease. Please notify us by May 21, 2007, whether you intend to comply with this request. Once we have secured your assent we will send to you the appropriate transfer documents. Thank you for your anticipated cooperation.
Very truly yours,
Butzel Long
J. Michael Huget
JMH/ah