From:
Jeremy D. Bisdorf
Jaffe, Raitt, Heuer & Weiss
To:
J. Michael Huget
Butzel Long
Suite 300, 350 South Main Street
Ann Arbor, Michigan
Re: Story Worldwide
May 22, 2007
Dear Mr. Huget:
This letter is a response to your May 8, 2007 letter to us regarding claims made by your client, Crain Communications, Inc. (“Crain”), with respect to our client Story Worldwide, Inc. (“Story”). In your letter you assert that Story has: 1) improperly registered the domain names post-advertisingage.com, post-advertisingage.net, postadvertisingage.com and post-advertisingage.org (collectively, the “Domains); 2) improperly used Crain’s ADVERTISING AGE trademark; 3) sought registration for service marks, that if registered, would damage Crain’s trademark ADVERTISING AGE; and 4) improperly used copyrighted materials on its website.
First, with respect to the Domains, we stand by the position that we communicated to you in our letter dated March 16, 2007. Crain has no right to the Domains and Story does not intend to transfer them. Story believes that Crain’s immediate resort to legal process is silly, juvenile and counter-productive and Story renews its offer to sit down with Rance Crain to discuss the ownership of the Domains at any mutually convenient time and place. Story makes this offer not because its principals have any particular desire to talk to Mr. Crain, but because talking would be the civilized way to approach this dispute. In Story’s view, there is always unlimited opportunity to involve lawyers if and when conversation fails to produce acceptable results.
Secondly, as you are aware, “likelihood of confusion” is the key component to determining liability for trademark infringement claims. As you know, when determining whether or not likelihood of confusion exists, the most important factors to consider are the relatedness of the goods or services and the similarity of the marks. Other factors that are also considered are evidence of actual confusion, likely degree of purchaser care and likelihood of expansion of product lines.
Our clients are engaged in completely unrelated markets – Crain provides periodicals pertaining to marketing and Story actually engages in providing advertising services. The distinction is definite. The marks are also dissimilar. Story seeks to convey the point that the traditional age of advertising is over. In comparison, Crain clearly takes the opposite position. These factors weigh heavily against any finding of likelihood of confusion between the source of our respective client’s goods and services.
There has been no actual confusion by any of Crain’s or Story’s customers and, due to the high degree of sophistication of both groups, it is improbable that there ever could be any. You also have not asserted that Crain has any intention of expanding into the same business as that of Story. These additional facts further bolster our position that there is no likelihood of confusion.
It is, at the very least, overly aggressive and, at worst, disingenuous to assert that Crain’s trademark rights to ADVERTISING AGE should result in the complete removal of these terms from all other use by any other party. At most this dispute represents a difference in philosophy, which, in trademark disputes, the courts have specifically protected.
Third, since there is no likelihood of confusion, Story is not obligated to abandon its current United States trademark applications for MARKETING IN THE POST-ADVERTISING AGE and ADVERTISING IN THE POST-ADVERTISING AGE.
Finally, please note that Story is respectful of Crain’s copyrights. Story is currently investigating your claims of copyright infringement. Story will take immediate and appropriate action with respect to any Crain materials that appear on Story’s website. Please understand however that this is not a waiver of any fair use rights that Story may have with respect to any works.
Story is dismayed at the positions taken by Crain. Story perceives Crain’s claims as being petty and antagonistic and betraying a fundamental lack of regard for, or understanding of, the First Amendment. Such disregard is, at best, unbecoming in a publisher. However, as interested as Story may be in protecting its rights to use the marks in question, Story believes that it does not make economic sense to take an aggressive stand on these matters at this point in time. As such, if Crain agrees to move forward and drop further pursuit of the matters discussed in this letter, then Story will abandon its trademark applications for MARKETING IN THE POST-ADVERTISING AGE and ADVERTISING IN THE POST-ADVERTISING AGE. Further, while Story continues to reject the notion that Crain has any legitimate claim on the Domains and will not give them to Crain at this time, Story is nevertheless willing to undertake not to use the URLs.
Story, however, feels compelled to point out that the phrase “post-advertising age” has been used widely to describe the current era in the advertising and marketing business. Story reserves the constitutionally protected right to use this phrase, in the sense defined here, in any sentence or sentence fragment in any language. If Crain continues its aggressive demands against Story, then Story will strongly defend its rights to register and zealously use the trademarks MARKETING IN THE POST-ADVERTISING AGE and ADVERTISING IN THE POST-ADVERTISING AGE. More importantly, Story will exercise its First Amendment rights to take Crain to task for thinking it can defeat free expression with false claims of trademark infringement that it knows (or ought to know) are nothing more than obvious over-reaching.
We hope that these concessions will satisfy Crain. Story looks forward to putting these matters to rest. Please let us know by June 1, 2007 if Crain is willing to cease further actions so long as Story takes the actions indicated above.
We appreciate your assistance in this matter. Please let us know if you have any questions.
Sincerely,
Jaffee, Raiett, Heue & Weiss
Jeremy D. Bisdorf
JDB/
Cc: Mr. Kirk Cheyfitz
Peter sugar, Esq.