Riding theTelecommunications141ire

fiedertc M. Wilf

Frederic Wilf is a Philadelphia lanr5zerwho tries computer-related intellec-tual property cases. In his article, Wilf shows how he rides the telephone wirervith his compuier to investigate new cases and to preparc his client's defense.

{Editor's Note: Information about the public telecommunications and data-base services mentioned in this chapter can be found in Appendix A, "On-LineServices Inventory."J

Beyond the plastic dome of the Boursehrilding the Philadelphia sky was gray. Mer-cfoants in the four-story shopping area wererecuperating from the recently completedChristrnas season. Above the shops, behind six-*o_v tall glass walls, office dwellers were gladfr: the breather. The Bourse Antiphonal Brassnuuld not play again until Thanksgiving.

The telephone ran& disturbing my reverie.ih'partner Gerryr Elman called fiom home toneil me we had a new client. A Vermont soflwarecmpany incorporated in Pennsylvania was suedin Fhiladelphia. The general counsel in Vermontcalled a lavrz5zer he knew in Washington, DC; theItashington lavr.yer called Geny. The humannetrvorkworked.

Our new client was accused of trademarkinfingement. The goods in question werecmpilers. A compiler is a computer program*lat reads source code, humanly perceivableSaternents, and translates the source code intoa brrnat, called an object code, that is executedtn- a computer. In other words, a compiler isa c[mputer program that creates other computerFograms.

Generally, each compiler can read andtranslate statements in only one computer

programming language. There are dozens ofcomputer programming languages. For popularprogramming languages, there may be severaldozen compilers available.

The trademark in question was SKED, thename of both a computer programming languageand the plaintiffs compiler for the SKEDlanguage. Our client's principal thought he alsocould use the language's name as part of thetrademark for the SKED language compiler thathe planned to market. The company is MedAssociates, Inc., so he called the compilerMEDSKED. Thus, the case of SKED versusMEDSKED was joined. State Systems II, Inc. v.

Med Associates, Inc., No. 88-0064 (E.D. Pa., filedJan. 6, 1988).

Our firm included GerrSz, me, and our staff.Plaintiffs counsel consisted of a large multi-national firm based in New York City. The multi-national firm also was using a 30{avr6rer firm aslocal counsel in Philadelphia, besides theplaintiffs general counsel in the Midwest.

In speaking with our client, Geryz learnedsomething about the plaintiff and the back-ground of the SKED language. More facts wereneeded immediately, as plaintiff had alreadymoved for a preliminary injunction. A hearing

47

Section 2: Evaluating the Case, the Client, and the Law

was scheduled before the judge in less than three

weeks. Our client's new venture was in ieopardybefore he made his flrst sale.

SKED. While conducting the search, mytelecom-

munications software recorded every keystroke

and response fi:om Dialog to a fiIe on my

computer. The search took less than half an hour

and incurred less than $50'00 of database

charges.Trademarkscan revealed the three federal

registrations of plaintiffs marks' Under the

Tridemark Act, a registration on the Principal

Register (one of two federal registers) serves as

p.i-u facie evidence of the validity of the

irademark, the registration, the registrant's

or,rmership of the trademark, and the registrant's

exclusive right to use the trademark'Tradernarkscan also revealed that plaintiff

filed with PTO an affidavit of incontestability for

eachmark. Thiswas notgoodnews' The affidavits

of incontestability added strength to the federal

registrations. Under the Trademark Act' a ffi davit s

of"incontestability may be filed only after

trademarks are registered on the Principal

Register for five or more years with no final

adverse decisions on the registrant's claim of

ownershiP or right to register'The net efiect of the affidavits of incontes-

tability is that many defenses otherwise available

to a defendant in trademark infringementlitigation would not be available to our client'

We"could not win by arguing that the plaintiffs

marks were weak or merely descriptive' To win

the case, we would have to prove that the

plaintiffs marks were generic or- that the

trademark registration should not have been

issued in the first Place'Naturally, this information affected our

strates/. we had a difficult, up-hill battleto fight'

nath# than simply defend against plaintiffs

claims, we would have to go on the offensive

against the plaintiffs marks' Any'thing less would

be ineffective.Trademarkscan also revealed that plaintiff'

in filing and prosecuting three trademark

registrations, had listed the goods as "computer

sof[ware on magnetic tape'" There was no

indication that the primary formative-the root

of the trademarklalso was the name of a

computer programming lan$uage' SKED had not

been disclaimed as a name of a computer

language. Ttris information would later sewe as

the ba;is for our argument that a computer

language, by itself, is neither a good nor a service

urri tni, cannot be protected under the United

States TrademarkAct, which protects names and

other designations of goods and selvices only'

RIDING THE WIRE

Gerry and I immediately divided the initial

researctr. I turned on my modem' Software on

my desktop computer told the modem to dial

the Oialog Information Service' The computer

transmitted information to the modem; the

modem turned my computer's commands into

modulated tones. Those tones traveled over a

copper wire that connected with the telephone

,y*tl-. By wire, optic fiber, microwave, and radio

-urr" borr"ed off a satellite, the tones reached

Dialog's computers on the West Coast'

Dialog

Dialog is a database of databases' Several

dozen information publishers, including Dun

and Bradstreet, R.R' Bowker, and others' provide

information to Dialog, which then loads the

information into its computers' Information may

be searched by subject, key word, or both'

Users are charged for connect time (the time

they are actually connected to Dialog)' plus

computer resources used in conducting,"urth"", and formatting and displaying the

results. Different databases on Dialog charge at

different rates'

Trademarkscan

Thomson & Thomson, a Boston-area trade-

mark search firm, is the publisher of two

databases on Dialog. The Trademarkscan Federal

Database keeps track of all trademarks registered

with the U.S. Patent and Trademark Office (PTO)'

as well as pending federal applications' The

Trademarkscan State Database tracks registra-

tions of trademarks and trade names in indivi-

dual states'Neither Gerry nor I had seen the pleadings'

but we knew plaintiff claimed rights to the term

SKED. By searching the Trademarkscan Federal

Databasl for all trademarks that included the

term SKED, I found that plaintiff had registered

three variants with the PTO: SKED, SKED-11' and

SUPERSKED. I also found unrelated trade"marks

for unrelated goods that contained the term

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Background lnformation

Meanwhile, Gery plugged in his Radio Shack-\Iodel 100, a computer the size of a volume ofFederal Supplement and now cheaper than al-ear's subscription. From his home, Gerrysearched the Electronic Yellow Pages on Dialog.They revealed basic information about theplaintiff, including the address, telephonenumber, approximate numberof employees, andrhe nature of its business as revealed by itsstandard industrial code (SIC). We now knew theapproximate size of the plaintiff company, andcould better assess its ability to fight an expensivelegal battle.

Gerryz's search of several databases regardingrnicrocomputer soflware provided informationon plaintiffs products and marketing strategies.Finally, Gerryu searched several databases thatincluded abstracts of scientifi c research articles,including the Psychinfo database on a servicecalled BRS.

Gerryz's research confirmed that plaintiffsprincipal, formerly a professor and researcher,putrlished many scholarly articles discussing histoftware and the SKED programming language.lfany more abstracts were for articles writtenbr.unrelated parties who researched and useddifferent implementations of the SKED program-ming language in their scientific research. In eachabstract, the term SKED was used to describeall implementations of the programming lan-guage. This information corresponded to the 15-l'ear history of plaintiffs software, primarilyunder a series of government grants, which ourclient previously described to Gerryr.

TWo hours had passed since Geny's tele-phone call to me. But we now had most of thefactual foundation for the legal arguments thatu.e would.make in the coming months. At thispoint, without the pleadings, discovery, or theuse of a hard-copy library, and without havingto exercise much more than fingers on akeyboard, we probablyknewmore of the publiclyarailable facts of this case than the hundredsof lar,rozers in the law firms that represented theplaintiff.

FOLLOW-UP RESEARCH

From my research, we ordered copies of thefile for each of plaintiffs applications fortrademark registration. The files confirmed that

WiIf: Riding the Telecommunications Wire

plaintiff never told the PTO that SKED also wasthe name of a computer programming language.

Based on Gerry's research, we obtainedcopies of the scholarly articles from localuniversity libraries. Footnotes in several of thesearticles recited the government grants underwhich the SKED programming language andplaintiffs software were developed. The articlesalso provided the names of several othercomputer programs that included the termSKED.

We sent several letters to the grantingagencies under the Freedom of Information Act.That shook loose copies of relevant portions ofthe grant documents. These detailed the scopeof the research and the expected results. Thisserved as grist for our argument that many rightsto the SKED programming language and plain-tiffs software, including ownership of the termSKED, at best belonged to several differententities. These entities included the governmentagencies that gave the grants, the educationalinstitutions that supported the research, andindividual academics who helped conduct theresearch.

COMMISERATING ON COMPUSERVE

Back on the wire, I traded messages withother lar,tSzers on CompuServe. CompuServe isa computer service that provides an electronicmeeting place for subscribers. In effect, Compu-Serve operates as a conference center withsmaller areas where people with similar interestscan meet, trade messages, and upload anddor,rmload files of interest. Users also can sendprivate mail and conduct database research.

One forum on CompuServe is Lawsig. Lawsigis frequented by attorneys, police officers, andothers interested in the law around the world.

I was looking for, but not finding, precedentto support the argument that a computerprogramming language was not a good or aservice-as those terms are used in trademarklaw. Thus, the designation of a computerprngramming language could not serve as atrademark for an implementation of that samelanguage. Except for one ongoing case involvingMicrosoft's QuickBASIC trademarf defended byE. LSmn Perry of San Francisco, I had found littlehelpful precedent. At my request, Peryu was kind

49

Section 2: Evaluating the Case, the Client, and the Law

enough to send me a facsimile of one of herbriefs.

On Lawsig, L. J. Kutten responded to my pleafor help with a citation to one of his books. Kuttenwas spending the year in Hawaii and loggingon fircm somewhere in the Pacific Basin. Despitethe immense distance from my Philadelphiaoffice to Kutten's home in Hawaii, the cost oftrading detailed messages with him via Compu-Serve was little more than the cost of talking withhim on the telephone. It was also far moreconvenient as we did not have to compensatefor the difference in time zones.

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Our strategy consisted of placing our clienton a more equal footing with the plaintiff.Because of our database and follow-up research,we had unearthed evidence that supported ourarguments that plaintiffs marks were not all theywere cracked up to be. Accordingly, we askedthe judge for expedited discovery from theplaintiff. The plaintiff had earlier requested andwas granted expedited discovery of our client,the defendant.

We filed a motion for expedited discoveryand for a continuance of the date of thepreliminary injunction hearing. In the brief I

Choosing the night Wire to RideFrederic M. Wilf

[Editor's Note; Prices mentioned in this sidebar are current as of March 15, 199 l.]

The greatest cost in using telecommunications in the law practice is the time taken away frombillable activities to learn how to use this technology. lf telecommunications is new to you, thenyou should contact a local group of computer users or hobbyists for instructions and forrecommendations of which hardware and software you should use. Many such groups run electronicbulletin board systems (BBS) services, which may be accessed 24 hours per day at no charge. TheBBSs are an excellent way to learn how to trade messages, download and upload files, and searchsimple databases.

Courts throughout the United States are increasingly using BBS technology to make informationavailable to lawyers and others. Lawyers may dial up the county BBS and access the court's docketand research the county land use records.

Then, there are the national services. As discussed in the accompanying article, these servicesare quite extensive and powerful. However, there is a price to pay. The following price informationfor a few of these services is current as of March 199 l, and is stated in U.S. dollars. Pricing changesconstantly and many services offer discounts.

ABA/net (800-322-4638) is sponsored by the American Bar Association. ABA/net charges $50.00to initiate an account, plus a minimum usage charge of $20.00 for each network identification.The basic ABA/net services include private mail, public message boards grouped by topics of interestto attorneys, and databases of resources for lawyers. Several of the databases require the paymentof surcharges. LEXIS is available with no minimum charge, and connect time is charged at $39.00per hour plus search charges (which on the average range from $20.00 to $50.00 per search). WESTLAWcharges a minimum of $45.00 per month, and connect time is charged at $270.00 per hour, butWESTLAW does not charge for individual searches. ABA/net training is available on line, and severalof the database providers offertrainingsessions around the country. MCI Mail (800-444-6245) chargesan annual fee of $35.00 to maintain an electronic mailbox but does not charge for on-line time.It also charges for each message sent from one MCI Mail mailbox to another MCI Mail mailboxbased primarily on the message's size. Up co 500 characters costs 45 cents; 50 l-2,500 characters

(continued on next poge)

WiIf : Riding the T ele c ommunic ations Wire

costs 75 cents; 2,50 I -7,500 characters costs $ 1.00; and each additional 7,500 characters costanother $ I .00.

Surcharges are added when the message is sent by Telex. Surcharges also are added if thedocument is sent to another computer service such as CompuServe or printed by MCI Mail ona laser printer and mailed ($2.00 for up to six pages in the United States). Overnight deliveryof up to six pages costs $9.00 in the United States. To have your letterhead reproduced on thefirst page of printed letters costs an additional $30.00 annually. Your letterhead is stored withMCI Mail.

CompuServe lnformation Service (800-848-8 199) charges a one-time set-up fee of $39.95, including$25.00 of on-line credit. After three months, the fee is $2.00 per month. On-line charges are bythe hour and vary by modem speed-$ 12.50 per hour for 1,200 and 2,400 bits per second, and

$22.50 per hour for 9,600 bits per second. Access to the lQuest database gateway requires theExecutive Option, which incurs a minimum monthly charge of $10.00. CompuServe also allowsfor the sending of messages by fax or to other telecommuncation services.

Dialog (800-334-2564) charges $45.00 to open an account, plus $35.00 per account annually.Different options for training are available from the purchase of videos to $230.00 for one dayof hands-on training, manuals, and a $ 100.00 on-line credit.

Each communication session on Dialog is charged at $30.00 to $300.00 per hour dependingon the database, plus data output charges. For data displayed to the screen or printed off line,the rate ranges from no charge to $100.00 per record. Another $10.00 to $12.00 per hour fortelecommunications charges is added when access is gained through Dialog's communication network,or via Tymnet or Telenet.

BRS (800-955-0906) has three pricing plans for its 150 databases. BRS Search Service andBRS Colleague are available 22 hours per day. BRS Search Service charges an annual fee of $80.00,plus a charge per connect hour that ranges from $8.00 to $139.00, depending on rhe database.BRS Colleague charges a one-time registration fee of $95.00 and a monthly minimum charge of$20.00, but it provides databases on a discounted per hour bjsis after 6:00 p.M. (user's local iime)and on weekends. BRS/After Dark is available only from 6:00 pm. (user's local time) to 4:00 n.y.during the week, and is available all weekend. BRS/After Dark charges a one-time registration feeof $75.00, plus a monthly minimum charge of $12.00. BRS/After Dark databases are discountedand range from about $8.00 to $8 L00 per connect hour.

made my arguments, and for support citedPeryz's briefs, Kutten's treatise, and several otherwell-known treatises in computer, copyright, andtrademark law. After that, the judge granted thecontinuance and expedited discovery.

ELECTRONIC MAIL

Throughout the litigation, Gerryz and I tradeddocuments, letters, and musings with our clientby MCI Mail, an electronic mail service. Onseveral occasions, documents were created,

uploaded, received, and edited by our client, andthen returned to us in machine-readable formatsin less time than it would take Federal Expressto pick up one envelope.

In due course, one document traded withthe client was the settlement document thatended the litigation.

EPILOGUE

The plaintiff and defendant entered aconsent judgment, filed with the court on April

5l

Section2:EvaluatingtheCase,theClient,andtheLaw

4, 1988. If it were not for the early database

research, our client would have had a weaker

position from which he could bar$ain'

TWo years later, while preparing this article'

t spot e li.i,h or. client who said he was happy

*lit .ut", of his software, now renamed MED-

PC. Plaintiff continues to sell SKED software'

Plaintiffs SKED, SUPERSKED' and SKED-11

federal trademark registrations are still in fulI

force and effect.Gerry and I moved to the suburbs' although

we still maintain conference facilities at the

Uo".t". Increasingly, other attorneys have

air"or"."a the value of telecommunications'

including, Iwould expect, our one-time opposing

counse[.In the twenty-first century' riding the wire

will be the primary means of conducting research

and communicatingwith clients and others' The

best way to prepare for the next century is to

begin riding the wire in this century'

Jirm oJ Elman & wili' which has olJi'::-:-y:'1:

and Phitadelphia, eenns:vti'^"'"' *'it ** uiti""i1' 'n1!11":::::"^^:^,i:T:;:I?:ri,io!,!ii.*""i:ii,l!;i:l:!:;::t"il:;;:;':"li'!,)*,"ititisa;ionwith an"mphasl" onthe computer industry

52