Hi Everyone!
In case you missed it: approx. one month ago I received a "Cease & Desist" letter from our dear friends at Watch Tower Canada legal department.... whoops, I mean from How & Associates (http://www.jehovahs-witness.com/9/83334/1.ashx).
Since then, you may have noticed a few changes at the Quotes Website, including the addtion of a "New and Updates" page.
I just wanted to let you all have an update as to what is happening: so far, not much, like the calm before the storm?. The site stays up -- I think because my web host understands the law and does not respond to specious claims.
This past week, my lawyer has sent the following response:
[recipients removed: WT lawyers, Web Host, Domain Name Registrar]
Dear Sirs:
Re: Alleged Copyright Infringement: quotes.watchtower.ca
Please be advised that I am the solicitor representing Mr. [Quotes]. I respond to your letter dated January 11, 2005, as follows:
Use of Written Material
Your letter January 11 letter claims that "literally hundreds of pages of copyrighted material grossly exceeds the "fair dealing" provision of Canada's Copyright Act." This statement disingenuously and unfairly characterizes the material presented. The total of "hundreds of pages" of quotes at the website quotes.watchtower.ca actually represents a composite of several hundred individual quotes, from thousands of different Watch Tower publications -- publications which total (by our estimate) on the order of one quarter million (250,000) pages of material. Each quote is, by itself, reasonable under the "fair dealing" provision. A collection of "fair dealing" quotes is, in composite, still "fair dealing". Put another way, if you insist on grouping all of the quotes together (to arrive at a total of "hundreds of pages"), then you must also group together the sum total of the source material from which those quotes were taken. Doing so yields a usage of less than 0.1% of the source, which is well below generally accepted standards for "fair dealing" under the Copyright Act. It is also important to note that each quote properly cites the original source publication and page number.
Furthermore, a large number of the quotes collected have certainly fallen into the public domain by virtue of the passage of time since the original publication date, regardless of whether one consider either Canadian or American copyright statutes as relevant.
Use of "Artwork"
It is important to note that this "artwork" takes the form of drawings and graphical illustrations appearing within Watch Tower books and magazines, reproduced using high speed offset printing techniques. Each individual image represents, typically, less than one page from a book (typically 200 to 400 pages) or magazine (typically 32 pages). Furthermore, those books and magazines are not generally promoted and distributed as art, but rather as literature. These image reproductions used at quotes.watchtower.ca are fully credited to Watch Tower, and once again the source publication and page number is clearly displayed. It is my client's carefully considered position that such use is reasonable under the "fair dealing" provision of the Copyright Act.
We refer you to the decision in Allen v. Toronto Star Newspapers Ltd, ( 36 O.R. (3d) 201 [1997] O.J. No. 4363 , Court File No. 740/95 ).Use of domain name "watchtower"
Mr. [Quotes] registered the domain name "watchtower.ca" in November 2000, and has consistently used the domain to point to his collection of Watch Tower quotes. The domain watchtower.ca has been used in good faith and is entirely appropriate, considering the subject matter of this web site. By November 2000, several years had elapsed, during which Watch Tower could have registered the domain watchtower.ca. The fact that it was still available as late as November 2000 indicates that Watch Tower had no intention of registering, protecting, or using the domain watchtower.ca.
A current database search of the Canadian Intellectual Property Office for trade-marks does not yield any results for either "Watch Tower" or "Watchtower". Furthermore, we note your January 11 letter did not claim a trademark for the term "watchtower" (your speculative and unsubstantiated claim of international recognition notwithstanding).
Furthermore, it is interesting to note that a similar search of the US Patent and Trade Mark Office reveals the following registrants for the word mark "Watchtower":
- MATTEL, INC. (Standard Character Mark, S/N 78374150)
- JJ Labs, Inc., (Typed Drawing, S/N 76436364)
It would appear that, according to the USPTO, the term "Watchtower" is non-exclusive and not unique, and therefore Watch Tower does not have any common law trademark rights. It is the contention of my client that unless Watch Tower has a valid registration it has to show common law trademark rights in the mark. Further, because "Watchtower" is a common descriptive term, to demonstrate common law trademark rights, Watch Tower would have to provide evidence that the term acquired secondary meaning. "Watch Tower Bible and Tract Society of Pennsylvania" is merely a trade name that happens to incorporate the common descriptive term "Watch Tower" which in turn is similar to "Watchtower".
The Canadian Internet Registration Authority ("CIRA") has published Domain Name Dispute Resolution Rules ("Resolution Rules") and a CIRA Domain Name Dispute Resolution Policy ("CDRP") for dealing with disputed domain names (http://www.cira.ca/en/cat_Dpr.html). According to CDRP version 1.2, in order to prevail in such a dispute, Watch Tower must prove, on a balance of probabilities, the following:
CDRP
¶4(a): Similarity to Complainant's MarkAs already noted above, there is no evidence at hand that Watch Tower has either a registered trademark or common law trademark rights for "watchtower".
CDRP
¶4(b) Registered and Used in Bad Faith (as described by CDRP ¶3.7)CDRP ¶3.7(a) My client has not "registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration" to Watch Tower or to a competitor of Watch Tower. The domain is not for sale, is not for rent, and has never been offered for sale or rent.
CDRP ¶3.7(b) My client has not engaged in registering the domain name to prevent Watch Tower from registering the said domain name. He has not "engaged in a pattern of registering domain names in order to prevent persons who have Rights in Marks from registering the Marks as domain names". At the time of registration (November 2000), Watch Tower was the registrant of watchtower.org (registered 1996.03.14), watchtower.net (registered 1996.11.01) and watchtower.com (registered 1997.10.27). There is no indication that Watch Tower had any intention of registering or using watchtower.ca.
CDRP ¶3.7(c) My client has not registered the domain name "primarily for the purpose of disrupting the business of the Complainant." On the contrary, Mr. [Quotes]'s website assists and encourages the study and review of Watch Tower publications, which is entirely consistent with Watch Tower's published desire for careful examination and even shared distribution of its "vital information". (Watchtower May 15, 1957 pp.313-315; You Can Live Forever In Paradise On Earth, 1982, p.197).
CDRP
¶4(c) Lack of Rights or Legitimate Interest (as described by CDRP ¶3.6)It is obvious that my Client "used the domain name in Canada in good faith in association with a non-commercial activity including, without limitation, criticism, review or news reporting" (CDRP ¶3.6(d)). Mr. [Quotes] has a legitimate interest in the domain name.
I cite the following recent decisions by the World Intellectual Property Organization with similar facts to your claim for watchtower.ca. In all these situations, the arbitration panel ruled in favour of the Respondent (i.e. in favour of the party in Mr. [Quotes]'s position), and furthermore held that the Complainant (i.e. Watch Tower, in this case) was attempting a "reverse domain name hijacking" which is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name."
- mexico.com (http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0242.html)
- futureworld.com (http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0297.html)
- stmoritz.com (http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0158.html)
- argos.biz (http://arbiter.wipo.int/domains/decisions/html/2002/dbiz2002-00063.html)
- carsales.com (http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0047.html)
- supremo.com (http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1357.html)
- sfm.com (http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0535.html)
- travel.biz (http://www.arb-forum.com/domains/decisions/114418.htm)
- arche.com (http://www.arbforum.com/domains/decisions/103447.htm)
- prom.com (http://arbiter.wipo.int/domains/decisions/html/2001/d2001-1154.html)
- netdeposit.com (http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0365.html)
- 411.biz (http://arbiter.wipo.int/domains/decisions/html/2002/dbiz2002-00249.html)
- ntmailserver.com (http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0277.html)
Claimed use of Watch Tower's Corporate Logo
Again we note that your letter did not claim the "Watch Tower Corporate Logo" was a registered trade mark in Canada. Furthermore, a search of the Canadian Intellectual Property Office's database does not indicate any such registration.
However, we have found that USPTO S/N 76220094 is registered to Watch Tower, as a "Design plus words, letters, and/or numbers" for use in "Web sites and web pages, featuring information in the field of religion"). Ignoring for the moment that is an American registration and assuming that this Mark is germane, it is Mr. [Quotes]'s position that his original artwork was both distinct from, and also a parody of, USPTO S/N 76220094 (assuming this registration is what you refer to as the "Watch Tower corporate logo"). However, he feels that there is little to gain by making an issue about this act of free expression -- indeed, there is also little to lose by removing his original artwork. Therefore, as a show of good faith, and without prejudice, he has removed that artwork, as of February 1, 2005.
"Watchtower Bookshelf CD-ROM"Mr. [Quotes] has advised me that he performed a reasonable amount of due diligence when researching the copyright status of the material provided on the Watchtower Bookshelf CD-ROM . ("BS CD"), and concluded that the material had fallen into the public domain. His initial investigations in early 2003 did not find any renewed copyrights for any of the books included on the BS CD. The relevant copyright law, as understood by my client, can be summarized:
The works, as originally published, indicate they were "Made in the United States of America" and the copyright notice indicates the copyright is held by "Watch Tower Bible and Tract Society of Pennsylvania" -- an American company. According to the Berne Convention, "...the [copyright] term shall not exceed the term fixed in the country of origin of the work" (Berne Convention for the Protection of Literary and Artistic Works, Paris Text 1971, Article 7, paragraph 8.)
It was, and is, Mr. [Quotes]'s understanding (from the book The Copyright Handbook published by Nolo press) that US copyright law is such that any books published 1923-1963 for which copyright was not renewed, during the final year of copyright protection, are now in the public domain.
My client launched a good faith search using the online database at the US Copyright Office. Mr. [Quotes]'s search, in early 2003, found no indication that any of the works proposed for the BS CD had been renewed. Therefore, my client concluded that the 17 volumes contained on the BS CD were in the public domain.
In light of your claim "many of these original works continue to be protected under Canada's Copyright Act", Mr. [Quotes] has suspended, indefinitely, his distribution of the BS CD, as a show of good faith and without prejudice, as of February 1, 2005. However, my client requests that you undertake to provide a list of exactly which of the seventeen volumes on the BS CD are, in your opinion, still protected by copyright, and your reasoning underlying your claim. For your reference, a list of the volumes included on the BS CD is still available at http://quotes.watchtower.ca/order-wtbscd.htm, although the order function has been removed.
Sincerely,
[Quotes Lawyer]
P.S. My client has informed me that the fax number listed for him in your January 11 letter is a fax service he has not used for at least one year, and asks that you please update your records by deleting that number. Also, if you have sent any information to that fax number, please be aware that it is impossible for Mr. [Quotes] to retrieve it, and he asks that you re-send same care of this office [xxx-xxx-xxxx].
That is all I have to report for now. I will keep you updated if the WT decides they *WANT* the bad publicity that launching a suit would cause.
Cheeers!
~Quotes, of the "defending and legally establishing freedom of expression and legitimate fair dealing" class