Copyright, Trademark and the OCLC suit

[Samuel Trosow <strosow@uwo.ca>]

Gherman, Paul M wrote:

>The reason OCLC is filing against the Library Hotel is to protect
>their copyright status with regard to the Dewey Decimal System. If
>they do not challenge this unauthorized use, others with more
>malicious intent could challenge their copyright status. OCLC has 
>offered to negotiate with the Library Hotel over this matter and they 
>refuse.
>
> I say this as member Solinet member of OCLC's Members Council.
>
> -----------------------------------------------------------------
> Gherman, Paul M
> University Librarian
> Vanderbilt University

We shouldn't conflate trademark and copyright. They are very different and
shouldn't be used interchangeably as you are doing here. Copyright
subsists in an original work that has been fixed in a tangible medium of
expression.  So the OCLC may hold a copyright in its four volume DDC 22.

Even though many of the elements in the work would be in the public
domain, the work as a whole qualifies for copyright protection because
there is sufficient originality in the updated portions. So if someone
starts to mass reproduce and distribute or transmit DCC 22, there would be
a copyright violation.  But copyright does not stop someone from using the
materials in the work. For example, if a publishing company publishes a
new cookbook, there is copyright in the work.  But anyone can use the
recipes in the book without having to pay additional royalties, even a
commercial restuarant.

Another major principle of copyright law is that copyright does not
protect ideas or facts. The particular expression of the ideas in the work
may be protected from copying, but the ideas and underlying facts
themselves are not restricted by copyright law and remain in the public
domain. over the past few years, there have been many attempts to enroach
on the public domain through new legislation, licensing schemes and the
use of technological protections.  The library community has always been
at the forefront of the fight against these restrictive measures.  Many
owners of intellectual property try to work around these restrictions in
the scope of copyright law in various ways.  One tactic is to wrap the
expression in trademark protection as well.  unlike copyright law, which
is subject to term limitations (such as they are), TM's are of potential
unlimited duration. So even if the copyright in Mickey Mouse should
expire, Disney still holds a variety of trademarks in the image.

The OCLC lawsuit is not based on copyright in any manner.  They know that
a copyright related claim against the hotel would be frivolous. So the
assertion that "OCLC is filing against the Library Hotel is to protect
their copyright status with regard to the Dewey Decimal System"  is simply
wrong.  Read the complaint at
http://www.bespacific.com/mt/resources/2003.09.22.hotel.pdf Unfortunately,
OCLC has not posted the actual text of their complaint on their website
along with their press release which is being widely circulated. As a
result, I think there's quite a bit of misunderstanding floating around
about exactly what the suit is about, such as the characterization of the
suit as a copyright matter (and, by the way, I do not mean to pick on the
poster of this particular message, others have said the same thing on
various lists)

I will summarize the gist of the complaint here but I hope readers of this
list will take the time to review the actual complaint in its entirety.  
Let's at least get straight what the lawsuit is and is not about, exactly
what contentions OCLC is making, what factual issues they would have to
prove in order to prevail, and what remedies they are seeking. The
complaint is based on the legal theories of . . .

<begin summary of complaint>

(1) federal trademark infringement (alleging that "Defendant's wrongful
use of the Dewey Marks and misappropriation of the Dewey Decimal
Classification system as a thematic marketing concept for a hotel are
likely to cause confusion as to sponsorship or authorization by OCLC, or
alternatively, destroy the origin-identifying function of the Dewey Marks"
;

(2) Federal Unfair Competition, False Designation of Origin, Passing Off
and False Advertising (alleging that "consumers are deceptively led to
believe that The Library Hotel originates with or is sponsored or
otherwise approved by OCLC" and that such conduct "constitute false
designation of origin, passing off and false advertising in connection
with products and services distributed in interstate commerce" ; and

(3) Dilution (alleging that "OCLC has no control over the quality of The
Library Hotel's web site, hotel, advertising and other promotional
materials, its use of the Dewey Marks, and its misappropriation of the
Dewey Decimal Classification system as a thematic marketing concept for a
hotel. As a result of such use by The Library Hotel, the distinctive
qualities of the Dewey Marks are being and will continue to be diluted"
and that "OCLC is suffering and will continue to suffer irreparable harm
and blurring of the Dewey Marks if Defendant's wrongful conduct is allowed
to continue".

Based on these three claims, OCLC seeks the following remedies:

(1) that the hotel be permanently enoined from:

(a) using any of the Dewey Marks or any variation of the word “Dewey”
specifically including, but not limited to, any term that includes “Dewey”
or a misspelling of Dewey in connection with the promotion, marketing.
advertising, public relations and/or operation of The Library Hotel, or
any other such establishment using a "Library Concept"  marketing
strategy; (b) using the Dewey Decimal Classification system as any part of
a thematic marketing concept in connection with the promotion, marketing,
advertising, public relations and/or operation of The Library Hotel, or
any other such establishment using a "Library Concept" marketing strategy;
(c) diluting, blurring, passing off or falsely designating the origin of
the Dewey Marks or the Dewey Decimal Classification system, and from
injuring OCLC's goodwill and reputation; (d) doing any other act or thing
likely to induce the belief that The Library Hotel's businesses, services
or products are in any way connected with, sponsored, affiliated,
licensed, or endorsed by OCLC; (e) using any of the Dewey Marks for goods
or services, or on the internet, or as domain names, email addresses, meta
tags, invisible data, or otherwise engaging in acts or conduct that would
cause confusion as to the source, sponsorship or affiliation of Defendant
with OCLC;

(2) that OCLC recover its actual damages sustained or Defendant's profits
made as a result of Defendant's wrongful actions; and that OCLC recover
three times Defendant's profits made as a result of Defendant's wrongful
actions or three times OCLC's damages, whichever is greater; 
(3)that OCLC be awarded exemplary damages 
(4) that the Hotel pay OCLC's costs and legal fees

<end of summary of complaint>

Not a word about copyright. Now consider each of these three claims.  Do
OCLC's allegations appear reasonable in light of the broad remedies they
are seeking? Do you think a consumer is really going to be as confused as
OCLC alleges in each of the three counts? Let's give the public (our
patrons) a little more credit than that.  OCLC's claims of confusion are
quite a stretch. What's even more important, from the point of view of the
librarian community, is the very notion of branding something like the
Dewey Decimal system like its a box of detergent or a pair of sneakers. I
always thought that the DDC was something that evolved over the years as a
joint cooperative effort. Even today, OCLC represents itself on its
website as a broad cooperative based non-profit dedicated to the
advancement of knowledge.

" [OCLC is] dedicated to the public purposes of furthering access to the
world's information and reducing information costs." and

"Establish, maintain and operate a computerized library network and to
promote the evolution of library use, of libraries themselves and of
librarianship, and to provide processes and products for the benefit of
library users and libraries, including such objectives as increasing
availability of library resources to individual library patrons and
reducing the rate-of-rise of library per-unit costs, all for the
fundamental public purpose of furthering ease of access to and use of the
ever-expanding body of worldwide scientific, literary and educational
knowledge and information."

The library community has been at the forefront of fighting back the
enclosure of informational resources.  Every time publishers have tried to
expand their IP rights at the expense of the public, library associations
have been right there, be it UCITA, the DMCA, term extention or database
legislation. In this case, a publisher is trying to stretch trademark law
to apply to an unrelated service based on spurious claims of potential
consumer confusion.  Even though OCLC is a separate entity, I'm concerned
that many members of the public (and even some policy makers) might not
make the fine-line distinction and see this action as somewhat reflective
of the broader library community inasmuch as the DDC is generally
associated with public libraries.  In which case, don't we seem a bit
two-faced with respect to our intellectual property policies?

Ultimately, the case will turn on a factual issue, whether, when viewed in
the context of hotel services, the references to the DEWEY marks would
cause a consumer to believe that the hotel services are somehow sponsored,
approved, authorized, or sourced by the OCLC. It is not as if the hotel is
mass-producing unauthorized copies of DDC 23 and selling them in
competition with OCLC, in which case there would be a copyright issue.  
Nor is the hotel misappropriating the goodwill of the classification
system in order to compete in the classification system business (or some
other line of business that is even remotely related to library services),
in which case the trademark action would be somewhat more justified. In
order to prevail on these claims, OCLC will have to argue that the
consumer/ public have not enough good sense to tell the difference between
a catalouging service and a hotel. I don't think we, as librarians, should
be buying into this construction of our patrons as such feeble minded
consumers. I think it is quite appropriate for the library community to be
critical of this lawsuit; at the very least we should not be condoning it,
and certainly not on mistaken grounds. We should also be asking whether
this is the sort of service that should be branded and wrapped in TM
restrictions in the first place.

If you want to justify this lawsuit, then you need to be prepared to say:
(1) branding something like a library classification is appropriate; (2)
the public is likely to be confused into thinking the hotel is somehow
affiliated or authorized by OCLC; and (3) the remedies sought by OCLC are
appropriate.

That's a much harder argument to make than some of the simplistic
assertations I've seen floating around on this and other lists recently.

Samuel Trosow
Assistant Professor
University of Western Ontario
Faculty of Information & Media Studies
Faculty of Law