Re: Copyright, Trademark and the OCLC suit

[Peggy Hoon <peggy_hoon@ncsu.edu>]

Well said Professor Trosow!  I couldn't agree more and think there is very
little chance of confusion in the mind of the public, ergo no infringement
of the mark.  Nevertheless, given the plaintiff, I'm not all that
surprised.

-- 
Peggy E. Hoon
Scholarly Communication Librarian
North Carolina State University Libraries
Raleigh, NC  27695-7111
919.513.2045
919.513.3553 (fax)
peggy_hoon@ncsu.edu

> From: Samuel Trosow <strosow@uwo.ca>
> Reply-To: liblicense-l@lists.yale.edu
> Date: Fri, 26 Sep 2003 11:50:01 EDT
> To: liblicense-l@lists.yale.edu
> Subject: Copyright, Trademark and the OCLC suit
> 
> 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.

[SNIP]

> 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.
>
> Samuel Trosow