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  Microsoft Loses Courtroom Battle Over Windows Trademark; San Diego Company can Continue to Use Lindows.com and LindowsOS for Their Upcoming Operating System
Time: 07:21 EST/12:21 GMT | News Source: Press Release | Posted By: Byron Hinson

In a strongly-worded ruling, a Seattle court has denied a request by the Microsoft Corporation to block a San Diego software company from branding themselves as Lindows.com and their Linux-based operating system, which will run popular Windows-based programs, as LindowsOS. ``We're obviously satisfied with the courts ruling. Our hope is that we can move beyond the courtroom and focus on our goal of bringing choice back to the PC business. Microsoft constantly appeals for the 'right to innovate.' I hope they will allow us to roll out our innovative operating system, which will cost a third of Microsoft's products, without further impedance,'' said Lindows.com Chief Executive Officer, Michael Robertson. ``We've shown we can defend ourselves against a much larger corporation and we'll continue to battle in a trial if necessary.''

In a written ruling handed down late Friday, the court denied Microsoft Corporation's request for a preliminary injunction to prevent Lindows.com from using the terms ``LindowsOS'' and ``Lindows.com.'' Judge John C. Coughenour found that Microsoft had not shown that Lindows.com should be prevented from using the names Lindows.com and LindowsOS as part of their business, stating that, ``Microsoft has raised serious questions about the validity of its trademark [Windows].''

The entire ruling can be read at http://www.lindows.com/opposition.

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#1 By 135 (209.180.28.6) at 3/18/2002 10:47:10 AM
Interesting. This ruling was regarding a preliminary injunction. Why is Lindows issuing a press release claiming Microsoft has lost the entire court case?

#2 By 2459 (66.25.124.8) at 3/18/2002 12:36:38 PM
I think the major reason MS doesn't go after companies like WinZip is because these companies help popularize the Windows platform. It should also be noted that the other products with the Win- moniker are not operating systems. Microsoft has made "Windows" synonomous with its line of operating systems, and has worked hard for over a decade to create this association (much like AOL has worked to make people think that it is the internet, but that's not really a good comparison. Abetter one might be Mac/Macintosh and Apple's line of computers). It can't be reasonably denied that Lindows is trying to gain sales (and cause MS support headaches) by having a sound-alike OS in the market that tries to attain the look, feel, and software compatibillity of Microsoft's software. What person/company wouldn't have a problem with this situation?

In few (if any) ways does this product add value to MS' brand. And, the Lindows company/product detracts from the Windows brand in many ways, including customer confusion, increased support calls to MS, a perceived relationship between MS and Lindows by customers because of MS software compatibillity, disdain towards MS or its partners due to their refusal to support problems which arise from use of the Lindows platform, etc.

Customer confusion from this situation would easily arise just as it has from customers thinking that MS writes the drivers that it includes in the OS, or blaming all forms of system instabillity on the OS even though there may be another cause (bad hardware, bad drivers, bad apps, heat problems, power problems, etc.).

This post was edited by n4cer on Monday, March 18, 2002 at 12:38.

#3 By 2 (24.54.153.167) at 3/18/2002 12:40:18 PM
#7 MS did indeed come after us as well. We were once ActiveWindows, which infringed on their trademark. According to them, Active_Win_ does not infringe on the trademark and is perfectly acceptable.

#4 By 3339 (65.198.47.10) at 3/18/2002 1:03:50 PM
"I think the major reason MS doesn't go after companies like WinZip is because these companies help popularize the Windows platform. It should also be noted that the other products with the Win- moniker are not operating systems." Enforcer, the OS argument might be valid, but I don't think a trademark holder can say--we like this product, it helps us; this product we don't like, they can't.

Clearly, the Adobe(tm) Illustrator(tm) vs. KIllustrator is the most applicable case, but since lindows has a countersuit, which basically states that MS has no grounds for their suit--does that mean that the issue whether Windows is a valid trademark will have to be resolved first?

#5 By 2459 (66.25.124.8) at 3/18/2002 1:31:15 PM
I don't think this is about like and dislike. One can argue the Linux issue, but I don't think it has much relevance. As Bob said, ActiveWin was targeted for infringement when they were called ActiveWindows (I forgot to include that in my last post), and they have never been an anti-MS site. If MS only went after entities it disliked, it would not have had a problem with ActiveWindows. The reason they went after ActiveWindows is probably because they thought people may believe it is in some way affiliated with MS since the site contained MS and Windows related content (and probably because MS also uses the Active term alot for various Windows products/technologies) as well as the site having the Windows trademark in its name. Of course, the AW guys and MS are the only ones that know all the details.

I believe this suit is solely because of the company trying to benefit from Microsoft's well-established software, brands, and trademarks by making a sound-alike, look-alike, cheap, knock-off with a similar name.

This post was edited by n4cer on Monday, March 18, 2002 at 13:34.

#6 By 2 (24.54.153.167) at 3/18/2002 1:36:00 PM
Yes, #11. They clearly stated that in the contact they had with me that it wasn't a matter of like or dislike, just a matter of legality like you said since they wanted to minimize confusion. They worked this out with me very amicably (they viewed this site favorably), and we have had no problems since.

This post was edited by AWBobStein on Monday, March 18, 2002 at 13:40.

#7 By 2459 (66.25.124.8) at 3/18/2002 1:42:28 PM
Thanks for the followup, Bob.

#8 By 135 (209.180.28.6) at 3/18/2002 2:00:29 PM
Trademark law is odd in this way. There are a number of commonly used words today that were at one time trademarks. But because the trademark was not protected, they became public domain... I know Coke and Pepsi still occasionally raid restaurants and test them. If you ask for a Coke, and they only serve Pepsi the staff is supposed to say "Will Pepsi be ok?", and so on to make it clear that they are different products. Probably a huge problem in the south where everything is a Coke. "I'll take a root beer Coke, and ..." ;)

As I recall Coke had an initial big lawsuit against Pepsi regarding the use of the word Cola. But I think in that case Coke lost because the Cola referred to an extract of Kola nut which is where the caffeine comes from. The Judge ruled that since they both used this ingredient, they both could use the word.

Of course now Coca is not used in Coke, and I can assure you that Pepsi is not a stomach soother, because I get stomach aches everytime I drink it. :-)

#9 By 3339 (65.198.47.10) at 3/18/2002 2:00:34 PM
Enforcer, I agree but that's not what you say in #8.

#10 By 3339 (65.198.47.10) at 3/18/2002 3:12:20 PM
The more I think about this, and I'm not considering the infringement case, just the counter suit that "Windows" is an invalid trademark--the whole issue hinges on the "s". I don't think Microsoft could successfully defend the word "window"--so the question is, does making that word plural make it any less generic?

Further... there's a specific rule about trademark maintenance: using the company trademark with a product mark or name. Which raises an interesting point, this rule only applies to company names, not products. This is designed to prevent either the company or product from becoming generic and to make it explicit; when its done with product names, it seems you could argue that it makes it MORE generic and MORE confusing. So isn't MS diluting its own trademark with Windows Media Player which isn't specific to the windows platform and has nothing to do with windows. It seems to me they are trying to make it a generic term themselves, if not a meaningless one. Also, it seems they are trying to "leech" off their own ubiquity as well, if not create confusion.

I can't think of other examples like this: Apple gets close, but their Mac related products are actually using that term as a prefix or suffix and are themselves trademarked and specifically relate to Macs (iMac, PowerMac, MacManager), all the other products actually use Apple (Apple Remote Desktop, AppleWorks) when a trademark is used as a separate word or not specifically related to the marked product.

I'm always confused about how MS is using WMP/WMF anyway (I'm sure you'll all clarify it for me if I got it wrong)-- they've got Windows Media trademarked, right, but not the Player part? So they've actually got two trademarks (and two generic terms) prefixing another generic term in the case of Windows Media Player. Anyway, using a product name as an adjective (and separate word) to an unrelated product seems like it could be a potentially bad move for MS. It's not Microsft Media, it's Windows Media--but what the hell does that use of the word Windows refer to? (Seems to me, they're throwing it in there for the exact same reasons as Lindows) But this would certainly seem a murky bit of trademark law--not sure if a product name can be used as an adjective, nor for that matter if a trademark holder can be responsible for the dilution of their own mark outside of lacking enforcement. But simply using logic, I would say WMP is definitely using Windows generically, if not meaninglessly, and is also intended to "leech" off the brand--2 issues very relevant to the case.

Can anyone think of other examples where the product name is used as an adjective and as a separate word? [For example, it's Xerox(TM) copier machines not DocuCenter Copier Machine(tm)]

This post was edited by sodajerk on Monday, March 18, 2002 at 16:19.

#11 By 4209 (163.192.21.3) at 3/18/2002 5:32:21 PM
SodaJerk,

For one, the reason Windows is trademarked is to stop anyone else from using the same name or variation of that name to create a similar product. This would confuse consumer as they would not be able to easily distinguish the two products apart. That goes for Windows Media as well. Now since Windows Media is covered then any word after it would fall into that as well, because you can not infringe with using the Windows Media part of Windows Media Player, so there is no need to trademark the whole phrase. This is a common practice in the business world. Now if course the word Windows applies only to computer software, since a house has Windows in it and it is a generic word. Yes MS was kind of lazy in using a common name for a specific product but that is a whole other discussion.

#12 By 3339 (65.198.47.10) at 3/18/2002 5:50:08 PM
mctwin, you aren't really addressing my main point though: isn't the use of the word Windows in Windows Media inappropriate and generic? I'm not concerned about the word "Player"--I was just pointing out that all the words in this product are generic--what I am focusing on is Microsoft's own use of the word in an imprecise and "leeching" fashion. It is after all a multiplatform format. So isn't MS making a meaningless reference to a product that they are trying to latch on to because of the success and ubiquity of the Windows name and product?

Can you give another example of a company using a product name as a separate word within another product name as an adjective? I can only come up with the Apple ones and even they are distinctly different. Remember, this is reusing a PRODUCT name for an unrelated PRODUCT--not using your COMPANY name in a PRODUCT name.

The discussion of generic or not is already focused within the computer world so the attempt to sidetrack it to a broader generic discussion is irrelevent; window(-s, -ing) is a generic term in the computer world.

And after looking into this further, the case is very strong that Microsoft is going to lose that name. I hadn't realized that the USPTO rejected the mark twice and it was only granted after MS paid Borland a mill to withdraw their own "Windows" registrations and protest letters. And I also didn't know that QNX has a "Phindows" product to run Photon within Windows. And that there is a GUI library product called "wxWindows." That kind of takes away the confusion argument if they are okay, and takes away the "Win" is okay, but "dow" isn't argument as well.

This post was edited by sodajerk on Monday, March 18, 2002 at 17:51.

#13 By 3339 (65.198.47.10) at 3/18/2002 6:34:45 PM
From the court ruling on the prelim. injunction:

"Prior to reaching the merits of the [...] federal trademark causes of action, the Court must determine whether the Windows trademark is a valid, protectable mark."

Why don't reporters report these things--I've been looking for 2 days for that nugget. Also, reading over just this preliminary order, Microsoft is REALLY in for a TOUGH case.

#14 By 1896 (66.20.202.10) at 3/18/2002 7:03:48 PM
What LindowsOS posted is "Select Quotes from Judge's Ruling" and not the full document. This legally speaking is fine because obviously when you edit something what you pick up the part most favorable to you but you also warn that the document is edited. The first part of the article states: "In a strongly-worded ruling, a Seattle court has denied a request by the Microsoft Corporation to block a San Diego software company from branding themselves as Lindows.com and their Linux-based operating system, which will run popular Windows-based programs, as LindowsOS" while what the court denied is a preliminary injunction to do it.
At the end of the article there is another false and misleading statement: "The entire ruling can be read at http://www.lindows.com/opposition." ; as I posted above LindowsOS posted only part of the original document.
Fritzly

#15 By 3339 (65.198.47.10) at 3/18/2002 7:06:15 PM
No, Fritzly, I'm a bit more curious then you are. They included a complete (but poorly photocopied) pdf of the full ruling. Try again.

In fact, it's right at the top of the page you were looking at... JEE-ZUS!!

http://www.net2.com/lindows/ruling.pdf

No wonder I feel like I'm talking to the wall sometimes. Are you blind, slow, don't know what a link is, or just like jumping the gun and shooting at anything anti-MS?

This post was edited by sodajerk on Monday, March 18, 2002 at 19:18.

#16 By 3339 (65.198.47.10) at 3/18/2002 7:24:38 PM
Well it's pretty tough to deal with a completely ignorant post that's going to sit there and tell all the softies what they want to hear when it's completely wrong; I was hoping to make Fritz feel stupid enough to edit his own comments. I'll take the insults out if he edits his post.

And I'll edit this one too: by the way, it was this site that said the entire ruling could be read at Lindows, not Lindows. I would say that demonstrates how quick and foolishly people will jump to conclusions about what is or is not "false and misleading."

This post was edited by sodajerk on Monday, March 18, 2002 at 20:05.

#17 By 3339 (65.198.47.10) at 3/18/2002 7:30:13 PM
"This whole case is as foolish as my last statement."

No, it's not--your WHOLE statement is FAR more foolish than this case. Learn what generic means in relation to trademark, read the preliminary ruling, then try to squeeze a thought out of your head. And then, and only then, come back to post what are the stupidest arguments you or anyone can imagine.

#18 By 3339 (65.198.47.10) at 3/18/2002 9:07:09 PM
Then enlighten us, o great one!; otherwise...

From what I understand whether or not a trademark is generic is a question of fact to be determined by six categories of evidence: competitor's use, plaintiff's use, dictionary definition, media usage, testimony of persons in the trade, and consumer surveys. Lindows presents evidence suporting their claim in 5 of 6 categories. Microsoft mostly has surveys to fall back on, which are dismissed in the preliminary decision based on the fact that these surveys do not date from the first use, and whether or not MS can "reclaim" a generic word has to face a high standard--the generic term must have lost all use of its generic meaning, which it hasn't.

This post was edited by sodajerk on Monday, March 18, 2002 at 21:28.

#19 By 1896 (66.20.202.10) at 3/18/2002 9:35:04 PM
#24 you are free to post your comments about other people postings; if the only way to do it is "insulting" this is a problem related to your cultural background and your philology skill; as far as I am concerned you can leave your post as it is as long as you want.
About the second part of your post I invite you to read my post more carefully: I clearly stated that Lindows OS site clearly and prominently states that the material posted there is an edited edition of the ruling. The article instead states:
"In a strongly-worded ruling, a Seattle court has denied a request by the Microsoft Corporation to block a San Diego software company from branding themselves as Lindows.com and their Linux-based operating system, which will run popular Windows-based programs, as LindowsOS."
After that we have an excerpts from Lindows OS CEO Mr. Michael Robertson, than an another part of the article, than another excerpt from Mr. Robertson and the the final part of the article:
"The entire ruling can be read at http://www.lindows.com/opposition" which is wrong and misleading!
The entire ruling can be read at: http://http://www.net2.com/lindows/ruling.pdf.
Why should I go trough Lindows site to read the entire ruling? I am interested in reading the document and not to boost number of Lindows site viewers.

#20 By 3339 (65.198.47.10) at 3/18/2002 9:48:30 PM
Oh, I'm sorry, Microsoft never leads you to an intro page that then contains links, I'm sorry, your fear is now entirely appropriate and not silly. In fact, it's rather standard, even recommended, to provide a lead in page when linking to a pdf so that you can tell the users it is so, how big the file is, etc.

By the way, there's nothing wrong with "In a strongly-worded ruling, a Seattle court has denied a request by the Microsoft Corporation to block a San Diego software company from branding themselves as Lindows.com and their Linux-based operating system, which will run popular Windows-based programs, as LindowsOS." It is an official ruling, and a request is generally a pretrial motion like an injunction.

"Lindows OS site clearly and prominently states that the material posted there is an edited edition" yes, it does do that quite clearly so I don't know what's misleading about that.

My philology is just fine, buddy, how many synonyms do you want for WEAK?--because your retreat from your previous statement is obvious--you seem to assert and reassert that Lindows did not make the full ruling available. You did not say, "that's the wrong link." Which is the obvious and common thing to do if that's the point you were originally making.

This post was edited by sodajerk on Monday, March 18, 2002 at 21:52.

#21 By 1896 (66.20.202.10) at 3/18/2002 10:18:40 PM
I did not retreat from anything I posted:
The article is misleading because doesn' t mention that what the judge denied was a "preliminary injunction" which is, as you correctly state, a "pre-trial motion" and nothing else. My Merriam Webster's dictionary works fine thanks, it perfectly helps me with my mediocre English caused by the fact that my native language is anoter one so I don' t need help looking for synonims.
I never stated that Lindows did not make the entire ruling available, I stated exactly the opposite: Lindows did and ActiveWin did not sending people interested to read the ruling to the Lindows site instead than where the document is.

#22 By 4209 (163.192.21.3) at 3/19/2002 10:38:20 AM
#18 SodaJerk,

Sure I can think of others. Ford Explorer, and many others as well. They call it Windows Media Player, because the program runs in Windows, I have never seen WMP run in any other OS. I don't see what the big deal is about the term Windows being used, in life Windows is a generic word, but in the computer world Windows is not generic. It is the name of an OS, no matter how generic in everyday life it is, it is not generic when talking about computers.

#23 By 3339 (65.198.47.10) at 3/19/2002 12:38:07 PM
No, mctwin, as I said, can you think of an example that uses the PRODUCT name as an adjective for another PRODUCT; Ford is the company name and a separate trademark. Windows Media Player also runs on the Mac; the format is a media format for both platforms. You have never heard the phrase windows used in a generic context in the computer world? Huh... which world do you live in?

Fritzly, it was not misleading--it was a Press Release; it didn't say "final court ruling" or "verdict"--that would be misleading. When have you ever read a Press Release that didn't contain the favorable quotes or marketing speak? Your last statment sounds like more backpedaling to me... After all, you wrote "What LindowsOS posted is "Select Quotes from Judge's Ruling" and not the full document." No mention of ActiveWin, but now you are saying, "I never stated that Lindows did not make the entire ruling available, I stated exactly the opposite: Lindows did and ActiveWin did not..." Baloney!

This post was edited by sodajerk on Tuesday, March 19, 2002 at 13:12.

#24 By 2459 (66.25.124.8) at 3/19/2002 2:26:38 PM
Windows Media Player has its name because the player and the format originated on and have first-priority support for the Windows platform. Windows Media Player has been around probably as long as Windows. It has been around at least since Windows 3.1, and started as a Windows-only product. On other platforms, it is a Player that plays Windows Media content, hence Windows Media Player for <platform>. And even though it came with Windows back then, somehow noone paid it any attention until version 8 in XP. Then, all of a sudden, it's unfair and taking away marketshare, and should be dropped from the OS, and all of that crap regularly heard from AOL, RealNetworks, etc.

As for another example, how about Quicktime Streaming Server.

#25 By 3339 (65.198.47.10) at 3/19/2002 2:43:09 PM
Decent shot at an example, but a QuickTime product is a QT product, any product with QT in it's name is QT. Windows Media Player isn't always a Windows product, and WMP definitely isn't Windows. In fact, QTSS will probably ultimately disappear in favor of Darwin Streaming Server since they would prefer it refer to its multiplatform capabilities. (Yes, it fits my request--but I think you see that I am looking for an example as screwed up as MS's; you do get that, right, I'm looking for an example that conforms to the illogic of WMP so I can understand if this logic is valid, I'm not just looking for names. I do appreciate it though.) To take it further, I've been saying an adjective, but an adjective could just imply possession. If you think of your example and say QuickTime is a noun, or an object of the product, you go down this semantic track: Streaming Server of what, for what? QuickTime. Media of what, for what? Windows. But that is not true.

That explanation seems weak--Windows is supposed to be a specific and precisely descriptive term. To say that Windows Media Player for the Mac in any way minimizes (I would say it actually enhances) the fact that MS is using it in an imprecise and generic fashion is odd. If it is such a specific product, why isn't the Mac version Microsoft's Mac Media Player? That would be a perfectly legal name.

And then you say: "On other platforms, it is a Player that plays Windows Media content, hence Windows Media Player for <platform>." But Windows Media content, you would view as platform agnostic if a player is available for that particular platform, right? And its Windows Media which is trademarked. So why is it Windows Media? It simply is NOT so why the name? It should be Microsoft Media, because it is not owned by, specific to, falls within, or a part of Windows--it is a media format that could play on any platform created by Microsoft, not by Windows.

By the way, I've been following WMP since 96 when they were taking their most unfair and deceptive steps to establish WinMedia, but I don't know what your little hit at the competition has to do with a trademark law discussion anyway.

This post was edited by sodajerk on Tuesday, March 19, 2002 at 15:09.

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