Post FeedCease, desist … and, of course, pay!
It could have been a nice evening today, but to my great surprise, I found a not-so-nice e-mail in my Inbox – and at the same time, my parents found the same thing as snail mail in their mailbox at home.
To cut a long story short: Apple Inc. sent me (via a German lawyer) a »cease and desist« letter. They believe that the names CENSORED and CENSORED-s (sic!) violate their trademarks »Keynote« and »iTunes«.
Frankly, I do have a little bit of understanding in the first case. In fact, I saw it coming. I couldn’t expect that the uppercase letter »J« I put in the middle of the name, radically changing both the look and the pronounciation, was enough to stop Apple from sueing me, or could I?
The other case is a little bit more awkward because there simply is no such thing as CENSORED-s. I have written a program with a name that looks like the one they’re accusing me to use, but there is no ‘s’ at the end of the name! In the first two pages of the lengthy mail the lawyers sent me, they even did spell it correctly. But then, in all places that really matter, like the cease and desist form itself (»Unterlassungserklärung«) and the explanation why they think I’m violating their trademark, they constantly write the name with the additional ‘s’. So, in fact, even if I would sign that letter, I would commit myself not to use a product name I never used! (That flaw aside, I also don’t think that there’s a sufficient amount of similarity between »iTunes« and CENSORED.)
To make things worse, they chose an insane amount in controversy (»Gegenstandswert«) of 50,000 € each in both cases. That seems to be quite a lot, considering that both programs in questions are FOSS, meaning that I did neither pay nor earn anything for making them. Out of these 100,000 € in total, they compute a fee (»Geschäftsgebühr«) of nearly 1,800 € I’d have to pay if I sign the form.
Also, they set up a ridiculously short time frame to sign it: If I don’t send it back and pay the fee until 2008-06-26 (this Thursday), they’ll likely be sueing me. Mind you, I got the letter this evening (2008-06-22), because they sent it late Friday (2008-06-20, the e-mail is dated 16:09) and I was neither at home nor did I have internet access this weekend. That’s 6 days of time, but since it’s around a weekend, it’s effectively only 3.
The great question is now, what could I do? I can’t just sign the letter and pay the bill, because it’s factually wrong. On the other hand, if I take myself a lawyer, it might be too late to change anything in the matter and would maybe double the fee (assuming that my own lawyer would also use the ridiculous 100,000 € value as a baseline for his/her payment). Seems as if I’m screwed either way.
The only thing that’s clear is that both my presentation program and one of my iPod tools will be renamed soon. If you have a nice new non-Appleish name for these projects, please let me know :)
(Funny side fact 1: They don’t seem to give a sh*t about capitalization: When they compare Apple’s trademarks to my program names, they simply write all of them in upper case. They also happily misspell one of the names with a lowercase ‘j’ instead of an uppercase ‘J’, even though this detail makes all the difference in this specific case. But when they try to explain why the other program’s name is too similar to »iTunes«, they suddenly insist that capitalization matters.)
(Funny side fact 2: Today my iPod started behaving strangely, like suddenly rebooting at random intervals. Who knows, maybe Apple has some kind of remote auto-destruction feature built into their devices? ;)
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EDIT (2008-06-23): I needed to edit this post so that the two infringing names do not occur here any longer. I’m sorry that this makes the whole text somewhat unintelligible :(
Ich schlage vor du benennst die Programme um (zumindest CENSORED, CENSORED könnte man einfach CENSORED schreiben dann ist das n englisches Verb und dann sollen die ruhig mal klagen) und modifizierst die Erklärung so, dass Sie kein Schuldeingeständnis ist, also “Ich verpflichte mich, in Zukunft Markenrechte von Apple zu berücksichtigen” oder so was in der Art. Bezahlen tust du natürlich keinen Cent. Fertig.
Ich würde mal einen Anwalt kontaktieren und mal einfach anfragen was
man da noch machen kann um beide Seiten zufrieden zu stellen.
Ich glaube zwar mit Apple kann man in solchen sachen nicht viel verhandeln aber man soll ja niemals nie sagen.
Gruss
Ferdinand
I am *not* a lawyer, and even if I was, this is not legal advice.
I’d be tempted to (take copies first, then) send it back to them and tell them to come up with a *reasonable* proposal. I don’t know what the legal possibilities are and/or how confident they are in their case, but it is probably easiest to see this as the opening bid of negotiations and any negotiator knows to never, ever, take the first bid. Cry back to them that they’re mean baby eaters. Politely.
All sorts of things you can do. Ask them to show beyond reasonable doubt that they’re losing money with your use of the name. Offer them a percentage of your proceeds if they can (of course, your proceeds being zero, but no need to tell them that right away), if you’re feeling cheeky, send them a bill for the anguish they caused by asking a ridiculous amount, and so on, and so forth.
Find legal assistance (and for this a legal costs insurance is useful, but there should be cheap options for just a couple of questions) and have them explain the next possible steps. What happens if it goes to court? Which court? Court proceedings take lots of time anyway. Tell them you can’t possibly begin to read their letter before next month so their period is not reasonable, you’ll get back to them as soon as possible.
Also: a fax is a powerful tool in this, as successful transmission gives you proof of delivery (and keep the proof). Any letter you send you send registered or whatever the local name is for proof of delivery. Keep a paper trail of everything you do, so only communicate per fax or per letter. Write it in a way that you feel confident explaining to a third party (eg a judge) as sound and reasonable.
And last but not least: Relax. You could very well go bankrupt, but it’s no use losing sleep over it. Money can be earned again. Heart attacks leave lasting damage.
I’d be tempted to give your project to the Free Software Foundation. They can host the further development and distribution of it; and if Apple have any commercial objection, it can become a matter between Apple and the FSF.
Really, it’s not your battle. Hand it over to an organisation that is experienced in keeping software free.
Chris: I think you misunderstand the situation. Apple does not want to forbid further development of the software in question. They just want me to stop promoting it under the current names, which – as they believe – look and sound too much as their own trademarks. The two programs we’re talking about are, and always will be, free. They just have to be renamed.
(That said, I still need suggestions for new names. C’mon guys, I’m outta ideas, please help me :)
Really sorry to hear about this. I’ve been enamored with your ‘currently nameless’ presentation software since I started using it. Surely Apple will back off now that you’ve removed the names? It would be really bad PR for them to do something like this. It’s not like it competes directly with their presentation software or dilutes their trademark. They’d have to prove that your program hurt them to get money, which is absurd as your program is free. Don’t give up!
Anyway, some ideas for new names:
PDFShow
PySlide
PyPresenter
KeyShow
Those are pretty unimaginative. You could also pick some random name that doesn’t really have anything to do with slideshows/Python/PDF but sounds cool and powerful, like Enrapture, Accentuate, etc.
I exclusively use the CrossFade transition, and that would be a pretty cool name. Email me if you want to brainstorm about a new name.
P.S. I was wondering about support for video/sound included in a PDF. Would that be hard to implement?
How about “Freesenter” (mashup of Free Presenter)? Google did not turn up any current uses of it.
I suggest Pearshow and Peartunes, unless Apple owns all fruits trademarks…
How about Presenta, PresentaPDF, Impressor, Mesmerize or Mesmerizor? Whatever the new name will be, I wish my favorite presenter come back soon.
Thanks for a great product. I second JR’s feature request for embedded media (video/sound).
I’ve sent Martin a couple of patches for the program, but I haven’t heard anything back. One implements LIRC remote control support and the other implements a fade-to-black at the end of the presentation option. I’m starting to get a little scared that this project might die off, so I’ve started a fork at my website, http://www.cs.rit.edu/~jrm8005, which has the original program plus my two patches, under the new name “Accentuate.” It will at least serve as a place to download the program until Martin gets something back online, and in the sad event he doesn’t, I’ll keep going forward with it. Please feel free to email me with any questions or patches (email is on my website).
J.R.: Thanks for your efforts. I really like the name »Accentuate«, it’s sad that you’ve already taken it instead of just telling me. Now I need to go ahead and think of another name …
I did tell you; look at my first comment.
I don’t see why we need to be exclusive of each other. If you’re willing to take the patches, we can merge, and you can get some free hosting for the project off my University’s website. If you have git, so much the better, as I’m maintaining my fork with it.
I just wanted to share what I had done, because it’s been unclear when or even if the program would become available again, and in the mean time no progress was being made.
Hey
Sorry about that thing with apple… :-(
About your presentation program, the sourceforge page returns a 404 error, and since it’s linked in many places on the web, I saw some comments (on lifehacker for example) wondering if the program still exists…
I don’t know if you found a new name yet, but could you make the project URL to point to some explanation page or something?
I had to crawl through the Internet Archive to find this blog in order to contact you…
It’s could also help packagers from various linux distributions know what happened and have them deal with the name change.
Anyway, this program is really great, hope you can solve those issues!!
Poussah: The catch is that I’m not allowed to make the project URL point to an explanation page. I’m not allowed to offer or promote the program with the old name in any way – and any re-use of the old name would be some kind of promotion, my lawyer said.
i hope you can solve the legal part with little personal trouble. :-/
I guess if package mainteners of the various linux distros were informed, they would update with the new name and make a dummy package of the old one. But you might want to quickly settle on a new name and open a web page before too many forks appear…
They are not so many mainstream distros out there, so spreading the word would be easy.
The risk in waiting too long is having your program removed from distros as it appears dead to mainteners!
Poussah, KeyJ
I’ve let the gentoo and ubuntu maintainers know about my fork, but I don’t think they have anything available in their repos. They at least know about the problem and probably won’t remove the old program for quite some time. In the meantime, I’m getting patches and fixing bugs reported. I hope we can just work together. Please email me if you have any questions.
Hello Everyone,
I saw in comments that someone has developed new transition effects for your presentation program and it would be a shame if those transitions weren’t integrated into main program. And also saw a fork, which isn’t the good solution right now as you still seem to be willing to keep the burden of maintenance.
Your program has been of invaluable value to me, I impressed everyone with it at my PhD presentation and it was really nice. This program is pure gold and it would be really sad if it would disappear. The name isn’t a problem, just choose a new one and let it roll, it isn’t a problem coz software will get its reputation again FAST :)
Thanks again for your program.
I’ve been using your software for ages and I’m not going to stop any time soon. I don’t think forking the code so quickly was helpful either – maybe he will run into problems with a well known consulting practice for almost using their name?
Can’t you set up a poll for the new name, create a paypal donate button to get you some funds, and get things back on the road again?
DON’T GIVE UP!