ThisBookSucks.com
by Henry Charles Mishkoff


Chapter 1: The Legal-Sized Envelope

May 19, 2001
No Good Deed Goes Unpunished

If they hadn't started out by threatening me, I probably would have just given them the damn thing.

But they're lawyers. I guess they couldn't help themselves.

It was a typical spring Saturday1 afternoon in Dallas, high near 90 degrees,2 not yet hot enough to make me cranky (so there goes that excuse). In my mailbox, nestled among the credit card bills and the computer magazines, I spied an envelope (legal-sized, which turned out to be appropriate) with a return address that identified the senders as Gifford, Krass, Groh, Sprinkle, Anderson & Citkowski. As doctors and accountants typically don't string quite that many names together, I suspected that I was being contacted by a gaggle of lawyers.

The return address indicated that the good people at GKGSA&C were located in Birmingham, Michigan, a city I knew to be a northern suburb of Detroit. I didn't have any relatives in that area, so I doubted that they were contacting me because someone had left me a sizable inheritance. And the letter was addressed to WebFeats, a professional name that I use for my Internet activities, suggesting that the letter was business-related rather than personal.

Even though I was not accustomed to being contacted by lawyers, I wasn't especially concerned about the letter. After all, I didn't have any clients or friends (or enemies, as far as I knew) in Michigan; it seemed unlikely that anyone there would have hired a group of lawyers to harass or threaten me.

But when I opened the envelope, I discovered that that's exactly what had happened. Here's what it said:

Dear Sir/Madam:

We represent The Taubman Company in intellectual property matters. Our client owns and uses the trademark THE SHOPS AT WILLOW BEND, in connection with its shopping malls and related services. The trademark is the subject of U.S. Trademark Registration No. 2,400,909, for mark THE SHOPS AT WILLOW BEND. Our attention has been directed to a website maintained by you, www.shopsatwillowbend.com, incorporating our client's mark in the domain name, and featuring photographs and various information relating to the mall on the website.

So far, I knew exactly what they were talking about – but you may not, so let me explain.

The Taubman Company, on whose behalf the law firm was contacting me, is one of the largest developers of shopping malls in the U.S. At the time that I received the letter, Taubman was putting the finishing touches on The Shops at Willow Bend, an impressive new mall that would soon open in Plano, a Dallas suburb. The new mall would be located only a few miles from my home in Dallas, and I eagerly anticipated its arrival – so eagerly, in fact, that I had decided to create a website about it when I had first learned of Taubman's plans two years earlier.

When I was ready to select a domain name for my website, I noticed that Taubman had registered TheShopsAtWillowBend.com,3 so I decided to create my website at ShopsAtWillowBend.com (without "The") – although it wasn't the exact name of the mall, I figured that it was close enough so that people would be able to remember it easily.

(Although a comprehensive explanation of Internet terminology is well beyond the scope of this book, I should provide at least a cursory explanation of what a domain name is. If you create a website and you want it to have a name, you can register a "domain name" with one of several hundred Internet registrars4, and that domain name becomes the heart of your web address. For example, consider this web address:

http://www.ThisBookSucks.com/GoodStuff/RightHere.html

In this example, the domain name is ThisBookSucks.com, and that's the only part you have to register. Each domain name is unique – once you've registered it, it's your exclusive property, and nobody else can use it as their domain name.5)

The site I created was filled with all kinds of helpful information about the mall – what it was going to look like, where it was going to be located, what stores it would contain, and other interesting bits of data. ("The Shops at Willow Bend will feature a two-level parking deck with spaces for 6,358 cars – 2,925 spaces [46%] on the lower level, and 3,433 spaces [54%] on the upper level.") I noticed that Taubman's site included a depiction of the "Grand Court" and an area map; I downloaded those graphics and incorporated them into my site. (I was using their graphics to promote their mall, so I assumed that they wouldn't mind.)

In case you were looking for Taubman's site and happened to stumble across mine instead, my home page featured a prominent disclaimer at the top of the page in bold black letters in a bright green box:


This is an unofficial site. The official site is located at
www.TheShopsAtWillowBend.com

The web address in the disclaimer served as a link to the official site – so if you wanted to visit Taubman's site, you could get there with a single click.

As you may have noticed, the letter pointed out that "The Shops at Willow Bend" was not only the name of Taubman's shopping mall, it was the trademarked name of Taubman's shopping mall. Even without reading any further, I was guessing that I was about to learn that Taubman didn't like the idea that I had "incorporated" their trademark into my domain name.6 And sure enough:

You are hereby advised that this use of our client's registered mark creates a likelihood of confusion as to a relationship with our client, in violation of federal and state trademark and unfair competition law, as well as a violation of the federal Anticybersquatting Consumer Protection Act.

As I suspected, the lawyers hadn't written to me because they liked my website. Instead, they were accusing me of all kinds of horrible-sounding things:

  • I was confusing people into believing that I had some kind of relationship to Taubman – this despite the striking disclaimer that dominated the top of my home page.

  • I was unfairly competing with Taubman. (I was surprised to learn that I was competing with Taubman at all, unfairly or otherwise.)

  • I had violated the Anticybersquatting Consumer Protection Act – which, although I like to keep up with issues relating to the Internet (even legal issues), was something with which I was totally unfamiliar.

  • I was violating trademark law. Although I had only a high-level layman's understanding of what a trademark was, at least this was a term I recognized.

Since I had apparently run afoul of so many laws, I steeled myself for the inevitability that the next paragraph would inform me that I was in serious trouble. Which it did:

In order to avoid legal action, we hereby demand that you immediately discontinue all use of the above-referenced domain name and related website, and arrange for transfer of the domain name registration to our client. In the event legal action is commenced, we will seek all available remedies, including injunctive relief, increased damages in view of the willful nature of the infringement, and attorneys fees.

Please contact us immediately to indicate your intentions.

Very truly yours,
Julie A. Greenberg

At this point, I recognized that Ms. Julie A. Greenberg had sent me what lawyers like to call a "cease-and-desist" letter7 – or, in legal shorthand, a "C&D" letter. And as with all good C&D letters, this one basically said: You're doing something that we don't want you to do. So cut it out. Or we'll sue you.

The main reason I recognized it as a cease-and-desist letter, by the way, was because I had once been on the sending end. One of my computer-consulting clients was a major national corporation, a name you'd probably recognize. Let's call them the Really Big Company. When I added web development to my repertoire of services in the mid-1990's, I immediately set out to convince the Really Big Company that they needed a website. It was a tough sell – at that time, most companies were clueless about what the Web could do for them. But I wore them down, and in late 1995 they finally gave me the go-ahead to create a website for them.

Unfortunately, by that time the domain name ReallyBigCompany.com had already been registered by someone else.8

I did some quick research and discovered that ReallyBigCompany.com had been registered by a "web shop," a company that developed websites – which, at the time, was what I was doing under the WebFeats name. As far as I could tell, the web shop had never actually used the name ReallyBigCompany.com, and I guessed that they had registered the name as part of an effort to win some business from the Really Big Company affiliate in... well, in a city that I won't name. I further guessed that the effort had failed, and that they'd probably agree to transfer ReallyBigCompany.com to my client if we asked them to do that. So I suggested to my client that they should let me call the web shop; I'd explain the situation to them, geek-to-geek, and I'd ask them if they'd transfer ReallyBigCompany.com to my client so I could develop a website at that address.

Thanks, my client said, but we'll have our lawyers send them a cease-and-desist letter. That's what we pay them for.

You can probably guess the rest. I never did read that particular C&D letter, but I suspect that it was overbearing and heavy-handed, which seems to be the way that attorneys are taught to write C&D letters in law school. And the guy who ran the web shop, incensed at being threatened for no good reason, basically told my clients what they could do with their cease-and-desist letter. I gave the guy a week to cool off, then I called him. I let him vent for ten minutes, commiserated with him (#&%$@# lawyers!), waited for him to calm down, explained the situation to him, and asked him nicely if we could have ReallyBigCompany.com. Sure, he said, I'll take care of it tomorrow. And he did.

Now that I was the proud recipient of what I suspected was a nearly identical cease-and-desist letter of my very own, I was puzzled and angry. Why was Ms. Greenberg threatening me? Was this any way to begin a dialogue with a total stranger?

Here's the way I look at it: If your neighbor was playing his stereo too loudly, you'd probably knock on his door and ask him to turn down the volume. But I'm guessing that you wouldn't add, "Oh, and by the way, if you don't turn it down, I'm going to call the police and have them drag you off to jail." You might do that if this were a recurring problem, and you might do that if you didn't especially like your neighbor – but under normal circumstances, you wouldn't include a threat with your first request because (1) it's rude, and your mother raised you to be polite, and (2) it might well be counterproductive, in that your neighbor might actually crank up the volume just to make a point about your attitude.

But for some reason, many (most?) lawyers don't seem to feel that that the ordinary rules of simple courtesy apply to them. In fact, some lawyers probably feel that it is actually their professional responsibility to engage in behavior that would otherwise be considered to be overbearing and boorish. They might point to a comment in the Model Rules of Professional Conduct of the American Bar Association, which suggests that a lawyer should "take whatever lawful and ethical measures are required to vindicate a client's cause or endeavor"9 – and, of course, being rude is not unlawful (and it's probably not even unethical).

However, if they're going to claim that their duty to their client excuses their lack of civility, they should keep reading. A few sentences later, the same comment concludes by noting, "The lawyer's duty to act with reasonable diligence does not require the use of offensive tactics or preclude the treating of all persons involved in the legal process with courtesy and respect." (So we can all thank the ABA for the fact that letters from lawyers are unfailingly courteous and respectful.)

The most bizarre aspect of the situation was that she was threatening me for creating a website that actually promoted her client's mall!

Would you be angry if someone threatened you because you tried to help them?

Me too.


Next: Donna Weighs In

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