Cease and desist order re: librivox.eu domain

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MsPhelps
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Post by MsPhelps » February 22nd, 2013, 1:47 pm

OK, I need to vent about this and, most probably, be talked down from the ledge a little bit :?

A couple of years back, after a get-together of Dutch LV-ers, I registered the domain name librivox.eu. Basically to prevent it from being taken and used for non-LV purposes, and with the thought it might at some point be used for a European sister-project. Of course, now such a sister-site exists in Legamus.eu (yay, Legamus!), and the librivox.eu site just shows a message referring people to Legamus.

The other day I received an e-mail, since followed by a copy by registered mail, from a law office representing the German firm Libri GmbH, a wholesale book dealer. They claim my registration of librivox.eu is an infringement of their trademark 'Libri' (registered in 1999). According to them, the suffix 'Vox' is not distinctive enough to distinguish 'LibriVox' from 'Libri'. They request me to give up the domain name and are threatening a law suit if I don't oblige.

Now, on one hand, librivox.eu is not in active use (see above), so why spend the time, energy and potential legal costs, and just give up the domain, right? That's what sensible people are telling me and I try to keep telling myself.

However... I'm angry about it and I'm finding it hard to just let go. It feels like fear-mongering from a big firm with big bucks, bullying me into compliance. I honestly can't believe their argument re: the 'Vox' suffix would stand. There'd be no end to what sites they could claim with a name like 'Libri'... :? In addition, I really don't like the domain to fall into their hands (they also deal in audiobooks btw; this makes their argument stronger too, of course...).

So... I guess I'm asking for opinions here... I think I know what the wisest thing to do would be (and I certainly don't want to cause any trouble for the LibriVox name...) but it would help to hear what other people here think.

Thanks in advance!

Bianca
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RuthieG
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Post by RuthieG » February 22nd, 2013, 1:56 pm

Obviously, the sensible thing for an individual is to bow the knee and give in to the bully, but my goodness, that stings, doesn't it?

I am wondering if Libri has simply retained this law firm and the law firm is trying to earn some fees. I just wonder, therefore, if a letter explaining the situation to the Managing Director of the actual Libri company might bring them to their senses. It's just possible that the actual real company knows nothing of these legal shenanigans.

Ruth
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bart
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Post by bart » February 22nd, 2013, 2:39 pm

I already had contact with Bianca over this problem.
The rights the law firm claim are restricted to Europe, so I don't think we have a problem with our original name.
But I do have a problem with librivox.nl, which is in active use.
So, is there someone in the US willing to legally take over that url? I will pay the bills!

Bart
Alle Nederlandstalige projecten op de Librivox Boekenplank

Cori
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Post by Cori » February 22nd, 2013, 3:34 pm

I agree with contacting the company directly. I'd also suggest copying the cease-and-desist to the EFF info@ address via https://www.eff.org/pages/legal-assistance

Plan B would be transferring the URLs. But I think this is really spurious and a few checks on the size and publicity level of LibriVox might encourage the Libri company to call off their lawyers. I agree with Ruth, it's quite possible the company has no idea that the law firm is acting in this way and it could be quite an embarrassment to them. (I HOPE!!)


Edited to add: and they aren't even USING the Libri URL directly ... it forwards to another site.

AND!!! We registered librivox.org long before their libri registration. It's not unreasonable for us to collect other TLDs of the same name.

AND!!! librivox.eu was registered 4 years ago, they should have 'defended their trademark' at that time or within a reasonable time after.
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Post by hugh » February 22nd, 2013, 3:56 pm

hi could you please send me the correspondence to hughmcguire gmail com ?

we (LibriVox/Internet Archive) got a letter from their lawyers some time ago, which we are in the process of dealing with...

not sure if we can help in this case ... but please email me about it.

thanks.

catrose
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Post by catrose » February 22nd, 2013, 3:58 pm

Wait a sec, you can copyright prefixes?
Cat
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Post by TriciaG » February 22nd, 2013, 4:09 pm

I wondered about that, Cat. I mean, in the USA, whitehouse.gov is legitimate government site while (last I knew) whitehouse.com was a porn site.

It might be European (Continental European?) law that disallows web domains that infringe on company's names??
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Post by annise » February 22nd, 2013, 4:24 pm

Librivox.com exists , and I know other examples but can't think of them at the moment

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RuthieG
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Post by RuthieG » February 22nd, 2013, 4:36 pm

Well, good luck to them getting librisdotcom back - it's registered in Russia ;).

Ruth
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catrose
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Post by catrose » February 22nd, 2013, 4:40 pm

Could this be a big problem? I mean, we don't have the money for a civil trial or anything. If they take us to court, would we lose? Would we be forced to change our name?
Cat
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bart
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Post by bart » February 22nd, 2013, 4:44 pm

I forwarded the letter to Hugh.

In Europe it is possible to claim a url when you have the appropriate rights. But as far as I know, this is only granted when the use of the name is a clear infringement of rights.
So for libri.nl, a claim will probably be granted, just as killlibri.co.uk, ilovelibri.de, etc.
It hasn't anything to do with the prefix. When libri.com was owned by a European, it would also be affected by this law.

What I don't understand is that Hugh was contacted about this. I can't find a registration for 'libri' outside Europe.

Bart
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hugh
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Post by hugh » February 22nd, 2013, 5:08 pm

This is the status on our Trademark issue:

hi all,

* A german company named Libri GmbH sent us a Trademark Violation letter in December.
* they claimed a trademark on "Libri" in Germany & the EU; stating that "LibriVox" could be confused with their marks.
* they requested that we remove information in German from our website (does this mean text? or german books as well? don't know)
* with Internet Archive (which owns librivox.org) we worked with a (very good) NY/global law firm to prepare a response
* our first response, sent from IA was non-confrontational:
-- we are a volunteer project, global, dedicated to free literature
-- we don't want to do anything that will jeopardize access to our great library to german-speakers
-- do you really intend to deprive German-speakers of access to LibriVox ? we sure hope not!
* this was sent mid January
* we have not heard back yet
* if the company escalates, our lawyers have already looked at the case, and are generally confident that the law is on our side
* in the past we have made certain kinds of concessions (such as specific notices about non-pd status in the EU on specific books, eg HG Wells)


Summary:
* we have a trademark claim against LibriVox in German
* we (IA and me) have responded with a "we are non-profit good guys! you don't want to fight us do you?"
* if that does not work, we have probono lawyers who will help us, and are confident

annise
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Post by annise » February 22nd, 2013, 5:10 pm

catrose wrote:Could this be a big problem? I mean, we don't have the money for a civil trial or anything. If they take us to court, would we lose? Would we be forced to change our name?
No - We have the name properly registered , it only applies to names registered in the EU

Anne

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