dbercel@twg-ap.UUCP (Danielle S. Bercel) (09/22/88)
SEA is going after Phil Katz again. Apparently, SEA believe that
Phil violated the terms of their agreement. The following document
was keyed in by Karen Little and I came across it on the Centerville
BBS in Northern California.
-----------<
System Enhancement Associates vs. PKware, Inc
Document dated August 11, 1988 -- SEA is calling PKware in
contempt of the cross-license agreement which was signed on
July 29, 1988.
The following pages have been re-keyed by Karen Little, President
Office Technology Academy, Inc. 230 W Wells, Suite 310 Milwaukee, WI
53203 414 / 273-7310
This document was photocopied at the Clerk of Court's Office in the
Milwaukee County Federal Courthouse by Karen Little at 1:00 PM on August
31, 1988.
+ + + +
PROCEEDINGS UNDER JUDGMENT FOR PLAINTIFF ON CONSENT: BRIEF IN SUPPORT OF
PLAINTIFF'S MOTION FOR ORDER HOLDING DEFENDANTS IN CONTEMPT
On August 2, 1988, this Court signed a JUDGMENT FOR PLAINTIFF ON CONSENT
which permanently enjoined the Defendants PKWARE and Phillip Katz from
infringing the Plaintiff's trademark "ARC." Effective August 1, 1988, Sys-
tem Enhancement Associates, Inc. ("SEA") and Defendants PKWARE and Phillip
Katz (hereinafter jointly referred to as "PKWARE") entered into a Confi-
dential CROSS-LICENSE AGREEMENT whereby the Defendants also agreed not to
infringe Plaintiff's trademark "ARC," specifically by agreeing not to dis-
tribute or offer for license any program that carries a trademark, trade-
name or filename including the letters, or notation "ARC". Nonetheless,
Defendants have willfully violated this Court's Order and the Cross-
License Agreement by distributing and offering for license a new version
of its former software program, which it now entitles PKPAK and PKUNPAK.
This program is, for all intents and purposes, identical to the programs,
PKARC and PKXARC, which were the subject of this litigation. (Declaration
of Thomas M. Marshall, Esq. at paragraph 15).
One of the Plaintiff's principal complaints in this litigation was that
Defendants infringed Plaintiff's Trademark "ARC" by using, throughout
their computer programs and accompanying user manual, the term "ARC."
Defendants used this as a verb, as an adjective, as a noun. These improper
uses of Plaintiff's trademark have the effect of confusing the public as
to the source of the computer programs and of diluting Plaintiff's pro-
tected trademark.
The Defendants' newest version of a software program continues the same
infringing actions. As Plaintiff's Exhibits 57-65 to the Declaration of
Thomas M. Marshall, Esq. illustrate, Defendants continue to use Plain-
tiff's protected mark in a connection with the distribution and licensing
of Defendants' computer programs.
Plaintiff comes to this Court seeking further protection from Defendants'
continuing activity. It is apparent that the Defendants do not respect
this Court's prior Order which permanently enjoined them from undertaking
such activity. Nor do the Defendants respect the Cross-License Agreement
that they entered into only a few days before Court signed the Judgment.
AUTHORITY
A. This Court has the power to punish defendants for their actions
It is clear that this Court has the authority and power to punish the
Defendants' acts under its power of contempt. This power is an inherent
power of the federal courts and is specifically recognized in 18 USC -Par
401. NLRB v Deena Artware, Inc., ... reversed other grounds. 361 US 398
(1960). A consent judgment is enforceable, although it was negotiated by
the parties, via the Court's contempt powers. Usery v Chef Italia, ...;
Delaware Valley Citizens' Council for Clean Air v Commonwealth of Pennsyl-
vania, ..., affirmed, 678 F. 2d 470 (3d Cir. 1982), cert. denied, 459 US
969 (1983).
Finally, courts have the power to punish by both civil and criminal con-
tempt actions of a party which violate an injunction against trademark
infringement. See, eg, Musidor B V V Great American Screen, 688 F 2d
60 (2d Cir. 1981), cert denied, 455 US 944 (1982); Chanel Industries, Inc.
v Pierre March, Inc., 199 F Supp 748 (ED Mo 1961); Bradstreet Co. v Brad-
street's Collection Bureau, 249 F 958 (2d Cir 1918).
B. Defendants' Actions Violate This Court's Order by Continuing to
Infringe Plaintiff's Trademark.
The Judgment for Plaintiff on Consent provides at paragraph 1: "Defendants
and each of them, jointly and severally, . . . be and hereby are enjoined
permanently . . . from infringing in any manner Plaintiff's trademark
ARC." In this case, it is clear that the continued actions of the Defen-
dants violate this Court's order of August 2, 1988 by infringing Plain-
tiff's trademark.
First, the Defendants have admitted that in the consent judgment (at para-
graph 1), the license agreement (at paragraph 5) and the agreed press
release (Plaintiff's Exhibit 63 to Marshall Declaration), that Plaintiff
has a predictable mark in the designation "ARC".
Second, merely by glancing through the Defendants' programs and User Man-
ual, it is evident that PKWARE continues to use Plaintiff's protected mark
ARC. For example, in the User Manual which accompanies Defendants' new
programs (Exhibit 65 to Marshall Declaration) virtually every page con-
tains numerous uses of the Plaintiff's trademark ARC. Similarly, in the
programs themselves, the messages which a computer user may see on his
screen at certain points while running Defendants' program contain the
protected trademark ARC. (See paragraph 13 to Marashall Declaration and
the Plaintiff's Exhibits 57-61.)
Obviously, Defendants' actions infringe Plaintiff's mark by taking the
protected mark and using it in connection with the publication, distribu-
tion and offering for licensing of their computer programs. Such misuse is
clearly illustrated in the first few pages of the User Manual accompanying
the newest version of the PKWare programs (Plaintiff's Exhibit 65 to the
Marshall Declaration). In the manual, PKWare explains its programs:
Computer file compression means that by using PKWare programs, files
are quickly reduced in size and thereby take up less storage space.
This process, sometimes called ARCing, crates ARCHIVE files.
***
PKPAK is the program that compresses files. This shrinking process
is often referred to as archiving or ARCing . . .
***
PKUNPAK is the program that reconstructs or extracts archived files.
A shorthand term for this process is UNarcing.
User Manual, Plaintiff's Exhibit 65 at page 3. The misuse of Plaintiff's
trademark ARC continues throughout the User Manual, where Defendants use
ARC as a noun, an adjective and a verb. There is no legitimate reason for
using Plaintiff's mark in this manner. It confuses the public as to the
source of origin of this project (a computer user pursuing this manual
could easily associate the PKWare programs with those distributed and
licensed by SEA which legitimately use the trademark ARC). Further, this
misuse dilutes the unique and distinctive value of the ARC trademark by
making it appear to be a commonplace equivalent for archiving or compress-
ing files. Such uses clearly infringe Plaintiff's trademark and are an
attempt to destroy SEA's valuable property right.
The conduct in this case is similar to that enjoined in Scandia Down Cor-
poration v Euroquilt, Inc., 772 F 2d 1423 (78th Cir 1985). In Scandia,
the court is held a defendant in contempt when it continued to use a logo,
the outline of a goose, in connection with the sale of its bedding prod-
ucts. The Court of Appeals affirmed findings that the plaintiff's marks
identified its products with the plaintiff and that the competitor was
using confusingly similar marks. Further, the Court affirmed the trial
court's findings of contempt, holding that the infringement was willful
and in a deliberate effort to capture the plaintiff's customers. See also
Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F 2d 1018 (7th Cir
1979) (holding that electrical connectors labeled "71B", etc. violated
plaintiff's trademarks).
The misuse is all the more damaging here where there is being circulated
information indicating that the PKWARE programs are flawed. Exhibit 68 to
the Marshall Declaration is a Warning Notice that was recently published
on a computer bulletin board. It states that the PKARC version "will
cause your system to FLAT LOCK UP. . .it is altering DOS and memory and it
DOES NOT restor things to the way they were before it was run...be safe,
not sorry! DON'T TAKE THE CHANCE...SEA distributes and licenses computer
programs that perform the same functions as that now being distributed and
licensed by Defendants. To the extent that, as a result of Defendants'
continuing trademark infringement the PKWARE programs with their perceived
serious flaws are associated with ARC programs licensed and distributed by
SEA, SEA's business may be permanently damaged. Given the continuing use
by the Defendants of the ARC trademark, it is likely the public will be
confused and SEA will be hurt.
Finally, the intent of the Defendants cannot be much clearer. They did
not wait to issue a new version of their prior program and User Manual.
One need only compare the User Manual distributed with the pre-judgment
version of their software programs (Plaintiff's Exhibit 17 to Marshall
Declaration) with the current User Manual (Plaintiff's Exhibit 65).
Apparently, all that was changed were the names of the programs from PKARC
and PKXARC to PKPAK and PKUNPAK. Only a superficial attempt was made to
delete the infringing references throughout the computer programs to ARC
and to the references throughout the user manual. (Marshall Declaration
at paragraph 15.) Rather, it appears clear that the Defendants seem bent
on a course of continuing in their use of Plaintiff's trademark in an
attempt to capture Plaintiff's customers or to dilute or destroy its pro-
tected rights.
CONCLUSION
For these reasons, the Plaintiff respectfully requests this Court enter an
order holding Defendants in contempt of the Judgment for Plaintiff on Con-
sent and grant the relief requested in Plaintiff's motion.
Dated this 11 day of August, 1988.
Attorneys for Plaintiff
SYSTEM ENHANCEMENT ASSOCIATES, INC.
Michael A. Lechter & Mary K. Braza
FOLEY & LARDNER
Milwaukee, WI
and
Thomas M. Marshall, Esq.
Powder Mill Village
Morris Plains, NJ
--
Danielle Bercel - The Wollonggong Group
email: dbercel@twg.com
US Mail: 1129 San Antonio Rd. * Palo Alto, CA. 94303 * (415)962-7160darrylo@hpsrli.HP.COM (Darryl Okahata) (09/26/88)
Gads. I think I'll switch to zoo.
-- Darryl Okahata
{hplabs!hpccc!, hpfcla!} hpsrla!darrylo
Disclaimer: the above is the author's personal opinion and is not the
opinion or policy of his employer or of the little green men that
have been following him all day.johnm@trsvax.UUCP (09/28/88)
> Gads. I think I'll switch to zoo. > > -- Darryl Okahata > {hplabs!hpccc!, hpfcla!} hpsrla!darrylo For gods sake DO IT THEN! I'm so tired of people saying, "I think it might be nice to switch to zoo", when by now we could have long since made the switch. I just decided one day, no more arc. Period. I still have a copy around to dearc the stuff that comes in through the binaries groups but even it resides within a zoo file (so it doesn't take up so much space). I have to use it occasionally in order to convert something from arc to zoo format but even then I use looz's ability to run programs directly out of zoo archives in order to run it. If we just switched comp.binaries.ibm.pc one day I'm betting that everybody would have taken care of their own problems within a matter of weeks. If you switch others will be forced to do the same. John "No that was not a flame at Darryl, that was a flame at everybody" Munsch
jwd@sas.UUCP (John W. DeBoskey) (09/29/88)
In article <256@twg-ap.UUCP> dbercel@twg-ap.UUCP (Danielle S. Bercel) writes: > >SEA is going after Phil Katz again. Apparently, SEA believe that >Phil violated the terms of their agreement. The following document >was keyed in by Karen Little and I came across it on the Centerville >BBS in Northern California. > Would someone PLEASE take ARC & toss it into the SEA??? As far as I'm concerned they have a substandard product and the only way they seem to be able to stay in business is to stifle the competition. I don't need a disclaimer: these thoughts belong to my mod 80 & its' keyboard... obviously...
darrylo@hpsrli.HP.COM (Darryl Okahata) (10/03/88)
In comp.sys.ibm.pc, johnm@trsvax.UUCP writes: > > Gads. I think I'll switch to zoo. > > > > -- Darryl Okahata > > {hplabs!hpccc!, hpfcla!} hpsrla!darrylo > > For gods sake DO IT THEN! I'm so tired of people saying, "I think it might be > nice to switch to zoo", when by now we could have long since made the switch. [ ... ] > John "No that was not a flame at Darryl, that was a flame at everybody" Munsch While some of us can switch to zoo, zoo will *NEVER* become anything of a widespread standard, because of the funny restrictions that prevent zoo from being uploaded to some commercial BBSes. I can somewhat understand Rahul's reasons for the restrictions, but that is not going to help zoo become a "standard". What we really need is for someone to write an archiving program like zoo, but one that can read (not write) .ARC files. -- Darryl Okahata {hplabs!hpccc!, hpfcla!} hpnmd!darrylo CompuServe: 75206,3074 Disclaimer: the above is the author's personal opinion and is not the opinion or policy of his employer or of the little green men that have been following him all day.
vanpelt@unisv.SV.UNISYS.COM (Mike Van Pelt) (10/05/88)
In article <256@twg-ap.UUCP> dbercel@twg-ap.UUCP (Danielle S. Bercel) writes: >SEA is going after Phil Katz again. [Grim, disgusting story deleted.] Looks like S.E.A. stands for "Shit Eating Attorneys" -- "Ain't nothin' in the middle Mike Van Pelt o' the road, 'cept a yellow Unisys, Silicon Valley line and dead 'possums." vanpelt@sv.unisys.com
keithe@tekgvs.GVS.TEK.COM (Keith Ericson) (10/06/88)
In article <626@unisv.SV.UNISYS.COM> vanpelt@unisv.UUCP (Mike Van Pelt) writes: >Looks like S.E.A. stands for "Shit Eating Attorneys" ^^^^^^^^^^^^^^^^^^^^^ Redundancy Alert... keith