browning@cory.Berkeley.EDU (Craig Browning) (09/07/88)
Read the following, the info on the latest outrage by SEA, their contempt
of court effort against PK. A second file details the secret agreement they
signed to settle the lawsuit. Everything after this paragraph was type by
the woman who did the docs for PKARC.
Craig
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 me for purposes of full
disclosure to the public. They have been run through spelling
checker, but have not been proofread by anyone.
See the file --> SEA-PK-L.arc <-- for re-keyed version of the
Confidential Cross-License Agreement between SEA and PKware that
this document refers to.
Both documents were photocopied at the Clerk of Court's Office in the
Milwaukee County Federal Courthouse by myself at 1:00 PM on August
31, 1988.
The ESSENCE of the suit is that the PKware Users Manual purposely
and deceptively uses words that contain ARC which represent
trademark violations of SEA's ARC archiving* program. (Ooops, I just
did it again! I used a word with "arc" in it. Naughty me.)
By the way, as *I* am the person who wrote PKware's documentation
for their file compression programs, this new law suit came as a
COMPLETE shock to me! Neither Phil Katz or his attorney, Nick
Kees, discussed any aspect of the case or upcoming legal proceedings
with me prior to this revaluation which I received at the courthouse.
Karen Little, President
Office Technology Academy, Inc.
230 W Wells, Suite 310
Milwaukee, WI 53203
414 / 273-7310
+ + + +
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, System Enhancement Associates, Inc. ("SEA")
and Defendants PKWARE and Phillip Katz (hereinafter jointly referred
to as "PKWARE") entered into a Confidential CROSS-LICENSE
AGREEMENT whereby the Defendants also agreed not to infringe
Plaintiff's trademark "ARC," specifically by agreeing not to distribute
or offer for license any program that carries a trademark, tradename
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
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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 protected 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 Plaintiff'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 Pennsylvania, ..., 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
contempt 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 Bradstreet'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
3
continued actions of the Defendants violate this Court's order of
August 2, 1988 by infringing Plaintiff's trademark.
First, the Defendants have admitted that in the consent judgment (at
paragraph 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
Manual, 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 contains 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,
distribution 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 compressing files. Such uses
clearly infringe Plaintiff's trademark and are an attempt to destroy
SEA's valuable property right.
4
The conduct in this case is similar to that enjoined in Scandia Down
Corporation 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 products. 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 protected
rights.
5
CONCLUSION
For these reasons, the Plaintiff respectfully requests this Court enter
an order holding Defendants in contempt of the Judgment for Plaintiff
on Consent 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, NJhaugj@pigs.UUCP (The Beach Bum) (09/08/88)
In article <5482@pasteur.Berkeley.EDU> browning@cory.Berkeley.EDU (Craig Browning) writes: >Read the following, the info on the latest outrage by SEA, their contempt >of court effort against PK. A second file details the secret agreement they >signed to settle the lawsuit. Everything after this paragraph was type by >the woman who did the docs for PKARC. i read the entire article, including the examples given from the manual. phil is going to lose, and lose big while he's at it. his trying to slip "ARCing" and "UNarcing" by in the manual was DUMBDUMBDUMB. a similiar case would be if i built a machine and named it the "VAXpc". VAX is a trademark of DEC. [ and if you understand the ramifications of the precedent which was cited in the brief, this is whereon the case hinges, is "ARCing" "similiar" to "ARC". anyone with freshman english behind them should recognize "ARCing" how this word was created. ] obviously there is much popular support behind phil. in the long run both SEA and PKware will lose. the attorneys will have all the money and we will have to find a new standard. the next step for thom to take is to get a restraining order against phil enjoining him from producing any archiving software of any type for some period of time. i expect to see news of that move coming out very soon. -- =-=-=-=-=-=-=-The Beach Bum at The Big "D" Home for Wayward Hackers-=-=-=-=-=-= Very Long Address: John.F.Haugh@rpp386.dallas.tx.us Very Short Address: jfh@rpp386 "ANSI C: Just say no" -- Me
beattie@visenix.UUCP (Brian Beattie) (09/09/88)
Maybe someone should start a PK legal defense fund?
--
Brian Beattie | (703)471-7552
MSDOS/OS2 | 11525 Hickory Cluster, Reston, VA. 22090
- just say no! | beattie@visenix.UU.NET
| ...uunet!visenix!beattieskeeve@mhuxu.UUCP (Chris Riley) (09/10/88)
In article <396@pigs.UUCP> haugj@pigs.UUCP (The Beach Bum) writes: )In article <5482@pasteur.Berkeley.EDU> browning@cory.Berkeley.EDU (Craig Browning) writes: )>Read the following, the info on the latest outrage by SEA, their contempt )>of court effort against PK. A second file details the secret agreement they )>signed to settle the lawsuit. Everything after this paragraph was type by )>the woman who did the docs for PKARC. ) )i read the entire article, including the examples given from the manual. )phil is going to lose, and lose big while he's at it. his trying to slip )"ARCing" and "UNarcing" by in the manual was DUMBDUMBDUMB. But SEA granted Phil a liscense to continue distribution of PK[X]ARC and to write bug fixes for PK[X]ARC until January 31, 1989. According to that, Phil is well within his rights to include the word ARC in his documentation and continue to send out PKARC and PKXARC. )the next step for thom to take is to get a restraining order against )phil enjoining him from producing any archiving software of any type )for some period of time. i expect to see news of that move coming out )very soon. Why would you want to restrict him from writing another archiver that has nothing to do with SEA's? There is no cause to prevent him from creating something better. )=-=-=-=-=-=-=-The Beach Bum at The Big "D" Home for Wayward Hackers-=-=-=-=-=-= ) Very Long Address: John.F.Haugh@rpp386.dallas.tx.us ) Very Short Address: jfh@rpp386 ) "ANSI C: Just say no" -- Me Chris Riley f Disclaimer: What I think has no bearing uunet!likewise! n on what AT&T thinks. attmail! o ihnp4! r Happiness is the planet Earth in your att!mhuxu!skeeve d rear view mirror.
leonard@bucket.UUCP (Leonard Erickson) (09/12/88)
In article <396@pigs.UUCP> haugj@pigs.UUCP (The Beach Bum) writes:
<i read the entire article, including the examples given from the manual.
<phil is going to lose, and lose big while he's at it. his trying to slip
<"ARCing" and "UNarcing" by in the manual was DUMBDUMBDUMB. a similiar
<case would be if i built a machine and named it the "VAXpc". VAX is a
<trademark of DEC. [ and if you understand the ramifications of the
<precedent which was cited in the brief, this is whereon the case hinges,
<is "ARCing" "similiar" to "ARC". anyone with freshman english behind
<them should recognize "ARCing" how this word was created. ]
Well, I'm not a lawyer, but from what I've heard about trademark law, SEA may
have waited too long. You *can* loose a trademark if it "becomes a generic
term" (or something like that). Xerox has come close, cellophane did lose
trademark status that way.
And if the references to the existence of ARC files *before* SEA got into
the business are correct, anybody who can afford the legal fee could
probably win a trademark infringement suit and invalidate their claim
of trademark status for ARC.
I'd be willing to contribute to a fund that was solely intend to challenge SEA
on this. Not to defend PK, but to get rid ofg ARC as a trademark.
--
Leonard Erickson ...!tektronix!reed!percival!bucket!leonard
CIS: [70465,203]
"I used to be a hacker. Now I'm a 'microcomputer specialist'.
You know... I'd rather be a hacker."haugj@pigs.UUCP (The Beach Bum) (09/12/88)
In article <8153@mhuxu.UUCP> skeeve@mhuxu.UUCP (79533-riley c) writes: >In article <396@pigs.UUCP> haugj@pigs.UUCP (The Beach Bum) writes: >)i read the entire article, including the examples given from the manual. >)phil is going to lose, and lose big while he's at it. his trying to slip >)"ARCing" and "UNarcing" by in the manual was DUMBDUMBDUMB. > >But SEA granted Phil a liscense to continue distribution of PK[X]ARC and >to write bug fixes for PK[X]ARC until January 31, 1989. According to >that, Phil is well within his rights to include the word ARC in his >documentation and continue to send out PKARC and PKXARC. if you had actually read the entire article, instead of pretending to think, you would know that SEA forbid PKware from using the "ARC" trademark. since phil agreed to not use the "ARC" trademark, he is guilty of contempt of court. the license to distribute the binaries did not grant him the right to use the trademark. notice that the name of the product was changed from "PKARC" to "PKPAK". the `popular' support behind phil does not make his actions right. it also does not make his next product good. since SEA is now licensed for PKARC, it is a safe assumption that SEA will be producing an archiver using some of the technology from PKWARE. if phil continues to play games with the courts, one might hope that SEA will put an end to PKWARE permanently. -- =-=-=-=-=-=-=-The Beach Bum at The Big "D" Home for Wayward Hackers-=-=-=-=-=-= Very Long Address: John.F.Haugh@rpp386.dallas.tx.us Very Short Address: jfh@rpp386 "ANSI C: Just say no" -- Me
w8sdz@smoke.ARPA (Keith B. Petersen ) (09/14/88)
John Haugh claims PKWare is in contempt of court for releasing PK361
with the words "archive" in the DOC files.
John, PK361.EXE was released on August 1, 1988, one day BEFORE the court
order was signed by the judge. How can there be contempt of an order
that had not yet existed? I downloaded PK361.EXE from Phil's BBS on the
night of August 1, 1988 and immediately transferred it to the SIMTEL20
archives. All transfers were done with DSZ, which preserves the
original file size and datestamping.
John, the "trademark" on "ARC" is allegedly invalid. It will most
likely be denied by the Federal trademark office after all the facts are
presented. "ARC" was in COMMON USE many years before SEA released their
program. You can't trademark anything that has been in common use.
--
Keith Petersen
Arpa: W8SDZ@SIMTEL20.ARMY.MIL
Uucp: {att,decwrl,harvard,lll-crg,ucbvax,uw-beaver}!simtel20.army.mil!w8sdz
GEnie: W8SDZbrad@looking.UUCP (Brad Templeton) (09/14/88)
Note that while one might argue about the origins of ARC as a name for a program or file format, one can't argue that SEA has "lost" the trademark. It's pretty clear that these days, when somebody says ARC, essentially everybody knows what program is meant, and what company it comes from. -- Brad Templeton, Looking Glass Software Ltd. -- Waterloo, Ontario 519/884-7473
haugj@pigs.UUCP (The Beach Bum) (09/15/88)
In article <8487@smoke.ARPA> w8sdz@brl.arpa (Keith Petersen) writes: >John Haugh claims PKWare is in contempt of court for releasing PK361 >with the words "archive" in the DOC files. No, PKWare is in comtempt of court for CONTINUING to distribute PK361 documentation which continues to use the word "ARC" in a manner inconsistent with the consent decree. Please read the consent decree. Phil Katz admitted to SEA's claims to having a trademark on "ARC" and further agreed to not use it. By continuing to use this trademark, PKWare is in contempt of court. If the trademark fight is won by SEA and they are awarded the trademark, others who have improperly used the "ARC" trademark will be in legal shit. >John, the "trademark" on "ARC" is allegedly invalid. It will most >likely be denied by the Federal trademark office after all the facts are >presented. "ARC" was in COMMON USE many years before SEA released their >program. You can't trademark anything that has been in common use. The file extension ".arc" was also being used by Relational Database Systems for the output of ACEPREP, their relational report writer. If I were to write a program called MYACEPREP which also produced relational report writer programs which were also compatible with RDS', and used the ".arc" file extension, then I would be at risk of a lawsuit. This is what MY ATTORNEY, [ who I pay very well, thank-you ] told me when I began working on a project to do exactly this. The claims that "ARC" was in use prior to the release of SEA's ARC is revisionist history. Prior to ARC, there were "ARCH" programs and "LIBR" programs and other things with `librarian' and `archive' in the name. BUT NO PROGRAM NAMED `ARC'. Keith does not seem to understand any area of law relevant to this discussion. One does not simply decide to pretend to be able to comprehend legal matters. Perhaps I should have Grady mail Keith a copy of his legal opinion on the matter? Perhaps the opinions of a few REAL attorneys on the net might convince Keith this is not a light matter to be left in the hands of laymen and children? -- =-=-=-=-=-=-=-The Beach Bum at The Big "D" Home for Wayward Hackers-=-=-=-=-=-= Very Long Address: John.F.Haugh@rpp386.dallas.tx.us Very Short Address: jfh@rpp386 "ANSI C: Just say no" -- Me