Dan Massey comments on June 11:

Here is some additional information relevant to the emergng difficulties with Urantia Foundation.

1. In their complaint about metatagging, they cited the case of Brookfield Communications. There is a synopsis of this case on line at: http://www.phillipsnizer.com/int-art146.htm. If you review the details of this, you will see that it has little in common with our relationship to the Foundation; however, it is possible that a convoluted reading of our relationship and actions, which seems to be where they are coming from, could find its way into court.

In Brookfield, the argument was over the registered trademark “MovieBuff”. Plaintiff owned the Federal registration of the trademark. Defendant registered the secondary domain name “moviebuff.com” with NSI and used “moviebuff” as a metatag on pages of its web site, which offered the same services as a website developed by Plaintiff.

The case turned on the fact that Defendant’s NSI registration occurred prior to Plaintiff’s first use of the mark in conjunction with its website. The district court ruled in favor of the Defendant. The Ninth Circuit reversed this on appeal, ruling in favor of the Plaintiff. The chief reasoning was that the prior registration of the name “moviebuff.com” with NSI did not constitute prior commercial use, so that the Plaintiff had achieved first use when it opened its “MovieBuff” web site before Defendant went on-line.

The relevant part of the case for us has to do with the Defendant’s use of “moviebuff” as a metatag for its web pages. The Appellate court ruled that this created “initial interest confusion” for web surfers, who, seeking the Plaintiff’s web services, would be led to the Defendant’s site, where they would find they could acquire similar services. The court ruled that, although there was no possibility of confusion in the consumer’s mind about whose services they were using, the mere possibility of first exposure increasing the likelihood of subsequent sale allowed Defendant to benefit from “the goodwill that Brookfield developed in its mark.” The Ninth Circuit cited its own ruling in Dr. Seuss, “…that the use of another's trademark in a manner calculated 'to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may be still an infringement.”

Our use of the “urantia” metatag does not at all resemble the Defendant’s use of “moviebuff” in this case. We are not competing for priority in use of this trademark with Urantia Foundation. Rather, we are providing a service related to a religious movement that, by admission of the Foundation, is known by a word the Foundation had arbitrarily chosen as its trademark. We are not using the metatag in a way that is intended to create “first exposure” and our website contains ample links to Urantia Foundation, which does not offer similar services on its website. Of course, these truths do not prevent the Foundation from arguing the opposite, as is its custom.

2. In their complaint about the name “The Urantia Book Fellowship”, during our face to face meeting, the Foundation cited SugarBusters to justify their position on use of “The Urantia Book” as a trademark. This is a somewhat obscure preliminary injunction related to pending litigation in the Fifth Circuit. There is a synopsis of this injunctive action at: http://www.rktlaw.com/5cir98.htm (look for section D. of the webpage). Again, it requires rather tortured thinking, completely ignoring the truth of the situation, to find any relevance between this action and our present situation.

In SugarBusters, the argument was between two publishers. The Plaintiff owned the Federally registered trademark, but had failed on several points to perfect their registration. (This failure of incontestability was overlooked by both Defendant and the Court during the initial arguments.) The Defendant published a book that had similar trade dress to the publications of the Plaintiff and used the words “Sugar Bust” in its title. It offered recipes based on the principles of the Plaintiff’s publications.

The court granted the Plaintiff a preliminary injunction against the Defendant on the grounds that the Plaintiff held the registered trademark, that the trademark was incontestable (a judicial error in the ruling), that the Plaintiff had a “strong” mark because it had been used in conjunction with a best-selling book, and that the Defendant’s publication was confusingly similar to the Plaintiff’s products.

It is rather hard to see how this lower court ruling (which was the only thing Steve Hill could come up with to justify his claim “you hold a common law trademark in the title of a book you publish”) has any relevance at all to the Foundation’s claims. In this case, the litigation was not about the title of the Plaintiff’s book, but about the Defendant’s use of something similar to the Plaintiff’s registered trademark in the title of a book he published. Of course, Steve Hill even said “It’s not a lead-pipe cinch.” I would say it is ridiculous and a waste of everyone’s time and money.

If this is all there is, then it is absolutely not true that the title of book is a trademark or registerable as a trademark. The Foundation is bluffing. They don’t even hold a pair.

3. We need a way to put critical issues before the TDA, for their information, to avoid having silly resolutions passed, and to marshal intelligent support. I have slept on this problem, which makes these suggestions about as authoritative as I can make them after just a few hours of one-track thinking…

I think the Executive Committee should frame a series of resolutions and present them to the TDA for consideration and ratification. As part of the background to these resolutions, we should provide a synopsis of the ongoing discussions with the Foundation, at about the level of my summary to the Council, but also identifying specific issues. We should extend this information to the TDA delegates under requirements of confidentiality, but be circumspect in putting out too many specifics, in case it becomes public.

In setting up the TDA, we should provide them with information advising them that the Committee on Resolutions has within its power to call in officers, councilors, and anyone it chooses to provide it with information relevant to its deliberations. While the TDA does not have subpoena power with respect to Fellowship personnel, it can ask and we can comply, all voluntarily.

I have not thought carefully about the specific resolutions we might suggest. We need to keep it as simple as possible. We should probably ask them to ratify the name “The Urantia Book Fellowship” and to approve our website policies in some defined form. The TDA does not have the power to direct the Council on such matters, just as the Council may not in all areas have the power to direct the EC; however, we should try to get as many people on board as we can at this time.