Pidgin

I got this email from 'Fabrico Vayra' today that the use of 'AIM' in my project 'phpAIM' here on sf.net. Apparently, they're not too happy with me using the 'AIM mark', whatever that is. I'm posting the email I recieved as a reply.
Any ideas on what I should do? Change my project name? Put a big disclaimer in my source and on my project page saying that I'm not associated to AOL in any way? Might move this discussion to slashdot, but I figured you guys would want to hear about it first.

Oh yeah, and my phpAIM script doesn't even connect to their servers yet. All you can do with it is instantiate an object and print out the variables you give it. Neat, huh?

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To: silfreed@duo.pa.net
Subject: phpAIM
From: Fabricio Vayra <vayraf@arentfox.com>
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Date: Mon, 18 Jun 2001 15:34:22 -0700
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June 18, 2001

VIA E-MAIL

Douglas E. Warner

RE: Notice of Infringement

Dear Mr. Warner:

We represent America Online, Inc. (&#8220;AOL&#8221;), with respect to
its intellectual property matters. Our client is the owner
of federal Registration Nos. 2,423,368 and 2,423,367 for
its mark AIM (hereinafter, the &#8220;AIM Mark&#8221;) and operates the
most widely-used interactive online service in the world.
Our client has made extensive use of its AIM Mark in
interstate and international commerce in connection with
the advertising, promotion, and sale of its Internet and
computer-related goods and services. Due to our client&#8217;s
widespread use, advertising, and extensive marketing, its
AIM Mark has become very famous and many consumers
recognize the mark as a distinctive symbol of our client&#8217;s
goodwill.

Our client also uses the mark AIM.COM in connection with
providing information via computer networks. As a result,
consumers associate the mark AIM, when used in a software
name or internet related service, with our client&#8217;s high
quality products and services.

It has come to our attention that you are distributing an
online communication software product using the AIM Mark at
several web sites. Our client is concerned that your
unauthorized use of its famous AIM Mark in this manner is
likely to confuse consumers and, in addition, dilutes the
distinctive qualities of the AIM Mark. We assume you
similarly do not wish to mislead consumers and we request
that you discontinue use of any name(s) that incorporate
our client's marks, or marks confusingly similar to them.

Additionally, the proprietary software used to operate the
AIM service is owned solely by AOL and unauthorized
distribution of our client's software, or derivatives
thereof, is strictly prohibited. Our client would like to
resolve this matter amicably and has asked that we contact
you to confirm that you will cease using any names or marks
that infringe upon the AIM Mark. We also ask that you
contact us to discuss the possible copyright issues set
forth above. We hope you appreciate AOL's interest in
protecting its valuable intellectual property and we ask
that you respond to this letter by June 29, 2001. We look
forward to hearing from you and hope to resolve this matter
promptly.

James R. Davis, II
202/857-6169
davisr@arentfox.com

Arent Fox Kintner Plotkin & Kahn, PLLC
1050 Connecticut Avenue, NW
Washington, DC 20036-5339
Phone 202/857-6000
Fax 202/857-6395
http://www.arentfox.com

cc: Douglas R. Bush, Esq.
Fabricio Vayra, Esq.

Rob and I got served the same notice today, as did the entire development teams of Kaim, Taim, wmGaim, libfaim, and blaim (I think there may have been others as well). Mark is talking to his lawyers on behalf of Rob and I to see what legal options we have.

Well, I guess it's good to know I'm not alone. Please keep me informed of how things go; if not in this forum, through email to silfreed at duo dot pa dot net. I think this is a poor move on AOL's part, but it's been worse (as in the past several months).

I'll be sure to keep you informed. I'm building a list of email addresses of everyone that got the letter. Ill be sure to contact you all. Thanks for letting us know. Feel free to bug me on AIM, too. Just let me know what its in reference to. If I seem non responsive, I might be at work -- just hang in there and ill get back to ya :)

So as I see it, AOL says they don't like 2 things :
-The name of the project, GAIM (which, according to one of the authors stands for GNU Any Instant Messenger), contains threee characters which are copyrighted by AOL, namely "AIM".
-AOL says that GAIM uses the AIM protocol without their permission.

Is AOL aiming to sue all IM projects which provide compatibility with AIM?

What are the options?
Don't know what a law expert will say, but I have some ideas:
GAIM stands for GNU Any Instant messenger, I don't know if this holds any legal ground (as both GAIM and AIM are instant messenger products, being in the same 'trademarking-category'?). If not, a namechange wouldn't be a disaster though.

Let the AIM plugin be optional (perhaps developed by an anonymous person?) and continue work on the remaining part of the program (the GUI, the console version, etc). Making the program more modular:

1st level: base system, connects to icq,msn&aol servers (with the use of protocol-plugins), needs a kind of simple IM protocol overheading msn,icq&aol protocols (XML?).

2nd level: logging, saving history&contact lists, storage of some non-UI specific preferences, gives a general (text mode) interface (perhaps accessible by telnet?)

3rd level: user interface for various OSs which connects to the general (text mode) interface, storage of UI specific preferences, incl. sound prefs, perhaps even secondary storage for history and contact lists, if OS permits.

Just curious: did the 'Jabber' development team also get this letter from AOL?

ps: please put (tm), (r), etc. in the correct places in the text above yourself. I forgot ;)

I'd imagine that Jabber and Everybuddy wouldn't have gotten this mail, because it's all about the use of 'AIM.' Even if Gaim stands for "GPL Any Instant Messsenger" (and I think you can do better than that), it's still not far removed from "AIM", and is considered trademark infringement. Note that the trademark is not for "America Online Instant Messenger," but rather for "AIM." In other words, it doesn't matter what it stands for, we can't use AIM in Instant Messaging software.

I'd imagine that complying with their requests to stop using the AIM trademark would be as simple as renaming the project "GPL Any Instant Messenger." (or better) No mention of AOL or AIM; everyone would still call it Gaim because they're too lazy to type. Change the logos, documentation, and website content, and I'd imagine that everything would be fine.

Of course, IANAL. It will be interesting to see what a professional says on the matter.

You can add me to the list, my project is named aimy... got the letter yesterday. :( (btw: its funny my project barely works and I haven't even made it available to download yet)

Alrighty, I have a list of about 10 or 11 of you guys, im missing a name, I think, but I'll find out who I'm missing. I'll be contacting you guys shortly.

Why not use variants of 'AME'? - 'Ad-free Messaging Engine', or 'Advanced Messaging Engine'. Or...perhaps 'AOL's Messaging Engine', if one wanted to be really daring.

Well, if you want to think about renaming it... GNU, of course, came up with that name because "Unix" was a trademark. so:

GNAIM - Gnaim's Not AOL's Instant Messenger

or if you wanted to poke fun:

GIAM - Gnam Isn't AIM, Morons

Although I think a probably more conservative approach would be to just replace "Any" with "Non-AOL" or "Free" (gnim, gfim). "Free Instant Messenger" -> "FIM" at least seems like it could work with lots of free software projects.

This is something a friend of mine sent me when I pointed out this discussion to him. You might find it useful.

- Abhay

--------

I have a bit of a background in this matter having taken a course on patent law (as well as trademarks, copyrights, etc) at MIT. I note up front, however, that I am not a practicing attorney. Here is my take on the situation:

AOL is asking you to stop infringing on your use of their trademark. They have the upper hand on this issue given their registration of the (trade)mark "AIM," the substantial similarity between the mark "AIM" and the names of the various open-source clients, and their prior use of the mark in commerce. These are all tests that a judge would apply in deciding which party(ies) may use the mark.

A simple fix in the case of GAIM might be to simply change the name to something like GNU Messenger. It is unlikely that the word "messenger" can be trademarked since the U.S. Patents and Trademarks Office (USPTO) is unlikely to grant trademarks for common words. It turns out AOL has a trademark on "instant messenger," as well, so you cannot pick anything that includes that as a name. (IMHO, they should never have been granted a trademark on "instant messenger" in the first place, given the words are a part of English). For example, "corn flakes" cannot be trademarked, although "Kellogg's Corn Flakes" is protected. Since you are including the entire mark "AIM" in the name of your respective clients, their case is bolstered. Distinguishing your name from theirs in this way would most likely resolve any infringement liability on your part. After all, Yahoo Messenger and MSN Messenger do not conflict with the mark "AIM."

Claiming that "A" stands for "any" or something else will not satisfy a judge who ultimately looks at the case. There is still a strong likelihood of confusion (the ultimate reason behind all of the tests he applies), and the party who registered the mark is basically given the presumption of correctness (in this case AOL). You could choose another name altogether (you could check http://www.uspto.gov and search for trademark infringement to clear a proposed name, though non-AOL companies would probably care less about conflicts).

The copyright issue is largely bogus. Copyrights protect software to the extent that you are distributing their code or wrote your client based on their code. Since neither is the case, it is a reach to speak of copyright violations here. Competent attorneys, however, try to scare people as much as possible so that they cooperate. I would be cautious about discussing how you wrote your code or any specifics with AOL's lawyers - they will likely try to find a technicality which may implicate you in violation of copyright laws. While its doubtful any claim on that front would succeed or would have any merit, they could entangle you in a legal web if they feel its worthwhile (and paper is cheap). IMHO, you are best off replying that you are considering/enacting a name change and that you did not violate AOL's copyright laws when writing your clients.

On the whole, there is little you have to do to remedy the situation (legally) and I wish you the best in continuing your efforts in writing open-source messaging clients.

I agree with your friend too. Gaim wouldn't have a chance in court against AOL in this matter. They should just play nice and change their name.

I think that if they play nicely with AOL now, they'd be nicer regarding gaim's OSCAR support. Ultimately, AOL doesn't want to get rid of Gaim, I think. They value their large customer base and wouldn't want to lose all us *nix users. They realize that nobody uses their Linux client, and I think they will let Gaim stay.

I like the sound of GNU Messenger. Very similar to Windows Messenger. Nice and short too. Is permission from the fsf needed to use GNU in a project's name? Personally, though, I think it'd be better to use a name that can be abbreviated Gaim... that way we can still call it Gaim in conversation, but it would be GNU All-purpose Internet Messenger or something in official project documentation.

I think the problem is that we can't use something that abbreviates to Gaim....

If you end up changing the name, considering doing something similar to what the DPS-FTP guy did. It's fricken hilarious. http://dpsftp.sourceforge.net/about.html (top paragraph)

Well, I am by no means an expert, but I can't see how somebody could confuse "GNU All-purpose Internet Messenger" with the acronym "AIM." If it were referred to as Gaim only in private conversation, I don't see a problem... they own the trademark to AIM and to AOL Instant Messenger, and I don't thing GNU All-Purpose Internet Messenger is similar to either.

The problem is you can't call it Gaim and just _say_ that it stands for something different from what AIM stands for... Gaim is too similar to AIM.

Check with a lawyer; I'm probably wrong. I think that I'd rather call see GNU Messenger than GNU All-Purpose Internet Messenger on title bars and webpages, anyway.

I think it would be great if we could keep a name similar to AIM(TM). Something like 'AME' like suggested above would be nice; very few changes would be necessary in may programs then -- however this would make gAIM a gAME ;-(

Maybe AYM -- Advanced Yodeling Messanger...

Apparently, they keyed onto AIM at the SourceForge site,
as I haven't gotten a message for mine. Which is currently
not opensource and is served out from my own site. BTW: My
client is for the Amiga and I would rather think that AIM
might ignore mine, as they in no way even pretent to support
the Amiga in AIM.

Practical Online Oration Program
or
Global Online Oration Program

I don't know about y'all, but I think it would be pretty cool to talk to my friends through GOOP or POOP :)

How about just using ALM, but with a really really short stem on the bottom of the L?

;)

Oh, one more--just thought. A (capital A) l (small L) M (biggie M) looks awfully similar to some, er, infidelous term i seen.

AlM

pretty good.

Anyone else catch this:

http://news.cnet.com/news/0-1005-200-6345628.html

gMia

Wait, isn't "AIM" an english word?

As well as "GNU" for that matter...

Yes, AIM is an English word, but that doesn't affect the fact that it's a registered trademark. If I want to make televisions, I can't call them 'Sharp' or 'Zenith' just because those are English words... Sharp and Zenith are existing television companies with trademarks to their name.

A gnu is a horned antelope, yes, but it is not trademarked for computer software. It is trademarked for clothing and boots, so if RMS decided to make GNU/Sweatshirt, he'd have a bit of difficulty. Even if RMS did trademark it, I'm sure he would let Gaim use it.