Wednesday, April 7, 2010

Cease and Desist

When I started this zine, I did a search on Google for magazines titled "The Instigator" but didn't find anything. Somehow, I missed a magazine titled "Instigator Magazine." I found this magazine later, but continued with the project anyway, thinking they would never find such a small, low budget zine like ours. Our contribution to the world is virtually meaningless, considering we only publish about 200 copies of our zine. For a while, the website was hosted at http://theinstigator.hostei.com. Recently, we upgraded to http://www.instigatorzine.com. Soon after, we released the following e-mail:

Keith Chiappone
Narciso Espiritu, Jr.
Madelynne Dela Rama
Jenna Kildosher

To the Publishers/Founders/Board Members,

Allow me to begin by saying “congratulations” on your new publication. It is not easy to accomplish such a fine, well-intentioned goal. In fact, after reviewing your website, I truly appreciate what you are offering.

However, the fact remains that we have a copyright / trademark situation to deal with as far the actual name you are using. Since we are huge supporters of alternative press/art/viewpoints, I’d prefer to keep this matter out of our ferocious attorneys’ grubby lil’ hands and take this violation up with you directly on, shall we say, “friendly terms.”

Unfortunately, I am going to have to insist that you immediately STOP PUBLISHING under the title of “(the) Instigator” and change the name of your magazine to something that, well… hasn’t had our name stamped on it since 2003 – and brand name we seriously protect. This includes the URL as well – as it is too close to our own URL. Please understand that we simply wish to avoid any confusion between our company and your own publication – not to mention silly court fees, attorneys, etc. Keep in mind that this goes both ways as your own growing fan-base may be equally confused should they inadvertently find themselves at our doorstep. Like I said, I prefer to keep this on friendly terms, especially given the fact that, like us, you are each trying to make a positive impact on your part of the world.

If I hear back from you by Friday of this week… I will be happy to give you 30 days from the date of this email to abide by my requests before handing this matter over to our legal team. This should give you ample time to 1) decide on another title for your publication, 2) secure the proper URL, and 3) reroute traffic to that address. As honesty goes a long way, I recommend that you ‘fess up’ to your readers/fan-base that you failed to realize that there was another publication out there using the same name, and that you found an even better one. Post this up at the TOP of your new homepage …keep it friendly & respectful, and I see absolutely no reason why you cannot keep your current URL (www.instigatorzine.com) for a period of 6 months from the date of this email for the purposes of redirecting any visitors to the new website.
Simple, less messy… and NO confusion.
This is the best I can offer you without bringing this to the next level.

Sincerely,
MICHAEL THORN
Editor-in-Chief
Instigator Magazine
8205 Santa Monica Blvd, #1-280
West Hollywood, CA 90046
www.instigatormagazine.com
213-629-2936 office
213-596-0840 fax
707-833-4928 cell


I was a little alarmed by this, for if they had decided to sue us we would not be able to defend ourselves. There were a few things that he says to intentionally cause fear. For example, he mentions his "ferocious attorney's grubby 'lil hands." His tone is slightly condescending. These are important factors to consider. Before responding, I did some research into copyright and trademark laws. I knew immediately that they couldn't force us to change our web address. With the information I found, I responded with the following:

Dear Michael Thorn,

I am sorry for the inconvenience this may have caused you. I had not realized that a 200-print photo-copied local college zine from across the country would have any threat on your 48-nation publication. First and foremost, we have never physically published a magazine titled "(the) Instigator." However, I see the mistake our webmaster has made by typing The Instigator on our website. We have changed our zine's proper name to instigatorzine, which, as you may be able to tell, is not actually a word. I have looked up records for your copyright here and here, but have not found a copyright that appears to belong to you. However, we recognize that material is copyrighted as soon as it is printed. Unfortunately, you are unclear about your copyright claim. You appear to be claiming "The Instigator" as your copyright. However, it appears that your magazine is titled "Instigator Magazine." Magazine being the modifier, if our publication was titled "The Instigator" as you have claimed, as per the cases below, despite similar words, it does not appear to be grounds for copyright violation. If I am incorrect, please let me know.

The following is an example of publications using the word, "Sun."

* Sun (supermarket tabloid)
* Arizona Daily Sun
* The Sun (San Bernardino), of California
* The Gainesville Sun, of Florida
* South Florida Sun-Sentinel
* Chicago Sun-Times, of Illinois
* The Baltimore Sun, of Maryland
* The Sun (Lowell), of Massachusetts
* The Sun Herald, of Mississippi
* Las Vegas Sun, of Nevada
* The Sun (New York), published 1833–1950
* The New York Sun, published 2002–2008
* The Sun (Sheridan), of Oregon
* The Sun (Hummelstown), of Hummelstown, Pennsylvania
* The Westerly Sun, of Rhode Island
* The Sun (Carbon County, Utah)
* Kitsap Sun, of Washington

Some other examples of magazines with similar names:
Adventist Review, Adventist Today
American Heritage, American Heritage of Invention and Technology
The Amateur Scientist, The Amateur Astronomer
Architectural Digest, Architectural Record
Art Papers, Art on Paper
Audiophile, Audiophile Auditions,
Education Update, Education Week
Electronic Games, Electronic Gaming Weekly
Games, Games Unplugged
Fangoria, Fangoria Comics

Unfortunately, there will always be confusion because similarities because similarities aren't unlawful. Only replicas are. However, Our fan-bases reach an entirely different demographic. Our publication is a zine. We make them on a photocopier and sell them for two bucks on campus. Your publication is a magazine and probably mass produce your product everywhere. We sell our zine out of our book bags and you have distributors sell yours. Your readers will know immediately that they typed in the wrong address if they come to our site, and our readers will know immediately that they've come to the wrong site if they accidentally go to yours.
We have omitted mentions of The Instigator from our website. If you would like us to change our web address, you will have to go through the proper channels to purchase the address from me.

Sincerely,
Keith Chiappone
Editor-in-Chief
http://www.instigatorzine.com


It took me a while to type this exactly as I wanted. I'm willing to bet that Michael Thorn expected us to immediately comply with his requests. The way a lot of these Cease and Desist letters work is using force with the threat of legal base to make oneself appear more powerful. Most of the time, however, there is no legal problem. He responded with this:

Mr. Chiappone,

While I appreciate you asking your webmaster to omit mentions of “the Instigator” from your website, you nonetheless continue to refer to it as a “magazine” and not a “zine” in your ABOUT page. This is where my concern lies, Keith. Please understand that I am not trying to be a “dick” about this, but merely wishing to avoid circumstances whereby anyone (including potential readers or more importantly, a prospective advertiser) is told to “check out Instigator” and falls upon your site by mistake. There is simply not enough distinction between your magazine as an “alternative publication” and ours, and this can affect our organization on a financial level. THIS IS THE CRUX OF THE MATTER – and a distinction that any court will side with us over. Like I said earlier, I would like to avoid this.

Keith, you and I both are in agreement over the special nature of print publications at a time when print is hurting across the board. Responding to my request with a list of like-sounding examples that you are only half-correct about - in terms of copyright law - instead of searching for a resolution that is satisfactory to both parties reeks of being slightly hypocritical, bud. That you would be willing to potentially endanger our publication by holding steadfast to your ground is not the way to resolve this.

So how about this… would you be willing to clearly state that you are a “ 200-print photo-copied local college literary `zine based out of New Jersey to promote the recognition of local artists and writers” (or something to that effect) …as part of a mission statement posted up at the TOP of your ABOUT page AND change any reference to “magazine” to the stated “zine”? In other words, just re-tool your ABOUT page somewhat. No offense, but it sort of needs it anyway, stud… as you may want to fix a couple of typos while you’re at it – “The purpose of the magazine is to promote activiy for writers of all generes and styles who would otherwise have no outlet to put their material.” Making a clearer distinction between our publications – both of which promote artists and alternative points of view – should be enough. Keep in mind that while parties interested in your publication may clearly not mistake ours for yours, I am not so sure this holds true the other way round. (Gay guys are a bit scattered you might say!)

Basically, I’m looking for a bit more delineation between our endeavors to avoid any possible confusion. Make sense? Help me out on this and I’ll even owe you one, Keith. After all, guys who actually “get” what you are up against in this industry can be invaluable.

Sincerely,
THORN
Editor-in-Chief
Instigator Magazine
8205 Santa Monica Blvd, #1-280
West Hollywood, CA 90046
www.instigatormagazine.com
213-629-2936 office
213-596-0840 fax
707-833-4928 cell


When he initially e-mailed me, he demanded, with the backup of law, that we change our name, our web address, and issue a public apology. Here, however, it's an extremely simple request: change "magazine" to "zine." I responded with:

Dear Michael Thorn,

I will comply with your request to put the mission statement at the top and change all references from "magazine" to "zine.". However, I see in your "About" page you also refer to your magazine as a zine. It would seem only fair, then, that you also change mentions of "zine" to "magazine" if you're really looking for more of a delineation between the two publications. I'm not trying to be a dick either, and I apologize if I came off as one in my first response. I am simply trying to protect my rights here, just as you are doing.

Changes to the website will be made by the end of the night.

Sincerely,
Keith Chiappone


He immediately responds with:

Cody,

Can you make a quick change to our “About” page?

“All-inclusive. All encompassing... homogenized... gentrified... g/l/b/t/w/x/y/z fetish community oriented. Simply put, this is a ‘guy's 'zine.’ ...Don't read anything else into it” – Please change the reference to “zine” to “magazine.”

Thanks!
THORN
Editor-in-Chief
Instigator Magazine
8205 Santa Monica Blvd, #1-280
West Hollywood, CA 90046
www.instigatormagazine.com
213-629-2936 office
213-596-0840 fax
707-833-4928 cell


followed by:

Fair is fair. Consider it done.

Thanks for seeing my point, Keith.

And good luck with your endeavor… like I said, if you ever need something, you now have an experienced ally to call upon.

THORN
Editor-in-Chief
Instigator Magazine
8205 Santa Monica Blvd, #1-280
West Hollywood, CA 90046
www.instigatormagazine.com
213-629-2936 office
213-596-0840 fax
707-833-4928 cell


I ended with:

Dear Michael Thorn,

I am glad to see that we can come to a compromise. Thank you for your kind words.

Sincerely,
Keith Chiappone


There are very important things for everyone to consider here. I am going to college for secondary education with a focus on literacy. I am not knowledgeable when it comes to copyright law. However, these resources are available to you. When it comes to compromising and making deals with people, although your immediate response is to be defensive, you should take whatever deals they offer. However, when they do this, you must also make a request. Michael Thorn asked me to change "magazine" to "zine." In response, I said, "Okay, but you have to change 'zine' to 'magazine' on your page," to which he complied. Never make an unbalanced deal. That's not a compromise. That's being walked on.

One thing that is very important to realize is that once you publish something, it is immediately copyrighted. This means if you create an mp3 of a song you recorded, it is copyrighted. You must date everything. The magazine that I had this feud with does not have their copyright in the copyright register, nor do they have a trademark in the trademark register. However, they do have dates for each of their magazines that they published. It is always best to actually submit your product to the copyright register or trademark register for back up. That way, if someone steals your product, you have not only your original dated product, but it's protected by law in the copyright register.

Thus, you will notice that we are no longer The Instigator or Instigator as it appeared on the first two issues of the zine. We are now Instigatorzine.

The moral of the story is this: Don't back down to internet bullies. Don't be a jerk about it either. Make sure you absolutely know what your rights are. If you don't, people will step on you. There will always be compromise. And you may even make an ally out of it. Stand your ground, and keep on instigating!

2 comments:

  1. I'm glad that it all ended well and there was no problem.

    ReplyDelete

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