Network World, 6/17/96
Used with permission
D. Javan Keith runs an electronics store in Nashville, Tenn., that his father started in 1972 when he formed Javan Enterprises, Inc.
Like any smart business owner in the '90s, Keith has kept up with the times. He does a brisk business selling computers and parts, provides local Internet access and has put up a Web site (www.javanco.com) to peddle his products.
Javanco, the Keith family store on 12th Avenue is well-known in the Nashville area, and its name has been a trademark since at least 1982.
So imagine Keith's surprise when he received a letter in mid-May from a law firm representing Sun Microsystems, Inc., telling him to "promptly cease use of the javanco.com domain name and promptly change its name from JAVANCO to a name that does not include any JAVA trademarks.''
Keith is not alone. In recent months, Sun attorneys, through certified letters and electronic mail, have been quietly but aggressively "asking'' numerous businesses and individuals with web sites to drop the word "java'' from their domain names. Sun claims these domain names violate the Java trademark the company registered last year for its set of Internet applications.
Sun isn't the only Internet-related megacorporation trying to carve out broad trademark rights.
Netscape Communications Corp. reportedly is ready to use its legal muscle to prevent other companies from using the suffix "scape'' in their names.
While Keith may have been surprised by the letter from Fenwick & West, the Palo Alto law firm representing Sun, he was not amused.
"This is the kind of bother you don't need,'' he said.
The letter ended with attorney James Gibbons-Shapiro urging Keith to confirm "that your company will immediately take the requested actions.''
According to Keith, that is not going to happen. "It's still on the 'Net, and I don't have any intention of taking it off,'' he said. On advice from counsel, Keith would not comment further on the case.
Jon Batcheller, however, has plenty to say about Sun's efforts to assert ownership of all things java on the 'Net.
Batcheller, a software engineer from Portland, Ore., started a personal web page last year with the URL www.javac.com. The site reflected his interest in the Java and C programming languages and featured items such as articles about software.
"To me, it really doesn't make any sense,'' Batcheller said. "If I were Sun, I would think I had much more to lose [in terms of bad publicity] than to gain doing this.''
Shortly after receiving his own letter from Sun lawyers, Batcheller transformed his web site into a rallying point for owners of other web sites with "java'' in their names.
Batcheller sent a mass e-mailing to administrators of these other 165 sites - some of which are Sun-related - and discovered that many of them also have been contacted by Sun legal representatives.
One respondent, Ray Taft, said he "has been in legal talks with [Sun lawyers] for over five months now.''
Taft, who calls himself a big supporter of the Java language, started a site earlier this year, www.javacup.com, that provided links for entries into Sun's Javacup International contest. Rather than make any money, Taft said, he merely intended to showcase the uses of Java, and informed Sun about what he was doing.
But he shut down the site after Sun alleged trademark infringement. He also told Sun he would relinquish the javacup.com domain name in return for a letter from Sun absolving him and WebPlanet, the Internet Service Provider he runs, from further legal action.
He has not yet received such a letter, and no longer owns the domain name, which expired Friday.
"I have no legal leg to stand on at this point,'' Taft said.
"Sun has come up with a good product, and I will continue to promote that product,'' he said. "But the way they're handling this, I don't agree with it.''
Anne Gundelfinger, associate general counsel and director of trademarks for Sun, declined to comment on Sun's correspondence with domain name holders regarding the Java trademark, but said, "We are protecting our rights on the Java trademark and we are enforcing and will enforce the mark.''
"However,'' she added, "I will say that in any pending legal matter, we will always consider any relevant information which indicates that there's not a problem.''
Mark Schonfeld, a Boston attorney who specializes in intellectual property law, said the test of trademark law is typically whether the disputed name would "cause confusion'' with the trademarked name.
Schonfeld, who is with the firm Sherburne, Powers & Needham, noted that while domain name disputes can be arbitrated by InterNIC, the organization that registers domain names, many such cases end up going to court.
In the most recent case, a federal judge in Los Angeles imposed a preliminary injunction barring companies from using a federally registered trademark of another company in their domain names.