TAKING ON THE ALPHABET IMPERIALISTS

by Terry Devitt

In the Wild West that is the Web, identity is everything. Put simply, the name you hang on your Web site is a valuable commodity, and if you're not vigilant, your name can be co-opted, misappropriated, misused, or strong-armed away.

In the past two years, our site, The Why Files, a popular-science site, has, in one instance, been subjected to a frontal legal assault by a large media conglomerate over our name, and, in another, was the victim of outright name misappropriation by a federal agency.

So, what's a little nonprofit Web site to do? In our case, the answer was to back down to no one. In doing so, we learned some valuable Web lessons and made some marketing hay by taking our fight to the street.

The trouble started in January 2000 when we received a letter from the Beverly Hills law firm of Keats, McFarland, and Wilson on behalf of Twentieth Century Fox. In the letter, attorneys for Fox argued that we were guilty of "passing off," or deliberately trying to confuse our readers into thinking that we were an official or authorized Fox Web site. More to the point, they accused us of infringing on The X-Files trademark.

Admittedly, The Why Files (although not our mark) bears some resemblance to The X-Files. Both have the word "Files" and both key off a letter in the alphabet, although the "Why" in our name purposely hints at our content, which is purely about science, math, or technology. But any similarities end there and our name, we contend, would no more confuse a fan of the popular television show than the name The X-Files would confuse a fan of the erstwhile The Rockford Files. And without a doubt, a quick glance at our site would dispel any notion that Scully, Mulder, or extraterrestrials lurk there.

Fortunately, we had registered our name as a federal trademark and had held the mark for several years before Fox came knocking. Our site, in fact, had been using The Why Files name for five years and had received considerable public notoriety before Fox discovered us and decided we were a threat to The X-Files sci-fi empire.

The January 2000 letter, of course, was just the beginning. Legal correspondence between attorneys for the University of Wisconsin-Madison (The Why Files headquarters) and Fox continued for months in the legal back-and-forth that ensues when organizations have differences of opinion. We rejected the "compromise" suggested by Fox that we surrender The Why Files trademark to Fox with the "possibility" that they might license it back to us!

The legal saga took an interesting turn in October 2000 when Anna Gould, an enterprising student reporter from UW-Madison's Daily Cardinal, broke the story of our taxonomic spat with Rupert Murdoch's lawyers. The story quickly spread and soon the Associated Press, Milwaukee Journal Sentinel, USA Today, Chronicle of Higher Education, People magazine, Web media of all kinds, and others were clamoring for comment to flesh out this David vs. Goliath story.

Our first reaction to coverage was worry that we might harm our case, but it quickly became clear that here, in the form of a legal tussle with a giant media conglomerate (well known for crushing unauthorized fan sites of such popular programs as Buffy the Vampire Slayer), was a potential marketing bonanza.

One of the nice things about the Web is that it affords instant feedback about use, and with widespread reporting of our dispute with Fox our numbers soared and traffic to the site climbed by as much as 30 percent with each blush of coverage. The coverage was overwhelmingly sympathetic, and the fact that it was easy to dream up memorable quotes made the story a natural.

It is possible, too, that the attention may have helped persuade Fox that pursuing the issue was more trouble than it was worth. Our last correspondence with Fox was a letter dated Dec. 5, 2000, in which we reiterated our defense of The Why Files name and responded to a complaint from Fox's legal consul that we had "leaked" the story to the media. The letter, sent at the apex of coverage of our dispute, remains unanswered.

But just when we thought we were out of the woods with Fox, we learned that NASA had initiated a science-education Web site, amazingly called The Why Files. The logo for the site even included the stylized question mark that is a distinctive part of The Why Files logo.

Once again, we required the help of UW-Madison Legal Services, this time to convince NASA (and their attorneys) that there would be some obvious problems with their decision to use a name and mark identical to ours. Whether or not the name was conjured up de novo by some bright light at NASA, or was borrowed, remains unknown. But after some negotiation, NASA did agree to transition to another name.

Lessons learned through these adventures are simple:

• Above all, protect your mark. Register it as a federal trademark. Some states offer this protection as well, but federal registration is your best bet.
• If your mark is protected, don't back down from legal threats. Your name and/or your mark constitute your identity. If you give them up, you're back to square one, and all of the effort and resources that may have gone into developing and promoting your site are wasted.
• Look before you leap. To find out if the clever name you've settled on is not already trademarked, go online. The U.S. Patent and Trademark Office has a searchable database on its Web site, and some universities, including Minnesota, Rice, Michigan, Georgia Tech, and Wisconsin, have services that, for a small fee, will scan relevant databases to see if there might be a match between your bright idea and an already protected mark. We used Wisconsin Tech Search through the UW-Madison Wendt Engineering Library.
• If, after your mark is locked up, you are confronted by a large media conglomerate intent on bullying you out of your name, find the nearest student journalist.

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Terry Devitt is director of research communications at the University of Wisconsin.