Not ceasing or desisting

In the past I’ve mumbled something on a couple of forums about receiving a cease and desist email over the Atari 8-bit and Commodore 264 series ports of Reaxion but, despite wanting to, have never gone into actual detail. Since these events occurred in early 2006 and the company in question has since merged and re-branded, I’m probably safe to reproduce the emails (there were no “for the recipient” or equivalent legal disclaimers on them anyway) but have edited the emails themselves down, removing names and company positions along the way just to be safe.

So to start with, here’s the meat of that email which was received out of the blue on 11th of January 2006 during an otherwise quiet Wednesday afternoon:

Reaxion Corp is the owner of U.S. Trademark Registration No. 78695543 for Reaxion, which is valid and enforceable in the United States. Reaxion Corp provides games and services for mobile devices that have developed a well-deserved reputation for exceptionally high quality and ease of use. Its mark Reaxion is distinctive of its services and applications and is a strong mark. Having extensive exposure in the marketplace, Reaxion Corp has acquired substantial and valuable goodwill in the Reaxion mark, which is represented by its Federal trademark registration.

You are unrelated to Reaxion Corp and are unauthorized to use the mark Reaxion to identify your products. Individuals who download your games may be confused into thinking that your company, web site or games are sponsored, licensed or authorized by Reaxion Corp. Accordingly, by using Reaxion you are likely to cause confusion or mistake among consumers with respect to the source of your services, or you may tend to dilute the distinctive character of Reaxion’ mark. These actions constitute trademark infringement directly or by contribution and dilution of Reaxions’ rights under state and federal law. Your infringement may result in Reaxion Corp suffering loss of clients or business, loss of goodwill, and other intangible but definite harm, at a cost that we are presently investigating. This infringement must cease immediately.

To protect the value and distinctiveness of the mark Reaxion, Reaxion Corp is legally required to, and actively does, police its intellectual property rights. Therefore, we demand that you immediately:

  • rename your games to a non conflicting name,
  • confirm in writing to me that you have done so; and
  • refrain from using the name Reaxion forever in the future.

I further demand that you take all the foregoing actions by January 25, 2006.

If you elect not to accede to these requests or respond, we may take other action to protect Reaxion’ rights, including legal action, without further notice or communication.

And, on reading that, there was something of an “unscheduled bowel evacuation” moment… essentially Reaxion Corp. were saying that Cosine using the name Reaxion was a violation of their US-registered trademark and that we needed to rename the games within the next fortnight to avoid further, legal-flavoured action.

Once my brain stopped dashing around like a headless chicken, the cynical part kicked in and, although I’m not a lawyer (and have never played one on television), there are some very good resources on the interwebs so I did some research and after a couple of hours, it started to look like we weren’t doing too badly because American trademarks don’t actually apply in other countries. More importantly, it seemed that part of the process of registering a trademark involved demonstrating that there was no “prior art” (in other words, nobody using the name already) and, when I dug around their website, it seemed that someone had beaten them to it… me, in fact!

So here, couched in disclaimers about my lack of legal training or knowledge, is basically what Reaxion Corp. received in reply:

Cosine as a team (we’re a group of hobbyist developers, working primarily on obsolete 8- and 16-bit computers) originally used the name “Reaxion” for the Commodore 64 version of the game back in 1994, according to your site, your company was founded in 2001 (some seven years later) and I therefore assume that the trademark wasn’t registered until after that date. I’m afraid that I’m just a programmer so don’t claim *any* real legal knowledge and even less awareness of trademark law outside my own country but, on receiving your email, a quick Google search found the following page;

http://www.methvenlaw.com/n_tmark.htm

To quote from MethvenLaw.com, “essentially, ownership rights to a mark is created by using the mark in commerce”; as I stated (and as is documented on the Cosine website) the name Reaxion was originally used in 1994 in published form, more specifically the game was given away with issue 47 of the Future Publishing magazine Commodore Format on a cover-mounted cassette (with documentation in the magazine naming myself and Sean Connolly as the developers) so the mark had been used in commerce at that point. It was then used a second time in 1995 for the shareware release of Reaxion on the Amiga.

The site goes on to state that;

“Generally, if the defendant was using the same or a similar mark in the same field before a) the plaintiff filed a post-1989 federal application for registration or b) the plaintiff’s registration for a pre-1989 application was granted, then the defendant will retain the rights to use its mark within that geographic area. (Assuming the defendant had no knowledge of plaintiff’s use of the mark.)”

Commodore Format was published by Future Publishing and available, I believe, worldwide; at the very least it was released commercially in most of Europe and Australia but I’d have to do more research to give a more accurate idea of territories covered. The shareware evaluation version of Reaxion Amiga was via assorted means so it’s fairly safe to assume that it was distributed worldwide.

And, at least to my knowledge, we weren’t aware that anyone else was using the name.

On top of that, because Cosine got to the name first it’s legally allowed to continue with the use of the name even after a trademark has been issued for the geographical area… and, since the C64 and Amiga versions were distributed worldwide in one form or another,

MethvenLaw.com also states:

“Essentially, registration is on a country by country basis. The fact that an owner has a mark registered in one country gives no protection in another country.”

What passes for a “head office” for Cosine (as I said, we’re not a company, merely a group of hobbyist developers) is based in the United Kingdom.

From what I’d read the American trademark law didn’t actually apply to Cosine because it’s a UK-based “organisation” (for want of a better word) but if we’d been American it would have protected us anyway because we’d been first to actually use the name (at least to our knowledge) by a couple of years. And, although I didn’t mention it because I really wasn’t sure if my interpretation was right, it even appeared that the trademark being registered despite our “prior art” meant that it could, at least in theory, be invalidated were legal proceedings started.

Either way, it apparently pays to question these things because here’s the relevant part from the second, much less threatening and final contact I received:

Many thanks for the background information, most helpful.

I will look into this further and may get back you.

Just for completeness I replied with a more detailed timeline documenting Reaxion‘s history including the unreleased versions, but didn’t hear back and assume that their claim was dropped because the 25th January deadline wandered past quietly and nervously, but without incident…

Obviously this wasn’t Tim Langdell-style trademark trolling since Reaxion Corp were actively trading under the name, but, like many of the “cease and desist” emails that have cropped up over the years, it does seem very heavy-handed of them to wade in against a handful of people just knocking out games for the fun of it like that. Surely it would be better for the companies to tread a little more softly…

2 thoughts on “Not ceasing or desisting

  1. Haha! Great stuff.

    By the way, my ‘case’ comes up next week… will you defend me? ;)

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