Date: Wed, 22 Jul 1998 13:06:34 -0400(At least this one has an email address! -Miles)
From: Karin Segall <Ksegall@mail.darbylaw.com>
Subject: GUNS R US - I 0022
Dear Mr. Cheyney:
This office represents Toys "R" Us, Inc. and its affiliated companies which own and/or licensed to use the world famous and immediately recognized trademarks and service marks TOYS "R" US and KIDS "R" US. In fact, our client owns rights to the family of "R" US marks, including SPORTS "R" US, RACERS "R" US and a host of other marks all of which use the common suffice "R" US. Our client's predecessor was the first entity to ever use an "R" US mark. The first use dates back to the early 1950's.
Our client is also the owner of the Internet domain name registration TOYSRUS.COM. In fact, our client holds many Internet domain name registrations using the "R" US suffix, such as KIDSRUS, BOYSRUS, DOLLSRUS, GALSRUS, GIRLSRUS, MATHEMATICSRUS, MOVIESRUS, PARTIESRUS and SPORTSRUS. Moreover, although our client is immediately recognized as a retailer of toys, our client is also involved in various other businesses under one or more of the "R" US marks such as real estate services, insurance services and charity fund raising.
It has come to our attention that you are using the designation GUNS R US in connection with your Web Site. Your use of GUNS-R-US is an infringement of our client's rights under Federal and State Laws. In particular, consumers are likely to believe that your business is owned, licensed, sponsored or in some way connected to our client's business. Moreover, your use of the term also constitutes a dilution of our client's good will under the Federal Trademark Dilution Act.
One of the most valuable assets owned by our client is its marks. As a result, our client is very protective of these assets. By using GUNS-R-US, you are diminishing one of our client's most valuable assets. When necessary, our client has instituted litigation to insure that its "R" US family of marks are fully protected. In fact, there have been numerous litigations involving our client's rights to the "R" US marks and our client has prevailed in every such litigation.
We therefore demand that you immediately terminate all use of the aforementioned mark and/or any uses similar thereto. Therefore, you must remove all references to GUNS-R-US from your web site. You must also notify all search engines that you have removed all references to GUNS-R-US from your web site, and dismantle and meta tags or links which use GUNS-R-US.
We request that either you or your attorney advise us within ten days from the date of this letter whether you will comply with our client's request so that we can advise our client as to whether any additional action will be required beyond this point to terminate your infringement.
Please feel free to call me to discuss this matter at (212) 836-3743.
Darby & Darby P.C.
805 Third Avenue
New York, NY 10022
Date: Fri, 24 Jul 1998 08:21:01 +0000
Organization: The Zik Zak Corporation -- "Know Future"
To: Karin Segall <Ksegall@mail.darbylaw.com>
CC: firstname.lastname@example.org, email@example.com
Subject: Re: GUNS R US - I 0022
Ms. Segall -
First of all, your supposed client, "Toys R Us", is free to attempt to register "Guns R Us" with the US Trademark Office and engage in commerce dealing with the sale of firearms and accessories or, for that matter, to attempt to register "Torts R Us" and engage in commerce dealing with frivolous lawsuits. The Web pages listed below do not prevent your client from conducting commerce under those names. Please note that the registration of an Internet domain does not constitute the possession of a valid US Trademark and as such, your client should register those trademarks should it desire to conduct business in those fields.
I am quite aware of caselaw regarding this type of supposed infringement, but as you may not be aware, allow me to spell it out for you so I can save you time and your supposed client, "Toys R Us", further embarassment.
Existing caselaw provides protection for my Web pages, which may be found at the following Web addresses:http://www.cjnetworks.com/~cheyney/firearms/ http://www.cjnetworks.com/~cheyney/torts/These pages are protected under existing caselaw regarding parody and satire and as such, your client has no basis for a cause of action or award of damages of any kind. The comments on the first page are satirical in nature and the entire content of the second page is parody and hence both are protected by application of the "fair use" doctrine regarding copyright. Your client does not have a valid claim for copyright infringement.
The Web sites listed above are not corporate entities and exist in the case of the first page as a satirical jab at your client's overprotection of its supposed trademark on the backwards letter R and in the case of the second page as a parody of the last legal firm that tried to engage someone using a name with an "R Us" ending in a form of parody. These pages are ipso facto truthful in that the pages would have not come into existence if it were not for these behaviors.
As parody and satire, they also do not represent competition to your firm and your client's claims to trademark and copyright are irrelevant. There is no possible way to confuse toys for children with firearms for responsible, sane adults or to confuse these Web pages with solicitations to engage in any form of commerce whatsoever.
As such, your client's claims under 15 USC 1115 (the Trademark Dilution Act) are patently ridiculous since your client is not entitled to injunctive relief under 15 USC 1115(c)(4) and your client may become liable for damages under 15 USC 1116(d)(11) should it attempt to apply in bad faith for injunctive relief. Your client does not have a valid claim regarding trademark dilution and should your client apply in bad faith for injunctive relief, rest assured that I will seek the maximum amount of incidental, consequential, and punitive damages against your client that a court will award.
There is no means by which any consumer can be confused with your client's commercial services and the contents of these Web pages since your client is a commercial entity and these pages are a creation of parody and satire. Your client does not have a valid claim regarding dilution of trade name.
Under the General Agreements of Tariffs and Trade (GATT), your client's claim to exclusive use of its trademark of "R Us" is no longer valid. I cite as evidence two entities, one on the Web and one that is a North Carolina corporation:Roadkills R Us: http://www.rru.com/rru/ Cars R Us: Highway 441 North Franklin, NC 28734 SIC Code: 55210000 (Used motor vehicle retail dealer)I can attest that both entities have been in existence for over three years (as I have read Miles O'Neal's page in early 1995 and I purchased a vehicle from Cars-R-Us in 1990) and as such, your client's trademark claim is invalid since its trademark has been abandoned for over three years. Your client does not have a valid claim for trademark under GATT since it has abandoned its trademark prior to the inception of my Web pages.
Ms. Segall, I'm sure you are aware of the periodical known as Mad Magazine and you may also be aware of its now late editor, William Gaines. However, you may be unaware of the many suits against his magazine and him personally for parody and satire which were lost that were based on the same assumptions your client and your firm have made.
In addition, your action may also be construed as having a chilling effect on free speech, since the page you have questioned (the first Web address listed above) has negative comments and attitudes toward your client, comments which can be substantiated and which are not libelous. Courts have ruled numerous times in favor of a defendant who has made such statements. Your client does not have a valid claim regarding libel or untruthful statements made against it.
I can give you and your client additional citations of the portions of caselaw which are relevant, but I assume that since you are an attorney that you have the ability to research caselaw in a proper manner. However, should this not be the case, as my associates who are attorneys have indicated may not be the case for many in the field, please let us know and we will be happy to forward said citations to you and your firm.
As far as the claim that your client has won every litigation regarding its trademark that it has brought to court, this may be true, but the insinuation that it has won all its claims or that it will win this one is a baldfaced lie, as I will prove to you now.
You should become aware of the chronology which led to these pages. They came into existence because of your client's attempt to bully Miles O'Neal of Austin, Texas. His Web page, "Roadkills R Us", a.k.a., "So Sue Me", may be found at the following Web address:http://www.rru.com/rru/Your client received a mass boycott of its products and notoriety in the form of articles on the Internet, the Houston Chronicle, and many other publications. Miles O'Neal, on the other hand, received offers of pro bono legal defense against your client, offers which I believe to be bona fide.
Your client apparently chose to ignore the matter because it was drawing bad press -- a very wise move. Does your client really wish to go through this again for what it should consider a relatively small concern, one man's Web page among billions? Will an article about frivolous lawsuits against a parody named "Torts R Us" that is read by every attorney in the United States in the Wall Street Journal be sufficient to fully embarass your client into conducting itself politely in public? These things could happen -- since similar things did happen for Miles O'Neal.
Ms. Segall, your organization I am sure did not achieve profitability by performing pro bono work. If you insist on engaging me further regarding this matter, that is exactly what you will be performing.
Should your client have additional claims I have not covered which are valid, please contact me and I will discuss them with you and my attorneys. Until that time, your demands concerning a change to my Web page names are noted for future reference.
In the future, I suggest you conduct your correspondence in writing delivered by standard couriers or the US Mail. This reply may not be construed as a reply to a notice of action and does not absolve you and your client of proper notice of action. It serves merely to announce to you and your client why your course of action will not succeed and what potential risks there are in pursuing this course of action.
Christopher S. Cheyney
P. O. Box 669005
Marietta, GA 30066-0101
Last updated: 25 October 2001