The Lawyers Who Won

The wizards behind the curtain:

Ron Coleman and Colby Springer took this case on pro bono, and it was their work and dedication that formed the successful defense against Intel Corporation's lawsuit.

Stepping up to defend against a challenge from a monster like Intel Corporation's legal department is not decided lightly. Many other attorneys turned me down before I met Ron and Colby. But they not only accepted this case, they did so with enthusiasm, and they showed unwavering, bedrock support throughout this ordeal. And I received without doubt the same attention and resources as any paying client would have. In fact, rather than me having to prod them to do more work, it was usually the other way around.

As is often the case in life, it was not their legal counsel so much as their friendship that made the real difference. At the end of the day their optimism, humor, and intelligence kept me motivated and in good spirits throughout a long and trying process.

I owe them great thanks.

Jeffrey Wright


Their bios:

Ron Coleman
Goetz Fitzpatrick LLP, New York & New Jersey
Author of one of the top American legal blogs, http://www.likelihoodofconfusion.com

Ron Coleman is a commercial litigator and business attorney whose work focuses on copyright and trademark infringement claims involving the Internet--including advising clients how to avoid them. He is an expert on First Amendment and intellectual property rights, especially pertaining to the Internet. Coleman, general counsel for the Media Bloggers Association, has published numerous articles about intellectual property rights and the Internet; in fact, the first piece published on this topic by the American Bar Association Journal was written by Coleman in 1995.


Colby Springer
Carr & Ferrell, Palo Alto

Colby Springer is a partner in the Intellectual Property and Litigation Practice Groups of Carr & Ferrell. Mr. Springer has experience in all fields of intellectual property law, advising clientele at every level of business development—from start ups to public companies. Mr. Springer counsels clients on acquisition and protection of intellectual property portfolios, specifically with regard to patents and copyrights. Mr. Springer has also represented a number of companies in patent, trade secret, copyright and antitrust suits. Additionally, Mr. Springer has provided counsel to various clients on interference and re-examination proceedings pending before the United States Patent Office.

GRAMMATICAL B - Don't Ask, Don't Intel from Rancho Aparte on Vimeo.

Intel Corporation SURRENDERS!!!!!

Just before the Thanksgiving holiday, we received notice that Intel Corporation was dropping its case against us.

The reason, they said, it because we are making, "no current use [of the intel string] in commerce." They mean that Americas News Intel Publishing LLC is not currently producing the Mexico Watch Intelligence Service newsletters.

But this, like so much of the disingenuous campaign they have waged against us, is patently bogus.

From the beginning, and throughout our settlement talks, our written discovery, and our deposition testimony, we asserted our right to use "intel" in our name and in our domain, for commercial uses or otherwise.

We reserved the right to resume its use at any point in the future for business purposes or otherwise.

We specified very carefully (and the deposition record will confirm this when it is published) that we only stopped publishing our Mexico Watch Intelligence Service at our latinintel.com site because negative prevailing economic conditions dovetailed with their lawsuit, forcing us to discontinue operations. We also specified very carefully that we may elect to revive or reorganize our service in the future.

This was not an operational issue. This was a LEGAL ISSUE through and through. And that was made explicit and abundantly clear throughout this entire case.

Intel Corporation dismissed this case not because we had suspended publishing. They dismissed it because they knew they would lose.

In coming days we will post more details, including information on refunds of the excess donations to the donors. We also will share some of the finer points of the legal process, in particular shedding some light on the brilliant roles played by our pro bono counsel.

So stay tuned.

In the meantime... for any other victims of trademark bullying, whether it be at the hands of Intel Corporation or another large company leveraging the federal court system to its advantage, please feel free to draw inspiration from this:

No Cash On The Barrel Head

Some people aware of this case are under the impression that a monetary settlement is at stake, and that the owner of Americas News Intel Publishing LLC stands to gain a considerable sum of money in the near future.

To set the record straight: The defendant is not seeking, nor is plaintiff Intel Corporation offering, a considerable sum of money. Financial settlement is not even being discussed.

Ever since we received the first Cease & Desist notice from Intel Corporation back in 2007, we have been urged by people around us to (a) wrench a juicy settlement in exchange for compliance, or (b) demand a staggering price to transfer the latinintel.com domain to their company.

In fact, though we had no concept that our name or domain would be coveted by Intel Corporation until the day that we read the C&D, once we appreciated the value this business asset might have to them we offered to sell it to them at a fair market value. Not for millions of dollars, as acquaintances urged, but for a reasonable and fair sum. This is no secret, we have disclosed this offer earlier in this blog, and the letter containing that offer is available for viewing at that post.

As time went on we became more informed about the problem of trademark bullies in general, and Intel Corporation's nefarious history of abusing its size and position in particular. A financial solution no longer seemed appropriate or desirable. Eventually we instructed Intel Corporation to cease and desist making settlement offers, which we advised their lawyers we would not even entertain, and this, too, has been documented and publicized in earlier posts in this blog.

Deposed

I, Jeffrey Wright, was deposed by Intel Corporation as part of the process of the lawsuit against my company, Americas News Intel Publishing LLC.

In order to attend this deposition, I had to fly to the Bay Area. (The deposition took place in Menlo Park at the spanking new offices of Carr & Ferrell, one of the firms defending us.) Intel Corporation paid for half the trip. And, since it was their deposition, for the video and the court reporter, as well as the cost of having their lawyers, both internal and external, present. Billable hours, ladies and gentlemen, billable hours.

The deposition was remarkable.

And it was remarkable in that it was hugely uneventful. At this stage in the game we fully expected an aggressive deposition, a last-ditch fishing expedition to dredge up something to support their tenuous claims, and a rhetorical blitz aimed at producing a statement from me that would, in the proper twisted context, seem to work in their favor in the litigation.

But instead we had a polite and superficial discussion over coffee. The company used just over half of the time they were entitled to before packing it in. We started late morning and ended in early afternoon. We didn't even need a lunch break. One of the persons present on their side kept checking and typing into an iPad during the questioning. (Surely just taking careful notes on the deposition.)

The questions I was required to answer were, for the most part, very basic inquiries: Where did I go to high school? Where have I worked in the past? Or silly: Why I would purchase marketing lists rather than compiling them on my own? With what periodicity were the Monthly Reports produced?

The sharpest point of the deposition came at the end, when I was asked if I "hated" Intel Corporation lawyers (see the post below) and if I considered that Intel Corporation's brand policing efforts were indeed, as I had written in a blog post at some point, based on tactics similar to those employed by the Gestapo. Lawyers tend to be a very literal bunch.

As far as substantive legal queries, though, the plaintiff spent few energies.

They poked around the issue of intent, i.e. did I seek to gain advantage from using the English-language string 'intel' when I formed my company and selected the name. It is so patently clear that an intelligence business might choose 'intel' in its name or domain for prima facie reasons that we did not waste much time (or, from their perspective, shareholder money) thrashing around here.

They trotted out several examples of content from Mexico Watch newsletters in which Intel Corporation or chip-manufacturers or chip-manufacturing were mentioned in the content. The point being that we are competing in the same market. Recall that Intel Corporation is claiming to be in the newsletter business now, and so if we are both producing newsletters on microprocessors and semiconductor trends, then I could conceivably be held to be infringing or diluting. But obviously Intel Corporation is not a newsletter business, nor was Mexico Watch a technology information service. Technology is an important segment of the Mexican economy and the stories the lawyers cited during the deposition were simply part of the broader issue of foreign investment which we covered in our reporting. But we covered virtually every aspect of the economy at one time or another and mentioned thousands of companies, sectors, trends, and investments.

So the deposition ended without much to report. We bought tickets for a cage fight and saw some light sparring instead.

Why would a company who claims to be defending a $30-billion asset (the Intel brand name) from the "irreparable damage" of infringing and dilution by my company (oh, and cybersquatting) breeze casually through their single chance to directly question the company's principal? To hold me accountable? To beat a confession from me? Apparently my deposition is not relevant to their legal strategy at this point.

So what could this mean? Your guesses are as good as mine.

Jeffrey Wright

Hate

During the deposition, counsel for Intel Corporation produced a Facebook message between a personal friend and Jeffrey Wright. The attorney wanted to know, "Do you hate Intel Corporation's lawyers?" The message said as much.

You might wonder why they are going through these messages in the first place. And why they brought this point up. So do we.

How do Jeffrey Wright's personal sentiments bear on the legal issue in this case? We'll let you speculate for yourself, since we have no idea whatsoever.

But for the record, no, Jeffrey Wright not does harbor personal animosity for the individuals engaged in the prosecution of this case. Let's face it, they deserve some sympathy. They are tasked with defending a generic common English-language word as though it were private property belonging to their employer/client. (Some of the lawyers involved are in-house, others external.)

For whatever myopic reason, the company chose an English-language word as its name back in the late 1960s. Now the organization has made the collective policy decision to ignore the prior existence of the word in the public domain, and individuals in that organization are forced to act accordingly, should they wish to prosper there.

So the question is not a matter of intense personal dislike. They are probably not bad folks in their private lives, and in our experience with them they are usually cordial in speech and manner, and also very sharp dressers, be assured of that. And for whatever reason, Intel Corp. lawyers needed to hear this reassurance during the deposition. Now they can read it here, as well.

Nevertheless, Intel Corporation undeniably and inevitably generates and accrues animosity toward itself by choosing to use the legal system to steamroll small companies such as ours. Intel Corporation has a right to defend its trademark, as do all companies. But someone -- an individual, a person -- needs to stand up at some point and say: "This is wrong. We do not own this word in its generic sense. We know that, and we should not be leveraging the court systems in this way."

Sure, a systemic reform of federal trademark rules is necessary in order to curtail the trademark bullying that has become a truly endemic problem. Still, the fact remains that some companies are exploiting and abusing the system more than others, and Intel Corporation is among the worst offenders.

The individuals accepting pay in exchange for prosecuting these dark ambitions are to be pitied, not hated.

We wonder, though, how they would feel if their private Facebook conversations were demanded under litigation, scrutinized by strangers, and read for the public record? Jes' sayin'.