Seattle Trademark Lawyer

The Seattle Post-Intelligencer today ran a great feature arising out of “Spam King” Robert Soloway’s first local interview.

The paper portrayed Mr. Soloway’s story as one of rags-to-riches-to-rags.

He suffers from Tourette’s syndrome and was the unpopular kid in high school. He found social acceptance on the Internet, then lots of money — $700,000 to $800,000 per year once his spam business got going.

As the P-I put it:

“He once thought nothing of jetting to Vegas and tipping a cabbie $1,000.

“But in the year since his May 2007 arrest, he had to find a job and worked for a while in a leather-cleaning factory for $9 an hour. The feds seized his Prada, Versace, Gucci and Armani jackets, forcing him to shop the clearance rack in Macy’s when he needed a winter coat.

“He once owned a fleet of luxury cars, but his last one, a Mercedes SL 500, was repossessed, so he now walks or takes the bus. He eats at McDonald’s. He spends much of his time in the company of his lawyer….”

Despite losing his life in the fast lane, Mr. Soloway says he’s happier than he ever was and that he’s sorry for what he did.

For the most part.

“I’m not minimizing what I did, but the fact is, it is just an e-mail,” he told the paper. “If it does become a nuisance, get a spam filter. You can get them for free.”

STL’s July 22 coverage of the Western District’s sentencing of Mr. Soloway to 47 months in prison here. 

Photo credit: Andy Rogers / Seattle Post-Intelligencer

Since Spam Notes’ Venkat Balasubramani is temporarily off the grid, I’ll pinch hit for him by mentioning that Robert Soloway — Seattle’s very own “Spam King” — was sentenced today. Western District Judge Marsha Pechman gave him 47 months.

Mr. Soloway reportedly sent tens of millions of emails per day and made $700,000 spamming in the last four years.

He will have to pay the $700,000 he received as restitution.

Mr. Soloway told a local TV station he thought the sentence was fair.

Prosecutors had asked for nine years in prison and a fine of between $400,000 and $1 million.

The case reportedly is Washington’s first under the CAN-SPAM Act, which criminalizes the sending of spam.

Graphic credit: Kirotv.com.

In October 2004, Microsoft Corp. filed suit against John Does 1-50, d/b/a Myauctionbiz.biz, for alleged “unauthorized use of Microsoft’s computers and computer systems to send millions of misleading and deceptive unsolicited commercial e-mail messages, or ‘spam,’ in violation of federal and state law and Microsoft policies.”

Eventually, Microsoft identified a number of the unknown defendants, including Saul Waizer, a Florida resident, who Microsoft alleged was involved as an affiliate in the spam operation.

Mr. Waizer did not answer Microsoft’s complaint and in November 2006, a default judgment was taken against him in the amount of $57,000.

The news here is that Microsoft appears to have collected the full amount of this judgment. On May 28, 2008, it filed a Full Satisfaction of Judgment Against Saul Waizer stating:

“Microsoft … hereby acknowledges receipt of full satisfaction of the judgment against Judgment Debtor/Defendant Saul Waizer under the Judgment entered by the Court on November 27, 2006 …, along with all interest that has accrued on the judgment and any related fees and costs.”

Collecting on a default judgment? Against an out-of-state spammer? That’s remarkable!

This morning, a client forwarded me an email it received from a company ostensibly doing business in China. The email read as follows:

RE: Intellectual property rights

Dear CEO,

We are the domain name registration organization in Asia, which mainly deal with international company’s in Asia. We have something important we need to confirm with your company. On the April 14, 2008, we received an application formally. One company named [Fake Company] wanted to register following Domain names:

clientstrademark.asia
clientstrademark.cn
clientstrademark.com.cn
clientstrademark.com.hk
clientstrademark.com.tw
clientstrademark.hk
clientstrademark.tw

Internet Trademark: clientstrademark

through our body.

After our initial examination, we found that the keywords and domain names applied for registration are the same as your company’s name and trademark. These days we are dealing with it. If you do not know this company, we doubt that they have aims other than to buy these domain names. Now we have not finished the registration of [Fake Company] yet, in order to deal with this issue better. Please contact us by telephone or email as soon as possible.

My client’s question: “Is this real?”

My response: “No.”

Later in the day, another client forwarded me a similar email from a purportedly different Chinese company. We’ve periodically gotten emails like this in the past, but this seems to be turning into an epidemic. At best, these messages are overly-aggressive attempts to drum up business by scaring trademark owners into registering domain names they don’t need. At worst, they’re outright fraudulent.

For instance, on Monday a client called me about a bill he received from an overseas company for work it allegedly had performed to obtain a “world trademark registration.” My client was relieved to hear it was a scam. He would have been less happy to get that news if he had already paid the bill. Beware!

This morning, the Seattle Times wrote about the Hormel v. Spam Arrest decision as part of its “Sunday Buzz” feature. As discussed here, Seattle-based Spam Arrest won the proceeding, enabling it to keep its federal registration for SPAM ARREST in connection with software that fights unsolicited commercial email.

The decision involving Spam Arrest marked the “first and only” win a software company has had over Hormel, the maker of SPAM canned meat, over the everyday use of the word “spam” in a trademark to refer to unsolicited commercial email. 

The article quotes me as saying this is the first time I can think of in which a trademark became a common word not through genericide (as happened with aspirin and escalator) but through mutation. Spam Arrest doesn’t use “spam” to refer to canned meat — a proprietary use Hormel retains — but to mean unsolicited commercial email.

“Hormel has tried to put the genie back in the bottle” by attacking anti-spam software companies’ use of the term, but the Trademark Trial and Appeal Board’s decision found Hormel “does not have a monopoly over ordinary English words, which the trademark board found spam was.”

Hormel’s hometown newspaper, the Star Tribune, describes the dispute here. The TTABlog discusses it here.