Category: Copyright Exchange 2000

Costco

Date: Wed 27 Dec 2000
From: Burman, David J.-SEA 
Subject: Costco

As you might recall, I am one of the attorneys for Costco.  As
you say on your website, you "have yet to respond to [my] nice 
letter."  Or to my phone calls.  I know that you made some changes 
to your Costco Soulmate pages, but you have not taken them down, 
as you promised John Morgan over a year ago.

Costco has a sense of humor, has nothing against you or Burning
Man, and does not want to sue anyone.  But they also do not want 
to lose any rights, especially to more commercial ventures, by 
standing by now.  Without suggesting that these steps would be 
sufficient if done by someone with a commercial motive, would 
you consider the following, assuming you aren't ready to take 
the pages down completely and intend to participate in Burning
Man again next year? 

1.  Add to your disclaimer that your efforts are noncommercial,
that they are intended as humor, and that you believe they are 
protected by the First Amendment.

2.  Change the name on the web pages and at Burning Man to a
derivative that will still evoke the connection to Costco while 
not directly using that name ("Kostko"?).

3.  Remove "Costco" from your metatags.  

Please call if you have any questions.  We will continue to monitor.  
Any commercial use of the Costco name, marks, or copyrighted
materials will result in action without any further warnings.

Dave Burman
Perkins Coie

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letter

Date: Mon 7 Aug 2000
From: Burman, David J.-SEA 
Subject: letter

BY EMAIL AND US MAIL

Re:	Costco Soulmates Trading Outlet

Dear Mr. Modes:

When you spoke to my colleague John Morgan about your "Costco
Soulmates" store at Burning Man and your related Web site, you
stated that it was just a joke and would soon be ended. 

Costco has a sense of humor and a respect for your free speech
rights.  At your request, Costco delayed formal action to allow
you voluntarily to terminate use of the Costco mark.  You have
not done that.  Instead, it appears that you have expanded the
Web pages using Costco's intellectual property and that you
intend to use the Costco mark at Burning Man again this year.
That forces us to decide whether your use of Costco's
intellectual property is necessary to your expression.  

It appears that use of "Costco" is unnecessary to the joke.  The
joke was that a large warehouse store would sell "low cost
quality soulmates."  You have made far more use of Costco's
intellectual property than is necessary to evoke the Costco
image.  You could have used another name for your joke, but
instead you have used Costco's name and familiar red logo.  You
admit that you were not trying to attack or comment on Costco;
you state instead that you are an admirer.  Your own "fine print"
and your use of hidden text and metatags suggests that you just
wanted to use what you accurately call a "famous" name to draw
attention to your store and to your talents as a Web developer.
As you say on your site, "Yes, I do it for money."

The "disclaimer" that you added to the Web site is useless.
Putting aside its text, it is not tied to every use of the Costco
mark and is not even on the first page of the Web site.  It
appears that the only way someone might happen to find the
disclaimer is if they wonder why the Costco name at the bottom of
the page is an active link; the other eleven uses of the Costco
name on that one page do not link to the disclaimer.  We do not
agree that it would have been sufficient, but you easily could
have made the disclaimer visible instead of hiding it.

Costco does not own the idea of warehouse stores, and as far as
Costco is concerned you are free to have a Soulmates warehouse
store at Burning Man, and to mimic the public practices of
warehouse stores.  You are not authorized to use the Costco name,
however, whether at Burning Man, in the text of your Web site, or
in hidden text or metatags, and you must avoid any confusion with
the real Costco.

We will continue to monitor your use of Costco's intellectual
property.  Costco respects your First Amendment rights.  We urge
you to respect Costco's IP rights by not using Costco's name and
by taking all reasonable steps to avoid confusion with the real
Costco.  There is ample time for you to modify your store and
your Web site before the next Burning Man.  Your prompt
cooperation will ensure that your activities are expressive and
not infringing.

Sincerely,
David J. Burman

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