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