Website, University Exchange Lawsuits

A trademark dispute between Harvard and notHarvard.com, an online educational website, erupted into a flurry of litigation after notHarvard asked a court in Texas to declare its domain name doesn't infringe on the University's trademark.

In response, on Monday the University sued the Texas-based company for $75,000 in damages, claiming in the lawsuit that notHarvard diluted the famous "Harvard" name.

In a press release, notHarvard asserted that it adopted the domain name in good faith, has taken appropriate measures to secure rights to the name, and attempted to negotiate the dispute with the University prior to taking legal action.

"We believe it is prudent for us to assure that no trademark issues will arise later, as our company and its brand become more established," said Judith Bitterli, notHarvard's CEO, in the press release. "Because it appears Harvard may be evaluating trademark issues, we are taking steps to resolve these matters now, not later."

But the University tells a different story.

Referring to the alleged negotiations between notHarvard and the University, Harvard spokesperson Joe Wrinn said, "It's a bunch of baloney."

"Nobody from the University had been in direct contact with notHarvard until [July 27]," he said.

"Then their lawyer called our lawyer and asked what it would take to settle [the dispute]. They discussed some figures...A little over an hour later, their lawyer calls back and says 'We're suing you,'" Wrinn said.

Some consider notHarvard's suit to be a preemptive legal strike aimed at staking the jurisdiction of the conflict in Texas rather than Massachusetts, where a judge would presumably be more sympathetic to Harvard's claim of trademark infringement.

In the Chronicle of Higher Education, one Washington lawyer said that the University would have to ask the Austin judge for a change of venue in order to have the trial held in Massachusetts.

Harvard alleges in its suit, filed in Massachusetts District Court, that Massachusetts has proper jurisdiction over the case.

Professor William W. Fisher, who teaches a course on intellectual property at the law school, said that notHarvard's lawsuit was probably a wise attempt to resolve the dispute earlier rather than later.

"If a company adopts a domain name, and is subsequently forced to abandon it, the result could be catastrophic to the enterprise," Fisher said. "NotHarvard doesn't want to be in a position a year or two from now in losing a trademark suit initiated by Harvard and then being forced to abandon its name."

Harvard maintains that, as in previous cases when it has tried to protect its name, the issue is more about principle than profit.

"The money is not the primary issue," said Wrinn. "The use of the name is."

NotHarvard bills itself as a "pioneer in developing online, branded universities and...the use of free, online education as a sales and marketing weapon."

Apparently, that mission is too close to Harvard's for the University's comfort.

"We get most concerned when someone uses our name in something related to teaching and research," Wrinn said.

Wrinn described the matter as a case of "confusion and dilution."

"They're using Harvard as a moniker and a marketing tool," he said.

While University officials and attorneys refused to reveal their litigation strategy, Fisher said that the University's grievance most likely rests on the idea that notHarvard is "diluting" Harvard's famous trademark.

"The dilution provision in the current federal trademark statute enables the holder of famous marks to prevent the registration or use of marks that would not confuse consumers but that either blur or tarnish the famous mark," Fisher said.

Harvard's suit alleges that notHarvard has violated several federal and state laws.

In the suit, Harvard accuses notHarvard of trademark infringement and unfair competition in violation of the Lanham Act, violating the federal trademark dilution act and trademark cyberpiracy.

In its suit against the University, notHarvard said it was "reasonably apprehensive" that Harvard was preparing to initiate legal action against it, according to the Chronicle. The suit cites one Harvard lawyer in particular, Allan A. Ryan Jr., as "accusing notHarvard of hijacking Harvard's name."

Ryan's comments were published in The Crimson this April. Ryan, who is no longer working on the case, said at the time that he was preparing a recommendation on whether the University should take legal action.

Wrinn said that the University had merely been considering legal action, and no decision had been made yet.

"Suing was an option, but we hadn't communicated or filed anything at the time," he said.

The University seems to have one decision already on its side.

In the press release announcing the suit, notHarvard claims that it has taken appropriate measures to register both the domain name and the trademark. However, notHarvard.com's application to trademark its domain name was denied by the U.S. Patent and Trademark Office (PTO) because it could be too easily confused with Harvard University.

In the decision, the examining attorney wrote that "The similarity of the marks and relatedness of the services are so great as to create likelihood of confusion among consumers."

The refusal was mailed March 10, and notHarvard has six months to appeal the ruling. However, it has not yet done so, according to the trademark attorney dealing with the case.

But both Wrinn and Fisher say that the PTO decision, while notable, is unlikely to be crucial to the court case.

"There's no direct bearing [on the lawsuit], but it's one indication that the PTO is sensitive to the same kinds of concerns that Harvard is asserting," Fisher said.

Although Wrinn dismissed the importance of the PTO decision, he did say that the University would submit that evidence in the trial's discovery phase.

"It gives, we think, a strong indication that we're on the right track," Wrinn said.

NotHarvard refused repeated requests for comments on both lawsuits and the PTO's denial of the notHarvard.com trademark.