Riding the

fiedertc M. Wilf
Frederic Wilf is a Philadelphia lanr5zerwho tries computer-related intellectual property cases. In his article, Wilf shows how he rides the telephone wire
rvith his compuier to investigate new cases and to preparc his client's defense.

{Editor's Note: Information about the public telecommunications and database services mentioned in this chapter can be found in Appendix A, "On-Line
Services Inventory."J

Beyond the plastic dome of the Bourse
hrilding the Philadelphia sky was gray. Mer-

programming language. There are dozens of
computer programming languages. For popular
programming languages, there may be several
dozen compilers available.
The trademark in question was SKED, the
name of both a computer programming language

cfoants in the four-story shopping area were
recuperating from the recently completed
Christrnas season. Above the shops, behind six*o_v tall glass walls, office dwellers were glad

fr: the breather. The Bourse Antiphonal Brass
nuuld not play again until Thanksgiving.
The telephone ran& disturbing my reverie.
ih'partner Gerryr Elman called fiom home to

and the plaintiffs compiler for the


language. Our client's principal thought he also

could use the language's name as part of the
trademark for the SKED language compiler that
he planned to market. The company is Med

neil me we had a new client. A Vermont soflware

Associates, Inc., so he called the compiler
MEDSKED. Thus, the case of SKED versus
MEDSKED was joined. State Systems II, Inc. v.
Med Associates, Inc., No. 88-0064 (E.D. Pa., filed

cmpany incorporated in Pennsylvania was sued
in Fhiladelphia. The general counsel in Vermont
called a lavrz5zer he knew in Washington, DC; the
Itashington lavr.yer called Geny. The human
Our new client was accused of trademark
infingement. The goods in question were
cmpilers. A compiler is a computer program
*lat reads source code, humanly perceivable
Saternents, and translates the source code into
a brrnat, called an object code, that is executed
tn- a computer. In other words, a compiler is
a c[mputer program that creates other computer
Generally, each compiler can read and
translate statements in only one computer

Jan. 6, 1988).

Our firm included GerrSz, me, and our staff.
Plaintiffs counsel consisted of a large multinational firm based in New York City. The multinational firm also was using a 30{avr6rer firm as
local counsel in Philadelphia, besides the
plaintiffs general counsel in the Midwest.
In speaking with our client, Geryz learned
something about the plaintiff and the background of the SKED language. More facts were
needed immediately, as plaintiff had already
moved for a preliminary injunction. A hearing


2: Evaluating the

Case, the Client, and the Law

was scheduled before the judge in less than three
weeks. Our client's new venture was in ieopardy
before he made his flrst sale.

SKED. While conducting the search, mytelecom-

munications software recorded every keystroke
and response fi:om Dialog to a fiIe on my
computer. The search took less than half an hour
and incurred less than $50'00 of database


I immediately divided the initial
I turned on my modem' Software on

Gerry and

my desktop computer told the modem to dial
the Oialog Information Service' The computer
transmitted information to the modem; the
modem turned my computer's commands into
modulated tones. Those tones traveled over a
copper wire that connected with the telephone
and radio
-urr" borr"ed
Dialog's computers

,y*tl-. By wire, optic fiber, microwave,


Dialog is a database of databases' Several
dozen information publishers, including Dun
and Bradstreet, R.R' Bowker, and others' provide
information to Dialog, which then loads the
information into its computers' Information may
be searched by subject, key word, or both'
(the time
Users are charged for connect time
they are actually connected to Dialog)' plus
computer resources used in conducting
,"urth"", and formatting and displaying the
results. Different databases on Dialog charge at
different rates'
Thomson & Thomson, a Boston-area trade-

mark search firm, is the publisher of two

databases on Dialog. The Trademarkscan Federal
Database keeps track of all trademarks registered

with the U.S. Patent and Trademark Office (PTO)'
as well as pending federal applications' The
Trademarkscan State Database tracks registrations of trademarks and trade names in individual states'
Neither Gerry nor I had seen the pleadings'
but we knew plaintiff claimed rights to the term
SKED. By searching the Trademarkscan
Databasl for all
term SKED, I found
three variants with the PTO: SKED, SKED-11' and
SUPERSKED. I also found unrelated trade"marks

for unrelated goods that contained the term

Trademarkscan revealed the three federal

registrations of plaintiffs marks' Under the
Tridemark Act, a registration on the Principal
Register (one of two federal registers) serves as
p.i-u facie evidence of the validity of the
irademark, the registration, the registrant's

or,rmership of the trademark, and the registrant's

exclusive right to use the trademark'

Tradernarkscan also revealed that plaintiff
filed with PTO an affidavit of incontestability for
eachmark. Thiswas notgoodnews' The affidavits
of incontestability added strength to the federal
ffi davit
registrations. Under the Trademark Act' a


of"incontestability may be filed only after
trademarks are registered on the Principal
Register for five or more years with no final
adverse decisions on the registrant's claim of
ownershiP or right to register'
The net efiect of the affidavits of incontestability is that many defenses otherwise available
to a defendant in trademark infringement
litigation would not be available to our client'
We"could not win by arguing that the plaintiffs
marks were weak or merely descriptive' To
the case, we would have to prove that the
plaintiffs marks were generic or- that the
trademark registration should not have been
issued in the first Place'
Naturally, this information affected our
strates/. we had a difficult, up-hill battleto fight'
nath# than simply defend against plaintiffs
claims, we would have to go on the offensive
against the plaintiffs marks' Any'thing less
be ineffective.

Trademarkscan also revealed that plaintiff'

in filing and prosecuting three


registrations, had listed the goods as "computer
on magnetic tape'" There was no

indication that the primary formative-the root
of the trademarklalso was the name of a
computer programming lan$uage' SKED had
been disclaimed as a name of a computer
language. Ttris information would later sewe
the ba;is for our argument that a computer
language, by itself, is neither a good nor a
urri tni, cannot be protected under
States TrademarkAct, which protects names
other designations of goods and selvices

WiIf: Riding the Telecommunications Wire
Background lnformation
Meanwhile, Gery plugged in his Radio Shack
-\Iodel 100, a computer the size of a volume of
Federal Supplement and now cheaper than a
l-ear's subscription. From his home, Gerry
searched the Electronic Yellow Pages on Dialog.
They revealed basic information about the

plaintiff, including the address, telephone

number, approximate numberof employees, and

rhe nature of its business as revealed by its
standard industrial code (SIC). We now knew the
approximate size of the plaintiff company, and
could better assess its ability to fight an expensive
legal battle.
Gerryz's search of several databases regarding

rnicrocomputer soflware provided information
on plaintiffs products and marketing strategies.
Finally, Gerryu searched several databases that
included abstracts of scientifi c research articles,
including the Psychinfo database on a service
called BRS.
Gerryz's research confirmed that plaintiffs
principal, formerly a professor and researcher,
putrlished many scholarly articles discussing his
toftware and the SKED programming language.
lfany more abstracts were for articles written
br.unrelated parties who researched and used
different implementations of the SKED programming language in their scientific research. In each
abstract, the term SKED was used to describe
all implementations of the programming language. This information corresponded to the 15l'ear history of plaintiffs software, primarily
under a series of government grants, which our
client previously described to Gerryr.
TWo hours had passed since Geny's telephone call to me. But we now had most of the
factual foundation for the legal arguments that
u.e would.make in the coming months. At this
point, without the pleadings, discovery, or the
use of a hard-copy library, and without having
to exercise much more than fingers on a
keyboard, we probablyknewmore of the publicly
arailable facts of this case than the hundreds
of lar,rozers in the law firms that represented the

From my research, we ordered copies of the

file for each of plaintiffs applications for
trademark registration. The files confirmed that

plaintiff never told the PTO that SKED also was
the name of a computer programming language.
Based on Gerry's research, we obtained
copies of the scholarly articles from local
university libraries. Footnotes in several of these
articles recited the government grants under
which the SKED programming language and
plaintiffs software were developed. The articles
also provided the names of several other
computer programs that included the term

We sent several letters to the granting
agencies under the Freedom of Information Act.

That shook loose copies of relevant portions of
the grant documents. These detailed the scope
of the research and the expected results. This
served as grist for our argument that many rights
to the SKED programming language and plaintiffs software, including ownership of the term
SKED, at best belonged to several different
entities. These entities included the government
agencies that gave the grants, the educational
institutions that supported the research, and
individual academics who helped conduct the

Back on the wire, I traded messages with
other lar,tSzers on CompuServe. CompuServe is
a computer service that provides an electronic
meeting place for subscribers. In effect, CompuServe operates as a conference center with
smaller areas where people with similar interests
can meet, trade messages, and upload and
dor,rmload files of interest. Users also can send
private mail and conduct database research.
One forum on CompuServe is Lawsig. Lawsig
is frequented by attorneys, police officers, and
others interested in the law around the world.
I was looking for, but not finding, precedent
to support the argument that a computer
programming language was not a good or a
service-as those terms are used in trademark
law. Thus, the designation of a computer
prngramming language could not serve as a
trademark for an implementation of that same
language. Except for one ongoing case involving
Microsoft's QuickBASIC trademarf defended by
E. LSmn Perry of San Francisco, I had found little
helpful precedent. At my request, Peryu was kind

Section 2: Evaluating the Case, the Client, and the Law

Choosing the night Wire to Ride
Frederic M. Wilf


Prices mentioned in this sidebar are current as of March 15, 199 l.]

The greatest cost in using telecommunications in the law practice is the time taken away from
billable activities to learn how to use this technology. lf telecommunications is new to you, then

you should contact a local group of computer users or hobbyists for instructions and for
recommendations of which hardware and software you should use. Many such groups run electronic
bulletin board systems (BBS) services, which may be accessed 24 hours per day at no charge. The
BBSs are an excellent way to learn how to trade messages, download and upload files, and search
simple databases.
Courts throughout the United States are increasingly using BBS technology to make information
available to lawyers and others. Lawyers may dial up the county BBS and access the court's docket
and research the county land use records.
Then, there are the national services. As discussed in the accompanying article, these services
are quite extensive and powerful. However, there is a price to pay. The following price information
for a few of these services is current as of March 199 l, and is stated in U.S. dollars. Pricing changes
constantly and many services offer discounts.
ABA/net (800-322-4638) is sponsored by the American Bar Association. ABA/net charges $50.00
to initiate an account, plus a minimum usage charge of $20.00 for each network identification.
The basic ABA/net services include private mail, public message boards grouped by topics of interest
to attorneys, and databases of resources for lawyers. Several of the databases require the payment
of surcharges. LEXIS is available with no minimum charge, and connect time is charged at $39.00
per hour plus search charges (which on the average range from $20.00 to $50.00 per search). WESTLAW
charges a minimum of $45.00 per month, and connect time is charged at $270.00 per hour, but
WESTLAW does not charge for individual searches. ABA/net training is available on line, and several
of the database providers offertrainingsessions around the country. MCI Mail (800-444-6245) charges
an annual fee of $35.00 to maintain an electronic mailbox but does not charge for on-line time.
It also charges for each message sent from one MCI Mail mailbox to another MCI Mail mailbox
based primarily on the message's size. Up co 500 characters costs 45 cents; 50 l-2,500 characters
(continued on next poge)

enough to send me a facsimile of one of her

Our strategy consisted of placing our client


on a more equal footing with the plaintiff.

On Lawsig, L. J. Kutten responded to my plea
for help with a citation to one of his books. Kutten
was spending the year in Hawaii and logging
on fircm somewhere in the Pacific Basin. Despite

Because of our database and follow-up research,
we had unearthed evidence that supported our
arguments that plaintiffs marks were not all they
were cracked up to be. Accordingly, we asked
the judge for expedited discovery from the
plaintiff. The plaintiff had earlier requested and
was granted expedited discovery of our client,
the defendant.

the immense distance from my Philadelphia
office to Kutten's home in Hawaii, the cost of
trading detailed messages with him via CompuServe was little more than the cost of talking with
him on the telephone. It was also far more
convenient as we did not have to compensate
for the difference in time zones.

We filed a motion for expedited discovery
and for a continuance of the date of the
preliminary injunction hearing. In the brief I

WiIf : Riding the T ele c ommunic ations Wire

costs 75 cents; 2,50 I -7,500 characters costs $ 1.00; and each additional 7,500 characters cost
another $ I .00.
Surcharges are added when the message is sent by Telex. Surcharges also are added if the
document is sent to another computer service such as CompuServe or printed by MCI Mail on
a laser printer and mailed ($2.00 for up to six pages in the United States). Overnight delivery
of up to six pages costs $9.00 in the United States. To have your letterhead reproduced on the
first page of printed letters costs an additional $30.00 annually. Your letterhead is stored with
MCI Mail.
CompuServe lnformation Service (800-848-8 199) charges a one-time set-up fee of $39.95, including
$25.00 of on-line credit. After three months, the fee is $2.00 per month. On-line charges are by
the hour and vary by modem speed-$ 12.50 per hour for 1,200 and 2,400 bits per second, and
$22.50 per hour for 9,600 bits per second. Access to the lQuest database gateway requires the
Executive Option, which incurs a minimum monthly charge of $10.00. CompuServe also allows
for the sending of messages by fax or to other telecommuncation services.
Dialog (800-334-2564) charges $45.00 to open an account, plus $35.00 per account annually.
Different options for training are available from the purchase of videos to $230.00 for one day
of hands-on training, manuals, and a $ 100.00 on-line credit.
Each communication session on Dialog is charged at $30.00 to $300.00 per hour depending
on the database, plus data output charges. For data displayed to the screen or printed off line,
the rate ranges from no charge to $100.00 per record. Another $10.00 to $12.00 per hour for
telecommunications charges is added when access is gained through Dialog's communication network,
or via Tymnet or Telenet.
BRS (800-955-0906) has three pricing plans for its 150 databases. BRS Search Service and
BRS Colleague are available 22 hours per day. BRS Search Service charges an annual fee of $80.00,
plus a charge per connect hour that ranges from $8.00 to $139.00, depending on rhe database.
BRS Colleague charges a one-time registration fee of $95.00 and a monthly minimum charge of
$20.00, but it provides databases on a discounted per hour bjsis after 6:00 p.M. (user's local iime)
and on weekends. BRS/After Dark is available only from 6:00 pm. (user's local time) to 4:00 n.y.
during the week, and is available all weekend. BRS/After Dark charges a one-time registration fee
of $75.00, plus a monthly minimum charge of $12.00. BRS/After Dark databases are discounted
and range from about $8.00 to $8 L00 per connect hour.

made my arguments, and for support cited
Peryz's briefs, Kutten's treatise, and several other

well-known treatises in computer, copyright, and
trademark law. After that, the judge granted the
continuance and expedited discovery.

uploaded, received, and edited by our client, and
then returned to us in machine-readable formats
in less time than it would take Federal Express
to pick up one envelope.
In due course, one document traded with

the client was the settlement document that
ended the litigation.

Throughout the litigation, Gerryz and I traded
documents, letters, and musings with our client
by MCI Mail, an electronic mail service. On


several occasions, documents were created,

consent judgment, filed with the court on April

The plaintiff and defendant entered



we still maintain conference facilities athave
4, 1988. If it were not for the early
Uo".t". Increasingly,
had a weaker
research, our client would have
air"or"."a the value of telecommunications'
position from which he could bar$ain'
including, Iwould expect, our one-time
preparing this article'
TWo years later, while

t spot e li.i,h or. client who said he was happy
MED*lit .ut", of his software, now renamed
PC. Plaintiff continues
Plaintiffs SKED, SUPERSKED' and SKED-11
in fulI

federal trademark registrations are
force and effect.
Gerry and I moved to the suburbs'

and Phitadelphia, eenns:vti'^"'"'



In the twenty-first century' riding the wire

will be the primary means of conducting
and communicatingwith
best way to prepare for
begin riding the wire in

Jirm oJ Elman

** uiti""i1' 'n1!11":::::"^^:^,i:T:;:I?:ri,io!,!ii.*""
an"mphasl" onthe computer industry



& wili' which has olJi'::-:-y:'1: