Below are a series of letters I exchanged with Mr. Thomas Curtin of the New York City law firm of Nims, Howes, Collison, Hansen & Lackert. All three letters are exact HTML copies of the actual letters sent and received. This is a true story. Sometimes the truth is funnier than fiction.
Below there is a reference to the "UPS in Shield & Package Device". Here is what it looks like from the ups.com site.
| NIMS,
HOWES, COLLISON, HANSEN & LACKERT SUITE 3500 |
||
| OLIVER P. HOWES, JR. WILLIAM R. HANSEN CLARK W. LACKERT KAREN P. CLANCY ELIZABETH ATKINS THOMAS H. CURTIN KEITH E. SHARKIN --------------- ROBERT L. POWLEY EDWIN J. LUBIN PAUL W. GARRITY ROBERT M. WASNOFSKI, JR. CATHERINE S. REYNOLDS |
605 THIRD AVENUE, NEW YORK, NY
10158 (212) 661-9700 CABLE: NIMS TELEX: 237665 FACSIMILE: (212) 661-9213 E-MAIL: NIMS-LAW@MEP-I.SPRINT.COM |
BERT A. COLLISON IRVING N. STEIN AUGUST G. MARON BRUCE J.GROSSMAN ROBERT P. SCHWARTZ OF COUNSEL |
June 24, 1998
Certified Mail
Return Receipt Requested
Steve Kremer
Windows 95 & Mac Joke Wallpaper
(address withheld)
Re: jokewallpaper.com
Dear Mr. Kremer:
We are attorneys for United Parcel Service of America, Inc. ("UPS"). Our client has used UPS as a trade name and service mark for more than fifty (50) years and is the owner of numerous trademark registrations in the United States Patent and Trademark Office for its UPS mark as well as its famous mark consisting of UPS in a shield and package device (hereinafter "UPS in Shield & Package Device").
It has come to our attention that you are posting graphics at your internet web site located at "www.jokewallpaper.com". You invite people accessing your web-site to download these graphics which include counterfeits of our client's UPS in Shield & Package Device mark accompanied by the legend "U PICK UP YOUR OWN STUFF."
Your company's unauthorized use of an identical copy of our client's federally registered mark UPS in Shield & Package Device constitutes trademark infringement, unfair competition and dilution under the Federal Trademark Act. Your unauthorized use of our client's mark together with the aforementioned legend constitutes tarnishment of our client's business reputation.
We anticipate that you will claim your work is a parody but it is clear that you have appropriated our client's mark in its entirety and have utilized it for your own commercial purposes.
We therefore demand that you immediately discontinue and thereafter desist from the offering of these graphics and provide us with a written undertaking that you have ceased posting such graphics and will not use our client's trademarks in the future in connection with your commercials endeavors. If you do not agree to the foregoing demands, we will advise our client to take appropriate action to enforce its proprietary rights.
We require a response to this letter by no later than the close of business on July 10, 1998.
Very truly yours,
Thomas H. Curtin
77/bm
(address withheld)
July 1, 1998
Certified Mail
Return Receipt Requested
Thomas H. Curtin
Nims, Howes, Collison, Hansen & Lackert
Suite 3500
605 Third Avenue
New York, NY 10158
Re: jokewallpaper.com
Dear Mr. Curtin,
I received your letter of June 24, 1998 regarding my parody graphic "U PICK UP YOUR OWN STUFF" which uses the "UPS Shield and Package Device" as part of the parody. I believe that my use of your client's trademark is permissible under "fair use" provisions of trademark law and recent Supreme Court and U.S. Circuit court precedent.
I further feel that your claims of "unfair competition", "dilution of trademark", and "tarnishment" claims are without merit. My business is not the same as your client, so your claim of "unfair competition" is baseless. In reviewing recent precedent in parody cases for "dilution of trademark" it is apparent to me that my parody graphic does not even approach the threshold of either "blurring" or "tarnishment". I have not modified the UPS trademark to identify my goods or services thus "blurring" the line and possibly confusing consumers. UPS ships packages. JokeWallpaper.com is a parody and satire Web publication. How could a consumer be confused?
Some cases have found that a trademark is tarnished when its likeness is placed in the context of sexual activity, obscenity, or illegal activity. My graphic "U PICK UP YOUR OWN STUFF" is none of the above and is clearly a gentle social commentary on a current news event, the past strike against UPS by its drivers, and is clearly protected by the First Amendment. My Web site is a publication and its content is protected under case law interpreting the First Amendment to include copyrighted and trademarked material as "fair use" in "social commentary and parody".
All of that said I have chosen not to fight you on this matter. I am sure that United Parcel Service has an annual litigation budget in the six figures and I have a litigation budget in the zero figures. If you did file a trademark infringement lawsuit against me I am sure that in the end a court would rule my use of your client's trademark "fair use parody" but only after I spent thousands of dollars I don't have to defend myself. Thus I have modified the "U PICK UP YOUR OWN STUFF" graphic. Hopefully the new version now offered on the www.jokewallpaper.com Web site (printed copy attached) with changes to the shield, package, and title, presents no chance of confusion with the "UPS Shield and Package Device".
In your letter you ask for assurances that I will not use your client's "trademarks in the future in connection with your commercials endeavors". I can only assure you that I will not begin a shipping service under any name or compete with UPS in any arena. But it is possible that I will create future social satire, commentary, and parody that are clearly works of humor and protected speech under the First Amendment. These works of humor may use your client's trademark, and/or other corporate trademarks.
Finally I wonder if I might ask you for a personal favor, Thomas. I hope it's all right if I call you Thomas. Back in 1996 I was finally able to realize a life long dream to visit New York City. I spent a wonderful week visiting the Empire State Building, seeing Broadway shows and visiting the Statue of Liberty. Plus I ate hotel room service breakfast in bed every single morning! The trip to the Big Apple was a delight right up until my day of departure. As I was waiting for a taxicab to take me to the airport my carry-on bag was stolen by a brazen thief who picked it up and ran off. In the bag were the two most treasured mementos from my trip: a cast iron miniature copy of the Statue of Liberty and a T-shirt with "I
NY"
printed on the front. At the time I had to rush to make my plane so I didn't have a chance
to buy replacement souvenirs. I have since found it is very difficult if not impossible to
find these souvenirs anywhere but in the heart of New York City. Here's where you could do
me a huge favor.
Enclosed is a check for $20.00. Would you please buy me a "I
NY" T-shirt , Extra-Large in size, and ship
it to me at the address above. I would really appreciate it. Hopefully the $20.00 will
cover the cost of the shirt and any shipping costs. If not please let me know and I will
cover the difference. I do love New York and want the world to know it!
Thank you in advance.
Sincerely,
Steve Kremer
Encl.
| NIMS,
HOWES, COLLISON, HANSEN & LACKERT SUITE 3500 |
||
| OLIVER P. HOWES, JR. WILLIAM R. HANSEN CLARK W. LACKERT KAREN P. CLANCY ELIZABETH ATKINS THOMAS H. CURTIN KEITH E. SHARKIN --------------- ROBERT L. POWLEY EDWIN J. LUBIN PAUL W. GARRITY ROBERT M. WASNOFSKI, JR. CATHERINE S. REYNOLDS |
605 THIRD AVENUE, NEW YORK, NY
10158 (212) 661-9700 CABLE: NIMS TELEX: 237665 FACSIMILE: (212) 661-9213 E-MAIL: NIMS-LAW@MEP-I.SPRINT.COM |
BERT A. COLLISON IRVING N. STEIN AUGUST G. MARON BRUCE J.GROSSMAN ROBERT P. SCHWARTZ OF COUNSEL |
July 13, 1998
Steve Kremer
jokewallpaper.com
(address withheld)
Re: jokewallpaper.com
Dear Mr. Kremer:
Thank you
for your July 1, 1998 letter. Although we do not agree with your analysis of
trademark law that your alleged parody graphic is protected by the First Amendment, we
note that you have modified the graphic nonetheless.
We also note from your letter that you reserve
the right to use the UPS mark in connection with future parodies. Obviously, we respect
your right to exercise your First Amendment freedom of speech by using parodies regardless
of whether UPS or a third party is the target of such parody. Our objection
was to the use of an identical counterfeit of our client' s mark. As noted in your letter,
the alterations made by you to the graphic will serve to dispel any potential confusion.
We thank you for your cooperation and understanding.
Turning to your request, please find enclosed
an "I 
New York" t-shirt in the size requested. We hope that
you will visit our fair city again despite your prior misfortune.
Very truly yours,
Thomas H. Curtin
77/bm
Enc.
So for now SPU actually stands for... U Pick Up Your Own
Stuff or Stop Poking fun at Us U Pick Up Your Own
Stuff or Stop Poking fun at Us |
 Here I am in my new shirt visiting my local UPS Next Day Air drop off box. |
 |
bottom include
|
   |
|||
|
|
||||
   
|
||||
Feel free to download any
graphic on this site to use on your personal computer. But please do not
copy on to disk, redistribute, attach e-mail, or post the graphics or text on any Web
page, FTP site, news group, Intranet or mailing list. We welcome links to this site but please link only to the home page and do not link to individual graphic
files.
All of the text and graphics on this Web site are Copyright ©1995-2005 Steven M.
Kremer. All Rights Reserved.
Bookmark this page. Hold down your "Control" and "D" keys and it's done.
Send us an e-mail to jokers@jokewallpaper.net. Ideas, suggestions, flames...we read 'em all! If you are writing with a question check our F.A.Q. page first, it may have your answer.
Home Page: http://www.jokewallpaper.com
