[Cabal] Fwd: [Fwd: RE: revised Gaim letter]

[Sean Egan]

---------- Forwarded message ----------
From: Karen Sandler <karen at softwarefreedom.org>
Date: Jan 23, 2007 2:34 PM
Subject: [Fwd: RE: revised Gaim letter]
To: Sean Egan <seanegan at gmail.com>

Sean,

So frustrating - looks like AOL will not accept the representation
regarding other potential claims. I'm trying to schedule a call with Jim
tomorrow to discuss this further.

Karen


-------- Original Message --------
Subject:        RE: revised Gaim letter
Date:   Tue, 23 Jan 2007 17:27:54 -0500
From:   Davis, Jim <Davis.Jim at ARENTFOX.COM>
To:     Karen Sandler <karen at softwarefreedom.org>
CC:     Davis, Jim <Davis.Jim at ARENTFOX.COM>



Karen,

I guess there was a misunderstanding.  AOL is not comfortable with the
proposed language and it questions its value and applicability to this
matter.  Given that all correspondence and negotiations have focused
solely on trademark issues, it is appropriate to limit the agreement
accordingly.

I would be happy to discuss that issue with you, but my client's
position has not changed.

Sincerely,


Jim Davis

James R. Davis, II
Arent Fox LLP
1050 Connecticut Avenue, NW
Washington, DC  20036
Phone:  202-857-6169
Fax:  202-857-6395

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-----Original Message-----
From: Karen Sandler [mailto:karen at softwarefreedom.org]
Sent: Tuesday, January 23, 2007 4:38 PM
To: Davis, Jim
Subject: Re: revised Gaim letter

Jim,

Please let me know when we can expect to hear from you on this.

Karen

On Jan 11, 2007, at 2:45 PM, Karen Sandler wrote:
> Hi Jim,
>
> Have you had the chance to review my email to you from last week?
>
> many thanks,
> Karen
>
> Karen Sandler wrote:
>
>> Jim,
>>
>> Happy new year. Apologies for the delay - our office was closed last
week.
>>
>> Regarding your email below, I believe there is a misunderstanding
>> with this issue. As I recall, we came to an agreement in principle
>> over the phone in July that, in addition to the release in connection

>> with AOL's objections to the use of the name Gaim, AOL would give a
>> representation that there were no other IP related claims that AOL
>> knows it has against Gaim right now. We arrived at this compromise
>> after some negotiation, making this non-trademark related provision a

>> representation as opposed to a release and adding a knowledge
>> qualifier.  The provision as drafted is not a release, but merely a
>> limited representation as to AOL's knowledge at the date of the
>> signing. Of course, if AOL knows that it has any other objections to
>> Gaim's activities we'd like to know about them now.  After narrowing
>> the scope of the release, I was under the impression that the
>> agreement satisfied your concerns This provision is a very valuable
>> part of the agreement to my client, so please let me know if you
would like to discuss this further over the phone.
>>
>> many thanks,
>> Karen
>>
>>
>> Davis, Jim wrote:
>>
>>
>>> Karen,
>>>
>>> Thank you.  I have reviewed the revised letter; however, the
>>> paragraph concerning non trademark issues (i.e., patents,
>>> copyrights, trade secrets, etc.) was not removed.  In my prior
>>> correspondence (see
>>> attached) I expressed AOL's position that it is inappropriate to
>>> settle this trademark dispute with an agreement that goes beyond the

>>> substantive issues raised.
>>>
>>> Please let me know if this was an inadvertent omission, or if there
>>> is a disagreement or misunderstanding on this issue.  If the latter,

>>> I would be happy to discuss this with you in more detail.
>>>
>>> I look forward to hearing from you.
>>>
>>> Sincerely,
>>>
>>>
>>> Jim Davis
>>>
>>> James R. Davis, II
>>> Arent Fox PLLC
>>> 1050 Connecticut Avenue, NW
>>> Washington, DC  20036
>>> Phone:  202-857-6169
>>> Fax:  202-857-6395
>>>
>>> CONFIDENTIALITY NOTICE: This e-mail and any attachments are for the
>>> exclusive and confidential use of the intended recipient. If you
>>> received this in error, please do not read, distribute, or take
>>> action in reliance upon this message. Instead, please notify us
>>> immediately by return email and promptly delete this message and its

>>> attachments from your computer system. We do not waive
>>> attorney-client or work product privilege by the transmission of
this message.
>>>
>>> -----Original Message-----
>>> From: Karen Sandler [mailto:karen at softwarefreedom.org]
>>> Sent: Thursday, December 21, 2006 3:58 PM
>>> To: Davis, Jim
>>> Subject: revised Gaim letter
>>>
>>> Jim,
>>>
>>> Here is the letter, revised to reflect our conversation yesterday.
>>> The free software redlining software we use is a bit aggressive, so
>>> entire sentences sometimes are marked as revised when only something

>>> small has changed.
>>>
>>> Also, I spoke to my client and they agree to continue to include
>>> disclaimer language (that they are not affiliated with AOL) on their

>>> website.
>>>
>>> I hope that we can resolve this matter soon!
>>> Karen
>>>
>>> Karen M. Sandler
>>> Counsel
>>> Software Freedom Law Center
>>> 1995 Broadway, 17th Fl.
>>> New York, NY 10023
>>> (212) 461-1908 direct
>>> (212) 580-0800 main
>>> (212) 580-0898 fax
>>> karen at softwarefreedom.org
>>> www.softwarefreedom.org
>>>
>>>
>>> IRS Circular 230 disclosure:
>>> To ensure compliance with requirements imposed by the IRS, we inform
you that, unless expressly stated otherwise, any U.S. federal tax advice
contained in this communication (including any attachments) is not
intended or written to be used, and cannot be used, for the purpose of
(i) avoiding penalties under the Internal Revenue Code or (ii)
promoting, marketing or recommending to another party any transaction or
matter addressed herein.
>>>
>>>
>>> --------------------------------------------------------------------
>>> ----
>>>
>>> Subject:
>>> FW: draft Gaim settlement letter
>>> From:
>>> "Davis, Jim" <Davis.Jim at ARENTFOX.COM>
>>> Date:
>>> Tue, 5 Dec 2006 09:54:04 -0500
>>> To:
>>> "Karen Sandler" <karen at softwarefreedom.org>
>>>
>>> To:
>>> "Karen Sandler" <karen at softwarefreedom.org>
>>> CC:
>>> "Davis, Jim" <Davis.Jim at ARENTFOX.COM>
>>>
>>>
>>> Karen,
>>>
>>> Thank you for your e-mail.  AOL remains concerned about the
>>> name/mark GAIM and would like to resolve this  issue amicably.  For
>>> several reasons, however, AOL cannot accept the proposed agreement.
>>>
>>> The proposed release goes beyond the GAIM issue and extends to all
>>> claims "relating to AOL's trademarks arising out of conduct or
>>> matters occurring as of and prior to the date of this letter."  This

>>> release would apply to unnamed individuals (i.e., all people who
>>> contributed to and distributed the software) who do not sign the
>>> agreement, regarding any action that relates to AOL's trademarks,
>>> including potentially cybersquatting, bad faith infringements,
>>> unauthorized licensing, counterfeiting, and potentially numerous
>>> other trademark-related matters.  This language is too broad.
>>>
>>> AOL will not grant a release to unidentified people who are not
>>> signatories to, or bound by, the agreement.  AOL similarly will not
>>> execute an agreement that goes beyond the specific trademarks at
issue.
>>> To address AOL's concerns, and still provide your client with the
>>> release it seeks, I propose something like the following:
>>>
>>> "...any and all actions, causes of action in any form, suits,
>>> claims, rights, damages, losses, costs and expenses (including
>>> attorneys' fees and costs actually incurred) relating to use of the
>>> name and mark GAIM on or in connection with instant messaging
>>> software, provided that such use of GAIM occurred as of or prior to
>>> the date of this letter and such use was known or should have been
known to AOL."
>>>
>>> I think it would benefit both parties if we identify the new
>>> software name so there is no chance that a subsequent trademark
>>> dispute will arise.
>>>
>>> The agreement must be binding not only on Instant Messaging Freedom,

>>> Inc., but also the same people and entities that are seeking a
>>> release, i.e., its successors, assigns, officers, directors, owners,

>>> employees, insurers, agents, representatives and attorneys and all
>>> persons acting by, through or in concert with them.
>>>
>>> Please confirm that Instant Messaging Freedom, Inc. is incorporated
>>> and, if so, where.  We were unable to find any reference to this
>>> entity in our corporate database searches.
>>>
>>> To help prevent consumer confusion regarding affiliation or
>>> endorsement, AOL requests that your client place disclaimers on its
>>> Web site, publication, brochure, etc. stating that AOL is not
>>> affiliated with and does not endorse the software.
>>>
>>> Please confirm what is meant by "Web addresses that include the name

>>> 'Gaim' will only be used to the extent necessary to reflect the
>>> existing use of the name 'Gaim' as a technical term or identifier in

>>> the source code."  If your client stops using the mark GAIM, it
>>> seems that GAIM should not show up in Web addresses, URLs or domain
names.
>>>
>>> AOL cannot accept the fifth paragraph.  The signatories do, in fact,

>>> have an ongoing obligation to abide by the terms of the agreement,
>>> and the obligation goes beyond merely renaming the software.  AOL
>>> must have the right to file suit in the event of breach or other
>>> infringement.  To address this issue, AOL proposes to amend the
>>> paragraph by deleting the first sentence and deleting from the
>>> second sentence "is in any way related to any" and inserting
"includes a."
>>>
>>> We look forward to hearing from you regarding the above-referenced
>>> comments.  I would be happy to schedule a time when we can discuss
>>> this matter.
>>>
>>> Sincerely,
>>>
>>>
>>> Jim Davis
>>>
>>> James R. Davis, II
>>> Arent Fox PLLC
>>> 1050 Connecticut Avenue, NW
>>> Washington, DC  20036
>>> Phone:  202-857-6169
>>> Fax:  202-857-6395
>>>
>>> CONFIDENTIALITY NOTICE: This e-mail and any attachments are for the
>>> exclusive and confidential use of the intended recipient. If you
>>> received this in error, please do not read, distribute, or take
>>> action in reliance upon this message. Instead, please notify us
>>> immediately by return email and promptly delete this message and its

>>> attachments from your computer system. We do not waive
>>> attorney-client or work product privilege by the transmission of
this message.
>>>
>>> -----Original Message-----
>>> From: Karen Sandler [mailto:karen at softwarefreedom.org]
>>> Sent: Tuesday, November 28, 2006 7:32 PM
>>> To: Davis, Jim
>>> Subject: Re: draft Gaim settlement letter
>>>
>>> Jim,
>>>
>>> Can you let me know whether the settlement letter will be signed up
>>> by AOL or whether AOL is no longer interested in pursuing their
>>> objection to the use of the name Gaim by Instant Messaging Freedom?
>>>
>>> many thanks,
>>> Karen
>>>
>>> Davis, Jim wrote:
>>>
>>>
>>>
>>>> Karen,
>>>>
>>>> Thank you for the call and I am sorry I was not in the office to
>>>> speak
>>>>
>>>>
>>>>
>>>
>>>
>>>
>>>> with you.  My client is traveling and I do not yet have a
>>>> substantive reply to your latest correspondence.  I will follow-up
>>>> with AOL and get back to you as soon as I know more.
>>>>
>>>> Sincerely,
>>>>
>>>>
>>>> Jim Davis
>>>>
>>>> James R. Davis, II
>>>> Arent Fox PLLC
>>>> 1050 Connecticut Avenue, NW
>>>> Washington, DC  20036
>>>> Phone:  202-857-6169
>>>> Fax:  202-857-6395
>>>>
>>>> CONFIDENTIALITY NOTICE: This e-mail and any attachments are for the

>>>> exclusive and confidential use of the intended recipient. If you
>>>> received this in error, please do not read, distribute, or take
>>>> action
>>>>
>>>>
>>>>
>>>
>>>
>>>
>>>> in reliance upon this message. Instead, please notify us
>>>> immediately by return email and promptly delete this message and
>>>> its attachments from your computer system. We do not waive
>>>> attorney-client or work product privilege by the transmission of
this message.
>>>>
>>>> -----Original Message-----
>>>> From: Karen Sandler [mailto:karen at softwarefreedom.org]
>>>> Sent: Monday, August 07, 2006 6:14 PM
>>>> To: Davis, Jim
>>>> Cc: Sean Egan
>>>> Subject: draft Gaim settlement letter
>>>>
>>>> Jim,
>>>>
>>>> Here is a first draft of the settlement letter between AOL and Gaim

>>>> that we think fairly represents the terms agreed to in spirit over
>>>> the
>>>>
>>>>
>>>>
>>> phone.
>>>
>>>
>>>
>>>> Please let us know if you have any questions or comments on this
>>>>
>>>>
>>>>
>>> draft.
>>>
>>>
>>>
>>>> Kind regards,
>>>> Karen
>>>>
>>>> Karen M. Sandler


IRS Circular 230 disclosure:
To ensure compliance with requirements imposed by the IRS, we inform you
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