This is an OCR'ed version of the letter from RTC's lawyer to the lawyer of my ISP in USA: [START LETTER] SMALL, LARKIN, LLP ATTORNEYS AT LAW EIGHTEENTH FLOOR 10940 WILSHIRE; 15OULEVARO LOS ANGELES, CALIFORNIA 90024-3945 TELEPHONE: (310) 209-4400 CABLE: SILK MARK TELEX: 650,2239696 FACSIMILE!. (310) 209-4450 December 10, 1999 THOMAS M. SMALL Direct Dial: 1310) 209-4404 E-Mail: TMS@SLIPLAW.COM John Courtney, Esq. Andrew & Kurth, LLP 4200 Texas Commerce 'rower 600 Tavis Houston, Texas 77002 Re: Unauthorized Use of Registered Trademarks and Unauthorized Use of Copyrighted Materials - Heldal-Lund Dear Mr. Courtney: Our firm represents Religious Technology Center ("RTC") in intellectual property matters. We often work with Moxon & Kobrin in connection with intellectual property issues. Ava Paquette has given me a copy of your letter dated November 22, 1999, which I have reviewed. We would like to express our appreciation for your client's termination of the copyright infringement on this site. At the same time, we must protest its failure to terminate the trademark infringement in the metatags. In addition, our client has informed us that there is now another copyright infringement on the site. We are therefore writing to you concerning the new copyright infringement and the metatags. Mr. Lund has placed one of RTC's copyrighted works known as "NOTs 34," on his web page on his Sage Network website. This work is registered with the United States Copyright Office under registration numbers: TKu 257 326 and 257 527. Copies of these registrations are enclosed. This work is located under the following URL: http://www.xxxx.net/archive/events/9805henson-case/nots34_anal.html#later Mr. Lund has reproduced this copyrighted work on Sage's website verbatim, with gratuitous remarks placed here and there, which, as you know, does not bring Mr. Lund within the protection of the fair use doctrine. As you may also know, our client has obtained numerous permanent injunctions regarding this very work in the United States and internationally, in connection with similar uses. The fair use arguments made in those cases were rejected. ----- [PAGE BREAK] ----- SMALL LARKIN, LLP John Courtney, Esq. Andrew & Kurth, LLP December 10, 1999 Page 2 For instance, in May 1998, a jury in the United States District Court in San Jose, California assessed statutory damages in the amount of $75,000 against a Mr. Henson for engaging in the same willful infringement on the Internet. Mr. Henson was also permanently enjoined by the court against further infringement. A United States District Court in the state of Virginia granted judgment for damages, costs, and a permanent injunction related to copyright infringement of similar works. Permanent injunctions have also been entered in three additional U.S. cases. Similar results have been reached in Europe. On September 14, 1998, a Swedish court enjoined a defendant who engaged in similar infringements, in addition to finding that his actions in placing RTC's copyrighted works on the Internet violated the owner's rights under Swedish copyright law. He was also fined for his illegal actions and ordered to pay $161,000 in litigation costs. On June 9, 1999, a Dutch court found an individual and numerous Internet service provis had engaged in copyright infringement by posting, or hosting, RTC's copyrighted works on their websites. The court ruled that the service providers must remove such postings as soon as they are notified of them, subject to a penalty of $2,500 for each day on which they do not comply. Mr. Lund's actions in this regard similarly violate United States copyright law. We therefore request that this work be removed immediately. We now turn to the matter of the metatags. There are numerous cases that clearly support RTC's position that Mr. Lund's unauthorized use of RTC's trademarks in the metatags on his website is a violation of RTC's trademark rights. First, we call to your attention several decisions in which metatag users were sued, and enjoined, because of unauthorized use of the trademarks of others on websites promoting competitive goods. The leading cases of this kind are Brookfield Communications v. Westcoast Entertainment, 174 F.3d 1036 (9th Cir. 1999), and Playboy Enterprises v. Calvin Designer Label, 985 F. Supp. 1220 (N.D. Cal. 1997). To these you should add Insituform Technologies v. National Eurotech Group, L.L.C., CA No. 97-2064 (E.D. La. Aug. 27, 1997) in which the judgment bars the defendant from using the plaintiff's trademarks INSITUFORM and INSITUPIPE as metatags. These cases establish that metatag use will be found to be trademark infringement where they raise a likelihood of confusion. Mr. Heldal-Lund argues that his metatag use is not infringement solely because it is critical rather than commercial. This argument has been refuted in a number of domain name decisions, which apply equally to the metatag issue. The principal cases of this kind are Jews For Jesus v. Brodsky, 993 F. Stipp. 282 (D.N.J. 1998) and Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q. 2d 1430. These decisions hold that use of a mark to create a false initial impression as to the sponsorship of a site constitutes trademark infringement. ----- [PAGE BREAK] ------ SMALL LARKIN, LL P John Courtney, Esq. Andrew & Kurth, LLP December 10, 1999 Page 3 More specifically, in Jews for Jesus, which is directly on point, the defendant registered a domain name similar to that of the religious organization, Jews for Jesus, for the purpose of diverting Internet users away from the religious organization and to his site where he pointed them to material which was anti-Jews for Jesus, warning them away from the religion. The court concluded that defendant's use of the trademark for this purpose violated the Lanham Act. One of the arguments made by the infringer was that use of the trademark constituted privileged non-commercial speech because "it is meant to call attention to issues of public importance." The Jews for Jesus court emphatically rejected this argument because: (1) the defendant created a "bogus" Jews for Jesus site intended to intercept "the audience sought by the Plaintiff Organization"; (2) he used the mark to create the false impression that the site was sponsored by the Plaintiff Organization; and (3) once at the bogus site, there were links which connected to other anti-Jews for Jesus websites. In Planned Parenthood, a case followed by the Jews for Jesus court, the defendant engaged in similar conduct. Planned Parenthood was the service mark of a non-profit organization who operated a website entitled "ppfa.org." The defendant, an outspoken critic and opponent of the plaintiff, set up a website entitled "planned parenthood. com". In finding that the defendant's conduct violated the Lanham Act, the court stated that: defendant's use of plaintiffs mark is likely to prevent some Internet users from reaching plaintiffs own Internet website. Prospective users of plaintiff's services who mistakenly access defendant's website may fail to continue to search for plaintiff's own home page, due to anger, frustration, or the belief that plaintiffs home page does not exist. There have been a number of cases following these holdings. In Minnesota Mining and Manufacturing Company v. Taylor, 21 F.Supp.2d 1003 (D.Minn. 1998), the court enjoined the defendant from using plaintiff's trademark "Post-it" as a registered Internet domain, finding that: "[t]he public interest supports enjoining [defendant's] actions. These actions constitute a misuse of the Internet, which is a resource that has the potential to benefit hundreds of millions of people. There is a strong public interest in stopping such misuses of this new technology." Other cases reaching similar results are Panavision International, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998); and SNA, Inc. v. Array, 1999 WL 359786 (E.D.Pa. 1999) (court found defendant's use of plaintiff's trademark in a website address ----- [PAGE BREAK] ----- SMALL LARKIN, LLP John Courtney, Esq, Andrew & Kurth, LLP December 10, 1999 Page 4 "highly likely to cause confusion". Someone looking for official information about the [plaintiff] will likely go to the address, either by guessing it and typing it in directly or by using a search engine and choosing this site from those listed because it sounds the most official. Internet users expect that a site with ... a trademark is somehow related to the owner of the trademark.") Please note that RTC has not asked that the site be disabled on the basis of the metatags. It has asked only that the metatags be removed. We recognize that Mr. Lund is entitled to his opinions and his right to express them, as long as he violates no laws while doing so. However, the case law is clear that his use of RTC's registered trademarks in his metatags on an anti-Scientology website creates a likelihood of confusion as to the source or sponsorship of his site by RTC in violation of the Lanham Trademark Act and state dilution laws, To confirm what Ms. Paquette has informed you, the terms "Scientology", "L. Ron Hubbard", and "Dianetics" used by Mr. Lund are trademarks owned by our client, RTC, which are registered federally, in various states, and in numerous foreign countries. Enclosed for your information are copies of the following registrations: _Federal:_ 1. SCIENTOLOGY: 1,775,441; 1,540,928; 1,342,353; 1,329,474; 1,318,717; 1,306,997; 898,018 2. DIANETICS: 1,432,039; 1,366,410; 1,347,651 3. L. RON HUBBARD HUBBARD: 1,546,167; 1,734,728; 1,318,637; 1,821,751; and 1,505,349 _California_ 1. SCIENTOLOGY: 74941; 73862; 71134; 17774 2. DIANETICS: 17775; 71135; 73859; 73590 3. L. RON HUBBARD: 71883; 20150 Mr. Lund is not authorized by RTC to use these trademarks in any way on or in connection with his website. Therefore, his use constitutes infringement, false and misleading description and representation, dilution and unfair competition under applicable law. ----- [PAGE BREAK] ----- SMALL LARKIN, LIP John Courtney, Esq. Andrew & Kurth, LLP December 10, 1999 page 5 In the authorized Scientology website at "www.scientology.org," you will see that, like the official Jews for Jesus website in the Jews for Jesus case, this website is used to sell books by Mr. Hubbard, the founder of the Scientology religion, and to offer courses, services and information. Mr. Lund, like the defendant in the Jews for Jesus, has numerous links to anti-Scientology sites on his Sage Networks web page. It is clear that he is misusing our client's trademarks precisely as the defendants misused those marks set forth in the cases cited above, i.e., to divert persons from reaching the official Scientology website. Accordingly, in light of clear case law showing that Mr. Lund's use of these trademarks violates our client's rights, we ask that you require him to delete our client's marks from his metatags. Concerning the copyright complaint set forth above, and in compliance with the Digital Millenium Copyright Act, I hereby inform you that the posting 2of this work by your subscriber on his website was not authorized by my client, any agent of my client, or the law. I declare under penalty of perjury that this information is accurate and that I am authorized to act on behalf of RTC in this manner. We also note that RTC has informed us that it has had thorough searches of this website done in the past, and this is the first time it has found the copyrighted NOTs work on the Sage Network website. Mr. Lund is obviously playing games by engaging in seriatim infringements that will simply continue unabated. We therefore ask that you investigate this point and take action to terminate his account to prevent this situation from continuing and causing unending trouble. If you have any questions or require any further information, please do not hesitate to contact me. Very truly yours, [signature] Thomas M. Small TMS/vk Enclosures [END LETTER]