FamilySearch and Today's Special Edition Tirade against both IP Attorneys AND the LDS Church

Okay, today's post comes courtesy of New Zealand's National Business Review:

http://www.nbr.co.nz/article/kiwi-man-wins-legal-battle-with-mormon-church-over-a-family-affair-105723

A family affair?

This is a classic contemporary trademark dispute, pirate domain name registrations and all. Here's the timeline (pieced together from the relevant opinions issued by the High Court of New Zealand and the Court of Appeal of New Zealand, with help from the USPTO, WHOIS and the Internet Wayback Machine):


May 1990: The Corporation of the President of The Church of Jesus Christ of Latter-day Saints files for a trademark registration for the following stylized mark:

For "compact discs containing genealogical records for computer research and retrieval of family ancestral lines."


Sometime in 1991: The Church of Jesus Christ of Latter-day Saints begins using the mark "FAMILYSEARCH" in New Zealand, mainly in relation to the burgeoning genealogy research services the church had begun offering in 1990 in the United States.


December 1994:
The church files for the first of several New Zealand trademark registrations for the mark "FAMILYSEARCH" for "paper, cardboard, and articles of paper or cardboard (not in other classes), printed matter, printed publications, books, stationery, instructional and teaching material (except apparatus), advertising and promotional material in this class; all connected with or relating to genealogy and family ancestral lines."


June 1998:
Intellectual Reserve, Incorporated (the LDS church's then new intellectual property holding company, formed in 1997, for reasons still not entirely clear to me) registers the Internet domain name "familysearch.org" and puts up their first genealogy website, the first version being archived by the Wayback Machine in early 1999, found now at http://web.archive.org/web/19990508210319/http://www.familysearch.org/.


September 2000:
New Zealand entrepreneur Robert Sintes registers the Internet domain name "familysearch.co.nz" and puts up his "family tracing service" website, the first version being archived by the Wayback Machine February 2, 2001, found now at http://web.archive.org/web/20010202085000/http://familysearch.co.nz/.

About this time, Intellectual Reserve takes notice of Sintes' website, and promptly sets their attorneys on him. Sintes does not back down.


July 2005:
Several years into his dispute with Intellectual Reserve, and possibly to create/bolster legitimacy to his claim for rights to the familysearch.co.nz website, Sintes files for his own New Zealand trademark registration, claiming the stylized mark:



Intellectual Reserve promptly files an opposition in the Intellectual Property Office of New Zealand, which rules against Intellectual Reserve. Intellectual Reserve appeals the ruling to the New Zealand High Court.


December 2007:
The New Zealand High Court again rules against Intellectual Reserve. Intellectual Reserve appeals the ruling to the Court of Appeal of New Zealand.


July 2009:
The Court of Appeal of New Zealand affirms the High Court's ruling, delivering another defeat for Intellectual Reserve. According to Sintes (and not inconsistent with my own experience), the church spent approximately half a million dollars on the failing litigation to this point.

As of this writing, familysearch.co.nz is in free parking.




Alright. So what?


Well...during a substantial portion of this time period (though not in the past year or so), I was helping to fund the church's legal attack on what really amounted to a small-time genealogist/long-lost-family investigator who was attempting to operate a low-level .co.nz domain name.

Which begs, of course, the question: Why does the church care to spend so much effort trying to rub this little guy out?

Hard to say. I mean, this is pretty typical aggressive IP protection behavior from corporate America. Although I hardly think that most companies are scrambling to spend five hundred thousand dollars to litigate out domain name disputes (most simply pay up a few thousand bucks to buy the name), players like the RIAA, the MPAA, Disney, even the Embroidery Software Protection Coalition have taken the age-old art of bullying into the brave new world of modern intellectual property.

But the Church of Jesus Christ of Latter-day Saints is, or claims to be, the kingdom of God on Earth.

Would Jesus really use tithing monies to sic lawyers on Kiwis?

Setting aside the propriety of bringing a case in the first place, given the relatively miniscule threat Mr. Sintes posed to the disproportionately wealthy and powerful LDS church, the next question is a purely objective legal one.

With this, I think, Mr. Sintes has problems. Aside from his victories in the New Zealand courts, Mr. Sintes probably ought not to crow too loudly. After all, he's operating in a market with considerable overlap with the genealogical services the LDS church offers. His mark is remarkably similar to both the 'FAMILYSEARCH' word and stylized marks registered to the church. And the domain name registration timeline strongly suggests that Mr. Sintes simply chose the famliysearch.co.nz name to ride on the high degree of future consumer recognition of the familysearch.org site.

Courts, U.S. and otherwise, have issued poorer trademark decisions, but not many. While 'FAMILYSEARCH' is certainly more descriptive than I would ever recommend to a client, it's certainly not so descriptive as to render it clearly non-distinct or to be a bar to trademark registration (as the Court of Appeal insists it should have been).

So, while it's pretty nasty for the church to go after Mr. Sintes, I have a small amount of sympathy for him as the kind of small-time pirating gnat that used to irritate me when I worked with the LoveSac IP portolio.

So, when am I going to get to the tirade against IP attorneys?

I've already implicitly blasted them in my rant against corporate IP bullies. These attorneys are the corporate bullies' hired guns. In my experience, most IP attorneys prefer to shy away from litigation in cases like this. However, a big player like the LDS church, bloated with cash and anxious to vomit out some on a big firm's lap, is pretty hard to turn away.

More directly, I also have to take this opportunity to really, seriously wonder who in their right mind advised the church in the creation and ridiculously descriptive naming of their myriad corporate holding companies. Honestly. Intellectual Reserve? Property Reserve? Ag Reserve? Farmland Reserve? Who comes up with these names?

I mean, the church isn't trying to register these things as trademarks, thankfully, but didn't ever strike anyone in the giant phallus on North Temple that there might be a psychological impact on a court when you waltz into court, demanding that your client, Intellectual Reserve, has the right to distinctiveness in their choice of trademarks?