From: "Paul Levy" <plevy AT citizen DOT org>
Date: April 18, 2009 3:19:10 PM MDT (CA)
To: "Mike Godwin" <>
Subject: Re: Upshot and status

You keep saying that you take no issue with "the site itself." You have, however, challenged the domain name, which under the law can only be judged in conjunction with the site. You properly have chosen not to try to explain why you have valid claims under American trademark law WRT the domain name in conjunction with the site, even though your letter explained that you are proceeding because of your sacred obligation to enforce your "trademark," and that you are concerned about whether Internet users would be misled into believing that there is an affiliation or connection with your client, which is of course a paraphrase of the Lanham Act. If you are ready to conceed that you will not pursue any trademark claims in court, because you now recognize that precedent stands against you, that is good progress. Please let me know.

Apart from trademark law, the only basis you gave in the demand letter to compel Wikipedia Art was a possible violation of "the UDRP." But that doesn't get you anywhere, because the UDRP just provides an alternative forum for pursuing trademark claims. Even if you end up deciding not to "sue Wikipedia Arts in trademark," in the sense of filing an action in court, and instead decide to file a UDRP claim, I have indicated that WE will seek a declaratory judgment of non-infringement because we are not willing to allow this dispute to be resolved by reference to private law instead of the law of the United States that governs both your client and mine.

So you really need to choose. If you are making a legal demand on the ground that Wikipedia Art has a legal obligation to yield to you, at least to the extent of giving you concessions that will be enough that you refrain from instituting litigation in either a public or private tribunal, then we should deal with it that way, and you can undertake to explain why you believe Wikipedia Art has any obligation to yield. If on the other hand, you are ready to retract the LEGAL demand, and simply ask Wikipedia Art to give you the domain name or otherwise alter its site out of kindness, then it makes sense for the discussion to proceed on that basis.

Paul Alan Levy
Public Citizen Litigation Group
1600 - 20th Street, N.W.
Washington, D.C. 20009
(202) 588-1000