ACS Sues Google Over Use of 'Scholar'

headisdead writes "John Batelle is noting that 'The American Chemical Society yesterday filed a complaint against Google, claiming the new Google Scholar infringes on its own product, called SciFinder Scholar.' Fairly typical subscription vs. free dispute, but with intellectual property issues thrown in for good measure."

Scholar = a common word, an not even the full name

[Adhemar]

Next, Coca-Cola will sue Pepsi Cola over the use of the word Cola.

that's pretty good for the ACS

[kaedemichi255]

although i highly doubt they will win their side of the dispute, seems like a great publicity stunt for them and their pay-to-use service ;) plus, their service is only a subset of google's service, so really it is just a clash of appropriate titles. can't google just scratch the name "google scholar"?

Re:Madness!

[OAB_X]

This kind of story falls under the "Asinine" category on fark.

apropraite name

[ssand]

Google Scholar gets the message out though, as Google Scholars allows you to find articles. With Scholarships, and scholars, its an apropriate name, and I can't see them winning against Google.

Isn't Scholar a generic word?

[Anonymous Coward]

The article indicates the basis of the suit is that Google Scholar infringe upon SciFinder Scholar trademark. Granted that Google Scholar appears to do more or less what SciFinder Scholar do (minus the fee.)

But I doubt anyone would confuse the word Google and SciFinder. If their entire suit hinge on the word Scholar, I think ACS is facing an uphill battle.

The Real Problem

[kmactane]

The real problem here is that you can trademark a word in common use, like "scholar". Since the ACS did exactly that, roughly 6 years ago, they have no choice but to go after Google (or else have their own trademark claims painfully diluted, or maybe just nullified).

I don't much like what's happening here, but if I were Google, I'd be strongly considering just changing the name of my service. (IANAL, but it really looks like Google will have an uphill battle here.)

WTF?

[Anonymous Coward]

"Google Scholar" isn't even a very good name. Hardly worth fighting over.

Re:Curious name clash

[tomhudson]

Not really - the ACS will lose this one. From the article:

But when someone uses a trademark similar to ours, we have no choice but to take action—to protect the goodwill that we have built over the years and to prevent the likelihood of confusion in the marketplace.

What goodwill - the general public never heard of them. Google's product, on the other hand, is aimed at the general public - not the same product in either design or use. So there's no possibility of conmfusion.

Furthermore, the names are not that similar. Looks like the next trend in marketing: Pimp your product by suing

I'm sure SCO has prior art on that, though.

Lawyers for dummies handbook, page 154

[lottameez]

From the ACS lawyer: ..."But when someone uses a trademark similar to ours, we have no choice but to take action--to protect the goodwill that we have built over the years and to prevent the likelihood of confusion in the marketplace."

Sounds like this lawyer is spouting his basic litigation script and is getting ready to go to trial.

These guys have been doing this stuff for six years and I'm sure almost nobody here has heard of them. I doubt seriously there will be any "confusion" in the marketplace or "loss of goodwill".

Dear Google,

[modpoints]

Please remove the "mail" part of the product name "Gmail", as it infringes on half of our product's name. Thanks, The Hotmail Staff

Re:Scholar = a common word, an not even the full n

[The Snowman]

I can't believe that McDonalds have trademarked the phrase "I'm lovin' it" (plus a dozen over translations of the phrase in other languages)... that is just so wrong.

It sounds stupid and trivial, but remember the frame of reference for trademarks. If I start my own fast food restaurant chain and use "I'm lovin' it" as a slogan, I think it is fair for McDonald's to sue me (and win) for trademark infringement. My use of the slogan would easily cause confusion with customers. Maybe they think my restaurant is sanctioned or supported by McDonald's when it is not.

If I started an amusement park and used that slogan, McDonald's would have a tough time getting me to stop unless I was also infringing other trademarks (e.g. the entrance to the park was a pair of golden arches).

Re:The Real Problem

[miu]

You can trademark a term in general use, or generic term, for your product - but if the product itself is naturally described by means of the trademarked term then you may lose certain exclusive rights protected by trademark. That is why MS does not have exclusive rights to "Office" or "Windows", those are natural terms applied to those products. 'Scholar' as a term for a search assistant is probably not generic enough when applied to this product - librarian probably would be though.

If I had to guess I'd say google will either license the name or change it, it'll probably just be easier to change the name at this point though.

Re:Language

[nomadic]

Step 1: Copywrite the dictionary
Step 2: ???
Step 3: Profit!

Step 1: Instantly assume any trademark dispute of any kind is completely meritless without looking at the actual issues involved or even reading the article.
Step 2: ???
Step 3: Profit!

Re:Funny?

[kfg]

The trademark protection on the term "Webster's" in connection to dictionaries expired LONG ago.

Trademarks don't expire. Ever. They may become unenforcable.

What currently exists is the ability of ANY publisher to take the term "Webster's", and combine it with their own name, or another term, and THAT term is a trademark, and enjoys trademark protection.

Of course. I said nothing contrary to this.

As to the contents, you'll find that only the unique parts in your "copyrighted" dictionary are covered by copyright. . .

Again, of course, but of course, the issue is left to the courts to decide what is and is not your unique contribution.

. . .the actual list of words and their definitions aren't.

Work;
1. Technically defined as F=wd, but in practice is defined as
2. Something to avoided.

"Work" and "F=wd" I cannot claim copyright protection on. The whole I can.

You'll find that the definitions are often a unique contribution. Read Dr. Johnson's, it's a hoot. Maybe the funniest serious dictionary ever.

That's why most dictionaries include "extra material" - so that they can actually put a copyright notice in the book.

Publishers of almost all public domain works employ this trick, as well as the trick of introducing deliberate mistakes into the work as a watermark.

KFG

Google is for-profit

[jeif1k]

I wish people would get over this notion that something like this is a "subscription vs. free", implying that Google is doing charitable work. Whether their service is advertising supported or a loss leader, they are maximizing return on investment for their stock holders. Google Scholar may be "free", just like your Yellow Pages may be free, but it's still a product. And Google will go aggressively after people who may be violating their trademarks.

However, in this particular case, I think the dispute is silly just because of the names: "SciFinder Scholar" and "Google Scholar" are not confusingly similar.

ACS misses the big picture

[kencurry]

I'm a dues paying ACS member, have been for 10 years. I have never once used Scifinder scholar, I have found the ACS literature searching to "suck" and I avoid using their site. "pubmed" is much better.

The main problem with any of these is that you can find abstracts, but generally have to pay $25 dollars for the PDF. What bugs me about that is much of the research is publically funded, why should the general public have to pay for the paper when we funded the research?

Re:RTFA

[Anonymous Custard]

It's not like Google Scholar has a lot invested in that name yet anyway, should they lose. Google will just rename it to something else and still blow ACS out of the water.

ACS advertising plan

[Drathmere]

1) Have slow unpredictable search tool that has sold in the measly 1000s over 6 years. (166 copies per year)

2) Fire staff of magazine due to slow advertising sales.

3) Give prefered treatment to companies that advertise in the employment issue.

4) Pay the president upwards of 600k.

5) Sue Google.

6) post on slashdot...whoops

The sad thing is that this association is supposted to support chemists. The stupidity of this move is mind blowing.

It should all be free!

[mschaffer]

The US (and many other governments) paid for:
A. most of the people to write the papers
B. most of the equipment used in the research
C. grants at the universities and some companies to do the research
D. just about anything else to do with the published articles

So, why does anyone, like the ACS, think they have exclusive rights to any of the information?

Also, when did the US Government get the right to give the rights to the word "scholar" or any other word in the English language. I would think that the UK would have rights to common word use. After all, English is a UK invention.

No way is the ACS harmed

[siskbc]

1. The ACS is going to lose big time in terms of paid subscriptions

No way. I'm a chemist, a member of ACS, I've used scifinder scholar, and I've used google scholar. They're not the same thing, they shouldn't be confused, and furthermore google scholar doesn't provide fulltext access to ACS journals. So there is no effect upon subscriptions. Nor is there any real competition - the products don't even really serve the same purpose. If anyone should be scared of google scholar, it's ISI, makers of Web of Science/Knowldedge, the worst search of all time.

The ACS is just being childish, and as a member, I'm embarassed.

Re:Curious name clash

[ibbey]

Unfortunately, I don't think you understand trademark law as well as you think. Considering that the service each company offers is effectively the same, the fact that their target markets are slightly different isn't enough to negate the trademark violation. If Lindows bore enough similarity to Microsoft Windows to be a violation, Google is almost certainly in the wrong here.

How widely known a trademark is has absolutely zero bearing on it's enforcability. Google has a legal responsibility to vet the names they choose. They failed to do so in this case. so they will likely either change the name or pay ACS a licensing fee to use the name.

As for your example of General Motors, you're right that GM can't sue Ford Motor company or Bavarian Motor Works for their use of the word motor. But try starting a company called General Motor Works and you'll be in court before the ink is dry on your business license. The degree of similarity is the problem.