The Laboratorium : Thomson Reuters: The Gang That Couldn't Sue Straight

By James Grimmelmann
Associate Professor
New York Law School

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The Laboratorium

Thomson Reuters: The Gang That Couldn’t Sue Straight

September 28, 2008 at 11:45 AM

4 Comments

Thomson Reuters, makers of EndNote, don’t like the fact that Zotero is EndNote-compatible. Not only is going after such a useful, much-beloved tool a boneheaded P.R. move, the complaint also reveals what a thin legal case Thomson Reuters has. Some observations:

There’s a contractual claim for breach of the EndNote license agreement. But it’s an oddly attenuated argument. The theory is that GMU, where Zotero is developed, has an EndNote site license. Even if Thomson Reuters can make this argument stick, it does nothing to reach, oh, say, me, since I’m not an EndNote user and have agreed to nothing.
There are no copyright claims. Given that they filed in state court, it’s pretty clear they don’t intend to add any.
The obvious copyright argument wouldn’t fly, anyway. There’s nothing original about EndNote’s “proprietary” Output Styles, since they’re pretty much dictated by the style guides used by the individual publications.
$10,000,000 in annual damages? Ha! I’d love to know how they made up that number.
The complaint demands an injunction enjoining GMU from distributing Zotero and from “the willful and inappropriate use of Thomson’s registered trademark EndNote^®.” This is where it finally hit me that this complaint was drafted by a duffer. To wit:
- An injunction isn’t a contract remedy.
- The complaint doesn’t include a trademark cause of action.
- No documentation of the registration is attached to the complaint.
- There’s not even an allegation in the complaint’s statement of facts that “EndNote” is actually registered with the USPTO. (It is; it’s No. 2,124,774.)
- In any event, GMU’s use of “EndNote” is legal under trademark law as a nominative fair use, since it describes how Zotero is compatible with EndNote.

Bad move, Thomson Reuters. The only thing worse than being an overbearing bully is being a comically inept overbearing bully.

Update 2008-09-28: Michael Froomkin is on the case, pointing out the interesting issue of “the extent to which a contract by a firm with a (state) university can bind its professors.”

September 28, 2008 at 6:13 PM

Ann Bartow

I don’t know why I find it especially amusing that Thomson Reuters is suing over the acts of a HISTORY prof, but I do. If Endnotes had better met his professional needs, I’d guess he never would have developed Zotero.

September 29, 2008 at 10:40 AM

Jonathan Rochkind

It’s interesting that it appears that the legal complaint was written by someone who didn’t really know what they were doing, making easily correctable mistakes.

I would guess that companies like EndNote aren’t used to needing to know what they’re doing legally. A complaint like this sent to a university is usually enough to cow the university, regardless of legal merit, and they’re used to that.

It looks like GMU plans to actually stand up for itself, which would be really great, and hopefully encourage other universities to start being less cowed.

September 30, 2008 at 4:46 PM

Foo

GMU does have a site license for EndNote.

October 2, 2008 at 3:16 AM

Bruce Boyden

T/R claims that use of the trademark is a breach of the contract; so I don’t think they need to allege registration, etc. (They wouldn’t need to attach a copy of the registration in any event; short and plain statement, and all that.) All they need to do is allege that the agreement required something (e.g., not using the word “EndNote”), and GMU didn’t do it.

Of course, that doesn’t get them an injunction.