Policy

Trademark lawyer to 3-man startup: Hand over your domain—or else

Would "CaseRails" get confused with "CaseWeb?" Sanford Asman says yes.

Joe Mullin – May 22, 2015 9:54 am | 207

The current CaseRails team. Founder Erik Dykema is on the far left.

Today is the deadline for Erik Dykema to decide whether or not he will fight for his company's name.

Dykema and two co-founders created CaseRails more than two years ago. The Manhattan-based startup has just three people, all focused on creating and managing legal documents.

Two weeks ago, CaseRails started ramping up its marketing, increasing its advertising, and e-mailing attorneys who might be interested in its product. Not long after that outreach, Dykema got a phone call from Sanford Asman, a trademark lawyer who says his rights are being infringed by CaseRails.

Asman controls websites and related trademarks for the terms "CaseWebs" and "CaseSpace." CaseWebs.com hosts litigation support software, written by Asman, which organizes a variety of legal documents by case; it's something he uses himself and licenses to other lawyers. The CaseWebs and CaseSpace trademarks are close enough to entitle him to control of CaseRails, he says. In fact, as Asman explained to Ars in an interview, he believes he owns any Web-based legal service that uses the word "case" in its name.

"He called me and we talked for about half an hour about him and his business," Dykema said of his conversation with Asman. "Then he said, 'I'm going to ask you to change your name.' I'm like—what? Then the conversation got really threatening. He said, 'I'm going to sue you, I've sued people before.'"

It's true. In 2011, Asman sued a company called CaseWorks Web. The case ended with CaseWorks Web handing over its domain name and trademark to Asman. In an interview, Asman said the company that owned that site also paid his legal fees and some damages.

"I take very seriously any third party attempts to use 'Case' formative marks in connection with Web-based legal applications," Asman wrote in a letter (PDF) he sent to CaseRails. "I must demand that you agree to voluntarily abandon the use of 'CaseRails' in connection with your product."

The fact that CaseWebs and CaseRails don't currently do the same thing doesn't matter, in Asman's view, because he once created software that did do something similar to CaseRails, and he might expand into that area in the future.

"While I understand that your specific software is used to generate legal documents, I have written legal document creation software able to generate Microsoft Word documents in legal software that I developed, whereby the inclusion of such functionality is well within the scope of my existing marks and their reasonably expected expanded uses," he wrote.

"Please advise me of your response to this letter no later than the close of business on May 22, 2015, after which I shall take such action as may be appropriate without further notice," Asman's letter concluded.

Dykema hasn't yet decided what to do. On the one hand, he's talked to a couple of trademark lawyers who told him that Asman's suggestion that he could push CaseRails off the Web because of a trademark on CaseWebs is "preposterous." Dykema and his co-founder Kyle Zeller are both attorneys who could defend a case; Dykema used to do patent defense work before going into the software business.

"I fought off patent trolls," he explained. (Dykema is also an adjunct professor at NYU, where he teaches "Media Law.")

On the other hand, defending a case would be a huge time sink for a thinly staffed startup.

"Are we going to let this guy push us around to avoid the time and expense when we need to build the business?" he asked. "Or do we change the name? We could change it, but it doesn't seem fair. We've invested money from our family and friends in this name. For him to come along and demand the name, right this minute, when he's not selling software—it feels like a drive-by."

“This is a multiple choice test”

When I called Asman to ask about his beef with CaseRails, his first question was directed at me.

"How are you even aware of it?" he asked curtly.

Dykema, a longtime Ars reader, had reached out to me, I explained. "Well, I'm sure they told you all kinds of stories," Asman said.

Talking to Asman on the phone is a lot like reading the trademark lawsuit he filed against CaseWorks Web—it involves a lot of listening to his biography. His CaseWorks lawsuit, filed in 2009, includes 15 pages of background description on Asman and describes in detail how his CaseWebs software works. Asman has a computer science degree from MIT and has been practicing law for 43 years. He first started developing legal software in 1977.

"I had all this stuff in a particular case that was overwhelming me," he said. "I thought, how am I going to get through it so that I'm properly representing the client?"

"CaseWebs has been used around the world," he said. "It's very configurable and adaptable." He declined to say how many users it has.

Since "case" alone is often used as a synonym for "lawsuit," I pointed out to Asman that there are numerous online legal services that use "case" as part of their name.

"Like what?" he asked.

I pointed out a few I had found, such as CaseFlex and CaseLoop. Asman didn't respond immediately—he was taking notes.

"Thank you for bringing them to my attention," he said. "I may decide to take action against one or both of them."

A few minutes of searching leads to another half-dozen legal services or software. I found Case Beacon and CaseBridge, both of which help with case management. There's also CourtCaseResults and Case Pipeline, directed toward legal marketing or networking, and FastCase for legal research.

Asman says that this doesn't matter to his dispute with CaseRails.

"They're new to the business," Asman said. "They have an opportunity to switch names or to work out some other form of deal with me. Those are the only ways that are available."

He continued:

If they think there's a third way, like I'm going to go away, they're not listening well. Since at least one of them was also an alumnus of MIT, I'd assume he's bright enough to understand he's looking for an option that doesnt exist. This is a multiple choice test. "None of the above" is just not there. I spent too many years of my life developing software, and promoting the name, for me to now allow others to do whatever they want.

With deadline day upon him, Dykema said he honestly doesn't know how to respond.

"We feel like [Asman] shut all the doors," he said. "We think the allegations are silly. We'd love the chance to discuss and explain, but on the phone he only wanted to give threats and make demands. I tried to get him to explain the 'why' to me, but he clammed up and told me he wasn't looking to have a conversation and refused to discuss it further."

Joe Mullin Tech Policy Editor

Joe has covered the intersection of law and technology, including the world's biggest copyright and patent battles, since 2007.

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