Elharter wrote: ↑Wed Dec 30, 2020 11:51 pm
We were, by James B., prohibited any use of the Generally-TRK files. Furthermore, we are not allowed to link to Generally or to mention or use the name "Generally" on our site.
Of course, we will follow this request or request and remove all related content that may occur in the next days and weeks.
A possible license option or collaboration was rejected by James, which we very much regret.
This is getting a bit out of hand. I had written a post about how I felt Michael wasn't being very fair in his portrayal of my actions, but instead I decided to post the emails I sent to him, as I have absolutely nothing to hide in this regard.
I won't post Michael's emails, because I feel that would be infringing upon his privacy, but he can post them if he so desires (though I'd appreciate if he redacted my personal information from them, if he decides to do so). He may not have intended what he said to be read publicly - and I should respect that.
For clarity here, there have been other, successful, projects that have taken heavy inspiration or influence from GeneRally - and this is the first time any action of any kind has had to be taken. The difference here is that GeneRacing has been attempting to use, and have used, things they don't have the rights to use - coupled with what we feel is a deliberately-confusing name. This has already led to people confusing GeneRacing for GeneRally - but none of this was too much for us to try and find a solution that worked for everyone. I proposed this licensing agreement with the intention that it would benefit everyone (including Hannu & Jukka) - and allow the GeneRacing guys to continue development unabated.
With that said, here are the emails...
First email to Michael (sent 14.12.2020) - this is my first contact with Michael:
Hi Michael,
I hope this email finds you and your family well - especially in the current world situation. I've emailed you via this address, as it was the only one I could find for you. I'd be grateful if you could let me know a preferred email address for further communication - you can reply to me at this address.
I'd first like to say that I think the progress you've made on your game is great - it looks fun and seems to really be trying to capture the essence of the history of this genre/style of game.
The first reason I have to email you is pretty straightforward, though: it is our belief that "GeneRacing" infringes directly upon the trademark right of GeneRally and, as such, this email is to ask you to change the project's name.
The European Intellectual Property Office would regard such names, being in the same classification, as "confusingly similar" and, as such, an infringement of GeneRally's trademark. GeneRally has 18 years of "prior art" in regard to this trademark.
I wanted to get to this point as soon as possible, as I'm aware you're about to begin fundraising using this name and I want to make sure that you have the opportunity to change the name with minimal impact to you. I also want to ensure this doesn't become a problem complicated by commercial use of the infringing name.
I'm required to send you this email both for business reasons, and for trademark-enforceability reasons.
The second reason I need to cover is the use of "GeneRally" and "GeneRally compatible" terms in your marketing. This poses two problems: firstly, using the GeneRally trademark to promote your product (which also implies endorsement); and secondly the potential use of copyrighted information to provide GeneRally compatibility.
As you may or may not know, most of the track format knowledge that exists in the GR community is as a result of Hannu, Jukka or myself providing information to people developing tools for GR for non-commercial use. I have interacted directly with a lot of these people in recent years, to provide them with up-to-date information solely for their non-commercial use in producing specific tools.
If you have obtained your knowledge of the GR track format by this means (in part or in whole), then I must ask that you stop using this feature in your product. We can, of course, discuss licensing of such functionality if you feel this is a core part of your product (but this will not cover the use of the "GeneRally" name, which we intend to protect).
As alluded to earlier, this really wasn't an email I wanted to have to write - but I hope we can find a quick and amicable solution to this that doesn't negatively affect your project. It's really inspiring to see GeneRally-inspired projects like this get built and move forward and I'll look forward to trying your game at the point it's more widely available.
Kind Regards,
James
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Michael replied to me on 24.12.2020, but as mentioned above, I won't put his emails here, as they're his to disclose. I'm firmly of the belief that emails between individuals are private information - but I'm also not interested in having words put in my mouth
Second email to Michael (sent 24.12.2020):
Hi Michael,
I'm disappointed you chose to go this route. Even more so that you have only filed your mark in Austria after the date of my email.
You've made an error in assuming I did not seek appropriate advice about this before contacting you. The email I sent initially to you was sent with advice, including confirmation from the EU IPO that registration of a confusing mark with an in-use mark (even unregistered in the EU IPO database) is not permitted. Registration of a mark is simply that: registration. It does not have any effect upon the holder of the rights to that mark.
During the EU IPO trademark application process, they do not process any obstacles to registration other than by objection by rights holders. They informed me that it is simply impossible for them to verify the validity of each mark automatically during the registration and, as such, acceptance of an application and even acceptance of the mark is not a clear path to continued usage - pre-existing usage always supercedes registration (in this, you are incorrect that priority of filing is relevant - priority of usage is all that matters).
Unfortunately, disputing this formally will end up costing us both money - and this was what I sought to avoid in my initial email to you. I will act to defend the "GeneRally" mark against all unlicensed usages.
Regardless of this matter - I am not beholden to provide a licensing option to you. You are, however, required to cease utilisation of GeneRally's proprietary material until such a time as you have permission to use it. I am not willing to engage in a licensing agreement discussion with you whilst you are unwilling to cease your trademark infringement. Please consider this a formal notice that you do not have the appropriate permission, license or right to utilise GeneRally's intellectual property.
With this in mind, you should immediately remove all references to GeneRally from your marketing materials (this includes removing the screenshots of GeneRally from your Steam page).
I had hoped to come to an amicable solution to this. My ideal situation had been that you would have considered changing the infringing name, and we would have come to an agreement on your usage of GeneRally's proprietary material. This would have been a solution that would have been beneficial for all parties (which you claim to also hope for).
As it stands right now, all this will lead to is money that could have been spent on furthering the retro, top-down racing game genre (based on a title we both have long-standing fondness for), being spent on a trademark dispute.
You cannot claim for this project to be non-commercial whilst simultaneously advertising a Kickstarter campaign, and promoting a Steam page. Businesses do not need to be profitable to be considered "commercial" in usage. You are not permitted to make any commercial use of the GeneRally name, intellectual property or proprietary material.
I will be monitoring the EU IPO Trademark Bulletin and preparing to file a formal objection to your application there.
Sincerely,
James
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Michael replied again to me on 26.12.2020 and there has been no further correspondence since then.
I'm only posting these here to clear up my side of things, I'm not interested in getting into a public dispute over this. All I'm interested in is correcting the false claim that I "rejected" working with GeneRacing, especially when I was the one who initiated the offer.
I had hoped my next post on this forum would have been on a much lighter note - but we don't always get what we want
Happy New Year to everyone. Let's hope 2021 is a bit less dramatic than 2020 (in the real world, and in this thread)
)
