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Firms battle over term "e-media"

Print publication eMediaweekly, set to launch next week, is facing a trademark dispute from consultancy E-Media.

A new multimedia industry news magazine will launch on Monday under the cloud of possible trademark infringement lawsuit.

The print weekly, a publication of IDG and Ziff-Davis joint venture Mac Publishing, is called eMediaweekly. That name does not sit well with the Web consultancy and publishing firm known as E-Media, which began using its name in 1993 and trademarked it in 1995.

E-Media two weeks ago sent Mac Publishing a cease-and-desist letter regarding the use of "eMediaweekly." Mac Publishing has yet to respond.

But Mac Publishing chief executive Colin Crawford disputed McCarthy's trademark claims.

"Our company's position is that we do not believe that we have infringed on anyone's trademark," said Crawford, noting that his company has applied to trademark "eMediaweekly."

One basic tenet of trademark law is that terms in common use, such as "email" or "ice cream," cannot be trademarked.

Crawford argued that the term "e-media" could not be trademarked because it is a generic term in common use in the multimedia industry. He said an Internet search on the term "e-media" would yield nearly 11,000 results, and cited the use of the term by IBM as another instance of the term's generic nature.

He further argued that consumers were unlikely to confuse the product of a consultancy with that of a journal, and pointed out differences in capitalization and punctuation between E-Media and eMediaweekly that also would prevent confusion.

Trademark disputes largely hinge on whether or not an alleged infringement creates confusion in the marketplace.

McCarthy disputed Crawford's arguments, denying that a Net search would come up with so many instances of the term, and defending his company's identity as a publishing venture.

"Our main act may be Web consulting and production, but we are also a publishing company," McCarthy said. "We've been in print continuously since 1994."

McCarthy said E-Media published the Internet Gazette from 1994 to 1995, Net Ventures from 1995 to 1996, and a series of manuals from 1995 to the present. He also said the company has a business plan drawn up for a print magazine called E-Media.

McCarthy conceded that a number of other businesses use the term "e-media," but he said that they either did so with his permission under licensing deals or that they risked a legal challenge from him.

To that end, McCarthy said E-Media attorneys plan to send a cease-and-desist letter to IBM. That company began using the term to describe a multimedia initiative in June of this year.

McCarthy rejected the argument that IBM and Mac Publishing could use the term because it is in common use. "Have you ever used it in conversation?" he asked rhetorically. "Ask 100 people in this industry if they've ever naturally and casually used the term 'e-media' in conversation. The answer will be, 'Of course not.'"

McCarthy is no stranger to high-profile Net-related lawsuits. Last year, he won a libel suit after a woman called him a liar in a newsgroup posting. That decision was overturned on appeal.

McCarthy acknowledges that as the owner of a small company, he faces an uphill battle taking on the well-heeled ZD and IDG--not to mention IBM. But the E-Media founder says he has no choice.

"I can't give up five years of my life that I put into this business and building up this name," McCarthy said. "Maybe I'll get murdered in the process, but I can't give it up easily."

E-Media may not have to go it alone, McCarthy added. Two investors have expressed interest in pitching in for a stake in a lawsuit should he file one.

High-tech trademark cases are common, and publicity on the subject reached a high point recently when Microsoft settled a lawsuit over its use of the term "Internet Explorer" for $5 million.

IBM is involved in a trademark dispute with a small company over the use of the letter "e."

Issues of eMediaweekly will be distributed on Monday, according to Crawford.