Who owns Gmail? According to Benjamin Cohen, nobody yet-well, one guy in Germany, but he doesn’t count for much-and a British company is claiming the intellectual property rights to the Gmail trademark, even if the patent office hasn’t awarded anyone that credit.
The first battle for the claim to Gmail was brought by Daniel Giersch, a German entrepreneur, who actually does own Gmail, but only in Germany. Giersch recently blocked Google’s web mail service in the Land of Eternal Oktoberfest. But in the rest of the world, Gmail is still in dispute.
Enter Independent International Investment Research (IIR), a London-based research firm who set up Gmail web based email in 2002 with the domain gmail.co.uk, two years before Google launched its own Gmail.
Though the WHOIS registry lists Google as the owner of gmail.com since 1995, the company bought the domain from Garfield.com, the online home of the cartoon character, in 2004.
IIR has recently renewed its threat of legal action, according to Times Online. The British company has offered to settle for the 0.5% royalties generated from gmail.com, “conservatively” valued between $45 million and $60 million.
Shane Smith, founder of IIR, told Times Online that after 15 months of talking the matter over with Google, the two have not come to any satisfactory agreement, leading Smith and his company to knuckle up, no matter how much it hurts them financially.
“I feel it is up to me as the founder and the major shareholder. We’re not going to sit on the sidelines while a company uses our intellectual property rights,” he said. “We’re confident that we have the funding available to us and we’re girding our loins.”
But as Cohen, presumably the same Benjamin Cohen who became the youngest dotcom millionaire in Europe at 15 years-old, noted in his article, three companies have applied for an EC-wide trademark and have yet to receive it from the patent office. The German Gmail progenitor Giersch, Karen Griffith (trustee of IIR), and Google have all applied for the patent, and IIR beat Google to the European office by just a few days. In the US, there are six trademark applications pending.
In the US, as illustrated by the recent Apple iPod snafu where Microsoft actually won certain patents, application timing is crucial, as well as establishing a case of prior use. But Cohen says that in the UK, it doesn’t quite work that way.
“Although their use predates Google’s by more than two years, the dispute would be handled by Nominet, the UK’s internet name authority which tends to side with the larger party. They also seem not to recognise prior use, at least that was my experience when they handed iTunes.co.uk to Apple from my company, despite us launching three years prior to Apple’s product.”
If anybody other than Google is awarded the Gmail trademark, it could prove costly for the folks in Mountain View.
