2008-06-20 Ancestry.com sues Millennia for trademark infringement

Ancestry.com & Millennia

Ancestry.com, The Generations Network, or whatever their current name is has filed suit against Millennia Corporation. Ancestry.com is the maker and publisher of Family Tree Maker 2008, and Millennia recently released Legacy Family Tree 7.0.

trademark infringement

The Ancestry Insider blog reveals that Ancestry.com is suing Millennia for trademark infringement. According to the suit, Ancestry.com believes that the design of Legacy’s packaging resembles the design of the packaging for FTM 2008 too closely. Therefore, Ancestry.com is demanding the cool sum of $ 1.000.000 in compensation, that is about € 645.000 (exchange rate of 1.55 US dollar per Euro).

Ancestry Insider

The Ancestry Insider provides a link to the case filing in Justia, but you’d need a registration with Justia to read actual documents. It is a "Restricted Web Site for Official Court Business only" and you need your "CM/ECF filer" login to access the text.

intentionally similar

According to the Ancestry Insider, Ancestry.com is claiming that the design is remarkably similar and that the similarities are intentional and deceptive. So far, their claim sounds straightforward.

However, Ancestry.com is suing not just Millennia, but BTH2 as well. BTH2 is the design and branding company that designed the box. I am not a lawyer, but my first guess is that claiming intentional similarity was not a smart thing to; unless they can prove that Millennia explicitly asked BTH2 to come up with something similar, they are inviting a libel suit.

manufacturer

According to the Ancestry.com Insider, Ancestry.com alleges that BTH2 became a manufacturer, publisher and distributor for Legacy 7.0. To claim that the design company is a manufacturer, publisher or distributor sounds manufactured, but perhaps it reflects the phrasing of their contract.

contract violation

According to the Ancestry.com Insider, BTH2 provided these services to Millennia in violation of its contract with TGN not to provide similar services to competitors for a year, according to the TGN complaint..

I had to laugh when I read that. I would not be surprised to learn that Ancestry.com’s legal department overlooked something we all know. FTM 2008 was published on schedule despite its many shortcomings, but Legacy Family Tree 7 was delayed considerably to make sure it works.

Now, if Millennia expected to ship about a year ago, they may well have had their artwork done before that. So it seems not unlikely to me that the Legacy 7 artwork is older, and that FTM 2008 was merely released earlier. If so, any claim of intentional similarity is going to look mightily ridiculous.

Moreover, if BTH2 had already finished their design for Millennia when they agreed to that the contract for Ancestry.com, this lawsuit is going to make the Ancestry.com lawyers look like a bunch of incompetent fools. They would not want that to happen, so I like to think that they checked the facts first, but they could include this claim regardless of what they discovered.

the designs

Family Tree Packaging

Here is a picture that shows the different designs next to each other. The top row shows, from left to right, the Legacy 7 box as shown on Millennia’s Legacy Family Tree site, the Legacy 7 box as shown on Amazon.com, and the design for Palladium Interactive’s FamilyGathering. The bottom row shows the boxes for Family Tree Maker Essentials, Deluxe and Platinum.

colours

The picture shows all three Family Tree Maker boxes because although they share the same overall design, they colours used are different. The Essentials box uses an orange colour like the Legacy 7 design, but the green used in the Deluxe edition is Ancestry.com’s logo colour.
I added Palladium Interactive’s FamilyGathering to the top row, to show that the design Family Tree Maker, especially the Deluxe edition is very similar to that of FamilyGathering. If you showed these pictures to an bunch of people who had never seen these before, told them that two designs are similar that one party decided to go court, and then asked them to identify the two designs, guess which two boxes they would pick...

FamilyGathering

Palladium Interactive’s FamilyGathering was introduced early in 1996. It was really just a rebranding of CommSoft’s Visual Roots. In 1997, Palladium purchased the Roots products line from CommSoft, and renamed the product Ultimate Family Tree. Late in 1998, The Learning Company (TLC) bought Palladium, in 1999 Mattel bought TLC. In 1999, Mattel co-founded Genealogy.com. In 2001, A&E, one of the co-founders, buys Genealogy.com and in 2003, sells it MyFamily.com (i.e. Ancestry.com).
Even if that hurried summary is not entirely accurate, the bottom line remains that it does not matter that the FTM 2008 is an update of the FamilyGathering design, because Ancestry.com owns FamilyGathering.

Comparing the designs, it hard to understand how Ancestry.com, a.k.a. The Generation Network has concluded that Legacy’s software packaging, currently available at retail, clearly violates TGN’s trademark of its Family Tree Maker product and is designed to resemble our trade dress (the look and feel of our branding), in a way that has and will continue to confuse consumers., yet that is how the Ancestry Insider quotes Ancestry.com.

similarities

Search for noteworthy similarities. There hardly are any.
Hm, both products have "Family Tree" in their name, and both designs display that text prominently. What a shocker.
The "Legacy" text above the sans-serif "Family Tree" is italicised just like the "Essentials", "Deluxe" or "Platinum" text above their sans-serif "Family Tree". Copycats!
The FTM background is a branch, and the Legacy background is a leave, how dare they!
There are photos and documents on top of the background too. Theft, I tell you!

"Family Tree"

Ancestry.com’s message seems to be that because they use large size sans-serif "Family Tree" text, no one else can, never mind that "Family Tree" is a part of your product name, and that using sans-serif for large text is common typographical practice. Never mind that the idea of doing "Family Tree" in large sans-serif letters and the rest of the name in smaller type below it has been used by Family Tree Magazine for years. Never mind that Legacy has the text on top, while FTM has the text near the bottom. Ancestry.com is using a large sans-serif "Family Tree" as part of their design, so no one else can. Ancestry.com is even complaining that Millennia uses the text "build your family tree" on their box, because they have the same one-liner on their box.

Family Tree Logo

leaves

Ancestry.com use a branch with leaves, so you cannot use a single leaf. Never mind that it makes just as much sense to say that many programs use a tree, so Ancestry.com cannot use a branch - that is an unfair remark, because the tree versus branch issue is completely different from the branch versus leave issue. Never mind that it is branch versus single leaf, never mind that the leaves are different species with different shapes, the Ancestry.com message is that all your leaves are belong to us.

photos

Never mind that the practice of placing photos in family trees predates both Ancestry.com and family tree software. Never mind that semi-random placements of photos, birth certificates and such over some background is a design staple of the genealogical community.

different, therefore the same

Never mind that the boxes look different, are hard to mistake for each other, and that only a few specialised stores will sell both. The Legacy design is trademark infringement because Ancestry.com says it is.

frivolous lawsuit

I am not impressed by the similarities between the two different designs. It seems a frivolous nuisance lawsuit to me, a case of if you can’t beat them, sue them.

Ancestry.com’s claim that the similarities are intentional and deceptive is giggleworthy. Surely any intentional similarity and possible confusion is going to work in Ancestry.com’s favour, and to the detriment of Millennia Corporation? Ancestry.com’s reputation is not exactly enviable and their FTM 2008 product is considerably less than a triumph of excellent software development. It is so slow, buggy and unreliable that even die-hard FTM fans, not the most critical people on the planet, are recommending to stick with FTM 16,, not buy FTM 2008 and even to return it for a refund if you did.

In contrast, since its introduction a few weeks ago, Legacy Family Tree 7 has been selling madly. Millennia had to buy extra gear to employ additional personnel and is basically running a 24-hour fulfilment service to cope with more than ten times the sales volume of any previous release.

no. 1

I predict that Millennia will soon be in a position to actually steal a bit of marketing from Ancestry.com. Ancestry.com has for years been promoting FTM with phrases like "the no. 1 family history software". Ever wondered what that really means? The FTM website phrases it as "the no. 1 selling genealogy software", but if you, cough, intentionally and deceptively, leave out the "selling" bit, it is generally interpreted as meaning the best instead of merely the best-selling.

This may well be the year that sales of Legacy Family Tree overtake sales of Family Tree Maker, the year that Millennia relegates Ancestry.com to the number 2 position. I hope that when they do so, it will inspire Ancestry.com to respond smartly; not by taking anyone to court, not by pouring even more money in to their already over budgeted marketing campaigns, but by investing in the quality of Family Tree Maker.
Quality does not need fancy packaging, quality sells itself.

graphic response

Chris Durham of the The Genealogue ("Genealogy News You can’t possibly use") has responded graphically to this news.

update 2008-08-16 jiapu.cn

Ancestry.com announced jiapu.cn, their Chinese site on 2008 Aug 6. Dean Richardson of GenLighten noticed that jiapu.cn’s logo is remarkable similar to GenLighten’s logo.

Jiapu and GenLighten logos

This images shows both logos one above the other. The Jiapu logo is a bit fuzzy because I could not find a large logo and blew it up by 50 percent to make the two trees about the same size.

Dean Richardson writes (in Amglish):

OK, so there are plenty of differences:

Jiapu’s leaves are two different colors and a slightly different shape than ours.

Our tree has a kind of sunburst in the background illuminating it, but Jiapu’s doesn’t.

Jiapu’s logo is animated with ‘windblown’ leaves that move off to the right when you mouse over it; ours isn’t animated at all.

But there are also several glaring similarities:

The jiapu tree trunk is a nearly identical shade of brown as ours; it also is angled up and to the right as ours is

One of jiapu’s two leaf colors looks the same as ours

Their name is red with a black tagline; so is ours

The black syllables are not a tagline, they just spell jiapu (家譜).

When you browse around the jiapu site, you many come across two animated logos. There is one along the top, where the leaves blow off yet remain. There is another, used in a Flash movie, that shows the leaves flashing different colours, and that creates an effect that feels similar to the static burning bush effect of GenLighten’s sunburst background.

The Genealogue has commented that It’s Only Trademark Infringement When the Other Guy Does It.

updates

2011-04-23 Amazon: Legacy Family Tree Maker

The link to the particular Amazon.com Legacy Family Tree page with the particular box art has been broken for years. The broken link has been removed.

2011-06-02 BTH2

The BTH2 web server is not responding. The link has been removed.