may the force be with you

Microsoft Corp. has a new name for its anti-spyware program, and unlike some of its choices for other products, there's no question this time about whether it has the right to use the moniker.

But the software developer who signed over that right isn't happy about the way Microsoft secured it.

Late last week, the company announced that it would begin using the name "Windows Defender" for the anti-spyware program that it plans to offer as part of its flagship PC operating system.

That was a surprise to Adam Lyttle, a 22-year-old developer from Adelaide, Australia, who developed a program of the same name for preventing online sites from making unwanted changes in a computer's settings.

He said he didn't know Microsoft planned to use the name when one of its law firms contacted him last month to inform him that he was infringing on the Windows trademark. The message from the Seed Intellectual Property Law Group asked him to agree to stop using the Windows Defender name.

Lyttle wasn't inclined to get into a legal tussle with the software giant and its army of lawyers. For one thing, he had stopped working on his Windows Defender program nearly a year before that point.

He was puzzled by one element of the agreement, which gives to Microsoft all rights to the Windows Defender name. However, after consulting with a friend in law school, he decided to just sign it and move on.

Lyttle received no money under the agreement, and he said in an interview Monday that he would have given the name to Microsoft just the same had he known the company wanted to use it. But he said he would have preferred the company to have been more straightforward.

"They made it seem like it was just a trademark infringement," Lyttle said, explaining that he was "shocked" to learn, less than two weeks after returning the signed agreement, that Microsoft plans to use the Windows Defender name.

Microsoft says it sees the situation from a different perspective.

Company spokesman Jack Evans said Microsoft had been considering Windows Defender among several possible names for the product, formerly known as Windows AntiSpyware. In the course of investigating the proposed names, he said, Microsoft discovered the Windows Defender program.

That was when the law firm contacted Lyttle on Microsoft's behalf, Evans said. Under trademark law, companies need to pursue cases of trademark infringement as part of the process of ensuring that their marks are protected.

"It's a pretty normal procedure in terms of how we enforce our trademarks," Evans said. "In the course of enforcing that trademark ... we asked him to agree to waive any rights he had to the name, which he did."

Why didn't the company tell Lyttle that it was considering the name for its own product? "We just don't disclose our business plans to third parties before we announce new products," Evans said.

If Lyttle had asked whether Microsoft planned to use the name, the law firm would have been obligated to refrain from deceiving him, said intellectual-property lawyer Thomas Hoffmann, a lawyer with DLA Piper Rudnick Gray Cary in Seattle. Otherwise, Microsoft and its lawyers were under no legal or ethical obligation to volunteer the information.

In fact, Hoffmann said, it's common for companies not to disclose that type of information in such cases. Lyttle says he wouldn't have tried to negotiate payment, but not everyone is so inclined, Hoffmann said.

"Once you're a well-known company like Microsoft, everyone thinks they've found the pot of gold at the end of the rainbow," Hoffmann said.

What's more, he said, Microsoft appears to have had a legitimate complaint of trademark infringement, based on Lyttle's use of Windows in his product name.

Earlier this year, a Michigan company called Edict Inc., which offers a blogging service called Spaces, cried foul when Microsoft chose the name MSN Spaces for its blogging service. The company's owner couldn't be reached for comment Monday afternoon. Edict continues to use the Spaces name.

In August, Microsoft settled a trademark infringement suit filed by Artemis Solutions Group of Whidbey Island, which retained rights to the disputed name, BioCert. Microsoft has stopped using the name for one of its research projects.

Redmond startup Vista.com raised similar questions when Microsoft announced plans to call the next version of its operating system Windows Vista. Microsoft defended the choice by saying the combination of "Windows" and "Vista" would avoid confusion.

Lyttle, whose Adamant Solutions develops Web sites and software programs, said he doesn't plan to pursue the matter any further.

He said it's actually good, in some ways, to see the name of his discontinued product put to use by Microsoft in such a prominent way.

He is working on a number of other programs -- and he gives assurances that none of their names include the word Windows.

source:http://seattlepi.nwsource.com/business/247483_msftdefender08.html