Legal battle rages over spam: Do we eat it or delete it?

Those vastly different definitions of the word spam -- one about a decade old and the other stretching back to the 1930s -- are creating quite a dust-up between a small Seattle software firm and a gigantic multinational food corporation. The brouhaha started two years ago when Austin, Minn.-based Hormel Foods, which has sold more than 6 billion cans of Spam in the past 67 years, filed a trademark infringement action against Seattle-based Spam Arrest.

Despite its deep-pocketed adversary, Spam Arrest has not backed down. Yesterday, the company, which makes software to block junk e-mail, asked the U.S. Patent and Trademark Office to dismiss the case. The six-member company claims that it owns a trademark on the word spam as it relates to unwanted e-mail, a registration it received last year.

"No reasonable person would confuse canned meat with computer software, and virtually all references to 'spam' on the Internet mean unsolicited commercial e-mail, not canned meat," the company wrote in its motion for summary judgment. Hormel did not return calls or e-mails.

Cameron Elliott, the 36-year-old co-founder and chief executive of Spam Arrest, said the battle is worth fighting.

"We want to maintain our trademark. People know us as Spam Arrest," he said. "We like our name."

Elliott declined to say how much the company has spent on legal fees, although he said it is "costing real money." Spam Arrest has received publicity because of the case, but Elliott said that had nothing to do with the company's decision to defend its trademark. He declined to say how many people are using the product.

Derek Newman, the intellectual property attorney who is representing Spam Arrest, said Hormel has successfully waged trademark disputes against several companies that have used the word spam. But this is the first case to proceed this far, he said.

"Hormel has hired three expert witnesses, all of which are really highly paid and they have really been fighting this hard," said Newman. "Spam Arrest has been defending on the one hand on a shoestring budget, but on the other hand they are doing what is necessary to properly defend the action."

With yesterday's motion, Newman said he is hopeful that the case will come to an end.

Originally called Hormel Spiced Ham, the product name changed in 1937 after a friend of the Hormel family came up with Spam at a New Year's Eve party. The name is now trademarked in 111 countries, according to Hormel's Web site.

But in the past decade, spam has taken on another meaning -- referring to unsolicited e-mails that arrive in computer users' inboxes. The origin of that definition is thought to be traced to a Monty Python skit in which the word "spam" was uttered repeatedly by a group of Vikings, according to legal documents filed by Spam Arrest.

In the past 10 years, the word has been widely used by journalists, politicians and Internet users to describe junk e-mail. That definition now appears in Merriam-Webster's Collegiate Dictionary.

"The public has appropriated the word spam for use in describing a category of e-mail," said Spam Arrest's motion. "Accordingly, the mark no longer refers exclusively to Hormel's canned meat product."

Now that there are two meanings to the word, Newman said Hormel can't block the generic term from the English language.

Newman cites several examples from corporate America where certain words overlap with a corporation's trademark.

"Apple Computer owns Apple, it is a very valuable trademark. No one disputes that," he said. "But you can still sell apple juice and you can call it Derek's Wonderful Apple Juice. Here Hormel wants to have the exclusive rights to the word spam."

Newman said it could take up to 90 days for the Trademark Trial and Appeal Board to decide on the summary judgment motion. No monetary penalties can be levied as part of the legal action.

However, if Hormel is successful it can prevent Spam Arrest from using the name.

P-I reporter John Cook can be reached at 206-448-8075 or johncook@seattlepi.com

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