Seth Godin is someone we follow closely here on DuetsBlog, and he has just weighed in on the “trademark bullying” topic.

We haven’t always agreed with his trademark advice, especially his misapprehension of the benefits of federal registration. But, it’s hard to argue with this conclusion: “When a brand becomes a bully, it loses something vital.”

The problem, of course, is that it begs the question of who deserves to wear the pejorative “trademark bully” mantle.

I’ve argued against the social media shame-wagon approach to applying the label, against a quantitative approach, and the size of the actor isn’t determinative either; far more instructive is a qualitative analysis of the alleged examples of overreaching, and let’s not forget how important tone can be too.

Godin’s target is the International Olympic Committee (IOC), for violating the law of common sense, in pursuing “knitters and improv comedians and authors of children’s books, dry cleaners, and Facebook users“.

I’ll admit I don’t know the facts of any of these trademark enforcement examples (and the links didn’t spell them out), so undertaking a qualitative analysis of them would be difficult, but focusing purely on “common sense,” only seems to encourage that opinions and decisions be made in a vacuum, seems to assume away the need for any knowledge or understanding of the applicable laws, and also seems a lot like focusing on what is “reasonable” (an inherent problem in the definition):

“I’ve heard before that ‘reasonable’ minds can differ on just about anything. And, in my experience that is especially so when it comes to arguing and deciding trademark disputes, where litigants argue over and decision makers are asked to carefully balance the evidence according to a number of multi-factor tests, including likelihood of confusion, trademark fame, likelihood of dilution, and bad faith intent to profit, to name just a few. This isn’t exactly black and white material. Then, add to all that, an understanding that trademark rights are dynamic, not static, their scope can shrink or grow over time, and also recognize that trademark attorneys have an ethical duty to zealously represent their clients.”

Of course, the OLYMPICS brand sits in a very unique position as compared to most trademark owners because Congress granted very special protection in the word OLYMPIC to the U.S. Olympic Committee, see  Title 36 of the U.S. Code in Section 220506.

I also agree with Seth Godin’s words: “You can’t build a brand by trying to sue anyone who chooses to talk about you.” But, I guess I’m not seeing that here — at least, in the examples given. So, talk is fine, but operating a business under a name using the word Olympic is something quite different.

So, what do you think about the IOC and the applicability of the “trademark bully” label?

  • Rebecca Tushnet

    I think the athletic shoe fits, and has since the USOC went after the Gay Olympics while allowing a number of less controversial organizations to use the Olympic name, e.g. Police Olympics. When I followed those links I saw a wide range of stories, but the facts clearly included (1) attempts to suppress the use of Olympic by people near geographic features like the Olympic park (something specifically allowed by the US statute), (2) a book whose title and content were changed because of the scope of the Canadian law–whether or not some free expression principle might have applied, the writer apparently didn’t want to fight a dangerous and expensive battle to continue with her book, and (3) expectations that fan posts and photos will be monitored and suppressed, and it’s hard to think they won’t be based on past experiences. I’m not sure what additional facts one could add to make these experiences benign, and the pattern as a whole is revealing. Especially when it comes to actions that affect ordinary speakers’ beliefs about what they can talk about, at a certain point it’s unhelpful to say “well, maybe there are extra facts that explain the TM owner’s logic.” Creating FUD about the ability to use Olympics-related terms without permission is a harm in and of itself and should be addressed as such.