A belated thanks to Candice Kim and Professor Leah Chan Grinvald for sharing their insights and perspectives in our recent webinar on trademark bullying.

One topic we discussed is Backcountry.com’s recent back-down to backlash over its trademark enforcement activities concerning the Backcountry mark.

The example is a harsh reminder to trademark counsel of the worst case scenario when a trademark enforcement campaign comes under fierce public attack.

In response to the boycott and backlash, Backcountry.com not only issued a public apology, it admitted to fumbling how it pursued trademark claims, it admitted to making a mistake and to misjudging the impact of its actions.

Backcountry.com even made a public promise to make amends with those adversely impacted by its actions, and it has taken steps to rebuild public trust.

Last but not least, especially for all the trademark types in the crowd, news reports in November were that Backcountry.com had fired its trademark counsel.

Last week Backcountry.com revoked the power of attorney for its prior trademark counsel and appointed new USPTO counsel, doing the same at the TTAB too.

Not knowing the facts of how or where things may have gone wrong with prior counsel, it will be interesting to see what enforcement will occur going forward.

Back to the webinar, we also focused attention on strategies and tactics brand owners can employ to develop intelligent trademark enforcement campaigns.

One slide that webinar attendees really liked from our backpack is this one:

It visually illustrates how a brand owner might consider analyzing watch reports.

Obviously a precursor to its development would be a trademark strength analysis.

Keep in mind, this particular graphic is only an illustration; the perfectly spaced concentric circles should not be interpreted as trademark lines, as we know trademark lines are more subjective than measurable real estate property lines.

The final graphic for a brand would reflect not only an intelligent and defensible trademark enforcement strategy, but attempts to balance any PR concerns too.

Last week I had the fortune of spending the week at the Shot Show in Las Vegas, capturing this brand collage of exhibitors for an event at a restaurant in my hotel:

Interestingly, Kryptek has a Battlefield to Backcountry registration due for USPTO maintenance in days, and surprisingly, it was never opposed by Backcountry.com.

With all binoculars on Backcountry.com’s promise that “[w]e only want what’s best for the whole community and we want every person and business in it to thrive” time will tell what tools may remain in new trademark counsel’s backpack.

Jason Voiovich

Last week, we saw the latest installment in the “trademark bullying” saga. But this time was different. Instead of lawyers fighting amongst themselves, DuetsBlog brought out the big gun: Seth Godin. You can read the entire piece here. I like Seth Godin, and so do lots of other people (hence, the “big gun”). I read the comments (over 30 from my count). It seems to make people feel better to have someone with credibility give voice to their frustration.

I’m not against feeling better; mental health is a big deal. But as I read situation after situation, I am struck by how cases of trademark bullying almost always turn out: The small business loses.

Perhaps they don’t lose in the legal sense, but they lose in nearly every sense that matters to a small business: Time, Energy, Money, Resources, and Attention. Every moment addressing a trademark issue is a moment not invested in their business. Small businesses do not have any of those assets to spare. Large organizations do. They have legal teams that shield their workers from the ongoing drama. They have marketing budgets to drown out negative publicity. If all else fails, they have the resources to outlast you. In over 10 years of public attention, is it any wonder their behavior hasn’t changed?

Public shaming feels good, but it is not working.

It’s time to act.

To act, small business owners need reliable information about their risks. They need that information in advance of a trademark filing, and even in advance of first usage – after-the-fact litigation or advertising insurance don’t solve the problem. And finally, they need accessible and affordable information – calling your lawyer before each decision is not realistic.

In other words, small business owners need an ounce of (affordable) prevention, not a pound of cure.

Here’s my proposal.

To explain it, I am going to adapt Guy Kawasaki’s new business pitch format. At the end, I am going to ask you to invest. Let’s go.

Define the problem.

Trademark owners rightfully defend what they’ve built. However, when they overstep, there is no downside for their behavior. Even if they “lose” in court, they don’t really lose. They create a “chilling effect” for future conflicts. Additionally, they can restrict the distraction in their organization to only their legal team (who, to them, this is not a distraction). By contrast, there is plenty of downside for the small business owner. An unfavorable result in a lawsuit can put a small company out of business. But even if you win, you lose. Distractions are killers.

How does your product solve that problem?

Prevention is the best cure. Imagine a “Trademark Risk Score” much like a credit score. At “1” might be a name you completely invent from random characters. At “100” might be naming your tech company “Big Apple Computers” – an algorithm automatically scores everything in between.

Underlying magic or technology.

Building the algorithm seems easy, but it is not. Factors could include the number of existing trademarks, the size of the companies with those marks, matches in categories of use, length of trademark ownership, recent court decisions or filings, etc. But those factors don’t make an algorithm any more than ingredients don’t make a recipe. The “magic” here is using professional attorneys to “train” the algorithm and improve it.

Business model.

Small business owners could buy access to the system as a one-time purchase (like a “risk check”) or as a subscription (like a “regular checkup”). Accelerators and angels offer this subscription as a service to their startups. I could even see entrepreneurial publications (cough, cough) providing this to their subscribers as an add-on. Lawyers could advertise their services. You get the idea.

Go-To-Market plan.

Aggregators of small businesses are key to the strategy; reaching them 1:1 is cost prohibitive. Fortunately, there are plenty of accelerators, gig economy supporters (e.g. WeWork), and trademark lawyers in the world.

Competitive advantages.

The biggest competitor to this idea is a data aggregator named Trademarkia. However, their service still relies on you as the small business owner to know what you’re looking for (and I don’t think their search functions or aggregation is all that “smart”). If you’re confused, they offer expensive add-on services ranging in cost up to $10,000. That’s not going to fly for the average small business owner. They need something easier to understand and digest.

In this proposal, you plug in a few details, the algorithm spits out a risk score. Is it perfect? No. Will it protect you? No. But it will give you critical information you need to make an informed decision on next steps based on your risk tolerance.

Management team.

This solution will require three key groups of people – tech (to write the learning algorithm), lawyers (to train it), and marketers (to promote it). I wonder if I know any of those people who might be reading this?

Financial projections.

Based on the 300,000 (or so) new businesses started in the United States each year, and a 20% penetration rate for my TAM, and a $100 subscription price, I calculate about $6 million in annual revenue. Back of the napkin, but it’s a business.

Rollout plan and milestones.

I am putting my money where my mouth is – with hard cash. I am committing publicly to the first $1,000. That’s (obviously) not enough to get started, and there is hardly enough detail in this “proposal” to make a formal investment decision, but perhaps it’s enough to get others interested and begin the conversation.

Hate this idea? Awesome! Use it (copyright free) to come up with your own idea.

Just don’t keep public shaming. That’s not helping anyone.

Seth Godin

It’s not good marketing and I’m pretty sure it’s not good law, either.

It seems as though Entrepreneur magazine (who should know better) is working with Latham and Watkins (who should certainly know better) to persist in their relentless efforts to bully entrepreneurs to stop using the word ‘entrepreneur’.

And yes, it’s a word.

Not a fanciful or inherently distinctive trademark, a word. Almost 800,000,000 matches in Google.

One of the only words available to describe a person who builds an enterprise bigger than herself, often using outside resources.

Without that word, it’s hard to describe the work.

Poignantly, it’s interesting to see that they’re not going after people with a ton of resources. If Brian Koppelman, David Levien and Showtime started going after billionaires for using the word ‘Billions’, I’d call it a fair fight. A dumb fight, but a fair one.

But deep in the bowels of the Latham offices in San Diego (which, fortunately, hasn’t been sued by the producers of Anchorman for trademark infringement) there are young lawyers, early in their career, sending nasty letters to entrepreneurs (there’s that word again) like Jen Lehner. You can see her work here: jenlehner.com/blog

Apparently, the powers that be decided that her podcast called “Front Row Entrepreneur” somehow infringed on a magazine that hit its peak in 2013. How?

“Front Row” modifies the noun. The trademark is the modifier, not the noun. Front Row™ is a trademark. Entrepreneur is simply a word.

With great cost and hassle, fledgling entrepreneurs (there’s that word again) who have finally gotten their business off the ground now have to dig in to either fight a huge law firm and their misguided but well-funded lawyers–or spend the money to change what they already built.

Who, exactly, does this help?

By engaging in this behavior, Entrepreneur might think it is building a strong trademark; instead, it is throwing away the very purpose of any trademark: To be a symbol of goodwill within a community. Amongst entrepreneurs, it is simply becoming a hated one.

Better, I think, to spend the time and the money building something that entrepreneurs actually like and respect.

A few weeks ago, a Mexican restaurant in Fort Collins, Colorado, named “Dam Good Tacos,” agreed to change its name based on a settlement in a trademark dispute with another Mexican restaurant, Torchy’s Tacos.

Torchy’s Tacos owns a federal trademark registration for the mark “DAMN GOOD TACOS” (Reg. No. 4835497) for restaurant services. After learning of the Dam Good Tacos restaurant, Torchy’s filed a complaint in federal court, asserting trademark infringement based on the nearly identical use of its mark, for related restaurant services.

The re-branded name of Dam Good Tacos is now DGT, an acronym for its previous name. Some Coloradans are unhappy with the name change, and Torchy’s is facing some significant backlash on social media for initiating this trademark dispute.

For example, one social media user states that she “kinda hates” Torchy’s for suing DGT, and another stated “shame on Tochy’s” regarding its “frivolous lawsuit,” which makes them “look foolish.”

However, the lawsuit is hardly frivolous. The parties’ marks and restaurant services are nearly identical, and Tochy’s appears to have priority, in addition to all the legal presumptions that come with its federal registration. Also, the parties’ businesses are in the same market, with a Tochy’s Tacos location just a couple miles away from DGT. And before suing, Tochy’s offered DGT financial assistance with a name change, but DGT refused.

Nevertheless, the social media backlash is a reminder that, no matter how strong the case for infringement, trademark “bullying” is a prevalent topic, and it’s important to be cognizant of the potential for negative PR in any enforcement efforts, particularly when there is a significant disparity in the size and resources of the parties, and/or when either party is popular or well-known in a particular market.

There have been several recent examples in this context, where large well-known companies initiated enforcement efforts against smaller parties, but have done so in creative, friendly, and humorous ways, which not only avoided criticism, but also benefited all parties involved, with a supportive public reaction and widespread media coverage.

Two of my favorite, recent examples of this, are the Netflix “Stranger Things” demand letter (we blogged about it here), and Bud Light’s Dilly Dilly demand scroll — which was read aloud by a medieval character at the alleged infringer’s brewery (see our blog post here). Rather than face any backlash or claims of bullying, the reactions to these enforcement efforts were positive, with both companies receiving significant praise, such as “funny,” “cool,” and “super classy.”  That’s quite a feat, as those words are quite rarely applicable to legal demand letters.

What do you think about Torchy’s approach here? Do you have any favorite examples of successful enforcement efforts from a public-relations perspective?

Jason Voiovich, VP, Marketing, Analytics & Research Services, Logic PD

distinctive |disˈtiNGktiv|
characteristic of one person or thing, and so serving to distinguish it from others: juniper berries give gin its distinctive flavor.
– New Oxford American Dictionary

I hadn’t heard of kombucha, much less Certified Organic craft kombucha. (Somewhere, a hipster is crying for me.) I had to look it up. To the rest of you who are as new to this as I am, here’s what Wikipedia has to say:

“Kombucha refers to any of a variety of fermented, lightly effervescent sweetened black or green tea drinks that are commonly used as functional beverages for their unsubstantiated health benefits.”

If the last part of that statement seems a little like a backhanded compliment, you should see the Revision History on this Wikipedia article!

But I digress. I’m certainly not here to discuss the merits of drinking kombucha. However, as a matter of market positioning, the Barefoot brand of Certified Organic craft kombucha follows a familiar organic marketing playbook.

  • Play the healthful angle. Anecdotal evidence is just fine for this market. That said, Barefoot Bucha is much more careful than most others I see regarding the “unsubstantiated claims” issue.
  • Play up the “organic cred” of the founder or founders. In this case, Barefoot is the brainchild of husband-and-wife team Ethan and Kate Zuckerman.
  • Play the “mission” card. Barefoot claims to have saved over 350,000 bottles by insisting their customer refill versus bottle and ship. It’s an interesting business model and the logical foundation of their “Barefoot” brand name. The name implies a smaller “footprint” on the global ecosystem.

It’s that last part that gets them in trouble. Specifically, wine giant Ernest and Julio Gallo markets a Barefoot Wine. I’ll bet you’ve heard of those guys.

From a trademark perspective, is it a problem that a brand of organic fermented tea and a brand of fermented grape drink share a name? Gallo seems to think so, and has started the nastygram process.

To get a better sense of the legal issues involved, I recommend reading Lisa Provence’s C-VILLE Weekly column on the subject. Our own blogger extraordinaire Steve Baird gets extensive quote time in it. It’s a good read, a little over my head in a number of places, but it seems to come down to this: One person’s infringement is another person’s fair use. I’m certainly not qualified to offer an opinion on the legal merits. But the branding; that’s another story.

The trademark bullying issue is a red herring. Barefoot, as a brand name concept, sucks.

The “barefoot” concept relates to how the product is distributed and not what it is. That’s not necessarily a poor strategy if it wasn’t so easy to duplicate. There’s very little unique about their approach. In fact, asking your customers to refill containers is pretty common in the organic foods industry.

But more than an approach easily duplicated, the brand name itself contains a fatal flaw. Common words such as “barefoot” (by definition) are not distinctive. Before you trot out “Apple”, “Target” or “Delta” as counter examples to prove me wrong, consider that these brands are only seen as distinctive after they’ve spent literally billions of dollars in advertising over the course of multiple decades.

For a broader perspective, take a look at Interbrand’s ranking of the world’s top 100 brands. How many “common words” do you see? I’ll save you the trouble: No matter how you slice it, it’s always less than 10%.

As a smaller company, you simply can’t afford want to play those odds.

Using a common word simply isn’t memorable, and you need all the help you can get. Your objective with a brand name must be to choose one that your target audience will associate with nothing else.

I’m sorry, while it is certainly vitally important from a societal perspective, “making a smaller impact on the environment” is not exactly a unique value proposition at your average Whole Foods. It’s table stakes. It’s expected. It’s forgettable.

So here’s the situation: Barefoot Bucha’s small (but motivated!) group of fans and followers have taken social media to attempt to shame Gallo into backing down. Barefoot Bucha has righteousness on their side. Gallo has millions of dollars (and time) on theirs. The bad news for Barefoot Bucha? While one can certainly point to a few cases where public shaming has worked against a trademark bully, the vast majority of cases don’t turn out that way.

If it were me, I’d take advantage of the attention Barefoot Bucha is getting right now to kick start a rebranding effort.

P.S. Back in 2012, Sara Rufener and her brand “Live the Beauty of Being Strong” got the virtually the same smackdown from then-seemingly-good-guy Lance Armstrong and his Livestrong legal team. At that time, we wrote about how to use corporate judo to defeat the effort. But alas, he seems to have defeated himself. If you’re interested, have a read here.

When claims of trademark infringement make the news, it is often because a billion dollar corporation is suing old man Donaldson’s tavern for trademark infringement (Although, McDonaldson’s might have been a bad choice…).  You’ve got your Ikeas, your Googles, Chick-fil-As, and your NFLs of course (not the National Forensics League, they’re cool).  David can fight back and win, but David never throws the first punch.

Well, as the saying goes, every once in a blue moon, there’s an exception to the rule. And our exception to the David-Starting-Fights-Rule is Mr. Jeff Moses. Jeff owns the MBF Company, a beer, wine, and spirits distribution company. He also owns a number of his own brands, including his Graffiti® brand of wine. And if you’re thinking that the little R in a circle may become important, well, Watson, I think we’d make a great team. (That’s a Sherlock Holmes reference; I can use that now, right?). Moses even found California graffiti artist to create labels for his wine, like the one below:

After Moses used (and registered) his GRAFFITI mark, the Blue Moon brand released a specialty edition line called the “Graffiti Collection.” According, to Blue Moon, the line’s premise rests on the fact that:

We never know what will come out of the creative minds of our brewmasters. These bigger, bolder ales are inspired by the unpredictable stories of our brewers.

Yes, crazy, creative, unpredictable names like “Pine in the Neck,” “Tounge-Thai-ed,” “Chimp,” and “Grape Scott.” Those zany stories have to be true. No way the marketing department was simply charged with the task of “finding ‘funny’ puns, like those craft brews are doing.”

But back to the lead. Blue Moon filed a trademark application for the mark GRAFFITI COLLECTION. Moses filed a Letter of Protest, which stated that Moses believe there would be a likelihood of confusion between his earlier trademark GRAFFITI in connection with “wine” and Blue Moon’s use of “GRAFFITI COLLECTION with “beer.” The Trademark Office granted the letter, and the Examining Attorney issued a refusal to register Blue Moon’s applied-for mark. Blue Moon chose to abandon the application, but continues to use the mark to promote its beer. Moses doesn’t like that and, according to one local news source, is considering taking legal action.

It’s an interesting article, as the news reporter also spoke with a communications manager for MillerCoors, who informed the reporter that “[a]ny time a name is under consideration, we decide if we need a trademark or not. In this case, we saw no grounds for confusion. Beer and wine are totally separate categories.” Of course, if the company had “chosen” that didn’t need a trademark registration, they they wouldn’t have filed at all. What he really means is that the company decided it is comfortable with taking the risk that the other factors (use of the Blue Moon brand, differences between the goods, and other factors) are all sufficient to avoid a likelihood of confusion in the real word (or that they don’t believe Moses will enforce his rights).

Moses appears to be fighting a bigger fight though. One of his primary problems appears to be Blue Moon’s (and really, all of the big beer companies’) attempts to co-opt the craft beer ethos:

They’re not a craft beer. They don’t own the name they’re using on the label. And it’s an insult to graffiti artists that they’re using graffiti and street art to represent a mass-produced beer product.

I’ll admit that Blue Moon does a better job than the beers that include the namesakes of the big breweries. It didn’t take long for Budweiser American Ale to get the axe. I would imagine that Miller Fortune isn’t far behind. Craft brew continues to grow, notwithstanding that there are new breweries opening every month. As Bloomberg reported in January:

Sales of craft beers grew 16 percent in volume over the past year versus a 1.7 percent decline for the biggest U.S. beer brands, according to researcher Symphony IRI Group. Sales of Bud Light were off by 1.3 percent and Miller Lite slid 4.4 percent.

There are a number of explanations, with taste likely at the top of the list, and “localization” not far behind. But that doesn’t explain why Big Beer has failed to capitalize on the growing trend of craft beers.  If I can borrow one of our guest blogger’s branding hats for a moment, though, I think I have a good explanation: crudely put, people have natural bull**** detectors. In some ways, it’s the basis of the entire jury system. When consumers see the “Budweiser Craft Beer,” they see Budweiser, they don’t see Craft Beer. That’s why you’ll never see the Coors name displayed prominently on a Blue Moon bottle, (or the other “craft” beers owned by Big Beer). No matter how hard they try, Goliaths can’t fool anybody by trying to squeeze into David’s clothing. Let’s wait and see if Moses can be successful in donning the clothes and role of Goliath against Blue Moon…

Sophisticated trademark owners recognize that their trademark rights are dynamic — even if their trademarks aren’t famous for purposes of dilution — they can grow or shrink over time, depending on the magnitude of their own use and their response to third party violations.

It is no wonder then that trademark owners are prepared to expend significant resources, at least to maintain the scope of their initial rights, to protect the value of an important intellectual property asset, and in doing so, they act with the law of trademarks on their side. Importantly, a proper balancing of the many likelihood of confusion factors determines the scope of rights for marks that are not famous (for purposes of dilution protection).

So, if the original scope of rights associated with a particular non-famous mark is represented by the black-colored concentric circles on the target, and the bullet holes represent third party unauthorized uses of confusingly similar marks, and if the trademark owner takes no action against them, then over time, the trademark owner’s scope of rights easily can shrink down to the center of the bullseye, where the trademark owner is only able to control identical marks in connection with directly competing goods.

Professor Ken Port at the William Mitchell College of Law has been exploring the “trademark bullying” issue for some time, he has graciously offered some comments to our writing on the topic here and here, and later this week, he will join Minnesota Representative Joyce Peppin and others to discuss Trademark Bullies – A Problem in Need of a Cure? at the Midwest IP Institute in Minneapolis, Minnesota.

Of course, one of the challenges with so-called “trademark bulling” is the need for a workable definition, and this must precede any intelligent dialogue about what to do with conduct that fits the definition. Although we have written extensively about many aspects of the topic, my views on a proper definition have not changed much since my first post on this topic three years ago: The Mark of a Real Trademark Bully. Yet, the effort to develop an appropriate definition continues.

Earlier this month, Professor Port presented a seminar at William Mitchell where he offered this definition:

“Trademark Bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of expanding.”

One significant concern with this definition is that it applies a pejorative label — and presumably adverse consequences to those who wear the label — to conduct that is likely within the scope of rights enjoyed by a trademark owner under current law.

The law fully contemplates a trademark owner asserting rights against non-competing entities and there is no requirement — in showing likelihood of confusion — that the trademark owner must have a reasonable expectation of expanding their offerings to the point where they will compete. This definition, it seems to me, places determinative weight on the “bridge the gap” factor that only some courts consider in the likelihood of confusion balance.

So, as I read it, this definition, not only snares completely legitimate activity by a trademark owner, but it also seeks to rewrite the law of likelihood of confusion in a way that dramatically reduces the scope of rights held by existing trademark owners.

What do you think?

This past week I’ve been pondering a question of great importance: When might a straitjacket double as a life vest? The answer actually arrived last Monday during INTA’s “The Ethics of Trademark Bullying” panel discussion at the 135th Annual Meeting in Dallas, Texas.

In so many words, our good friend and wise guy Ron Coleman, over at Likelihood of Confusion, described the “trademark bullying” panel as, let’s say, rather muzzled. While I agree that one had to strain to hear any insights, perspectives, or opinions, I prefer the more comprehensive straitjacket metaphor (Hannibal Lecter style) over the mere muzzle, because it obstructs well beyond simple vocal chord vibrations and stills the wildest of “dangerous” body language too, even the likes of this little guy’s gyrations. Yet, Ron critiqued the audible portion of the panel discussion and explained the unfortunate situation this way:

“Similarly, want to talk about trademark bullying?  Briefly mention two or three examples (oddly enough, using “the same examples you might find mentioned in this article) and conclude that they’re not really bullying (kind of like in that article, actually!) (and no — don’t cite the article!  Duh!).  Apologize for not discussing any actual examples of trademark bullying because doing so might offend a the-INTA member company, or, aw shucks, one of my clients, wouldn’t you know? (This actually happened – again resolving, definitively, my original dumb question.)  Then come around to the edgy, original conclusion that maybe we shouldn’t write dumb cease and desist letters any more — you know, what with these crazy kids and their Intertubes and all.”

“It’s easy to crack wise, but the reason, Mr. Wiseguy Blogger, those guys are up there on the panel and you are not is that the people on the panel understand what to say and when to say it.  And when not to say it.”

“And, not to get to all Kurt Gödel about this, but you.  Do.  Not.”

A non-attorney friend of mine recently described how he plans to provide valuable insights and information on his forthcoming blog, but he also “will certainly poke the bear.” The “bear” in his non-legal industry, that is, not a cute, cuddly teddy bear. So, if INTA is an industry bear, Ron, consider it poked (more than a few times). Well, I suppose, it’s not my first time either.

Anyway, back to the problems with INTA’s “trademark bullying” panel discussion (after seeing IPKat’s similar perspective, does that make this post the “tipping point” on the subject?).

In short, Caveat Emptor (“let the buyer beware”) was the word of the hour.

There were so many caveats offered by the moderator at the outset, I lost track of them, except this one: To avoid offending any trademark owners or their counsel, the panel would limit themselves to “just the facts,” no opinions or “judgments” about whether any “trademark bullying” lines have been crossed.

Call me crazy, but I’m thinking more than a few trademark types pay four figures to register for the Annual Meeting, expecting more than legal facts (facts without analysis or opinions can more easily be found on most Big-law firm websites and blogs) — instead, hoping for some valuable insights, perspectives, and well, opinions on the subject at hand, but by all means, answer some questions (or, at least ask some questions of the audience).

Perhaps the juxtaposition of these images says it all:

So, if some other form of “time” actually had “permitted” and the panelists actually had been inclined or “permitted” to share their opinions or “judgments” about the examples or topic, what might you have asked them about trademark bullying?

Last, while we’re on the subject of caveats, INTA might be wise not to forget this one: Caveat venditor (“let the seller beware”). If INTA doesn’t remove the straitjackets from their speakers and also find qualified speakers who won’t self-impose them, the number of trademark types filling nearby hotel rooms to attend the UN-TA may begin to outnumber those paying four figures to register for the official INTA event.

And, recognizing the heavy dose of irony contained in the coming link, when will “ambush marketing” begin to target INTA events?

It’s such a slippery slope.

Minneapolis’ own hometown hero Prince Rogers Nelson, formerly and currently known simply as “Prince,” has been in the news quite often in 2013. It began with his surprise, limited ticket performances in January, which he followed up with a surprise concert to close out the SXSW festival in Austin, Texas. Prince has also made legal news this year. He recently made headlines for sending DMCA take-down notices for eight video clips to Vine, Twitter’s video sharing site. In case you don’t know much about Vine, it is a mobile app that allows users to share video clips over the internet. The clips cannot be longer than six seconds, which seems to present a strong case of a defense based on fair use.

Members of the DuetsBlog staff have been posting regularly on trademark bullying in general, as well as on Minnesota’s attempts to address the issue through legislation. (See here, here, and here). A similar concern exists with copyright law, where copyright owners are sometimes accused of issuing meritless cease-and-desist letters. The most common complaint is that the allegedly infringing use is a “fair use” of the work, protected by the First Amendment. Thanks to the DMCA’s safe harbor provisions, websites and ISPs have an incentive to accept as true the allegations in a take-down notice. And, similar to claims of trademark bullying, the alleged infringer normally lacks the legal expertise and financial resources to assert their legal rights.

Back to Prince, though, who has a reputation for aggressive enforcement of intellectual property rights, as referenced by one blogger’s headline “Prince Still Hates the Internet.” Some of you may remember the case of Lenz v. Universal Music Corp., in which an internet user fought back after Prince’s representatives filed a take-down notice. The video in question was a 30 second home video clip of the user’s child dancing while the Prince song Let’s Go Crazy played in the background (the video has since been re-posted to YouTube and is available here).

Prince and his representatives were so concerned with this video that they sent YouTube a DMCA take-down notice. The lawsuit is now entering its sixth year of existence. On January 24, 2013, the federal judge issued an order denying both parties summary judgment. The basic legal issue in this case thus far has relied primarily on the interpretation of Section 512(f) of the DMCA, which provides that a copyright owner may be forced to pay damages, including attorney’s fees, if the owner “knowingly materially misrepresents . . . that material or activity is infringing.”

The Plaintiff in Lenz argued that the “good faith” requirement of the DMCA requires a copyright owner to consider whether an allegedly infringing use is protected by the fair use doctrine. The judge agreed and in its most recent order, ruled that “a copyright owner must make at least an initial assessment as to whether the fair use doctrine applies to the use in question in order to make a good faith representation that the use is not ‘authorized by law.'” (Opinion available here).

The ruling could have serious consequences for copyright owners. Use of computer programs to identify infringing activity would no longer be sufficient, at least when there is an arguable claim for fair use. Of course, a “good faith” standard is not always difficult to meet. This is particularly true for a determination of “fair use,” which is applied on a case-by-case basis, based on a number of factors with varying importance.  Consequently, a win for Lenz in this specific case may establish Section 512(f) as an avenue for relief from DMCA take-down notice abuse. However it is unclear whether Section 512(f) would have any teeth moving forward. There may be little to no protection if all an owner (or representative) must do is adopt a subjective conclusion regarding potential fair use. An owner could easily state that they considered the various factors, but one factor in particular tipped the scale toward a subjective belief that the fair use defense did not apply.

With regard to trademark bullying, there is no equivalent of the DMCA for trademark infringement. However, this does not mean that Lenz is irrelevant to cease-and-desist letters or notices of claimed infringement for trademarks. The ruling in Lenz might be relevant in the event a notice requires the owner to declare it has a good faith belief that the complained-of activity is infringing. Trademark owners might be expected to not only consider their own rights before filing a claim of infringement with a website, but also consider whether the alleged infringer has any strong or obvious defenses.

I’ll do the internet a favor and resist the urge to close with a Prince-based pun.

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?