Best of 2011: The entrepreneurship of trademark bullying
But finally, I really did. And I was reminded of it when I read a press release including this interesting comment from one Scott Smith. It also links to this article about Entrepreneur magazine’s own trademark adventures in attempting to secure ownership of part of the English language.
Now, what I wrote, however, is in an article called “Bully for Who?” in the January 2011 Intellectual Property Magazine. (You can read or download it here.)
Below is a fairly unrepresentative sample of the article. As it is, I could not resist the seasonal opportunity to consider one particular trademark bully whose invocation is practically an annual LIKELIHOOD OF CONFUSION® tradition…
Is there anything worse than a “bully”? Maybe not, but a close second may be the misuse of loaded terms – such as “bully,” “racist,” etc. – to avoid reasoned consideration of substantive issues. In fact, there really is a trademark bullying problem in US law and practice. But discussion will not be fruitful, and solutions will not be found, unless we define our terms. We need to separate bullying, a real issue for which there are solutions, from rational and fair enforcement of bona fide rights that can exist even where big firms employ “disproportionate force” to achieve their aims. . . .
[F]or all our hand-wringing over asymmetry in legal disputes, we must keep in mind that in two out of the three examples of supposed trademark bullying set out above, even absent many of the more nefarious elements in the last paragraph (in which some defendants were all domestic, above-ground and legally compliant), the “bullies” were to some extent repulsed. Mega-brewer Anheuser-Busch, faced with the fury of an underdog-loving Internet, backed off from its threats against Vermonster, described in an October 2009 article in Atlantic Monthly entitled, “In Beer Battle, Internet Beats Goliath.” Similarly, while Intel Corporation continues its mop-up operations against pockets of resistance to its legally “no quarter” policy on domain names using the word “intel,” it recently dropped one such case brought in California that received some Internet attention when pro bono legal assistance brought the company to the brink of an unfavorable published opinion that could scotch its entire enforcement campaign. . . . [aw, shucks!].
Yet there are real bullies, real abuses of the system, exactly as the economic theory of “rent seeking” predicts there would be. The problem is well understood by consideration of one of the best-known trademarks in the US, and one deserving of great protection: SUPER BOWL®, the name of the annual championship game in the National Football League (NFL). Like all IP owners holding premium “brand equity,” the NFL has in place an “enforcement programme” designed not only to protect its legitimate rights, but to establish a buffer zone of illegitimate, intimidation-based quasi-rights that have a very real effect because it is never economically rational to test them in court. Such a buffer zone establishes a zone of litigation-based (not legal-based, litigation-based) early warning triggers around the real rights, such that any purported infringer of the trademark – even a party making a protected fair use of the SUPER BOWL® mark – would have to traverse the hopelessly expensive no-man’s land of illegitimate litigation threats to establish his defense.
Did I give away the game?