Discussing trademark law blogging with a colleague last night, I was asked whether I’d written anything about the EAT MORE KALE story.  In order to excuse my laziness, I said, well, these low-hanging-fruit items that everyone is busy with, why, I let everyone else opine on them, see, and then I come in later and set everybody straight.

Eat More Kale
Sue anything you want about me, so long as you sue me

I didn’t exactly say it that way but I think it may have sounded like that.

Well, I’m still not sufficiently up to speed on the issue to have anything to say about it that isn’t pretty obvious already.  But I like this well-balanced take from my friend Steve Baird:

A couple of quotes from the NY Times article caught my eye:

“In a statement, Chick-fil-A said, ‘We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.'”

So, Chick-fil-A, am I hearing right, you’re saying “there’s a chance,” of becoming generic and losing all rights in your “Eat Mor Chikin” slogan if Bo continues selling his “Eat More Kale” products?

Here’s the response from Bo’s pro-bono counsel:

“We believe it’s pretty clear, the issue of dilution and confusion aren’t really triggered here,” he said. “There’s no one out there that’s going to come forward and say, ‘I thought I was buying a Chick-fil-A product but I got this T-shirt.’”

I’m thinking both missed the mark a bit.

As to Chick-fil-A’s position, there is no legal obligation to enforce, and the risk of trademark genericide here seems even more exagerrated and remote than the risk of genericide when brandverbing — something that significant brand owners have learned to manage.

And as to Bo’s position, while I agree with the conclusion that there is no likelihood of confusion or dilution here, whether consumers confuse the products — chicken sandwiches and t-shirts — is not the test of likelihood of confusion or dilution.

Yeah, see, it’s almost never like they set it up in the papers, or the way the lawyers spin it for the papers.  And this thought reminded me of how I wanted to expand a little on something I wrote at the end of this post last week:

You can be very much a lawyer and sign off on a position that isn’t justified in an absolute or abstract sense but which falls short of being frivolous.  Especially because so many positions like that … work.

I thought of that today when I filed a declaratory judgment action on behalf of a client that had received a series of completely spurious cease and desist letters claiming both trademark and copyright infringement, along with the usual bluster about statutory damages and attorneys’ fees, for conduct that was simply, utterly not remotely colorable as a trademark or copyright infringement.  The demand letter insisted that, to avoid litigation in a faraway locale, my client “cease any and all unauthorized use of the XYZ Marks and all variations thereof.  This includes all advertising and promotional efforts, including Internet-related activities and any keywords, adwords or domain names that make any reference to the XYZ Marks.”

“Make any reference to the XYZ Marks”?

I might ask, when are lawyers going to have the nerve to tell their clients, “We can’t demand that.  You can’t stop people from talking about you on the Internet or anywhere else by claiming that they are infringing your trademark if they do.”  But then I remember cases like the Jones Day debacle where the plaintiff law firm achieved just that.  It happens every day.  It often works.

I have written so many times, from so many perspectives, about trademark bullying, and my disappointment in the judges who let it happen, that even I am bored of reading it.  Is there another way of looking at it, though?  To some extent, I examined that question regarding the Jones Day case here and here, and the latter link gets to a somewhat nuanced point:  what if you don’t have the law, but you kind of have the facts — you really can make an argument that a judge ought to do something here, even if the law doesn’t fit quite right, because someone is being hurt in a way he ought not to be.

And when I articulate it that way in my mind, it causes me to cringe, mentally, because that’s what happened in the case that was my introduction to trademark bullying, and to defending “notorious” trademark defendants, and losing despite having all the law on my side:  Jews for Jesus v. Brodsky.  In fact I remember my adversary, whose firm has been wiped off the face of the earth since then, turning to me in court one day and saying, “Yep, you have all the law on your side, but we have the facts.”  Because from his point of view, our client had done something just wrong, and if the Lanham Act had to be way to get it, he was there to give the court the chance to do it.  Which the court did.  So let’s say I could possibly see it from his point of view.  Is that so bad?

Well, first of all, that’s a big leap.  Jews for Jesus was a special case; his client is so disliked that with all the money in the world at their disposal, they couldn’t even procure the negotiable virtue of a survey expert.  In contrast, in your everyday “There oughtta be a law!”-based invocation of trademark and copyright, there’s often nothing particularly offensive about the plaintiff.  It just can’t stand what someone is doing with its good name on the Internet.  I’m not unsympathetic to that.

But I am unsympathetic, and we all should be, to the use of IP litigation as a catchall for reputation management, a soft version of or proxy for the once overly-broad and unconstitutional defamation cause of action that still works in other countries.  Not just because hard cases — even if the judge doesn’t acknowledge them as hard cases — make bad law.  “Unauthorized use” of a trademark; “making any reference” to a trademark; “initial interest confusion” — this is not law at all, and no, it’s not equity either.  It is censorship, and a way to stifle competition.  The Lanham Act is the new All Writs Act for our time:  “All writs needed for any commercial or other purpose by plaintiffs that have a trademark or copyright registration.”

So — again — the slightly different angle I offer, brooding in the rainy New York gloom of the looming winter solstice:  If judges won’t say no to such formulations, and Congress not only won’t stop the trend, but adds fire to it, how can lawyers not offer their clients a chance at easing the pain by invoking them, along with the intimidation factor that comes with the outsized cost of litigation, unrecoverable under the American Rule — despite the clear language of both the Lanham Act and the Copyright Act allowing for fee-shifting — regardless of outcome?

At the same bar committee event I was at last night, we were treated to a presentation by a very experienced and insightful survey expert.  And the question arose of, as preposterous as it sounds, of surveys to demonstrate “initial interest confusion”  — the “confusion” that is entirely notional and which has no effect on commerce whatsoever.  And to put it politely, just about everyone around the table agreed that designing such a survey, in light of consumers’ expectations and understandings about what they read on the Internet, was mighty hard to envision.

The good news is that if your case is based on IIC, you don’t need a survey anyway — just a judge who thinks there oughtta be a law.  And there are enough of them out there, with the best of intentions and, frequently, with no small understanding of trademark law, that a trademark lawyer’s got to do what he’s got to do when the client comes in, checkbook in hand, and asks him to make the hurting stop.

We’re all about making the hurt stop, right?

UPDATE:  In flies the thing with feathers!  Judge I. Leo Glasser writes in a recent decision denying an injunction in just such circumstances:

For all of the foregoing reasons, plaintiffs’ motions for a preliminary injunction are hereby DENIED. This decision is without prejudice to plaintiffs’ opportunity to seek a permanent injunction after the parties have had the benefit of full discovery. While the Court finds some aspects of [defendant’s] business practices troubling and perhaps unethical, it has been unable to find a legal remedy for conduct that may offend generally accepted standards of behavior. “[Ethical] obligations that exist but cannot be enforced are ghosts that are seen in the law but that are elusive to the grasp.” The Western Maid, 257 U.S. 419, 434, 42 S. Ct. 159 (1922) (Holmes, J.) (citing The Siren, 74 U.S. 152, 19 L. Ed. 129 (1868)).

Originally posted 2011-12-07 18:16:59. Republished by Blog Post Promoter

By Ron Coleman

I write this blog.

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