Blockbuster Takes Movielink Off Studios' Hands For A Pittance

Trademark Law Gone Mad: J&J Sues American Red Cross Over Use Of Red Cross

from the why-not-kick-some-babies-while-you're-at-it dept

Thu, Aug 9th 2007 12:28pm — Mike Masnick

Trademark law can do funny things, especially in this age where many IP lawyers and the popular press have misrepresented the purpose of trademarks. It's reached a point where many people now believe that trademark law is about ownership and control -- when it was really designed for consumer protection (so that consumers wouldn't be tricked into buying "Bob's Cola" thinking it was "Coca Cola"). A bunch of people have been submitting this latest story of trademark-gone-mad, where health-care products conglomerate Johnson & Johnson is suing the American Red Cross for violating its trademark on (you guessed it) the red cross symbol. The thing is, Johnson & Johnson may be on the correct side of the law in this case -- though, the wrong side of decency and common sense. J&J does own the trademark on the red cross symbol and has had a licensing arrangement with the ARC for over a century. However, the ARC has been licensing the symbol to make branded products such as "baby mitts, nail clippers, combs, toothbrushes, hand sanitizers and humidifiers." The ARC then sells these products as a way of raising money for all of its good work. Based on trademark law, of course, J&J will claim that it needs to protect the trademark or risk losing it entirely. But, that only shows one of the more ridiculous aspects of trademark law. And, it's not like J&J is going in with a light touch on this either. The lawsuits wants these products destroyed and is also seeking punitive damages. That's going well beyond the "we're forced to protect the trademark under the law" claim. It just makes them look like a bunch of bullies who would kick babies if it would make them money. While J&J was clearly concerned about the value of its trademark, it's not clear if they realized the value of good PR.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: red cross, trademarks
Companies: american red cross, johnson & johnson

46 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Surflizard, 9 Aug 2007 @ 12:56pm

This seems like a pretty clear case of infringement to me. The tech savvy tend to have a knee-jerk reaction against trademark enforcement, but it sounds like the Red Cross is trying to sell widgets with a mark that another widget seller already owns. There are plenty of frivolous trademark, patent and copyright claims going on out there, but this doesn't seem to be one of them.
[ link to this | view in thread ]
WhatTECH?, 9 Aug 2007 @ 12:57pm

This is not tech, and seeing how it was on the NYT website not really dirt either. Nice try though.
[ link to this | view in thread ]
Nick (profile), 9 Aug 2007 @ 1:14pm

This is counter to their creedo!
http://www.jnj.com/our_company/our_credo/index.htm

"We believe our first responsibility is to the doctors, nurses and patients, to mothers and fathers and all others who use our products and services."
Do you think that ARC might use J&J products?

"We are responsible to our employees, the men and women who work with us throughout the world. Everyone must be considered as an individual. We must respect their dignity and recognize their merit."
This sounds like a lack of respect of the mission of the ARC and a lack of recognition of the ARC's merit to me.

"We are responsible to the communities in which we live and work and to the world community as well."
This trademark suit makes it seem like they are being irresponsible by attempting to drain the resources of charity that seems to both share the cause and use their own products.

Here is the linchpin that kills everything else:
"Our final responsibility is to our stockholders."

J&J, you have been called out!
[ link to this | view in thread ]
Bill Curnow, 9 Aug 2007 @ 1:36pm

The Red Cross is a federally protected symbol granted by Congressional Charter to the American National Red Cross (ARC). The symbol is also described in the treaties of Geneva, August 22, 1864, July 27, 1929 and August 12, 1949. How J&J can claim to have licensed to Red Cross to the ARC is beyond me.
[ link to this | view in thread ]
Darquirrin, 9 Aug 2007 @ 1:48pm

Correction
The problem is, as the article states, Mr. Curnow, "Johnson & Johnson began using the red cross design as a trademark in 1887 — six years after the creation of the American Red Cross but before it received its congressional charter in 1900. The lawsuit contends that the charter did not empower the Red Cross to engage in commercial activities competing with a private business."
[ link to this | view in thread ]
Bill Curnow, 9 Aug 2007 @ 2:02pm

As you pointed out, the American National Red Cross began using that symbol in 1881, well before J&J started using it. The 1905 Congressional Charter grants the ARC exclusive right to use the Red Cross emblem while allowing those using the symbol prior to 1905 continued use for limited purposes. J&J was one of these grandfathered users. I will grant you that the exclusive right to use the emblem might not include the right to grant use to others as that issue is not specified in the charter.
[ link to this | view in thread ]
nrkmann, 9 Aug 2007 @ 2:03pm

Red Cross
J&J owns the trademark? I went all over their site and could not find it! Not on one page was the red cross only the stylized Johnson & Johnson in red letters. Looks like they don't use it, so give it to the Red Cross. The last I knew of congress gave the Red Cross the carter so it seems that defacto they should also receive the trademark. One goes with the other, or one is not whole without the other. So are they going after the IRC?

Stupid, stupid, stupid...
[ link to this | view in thread ]
You never know, 9 Aug 2007 @ 2:13pm

Ooooooo, does this mean that Switzerland can sue J&J? Or perhaps the Catholic church or even God should seek Trademark protection???…. Now there is a thought!!!
[ link to this | view in thread ]
Roberto Gonzalez, 9 Aug 2007 @ 2:16pm

use of trademark
I have a box of band-aids that proves otherwise.
It clearly shows the red cross
[ link to this | view in thread ]
PeterV, 9 Aug 2007 @ 2:24pm

What's Fair is fair
Well, I do not feel too bad for the ARC, after all they constantly claim that ANY red cross symbol belongs to them. They troll through ebay looking for auctions with a cross and request that ebay take them down as their intellectual rights are being violated.
[ link to this | view in thread ]
Anonymous Coward, 9 Aug 2007 @ 2:43pm

I love it when assholes fight each other.

If youd on't think the Red Cross is an asshole outfit, just talk to WW2 vets and many others who needed their services. Then check out how much their top people earn. Charity my a$$.
[ link to this | view in thread ]
Derek Kerton (profile), 9 Aug 2007 @ 2:46pm

Switzerland
re #8, last I checked, Switzerland had a white cross as their flag.
[ link to this | view in thread ]
Rick, 9 Aug 2007 @ 2:48pm

Tax Writeoff?
Why not settle on a number. Take the perceived value of the licensing, charge the Red Cross for that amount - then turn around and donate the same amount of money to the Red Cross.

In the end J&J would come out ahead with the hefty tax break on the donated sum.
[ link to this | view in thread ]
Anonymous Coward, 9 Aug 2007 @ 3:05pm

Wrong. The ARC has been licensing the product to companies that have nothing to do with disaster preparedness (nailclippers?) and had been doing so to solicit large sums of money. Last year they paid their CEO (or equivalent) ~600kUSD!

J&J are perfectly in the right here.
[ link to this | view in thread ]
Anonymous Coward, 9 Aug 2007 @ 3:06pm

They're in the right from a legal standpoint and the ARC has been abusing its right from a legal standpoint.

How could J&J possibly be in the wrong here?
[ link to this | view in thread ]
AJax, 9 Aug 2007 @ 3:22pm

The biggest issue I have about the ARC is this. I am stationed on a military base here in the US. The ARC -used- to be allowed on post so that soldiers that could donate blood would have the opportunity, so that we could help those of us overseas and the like. They were stopped after it was discovered that the ARC was selling the blood back to the military. That's right, folks, the free blood that the ARC got from soldiers was sold to help other soldiers. If that doesn't make you angry, I don't know what would!
[ link to this | view in thread ]
Dosquatch, 9 Aug 2007 @ 3:29pm

Re:
Indeed. Knowing that they're likely not going to drift past TD and see the fine commentary here, I've actually used their handy comments page to tell them that I will no longer be using their products. I refrained from using the word "asshats", but did suggest that they should be ashamed of themselves.

I encourage all readers here to do the same.
[ link to this | view in thread ]
John (profile), 9 Aug 2007 @ 3:30pm

Speaking of Band-Aids...
Now, J&J can be 100% correct in their argument and they could have the law 100% behind them. But is it morally and ethically right to sue the Red Cross over the use of the red cross?
Won't a simple, "Please stop it" or "Can't we work something out?"
I like to assume that (maybe) they tried something like this, but no one would agree to it... hence the case wound up in court and people are reporting on it.

In related news, does anyone remember the song "Do They Know it's Christmas (Feed the World)", released about 20 years ago? The name of the band that sang it was "Band Aid", because money from the song was going to help relief efforts in Africa.
Some years later, J&J took some kind of action which resulted in the band being renamed to "Live Aid"... so when you see the credits for the song, nothing is mentioned about "Bain Aid".

And probably around the same time, J&J changed their advertising. Remember the catchy tune, "I am stuck on Band Aids, 'cause Band Aid's stuck on me"?
Now, it's "I am stuck on Band Aid brand adhesive strips copyrighted by Johnson and Johnson 'cause Band Aid brand adhesive strips copyrighted by Johnson and Johnson are stuck on me."
Okay, I'd kidding... but not by much. The song was changed to make note that "Band Aid" is an adhesive brand owned by J&J.

Where they right to go after the Band Aid band? Legally, yes. Morally and ethically? Who knows.
[ link to this | view in thread ]
Dosquatch, 9 Aug 2007 @ 3:34pm

You, however....
This is not tech, and [blah blah]

You, however, I'll call an asshat.

Not tech, certainly dirty, and perhaps outside of the normal scope for TD... but it is an IP issue, which as has been established is of interest to the authors and editors here, so not really that big of a surprise, hmm?

Besides, /. carried the article as well. Are you over there throwing a hissy about how this isn't "news for nerds" or (heaven forbid) "stuff that matters"?
[ link to this | view in thread ]
zcat, 9 Aug 2007 @ 3:51pm

"field of use"
IANAL but I read Groklaw :) ....

Part of the whole trademark thing involves where (both geographically and in marketspace) the trademark is being used; example Apple Records vs. Apple Computers. Apple Records were reasonably happy with Apple Computers being a computer company, but less happy when they started selling music. Another example; DEC Vax vs. Vax Vacuum cleaners. Totally unrelated products, no conflict. But if the vacuum-cleaner company start to diverge into Computer-controlled roombas or kit for cleaning the inside of mainframes, there might be a trademark conflict...

So..

As long as J&J market health-related products and ARC provide emergency medical care there's no problem. If ARC start to diverge into selling medical products, J&J were clearly using the red cross image in that market first (no matter who actually registered it) and should have some protection.
[ link to this | view in thread ]
Anonymous Coward, 9 Aug 2007 @ 4:51pm

Here is an easy fix. ARC stops selling their own overpriced products and then contract with J&J to make the same type of kits with their and the ARC branding on them, and everyone is happy.
[ link to this | view in thread ]
Anonymous Coward, 9 Aug 2007 @ 5:09pm

A $1 per annum licensing deal for any non-competing ARC product(s) would be the non-evil way to handle this.
[ link to this | view in thread ]
Mr. Common Sense (a.k.a. - Snapper Cridge), 9 Aug 2007 @ 5:13pm

Hello!!! Are we seriously talking/debating/arguing about A CROSS! It's A CROSS people. I care not that it's red. It's still A CROSS. If you really want to grant ownership of it to someone(thing), how about Jesus? We can go into a history lesson on the cross (how it began, why it was used, etc), but the reality is the American Red Cross and Johnson & Johnson wanted use of this symbol because of it's direct association with Christianity and Jesus.

Now I'm not preaching here, just trying to add some common sense to the discussion. I agree with 'You Never Know', maybe the Church should step in an claim ownership. Ridiculous
[ link to this | view in thread ]
ehrichweiss, 9 Aug 2007 @ 5:20pm

ARC is a scam anyway..
I've already posted this twice today but it bears repeating again...

The ARC are comprised of a bunch of local chapters, each chapter pays the ARC $25,000-$100,000(or so) per year in dues to use the name Red Cross to do fund raising.

A semi-local chapter in a poor area of this state doesn't make enough from fund raising to pay its employees AND provide any help to people in need. The "national" Red Cross doesn't see a problem with this and won't give the poor local chapter a break on the dues and so the local ARC for that area is useless. I know this because a friend used to work for them until she got so disgusted with this catch-22 that she quit.

I WANT J&J to win.
[ link to this | view in thread ]
Anonymous Coward, 9 Aug 2007 @ 6:02pm

Re:
Are you out of your mind? ITS THE AMERICAN RED CROSS! THE ONLY SYMBOL BEING SHOWN IS A, YOU GUESSED IT, RED CROSS!
[ link to this | view in thread ]
Mimi, 9 Aug 2007 @ 10:17pm

Can't we all just get along?
I understand the moral and ethical issues here, but the fact is, if there is a legal argument to be made, and money has been lost as a result of this "problem", how can J&J not pursue it?
[ link to this | view in thread ]
kneeL, 9 Aug 2007 @ 10:58pm

Re: Not frivolous? LOL
Wow, its amazing how people on here will take an obviously silly side of an argument, just for the sake of arguing/trolling.
Like the article said, J&J is correct, but they are going after way too much and way too aggressively. Asking them to please stop using it, because it is their patent and they need to protect it, is one thing. Trying to force the ARC to pay MONEY to them? They are the freakin' RED CROSS! They need donations, not lawsuits, this is one of THE MOST frivolous of cases in the patent courts today. Its really unbelievable how heartless and cold-blooded people in the world are today, and its not just the lawyers, since people like the commenter above, seem to think this horrible unethical, and downright unnecessary behaviors, simply for the basis of making a buck. Ludicrous if you ask me.
[ link to this | view in thread ]
mkam, 10 Aug 2007 @ 3:52am

Re:
It just may
Switzerland Sues Johnson and Johnson over Red Cross (satire btw)
[ link to this | view in thread ]
Adriana, 10 Aug 2007 @ 5:10am

Yes, this is a tricky one. Here is their side of the story:

http://jnjbtw.com/?p=96
[ link to this | view in thread ]
Perry de havilland, 10 Aug 2007 @ 5:33am

I see this as the Red Cross acting in a completely dishonourable fashion, not J&J. They had an agreement with J&J going back to 1895 (!)so there is no question the Red Cross did not understand the terms and condition of their use of the symbol, and then they suddenly decide they will not abide by this agreement and even refuse to under go arbitration on the subject... and what is more they slam J&J for daring to ask them to keep to this extremely long standing agreement. Weird behaviour.

This is a problem that was 100% avoidable by the Red Cross but instead they clearly took the view "J&J will not dare to sue us, we are The Red Cross after all" (which is why I describe them as acting dishonourably) and people should really try to avoid the usual "the wicked Big Company is always in the wrong" sort of knee jerk reaction. That the Red Cross should force one of their benefactors (no good deed goes unpunished it seems) to take this action, and thereby enrich no one but the lawyers, is shocking and frankly suggests nothing but rank stupidity and arrogance at this once great institution.
[ link to this | view in thread ]
wklink, 10 Aug 2007 @ 7:34am

J&J have tried talking to ARC
From the article:

"The company also said that it had offered to engage in third-party mediation to resolve the dispute, but that the Red Cross declined."

ARC has forced J&J to file the suit. When you file a suit, you do it aggressively. Period. There is no such thing as a friendly lawsuit, so even if all you want is ARC to stop cross-licensing, when you sue, you ask for everything you're entitled to.
[ link to this | view in thread ]
Nasty Old Geezer, 10 Aug 2007 @ 7:55am

Re: Re: Not frivolous? LOL
THere is right, and there is smart.

Johns & Johnson may be "right" in the view of the law, but this is not smart.
[ link to this | view in thread ]
Nancy Moorman, 10 Aug 2007 @ 8:21am

J&J needs more than a red cross - it needs a heart
Where has all business sense gone these days? Throwing money at a problem isn't always the best course of action. In this case, I'd send all those business men and women at J&J back to kindergarten. Remember, all you ever needed to know you learned there. Like, how how to play together - nicely. Remember, you made friends that way.

Quite honestly, I don't associate J&J with a red cross symbol, except maybe I remember it on the Band-Aid brand strips. And, by the way, don't we all use the term "band-aid" for a lot of different brands?

The only person I know who really owns his own cross is Jesus. And he lets us all carry our own. Take a lesson J&J.
[ link to this | view in thread ]
Anonymous Coward, 10 Aug 2007 @ 9:31am

Re:
you think coming over to your military base, the equipment, the processing, storage and transport of that blood. etc... doesn't cost anything?

btw, should only soldiers get free blood because other soldiers donate, or should, if I (being a blood donor) ever need a transfusion, the ARC not charge the hospital either, because I donate blood?
[ link to this | view in thread ]
Anonymous Coward, 10 Aug 2007 @ 9:35am

Re: Speaking of Band-Aids...
maybe somebody should tell "Band Aid" that
[ link to this | view in thread ]
Hulser, 10 Aug 2007 @ 10:35am

Doesn't licensing a trademark to a third party seem to be an oxymoron? If the purpose of a trademark is to prevent confusion between the real product and some knock-off product, then doesn't letting someone else use your trademark (even if there is compensation), by definition blur the lines between who is associated with the mark?

From previous posts, it seems like there was some weird agreements put in place because of the timing of certain events with both TRC and J&J. But still, it seems like the very act of "licensing" a trademark would prove that you're not properly protecting it. I don't think it's the fault of the Red Cross that when people see a red cross they think of the Red Cross.
[ link to this | view in thread ]
AJax, 10 Aug 2007 @ 11:23am

Re: Re:
If you are fighting for our country and our freedom, then no, I don't think that you should be charged for a blood transfusion to save your life. Especially if that blood came from other soldiers. If, on the other hand, you managed to cut an artery using a lawnmower to trim hedges and needed a transfusion, then yeah, it might cost a bit.

As for cost, why is it that they get all these donations and the like, and yet charge outrageous fees to their own chapters, simply to support the rampant wealth of their upper-tier employees? They always say that they need the donations of everyone, civilian and corporate and the like, but every run in I've had with them has always been one full of hypocrisy. My mother used to be the head of the emergency managment agency back in my home county, and as such, had to deal with quite a few emergencies. The ARC would only show up when the TV crews came, and would leave shortly after they did. The portrayed themselves as helping, when all the help really came from the hard work and dedication of just other caring people in the community, that the ARC took the credit for.

So you think that the ARC is a company full of decency and respect? Think again.
[ link to this | view in thread ]
Anonymous Coward, 10 Aug 2007 @ 11:54am

Re: Re: Re:
[ link to this | view in thread ]
Pet Wombat, 11 Aug 2007 @ 2:34pm

Just a couple of things...
1. A charitable, non-profit organization has a significant tax advantage over a for-profit corp. Consequently, part of the law regulating non-profits is that they cannot compete directly with for-profits or they will (or at least they are supposed to) loose their status and have to pay tax on their sales revenue. By creating competing products with J&J, the ARC has clearly ventured outside their non-profit status.

2. As several have pointed out, a trademark is a symbol, IN CONTEXT, that is used to establish a brand identity and eliminate confusion between competing brands. The "Band Aid" example should not have been an infringement because J&J does not produce music, but the music promoters in an effort to come up with a "cleaver" name wandered into a gray area where talking about one immediately conjured thoughts of the other.

3. The shape is not important - it is just a red herring in this discussion. It is far too easy to assume that anything with the word "cross" in it has a religious significance. In fact its definition is "two lines intersecting at right angles". The logo in question more resembles a "plus" than the Christian cross. Since ARC is not a religious organization and does seem more interested in adding money to their coffers, perhaps American Red Plus is more appropriate.

4. The ARC operates as a quasi-governmental agency. If you recall during Katrina, the Fed turned over all responsibility for relief aid to the ARC. Consequently, as an "agency" of the government, they are protected from all law suits for any potential wrong-doings. Because the govt. protects them from liability, and their non-profit status shields them from corp. taxes, if they begin creating and selling the same products as J&J, they become a serious threat to J&J's very existence.

5. Lest ANYONE think that ARC is a beneficial, charitable organization: I was with an emergency response rescue team who was re-deployed to assist in the Katrina disaster. While I was there, several women's shelters put out announcements they were completely out of clean clothes and blankets, diapers, baby formula, and children's food for all their refugees - some of whom had not eaten in over 24 hours. A group of church and community groups acquired the requested items and loaded cars and trucks to go to the shelters. They were stopped (yes, STOPPED) on the road by officials of ARC and ordered to turn around, because "these were not 'officially approved' supplies, and if we REALLY wanted to be helpful, to send money to the ARC".

It should be noted that no aid reached the shelters from ARC. In fact, of the more than $1 billion donated to ARC during Katrina, only a small fraction has found its way to those in the disaster.

If anyone from J&J reads this, I would be happy to donate to your legal fund if you promise to sue to have ARC disbanded, stripped to the bone, and sold off for parts.
[ link to this | view in thread ]
Coaster, 12 Aug 2007 @ 7:15pm

then and now
The ARC that people in this forum have had experience with is not the ARC of 100 years ago, 50 years ago, or even 20 years ago. It has gone from a helpful charitable organization to a political capitalistic entity. The ARC of today is not what we remember from childhood commercials, make no mistake.
[ link to this | view in thread ]
Amy, 13 Aug 2007 @ 9:33am

Re: Speaking of Band-Aids...
J & J tried to mediate, but the Red Cross refused.
[ link to this | view in thread ]
Kris, 24 Aug 2007 @ 8:42pm

Re: J&J
Its use is permitted under the statute as a grandfathered use.
[ link to this | view in thread ]
jan, 11 Sep 2007 @ 8:44am

lawsuit
I work for a J & J company and alot of us feel the same way that who gives them the right to sue the ARC who clearly designed and used the red cross first. Bottom line is it's all about MONEY!!!!!! That's why all our jobs are being sent to Juarez, cheaper wages so they can make more profit. It will catch up to them.
[ link to this | view in thread ]
Sean Dix, 15 Oct 2007 @ 9:18am

J&J
Johnson & Johnson threatened to kill me by sending someone to list the ways that J&J could have me killed and make it look like an accident or a suicide if I tried to sue J&J for keeping FlossRings off the market for the past decade. So hearing that J&J is suing the Red Cross didn't surprise me as nothing is beneath J&J.

Sincerely,
Sean Dix
The FlossRing Company
www.FlossRings.com
[ link to this | view in thread ]
Sean Dix, 23 Oct 2007 @ 5:43am

J&J Threatens to Kill FlossRing Inventor.
Johnson & Johnson threatened to kill me by sending someone to list the ways that J&J could have me killed and make it look like an accident or a suicide if I tried to sue them for keeping FlossRings off the market for the past decade.
So when I heard about J&J suing the Red Cross it didn't surprise me as nothing is beneath J&J at this point.What's more telling is that I have been posting this information for months and not a word from J&J. The whole story is on my website for the curious.

Sincerely,
Sean Dix
The FlossRing Company
www.FlossRings.com
[ link to this | view in thread ]
scott webster, 5 Sep 2016 @ 1:25pm

the cross on bottles of alchohol
they are saying that kroger which i know is a lie who,has the patent rights to make rubbing alchohol
[ link to this | view in thread ]