Electro-Harmonix Shows You Can Handle Trademark Infringement Without The Legal Nastygrams

from the an-example-for-everyone dept

Wed, Apr 1st 2009 1:30pm — Mike Masnick

Whenever we write about certain types of trademark disputes, you can almost guarantee that a lawyer will show up in the comments insisting that the trademark holder had no choice but to send a legal nastygram, due to the legal requirement that they defend their trademarks or face having the mark declared generic or abandoned. But, as we've mentioned there are often much better ways of dealing with the situation -- especially when the use of the mark isn't harmful at all, but helpful. Reader eMike sends in a great example of this. The company Electro-Harmonix discovered that a German artist had made a big "huggable" pillow version of an Electro-Harmonix guitar effects pedal, rather than send out the legal nastygrams, EHX took a very different approach:

However, there was a touchy complication: the Big Muff Pi is a registered trademark, and if we discover unauthorized uses of our trademarks, we're legally obligated to do something about it (we have no choice about that).

We're all too familiar with the endless lawsuits suffocating the world of music, and so we decided to do something different. Instead of threats, demands, and legal letters, we contacted Gwendolin, told her we loved her work, and offered a formal license in exchange for an option to purchase them at discount. So, rather than a new enemy we now have a new friend, and a beautiful Big Fluff Pi. Take that as a lesson, music-industrial complex!

A lot of lawyers in charge of enforcing trademarks might want to think about this story before sending out their next legal nastygram.

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Filed Under: licensing, nastygrams, trademark
Companies: electro-harmonix

27 Comments

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pk, 1 Apr 2009 @ 1:52pm

looks great but ...
A whopping $129 euros for a huggable guitar pedal?

I wonder what discuont EHX got?
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Tgeigs, 1 Apr 2009 @ 1:53pm

Uh...
"A lot of lawyers in charge of enforcing trademarks might want to think about this story before sending out their next legal nastygram"

No they won't. Because it sounds based on the quote from EHX (unless they were quoting their lawyer) that nothing they did would result in any billable hours. And that is really the only reason you end up with rules like, "we have to send a legal notice, because the law says blah blah blah", and that law was essentially created by lawyers and a legal system that has a vested interest in perpetuating the need for itself, etc. etc.
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Willton, 1 Apr 2009 @ 2:21pm

Tell the lawyers? No, tell the clients
A lot of lawyers in charge of enforcing trademarks might want to think about this story before sending out their next legal nastygram.

Lawyers do not make these decisions; their clients do. If the client wants to send the nastygram, the client will have the lawyer do so. The above situation is an interesting option, but if that's not what the client wants, then it's not going to happen. So if you're really gung-ho about diminishing IP lawsuits, then berate the rights holders, not their agents.
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Anonymous Coward, 1 Apr 2009 @ 2:22pm

Re: Uh...
Wrong...Many of the legal notices sent out are from within a company and do not involve attorneys at all, thus, no billable hours. However, there are many "depends" to go with that statement.

Typically, the nastygrams go out because people are trying, deliberately, to associate their product with your name when their product has nothing to do with you (the old confusion factor). As the article notes, once you are aware of a trademark infringement, you have to do something about it or risk loss of your trademark. This solution was certainly interesting and unique, but of course there are many cases where the nastygram is the best approach.
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Weird Harold, 1 Apr 2009 @ 2:39pm

I have a feeling that if an agreement wasn't reached, the nastygram was next.

At 129 euros for a pillow, I can't picture there being a very big market.
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Tgeigs, 1 Apr 2009 @ 2:43pm

Re: Re: Uh...
That's fair, after all, I'm no lawyer so I certainly miss out on some of the particulars. What definitely CAN tell you is that to a layperson like myself, there seems to be a perpetuation of need that goes on within the legal community. There are lots of tactics and remedies, but they all specifically seem to require more legal counsel, even under circumstances when an option with LESS legal council would suffice. The way that tax lawyers croon on and on about maximizing billable lawyers (this is from personal/professional relationships I have and anecdotal evidence as well) is suggestive of this.
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Anonymous Coward, 1 Apr 2009 @ 3:00pm

Re: Tell the lawyers? No, tell the clients
Bull. I deal with our company's lawyers on nearly a daily basis and the first, middle, and last piece of legal advice they dispense is 'you should file a lawsuit.' I never, ever heard them say, "Hey, why don't you first try settling this through a constructive dialog. If it doesn't work out we'll be here to help or if it does we'll dot the I's and cross the T's for you."
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Mike (profile), 1 Apr 2009 @ 3:06pm

Re: Tell the lawyers? No, tell the clients
Lawyers do not make these decisions; their clients do

Says the lawyer.

Having worked in the industry for a while, I can tell you this is *VERY RARELY* the case. In almost every instance I know of, it's the *lawyers* who initiate it, with "advice" on why you should nastygram (or just sue). And most clients simply accept their lawyers advice. It's quite rare that it's the other way around, no matter how much it should be that way.
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Freedom, 1 Apr 2009 @ 3:15pm

Nice common sense story...
Nice to finally hear some common sense.

If you give a license to someone that is technically infrnging on your trademark and that gives you protection then why not do this for everything except the most obvious cases of abuse. In short, this is a quick and easy way to "make friends", promote your company thru good will, and still retain your trademark rights.

If this is really such an uncommon solution to the problem, then maybe lawyers and company owners/execs aren't as smart as they think they are!

Freedom
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Anonymous Coward, 1 Apr 2009 @ 3:20pm

Lawyers will always insist that the only viable solutions involve paying them.

It's how they make their livings. (duh!)
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ehrichweiss, 1 Apr 2009 @ 3:23pm

Re:
You need more friends who are musicians. If I could get commission as an affiliate I could probably make a few hundred dollars from referring all my musician friends(their wives actually) to the site.

Big Muff pedals are WELL known.
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Jesse, 1 Apr 2009 @ 3:34pm

WH: "I have a feeling that if an agreement wasn't reached, the nastygram was next."

Even if that's the case, the point is that it might be wise to add that friendly step in there. Might save a lot of hassle, money and it might prevent an unnecessary hit to your reputation.
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TW Burger (profile), 1 Apr 2009 @ 3:46pm

Cool
I'm so impressed I think I'll buy one.
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Willton, 1 Apr 2009 @ 4:16pm

Re: Re: Tell the lawyers? No, tell the clients
Having worked in the industry for a while, I can tell you this is *VERY RARELY* the case. In almost every instance I know of, it's the *lawyers* who initiate it, with "advice" on why you should nastygram (or just sue). And most clients simply accept their lawyers advice. It's quite rare that it's the other way around, no matter how much it should be that way.

Well then the clients in your industry are idiots. Lawyers aren't paid to make business decisions; they are paid to identify legal issues, dispense legal advice, and execute legal documents. If the business owner is having the lawyers run the business, then they shouldn't be business owners.
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sehlat (profile), 1 Apr 2009 @ 4:19pm

Re: Re: Re: Tell the lawyers? No, tell the clients
Unfortunately, too many companies are pretty much run by the lawyers with the people who run the companies merely taking an advisory role to the Legal Gods.
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Anonymous Coward, 1 Apr 2009 @ 4:37pm

Re: Tell the lawyers? No, tell the clients
Lawyers do not make these decisions; their clients do.

Yeah, based on the legal recommendations of the lawyers.

Typical lawyer.
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btrussell, 1 Apr 2009 @ 5:16pm

Re: Re: Re: Tell the lawyers? No, tell the clients
"...they are paid to identify legal issues," You are contradicting yourself.
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Willton, 1 Apr 2009 @ 5:19pm

Re: Re: Re: Re: Tell the lawyers? No, tell the clients
You are contradicting yourself.

How?
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Mechwarrior, 1 Apr 2009 @ 5:23pm

Re: Re: Re: Tell the lawyers? No, tell the clients
Lawyers ARE paid to make business decisions in many industries. I had a professor who had a lawyer run an import/export business for him , out of Spain. There are dozens of companies who are made of entirely of lawyers, with the sole source of income coming from patent litigation. These arent even law firms, they are actual companies formed by lawyers for the sole purpose of extorting money through the patent system.

Its naive to think that lawyers do not have any sway over business decisions.
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Mike (profile), 1 Apr 2009 @ 6:47pm

Re: Re: Re: Tell the lawyers? No, tell the clients
Well then the clients in your industry are idiots. Lawyers aren't paid to make business decisions; they are paid to identify legal issues, dispense legal advice, and execute legal documents. If the business owner is having the lawyers run the business, then they shouldn't be business owners.

Nice, but totally wrong in reality. Once you've been in the business a bit longer, maybe you'll understand. As we were just discussing, people almost always "defer to experts" and in legal situations, the "experts" are the lawyers.

http://www.techdirt.com/articles/20090330/0212164305.shtml

Having been in plenty of these types of meetings, they go as follows:

Client: So... we just discovered that x appears to be doing y [infringing/breaking our tos/etc]
Lawyer: Well, to protect your rights, you can send this cease & desist/sue/etc.
Client: What's the best option?
Lawyer: We usually send the following nastygram.
Client: Okay, go with it.

The clients almost always defer to the lawyers and what they "usually" do, because the clients don't know the legal issues and assume that the lawyers decisions make sense from a business perspective.

Are they idiots? Not at all (just wait until you realize you just called most of your clients idiots). It's just that they're focused on building an actual product, not the legal side, so they defer to the lawyers on business issues. It happens in pretty much every industry I've ever worked in. I can't think of an industry where it hasn't been the norm.
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Weird Harold, 1 Apr 2009 @ 7:57pm

Re: Re: Re: Re: Tell the lawyers? No, tell the clients
But are the laywers wrong?
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Cap'n Jack (profile), 2 Apr 2009 @ 12:47am

No, Harold, but there are cases where they are simply hurting the company - or, at the very least, not benefitting it. I want to bring up the example of Square Enix forcing that company that was selling the Cloud sword to stop selling it. Square Enix wasn't making a sword, and the only thing that sword could possibly do is please hardcore fans, or get people obsessed with swords wondering about the background of it.
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Anonymous Coward, 2 Apr 2009 @ 5:36am

Re:
I have been in many meetings where lawyers recommended a course of action, the executives being advised asked intelligent, probing questions, and then took an action that was differrent from that recommended by the lawyer.

There is an article posted a little after this one about the gullibility of people. Anyone who accepts the advice of any "expert" (e.g., doctors, lawyers, and clever accountants) without asking for more information and deciding what is in their best interest or their company's best interest gets what they deserve. Are they idiots? Perhaps not, but since these are the same people asking probing, detailed questions of engineering, sales, purchasing and manufacturing when it comes to strategic corporate issues, why would they be any less probing when it comes to legal issues? Do they suddenly turn their brains off and become stupid? I suspect that in most cases they do not, otherwise Techdirt would have far more opportunities for posts than what a team of people could post.
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Man from Atlanta, 2 Apr 2009 @ 1:10pm

Re: Uh...
I don't work in trademark at all, but I am of the opinion that sending a threatening letter for an initial contact in most areas of law is almost never good for the client.

If a lawyer starts the discussion by threatening litigation right away, that lawyer has just dragged his client into a context where no one (except the lawyers) wins. In my experience, a lot of people can figure out fair without too much help from an attorney, and they will honestly work to find a fair result if treated like adults and given the chance. These "nastygrams" usually only generate hostility.

Perhaps I can't charge my clients for the hours it takes to write a big nastygram (and litigating the resulting), but I am prepared to accept a little less to earn my fees assisting with productive matters. As would any lawyer who truly understands that we are counselors and advocates first, and litigators second.
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KGWagner (profile), 2 Apr 2009 @ 8:15pm

Re: looks great but ...
"A whopping $129 euros for a huggable guitar pedal?"
It does seem a bit stiff, doesn't it? Especially when you consider the real thing is only about $80. But, if you could see what's inside the real thing, you'd wonder how they charge as much as they do for that. It's a remarkably simple device. At least the pillow has some real labor involved.

I'm glad to see these guys behave like adults, though. I'm sure many guitar players my age had one of these back in the '70s so we could emulate the big stage sound of the rockers of the day on our little cheapo amplifiers. The ability to almost sound badass carved out a special place in our hearts for Electro-Harmonix.

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Gene Cavanaugh, 2 Apr 2009 @ 9:20pm

Nastygrams
Lawyers? Lawyers are paid to do such things, and not paid if they don't.
Perhaps you mean more business owners would want to think about it. It would be inappropriate for a lawyer to make a decision to send/not send a nastygram, and if asked for an opinion, they can say "don't - and keep your money" or "do - and pay me". Which one do you think they would advise?
Best is for the company to decide and not involve lawyers, I believe (even though I am a lawyer).
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Anonymous Coward, 3 Apr 2009 @ 5:50am

Re: Nastygrams
Though I am not a lawyer, I think the company needs to consider the advice of an attorney because of the potential risk to the trademark, but they also need to consider all the options available - as the businesses I have been involved in do. I have seen these businesses give a limited license to their trademarks for many purposes without charge and with nominal internal cost, when it makes sense to do so.
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