Nutella Nastygrams Restaurant Promoting Its Product, Opens The Door For Competitors
from the i-drink-your-milkshake dept
It's astounding and depressing how often companies seem to abuse trademark law to pretend it's about complete ownership of a brand, rather than its roots as a consumer protection statute to stop someone from buying a product believing it was made, supported or endorsed by someone else. The latest ridiculous news comes courtesy of the Citizen Media Law Project in Boston, who notes that their local popular-with-the-college-kids "wraps and smoothies" joint, Boloco, has been legal nastygrammed by Nutella. Why? Because of this: their Nutella Milkshake, which they've sold for 14 years:Courts have long confronted this unauthorized-but-accurate use of another company's name. In a 1924 Supreme Court case the court considered a New York company that took a French company's cosmetic powder, blended it with a binding agent, and sold it as a compact including both the New York company's and French company's names on the packaging. The Supreme Court allowed the defendant to do this, provided that the defendant include a prominent disclaimer that the district court in the case initially imposed, informing the public that the two companies are not affiliated. Writing for the majority, Justice Holmes observed:In response, Boloco has decided to cave and is instead looking for alternatives to Nutella for their shake, even to the point of showing some of the other brands they're considering:[W]hat new rights does the trade-mark confer? It does not confer a right to prohibit the use of the word or words. It is not a copyright. . . . A trade-mark only gives the right to prohibit the use of it so far as to protect the owner's good will against the sale of another's product as his. . . . When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth. It is not taboo.Many courts have adopted this case's approach to this question: you can use the trademark so long as you are not misleading the public into there being an affiliation between you and the company, other than your use of the company's product in your product. For example, a 2004 case from the Southern District of New York allowed a company that makes tuna salad display on the lid of its container – in letters about as large as the company's own brand name – that the salad was "Made with Bumble Bee Tuna," over objections from the famous tuna company.
...when I was in Boloco today (field research!) I couldn't help but see the dozens of jars of Nutella in the back, and thinking about the dozen-or-so other locations around Boston with similar stacks of Nutella jars. Those will be replaced by a competitor's product, in a chain that seems to be growing with each passing month. Not to mention the thousands of Bostonians who have heard about this case and will naturally root for the local guy; you get the feeling that this whole experience is going to leave a bitter taste in [Nutella's] mouths.Perhaps, next time, they'll realize that bullying may be legal, but it's often not a particularly smart business strategy.
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Filed Under: cease and desist, marketing, nutella
Companies: boloco, nutella
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"Trademark fair use" does exist but usually is referred to in other ways - such as "nominative use".
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Fair use is a trademark concept that has nothing to do with the copyright concept of fair use. Not sure what your point is. Not only is fair use codified in the Lanham Act, there's a rich body of case law developing it. So it's not "primarily a copyright concept." It's a trademark concept, and it's a copyright concept. And the two have nothing to do with each other.
"Trademark fair use" does exist but usually is referred to in other ways - such as "nominative use".
The way I learned it, there's two types of fair use in trademark: (1) classic fair use, and (2) nominative fair use. Classic fair use is when the defendant uses plaintiff's mark to describe the defendant's own product. Nominative fair use is when the defendant uses the plaintiff's mark to refer to the plaintiff's product.
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Kinda funny since this seems to invalidate the whole point you were trying to make that because we discuss copyright fair use all the time, we suddenly need to also mention it here.
Protip: instead of trying to attack the strawman you've built up in your head that you think is me, trying actually taking the time to look at what we actually say. You might learn something.
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Protip: instead of trying to attack the strawman you've built up in your head that you think is me, trying actually taking the time to look at what we actually say. You might learn something.
You see fair use in places that it's not, so when you fail to mention it where it's actually present, that's noteworthy. Go ahead and pretend like you saw it. You and I both know that you just copied Sellars' analysis.
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Just making an ass of myself.
FTFY
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LO F'in L.
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Get your money back. You got ripped off.
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Sorry, you already have that esteemed award.
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> grade in the class.
Sure you did. And I'm the Pope of Rome.
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There were 14 people in the class, so it's not that great of an accomplishment. But still, I'm proud.
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Bullshit.
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Aww how cute. Did you make that in arts and crafts time? Now have a cookie and juice its nap time soon.
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They complain about trolls (ie uncomfortable truths) and then promptly display classic troll behavior.
So typical.
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http://en.wikipedia.org/wiki/Fair_use_(US_trademark_law)
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The best part is, however, that if they did mention it you would be the first one here bitching about they were using it improperly. Funny. They write an article about fair use, you bitch about it. Write an article about something other than fair use, you bitch about them not talking about fair use enough. An uninformed layman may be fooled into thinking that you come here only to troll!
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Brand names are trademark, not copyright.
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And thanks for the link. While I just hovered around using the find ability to check all instances of "fair use" it was enlightening. I'm still trying to define a better term that doesn't confuse copyright with trademark though.
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Moreover, that report gives more links to other trademark cases which are also relevant, so I have to give AJ props for that one, even if we have a tendency to disagree on other things.
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It's interesting though, he spews so much BS that we automatically scorn him at every opportunity. Shame on me for this one.
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It is interesting there's very little material on that part of trademark law. Maybe it's even weaker or rarely used as defense?
Other than that my apologies. You could have avoided much of the animosity if you had not used it just to attack the article and Mike.
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Why would he, when that is the ONLY reason he comes here anyway?? He got the result he wanted: everyone reacting and piling on him so he can cry "woe is me, I am so persecuted!" just like his *IAA masters.
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"Fair use" in trademark comes up in a few different contexts. Courts are not crystal clear as to the boundaries here, but our legal guide highlights a few of them. These include nominative fair use (using "McDonalds" to talk about McDonalds the company and its products), descriptive fair use (use of a trademark for its non-trademark meaning, such as referring to a deal as the "best buy" without reference to Best Buy), and more general First Amendment defenses (best articulated by Rogers v. Grimaldi and progeny, where courts give the contents of creative works more latitude through more abstract balancing tests).
I could see this situation cast in the "nominative fair use" light as a few commentators suggested, but I think it actually better fits into a whole different line of cases: the "genuine goods" line, which addresses circumstances where you are using the trademark to refer to the exact same goods as the trademark owner. The goods here are those that come from the Nutella company.
The contours of both "genuine goods" and "nominative fair use" are similar: in both cases courts have allowed the use of another's trademark, provided that the use doesn't go further to suggest a level of sponsorship that isn't there. As I noted in the particular post, I could see a skilled argument pushing a court either way on this one (though personally I never for a minute thought that Boloco had any sort of "deal" with Nutella). But that's hardly the point, as I think Nutella loses much more than it gains in approaching the issue this way.
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You jest...
Everywhere? You jest. Let me see... somehow "fair use" isn't mentioned in the posts on the following, rather common subjects
In fact, as I write this, the last 20 RSS topics which I see in my feed include only one post concerning "fair use", and that only peripherally: it was mainly about how abusers of the DMCA practically cannot be punished (in the particular case in the post, the content which was claimed to be infringing was ruled to be a "fair use").
BTW, "fair use" is everywhere in real life. You should take off your blinders...
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Re: You jest...
I never borrrowed it, it was broken when he lent it, and it was working when I brought it back!
But I do agree with your point anyway.
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Hypocrisy
Like heaving peanut butter on 'low calories' bread slices.
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Re: Hypocrisy
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Re: Hypocrisy
http://www.livestrong.com/article/433062-nutrition-of-nutella-vs-peanut-butter/
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Fantastic Business Acumen There
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Re: Fantastic Business Acumen There
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You make the case every day against capitalist monopolies, Mike,
Anyhoo, here's another project for you, Mike: a succinct statement of trademark to educate public and companies, instead of ad hoc bits when yet another story like this comes up. -- As it will, because as you note, the people who run businesses are remarkably ignorant of the basics, blind to how every day they report... Whoops. I begin to recurse, there.
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Re: You make the case every day against capitalist monopolies, Mike,
At least you got the writer right this time ;)
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Re: You make the case every day against capitalist monopolies, Mike,
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Re: You make the case every day against capitalist monopolies, Mike,
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Nutkao it is.
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The result is those companies are insanely well-known and their products widely used. If they really enforced trademark in this way (albeit wrong) the backlash would hurt them much more than any possible tarnishment....
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Best choice
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So who benefits from this?
No surprise that the lawyers choose a strategy which is good for themselves (more legal activity), despite being unlikely to benefit Nutella.
When are companies like this going to wake up and remember that the goal of their business is to market their brand, not defend their brand. For a consumer product like Nutella, the more you can get your brand in front of consumers the better. If you can get another company to do that for you...GREAT!
If Nutella was thinking like an entrepeneur, they would be attempting to get other companies to do exactly what Boloco was doing
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So Now Another Milkshake is coming
What I find extremely weird was that when I had a store, we got money from manufacturers to use there name in advertising, aka co-branding. Now this place gets nastygrammed for doing what they've been doing for 14 years. I'm guessing that Nutella needs new laywers.
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Re: So Now Another Milkshake is coming
As for the second point, it is a case of the right hand not knowing what the left hand is doing. One side of a business is looking for ways to get the brand out there, another side is trying to shut down uses of the brand name. While this isn't quite the same situation as the music companies that upload promo videos and then DCMA them, it's not wholly dissimilar either.
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Re: So Now Another Milkshake is coming
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Look at it this way: Which has more marketing value, a Nutella milkshake, a Justins milkshare, or a Choco Butter milkshake? Only one out of the three even rings a bell with me, and that would be Nutella.
Put another way, if the product was described as "Nut Spread Milkshake" would it be more or less appealing to consumers?
Now, conversely, does Nutella having their name on this drink drive anywhere near the same benefit to them? What about the potential harm if the drink sucks? Do they have any control over it?
It's really a no brainer here. Nutella gets little, gives up way more, and didn't even get to choose being in the relationship. I don't blame them for using the lawyers.
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These options have been around for decades and yet neither Mars nor Nabisco have gone after these companies. It is possible that there are contracts or agreements in place, but that still does not detract from the premises that the name of the milkshake is descriptive of its ingredients.
Common Sense(not so common any more) points that this is an ignorant and self abusive move on that part of Nutella.
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So far Nutella has only encouraged Boloco to advertise for Nutella's competitors.
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a/ Not think nutella themselves made it
b/ not care whether nutella themselves made it
c/ be informed correctly as to the purchasing decision they may be about to make because that's how real language works
and
d/ think nutella are a bunch of morons if they happen to hear about this case whether nutella happen to be "legally correct" or not.
just sayin'
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Its nice... I dont expect it to last, but nice to see you are capable.
Now throw out more insult laden garbage and I will troll you even harder knowing what you are capable of.
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If the drink sucked, then no one would buy it and it would no longer be on the menu. Considering that the drink has been on the menu for 14 years, means that it is good enough and popular enough to not harm the Nutella brand in any way.
It's really a no brainer here. Nutella gets little, gives up way more, and didn't even get to choose being in the relationship. I don't blame them for using the lawyers.
What? They get nothing out of this? What about all the jars of Nutella the restaurant buys to fill the demand for the drink? What about all the people that go out of their way to buy Nutella in order to make the drink at home? That is not a net gain for Nutella and its brand?
As for using lawyers, that has done more harm than good for the brand. By sending in the lawyers, Nutella has now alienated itself from a large number of former and potential customers. Now, instead of seeking out Nutella to make their drinks, these former customers will be buying competing brands. That is a net loss to Nutella and its brand.
What reality do you live in?
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You have now made my DO NOT BUY list
Just like Sony & Monster Cables
And I let my friends know
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"Decided to cave"
It would be awesome if the owner chose to fight the cease & desist, but NOT fighting it shouldn't be called "caving". Can we just call it "has decided to agree to Nutella's ridiculous and baseless demand"? That leaves no doubt that Nutella is the problem here, not the owner of Boloco.
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Re: "Decided to cave"
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Question
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This seems kinda random on Nutella's behalf
They mainly referring to cheesecakes, icecreams or some other dessert item where they use Nutella(tm) as a major ingredient.
That Nutella(tm) is striking out now at a random local shake company feels like some local branch exec trying to get some cash. Bear in mind that Nutella is a Ferrero brand (I think) which is Italian (again, this is from memory).
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YAAWIJHR
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OH MY GAWD HOW WILL I EVER LIVE NOW???
If you want to see a REAL douchebag, look in the mirror.
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TL:DR RD is being abusive... Report their post instead.
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https://docs.google.com/document/d/1_DWYEIhgMK54_sBDMj5UnuW0bHmdADnCY3099_9ffFg/edit
S hazam, no more aj (unless you want to click to show his posts).
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Fair Use
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Or at least add a block feature so I don't have to scroll past them all.
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Justin's
Justin's is delicious and would make a much better shake.
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Re: Justin's
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Weird
Definitely Nutella is on the losing side with this one.
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