Nickelodeon Is Opposing A 12 Year Old New Zealand Girl's 'Slime' Trademark For Some Reason

from the you-can't-do-that-in-new-zealand dept

Viacom has decided to take its trademark bullying game international and possibly against the most sympathetic target it could find. Nickelodeon, owned by Viacom, has decided to oppose the trademark registration of a 12 year old girl in New Zealand, claiming its trademark on the word "slime" is too important. Katharina Weischede has managed to build up an online brand in New Zealand for producing and playing with "slime." She made a business out of it and attempted to trademark "slime princess", only to find Nickelodeon opposing it.

What started off as a hobby had by late 2017 become a home-based business called "Slime Princess". Now known by her friends, family and even strangers as the "Slime Princess", she eventually decided to trademark her business's name. However, Katharina was met with opposition by Viacom, the owners of children's entertainment channel Nickelodeon. After applying to trademark "Slime Princess" earlier this year, Katharina received a letter from Viacom opposing the trademark. According to the New Zealand Intellectual Property office, Viacom has trademarked the word "slime".

Everything about this is absurd. We can start with how unlikely it would be for any confusion to exist between Weishede and Nickelodeon, move on to the very generic and broad mark that Viacom apparently holds in New Zealand, take a turn to point out that Weishede's business has something like $20k in valuation, and finish off by simply pointing out the PR nightmare that is the parent company of a kids' network battling a 12 year old at the trademark office.

The good news is that Weishede appears to be a very bright young woman.

Aside from running her business, Katharina is interested in becoming a human rights lawyer.

This case was "a great start to show people that you fight for what you believe in", she said. "I wanted to fight because I made this and it's not just about the slime. It's the brand itself. People don't only come for the slime, they go and see me."

She has set up a page to collect money for the legal fees to fight this. Her family is also backing her and she is working with a lawyer, who is hinting at the fact that Viacom certainly didn't have to go the route of fighting a trademark battle with a 12 year old.

Katharina's lawyer, Alex Lee, said the 12-year-old had worked very hard to build up her profile and her brand.

"This is a young girl's dream," he said. "If in fact the other party wanted to find a way to work with her that's great but certainly, we wouldn't want to think the idea is to prevent a young teenager who already has a profile with a particular brand from being denied her rights."

And finding a way to work with her is exactly what Viacom should be doing here, or it risks tarnishing the reputation Nickelodeon has worldwide over the "threat" of a bright 12 year old young woman. Best of luck winning that PR battle.

Filed Under: katharina weischede, new zealand, slime, trademark, trademark bullying
Companies: nickelodeon, viacom

Macy's, The Department Store Chain, Forces A Tiny Hair Salon In Scotland To Change Its Name

from the hair-apparent dept

Macy's, the enormous retail company famous for its enormous department stores, has been featured in our pages before throwing its weight around over trademark concerns. If you had thought that the company has ceased its trademark-bullying ways, a recent report featuring a tiny hair salon in Scotland named after the founding couple's daughter will disabuse you of this notion.

Jon and Kirsty Nelson named their West Lothian business Macys after their daughter, little imaging they would shortly face the wrath of corporate America. The couple received a letter from a London law firm acting on behalf of Cincinnati-based Macy’s, alleging trademark infringement.

Macy’s is worth £6bn, has almost 900 stores, stocks products by Ralph Lauren, Hugo Boss, and Calvin Klein, and sells mink fur coats for £8,500. Their Bathgate “rivals”, Macys Lounge, offer female customers a cut and blowdry for £30 while men can get a cut for £9, or £13 if they want a shampoo.

Now, it should be noted that Macy's department stores do include spas that provide hair and beauty services. The company does have valid trademark for these services as well. All that being said, the idea that there would be any true confusion in the marketplace between these department store spas and a tiny storefront salon in Bathgate is plainly absurd. To drive this point home, the nearest Macy's department store is several thousand miles away.

But, as we've mentioned many times before, trademark bullying works. The couple behind the salon announced recently that they would change the name of their business. Though, for those that appreciate a dash of trolling in their lives, the change the couple made might not be exactly what Macy's had in mind.

“ We wanted to fight this battle, David and Goliath style, but we did not have the funding or resources available to do so and were somewhat backed into a corner to ‘angrily’ agree to their terms of changing our name.

“We give you : MACIZ Lounge.

“This will be our new trading name from March 2018 going forward. It is still similar to what we currently use.”

And, so, the full weight of the Macy's legal efforts managed to get a couple of letters changed, and that's about it. The pronunciation for the business remains the same. Most of the name remains. Don't get me wrong, this is a massive pain in the ass that costs very real money, and a situation the couple should never have had to go through, but the results of the trademark bullying are rather beautifully silly.

Not that patrons of the salon are laughing.

Social media users wanted to show their support for the salon and were quick to show their outrage at the American outfit.

Erin Thomson said: “And here was me thinking you guys were a branch of Macy’s famous NY department store opening in Bathgate and specialising in haircuts. Silly me. Maciz Lounge sounds fab”

Helen Wilson posted: “It’s an absolute disgrace a huge organisation can victimise a small family business.”

Jamie Cameron commented: “Clearly they know you guys are on the road to world domination and are terrified. Stuff them guys.”

Macy's may not care about these responses, given that, again, these are not even potential customers, since there are no Macy's department stores anywhere nearby. Still, from a branding perspective, this isn't a great way to make the brand friends around the globe.

Filed Under: bullying, department store, salon, scotland, trademark, trademark bullying
Companies: macy's

Trademark Bullying Works: Mooselick Brewing Co. Becomes Granite Roots Brewing Out Of Fear Of Moosehead Breweries

from the the-moose-is-loose dept

I will occasionally get a common question when discussing stories about trademark bullies: why do these bullies actually do this? The easy answer is, of course, because it works. And it works on many levels. For example, the primary targets in actual lawsuits can be bullied out of using names and terms for their businesses or brands, so it works on that level. But that's really just the tip of the iceberg. Where being a trademark bully really works is when it makes lawsuits unnecessary, because other businesses and people are so fearful of the bully tactic.

To see that in practice, one need only look at the brewery formerly named Mooselick Brewing Co., which is now rebranding itself as Granite Roots Brewing without putting up a fight against, you guessed it, Moosehead Breweries.

Mooselick started selling beer in July 2015 and opened its tap room on Route 12 in Troy soon after with a name that honored their local heritage.

“We thought it was fun, interesting and it kind of paid homage to the moose,” Oliver Levick said Monday. “We thought it was one of the coolest of animals in New Hampshire, and that we could have fun and play with and have some moose themes.”

It wasn't long before the lawyers for Moosehead Breweries came calling. Levick mentions in the article that he was shocked that trademarks could be so broad as to cover everything using anything moose-related in the alcohol industry. It's a notion familiar to many, with the mind naturally recoiling at the idea that so broad a thing could be locked up by a singular player for a massive marketplace. The actual test for trademark, as you will know, is whether there is potential for confusion by consumers. As with many of the legal threats levied by Moosehead Breweries, that seems as though it would have been unlikely in this case.

Except we'll never see that question adjudicated in court, because Mooselick chose to take on the substantial costs for rebranding itself instead.

“We didn’t have the resources for a long, drawn-out legal battle,” Levick said. So the owners notified Moosehead of a transition plan and worked on creating a new name and image for the brewery.

Levick and his friends Iodice and LoDulce had all grown up in New Hampshire and wanted to pay tribute to their roots and the brewery’s commitment to the state.

The warning shot by Moosehead Breweries was all it needed to fire -- so entrenched is its reputation for trademark bullying and its willingness to engage in costly lawsuits. Startups understandably do the math on whether fighting the fight is more costly than simply rebranding. It's unfortunate that what was once a consumer-protection mechanism has devolved into this kind of sanctioned bullying.

Filed Under: beer, trademark, trademark bullying
Companies: granite roots brewing, moosehead breweries, mooselick brewing co.

Brewery Looks To Reform Trademark Practices After Its Lawyers Bully A Pub Over Its Name

from the the-blame-game dept

As is commonly said, mistakes happen and it's what we do about those mistakes that is important. Too often when the mistakes are concerning trademark bullying, there is nothing done to acknowledge or address that bullying. The bully will simply state the oft-repeated excuse that they must bully according to trademark law, which isn't remotely the case. And, because there is no acknowledgement that anything was done wrong, the bullying then continues.

Well, after a recent dust-up over trademarks between BrewDog, a self-styled "punk brewery," and a family-owned pub, it seems that the brewery is actually going all in on reforming how it approaches trademark issues, and even intellectual property more generally.

The brother-and-sister team behind the Wolf pub in Birmingham were forced to drop their original plan to name the establishment the Lone Wolf, after receiving a legal warning from BrewDog, which has launched a spirit bearing the same name. But BrewDog founder James Watt announced a change of heart on Monday after the Guardian’s report sparked a backlash that saw the firm, a vocal critic of large, faceless brewing firms, accused of acting like “just another multinational corporate machine”.

Watt had initially tweeted that the brewery's lawyers got "trigger happy" and that the bar could keep using the name. That was on March 27th, although that tweet appears, as best as I can tell, to have been deleted since. In its place were assurances to Watt's followers that all had ended well.

Along with that came a blog post from BrewDog explaining that it had to enforce its trademarks, but both promising to do so more leniently and stating that the company doesn't actually take intellectual property all that seriously.

In terms of the Lone Wolf Bar in Birmingham, we paid for and trademarked Lone Wolf in 2015. The Lone Wolf Bar in Birmingham opened in January of 2017. Our wider team and legal partners, acting entirely in our best interests informed them that we owned the name and they would have to stop using it. Just as we'd do if someone opened a bar called BrewDog.

However, hands up, we made a mistake here in how we acted. Almost all companies always look to enforce trademarks, whereas at BrewDog we should take the view to only enforce if something really detrimental to our business is happening. And here, I do not think that was the case. As soon as I found out, I reversed the decision and offered to cover all of the costs of the bar. I also invited them up to Ellon to make their own gin with us. This is a mistake that hurt a lot; but like all mistakes, it made us better. This will not happen again.

Going even further than that, the brewery has taken the somewhat extraordinary step to publicly release its brew recipes on its own website. Were a company to want to demonstrate more perfectly its commitment to not being an overbearing bully on matters of intellectual property, I'm not sure how they could do a better job of it than this. Working with the former target of the company's lawyers, publicly explaining what happened to its customers and everyone else, and releasing the recipes for its brews publicly for anyone to download: this is a commitment to being open and cool to customers and businesses.

Keep in mind that BrewDog could have simply shouted the mantra of having to protect its trademarks at everyone. We here wouldn't have bought that, because we know better, but that tactic must surely work to some degree given how often it is deployed. That BrewDog went another route is a good thing that should be celebrated.

Filed Under: james watt, trademark, trademark bullying
Companies: brewdog, wolf pub

Vice Media Settles With Indie Band ViceVersa, Showing That Trademark Bullying Totally Works

from the oh-great dept

A while back, we wrote about the hilariously bullying cease and desist notice Vice Media, a billion dollar media company, sent to ViceVersa, an un-signed punk band. At issue, according to Vice Media, was the band's name and trademark application, both of which the media company declared would damage its own brand and confuse customers. Neither of those claims was remotely true, but they bullied in the way that only bullies can.

Which brings us to the present, where we learn the good news that Vice Media has settled with the band over the dispute.

Today, both parties reached a settlement over the trademark dispute. Reached for comment, a Vice spokesperson said: "We're glad this worked out for both parties, and we wish the band the best of luck."

This is where most of the folks reading this news will breathe a sigh of relief that sanity has been reached and everyone has walked away from this whole thing amicably and whole. Which is partly true. But not entirely. Check out the band's statement through its lawyer.

In a statement, ViceVersa's lawyer wrote: "After a few weeks of negotiations, the two parties have come to an amicable agreement. Changes have been made to the band's trademark details as registered with the USPTO, thus narrowing the scope of their services. ViceVersa will continue using their name and logo as they please and Vice Media will go about their $2.5 billion business."

If you can't hear the disdain dripping in that statement, your brain needs a tune up. And it's not difficult to understand why that disdain would be there. After all, even if we assume that there was no monetary requirement for this settlement, even if we recognize that the band will be able to continue using its name, and even if the only minor changes were needed to the band's trademark paperwork to keep it as narrow as possible...what did Vice Media give up as part of this "settlement?"

Nothing. The claim that the band's name was infringing in any way was not a valid claim, so the band's continued use of it is not a concession by Vice Media. Nothing in the band's original trademark application would have covered anything that would have confused any customers anywhere that an indie punk band was somehow also part of Vice Media. In other words: since Vice Media's claims were total bullshit, giving up on any part of those claims isn't a concession, whereas the band's concessions were minor but very real.

Bullying works, in other words. By virtue of its size, Vice Media was able to work its will on a small indie punk band just because it could. Don't be fooled by the settlement into thinking it was just.

Filed Under: trademark, trademark bullying, viceversa
Companies: vice media

Google Trademark Bullies Obviously Non-Commercial Parody Site

from the no-need-to-do-this dept

We've been disappointed in the past to see Google descend into the land of trademark bullies, and had hoped that the company had learned its lesson. Unfortunately, it appears that the company still will dip into trademark bullying when it really should know better. The latest came in response to some pranksters setting up a (quite amusing) parody site called Google-Nest.org, playing on the fact that Google recently purchased Nest, the makers of internet connected thermostats and smoke detectors. The site was clearly mocking Google's expansion into... well... everything, with fake product announcements for things like Google Trust, Google Hug and Google Bee (your personal drone). The whole thing was clearly parody, and while it was clearly making a statement about how integrated Google has become into many people's lives, you would have hoped that Google's trademark lawyers would have a sense of humor and let it go.

They did not.

If you go to the link above, you now see a message from Peng! Collective, who put the site together for the Republica event in Berlin, saying that they didn't want to get involved in a big legal battle. Of course, the internet never forgets, and there are plenty of archives of the original. The whole thing is incredibly questionable on Google's part. Not only is the work clearly parody, but it's non-commercial. And trademark only applies to commercial uses.

The EFF has stepped in and sent a letter to Google on behalf of Peng! Collective questioning why Google decided to be a trademark bully over this, and reminding Google (and us) of the neat practice that Linden Lab pioneered years ago -- a proceed-and-permit letter instead of a cease-desist-letter on trademark issues.

The site is a pure political commentary. Indeed, its launch has long since been recognized as such by a variety of news organizations. U.S. authorities consistently support the basic notion that trademark law does not reach, much less prohibit, this kind of speech regarding a matter of substantial public concern. Simply put, "The Lanham Act regulates only economic, not ideological or political, competition . . . Competition in the marketplace of ideas is precisely what the First Amendment is designed to protect." ...

First, use of the Google name and logo on the site is fully protected by the nominative fair use doctrine.... Indeed, courts have noted that nominative fair uses are particularly likely to be found in parodies....

Second, given the content of the site, and the ample publicity the spoof has generated, all of which recognized as satirical and parodical commentary, it is difficult to imagine that any Internet user would be confused.

Third, the site is sheltered by the First Amendment.... Again, there is nothing on the site that would lead consumers to purchase goods or services based on a mistaken affiliation.

Finally, my client's action is entirely noncommercial and, therefore, statutorily exempt from the Lanham Act.

There's even more in the letter, including the fact that since this all happened in Germany anyway, the Lanham Act (which governs trademark law in the US) doesn't even apply.

Either way it's disappointing to see Google go down this path. Yes, as trademark lawyers love to point out, unlike with other forms of intellectual property, there is more of a requirement that you actively protect your marks under trademark law, but (contrary to what some believe) this does not mean that you have to go after everyone using your mark, especially when it's clearly not infringing for all of the uses listed above.

As in nearly every case of trademark bullying, the end result just makes the bully look silly and legalistic, where they could have come out much more reasonable and accommodating. Hopefully, this time, Google learns its lesson on these kinds of things. Sure, the Google-Nest site was mocking Google, but big companies need to learn to not just have a sense of humor about these things, but to recognize that this is part of the public discussion and debate about their role in the world. Google could have jumped into that discussion or avoided it all together. But, it chose one of the worst options: to go with a threat.

Filed Under: cease and desist, germany, google nest, peng! collective, proceed and permit, trademark, trademark bullying
Companies: eff, google

Canonical Apologizes For Trademark Bullying... And Again... And Again

from the how-to-respond-to-accidental-bullying dept

Last week, we were among those both surprised and disappointed to find out that Canonical, makers of the Ubuntu operating system, had been acting like a trademark bully. However, the company appears to have quickly and thoroughly responded to the claim, apologizing multiple times and explaining everything in great detail. If you want to see how to respond to a flub, this is not a bad example. First, Mark Shuttleworth, Canonical's founder posted an apology via Google+ flat out stating that the company had messed up:

This was a bit silly on our part, sorry. Our trademark guidelines specifically allow satire and critique ('sucks sites') and we should at most have asked him to state that his use of the logo was subject to those guidelines.

He later updated the post to note that thanks to the ridiculousness of trademark laws, in which you're often expected to "defend" your mark to avoid losing it (though, really, that's only supposed to apply to situations where there's a likelihood of confusion...) they should have just given the FixUbuntu site a free license:

We are obliged to have SOME agreement in place with anyone using the Ubuntu logo. Rules for nominative use are subjective and thus a policy and agreements are required if we want Ubuntu to remain a defensible mark. It's a pain but that's the system.

In this case we should just have said 'you may use the mark if you say that you are doing so with permission'. I guess a new guy made a bad call, but that happens and there's no point in beating Canonical up over an inadvertent slip.

At around the same time, Steve George from Canonical posted a blog post again explaining in more detail that the company is very open with its trademarks, even for sites that criticize them (though, he did ridiculously claim that there might be some confusion here -- which seems highly unlikely):

In the case of fixubuntu.com, we were concerned that the use of the trademark implied a connection with and endorsement from the Ubuntu project which didn’t exist. The site owner has already agreed to remove the Ubuntu logo and clarified that there is no connection; from our perspective the situation has been resolved, and we have no issue with the site or the criticism it includes. In fact, far from an trying to silence critics, our trademark policy actually calls out parody and criticism and other uses as being allowed when the marks are used appropriately. (Please make the parodies funny – we need a good laugh as much as anyone!)

Shuttleworth then responded again, in more detail on his own blog, explaining how the company was too aggressive and how it was a mistake. As he noted, there are some instances where it helps to be able to really threaten abuse, and here the lawyer who sent the letter "chose the wrong template":

In order to make the amount of correspondence manageable, we have a range of standard templates for correspondence. They range from the “we see you, what you are doing is fine, here is a license to use the name and logo which you need to have, no need for further correspondence”, through “please make sure you state you are speaking for yourself and not on behalf of the company or the product”, to the “please do not use the logo without permission, which we are not granting unless you actually certify those machines”, and “please do not use Ubuntu in that domain to pretend you are part of the project when you are not”.

Last week, the less-than-a-month-at-Canonical new guy sent out the toughest template letter to the folks behind a “sucks” site. Now, that was not a decision based on policy or guidance; as I said, Canonical’s trademark policy is unusually generous relative to corporate norms in explicitly allowing for this sort of usage. It was a mistake, and there is no question that the various people in the line of responsibility know and agree that it was a mistake. It was no different, however, than a bug in a line of code, which I think most developers would agree happens to the best of us. It just happened to be, in that analogy, a zero-day remote root bug.

There are still some reasonable criticisms to be made of this whole thing. For instance, some may argue that a better way to deal with the situation in the first place would be to make the change the FixUbuntu site was advocating for in the first place -- better protecting users' privacy. But, on the whole, it's pretty rare to see a company so openly admit to mistakes being made and explaining in so much details what happened.

Filed Under: fix ubuntu, mark shuttleworth, trademark, trademark bullying, ubuntu
Companies: canonical

New York Continues Its Trademark Bullying Ways: Threatens Coffee Shop With Bogus Threats

from the i-hate-ny-trademark-bullying dept

I recall, a few years ago, filmmaker Kevin Smith talking about how the state of NY demanded money because a background player (I think a dancer) in Clerks II was shown wearing an "I ♥ NJ" t-shirt, and NY, somewhat infamously, holds the trademark on "I ♥ NY." I don't recall all of the details, but I'm pretty sure Smith said that a significant sum of money had to be paid to the state of NY. Of course, that's an abuse of trademark law on multiple levels. The likelihood of confusion is likely nil, and even if they were arguing dilution, that seems unlikely as well. The t-shirt was in a movie, not for sale by the movie. Another time, NY threatened the guy who created the I ♥ NY design in the first place when he tried to make a new version after September 11. Because NY is an obnoxious trademark bully, that's why.

The latest in NY's over-aggressive trademark bullying comes courtesy of the NY Times, which reports that CMG Worldwide, the agency that NY uses to "police" its trademark, sent a legal nastygram to NYC coffee shop Everyman Espresso. Apparently, one of the co-owners of the shop, Sam Penix, had "I [coffee cup icon] N Y" tattooed across his fingers, as seen below: And, from that, the coffee shop built something of a logo, and sold merchandise with the logo, which included the fist as a key part.
Photo from jkwoo Lots of people, quite reasonably, find this bullying ridiculous, and as Gothamist points out, some even volunteered to set up a legal defense fund.

Everyman Espresso's owners decided to fold, telling CMG that it would "cease all use of its mark." You would think that should be enough, but because NY state is positively obnoxious, CMG sent back a letter demanding licensing fees:

“We expect that any entity that infringes on the rights of our client compensate it for unauthorized use,” the lawyer, Clare Neumann, wrote on May 20, requesting “an accounting of all gross revenues generated during the period when the I ♥ NY® Trademark was used” to help her set the appropriate penalty.

Penix rightfully points out that this feels like extortion, and it's doubly ridiculous because the entity threatening his coffee shop is the Empire State Department for Economic Development, who is basically trying to extract money from a popular coffee shop, while getting it to stop promoting NY.

The lawyer representing NY claimed that trademark regulations "prohibit companies from using any part of a trademark." But that's flat out untrue. There are all sorts of situations where you can use a trademark, especially if there's no likelihood of confusion (which is absolutely the case here). If NY argued dilution, there might be a case, but I'd love to see how this harms NY and its mark in any way. Because it doesn't.

Coincidentally, I'll be in NYC next week, staying blocks from Everyman Espresso. I don't even drink coffee, but feel like stopping by to support the store, just because trademark bullies suck.

Filed Under: coffee, i love ny, ny, trademark, trademark bullying
Companies: everyman espresso

Commerce Department Releases Useless, Biased Report On Trademark Bullying

from the that's-what-happens-when-you-only-ask-one-side dept

Trademark bullying is a big problem, and it's one that we regularly discuss here on the blog. It involves a trademark holder threatening and/or suing another company claiming infringement, where there's really none. It's quite effective and can have serious chilling effects. After Monster Energy Drink went after Vermonster beer for trademark infringement (yes, a trademark bullying cases that had nothing to do with one of the biggest trademark bullies, Monster Cable), Vermont Senator Patrick Leahy suddenly took an interest in trademark bullies. A report on the issue was requested, and the typically useless Commerce Department took on the task and did a ridiculous job at it. This is a commerce department that seems to think copyright, patent and trademark laws are wonderful and should only be expanded.

You can read the full report (pdf), but you won't get much useful out of it. Eric Goldman's detailed summary of the report's massive failings is much more educational. Basically, much of the "research" for the report came from big trademark holders -- who are often the biggest bullies -- rather than the victims of trademark bullying. So, of course, they said there really wasn't much of a problem at all, and the Commerce Department parroted that position.

The worst part, however, was in the whole discussion on the "duty to police." This is an issue that is regularly raised whenever we talk about trademarks, where people claim that you have to enforce your trademark or you can lose it. As we've explained many times, that's a bastardization of what the law and case law seem to actually say. It's only true that you need to enforce it in situations where there's an actual likelihood of confusion and/or it's being used in direct competition. The tangential or totally unrelated uses don't require you to enforce. Furthermore, there are alternative actions rather than threatening or suing -- such as offering up free or cheap licenses.

Goldman's section about this "duty to police" delves in even further, and basically shows why the Commerce Dept. report is useless:

Second, the report says "a trademark is a property right that an owner has a duty to police." WHOA! Many folks would dispute the characterization of trademarks as "property"; and many folks (including me) insist that the "duty to police" is massively overstated. Later, the report says, "In view of the mark owner’s obligation to police violations, aggressive enforcement of one’s trademark rights does not automatically equate to abuse or bullying." In effect, the report says that it doesn't see any problem at all; but if there is a problem, it's just the natural consequence of that pesky duty to police....oh well, c'est la vie.

Given its apathetic nature, the report doesn't make the logical jump that any intellectually curious person would instantly make: if the "duty to police" might be driving trademark owners to be (over)zealous in their enforcement efforts, maybe we should fix the duty to police. After all, this "duty" isn't in the statute at all; it's barely in the caselaw; and it could be easily remedied with a statutory clarification that might very well be welcomed by both trademark owners and secondary trademark users because it might eliminate ambiguity plaguing both communities. C'mon, guys--that conclusion isn't exactly rocket science.

From my perspective, the "duty to police" is like the proverbial monster under a child's bed. It's not actually there, but boy, it sure seems scary. My academic writing queue is too thick right now to tackle this issue immediately, but I don't recall seeing a good comprehensive academic article grokking the duty to police (if I'm forgetting something, please let me know). That would be an excellent paper topic. I would be happy to work with someone on this project so that we can demonstrate just how massively the "duty to police" is overstated--typically as a business development tool for trademark litigators trying to afford their kids' private school tuition. Naturally, the Department of Commerce report undertook no such research effort into the trademark policing duty itself.

But what do you expect from the Commerce Department? It's really turned into nothing more than an internal lobbying arm for big business, these days. It's too bad the FTC didn't take on this particular task, as it seems like it's really more something they should cover, and at least it's a federal agency that seems to really try to understand the issues, when it comes to intellectual property.

Filed Under: bullying, commerce department, trademark, trademark bullying

Class Action Lawsuit Filed Against Coach Over Bogus Takedowns, Trademark Bullying

from the nicely-done dept

We've seen so many cases of trademark bullying, and it's so rare to see people fight back, that it's interesting to see it happening -- and even more surprising to see it done as a class action suit. Eric Goldman points us to the news that this class action lawsuit has been filed against luxury goods maker, Coach, for apparently issuing takedowns to eBay for perfectly legitimate second-hand sales, while also threatening those who put up those items. I'll let the lawsuit itself (the full filing is embedded below) explain the basics:

Without investigating the validity of its allegations, Coach wantonly accuses consumers of infringing its trademarks by selling counterfeit Coach products. Coach apparently monitors online retailers such as E-Bay, looking for ads from consumers selling second hand Coach products. In response to such ads, Coach delegates a New York law firm to launch a threatening letter to the consumer. These letters accuse the consumer of trademark infringement, threaten legal action, and demand the immediate payment of damages to Coach in "settlement" of Coach's threats. At the same time, Coach (or its New York law firm) informs the online retailer that infringing merchandise is being sold on its website. In many cases, this causes the online retailer to involuntarily remove the allegedly infringing ad, and to disable the consumer's online account. This destroys any chance the consumer had to sell the Coach product second hand, and otherwise damages the consumer.

In many cases (such as that of the lead plaintiff identified here), Coach's allegations of infringement are flatly false. It appears that Coach fails to conduct even a minimally reasonable investigation into its counterfeiting claims before threatening legal action. For example, the lead plaintiff identified in this Complaint is a former Coach employee, who owned, and tried to sell, genuine and legitimate Coach products It was entirely legal for her to do so. Coach's threats against her were false, reckless, and unwarranted.

We've definitely seen attempts to use trademark law to block the legitimate sale of secondhand goods. It's a bad trend that needs to be stopped, and hopefully lawsuits like this might do the trick. Unfortunately, in the past few years, we've seen some really underhanded tricks used by producers to effectively block secondhand sales and first sale rights through legal trickery. It's not clear if that kind of defense will be used here.

The lawsuit itself wants a declaratory judgment that selling legitimate Coach goods secondhand does not infringe... but also includes a defamation claim, pointing out that accusing someone of infringement when it's not true could be seen as libelous. That part seems like a stretch, but I'll be curious to see how the court rules.

Filed Under: auctions, trademark, trademark bullying
Companies: coach, ebay