Trademark Law: Good, Bad, and Ugly
Blogger and co-editor of Boing Boing Cory Doctorow recently posted an article titled Trademarks: the good, the bad and the ugly, in which he lays out his observations about trademark law and his arguments against trademark bullying – a topic I’ve written about from time to time, including in this blog post. While I can’t say I agree with every word of Doctorow’s article, I applaud his overall approach and wanted to take the opportunity to respond and touch on some of his themes from the perspective of a practicing trademark attorney.
Doctorow starts out with a clear and useful explanation of how trademark law came to be and what it’s intended to do. The ultimate purpose of trademark law is to protect consumers from being misinformed as to the source of goods or services. Doctorow uses the example of a famous soft drink:
If you buy a tin of fizzy drink with the word Pepsi on the side, you should get a tin of Pepsi, not a tin of battery acid. We all know what Pepsi means, the Pepsi company has spent billions encouraging to make an association between the word and its products. In nearly all contexts, someone other than Pepsi selling something with the word Pepsi on it would be engaged in fraud, because in nearly all cases, that sale would be made to people who believed they were buying a Pepsi product.
So why do we need trademark laws? The law recognizes that, in the hypothetical outlined above, it would be unreasonable to expect every consumer of the fake “Pepsi” to run to court and try to obtain damages against the fraudulent drink peddler. The courts would be clogged with cases, and the costs would be unbearable to average consumers. The concept of the protectable trademark was created in order to give companies legal standing to go after the theoretical fake Pepsi seller on behalf of the public. Trademark rights are understood to flow from this basic arrangement. However, as Doctorow points out, the companies’ “interest isn’t the public interest, it merely coincides with it … sometimes.”
Doctorow goes on to state, “Trademark was not born as a tool to create associations. Trademark is a tool to protect associations. But over the decades, trademark has been perverted into a means of stealing words out of our common language and turning them into something very like property.” While I don’t completely disagree with the latter statement, I do think Doctorow’s view of trademark law can be characterized as a bit narrow.
The Entrepreneur’s Point of View
Consider an entrepreneur, A, entering into a new business. A launches her product with a carefully-chosen brand name. The next day, someone else, B, enters into the same market with the same or a similar name. We could argue that A has not had the opportunity to develop a strong association with her new brand name in the eyes of consumers – to put it another way, her intellectual property rights have only barely begun to accrue. However, it still seems as though she is being harmed by B’s appropriation of her brand name.
The public has a general interest in A starting her business and investing in her brand. If B (and C, and D, and so on) can copy not only her business concept but even her brand name the day after she opens for business, A will not have a strong incentive to enter into this business in the first place.
I’m not saying that A’s interest here trumps any other considerations, or that her goods and services shouldn’t have to face competition in the free market. But there is clearly some level of public good associated with granting brand owners – or trademark holders, if Doctorow prefers – the opportunity to allow their marks to gain a foothold in the public’s imagination.
The Fine Line
Now we’ve come to the fine line between “establishing and protecting a new brand so that consumers can find and identify your entrepreneurial business” and “stealing words out of our common language.” Perhaps, by virtue of allowing A to obtain rights in a brand name when she enters into the marketplace, we are impoverishing the language, a public good. We’re taking a word or phrase from its common use and assigning it – albeit in a limited fashion – to an individual or business entity. Of course, that’s the essence of any number of business concepts: taking undiscovered or under-utilized assets and transforming them into goods or services with value in the marketplace. As with any other type of public good, it’s worthwhile to be vigilant about how much value we are giving it away, and to whom. Doctorow was wise to bring these issues into wider consideration.
It’s natural for the high-profile cases to garner the most attention (in fact, I think that’s a tautology). However, not all trademark holders are like Games Workshop, who (and here I agree with Doctorow) has been acting like a bully by threatening to sue everyone who uses the term “Space Marine.” Every day I work with business owners who want to establish a solid brand identity based on goodwill associated with their products and services. When a potential client comes along and I see that he’s clearly trying to find a way to leverage trademark law to monopolize the dictionary from A to Z, I show him the door. Not only do I disagree with that approach on policy grounds, I’m convinced that they won’t be good clients – if a client is trying to rip someone else off – or everyone else off – it’s only a matter of time before he tries to rip me off.
I’ve spent years trying to educate my clients about the downsides of being trademark bullies. That type of approach is simply not a sustainable long-term strategy. And even if we aren’t in 100% agreement, articles like Doctorow’s recent post will only serve to broaden awareness of these issues. I welcome any input from other trademark attorneys, brand managers, or others who’ve run into this issue. And I’m intrigued by the emergence of the Chilling Effects Clearinghouse, an online attempt to catalog abusers of intellectual property law. I look forward to digging into the CEC and its pros and cons in a future blog post.
