Picture this. You are the owner of an up-and-coming marketing agency. You recently wrapped up a design and identity project for one of the city’s fastest growing tech start-ups, DigiBerry. The company makes digital pastries that people can share across social networks as part of messages or shared content (don’t ask me why it’s cool, it just is!). As part of the project, you created a series of icons, fanciful pastry designs, a website, print collateral, and a series of short animated videos that users of DigiBerry’s app can send to acquaintances within their social network. DigiBerry LOVED it. The local design scene LOVED it. In fact, they asked you if they could feature the design in next month’s Marketing Greatness magazine. Flattered, you accept the invitation and submit copies of the logos you created for DigiBerry and images from some of the designs. Feeling like you’re on cloud 9, you decide to feature DigiBerry on your website and in a “featured work” brochure that you are preparing for the annual national marketing conference in New York.
All is going great. Then on the eve of the big story release in Marketing Greatness and your appearance at the conference, you get that dreaded white legal-sized envelope that most business owners have nightmares about: the cease and desist letter from the law firm of Ware Biggar Zhan Yu. Client has hired the firm and is accusing you of trademark infringement, unfair competition, and copyright infringement. They demand that you remove all logos from your website and destroy any materials that include client’s logos, name, or the designs you prepared for them. Having already prepared the materials, what are you to do?
It seems like I have been getting a lot of questions (or hypotheticals) lately that involve pointing the finger at someone else. When I point the finger, I don’t mean in a whistleblower type of way but as in the type of finger-pointing that goes on when we are teenagers: “Johnny was out with his girlfriend until midnight. If he can do it, why can’t I?!”. These types of questions don’t begin with the premise that what you are doing may not be right and they are usually designed to uncover the mystery of another person’s tactics. You know the response that I got when I asked this question? “Son, you aren’t them. If they were our son, they aren’t living by our rules.”
What is remarkable is this same type defense often arises when people talk about trademarks. The defense is usually brought up by a would-be infringer as a way to distract from the real issue (which is that they are infringing in the first place). The line usually goes something like this:
I see so many other people misusing a trademark in the media and they aren’t called-out by ABC company. If they are getting away with it, I should be able to get away with it, too.
This defense is about as effective as explaining away highway speeding by pointing at other people passing you by at 85 while a cop is writing you a ticket for going 75. The fact is some trademark owners have a lot of ground to cover.
Do you see what I did there?
Trademarks on government insignia. The third and final installment where we discuss the all-important topic of whether government bodies can prevent citizens from using official government insignia on t-shirts and other novelty items. In the last post I left off with the question of whether the government should be allowed to prevent the use of official insignia by a person in the form of a parody. After all, if the government has an interest in preventing the general public from becoming confused as to the affiliation between a parodist and the government agency that this person is parodying, shouldn’t the government be allowed to bring down the hammer?
Deeper questions on the extent of overlap between use of government symbols vs. use of commercial symbols are more easily answered by remembering that the dominant goal of trademark law is preventing consumer confusion as to source. In the private sector, if confusion about a trademark is likely to result in harm to the consumer from a counterfeit product, stopping others from using the trademark is hugely important. But in the private sector, a trademark owner does not have the unmitigated right to prevent all uses of their trademarks by others, particularly where no confusion is likely and there are greater interests at stake. These greater interests often originate in the interest of competition. Another greater interest is also found in freedom of expression. Trademark law knows these greater interests collectively as the “fair use” defense.