This is the second post in an ill-defined series on legal matters pertaining to intellectual property creation, development, and defense. Please read our intro post for back-story on why and, most importantly, some disclaimers.
The other day we dove into some of the basic ins and outs of copyright law and how it particularly relates to creating work for others, or hiring others to create work for you, or how it may make your head explode if you try to read legal filings about Superman. I know it was exceptionally exciting reading and that you can’t wait to get to trademark law, so far be it from me to keep you waiting. Though the copyright Bowie knife is arguably your most important protection as a creator in the IP jungle (since it’s common law and covers your actual ideas and work), trademark is kind of like your fishing rig; it’s quite useful, fairly optional, and wow, does it demand a lot of maintenance.
Trademark: Pay Attention and It’ll Help You Out In the Long Run
Trademark protects logos, nomenclature, and any other marks that you might use in the course of doing business with your copyright-protected creative work, and it only works if you actively register those marks with the government.
You also have to use them; if someone else comes along and establishes a market presence with your marks while you were letting them sit in your basement unseen, a judge could reasonably decide that the marks are more legitimately theirs by right. (This happened when the Los Angeles Dodgers tried to claim protection for the Brooklyn Dodgers trademark they obtained when they bought the team in the ’50s; judge wasn’t even having that.) This concept is called “abandonment” and it has many IP-farm trademark-holders in a constant state of panic. More on this below.
Of course, like copyright, the marks you want to protect have to be unique and not under someone else’s control or part of common usage. This is partly common sense (no, you shouldn’t try to trademark “Luke Skywalker” or “water bottle” just to see what happens) but it’s also a legitimate matter of legal dispute. The word “thermos” is generally used to describe any food container that keeps things warm or cold, so it was legally determined to be not unique enough for Thermos L.L.C. to claim trademark protection. Failure to police your trademarks (actually, that should be “failure to police” since it’s another legal concept) can sometimes result in your marks becoming generic and therefore at risk of losing their protection.
Plus, you’ve got to make sure your trademarks are registered separately in every individual industry in which you plan to use them, and then you have to go ahead and actually use them. So, even if Thermos did hold the trademark for food and beverage containers, they likely don’t have one for books and magazines, which means that you can write a series of fantasy novels set in the mystical land of Thermos (and if you do, I will pre-order all the hardcovers).
More on the rules and regs as we get into some common trademark misunderstandings:
You Don’t Have to Register Your Trademarks; All You Have to Do is Create Them
FALSE Yes, I already mentioned this, but it’s worth getting into exactly how onerous this registration process is. If there’s a word that means the opposite of common law, where one has to engage in endlessly repeating DMV-like legal processes, this is it. The registration has to include the marks, of course, and it must be renewed every five years. You have to indicate the industries in which they will be used, and show current usage and/or intent to use them in the future. You can also file a declaration of incontestability, which is the highest form of trademark protection available and would prevent a future ruling against you for not being sufficiently unique or for not being the sole party with a legitimate claim to the mark. The declaration must show that no one else has a pending legal claim on the marks and that no one else has a dominant presence in the market with them. Then you have to set up some sort of reasonable (whatever that means) program for monitoring the marketplace and responding to infringements so it doesn’t look like you’ve abandoned the marks. The whole thing is just . . . expensive.
You Lose Your IP If You Lose Your Trademark
FALSE This is that old confusion over the differences between trademark and copyright. As we briefly discussed in the last post, if the trademarks to Superman expire, become abandoned, or are otherwise no longer under protection, someone else can publish a Superman comic book. But because Superman is copyright-protected, that rival book can’t feature someone named Clark Kent, a planet called Krypton, or really anyone with superpowers at all because if it did, that would be copyright infringement. Now, what kind of Superman comic would that be? Quite a crappy one, and it won’t sell. If, in some horrible series of unfortunate events, you lose trademark protection for your IP, the fact remains that only you can exploit your IP. Anyone picking up a rival publication featuring your trademarks will be sorely disapointed to discover nothing inside even remotely similar to the material they’ve come to expect from you. This is the way trademark protection is optional; it helps secure your market position and keep your audience safe from confusion and protect you from even the tiniest amount of lost sales as a result, but it’s not the end of the world. Sometimes businesses even let a trademark lapse (intentional abandonment) as a resource-saving strategy precisely for this reason; if and when the IP needs to become active again, the copyright protection allows you to revive it, even though you may not be the only one using the specific trademarks (logo, title, etc.) anymore. Further, the IP resurrection may allow you to reclaim the abandoned trademark if the program is pervasive enough and there are few to no rivals using it. The bottom line with this? Do your best to claim your trademark protection and maintain it, and then take a deep breath; it will all be OK.
You Lose Your Trademark If You Don’t Defend It
TRUE Even though this is a proper understanding, not a misunderstanding, “defense” is so often confused with “aggressive offense” that I thought it bears mentioning here. But yes, like just about anything else in life, if someone sues you in a court of law to gain control of your trademark and you don’t show up to the trial, you’ll most likely lose the case. In other breaking news, if you stop going to work every day you’ll most likely get fired, and if you don’t pay your cable bill they’ll probably shut it off.
You Lose Your Trademark If You Don’t Offensively Enforce It
FALSE After you’ve gone through the headache of registering those marks, established an incontestible market presence, swatted away rival claims to it in court, renewed the registration every five years, and even filed a declaration of incontestibility, it really wouldn’t qualify as protection if it automatically reverts to one of your infringers when you’re not paying attention. The entire point of working this hard for trademark protection is that it protects you from this exact situation. I believe the source of this misunderstanding is the thermos situation already outlined above, and the idea of trademark abandonment. Which brings us to . . .
You Risk Losing Your Trademark LATER If You Don’t Offensively Enforce It Today
DEPENDS This is kind of a sub-misunderstanding of the one above and lies in a belief that trademark law functions along the same logic as schoolyard law: “You didn’t complain when I used your football yesterday, so it’s mine now, ha ha!” Needless to say, that’s just not the way it works on Planet Law. If a rival is trying to claim in court that you’ve abandoned your trademark, whether or not you failed to police other infringements over time is one test the judge may use to see if they’re right. But “failure to police,” by itself, is not a determining point for trademark loss. In other words, no judge would ever say to you, “Hey, you didn’t police it that one time last May, so you lose.” One of the best-known examples of this occurred when Anheuser-Busch sued the DuBois Brewing Company for infringing their Budweiser trademark in 1940. The results were deeply intricate and involved tests for genericism (since “Budweis” is a geographic area), fraudulent intent, and market confusion, along with abandonment, and even the abandonment test had a sub-test to determine if the failure to police was flagrant or accidental. This was deep and real. The judge ruled that because the infringement was knowingly unenforced by Anheuser for 35 years, abandonment did occur. The sum total of these findings, of which abandonment was just a small part, led to the loss of trademark protection, and the abandonment piece only came into play because it happened over the course of four decades. So, if you have registered your trademark, used it in the marketplace, set up some kind of regular attempt at a search for infringements, and responded to the infringements you know about in some way, then you can securely argue that you haven’t abandoned anything. If you choose not to do one of those things, then that argument is weakened by a degree, and a judge will consider that in context. If you have done none of those things then, well, you actually have abandoned your trademarks and you should probably stop complaining. So what does this mean for you? In short: don’t worry. And don’t opt against protecting your trademarks because you can’t afford a team of lawyers scouring the earth every day for infringements and bringing them to civil trial; you’re not obligated to do anything but behave as if the protection you’ve secured is important to your business.
If You Don’t Enforce Your Trademark In Court, You Lose It
FALSE False, false, a thousand times false! Thankfully, we live in a free democracy in which the state can’t obligate you to put yourself in financial ruin in order to protect your business. Trademark enforcement can happen in phone conversations, cease-and-desist letters, barroom brawls (actually, don’t do that), and just about anything else. A judge wants to see that you’ve monitored the market and taken action against the infringement; not that you have the legal prowess of Fish & Richardson. In the Sean Murphy/Wolverine thing last week, Marvel’s initial “hey, knock it off” notice to Sean (with which he immediately complied) was their trademark enforcement. In fact, one of the more notable recent trademark infringement situations, the Muhammad Ali/No Mas t-shirt thing, was not only resolved with politeness but evolved into a viable business venture because of it. When Ali’s people caught wind of Chris Isenberg’s “bootleg” (his words) Cassius Clay t-shirt, they sent their obligatory enforcement letter, with which Chris complied, and in the ensuing conversation both parties agreed to enter into a licensing agreement including back royalties because the t-shirt was just that dope. IT GETS BETTER. When the photographer responsible for the Ali images on Chris’s hang-tags discovered that infringement, the exact same thing happened, and you can read the unabashedly heartwarming story here. This situation mirrors the Marvel/Sean Murphy situation note-for-note, yet one ended in a cultural street art triumph and the other ended in tears. This isn’t a dig against either of those two parties — life is nuanced, and who knows what deep-seated emotional upheavals were at play there — but the point is that not only are you not obligated to litigate, it’s almost always in the best interests of your sanity and your business not to. You might even make some new friends.
When Trademark Infringement Is Discovered In Trial, You Have to Countersue to Keep It
DEPENDS This one has cropped up a lot in recent online discussions of the Gary Friedrich/Marvel/Ghost Rider dispute. If someone is suing you and claiming that your trademark is, in fact, theirs, it’s probably worth your while to prove that claim invalid (rather than just prove your claim valid). This is an optional tactic, and if you choose this option the law requires you to do so in the form of a countersuit. This isn’t really a requirement that you waste your resources engaging in legal matters against your will (which would be unconstitutional); it’s just a technical mechanism for the courts to process your complaint about what you’ve just seen. The courts aren’t designed to simultaneously process the statements, “No, I didn’t infringe,” and “Hey, wait a minute, he infringed me,” in the same lawsuit. Countersuing the guy who is trying to take away your trademark is extremely wise, like a counterpunch after you’ve blocked his jab, but not doing so won’t automatically forfeit your protection.
When Trademark Infringement Is Discovered In Trial, You Have to Seek Damages
FALSE While it’s certainly good business practice to countersue your infringer when it’s discovered in a trial, you are under no obligation to seek damages. Without damages, if the court finds against your infringer, the consequence is that the infringement has to stop and the material must be destroyed. Damages are a punitive thing tacked on to hammer home your point, and, in some cases, to make your business whole. For instance, if the infringer sold a million bucks worth of merchandise using your marks, it stands to reason that that was a million bucks worth of lost business to you, and the judge may agree when deciding the damages. Now, that point is probably the most important thing; no matter what damages you seek, the judge can modify it or negate the damages altogether. It’s entirely up to her, and part of her job is to make sure the infringement was intentional and that the damages sought are reasonable and won’t destroy the infringer’s life in your bloodthirsty quest for revenge. Many people speaking up for Marvel in the Gary Friedrich case point to this misunderstanding when defending the damages sought in Marvel’s countersuit, saying that Marvel was forced to do this or risk losing their trademarks. None of this is true; Marvel chose this course of action as a response to this particular case. Now, kindness may not be very relevant in the IP Jungle; if you’ve invested the time and expense to both create and obtain protection for your trademarks, it makes sense to protect them however you can. However, if kindness in the IP Jungle is important to you, you can’t comfort yourself with the thought that trademark holders are obligated to do not-nice things, because they aren’t.
With All That Being Said, Let’s Stop Cluttering Up the Courtrooms, Shall We?
If you’ve read both parts and absorbed all 3,000 words on the topic, you may be thinking, Wow, Letter Better really wants me to get crushed in the clockworks of America’s legal system. To that, we say thee nay. Trials are awful things. As we mentioned at the start, trials only start at the written laws and regulations we’ve outlined here. Once they get going, you’re at the mercy of lawyers’ and judges’ interpretations of those laws and, more importantly, your behavior. Nuances of when conversations happened, what products were sold in which state at which time, and where the commas were placed in your registration documents can all affect a judge’s decision to change your IP life forever.
To our minds, the best benefit of copyright and trademark protection is the heft it gives you when telling an infringer to get off your block. A cease and desist letter from your attorney or, heck, even a polite email from you, is often all you need to stop someone from stepping on you when you have the full legitimacy of registered trademarks and market-established copyrights behind you. Most infringements are innocent, to a degree. Note the preponderance of those cute “Please don’t sue me notices” that some artists place on works that incorporate someone else’s IP; they don’t want a court case, and if you call them and ask them to stop, they will.
But if not, and you’re in trouble, and no one else can help, and if you can find them, you can call the A-Team. I mean, you can go to your old friends copyright and trademark — they got your back.