Saturday, 3 August 2013

A Need for Trademark Bullies (or at least more trademark enforcement)?

"Patent troll," "copyright troll," and "trademark bully" are labels with generally negative connotations. Most may say that we need less of all of the above, including less enforcement by these "evil doers." However, defining exactly what might fit in one of the above categories can be challenging. In some ways, it is like telling my children that people are not bad, but may engage in bad behavior. For example, Professor Lemley explores the conduct of some universities in a thought provoking article with the provocative title "Are Universities Patent Trolls?".

Interestingly, with so called "trademark bullies," a definition has been very elusive although some may say a trademark bully is an entity with a lot of resources enforcing a trademark against an entity with less resources (usually by a substantial amount) with a trademark theory that is either unsupported by trademark law or is a bit of a stretch. And even more interestingly, when one searches for trademark cease and desist letters posted on the Chilling Effects Clearinghouse website, that collects cease and desist letters, a vast majority of the letters are posted by Google--the apparent victim of bullying. Leaving aside the definitional issues involving trademark bullies, there is a space where there appears to be a need for more trademark enforcement--not less. That space involves nonprofits.

A few years ago, the well-known and well respected nonprofit Susan G. Komen For the Cure received some not so positive press about its enforcement of "for the cure" against other nonprofits--specifically smaller nonprofits. It was essentially labeled an evil "trademark bully." But, do we need more of that? A recent study and article by CNN, Tampa Bay Times and the Center For Investigative Reporting, outlines the 50 worst charities in the United States and discusses an apparent tactic of some "bad" charities that choose trademarks similar to respected charities and use telemarketers to secure donations--most of which never reach the intended beneficiaries. The article states:

The nation's worst charities are large and small. Some are one-person outfits operating from run-down apartments. Others claim hundreds of employees and a half-dozen locations around the country. One lists a UPS mail box as its headquarters address.

Several play off the names of well-known organizations, confusing donors.

Among those on the Times/CIR list are Kids Wish Network, Children's Wish Foundation International and Wishing Well Foundation. All of the names sound like the original, Make-A-Wish, which does not hire professional telemarketers.

Make-A-Wish officials say they've spent years fielding complaints from people who were solicited by sound-a-like charities.

"While some of the donations go elsewhere, all the bad public relations that comes with telemarketing seems to come to us," said Make-A-Wish spokesman Paul Allvin.

Donors who answer calls from the 50 worst charities hear professionally honed messages, designed to leverage popular causes and hide one crucial fact: Almost nothing goes to charity.

Why isn't there more trademark enforcement in this space? Is it because of the Komen problem where the nonprofit can look very bad very quickly depending on who they choose to enforce their mark against? Do we need more "bullies" and less shame here? An interesting 2013 article "Trademarks for the Cure: Why Nonprofits Need Their Own Set of Trademark Rules" by Lauren Behr in the 54th volume of the Boston College Law Review explores whether nonprofits need special trademark rules. 

1 comment:

Suleman said...

Lemley's article raises a lot of issues on the extent to which we want universities to focus on commercialising their research. The IP system clearly needs better ways of dealing with abuse of IP monopolies, but it is clear that universities are as capable as anyone else of abusing patent monopolies and they should be made aware of the fact that their reputations will be affected.