Policing Trademark Rights and the Problem Posed By Bullying

Examples of 'Trademark Bullying'

One of the significant consequences of trademark bullying is referred to as the “Streisand effect.” Coined in response to famed entertainer Barbra Streisand's attempt to suppress the dissemination of photographs of her Malibu, CA, home, the gist of the concept is that attempts to suppress information or end certain trademark uses in the digital age can have the unintended consequence of further publicizing the target's behavior. The “Streisand effect” can result from both reasonable and unreasonable enforcement attempts, but seems more likely to occur where the claim appears inequitable or questionable, where the use in question is parodic or pokes fun, and/or where there are little or no apparent damages.

An example of the Streisand effect in the context of trademark policing is the dispute between The North Face, Inc., an outdoor clothing and accessories company, and The South Butt, LLC, a clothing company founded as a means of poking fun at the outdoor accessories giant. This dispute became widely publicized primarily because the founder of The South Butt, then 18-year-old James Winkelmann, Jr., aggressively refused to comply with North Face's demands to cease his parody of North Face products. The dispute incited even more mainstream news coverage after North Face filed suit against The South Butt for trademark infringement and dilution in the U.S. District Court for the Eastern District of Missouri. Continuing in the spirit of his parodic product line, Winkelmann answered the complaint in a thoroughly facetious manner that garnered sympathy as well as increased attention to Winkelmann's company and its products. Media coverage of the dispute resulted in a dramatic increase in sales of South Butt products, and made North Face look ridiculous in the eyes of many consumers because of the perceived heavy handedness of its reaction.

Besides the fact that North Face's legal position as to infringement appeared to be rather weak, it also failed to assess the scope and magnitude of South Butt's behavior in terms of its potential to harm the North Face brand. North Face further erred in that it failed to properly profile its target. Winkelmann founded the South Butt with the specific intention of parodying North Face's cult-like following. It, therefore, should have come as no surprise to North Face that Winkelmann might use its aggression as an opportunity to further poke fun and draw attention to his own brand. North Face should have realized that attempting to squash South Butt might have the unintended consequence of publicizing South Butt's existence; at least as far as the Internet community is concerned. The entire context of the dispute was ripe for unwelcomed publicity.

The results of trademark bullying are also demonstrated by the dispute between Bo Muller-Moore, a folk artist from Vermont, and the fast-food chain, Chick-fil-A. The dispute arose from Muller-Moore's use of the phrase “Eat More Kale” on T-shirts that he began making in 2000 as part of a project to support small local business and promote healthy eating. Chick-fil-A claimed that Muller-Moore's T-shirts infringed and diluted its federally registered trademark rights in “Eat Mor Chikin.”

The problem for Chick-fil-A is that Muller-Moore decided to fight back rather than acquiesce to Chick-fil-A's demands that he cease use of “Eat More Kale.” No matter the result of the legal battle, Chick-fil-A has already lost the public relations fight. Headlines such as “Trademark Bullies: Who Confuses Kale with Chicken?,” “Trademark Infringement Bully Chick-fil-A Sends Cease and Desist Letter,” and “Eat More Kale: Chick-fil-A Big Bully?” are pervasive, and as of the date of this article, more than 36,000 people have signed an online petition demanding that Chick-fil-A cease its harassment of Muller-Moore. Just as telling are the nearly 1,500 “comments” posted in response to Chick-fil-A's November 2011 Facebook message that attempts to explain its position. Not only are a vast majority of these comments overwhelmingly negative, but they also evince a strong indifference to the merits of Chick-fil-A's legal position. Further, Chick-fil-A has caused Muller-Moore's T-shirt sales to boom, presenting yet another example of the “Streisand effect” in action.

Chick-fil-A apparently failed to investigate adequately its target, and also seems to have over-estimated the potential of Muller-Moore's behavior to harm its brand. The Internet community, supporters of Vermont's locally owned small businesses, and the governor of Vermont himself, have enthusiastically come to Muller-Moore's defense. Not only have these supporters unanimously criticized Chick-fil-A's legal position, scoffing at the notion that consumers who see “Eat More Kale” T-shirts will be deceived into thinking that they are somehow connected to the fast-food giant, but they have also successfully portrayed the fight as an example of corporate trademark bullying. Chick-fil-A probably assumed that Muller-Moore would fold in response to the threat of expensive litigation, but all it took to fire up the Internet community was Muller-Moore's “declaration of war.” From there, the blogosphere and enthusiastic social networkers publicized the fight and drew the attention of mainstream media.

Trademark Policing and Public Relations Considerations

Owners of valuable trademarks are rightfully fearful of the prospect of infringement and dilution, but these owners must be willing to be more flexible and realize that a “one size fits all” strategy is no longer appropriate. Rather, a sliding-scale approach that carefully considers a number of factors is a far more effective means of protecting one's brand.

For many years certain owners of valuable marks adopted a policy of blindly lashing out at each and every possible “infringer,” even where the merits were questionable, because they believed the targets of this behavior would immediately capitulate as a result of a lack of financial means to litigate or otherwise defend their positions. Although it may be true that these “policies” rarely come back to bite the aggressors, it only takes one instance of consumer backlash to cause severe harm to the valuable goodwill of these companies and to wake them up to the public relations considerations that must enter into the trademark policing equation. These considerations are even more important in the Digital Age because of the ease with which targets can publicize the enforcement attempt.

Therefore, this sliding-scale approach should include consideration of the nature (i.e., parodic?), scope, magnitude and seriousness of the risk posed by the infringing and/or diluting behavior in terms of potential brand damage. It should also factor in the identity of the target in terms of celebrity, pre-existing connections to the blogosphere and/or to the world of social networking, and the target's ability to mount an unconventional defense by garnering sympathy and turning public sentiment against the enforcer.

In considering the nature, magnitude and risk of brand damage posed by the target's behavior, the trademark owner should take account of the possibility that enforcement attempts will only serve to draw attention to the target. Specifically, trademark owners should balance the threat posed by the targets of their actions against the likelihood that such targets will aggressively fight back and make the asserted claim look foolish. Both Winkelmann and Muller-Moore profited from the enforcement attempts discussed above, and both initially presented only minor threats to the trademark owners that sought to enforce their brands.

In terms of profiling one's target, the larger the encroaching entity, the less sympathy such entity is likely to garner from the public. The general public tends to be bothered by attacks on small businesses or individuals because consumers are fully aware of the steep uphill battles that these businesses face in surviving in the marketplace. In most cases, individuals like Muller-Moore pose very little threat to the value of trademarks owned by large entities, yet they pose the largest public relations risk for these same companies because they command the most sympathy when they are targeted.

To avoid such consumer backlash, trademark owners should carefully profile the targets of their legal action. That profiling should include an assessment of the target's ability and willingness to fight back, coupled with a strength-of-case assessment that considers the target's potential ability to make the trademark owner look ridiculous if its enforcement attempt should be publicized. Small businesses that rely on free Internet publicity to promote themselves are likely to use similar “grass-roots” efforts to defend themselves. Because the costs of litigation can prove to be prohibitive, small entities often take to the blogosphere and to the world of social networking to fight back. Although these means of defense do not prevent their ultimate monetary liability in the courts, they do hit the Chick-fil-As of the world where it hurts most: the goodwill of their most significant brands. An investigation of the target's
pre-existing Internet presence can aid in assessing whether the target is likely to publicize the trademark owner's enforcement attempt. It is hard to believe that Chick-fil-A, for example, would have pressed its claims against Muller-Moore had it realized his ability and willingness to so widely publicize the dispute. It also seems unlikely that Chick-fil-A would have chosen to target Muller-Moore had it more honestly assessed his ability to harm its brand, and more accurately characterized his behavior in terms of its overall enforcement goals.

The lesson to be learned is to avoid attacking individuals and small entities that are doing business in a manner that poses little risk to the value of the larger entity's brand. Further, brand owners must carefully consider the target's pre-existing connections to the blogosphere and to the world of social networking in order to avoid the public relations nightmares noted above. A simple Internet search can uncover these connections and give the trademark owner a better sense of the risks associated with a particular enforcement attempt. In some ways, these considerations are more important than the legal merits of the aggressor's position because the public relations backlash is far more likely to hurt the aggressor's bottom line than is cursory encroachment by relatively unknown entities.

Owners of valuable trademarks find themselves walking an increasingly fine line between bullying and legitimate enforcement. Litigious trademark owners have ample experience in factoring in their target's ability and willingness to litigate its position. They must now take account of their target's ability to effectively defend itself in the courtroom of public opinion, while also considering the nature and magnitude of the threat posed to their valuable brands.

Carl A. Schaffer is an associate at Emch, Schaffer, Schaub & Porcello Co., L.P.A. in Toledo, OH.

Trademark owners have an affirmative duty to enforce their rights in their brands in order to avoid the damage caused by infringement and dilution in the marketplace. This is not to say that trademark owners have a duty to pursue unauthorized uses that have only limited potential to conflict with the trademark owner's rights. Finding an effective middle ground between overly enthusiastic and overly lenient enforcement policies is essential to the development of an effective trademark policing strategy.

Overly aggressive enforcement of trademark rights by high-profile brand owners can lead to consumer backlash when such enforcement is perceived as “trademark bullying” of the “little guy.” Such enforcement efforts have grown increasingly hazardous during the era of Internet blogging and social networking. These mediums have given individuals and small businesses a very tall “soapbox” from which to voice their complaints.

Even in the Digital Age, trademark owners must continue to consider the merits of their cases. However, exclusive focus on the merits of one's case (i.e., whether the claim asserted is at least colorable) invites the possibly grave detrimental result of being branded a “trademark bully.” Therefore, in addition to confirming that its claim is at least colorable, a trademark owner should consider the scope and magnitude of the infringing and/or diluting behavior at issue. It should then assess how serious the infringing/diluting behavior is in terms of potential brand damage. Finally, it should consider the identity of the target of the use at issue in terms of celebrity, pre-existing connections to the blogosphere and to the world of social networking, and the target's ability to mount an unconventional defense by garnering sympathy and turning the public's sentiment against the trademark owner. This final consideration becomes especially important where arguable parody and/or “tongue in cheek” uses are involved. Before exploring these practical tips further, it is useful to consider a few recent examples of trademark bullying that have drawn unwanted attention to the trademark owner.

Examples of 'Trademark Bullying'

One of the significant consequences of trademark bullying is referred to as the “Streisand effect.” Coined in response to famed entertainer Barbra Streisand's attempt to suppress the dissemination of photographs of her Malibu, CA, home, the gist of the concept is that attempts to suppress information or end certain trademark uses in the digital age can have the unintended consequence of further publicizing the target's behavior. The “Streisand effect” can result from both reasonable and unreasonable enforcement attempts, but seems more likely to occur where the claim appears inequitable or questionable, where the use in question is parodic or pokes fun, and/or where there are little or no apparent damages.

An example of the Streisand effect in the context of trademark policing is the dispute between The North Face, Inc., an outdoor clothing and accessories company, and The South Butt, LLC, a clothing company founded as a means of poking fun at the outdoor accessories giant. This dispute became widely publicized primarily because the founder of The South Butt, then 18-year-old James Winkelmann, Jr., aggressively refused to comply with North Face's demands to cease his parody of North Face products. The dispute incited even more mainstream news coverage after North Face filed suit against The South Butt for trademark infringement and dilution in the U.S. District Court for the Eastern District of Missouri. Continuing in the spirit of his parodic product line, Winkelmann answered the complaint in a thoroughly facetious manner that garnered sympathy as well as increased attention to Winkelmann's company and its products. Media coverage of the dispute resulted in a dramatic increase in sales of South Butt products, and made North Face look ridiculous in the eyes of many consumers because of the perceived heavy handedness of its reaction.

Besides the fact that North Face's legal position as to infringement appeared to be rather weak, it also failed to assess the scope and magnitude of South Butt's behavior in terms of its potential to harm the North Face brand. North Face further erred in that it failed to properly profile its target. Winkelmann founded the South Butt with the specific intention of parodying North Face's cult-like following. It, therefore, should have come as no surprise to North Face that Winkelmann might use its aggression as an opportunity to further poke fun and draw attention to his own brand. North Face should have realized that attempting to squash South Butt might have the unintended consequence of publicizing South Butt's existence; at least as far as the Internet community is concerned. The entire context of the dispute was ripe for unwelcomed publicity.

The results of trademark bullying are also demonstrated by the dispute between Bo Muller-Moore, a folk artist from Vermont, and the fast-food chain, Chick-fil-A. The dispute arose from Muller-Moore's use of the phrase “Eat More Kale” on T-shirts that he began making in 2000 as part of a project to support small local business and promote healthy eating. Chick-fil-A claimed that Muller-Moore's T-shirts infringed and diluted its federally registered trademark rights in “Eat Mor Chikin.”

The problem for Chick-fil-A is that Muller-Moore decided to fight back rather than acquiesce to Chick-fil-A's demands that he cease use of “Eat More Kale.” No matter the result of the legal battle, Chick-fil-A has already lost the public relations fight. Headlines such as “Trademark Bullies: Who Confuses Kale with Chicken?,” “Trademark Infringement Bully Chick-fil-A Sends Cease and Desist Letter,” and “Eat More Kale: Chick-fil-A Big Bully?” are pervasive, and as of the date of this article, more than 36,000 people have signed an online petition demanding that Chick-fil-A cease its harassment of Muller-Moore. Just as telling are the nearly 1,500 “comments” posted in response to Chick-fil-A's November 2011 Facebook message that attempts to explain its position. Not only are a vast majority of these comments overwhelmingly negative, but they also evince a strong indifference to the merits of Chick-fil-A's legal position. Further, Chick-fil-A has caused Muller-Moore's T-shirt sales to boom, presenting yet another example of the “Streisand effect” in action.

Chick-fil-A apparently failed to investigate adequately its target, and also seems to have over-estimated the potential of Muller-Moore's behavior to harm its brand. The Internet community, supporters of Vermont's locally owned small businesses, and the governor of Vermont himself, have enthusiastically come to Muller-Moore's defense. Not only have these supporters unanimously criticized Chick-fil-A's legal position, scoffing at the notion that consumers who see “Eat More Kale” T-shirts will be deceived into thinking that they are somehow connected to the fast-food giant, but they have also successfully portrayed the fight as an example of corporate trademark bullying. Chick-fil-A probably assumed that Muller-Moore would fold in response to the threat of expensive litigation, but all it took to fire up the Internet community was Muller-Moore's “declaration of war.” From there, the blogosphere and enthusiastic social networkers publicized the fight and drew the attention of mainstream media.

Trademark Policing and Public Relations Considerations

Owners of valuable trademarks are rightfully fearful of the prospect of infringement and dilution, but these owners must be willing to be more flexible and realize that a “one size fits all” strategy is no longer appropriate. Rather, a sliding-scale approach that carefully considers a number of factors is a far more effective means of protecting one's brand.

For many years certain owners of valuable marks adopted a policy of blindly lashing out at each and every possible “infringer,” even where the merits were questionable, because they believed the targets of this behavior would immediately capitulate as a result of a lack of financial means to litigate or otherwise defend their positions. Although it may be true that these “policies” rarely come back to bite the aggressors, it only takes one instance of consumer backlash to cause severe harm to the valuable goodwill of these companies and to wake them up to the public relations considerations that must enter into the trademark policing equation. These considerations are even more important in the Digital Age because of the ease with which targets can publicize the enforcement attempt.

Therefore, this sliding-scale approach should include consideration of the nature (i.e., parodic?), scope, magnitude and seriousness of the risk posed by the infringing and/or diluting behavior in terms of potential brand damage. It should also factor in the identity of the target in terms of celebrity, pre-existing connections to the blogosphere and/or to the world of social networking, and the target's ability to mount an unconventional defense by garnering sympathy and turning public sentiment against the enforcer.

In considering the nature, magnitude and risk of brand damage posed by the target's behavior, the trademark owner should take account of the possibility that enforcement attempts will only serve to draw attention to the target. Specifically, trademark owners should balance the threat posed by the targets of their actions against the likelihood that such targets will aggressively fight back and make the asserted claim look foolish. Both Winkelmann and Muller-Moore profited from the enforcement attempts discussed above, and both initially presented only minor threats to the trademark owners that sought to enforce their brands.

In terms of profiling one's target, the larger the encroaching entity, the less sympathy such entity is likely to garner from the public. The general public tends to be bothered by attacks on small businesses or individuals because consumers are fully aware of the steep uphill battles that these businesses face in surviving in the marketplace. In most cases, individuals like Muller-Moore pose very little threat to the value of trademarks owned by large entities, yet they pose the largest public relations risk for these same companies because they command the most sympathy when they are targeted.

To avoid such consumer backlash, trademark owners should carefully profile the targets of their legal action. That profiling should include an assessment of the target's ability and willingness to fight back, coupled with a strength-of-case assessment that considers the target's potential ability to make the trademark owner look ridiculous if its enforcement attempt should be publicized. Small businesses that rely on free Internet publicity to promote themselves are likely to use similar “grass-roots” efforts to defend themselves. Because the costs of litigation can prove to be prohibitive, small entities often take to the blogosphere and to the world of social networking to fight back. Although these means of defense do not prevent their ultimate monetary liability in the courts, they do hit the Chick-fil-As of the world where it hurts most: the goodwill of their most significant brands. An investigation of the target's
pre-existing Internet presence can aid in assessing whether the target is likely to publicize the trademark owner's enforcement attempt. It is hard to believe that Chick-fil-A, for example, would have pressed its claims against Muller-Moore had it realized his ability and willingness to so widely publicize the dispute. It also seems unlikely that Chick-fil-A would have chosen to target Muller-Moore had it more honestly assessed his ability to harm its brand, and more accurately characterized his behavior in terms of its overall enforcement goals.

The lesson to be learned is to avoid attacking individuals and small entities that are doing business in a manner that poses little risk to the value of the larger entity's brand. Further, brand owners must carefully consider the target's pre-existing connections to the blogosphere and to the world of social networking in order to avoid the public relations nightmares noted above. A simple Internet search can uncover these connections and give the trademark owner a better sense of the risks associated with a particular enforcement attempt. In some ways, these considerations are more important than the legal merits of the aggressor's position because the public relations backlash is far more likely to hurt the aggressor's bottom line than is cursory encroachment by relatively unknown entities.

Owners of valuable trademarks find themselves walking an increasingly fine line between bullying and legitimate enforcement. Litigious trademark owners have ample experience in factoring in their target's ability and willingness to litigate its position. They must now take account of their target's ability to effectively defend itself in the courtroom of public opinion, while also considering the nature and magnitude of the threat posed to their valuable brands.

Carl A. Schaffer is an associate at Emch, Schaffer, Schaub & Porcello Co., L.P.A. in Toledo, OH.