Category: Trademark

Tim Tebow Sends Cease & Desist Letter to T-Shirt Company

Thursday, 17 May, 2012 09:28 Written by Mark Malek 3 Comments
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By: Mark R. Malek

Anyone who knows me knows that I am an avid (and sometimes rabid) fan of the New York Jets.  Therefore, it is no surprise that my email inbox this morning was flooded with links to a story that Tim Tebow’s attorney has sent a cease & desist letter to a T-Shirt company that is making the T-Shirt pictured below.  The letter can be found here.

As we indicated in some previous articles, cease & desist letters are a good starting point for enforcing your intellectual property rights.  For more information, take a look at the articles here, here and here.  Some of these articles are directed to protecting your patent rights, and some are directed to protecting your trademark rights. Either way, a cease and desist notice is one in which the intellectual property owner merely informs the alleged infringer of their rights, and demands that any further infringement be stopped.

Back to the story at hand, as you can see, the shirt in question changes the current New York Jets logo to read “MY Jesus” instead of “NY Jets.”  So I guess my question is what intellectual property right is Tim Tebow attempting to protect?  The letter indicates that the shirt makes it appear as if Tim Tebow endorses the T-shirt company. Really?  I am trying to figure out why that would be.  Is Tim Tebow the only Jets fan that believes in Jesus (I can say for a fact he is not – I’m one!!)

Of course, when my anti-Jets fan friends (especially the dang Dolphin fans and the Patriot fans) found out about the story, it made for the same joke over and over again – Even Tim Tebow thinks he’s Jesus!  Aghh!  Enough already.  I suspect that young Mr. Tebow does not really understand the ins and outs of intellectual property law and why his overzealous attorney is sending out letters like this.  Granted, Tim Tebow, like the rest of us, does enjoy a right to his own likeness, but it is not as though there is a trademark issue here for Tim Tebow, and if this is about a right to his likeness, then what likeness is being protected.  Does he really think that a reference to Jesus in connection with football is a reference to him?  News flash – there have been plenty of very talented NFL players that believe in and worship Jesus long before Tim Tebow came around.

At best, there may be a trademark issue for NFL Properties, who I believe is the owner of all the NFL logos, or perhaps even the NY Jets.  There is likely even a copyright issue here.  Technically, the NY Jets logo (in all its glory) is afforded copyright protection.  Therefore, this T-shirt can technically be thought of as a derivative work.  With that in mind, not one of these intellectual property rights is Tim Tebow’s to assert.  To the owners of Chubby Tees – I would be pleased to respond to Mr. Tebow’s attorney for you.  Side note – Before the Florida Bar asks, I am not soliciting business…I just want to have some fun with the response to the attorney that thinks the name of Jesus is the same as an endorsement by Tim Tebow!

Trademark Litigation: Response to Ars Technica’s Article on Hermes $100 million Default Judgment

Monday, 14 May, 2012 06:00 Written by Aaron Thalwitzer 3 Comments
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A recent article on Ars Technica decried abuses by the judge in a copyright case in which $100 million in damages plus vast injunctive relief was granted to the plaintiff, Hermes, a French high fashion house alleging counterfeiting by way of trademark infringement. The judgment was granted by default because the defendants failed to respond, the author Venkat Balasubramani (with comments from Eric Goldman) is not pleased, not pleased at all with this result.

Mr. Balasubramani  concludes that “there was no evidence of damages whatsoever” and that the judge should have “given[n] the defendants a chance and warn[ed] them before making a decision.” According to Mr. Balasubramani, “ party’s failure to respond to lawsuit documents that were emailed to them—particularly where there’s no proof even that the documents have been received by the defendants—is not the type of scenario where courts typically smack defendants for frustrating the judicial process.”

I disagree.

I won’t claim to know with certainty whether the damages were inflated, but according to Wikipedia, Hermes made $2.401 billion in revenue in 2010, netting $421.7 million. I never heard of them before I read the article, but they’re big, and while $100 million is a big number, it doesn’t seem patently absurd that they might be damaged in $100 million. Under the circumstances, I don’t think it’s “laughably” large. Bear in mind, this is coming from someone with his fair share of legal knowledge, but without an ounce of fashion knowledge.

But the damages number is not really what interests me. It’s the impassioned cries that the judicial system has failed the defendants that get me. In this case, the defendants were apparently served by the appropriate means. They failed to respond. The judge is a neutral party. He or she hears facts, argument, and law, and decides accordingly. When one one party doesn’t make any argument or fails to appear to contest allegations, it is not the judge’s role to advocate on their behalf. To do so would violate the due process rights of the plaintiff. Think about what the author is suggesting here. Rather than scales of justice held by Lady Justice, the author would have the Lady prop up one side — even though that side has failed to stand up for itself. That is not fair and it asks too much of our judges. How can they possibly remain neutral and partisan simultaneously?

Now, I’m not suggesting that the defendants shouldn’t have a chance to explain their failure to respond. We have mechanisms and avenues for that, and if they care to utilize them, they probably will. It will be an uphill battle, but my experience suggests that if they have a good reason, the judgment will be vacated.

Mr. Goldman implies that decisions such as this are not good for anyone, missing the point entirely in his attempt to force this decision into a rant about SOPA. The decision is good for one party and bad for the another. Mr. Goldman then says that “[t]rademark owners look like greedy SOBs making pie-in-the-sky demands using procedural shortcuts that almost certainly negate any possibility of opposition.” Obtaining a default judgment is not a shortcut. Our rights often must be asserted or lost. That’s a default judgment, and there’s nothing wrong with it. As for “pie-in-the-sky”, see above. Should plaintiffs ask for less than they think they’re due?

Mr. Goldman concludes that decisions such as this breed “distrust” in our judicial system, but he would have judges assume the role of defense attorneys, to some degree. I would not trust such a judge.

USPTO: Entire U.S. Economy Relies on IP

Monday, 30 April, 2012 06:00 Written by Aaron Thalwitzer 0 Comments
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Last month, the USPTO released  a reporttitled “Intellectual Property and the U.S. Economy: Industries in Focus”. Weekend reading material! The report “aims to promote a better understanding of the industries where IP plays a particularly important role.” The report goes on to note that “[t]he entire U.S. economy relies on some form of IP, because virtually every industry either produces or uses it.” So they may have gotten a little carried away with themselves — or did they? I defy you to identify an industry that doesn’t produce or use IP. I can’t think of one, though there are industries which are certainly more IP-intensive. According to the report, “75 industries (from among 313 total) [are] IP-intensive.” These IP-intensive industries directly accounted for 18.8 percent of all employment in the U.S. economy, in 2010.

The breakdown is even more interesting. Off the top of my head, I might have guessed that patents would lead the way. Nope. Trademark-intensive industries provided 22.6 million jobs, patent-intensive industries accounted for 3.9 million jobs, and copyright-intensive industries provided 5.1 million jobs (all data 2010). The report states that these industries accounted from “about $5.06 trillion in value added, or 34.8 percent of U.S. gross domestic product (GDP).” Note the distinction. They’re not saying IP independently added trillions in value; the industries did. But without the protections afforded by IP, would those industries generate so much revenue?

Since many IP-intensive industries are in the manufacturing sector, which has long been on the decline in terms of jobs created (but not productivity), these numbers are actually low, particularly for patent-intensive industries. Another surprise to me was that “[w]hile trademark-intensive industry employment had edged down 2.3 percent . . . copyright-intensive industries [grew] by 46.3 percent between 1990 and 2011.” Another fun fact for you to ponder this Monday morning.

Not surprisingly, IP has been recovering from the Great Recession at a higher rate than non-IP intensive industries. “[B]etween 2010 and 2011, the economic recovery led to a 1.6 percent increase in direct employment in IP-intensive industries, faster than the 1.0 percent growth in non-IP-intensive industries. Growth in copyright-intensive industries (2.4 percent), patent-intensive industries (2.3 percent), and trademark-intensive industries (1.1 percent) all outpaced gains in non-IP-intensive industries.”

Furthermore, these are good jobs, on average 42 percent higher than the average weekly wages in other (non-IP-intensive) private industries. And the discrepancy is growing, having “nearly doubled from 22 percent in 1990 to 42 percent by 2010.” Much of this corresponds to the fact that these workers are better educated than their non-IP counterparts.

Importantly, merchandise exports of IP-intensive industries accounted for 60.7 percent of total U.S. merchandise exports. The U.S. doesn’t manufacture goods, it manufactures innovation (I should be in marketing).

The report sums up the importance of IP. It’s an ideal, and hopefully one which the USPTO and Congress will seek to facilitate:

One important way to help encourage innovation is through the protection of intellectual property (IP). The investments necessary to develop IP are often quite substantial. Firms and individuals, in order to invest the necessary resources, need some assurance that they will benefit from and recover the costs of the creation of intellectual property. IP rights help protect authors, inventors, and merchants of goods and services from having their creations and innovations quickly and easily exploited by other firms or individuals, diminishing the benefits to the inventor of the IP. This reduction in private benefits to be gained from the underlying innovation could, in turn, reduce the incentives to undertake the investments necessary to develop the IP in the first place.

Here, here!

World IP Day

Thursday, 26 April, 2012 06:00 Written by Dan Pierron 0 Comments
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Today has been designated by the World Intellectual Property Organization as IP Day, the anniversary of the day WIPO came into force.  This celebration is provides an opportunity to appreciate how intellectual property is inextricably embedded into so many aspects of our lives.  More and more, the various forms of intellectual property, and the laws governing them, are entering into the public eye and media.

It is undeniable that the public at large is getting more involved in IP issues.  The somewhat noticeable spike in Google searches for SOPA in January of this year is not likely due to an increased interest in fried pastries.  Blogs, articles, and involvement in IP matters have been on the increase.  What’s more, there has been a noticeable uptick in IP-related cases being granted certiorari by SCOTUS.

Given this preamble, one must ask what the best way to celebrate this ever increasingly important holiday?  I have a few suggestions.

There are innumerable top ten lists about weird and strange IP registrations.  A recent favorite of mine is Context-Free Patent Art which, well, should just be experienced.  Or, you can always just take a gander at the most recently issued patents and trademarks (in the U.S., at least).  Or engage in a lively discussion with this guy.  No matter what, know that merely by engaging in your own edification and contributing to the ongoing discussion, you elevate IP practice and direct its progress towards a more perfect system.

Trademark Cease and Desist Letters: Not the Only Option

Monday, 23 April, 2012 06:00 Written by Aaron Thalwitzer 2 Comments
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I’ve written previously on using the virtues of judo when responding to a cease and desist without going overboard. What about when you’re faced with someone infringing or diluting your trademark? What options are there, other than the C&D?

Understandably, many trademark owners, after the initial rage subsides, will call up their brother’s ex-girlfriend’s cousin who once knew a lawyer in Omaha and have them write a nasty C&D and “see what happens”. That might work. It is certainly cheaper on the front end. Or is it? Whether to send a C&D is not a simple question.

For many product and service providers (i.e. businesses), their brand is their stock in trade. Without trademark protection, their brand may as well be your competitor’s brand. I’m fond of saying that only McDonald’s could serve billions of crappy burgers in every corner of the globe. John Doe’s Burgers could never pull that off. It’s all in the brand. Infringers are taking shortcuts, cheating, and basically capturing your goodwill, as embodied in trademarks, which are worth fighting over. The question is whether a fight is necessary, and if so, how and when should you start the fight.

Most trademark owners know, at a gut level, that an infringer must be stopped, or at least put on notice that they are infringing. Failure to do so causes the trademark to lose its integrity and legal protections. C&Ds are cheap, and especially for small businesses and startups, are a cost-effective way to enforce their rights.

A C&D is not unlike most demand letters. The trademark owner states that she owns certain rights, the recipient is infringing on said rights, such infringement creates certain causes of action for damages and injunctive relief (e.g. trademark infringement, unfair competition, cybersquatting or dilution under federal and state laws); and litigation may ensue if the infringement does not cease.

You are well advised to consider a C&D prior to litigation, for obvious reasons. Litigation is expensive, time-consuming, stressful, and uncertain. On top of that, if you sue without first making demand to cease, the judge may believe you are being a hasty litigant.

However, sending a C&D can have unforeseen consequences. Your competitor could read your letter and decide that rather than bothering with negotiation or waiting to be sued by you, it should take the offensive and sue first. A suit in federal court for declaratory relief — basically a court order stopping you from infringing on the infringer, could ensue.

In a declaratory judgment lawsuit, the alleged infringer would ask the court to “declare” that it is not infringing your rights. They might ask the judge to hold that your trademark is unenforceable. Now you’re on the defensive — though you can, and maybe should, counter sue.

There are advantages to suing first. You can pick the most favorable venue for your case, probably your home turf. This advantage is greater if your adversary is far away, or if they have a smaller war chest with which to litigate. Of course, the other party can move to transfer the case, but then you’re already behind the eight ball.

Additionally, dispensing with the customary C&D and suing on your home turf, while possibly more costly at first, certainly sends a stronger message. Your adversary might be unable or unwilling to defend a lawsuit.

A third option might be to send a different sort of letter. Rather than demanding that the infringer cease and desist and accusing them of infringement, you might simply inquire as to their use of the mark and make clear your intent to resolve the matter amicably. Before sending any letter, be sure that you have higher priority rights to the trademark. Nothing is worse than sending a C&D full of bravado, then learning that your competitor has better rights to the mark. Do your homework. If it turns out that the would-be infringer has better rights, sending out the first C&D could foreclose defenses that the marks do not overlap.

So, next time you spot a potential infringer, think hard before sending a C&D. You have options, so use them.

Aaron Thalwitzer is an attorney with Zies Widerman & Malek practicing civil litigation and intellectual property law in Melbourne, Brevard County, Florida.

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