|New Tool in Trademark Fights |
Start-Ups 'Shame' Bigger Companies; 'Coming Down Hard on the Little Guy' .
FEBRUARY 23, 2012.
By ANGUS LOTEN
Phil Michaelson embraced a new tactic in trademark battles—online shame—after he created a web cookbook last year for people to collect and share recipes.
The cookbook let consumers save the instructions for making a certain dish by clicking on a "K" for "Keep." But AdKeeper Inc., a New York-based service that allows users to save, or "keep," online ads, sent Mr. Michaelson a letter claiming his use of the "K" and "Keep" as well as his website's name, KeepRecipes.com, constituted "blatant trademark infringement."
Mr. Michaelson said he couldn't afford a legal battle, but also didn't want to give in to demands that he abandon his website's name and features. So he posted the cease-and-desist letter on Chillingeffects.org, a website created by several U.S. universities to help protect lawful online activity from legal threats.
AdKeeper executives declined to comment.
Mr. Michaelson said a group of entrepreneurs who saw AdKeeper's cease-and-desist letter on the website passed it along to their lawyers, who have offered to represent him at no charge in the trademark dispute. No case has been filed in court.
As the economy recovers and competition heats up, trademark disputes are on the rise: Claims rose 5% to 3,692 in the year ended March 2011, according to U.S. district court records.
These costly scuffles can be difficult for start-ups with limited resources. But a growing number of business owners have begun fighting back using a tactic lawyers describe as "shaming," or exposing what they view as baseless trademark infringement threats on the Web or through social-networking websites such as Facebook and Twitter.
The strategy can sometimes provide entrepreneurs with negotiating leverage or other benefits, lawyers say. "Trademarks are meant to protect your image, so it doesn't really help to look like you're coming down hard on the little guy," said Wendy Seltzer, a Yale Law School fellow who founded Chillingeffects.org. The site collects cease-and-desist letters in trademark disputes and posts the notices online.
Kenneth Port, director of the Intellectual Property Institute at the William Mitchell College of Law, said he isn't convinced that social media campaigns can really deter big corporations from protecting valuable trademarks, because intellectual property laws require them to be aggressive—even against minor infractions—or risk weakening the scope of their protections.
Also, many trademark infringement claims raise legitimate concerns and shaming tactics can backfire by highlighting infringing conduct, according to David Bernstein, a partner at Debevoise & Plimpton LLP. However, "social media gives defendants a new way to try to embarrass trademark owners who may be overreaching," he said.
Bo Muller-Moore, a T-shirt maker in Vermont, said shaming resulted in thousands of dollars in financial support. He received a cease-and-desist letter from Chick-fil-A Inc. over his use of the slogan "Eat More Kale" in September. Chick-fil-A's slogan is "Eat Mor Chikin."
Mr. Muller-Moore created a Facebook page and an online petition that has several thousand supporters—including the governor of Vermont. He also added a "donate" link to his website, and has raised more than $10,000 to defend himself, he said.
"If this had happened to me 10 years ago it would have been a very different story," Mr. Muller-Moore said, noting that he rarely used Facebook or Twitter before the dispute arose.
A Chick-fil-A spokesman said the company issued the letter only after Mr. Muller-Moore applied for a national trademark in August. "We have not sued the party, we just simply asked him to stop because he was applying for what we already have," the spokesman said.
Sometimes customers use social media to shame bigger companies on behalf of a local business they patronize.
In 2010, General Mills Inc., holder of the Pillsbury Dough Boy trademark, sent a cease-and-desist letter to Tami Cromar, a Salt Lake City, Utah, baker then using the name My Dough Girl. One of her customers was so upset, he created a protest page on Facebook that attracted more than 2,000 fans in eight weeks, she said.
Still, Ms. Cromar opted not to fight General Mills, and instead changed her business name to RubySnap. "A case like that could go on for 20 years," she said. "We just wanted to focus on what we do—making cookies."
A General Mills spokesman said the matter has been resolved.
Write to Angus Loten at firstname.lastname@example.org