Lawyers like to keep busy. But sometimes a good lawyer will advise his or her client to back off, no matter how strong the claim might be.
This is undoubtedly the case in IP litigation, where a misjudged cease and desist letter can be disastrous. There are numerous reasons why it might not be the right strategy to commence proceedings, despite having a perfectly valid case. It might be that the likely damages are minimal compared to the cost of the claim, or it might be that by suing you risk raising the profile of the alleged infringement (also known as the "Streisand Effect", named after Barbra Streisand's counterproductive efforts to hide her house). Just as importantly, a rightsholder risks damage to the reputation of the brand if it is perceived to be overly aggressive or simply lacking a sense of humor.
Yet, for some reason that common sense brake doesn’t always function. You might remember reading of the 12-year-old girl sued for downloading music, or the teenager sued for creating an innocent fan site devoted to his favorite movie. These stories are now many years old, but attempts to enforce IP rights in a manner which the press might label "bullying" make for sensational stories and linger for years in the public consciousness. These days, social media has heightened the need for caution. The Twitteratti are unforgiving and do not pull punches.
Nevertheless, some brands have not yet learned that lesson. The University of Pennsylvania Law School recently decided to host a debate on trademarks and fashion and invited some well-known fashion attorneys to speak at the event. To publicize it, they produced a flyer illustrated by a satirical take on Louis Vuitton's famous fabric pattern, replacing the letters "LV" with "TM". Louis Vuitton hit them with a cease and desist letter. The ensuing publicity has not been kind to the fashion brand.
This is not the first time that Louis Vuitton has taken unpopular action to enforce its IP rights. The company recently took a claim in Holland against campaigning artist Nadia Plesner. In 2008, Louis Vuitton successfully sued Ms. Plesner in Paris for selling T-shirts in aid of Darfur which featured unlicensed reproductions of the company's intellectual property. This action went largely unreported, but the press had a field day when, in 2011, Louis Vuitton attempted to get an injunction to prevent the artist displaying her painting "Darfurnica" (after Picasso’s "Guernica") which depicted a variety of famous figures, trademarks and other fashion accessories. Louis Vuitton objected to the depiction of its "Audra” handbag in the hands of an otherwise impoverished African boy.
But Louis Vuitton is not alone. There are plenty of other plaintiffs who have been accused of a similarly trigger-happy approach to enforcement. Turning from fashion to music, Justin Bieber recently threatened RC3 Inc., the makers of the "Joustin' Beaver" video game, a smartphone app where players have to navigate a river and sign “Otter-graphs”. Bieber's management claimed that the game was an abuse of their trademarks and personality rights. RC3 has denied infringement and accused Bieber of lacking of sense of humor.
Lady Gaga's management have been similarly keen to assert her rights by taking action against non-commercial fansite "LadyGaga.org" and successfully preventing a children's social network from using an animated character, singer "Lady Goo Goo" (who sung parodies of her songs).
Just this month, a small pub in rural England called "The Hobbit" received an aggressively worded cease and desist letter from lawyers representing the Saul Zaentz Co. in California. They accused the pub of violating its trademark rights, notwithstanding the fact that the pub has operated under that name for 20 years. The stars of the forthcoming "Hobbit" movie leapt to the pub’s defense, with Stephen Fry tweeting that it was "self-defeating bullying" and Sir Ian McKellen adding that the studio's action displayed "unnecessary pettiness".
In response, the studio has now said that they would be keen to "amicably resolve" the matter, perhaps in return for a nominal license fee. Some trademark lawyers may disagree, but the coverage would have been much more favorable had they started the relationship with an amicable dialogue rather than a heavy-handed letter.
It simply doesn’t have to be this way. Lucasfilm, for example, is well known for allowing non-commercial use of its intellectual property for fan films. Turning a blind eye to such infringements allows goodwill to flourish. Even where the infringer's use is commercial, might is not always right. Indeed, it can be a negative factor in the eyes of the press. There is clearly another way to deal with minor infringements, which does not require recourse to lawyers and public criticism. Just pick up the phone.
It is of course essential that IP rights are enforced vigorously, and in the cases mentioned in this article, the relevant rightsholders may have every right to take action. Indeed, without enforcement exclusive rights become meaningless. However, there is definitely something to be said for the adage that trademark battles, like trademarks themselves, should be chosen wisely.