A Thermos Full of Aspirin For the Headache of Trademarked Words Acceptable In Scrabble

A Law of Language

Language is interesting for 3 reasons: It’s neither as stable nor unstable as we believe it is, it’s more important than we think it is, it’s the primary means of human minds interacting and yet it’s not clear what it is or how it works. A human mind exploring language is something like traversing a museum of optical illusions that is constantly reconstructing itself based on the exploration.

I think this is part of why I love trademarks. Trademarks are one of the places where boring, unimaginative people (who care only about money and the weather, but only sincerely about the first) are given an example of why it’s ok for me to care about interesting, abstract ideas like language. Trademarks (especially word marks) are about the use of language to describe and define the business world. However, law wants to be stable and static, and language sometimes wants to be fluid and miasmic. Because law is made of language, there are some challenges that come from language in every field of law- but trademark law is almost made of language puzzles.

Scrabble: A Classic Language Word Game

Sometimes I get salty when I play Scrabble. Not because I lose a lot (though… that too), but because I see dictionaries as valuable tools for describing and explaining language.

I don’t think Scrabble is actually a game about language. It is about words. Some words, at least: sequences of letters that are on an approved list. The question that underpins my frustration is “How do we decide which sequences of letters make it on that list?” I think that question is really about the difference between words and language. Words are just strings of characters that we can list. Language is a complex network of decisions about communication. The flexibility and organic nature of language is the foremost challenge in determining the official list of proper and acceptable words.  The Great Scrabble Tradition (and probably also some rules) holds that “foreign words” and “proper nouns” are not permitted. Depending on the house rules, this usually includes company names, brand names, and product names.

I recently had the opportunity to play the word “thermos.” I stopped myself- I knew the word was trademarked over a hundred years ago, which would make it an ineligible word for play. I later looked the word up, unsure if there was some “definition 2” trick that I didn’t know about. I was surprised that the word was acceptable for play in Scrabble. I leapt into research and found out that the thermos trademark was actually cancelled in 1963 as a result of a Federal Circuit ruling that the word had become generic! I was so excited to learn about a trademark cancellation by a court that I didn’t even remember to be salty that I could have won that game if I’d known I could play that word. A court ruling like that is pretty rare, so this was a very exciting find.

Genericized Trademarks: A Vibrant Afterlife for Intellectual Property

Not a lot of words have the distinction of being introduced to the world as a label with a business goal in mind, and then transform into a piece of common parlance. But when they do, it is often because the business was too successful.

In copyright, works automatically become part of the public domain after a fixed number of years (realistically, whatever time Disney tells Congress to choose, but at least Congress writes down the most recent number of years in the latest copyright law amendment). Patents expire automatically after a fixed number of years (20 years for a utility patent, 14 for design). Trademarks don’t have a built-in expiration date- they’re generally just valid until they’re no longer used in commerce. But on rare occasions, the word can become generic over time. As more people get familiar with a product, they use the special name of the product as meaning the general name of the product. In my own lifetime, “Google” has changed from one of several search engines to the verb for general online research. Google fights this, a little, but they’re going to lose. It’s a little like when people try to control  copyright violations in the context of the internet. It’s very hard to stop people from singing and drawing what they want to, even if you can curb some of their publications. But if that is hard, it’s nigh impossible to stop people from using language the way they want to.

Conclusion: Trademark Law is For Consumers as well as Business

I love the poetic irony in trademark law: when you dominate the market too completely, you lose something about what made you special. When Aspirin was introduced by Bayer to American doctors, “Bayer listed ASA with an intentionally convoluted generic name (monoacetic acid ester of salicylic acid) to discourage doctors referring to anything but Aspirin.” This somewhat underhanded marketing move contributed to a 1921 court decision that effectively cancelled Bayer’s trademark.

Trademark law is made for a thriving, competitive marketplace. Its purpose is to help consumers navigate a busy and crowded marketplace accurately, and without being deceived. When the marketplace is no longer competitive, trademark law is less necessary. The rules concerning generic trademarks emphasize that trademark law exists to protect consumers from confusion and deception. If trademark law was centered on protecting businesses*, it would not make sense to cancel the trademark of a company that had dominated the market.

Just as Scrabble is a word game, not a language game, trademark law is a consumer protection law, not a business law. The distinction seems small, but sometimes a small difference matters. Like when you decide not to play “thermos” and lose a round of Scrabble by less than 10 points. One word– and the legal and linguistic status of the word– can make a difference, for both Scrabble and trademarks.

 

*Trademark law does protect businesses, of course: it prevents other competitors from benefiting from the branding and goodwill of a company, and gives legal backing to the abstract notion of “goodwill” that makes it a viable, montized asset of a company.

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When Covering Your Back, Remember That Legal Analysis Shapes Risk Analysis

In 2005, Jonathan Coulton recorded an original arrangement of “Baby Got Back” by Sir Mixalot. In 2013, the popular TV show Glee featured an arrangement of “Baby Got Back” that is, to my untrained ears, indistinguishable from that of Mr. Coulton. I have no evidence to offer that plagiarism or copying occurred. I simply cannot imagine any good-faith argument that the arrangement of the two productions is dissimilar in any way.

Copying Can Be Legal

Even if Glee did steal the arrangement (and I’m not saying they did, and I have no knowledge that Fox ever said they did), the show’s producers and network (Fox Broadcasing) didn’t break any laws. The general consensus by attorneys interviewed by news sources is that blatantly taking the arrangement of a musician’s cover of a third party’s song (especially if the cover is covered by Creative Commons) is mostly ok.

So, let us assume that Fox stole Coulton’s arrangement (for the sake of the academic dissection of a hypothetical case). Let us further assume that Fox is completely innocent of all crimes and liabilities. Now, granting Fox’s total innocence, I conclude: Fox made the wrong decision and failed to truly, meaningfully protect their Intellectual Property portfolio. Wielding copyright offensively offended people and undermined Fox’s goodwill (which is the value of a trademark). Losses in trademark  are rarely worth gains in copyright.

Two Legal Analyses To Get to The Bottom Line

There are two approaches to the question of whether Fox ought to use Mr. Coulton’s arrangement.

Analysis 1

An attorney examines the facts surrounding Mr. Coulton’s arrangement. The attorney researches the law that applies to music covers and the extent of copyright over arrangements. The attorney applies the relevant law to the facts and offers a professional opinion as to the likely legal consequences that would result from copying Mr. Coulton’s arrangement. Fox executives and producers consider the opinion and weigh the risks and rewards, and make a decision.

Analysis 2

An attorney performs the same procedure for analysis as above, but with one addition: The attorney also evaluates the effect on the full IP portfolio of Fox, including their trademark value (which is a concept that is almost interchangeable with “goodwill” in law and business).

Why would such similar analyses lead to a different conclusion? Because the executives and producers are chiefly concerned with the objective mathematics of “the bottom line.” The first legal analysis looks only at one narrow question (“Can we avoid losing litigation if we do this?”), while the second analysis addresses as more broad question (“What effect will this choice have on our IP portfolio?”). By including the harm to the trademark (as “loss of goodwill”) in the analysis, the executives now have different numbers to work with when calculating their bottom line.

Business Law 301: Just Because It’s Good Under the Law Doesn’t Mean It’s Good Under the Bottom Line

The moral of this story is the same lesson that I offered to Nintendo earlier this year: Just because it’s legal doesn’t mean it’s good business. You can legally get away with a lot of things – particularly if you have a lot of attorneys helping you. It is easy for business executives to get caught up in the details of what they can “get away with.” We repeatedly see examples of companies loosing their long-term, broad vision of building a brand. Companies are generally better off when they do not sacrifice short-term copyright wins for long-term trademark growth.

The Tiny Legal Differences That Make A Big Difference

“Building a brand” has a lot to do with intellectual property, but few people distinguish between trademarks and copyrights. However, the differences matter. Executives often think in very concrete terms, and the concept of a trademark is much more abstract than the idea of copyright.

If copyright law seems a little up-in-the-clouds abstract, trademark law is in low Earth orbit. When there’s a copyright dispute, the questions of ownership and rights might be murky, but the thing at issue is very clear: a photograph, a book, a script, a painting, a song, etc. Trademark law is much more robust than copyright law, but the subject matter has always been very, very abstract and vague: how consumers think and feel about a good or service—or the ability of a consumer to identify the source of a good or service. The most tangible that subject matter ever gets is anecdotes and consumer surveys—which always come with a margin of error, by its nature as a set of statistics. The “thing” that trademark law ties to can be very concrete in a counterfeiting case, but outside of that, it’s just “goodwill”—the special feeling that consumers have in their hearts for a good or service.

So, when an executive is faced with “protecting the intellectual property of the brand,” it’s easier for them to think about something concrete and tangible. It’s easier to think that “protecting IP” means “stop someone else from benefiting from an image or sound.” And that is one important part of IP protection. But IP protection is means, not an end. The goal of IP protection is to build your brand and your business. Failing to understand this principle leads executives to make asinine decisions that make them look hypocritical and foolish while undermining their own businesses. Failing to know the difference between the categories of Intellectual Property can mislead smart businesspeople into acting on a misleading risk analysis.

It Would Be Unfair To Make Executives the Butt of The Joke

It is only fitting that I challenge myself on my analysis. Who am I to make such cavalier judgments? The executives at Fox (and other large corporations) have (combined) many decades more experience than I have. How could it be possible that I am right where they are wrong? Is it probable that I understand their product and their brand better than they do? I’m sure a lot of them have law degrees (and I have no doubt they talk to attorneys almost daily) – so why do they not share the same legal analysis or conclusions that I do?

I think that their positions force a particular focus. Business executives stand to lose a tremendous amount from failing to protect their IP. I lose nothing if my analysis of Fox’s or Nintendo’s business decision is wrong. I don’t have the same pressure to start from (or remain in) a deeply defensive trench. My risk-free position liberates me to be dangerously wrong—and therefore allows me to stumble into better ideas than the risk-laden executive can.

This is why I think it is the newer and smaller entertainment companies that will continue to blaze trails in new perspectives in managing their IP portfolios: They have more to gain and less to lose in taking counter-intuitive risks and re-imagining what it means to “protect IP.” It’s scarier for the larger companies to take anything less than a Draconian approach toward their intellectual property. Nintendo can’t imagine letting YouTube see someone play their games for even a few seconds. DevolverDigital can’t imagine NOT letting YouTube see every minute of every game.

Memes: The Creative Culture of Web 2.0 Getting Around IP Law.

Internet-Memes are actually full of  interesting legal issues. They use someone else’s image (protected by copyright), and even sometimes a trademarked phrase, word, or design. The reuse of the image to produce a new work or commentary is arguably protected by fair use in most cases, which is probably one reason that there are not a slew of contributory copyright infringement or inducement of infringement  lawsuits against sites like memegenerator. But I have another theory as to why the rightsholders are not fighting the meme fad.

Companies go to tremendous trouble to ferociously protect their trademarks and copyrights. This presents obstacles to all sorts of visual art, musical creation, business enterprises, and so forth. The popularity of memes may have emerged because it is a way to create commentary and interact with media in a way that doesn’t get you cease and desist orders. No one will threaten a lawsuit if I post a “Good Guy Greg” meme with my own text, it is extremely unlikely that Greg (or his counsel) would write to me to take it down- and not just because he is a good guy. It would be a tremendous effort for a typical citizen to undertake- expensive and time consuming- to even try to fight such a battle.

However, not all memes are owned by someone unable to effectively enforce the relevant legal rights. Many memes, like Condescending Wonka and Unsure Fry, are based on Copyrighted Images owned by large companies with lots of resources to pursue legal action.  A great example of my theory is the meme “The Most Interesting Man In the World.” My theory is that Dos Equis made a savvy business decision: let the internet claim, remix, and play with this trademark. This is the best advertising model ever: let the consumers make, remix, post, and link your product and its symbol. (Remember, there is a bottle of XX on the table in each “Most Interesting Man” meme.) The trade-off that XX makes is that they cannot control the content of the text: it might be terribly racist, it might be anti-alcohol, it might condone war crimes, etc. Maybe Cervecería Cuauhtémoc-Moctezuma brewery decided that US 1st amendment protections would effectively immunize them from lawsuits about hate speech. Maybe they thought they could disavow any connection between their company and the message of the meme. Maybe they just figured the free advertising was worth the risk.

The bottom line is this: There is sometimes a tension between exercising legal rights and making smart business decisions. In the culture of the internet, I think successful businesses will hesitate to send out cease-and-desist letters in favor of letting their trademark or copyright be shared on a massive scale. This could signal an interesting shift from 20th century IP law to 21st century IP law.