The Summer Trademark Olympics (Please Don't Sue Us)

(Photo: Kevin Dooley)

Whether the Olympics are around the corner (as they are now) or a few years away, there are always Olympic-themed events going on. Recently, a group called Ravelry sponsored a knitting competition called the “Ravelympics.” [Related post on Ravelry: “Is There an Elitist Oligarchy in the Underworld of Knitters?”] Whereas most people probably imagined a bunch of grandmothers knitting mufflers, the U.S. Olympic Committee saw a conspiracy to infringe its trademark in the word “Olympics.”

After enduring a lot of criticism, the USOC backed off the knitters. But what the USOC tried to do isn’t unusual.

In fact, just recently luxury goods purveyor Louis Vuitton threatened to sue Penn law school over a poster for an academic conference on the law of fashion that featured an artist’s funny take on the Louis Vuitton logo (with the famous “LV” replaced with a “TM”). Louis Vuitton didn’t see the joke, and threatened the law school (which, being a law school, knew enough not to be scared).

Many trademarks are so zealously (over)enforced that it sometimes seems crazy. Which raises the question: why do brands (and their lawyers) do this?

The answer involves the interaction between a quirk in trademark law and the culture of lawyers.

First, the law: A few courts have held that even minor failures or delays in aggressively enforcing trademark rights can be evidence of the mark holder’s acquiescence in uses that would otherwise be unlawful. In other words, if you don’t act like a pit bull in defense of your mark, you may be seen as tacitly accepting its use by others. Courts are not consistent – indeed, in some cases, mark holders with a clear record of non-enforcement have been given a pass.  And so you might expect lawyers to advise their clients that the benefits in time and money saved – and bad publicity avoided – by ignoring small fry such as knitters is probably worth it. But instead, lawyers are apt to overreact to even a few rulings that go against trademark owners. 

Why? For one, lawyers get paid for doing something, not for doing nothing. So lawyers are incentivized to advise their clients that every unauthorized use of a trademark, no matter how silly or obscure, must be dealt with lest the trademark owner later be found to have acquiesced. 

And this creates a sort of strange feedback loop. What looks initially like overenforcement of trademarks – that is, sending cease and desist letters and filing lawsuits in cases where no one thinks the trademark owner is really going to be harmed – begins to look more like normal behavior. 

This is why no one was surprised by Louis Vuitton’s reaction to the law school poster.   The poster was perfectly lawful, and Louis Vuitton came away looking silly. But don’t expect that to change any time soon, because the habit of trademark overenforcement seems to be deeply engrained by now. With the Olympics opening in just over a month, stay tuned to see many more ham-handed enforcement efforts. 


oatmealpie

Knitters are not small fries. There are over 2,000,000 members on Ravelry, and that's just one knitting website.

Mike

You've missed one key part in your analysis. If you don't defend your mark, you can lose it. And once you lose it, you never get it back. It's not that you're giving that one entity a pass, it's that failing to call them out on their infringement runs the risk of forever losing your trademark.

Rick

There are only so many words in the English or any other language. Pursuing trademark infractions in "sound alikes" or words that are in common usage (such as olympics) is absurd.

Quentin

Maybe it's just my lack of legal expertise, but I've never understood why the Olympics get a trademark on something that predates the existence of trademark law by a few thousand years. As far as I'm concerned, anyone should have the right to call their competition an "olympics".

James

Or why the USOC has never (AFAIK) sued the State of Washington for that trademark-infringing peninsula and mountain range?

Jenn

The law specifically excludes lawful uses before 1950 and uses in which "it is evident from the circumstances that such use of the word “Olympic” refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the corporation or any Olympic activity"

If you own a local business that is called Olympic Dry Cleaning and you're located at the base of Mount Olympus in WA then you're not going to get sued - if you're located in NYC and you change your name or have an Olympic Dry Cleaning special then you're infringing.

Mike

I feel the need to point out that the term "Olympics" is given very special protection in the United States. There is a very special law that protects the following:

(1) the name “United States Olympic Committee”;

(2) the symbol of the International Olympic Committee, consisting of 5 interlocking rings, the symbol of the International Paralympic Committee, consisting of 3 TaiGeuks, or the symbol of the Pan-American Sports Organization, consisting of a torch surrounded by concentric rings;

(3) the emblem of the corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief; and

(4) the words “Olympic”, “Olympiad”, “Citius Altius Fortius”, “Paralympic”, “Paralympiad”, “Pan-American”, “America Espirito Sport Fraternite”, or any combination of those words.

http://www.law.cornell.edu/uscode/text/36/220506

Read more...

Mike B

Seeing as how the IOC is completely corrupt and delights in screwing the United States out of host slots proportional with the revenue provided from its broadcast rights I don't see why we continue to have public laws aiding the organization. Hell I'd say that Congress should pass a law allowing only non-profit public broadcasters the right to bid on the games at any time 20 or more years pass without the United States hosting that particular set of Olympic games.

Auntie

I guess the problem with ravelry was that some people were selling patterns with the olympic sign on them there - and thus earning money with a trademark. Surely the name of a knitting group was not the point..

CdrJameson

There have been some lawyer-compatible ways around these problems recently.

The approach I noticed is the trademark holder licences the use of the trademark to the small fry for a nominal sum. The trademark is seen to be defended, and terrible publicity doesn't ensue.

Dave

It seems the problem with this is in assessing damages should a "big fry" infringe on a trademark. How can a company claim any large amount in damages if it sold the license to a small fry for pennies? Pennies is what the trademark is now worth, no?

David Lizerbram

Finally, a Freakonomics post that I can comment on. I'm a trademark lawyer, and I'm constantly urging my clients not to be trademark bullies and to avoid sending cease & desist letters for uses that I don't perceive to be significant.

I do take issue with the claim that "...lawyers get paid for doing something, not for doing nothing. So lawyers are incentivized to advise their clients that every unauthorized use of a trademark, no matter how silly or obscure, must be dealt with lest the trademark owner later be found to have acquiesced. "

That may be true in some circumstances, but not all. My practice will continue to grow and succeed if my clients do well in the long run. Wasting money on frivolous c&d letters is not a route to long-term success for my clients, and they quickly tire of paying legal bills for these services. They're not in business to chase meaningless perceived threats. If LV's lawyers consider it a worthwhile use of the company's resources to go after a school over a one-time use on a poster, they need to look at the "legal" line item on their balance sheet and consider what they're really paying for. Perhaps they should find a law firm whose incentives are better aligned with theirs.

Read more...

Rick

You sir, are a gentleman!

Mike B

No, he's a lawyer. You think he's going to be honest about something like this?

JC Dill

Try this - go find an old dictionary, one published before 1900. Turn to the Os and look for the definition of the world "Olympic". The meaning was a generic one, derived from the historical Olympic games, and one meaning was something that occurred every 4 years. The modern Olympic Games organizers decided to take this word that had a common meaning in general use, and upsurp it by trademarking it for their competition, and courts have allowed them to get away with this. IMHO, this is a taking of something that was in the public commons, and should never have been allowed. I believe that no one has brought up the counter argument that the word was In Use prior to 1900, and as such that the MOG shouldn't be allowed to remove this useful word from our language because they "trademarked" it.

That said, one problem that most groups that call their event an "Olympics" have is that they hold their event annually, rather than on 4 year intervals. If a group wanted to keep calling their event a type of Olympic event, and only hold their event every 4 years, and then raise the argument that they are using the word "Olympic" consistent with the meaning the word has held for hundreds of years, I think it might stand up in court.

Read more...

Mike

You'd be wrong at least in the United States. As I noted above, even apart from trademark law, the U.S. passed an entirely separate law that gives trademark protection over the use of Olympic " to promote any theatrical exhibition, athletic performance, or competition".

Kassia T.

Well, I can't speak for all organizations, but as someone who works for a former official supplier to the Vancouver 2010 Olympic and Paralympic Winter Games, I can say it has a lot to do with economics, not just protecting trademarks for their own sake. (Also, in the interest of protecting the brand, it has been drilled in to me and my PR peers that you write the entire name on first mention, always ... and, never call it the Olympics.)

The issue with the Olympics is that there are a lot of sponsors who pay a lot of money for the right to use the Olymic brand, so it behooves the organizing committee to ensure that organizations that don't pay benefit from association with the Games -- called "ambush marketing." As well, each sponsor "owns" a product category, so that none of their direct competitors may receive the same boost in profile.

If ever there was a knitting "supplier" category, you can bet the association that paid millions to claim the title will want some assurance from the Olympic organizing committee that a competing knitting group doesn't weasel into their spotlight for nothing.

In fact, for Vancouver 2010, it seemed that it wasn't the lawyers who were enforcing this policy -- it was the marketing and security staff.

Read more...

Sian Robertson

I was on the receiving end of a rather zealous trademark defense when my tiny little ecommerce site was called swelldwellonline.com. This is a blog post I wrote about being taken down by the big boys. http://swell247.com/blog/swell-hell-we-need-a-new-name/ It's no fun. No fun at all.

Enter your name...

"Komen for the Cure" is also notorious for "defending" its trademark by insisting that everyday words ("for the cure") may not be used by anyone else for any purpose at all.