Post on 27-Oct-2014
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
Trademark Bullying & the Streisand Effect
by Erik M. Pelton
Trademark bullying continues to be a topic of great interest and controversy. The media
has covered more cases of alleged bullying in trademark disputes. And the USPTO’s 2011 study
of the issue left many questions unanswered. This paper explores several trademark bullying
topics, including the Streisand effect and how it relates to trademark bullying situations, practical
tips for trademark owners to reduce the risks of being labeled a ‘bully,’ and a summary of the
USPTO’s 2011 study and the major comments that contributed to it.
I. The Streisand Effect
What is the Streisand effect and how does it relate to trademark claims?
The “Streisand effect” refers to the common dilemma that efforts to quietly deal with a
problem often end up backfiring by drawing much more attention to it. The phenomenon is
named after Barbra Streisand, who attempted to suppress photos of her residence in 2003 citing
privacy concerns, but she inadvertently generated greater publicity for the pictures as a result.1
The phrase is frequently used in the context of intellectual property cease and desist letters that
generate a backlash of negative attention for the sender as well as a groundswell of public
support for sympathetic recipients. The “Streisand effect” is often fueled by social media and the
1 http://en.wikipedia.org/wiki/The_Streisand_effect
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
ability of the alleged infringer to post the demand letter on social networks and to generate media
attention. Proliferating networks along with sites dedicating to collecting and posting demand
letters, such as chillingeffects.org, make it easier than ever for the accused to find an audience.
Why is the Streisand effect growing?
Brand owners are becoming victims of the Streisand effect more frequently. Social media
networks continue to grow. The ‘playbook’ for alleged infringers has grown as more past
examples are available for anyone online to see and mimic. Perhaps there are also more tenuous
claims being made against small businesses that have few or no other options to defend
infringement allegations.
Examples of the Streisand effect in trademark enforcement:
- Louis Vuitton and Penn Law School
o In the spring of 2012, counsel for Louis Vuitton sent a cease and desist to Penn Law
School regarding a poster for an intellectual property symposium that demanded the
school change the background for the poster, which was a parody of the Louis
Vuitton toile monogram pattern featuring the TM and © symbols. See image below.
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
o In response, counsel for Penn posted the demand letter and Penn’s response online.
Demand letter:
https://www.law.upenn.edu/fac/pwagner/DropBox/lv_letter.pdf
Response:
https://www.law.upenn.edu/fac/pwagner/DropBox/penn_ogc_letter.pdf
o Many criticized Louis Vuitton for being overly aggressive in the way it handled the
matter, since the design was a form of parody and the use in a law school seminar
posed no clear threat to the Louis Vuitton brand.
- The North Face and The South Butt
o The South Butt was a parody apparel line started by a high school student. In its first
year, revenue was reportedly $4,900.
o North Face filed suit against The South Butt. The South Butt reacted online, creating
a Facebook page dedicated to its defense and generating a lot of media attention
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
o Because of the suit and surrounding publicity, sales multiplied for The South Butt and
many more people heard the name than otherwise would have.
o The case was settled on undisclosed terms; approximately one year later The South
Butt website was no longer operating.
- Chick-fil-A’s Eat Mor Chiken and EAT MORE KALE
o Chick-fil-A sent a cease and desist letter to Bo Muller-Moore, the owner of “Eat
More Kale,” a silk-screening business selling shirts and stickers that say “EAT
MORE KALE” via eatmorekale.com. Muller-More had applied to register it’s mark
with the USPTO; the application has been refused based on the Chick-fil-A
registration for EAT MOR CHIKEN.
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
o Muller-More and his supporters created Facebook pages that attracted thousands of
fans in a short period of time.
o Muller-More then began a Kickstarter campaign that raised more than $80,000 to
fund a documentary movie. [Disclosure: I have been interviewed for the
documentary.]
Facebook page:
http://www.facebook.com/pages/EatMoreKalecom/101747780074?ref=ts
Kickstarter Page:
http://www.kickstarter.com/projects/1674889308/a-defiant-dude
Movie trailer:
http://www.youtube.com/watch?v=dW9z8feaVgM
o The dispute was recently featured in the Economist magazine, and has been
mentioned by the Governor of Vermont.
http://www.economist.com/node/21551090
- National Pork Board and Unicorn: The New White Meat
o On April Fool’s day in 2010, the site ThinkGeek posted an ad for a unicorn meat
product as a hoax. The fictional product used the slogan “The New White Meat”
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
o Attorneys for the National Pork Board clearly did not get the joke, they sent a
standard cease and desist letter.
o The letter received a significant amount of online media coverage, including a write
up in The New York Times blog.
http://bits.blogs.nytimes.com/2010/06/22/unicorns-theyre-not-the-other-white-
meat/
Why should brand owners be aware of the Streisand effect?
As the examples above demonstrate, a brand owner who sends a trademark cease and
desist letter or files a complaint in court may face an accused infringer who is media savvy.
When a brand owner is “shamed” online, there is potential damage to its brand’s good will and
reputation, potentially alienating customers. Equally important, there is also the potential that the
attention generated by the accused will lead to increased sales of the allegedly infringing
products or services. Once mired in such a situation, the brand owner faces an even greater need
to bring a swift end to the conflict, but its leverage may be dampened by a public backlash.
Savvy brand owners and their counsel should prepare for the possibility that their
demands will be made public and attract attention. When preparing a demand letter or a
complaint, brand owners would be prudent to consider the reactions if the recipient posts the
letter online, and how the brand owners’ clients will react to the publicity. Claims that are
tenuous and demands that are heavy-handed are the most ripe for a “social shaming” reaction by
the accused. Reasonable people and attorneys can certainly disagree in many instances as to
whether a letter or complaint is appropriate; but the tactics and the demands often speak for
themselves. Particularly when sending a ‘borderline’ demand, brand owners and their counsel
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
must consider what responses the accused could make, and whether the message of the demand
should be toned down or altered.
In these and other Streisand effect situations, brand owners have taken a perceived
problem and not only made it the subject of more attention than it ever received prior to the
complaint, they made the problem more protracted, the subject of negative publicity, and/or more
expensive. Perhaps different tactics could have achieved better results at a lower price, both in
dollars and good will. For example, had counsel for Louis Vuitton asked to have a voice at the IP
forum to explain why such uses make its client uneasy and could affect claims of dilution, it may
have been very well received by the next generation of IP attorneys. Or if Chick-fil-A had
requested that Muller-More sign a simple agreement stating that he will never sell chicken or use
images of cows or chickens in connection with his merchandise, perhaps there would be no
forthcoming documentary to worry about.
II. Tips for avoiding the Streisand effect in trademark enforcement
Before drafting a demand letter, discuss with the client what their enforcement objectives
are. How much vigilance is necessary? Is a small local user of a non-exact mark really a threat to
the strength of the trademark? Weigh the pros and cons of sending the letter and possibly being
labeled a bully.
Some suggest that in 2012, it may not be necessary to squash every single use, online and
elsewhere, of every similar mark. Given the ease of creating content, it may not be practical to go
after every use. If a particular use is not harmful and is not popular, perhaps it is best left alone –
with monitoring – instead of risking a Streisand effect backlash. Of course, even more care is
required when dealing with uses that could be considered “fair use.”
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
When it is worth taking action against another party’s use, brand owners would be wise
to heed the following tips:
Before sending a letter, remember the audience. Are they tech savvy? Are they attorneys
or entrepreneurs?
When drafting a letter, remember that the recipient may share it with the entire world via
social media. Is there anything that could be perceived as over the top that is not
necessary to the letter’s intent? Is there anything that could make your client look bad or
foolish if the letter went viral?
Prepare the client for publicity issues that could ensue if the recipient attempts a ‘social
shaming’ campaign.
Seek solutions not threats. Instead of making only demands that negatively impact the
recipient, consider suggesting solutions that would achieve the necessary results without
seeming overbearing or inviting a ‘scorched earth’ defense. Perhaps coexistence – with
restrictions in writing – is sufficient and cessation of use may not be required.
Consider whether a phone call might be a better way to begin, or whether a
communication directly from the client, not counsel, to the accused may be appropriate.
Once the letter is drafted and ready to send, reconsider once more whether anything
really needs to be done, whether the letter is necessary, and whether it reflects an
appropriate tone.
III. Trademark lawyer groups weigh in on “litigation tactics” study
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
In 2011, while preparing its report to Congress, the USPTO sought public comments
about ‘trademark litigation’ tactics (a.k.a trademark bullies study). The four main associations of
attorneys in the field of trademarks and intellectual property each submitted comments.
IPO (Intellectual Property Owners’ Association):
http://www.ipo.org/AM/Template.cfm?Section=Home&CONTENTID=28192&TEMPLATE=/CM/Conten
tDisplay.cfm
“IPO does not believe that trademark “bullies” are a problem for trademark owners.” The
IPO actually tries to indicate that the opposite may be the problem, namely, that small businesses
are unfairly causing problems for others. “Indeed, several IPO members noted a trend towards
more aggressive assertion and defense of trademark claims by individuals and small
organizations, particularly where they represent themselves or have obtained legal representation
on a contingency basis.” The IPO comments cite Leo Stoller to support its claims, even though
he appears to be a clear outlier in every respect. “IPO notes that in trademark case law, one can
find examples of both plaintiffs and defendants engaging in objectionable behavior.”
Summary: Problem, what problem? If anything, defendants might be pestering or causing
problems with tactics for plaintiffs.
ABA-IPL (American Bar Association Intellectual Property Law Section)
http://meetings.abanet.org/webupload/commupload/PT020100/otherlinks_files/Ltr-Survey_Resp-TM-
Bullying.pdf
“Overall, however, curbing abusive trademark litigation practices should be left to the
judiciary on a case-by-case basis. A “one size fits all” approach does not appear to be
warranted.” There is “no consensus about many of these issues, lending further support to the
conclusion that determining litigation misconduct – in a trademark case or otherwise – requires a
fact-intensive analysis that cannot be addressed by a single, catch-all legislative solution.” “[I]t
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
appears that the existing regimes to handle abusive conduct are sufficient to address concerns of
abusive trademark litigation conduct.”
Summary: Even if there is a problem, why should anyone try to fix it as a whole when
case by case courts could potentially do something.
INTA (International Trademark Association)
http://www.inta.org/Advocacy/Documents/January42011TMLitigationTactics.pdf:
“INTA believes that the interests of trademark owners both large and small are well
served by the established practices and rules in litigation. INTA suggests that a greater emphasis
on education would assist small businesses and the general public in understanding trademark
law and the obligations of rights holders.” “INTA believes that the courts currently have
sufficient tools that are balanced and adequate to discourage unfair litigation practices.” “INTA
recommends additional public education and outreach to raise awareness among the pubic and
small business owners of legal protections in the system.”
Summary: There is no problem and the system should not be changed in any manner. If
anything small businesses and the public just need to be better educated about the issues.
AIPLA (American Intellectual Property Lawyers Association)
http://brandgeek.net/wp-content/uploads/2011/02/AIPLAs-comments.pdf
“AIPLA advises against regulation aimed at trademark abuse in favor of existing
remedies.” Legislative or other action addressing the topics in the study would “restrict or chill
the trademark enforcement process.” “AIPLA is not aware of significant abusive enforcement
tactics.”
Summary: The status quo is just fine, and enacting any changes would seek to address a
problem that does not exist.
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
In sum, these groups believe there is no bullying problem and even if there were one the
existing remedies would suffice for addressing it. I disagree strongly with these conclusions.
While the “problem” may not be drastic or easy to define, I believe that changes to the system,
increased education, and additional remedies available to defendants to address egregious
problems would improve the system.
Perhaps additional defenses or causes of action would be a proper remedy. If there is no
problem, as the major IP law associations suggest, then such defenses or causes of action would
never be successful, and the net change to the trademark law and practice would be minimal.
However, if the associations and others who see no problem are wrong, recognizing defenses and
causes of action dealing with abusive tactics or over-zealous enforcement would go a long way
toward making the system more just for all trademark stakeholders.
My biggest objection to the comments of the four groups I have cited is not the position
they have taken – I expected them to protect their own and their clients’ interests – but that they
believe that no further study or discussion of the issue is needed or worthwhile. While drastic
reform may not be necessary, a few smaller reforms – including better education regarding the
issues to both small businesses and trademark owners – would certainly help minimize the over-
enforcement of trademarks and the stifling effect it has on the economy, on jobs, and on
American innovation.
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
IV. Commentary on Trademark Litigation Study to Congress: Hakuna Matata (it
means no worries)
In short, the final Trademark Litigation Study issued by the Department of Commerce (of
which the USPTO is a part) essentially says: We conducted a thorough study and there is no
problem; and if there were a problem, no significant changes would be needed. Hakuna Matata!
In my opinion, the study’s method and analysis are both critically flawed. The study was,
by law, to focus on the experiences of small businesses (the request for comments uses the
phrase more than 10 times and the statute creating the study directs it to cover “the extent to
which small businesses may be harmed by litigation tactics”). Yet very little attention was given
to gathering and considering their perspectives. I will skip a lengthy summary of the Study, as
there are many good summaries available, including:
IP Law Alert: USPTO Issues Report to Congress on Trademark Bully Study (Fitch Even
Tabin & Falnnery)
BrandGeek: USPTO Reports to Congress on Trademark Bullying
TechDirt: Commerce Department Releases Useless, Biased Report On Trademark
Bullying
Eric Goldman’s Technology & Marketing Law Blog
David Pardue’s Trade Secrets and IP Today: Whitewash: Commerce Department Issues
Trifling Report On Trademark Bullying
Seattle Trademark Lawyer: PTO Report Questions Whether a Problem Exists with
Trademark Bullying (Michael Atkins)
Managing Intellectual Property: Trade Mark Bullies Report Dubbed Disappointing
(subscription required)
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
Pittsburgh Trademark Lawyer: USPTO Releases Study on Trademark Bullies
Conducting the Study
According to the study, it was the result of “significant outreach to stakeholders and
small businesses.” Yes while there was a public request for comments, and it was extended
several times to allow for additional comments, there was little promotion of the request by the
USPTO and Department of Commerce. The request for comments was barely, if at all, even
mentioned on the USPTO’s Facebook page, Twitter feed, news releases, and Director’s blog.
More significantly, there was a lack of real outreach directed to small business groups and
organizations and relevant agencies like the Small Business Administration (SBA). The Study
touts a single USPTO roundtable in Detroit.
The Request for Comments resulted in 79 comments, and number which seems small for
a government agency with a website that has thousands of visitors and filers every week. Of the
comments submitted, the Study devotes equal time on (and seemingly equal weight to) the
comments from four groups of attorneys compared to the other 75 commenters. The Study also
notes that there was outreach “to industry via a large industry organization” and consultation
with the Trademark Public Advisory Committee (TPAC). TPAC is a great and very useful
organization and its opinion certainly should have been sought, but TPAC does not represent the
interests of small businesses. This “large industry organization” is not identified in the report.
We cannot presume that this organization represented the views and experiences of small
businesses if the USPTO has not disclosed its identity.
The Study’s Findings & Recommendations
The Study briefly goes through each of the questions asked in the Request for Comments
and notes how many commenters identified problems, stated whether changes would be useful,
© 2012 Erik M. Pelton & Associates, PLLC. All Rights Reserved.
and/or suggested specific changes. Those who described or opined on trademark litigation tactics
causing problems clearly outweighed those who did not. Yet the Study repeatedly concludes that
there is no real problem and that no real changes are needed.
The Study also includes a summary of current federal agency initiatives related to
intellectual property. None of the identified federal agency IP initiatives relate specifically to
abusive trademark tactics or the dangers to the economy and innovation created by over-
enforcement of trademarks, and none would expressly aide small businesses or those burdened
by abusive litigation tactics. The Study’s three recommendations are to (1) urge pro bono efforts
from private sector, (2) urge more CLE (continuing legal education) programs on trademark
litigation issues for attorneys, and (3) enhance outreach from several government agencies.
In other words, the two most significant recommendations are for the people who said there is no
problem to do something about it.
While I think the Study is weak and mistaken in much of its analysis, I acknowledge that
small businesses and the public are partially to blame for failing in general to submit comments
or to publicize the issues. Perhaps a larger public outcry would have necessitated a different
result. Seventy-nine comments does not seem like a large number. No associations focusing on
small business issues commented. The National Federation of Independent Business (NFIB), US
Chamber of Commerce, and other business and trade groups were silent for the most part. Only a
handful of attorneys and law firms with experience working with small businesses submitted
comments. The Study could have included greater outreach and should have given greater weight
to all of the commenters who took the time to respond.
In my opinion the Study fell woefully short of a thorough review of the issues and the
possibilities of making the system better.