Trademark Bullying & the Streisand Effect (Erik Pelton - NYSBA 2012 IP conference)

© 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


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.


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


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.


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”


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


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.”


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


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


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.


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.


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)


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,


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.

Trademark Bullying & the Streisand Effect (Erik Pelton - NYSBA 2012 IP conference)

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