Social media is changing trademark disputes. So far, it may have only affected a few. But the trend is growing. And as the business world becomes more and more connected with social media, the role of social media in trademark disputes is likely to continue to grow.
I wrote about this trend in 2009 (the future of trademark disputes – using social media?) and again last year (Using publicity to fight trademark cases). One would think that potential plaintiffs would be aware of the public relations issue they may have if a nasty overreaching cease and desist letter is made public and not only embarrasses them, harms their intent of stopping a small alleged infringer by giving them much more attention and changing the dynamics of the claim and the settlement negotiating stances of the parties.
EAT MORE KALE is one recent example of this. The EatMoreKale.com Facebook page has more than 8,000 fans. I imagine that the business of selling EAT MORE KALE shirts and bumper stickers has increased ten-fold since Chik-Fil-A demanded the name be changed.
The Wall Street Journal reported on these “shaming” tactics last week. New Tool in Trademark Fights: Start-Ups ‘Shame’ Bigger Companies; ‘Coming Down Hard on the Little Guy’ (Wall Street Journal). The most intersting quote, to me, in the article was: from the founder of Chillingeffects.org, which collects and posts cease and desist notices:
“Trademarks are meant to protect your image, so it doesn’t really help to look like you’re coming down hard on the little guy,” said Wendy Seltzer, a Yale Law School fellow who founded Chillingeffects.org.”
This quote hits the nail on the head. Trademarks are part of a company’s brand, their image and reputation. Efforts to enforce trademarks should consider the not just the legal merits, but the potential affects and outcomes for the brand. If the potential harm in contacting or suing an alleged infringer outweighs the benefit, perhaps the strategy ought to be adjusted.
The Journal’s “Law Blog” also discussed the topic today. It made a good counter-point: “shaming tactics can backfire. If the claims in the letter are legitimate, entrepreneurs wind up casting a spotlight on their own infringing conduct, according to David Bernstein, a partner at Debevoise & Plimpton. ” This is certainly true. But the defendant, pushed with their back against the wall by a bigger richer plaintiff, often has little or nothing to lose. The risk of some embarrassment by spotlight their own conduct may outweigh the costs and difficulties of changing the name or litigating against a Goliath.
One thing is for sure, social media’s impact on these kind of disputes will continue to grow. I hope it will mean that companies think twice before sending an aggressive overreaching letter. Maybe more will try a softer approach. Maybe more will companies (and lawyers) realize that some uses are better left untouched rather than instigating a claim that will only call more attention to the use they want to stop.
Image from EatMoreKale.com