One of the ongoing Internet debates these days focuses on how companies can protect their brands when they
are used in an unauthorized manner (often known as patent infringement), while also being very sensitive to the issue that they might be alienating, and even angering fans of that brand through their actions.
In these cases, I don’t mean obvious theft where companies or consumers are illegally profiting from another company’s cherished brand by selling product knock-offs or leveraging it on a Web site in some way to conduct e-commerce. No, instead I mean there are hundreds of cases where “fans” of that brand are just so excited about it that they set up Web sites to discuss, promote and gain an exponential amount of positive publicity about that brand by attracting hundreds (or thousands) of other fans.
One example that comes to mind is a fan site called www.ILOVECROCS.com, a few years back. The creator of this site absolutely adored this trendy rubber shoe. To show his appreciation, he built this site and promoted the brand through photos of different styles of Crocs. He attracted hundreds of new fans (and one would think) helped to provide free, positive marketing services for this company. From what I understand (told to me through a third party,) it wasn’t long after that he received a 'cease and desist' letter from the company’s lawyers. When the man tried to explain that he wasn’t making any money at Croc’s expense and just wanted to show appreciation for the brand through this Web site, the company attorneys didn’t care. In the end, the man was forced to pull down the site. And, that was that. Until anger started to boil up inside this “fan,” and he completely changed his views about Crocs. This anger manifested in his developing a site called www.IHATECROCS.com. And, of course, he now was pushing out only negative stories and vibes to those same fans about this brand that he once cherished.
Other companies such as FedEx and Dell have had very similar experiences as well.
The other day, my business partner and I received the email below. We created a completely fun, post-holiday Star Trek spoof video (in the spirit of our agency’s personality). The video was sent out to friends and family of Peppercom and posted on our Web site. You’ll see this CBS attorney (which owns the Star Trek brand) was actually very polite and tactful in her letter to us. Which is very much appreciated. CBS has every right to protect its brand rights in Star Trek and clearly its attorney is making sure that this is enforced to the letter of the law. Personally, I have no problem with it.
But, the question I ask is whether companies like this are doing more harm by protecting the brand from any type of infringement (even when the other party isn’t trying to profit in any way from it) versus allowing the brand to build more excitement and fans through our new digital world? Common sense dictates that the more Star Trek is seen by consumers, the more these same consumers will be interested in buying products, going to their trade shows and watching the latest Star Trek movie. That all adds up to more $$$ for the owner of that brand.
There isn’t an easy answer here. But, I’d love to hear any thoughts you might have on the topic
Dear Sirs:
I write as attorney for CBS Studios Inc. ("CBS"), owner of rights to the "Star Trek" franchise (collectively, the "Series"). These rights are protected by numerous copyrights and trademarks in and to the Series, the characters, the ships and other elements thereof (collectively, the "Star Trek Properties").
We appreciate that the success of the Star Trek Properties is enhanced by the interest of its dedicated fan base. However, as a public relations firm, your company understands that CBS is obligated to enforce its rights in the Star Trek Properties to guarantee the Properties’ continued success. In that regard, CBS is sensitive to consumers' desires to communicate and share information about the Star Trek Properties, and we seek to strike a balance between encouraging legitimate use and discouraging unauthorized infringement of valuable rights. For example, CBS has numerous licensees worldwide who offer a wide range of products and services, all of which are carefully monitored for compliance with its licensing program to ensure the quality, authenticity and integrity of all goods and services associated with the Series. In addition, CBS objects to the unauthorized commercial use of the Star Trek Properties, as well as the posting of protected material such as audio or video content, content from official websites, photographs, artistic renditions of the characters or other properties, music and sound files, and books or excerpts therefrom.
It has come to our attention that your company has distributed a video utilizing the Star Trek Properties (http://vimeo.com/8707511) (the " Video"). While we appreciate your firm's interest in the Star Trek Properties, we are concerned about your use of the Properties as such use may be deemed violations of CBS's rights under applicable copyright and trademark laws. It appears that the Video was limited in scope and timing. We therefore request that your firm take steps to remove the Video from your website, vimeo.com, and any other website which your firm controls and confirm that your firm will refrain from using the Star Trek Properties in this manner in the future without prior written consent from CBS.
We trust that you understand CBS' concerns and will comply with our request. We would appreciate receiving your written confirmation of your compliance within ten (10) days of receipt of this letter. Should you need any additional information or wish to discuss this further, please use the contact information provided below.
Nothing in this letter shall be construed as a waiver or relinquishment of any right or remedy possessed by CBS Studios Inc., or any other affected party, all of which are expressly reserved.
Mallory Levitt
Vice President & Assistant General Counsel, Intellectual Property
CBS
51 West 52nd Street
New York, NY 10019
ph: 212-975-3633
f: 212-975-0114
Mallory.Levitt@cbs.com
In these cases, I don’t mean obvious theft where companies or consumers are illegally profiting from another company’s cherished brand by selling product knock-offs or leveraging it on a Web site in some way to conduct e-commerce. No, instead I mean there are hundreds of cases where “fans” of that brand are just so excited about it that they set up Web sites to discuss, promote and gain an exponential amount of positive publicity about that brand by attracting hundreds (or thousands) of other fans.
One example that comes to mind is a fan site called www.ILOVECROCS.com, a few years back. The creator of this site absolutely adored this trendy rubber shoe. To show his appreciation, he built this site and promoted the brand through photos of different styles of Crocs. He attracted hundreds of new fans (and one would think) helped to provide free, positive marketing services for this company. From what I understand (told to me through a third party,) it wasn’t long after that he received a 'cease and desist' letter from the company’s lawyers. When the man tried to explain that he wasn’t making any money at Croc’s expense and just wanted to show appreciation for the brand through this Web site, the company attorneys didn’t care. In the end, the man was forced to pull down the site. And, that was that. Until anger started to boil up inside this “fan,” and he completely changed his views about Crocs. This anger manifested in his developing a site called www.IHATECROCS.com. And, of course, he now was pushing out only negative stories and vibes to those same fans about this brand that he once cherished.
Other companies such as FedEx and Dell have had very similar experiences as well.
The other day, my business partner and I received the email below. We created a completely fun, post-holiday Star Trek spoof video (in the spirit of our agency’s personality). The video was sent out to friends and family of Peppercom and posted on our Web site. You’ll see this CBS attorney (which owns the Star Trek brand) was actually very polite and tactful in her letter to us. Which is very much appreciated. CBS has every right to protect its brand rights in Star Trek and clearly its attorney is making sure that this is enforced to the letter of the law. Personally, I have no problem with it.
But, the question I ask is whether companies like this are doing more harm by protecting the brand from any type of infringement (even when the other party isn’t trying to profit in any way from it) versus allowing the brand to build more excitement and fans through our new digital world? Common sense dictates that the more Star Trek is seen by consumers, the more these same consumers will be interested in buying products, going to their trade shows and watching the latest Star Trek movie. That all adds up to more $$$ for the owner of that brand.
There isn’t an easy answer here. But, I’d love to hear any thoughts you might have on the topic
Dear Sirs:
I write as attorney for CBS Studios Inc. ("CBS"), owner of rights to the "Star Trek" franchise (collectively, the "Series"). These rights are protected by numerous copyrights and trademarks in and to the Series, the characters, the ships and other elements thereof (collectively, the "Star Trek Properties").
We appreciate that the success of the Star Trek Properties is enhanced by the interest of its dedicated fan base. However, as a public relations firm, your company understands that CBS is obligated to enforce its rights in the Star Trek Properties to guarantee the Properties’ continued success. In that regard, CBS is sensitive to consumers' desires to communicate and share information about the Star Trek Properties, and we seek to strike a balance between encouraging legitimate use and discouraging unauthorized infringement of valuable rights. For example, CBS has numerous licensees worldwide who offer a wide range of products and services, all of which are carefully monitored for compliance with its licensing program to ensure the quality, authenticity and integrity of all goods and services associated with the Series. In addition, CBS objects to the unauthorized commercial use of the Star Trek Properties, as well as the posting of protected material such as audio or video content, content from official websites, photographs, artistic renditions of the characters or other properties, music and sound files, and books or excerpts therefrom.
It has come to our attention that your company has distributed a video utilizing the Star Trek Properties (http://vimeo.com/8707511) (the " Video"). While we appreciate your firm's interest in the Star Trek Properties, we are concerned about your use of the Properties as such use may be deemed violations of CBS's rights under applicable copyright and trademark laws. It appears that the Video was limited in scope and timing. We therefore request that your firm take steps to remove the Video from your website, vimeo.com, and any other website which your firm controls and confirm that your firm will refrain from using the Star Trek Properties in this manner in the future without prior written consent from CBS.
We trust that you understand CBS' concerns and will comply with our request. We would appreciate receiving your written confirmation of your compliance within ten (10) days of receipt of this letter. Should you need any additional information or wish to discuss this further, please use the contact information provided below.
Nothing in this letter shall be construed as a waiver or relinquishment of any right or remedy possessed by CBS Studios Inc., or any other affected party, all of which are expressly reserved.
Mallory Levitt
Vice President & Assistant General Counsel, Intellectual Property
CBS
51 West 52nd Street
New York, NY 10019
ph: 212-975-3633
f: 212-975-0114
Mallory.Levitt@cbs.com
Ed, I'm not a lawyer, but if memory serves, parody falls under the legitimate use of trademarks as long as it doesn't introduce confusion in the marketplace.
http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm
Posted by: Michael Moed | January 25, 2010 at 05:08 PM
That's what I've heard as well, Mike.
Seems to be a very confusing issue (not black and white) though.
Posted by: ed | January 26, 2010 at 09:17 AM