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by Cory Doctorow

Editor's note -- Cory Doctorow, who works with the Electronic Frontier Foundation (EFF), wrote this article on the heels of a rash of trademark incidents that he's encountered. Among them was Google's lawyer sending a note to WordSpy asking them not to use "to google" generically, and Air Canada trying to suppress a site that was critical of its management by asserting that the site infringed on its trade dress. Cory's point of view in this opinion piece is that trademark and copyright are supposed to promote expression. He doesn't write about any specific details of particular cases; rather, he restates an overview of these issues that serves as his guiding light.

There's one ambition that lurks in the heart of every marketeer and entrepreneur: to become a household word. "Our product will be synonymous with $GOOD_OR_SERVICE in the minds of the American public!" Xerox is synonymous with xeroxing, Kleenex with kleenex, Google with googling. The marketing objective has been achieved, but just watch as the lawyers in the board room blanch at the thought that the name of the company is losing its capital letter and entering the public's unconscious lexicon of product-derived verbs.

There aren't many areas of business wisdom more fraught with superstition and dread than trademark lore. Trademarks exist, mainly, to prevent consumer confusion, but for many business people, they're important competitive assets. They're the company's good name, upon which it trades, and companies have a duty to their shareholders to defend those good names. And defend it they do, even if the defense is so odious that it makes the company synonymous with litigious bullying.

Ask a lawyer for a 100 percent assurance of trademark protection and he'll give you plain advice: pay me to send a nasty letter to everyone who utters your name without due care and specificity, or I can't guarantee you that your mark won't slip out of your fingers and into the public domain. He won't be lying: 100 percent certainty is the kind of unrealistic objective that requires extraordinary, self-defeating measures to achieve.

Ask a security consultant to eliminate 100 percent of the shoplifting in your store, and he'll tell you to cavity-search all customers on the way out. Sure, it's effective, but if you want to stay in business, you'll need to consider trading off smugly complete certainty for a cheaper and more friendly 95 percent (or even 75 percent!) solution: say, magnetic door-monitors and a couple of plainclothes rent-a-cops in the aisles. Your legal counsel works for you: he's capable of giving you the same kind of 95 percent solution that your security outfit is -- and if he isn't, maybe it's time to seek better counsel.

First, though, you need to get your head around what a trademark is. If a reasonable person, upon hearing your brand name -- or seeing your logo -- thinks of your company and its products, then you have a trademark. Think of "Pepsi." However, if the public hears a word and thinks of a whole class of companies or services, then the word is generic, and it loses its trademark status. Think of "cola." That's because trademark is first and foremost about consumer protection.

Trademark comes from common-law consumer-confusion cases. Historically, a trademark is abused when someone engages in deceptive commerce, say, by marketing Brand X elixir as Brand Y elixir. Consumers know from Brand Y, and not from Brand X, and they have a right to know whose snake oil is in the bottle they're shelling out good money for. You may have a registered trademark for "Coke" or "Xerox," but all that gets you is protection from commercial uses of the mark that confuse the public.

That means that non-commercial uses are never infringing. A personal web site that mentions your mark or uses your logo is in the clear (though an amazing number of companies' general counsel don't get this, as can be attested to by the sheer volume of expensive, mediapathic cease-and-desist letters on display at chillingeffects.org, a clearing house for exposing legal bullying). What's more, even commercial uses of your mark are all right -- provided that they don't cause confusion: that means that the trumpeted results of the Pepsi Challenge can proudly mention that the general public's favorite battery-acid is indeed Pepsi and not Coke.

Parody (making fun of you) is in the clear, as is any descriptive use ("I bought a bottle of Drano last night and found it to have a piquant bouquet and a lovely, nutty flavor"). Fiction writers can mention your products in their stories and journalists writing articles about trademark are free to use and abuse your mark as they see fit.

Which is not to say that these activities aren't harmful to your mark: they indeed may be. If these legal uses of your mark make it generic in the public mind, there is a chance that some court, somewhere, may rule that it's lost its distinctiveness and has become generic and descriptive.

When Google's counsel sent an ominous letter to WordSpy, an Internet jargon-watch site, in February 2003, protesting WordSpy's definition of "to google" as a generic term for searching, it was because Google was genuinely alarmed that lexicographers were generating scholarly opinions to the effect that "to google" has become a generic term. But letters like that one almost always backfire: when word of the WordSpy letter got out onto the Internet, it generated dozens more online opinions from people who affirmed that they believed that "to google" was a generic term, and meanwhile added a new association with Google™: "litigious bully."

Since 1997, some giant trademark holders have been able to go after a new class of trademark users, under a new legal theory called "dilution." Under the dilution theory, some marks are so famous that any commercial use of them will be confusing: a Kodak Piano will inevitably be associated with Eastman Kodak just as Evian Brake Fluid will always be associated in the public mind with pricey French H2O. A company whose mark is that famous can command its use in every field of commerce, not just the one it's doing business in.

But there are limits to this, too. Visa, the credit-card company, is now going after everyone who trades under the name "visa," including businesses that trade in travellers' information like eVisa.com, which offers advice on getting tourist visas. Clearly, the word "visa" has a generic, agreed-upon meaning in the real world, and just as clearly, "Visa™" is in no danger of having its mark inadvertently associated with services like eVisa. There's no legitimate cause of action here -- just a bottomless legal black hole down which Visa will pour its money as it seeks to secure itself against a danger of no genuine risk.

Visa and its ilk will fall back on the traditional cop-out of the boardroom: "We have a duty to our shareholders to do everything in our power to protect our assets." If that were the whole story, the CEO and the board would be irrelevant to the running of the company: it could just send out nasty legal letters to its customers, cavity-search them on the way out of the store, and make every customer sign a legal waiver before consenting to sell him its tchotchkes. The purpose of the senior management is to intelligently trade risks off against one another, not to blindly seek a nonsensical 100 percent surety at any price. There is a middle ground between intimidating your customers and defending your trademarks, and we can get there -- if we demand the right advice from our counsel.

Cory Doctorow is the co-editor of Boing Boing and the Outreach Coordinator for the Electronic Frontier Foundation.

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