originally published October 16, 2013
Yesterday’s voyage into the beechwood-aged fluids of Budweiser’s actual history vs. its American corporate identity merely tickled my fingers with its potential. Trademark law is a quivering glob of gelatinous weirdness, where the good guys and bad guys are seldom as opaque and forthright as they might have you believe.
Fortunately when my fingers tickle they tend to dance, and I’m more than happy to splay out one more thousandth of this wicked word project as a parquet stage for the trademark two-step, the pas-de-deux of passing off, and the ultra-groovy sport of tort. These are the battles-royale that have helped shape such bizarre legalities as NBA coach Pat Riley owning the word ‘Three-peat’ or a jewelry store owning a certain hue of blue.
Am I an expert? Of course not. Can my wikipedian sage be wholly trusted with something as precious and precarious as the truth? Not a chance. Am I nonetheless gifted in the art of asking myself softball questions and then answering them? Obviously. Let’s head to the sacred ring of justice and see what unspeakable goofballery we can poke with our thinking sticks:
The Broil With Big Oil
In one corner we have the mighty Exxon Corporation, not yet sullied by its embarrassing Alaskan spill, yet already among that pantheon of untrustworthy corporate titans. In the other corner, a tiny British insurance company, just trying to make their way through the forest of yet another completely untrustworthy industry. They called themselves Exxon Insurance Consultants International Limited. Big Exxon claimed that they owned the trademark of their name, and that Little Exxon needed to smarten up and call themselves something else.
Their claim was that the name ‘Exxon’ was a literary work – it’s an original word, carefully thought out by its creators to act as the oil corporation’s moniker. But it’s a name, and British law had a precedent that nixed the trademarking of a name. Little Exxon was allowed to keep on keeping on. This all happened in 1982; subsequent legislation has negated this decision, but in the end it doesn’t matter. I can’t find any evidence that the Exxon insurance company still exists. It earned a moment of fame and then fizzled into the sunset.
Blue Vs. The Bidders
No, this has nothing to do with eBay trying to make use of Tiffany’s coveted trademarked shade of blue. This is about the scads of bogus Tiffan-nots that were smattered all over the online auction site – counterfeit jewelry that Tiffany claims eBay let slide. eBay posted the Tiffany name next to these items, even promoting them on the front page, which the jewelry giant claimed was hurting its brand.
The courts disagreed. The counterfeit goods came courtesy of smarmy sellers, not eBay itself, and eBay made it quite clear that Tiffany & Co. had nothing to do with selling the materials posted on their site. The use of their trademark was not egregious, nor did eBay violate even a shred of copyright. This entire lawsuit wound up doing nothing but costing Tiffany & Co. a few truckloads of cash, which – given their exorbitant prices – was probably replenished in the time it took me to write these two paragraphs.
The Tiff About Jif
Back to England, and the infamous tort law known as ‘passing off’. This has nothing to do with soccer and even less to do with transitioning a doobie from one imbiber to the next. Passing off is all about trademark infringement – literally someone trying to ‘pass off’ their product as someone else’s for easy sale. This came into play in 1990 when Borden Inc. started selling their lemon juice in a plastic yellow lemon-shaped container. Reckitt & Colman Products Ltd. had been hocking Jif Lemon (pictured above) for about 35 years at that point.
The House of Lords (and later the Court of Appeal) didn’t take long with this one. It was obvious to them that Borden was looking to sneak their lemon juice into consumers’ hands based on the similarly-shaped bottle. Customers don’t really care about the brand of their lemon juice, they only really look at the bottle shape. Borden had to find themselves a new vessel for their product.
The Wacko Tobacco-Hackos In The Outbacko
Down to Australia for this bout. Imperial Group, makers of fine smokable carcinogens, tried to trademark ‘MERIT’ for their cigarette products. They were told no, this was too descriptive to qualify as a trademark. Instead they registered ‘NERIT’, figuring that if some competitor tried to use ‘MERIT’ they could sue, claiming it was too close to their trademarked word. It was a back-handed way to get a monopoly on the descriptor that couldn’t itself be technically trademarked.
Well, along comes Philip Morris, who slapped the word on a pack of smokes and found themselves with a glossy invite to a courtroom over the matter. Except that Imperial Group didn’t get away with it. The court pointed out that Imperial had no intention to actually use ‘NERIT’, and therefore the defendant was not stepping on anyone’s toes. The decision was essentially the nicest possible way for the Australian judicial system to say, “Nice try, douchebags.”
The Not-Ready-For-Prime-Time Battle For The Ages
In 2003, the Fox News Network filed a civil lawsuit against comedy writer and long-time Saturday Night Live scribe Al Franken. For a visual reference, it helps to remember that Al looks like this:
And the Fox News executives look something like this:
Al Franken was publishing a book called Lies And The Lying Liars Who Tell Them: A Fair And Balanced Look At The Right (which I highly recommend). Fox News was known for using ‘Fair and Balanced’ as their slogan, despite their overwhelmingly conservative (and/or neoconservative) bias. Yes, Franken was poking fun at them with the title, as he does in the book. Rather than take the high road, Fox News went all tattle-tale-bitchy-baby and took Al to court.
The judge denied the network’s motion for an injunction to delay the publication of the book based on three words in its title, and the network dropped its suit soon thereafter. The resulting publicity helped Al’s book blast to the top of the bestseller charts, which is the most perfect ending this story could have.
Actually, no. The best part of this story’s conclusion is the fact that, since 2008, Al Franken has been serving as a Democratic Senator for the state of Minnesota, allowing him to ramp up his indignation from literary satire to direct action. It’s hard to slap together any applause for anyone in the two legislative houses of the US government right now, but I’ll sneak in a clap or two for Al.
I’ll let loose my most generous cheers for trademark law as a whole. This is where litigation brings inspiration and the weirdness within can provide a huge heap of mirth. Much appreciated.