‘Brand owners need to keep a sense of perspective when it comes to enforcing their trademark rights.’ That was the message from J Scott Evans, senior legal director, Global Brand and Trademarks, Yahoo! Inc, at a CPA Global breakfast briefing at INTA 2010 in Boston.

He highlighted the often counterproductive practice of pursuing actions against light-hearted spoofs of a brand; for example, the recent attempt by gear and apparel giant The North Face to sue ‘The South Butt’, a line of apparel parodying The North Face's logo and motto, but which he said had only resulted in raising awareness and authenticating the makeshift operations of The South Butt’s founder Jimmy Winkelmann. ‘Was it really necessary to bring a trademark claim against a 19-year-old working from his bedroom?,’ Evans asked. ‘Brand owners need to realise that with fame comes parody. That’s part of the world that we live in. Clamping down on every minor infringement can actually have a detrimental effect on a brand’s reputation.’

Evans identified another reason for brand owners to be reticent in this area in the US: a lack of clarity in law and practice. He explained that, while legal remedies did exist for infringing parodies in the US Lanham Act, via the so-called delusion clause, many cases brought before the courts on this basis nevertheless failed. Evans offered the 2007 case by Louis Vuitton against a range of ‘Chewy Vuiton’ luxury handbags for dogs (Louis Vuitton v Haute Diggity Dog) as a prime example of a large brand name getting unstuck in this area.

‘In the last five trademark cases brought before the US Supreme Court, the brand owner has lost,’ emphasised Evans. ‘And, don’t forget that this is a pro-business court. Trademark owners need to be more creative in the way that they use and enforce their rights, and only use litigation as a last resort.’

Never-ending challenge

Evans underlined the effect that the growth of the internet, YouTube and user-generated content was having on trademark practice. ‘We’ve already had to change the way that we sent cease and desist letters,’ he said. ‘Every person with a computer has the ability to be a reporter, so, of course, it wasn’t that long before the letters’ recipients were posting those letters on the internet for the world to see and judge.

‘Enforcement should be about building value in your brand,’ he stressed, ‘so when you look at enforcement, you need to consider the risk of damage too. Sometimes trying to protect your brand can do more harm than good.’

Evans added that brand owners needed to find a happy balance between protecting themselves online and keeping a sense of humour when it came to minor infringement. ‘Brand owners can no longer be reactive or formulaic in their approaches to protection,’ he said. ‘There are new challenges to be faced every day and it’s only going to get worse. That’s why it’s important to take a more reasoned approach to infringement. You simply can’t pursue every case.’

This principle applies just as much on a worldwide basis as it does in the US said Evans in conclusion: ‘Laws still have borders, but information and technology don’t,’ he said. ‘We can fight for our rights in a national court knowing full well that a judgement in our favour will only extend so far, or we can find a way to protect our brand that doesn’t require such a costly action.’

He gave as an example the reaction of 3D virtual website Second Life to the emergence online of getafirstlife.com. ‘Yes, Second Life could have pursued the site’s founders for trademark infringement and tried to force it to close down,’ he said. ‘But instead Second Life wrote the founders a letter acknowledging that what they had done was actually very funny and granting them a licence to continue using the name in parody. [The website eventually shut down through lack of use.]

‘Other companies have offered websites a lifetime supply of their products in return for retrieval of an infringing domain name,’ Evans added. ‘It just shows that there are alternatives to playing the nasty big brand owner every time.’