The South Butt Answer to the North Face

For a brilliant combination of technical perfection, persuasion, and humor of a sort I’ve never before seen in an answer to a complaint, you’ve got to see the answer filed by South Butt to the complaint filed by North Face alleging that South Butt’s name and its slogan, “Never Stop Relaxing,” infringe North Face’s trademarks in its name and its own slogan, “Never Stop Exploring.” I will be forever grateful to techdirt for bringing this document to my attention.
The South Butt Answer to the North Face

Trademark madness

From Legal Pad: “Sand Hill Advisors, the Palo Alto wealth management company, is suing Sand Hill Advisors, the commercial real estate company in Los Altos, for trademark infringement.” I am, apparently, one of the 3 people Legal Pad asserts did not know that “Sand Hill Road is the iconic stretch of pavement near which the sainted feet of venture capitalists tread daily to their places of work.” There was a time I would’ve known the signifiers that mattered to venture capitalists. I suspect I’m better off no longer knowing.

Apparently the wealth management company claims it’s been using the name since 1995 and that the real estate company is profiting off the value that the wealth management company has created in the name. There would be some merit in the claim if people really are using the real estate company because they think it’s somehow associated with the wealth management company, but that would seem to be a difficult set of facts to establish. Typically, a trademark cannot be enforced against someone using it in a different market because in doing so the alleged infringer typically is not capitalizing on value in the trademark created by the claimant.

In addition, the real estate company claims (it its motion to dismiss (pdf)), that the trademark claim is deficient because the wealth management company “doesn’t even have an enforceable service mark, since the government rejected a trademark application because the name was descriptive of a place.”

Legal Pad, though, is dead on in its prediction: “Sand Hill Advisors has it in the bag.”

But who will win the lawsuit filed by Mickey Mouse against Donald Duck?

Money or racism? Could the Dolans just do the right thing already? The courts won’t.

The Lanham Act, the federal law governing trademarks prohibits trademarks “which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt. . . .” Nevertheless, the Supreme Court has declined to review a lower court decision (pdf download) in Pro Football, Inc. v. Harjo ruling that, even assuming the name of the Washington, D.C. football team, Redskins, is disparaging to Native Americans or brings them into contempt, the Redskins cannot be forced to give up their trademark rights. Why? Because, given the length of time that the Redskins have had the name without challenge and the delay in the plaintiffs bringing their claim, it would be unfair to deprive the football team of the profits to be made from selling goods bearing the Redskins name.

There are serious questions to be raised about the legal merits of the NFL’s position — among other points, the Lanham Act states that challenges to a trademark can come “at any time.” But my more serious question, to Daniel Snyder and to Larry Dolan, is this: why in the world would you want to make money off of a symbol so many people consider racist? Well, Larry Dolan’s answer is that he doesn’t see evidence that Chief Wahoo is racist.

It’s amazing how money can blind someone.

Wikipedia should know better/Addendum: it does, and the problem is solved, though Wikipedia really didn’t have to be quite so heavy-handed.

Determining whether the use of someone else’s trademark is a non-infringing fair use does not involve an analysis identical to determining whether the use of someone’s copyrighted work is a fair use, but there are significant similarities.  One is that the absence of any exploitation of the commercial value of the intellectual property is a significant reason to find that use of the trademark is not infringing.  Another is that the property interest one has in the intellectual property has to be balanced against the constitutional right to free speech. Thus, owning a trademark no more gives you total control over use of the trademark than owning a copyright gives you total control over the copyrighted work.

The Electronic Frontier Foundation therefore is disturbed that Wikipedia, whom the EFF has represented, is trying to stop a group of artists from using the name “wikipediaart.org” as the domain for a site that documents  a Wikepedia article they had established last year.  The article “was intended to comment on the nature of art and Wikipedia. But Wikipedia editors did not take kindly to the project, and it was shut down within fifteen hours for being insufficiently ‘encyclopaedic.’”

But since the site is non-commercial and is a critical commentary on Wikipedia, Wikipedia has no right to shut it down.  The artists are not attracting paying customers who stumble upon the site because they are looking for Wikipedia.  And you can’t shut someone down just because they are criticizing you.  As the EFF cogently sums up the issues:

Wikipedia should know better. There is no trademark or cybersquatting issue here. First, the site is entirely noncommercial, which puts it beyond the reach of U.S. trademark law. . . . Moreover, even if U.S. trademark laws somehow reached this noncommercial activity, the artists’ use of the mark is an obvious fair use. Wikipedia Art uses the “Wikipedia” mark to refer to the project: a critical comment on Wikipedia and creativity. The disputed site describes the project, provides links to media coverage of the project, and so on. It does not use any more of the Wikipedia mark than need be; for example, it doesn’t even use the Wikipedia logo. Simply put, the site does not purport to be, nor does it look anything like, Wikipedia and the artists have done nothing to suggest Wikipedia endorses their work. Finally, the creators are engaging in precisely the kind of critical speech sheltered by the First Amendment.

ADDENDUM: asdfghjk in the comments states that the “EFF’s description of events is somewhat incomplete at best,” and points to a post by Mike Godwin, General Counsel of Wikimedia Foundation, that explains that Wikipedia’s only concern was that wikipediaart.org would be mistaken by visitors as a site affiliated with Wikipedia and that, once the creators of wikipediaart.org have posted the prominent disclaimer now visible on the site, Wikipedia considered the matter resolved, and amicably so. I’m glad to hear it.  It’s dispute resolution, folks, and when people get upset and have disputes all you need to do is resolve them.  It’s just not so easy all the time.  Here’s to wikipediaart.org for responding with the disclaimer and to Wikipedia for backing off once its legitimate concern had been addressed. And thank you, asdfghjk, whoever you are and wherever you may be. But I’ll take exception to one point you made — I do not believe the EFF was “played” by a bunch of performance artists.  Even without the disclaimer, their non-affiliation with Wikipedia seemed clear.  And it does not seem far-fetched for EFF (or me) to have mistaken the meaning of communications, in which, Mr. Godwin now claims,  “no litigation [against wikepediaart.org] was threatened or commenced.”  On April 9, Doug Isenberg, a lawyer for Wikimedia, wrote Wikipedia Art a letter that sure sounds like it threatened litigation:

Wikimedia appreciates your offer to “explore an amicable resolution to this matter.” Accordingly, I think it would be helpful to draw your attention to a recent domain name dispute between Wikimedia and the registrant of the domain name <visualwikipedia.com>. The registrant of that domain name was using it in connection with a website that described itself as “a visual, intuitive, and interactive web interface to encyclopedic knowledge/information.” The registrant of that domain name refused to cooperate with Wikimedia, after which Wikimedia filed a complaint pursuant to the Uniform Domain Name Dispute Resolution Policy (”UDRP”), resulting in a published decision ordering the domain name transferred to Wikimedia. See WIPO Case No. D2009-0139, available at http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0139.html. . .

In light of the above, Wikimedia suggests that Mr. Kildall select a domain name that does not include any of Wikimedia’s trademarks and that Mr. Kildall transfer the <wikipediaart.org> domain name to Wikimedia. Doing so would allow Mr. Kildall to continue to freely express himself without raising the same concerns that Wikimedia has asked me to investigate. If Mr. Kildall is willing to do so, please let me know by April 16, 2009.

But all is well that ends well.  The disclaimer removes any possible claim of visitors to wikipediaart.org would believe the site is affiliated with Wikipedia, and Wikipedia Art, despite Mr. Isenberg’s “suggestion,” keeps its domain name. Perhaps next time Mr. Godwin should not delegate to outside lawyers the writing of letters he does not intend to contain threats of litigation.