Using Online Shame as a Defense to a Trademark Infringement Claim May Not Always Be Effective
The Wall Street Journal had a piece recently about how the recipients of trademark infringement cease and desist letters are increasingly using "online shame" to gain leverage in disputes with trademark owners. As "trademark bullying" is a hot topic among trademark lawyers and in the press, this article picks up on that theme. It highlights a dispute between a small online cookbook entrepreneur who allowed users to save recipes by clicking on a "K" for "Keep" and a trademark owner who asserted rights to the marks K and KEEP in a strongly worded cease and desist letter. In response, the cookbook entrepreneur posted the cease and desist letter online at chillingeffects.org, an organization that "aims to support lawful online activity against the chill of unwarranted legal threats[.]" As the WSJ article reports, the cease and desist letter got attention and the cookbook entrepreneur is now being represented -- free of charge -- by legal counsel.
In the age of social media, the practice of publicly "shaming" trademark owners is increasingly common. And it can be effective. In the EAT MORE KALE vs. EAT MOR CHIKIN trademark dispute example, over 28,000 people have signed an online petition demanding that the Georgia-based fast food company, Chik-fil-A, stop bullying a small Vermont-based business that sells t-shirts bearing the slogan EAT MORE KALE. Then the Vermont Governor held a press conference expressing support for the Vermont-based business. And the story spread like wildfire throughout the national media. Clearly, many more people have become aware of the small Vermont business owner making EAT MORE KALE t-shirts in his home as a result of Chik-fil-A's demand letter (and the social media aftermath) than would have known of this business had Chik-fil-A not sent a cease and desist letter. The potential use of social media to attempt to shame an overreaching trademark owner is clearly an important consideration in any trademark enforcement matter. Social media, when used effectively and appropriately, can quickly change the dynamics of a trademark infringement dispute.
The WSJ article makes an additional point, albeit in passing. It quotes David Bernstein of Debevoise & Plimpton LLP who cautions that shaming tactics can backfire by highlighting infringing conduct. This point is important to remember. Although "trademark bullying" stories grip the headlines, most cease and desist letter raise legitimate claims of trademark infringement. Simply posting such a letter online may not garner the sympathy that you expect (Interestingly, one comment posted to the WSJ article reflects that the EAT MORE KALE small business owner has not convinced everyone of his position despite his effective social media campaign). Moreover, a potential defendant's online statements about the matter may simply provide more ammunition to the trademark owner to use in an eventual litigation. While "shaming" can be effective in fending off an over-reaching trademark owner, it does not work and is not appropriate in all situations.
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