Monday, November 16, 2009

A Few Questions

Posted by Hidayat Hidayat at 6:34 PM
I'm happy to let this die when you all are. But, a few responses to questions I've received.

Q: Didn't Bayer actually lose the rights to the Asprin trademark as a result of losing World War I?

A: Yes and no. Wikipedia is wonderful, but it's not exactly designed for legal research. The Treaty of Versailles was definitely a key factor in the decision, and there is a logical chain of events from that treaty to the loss of the trademark rights in Bayer v. United Drug. But the treaty itself didn't invalidate the trademark.

The Treaty of Versailles resulted in the term "aspirin" being considered generic, and that was later used as the factual basis for the Court decision that ruled that Bayer had lost its trademark. The Treaty of Versailles provided conclusive evidence that the term was used generically, which otherwise would have been a question of fact for the judge or jury to answer. The treaty definitely was a detriment to Bayer in the court case, but there was five year gap between the Treaty of Versailles and the conclusive loss of the the brand name.

There are ountries that were signatories to the Treaty of Versailles where Bayer still, to this day, has a trademark in the brand name Aspirin with a capital "A", even though the term is considered generic when used with a lower-case "a". In the U.S., trademark law is clear (now) that if a brand name is allowed to become generic, it is no longer protectable as a trademark (at least, unless a secondary, non-generic meaning arises, which would be a truly odd case, but definitely a possibility under current law).

Q: Couldn't you have picked a more factually case?

A: Probably not. My goal wasn't to write a treatise on U.S. trademark law. That would have been much longer and would have required a lot more research. The reason I picked Bayer from the various milestone trademark court cases is because it's recognizable and has clear modern parallels in Advil and Tylenol. You can buy both ibuprofen and acetaminophen in generic form, yet people still pay more for Advil and Tylenol. Why? Brands have value. Apple's brands have a lot of value. They're consistently ranked among the world's most recognized and valuable brands.

If today, the terms "iPhone" or "Apple Computer" became generic, it would be catastrophic for Apple as a company.

Is that likely? Of course not. But the reason that it's unlikely is because the IP section of Corporate legal departments are 99% prophylactic. They spend most of their time reviewing, and often nixing, materials that are sent to them. Because the stakes are so high, and there are few clear-cut, black and white rules, corporate legal departments will always err on the side of being too aggressive when it comes to trademarks. It's why a company like Disney will risk bad public sentiment and take action against a day care center over the use of their trademarks. It would take way more than a few negative stories in the press to equal the loss of trademark protection for Mickey Mouse.

As programmers, we often code defensively. We check for conditions that are extremely unlikely to happen, because we know that if they do, the consequences could be drastic. That's basically what corporate IP attorneys do, only they don't have the luxury of knowing exactly what the consequences are, or what exactly they have to do to make sure the consequences don't happen.

I'm not saying that's necessarily a good thing. I think that the U.S. copyright, trademark, and patent laws are in drastic need of an overhaul, but as long as they are the way they are, corporations are going to be extremely aggressive when it comes to trademark enforcement. Thinking that any corporation won't is just being silly. It's especially true with highly-recognizable, high-value brands, like Apple.

Think it's unnecessary? Ask the Psion company what they think. They're on the verge of losing the rights to the trademarked name "NetBook". They're being sued by Dell because Dell wants to be able to continue calling their low-end portables "netbooks". So, Dell is claiming that the term "netbook" has become generic (and I think they're actually right). Don't think for a second that Michael Dell wouldn't sue Apple if he thought he had a chance of prying one of Apple's valuable brands into a generic term.


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