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Popular IP

Gotta Catch 'Em All!What’s the best way to bring IP issues into the public consciousness? As 2005 wound down, three items caught my eye, and two of them did the various IP systems — or the public — no favors. One was Nintendo’s demand that cancer researchers at Sloan-Kettering rename a gene. Henceforth, the Pokemon gene is now the far more prosaic Zbtb7. Laura Quilter covered of the Nature report on the exchange. Two was the paroxysm of anger over the possibility that a patent lawsuit would shut down the Blackberry system. James Surowiecki’s piece in the New Yorker was among the more temperate popular reviews. Three — the Baby Bear of the bunch — involved Hershey’s chocolate.

The Pokemon flap was just silly, but it doesn’t tell us much about IP systems run amok. Never mind the canard that trademark owners have to “police” their marks in order to avoid “abandoning” them. (In truth, much of the time, they don’t; “policing” the mark is usually much more about setting licensing rates.) The thoughtlessness behind this particular claim was truly awe-inspiring. “Pokemon” really is a valuable mark, and Nintendo is right to be vigilant about protecting it. But the law here doesn’t require a fix, I think. What needs to be fixed are processes that generate cease-and-desist letters and especially performance review and compensation systems in law departments that reward their unthinking distribution.

The Blackberry “controversy” (should a patent not be enforced because federal government employees are addicted to it?) was, in my view, similarly devoid of lessons for the law. The plaintiff in the case, NTP, has been trying to enforce patents on inventions that it does not practice or otherwise exploit, except through litigation and licensing. To a lot of critics of NTP and the patent system, that makes NTP a “patent troll,” which is another word for “bad guy.” What’s the problem? The problem is this: The Anglo-American IP world, and especially the patent and copyright worlds, aren’t built on a good guy/bad guy dynamic. They’re supposedly built on incentives and limited exclusivity and access and disclosure for the benefit of the public. Unless we’re going to get serious about judging IP ethics, rhetoric about “trolls” is misplaced. The question is the impact of “troll-like” behavior on the incentives of other participants in the patent system, and its impact on the benefits that the public derives from the system.

As we head into 2006, the result in Hershey’s silly claim over a chocolate bar sends a sane message about the proper scope of IP rights. A biography of Milton Hershey bears a cover that includes a photo of a Hershey bar. The company objected to use of the image and settled the case in exchange for a disclaimer of sponsorship appearing on the cover. The company claimed victory (the disclaimer will “help protect our trademarks and trade dress by making it clear that this book is not sponsored or licensed by The Hershey Co.”), but this was merely a polite way of saying, “never mind.” I hand out Hershey’s candy at Halloween, but I don’t post a disclaimer, since no one thinks that Hershey’s sponsors my family’s haunted house. It’s the difference between wrapper-as-mark, that is, as symbol, and wrapper-as-thing, that is, as the item itself. Wrapper-at-Halloween and wrapper-on-book-cover are both the latter, not the former, and therefore Hershey’s beat a quick, and wise retreat. Kudos to Simon & Schuster for recognizing and resisting such a flimsy claim, and for sharing a small IP lesson with everyone.

UPDATE: Changed the last image to a photo of the dust jacket of the D’Antonio biography (1/1). The little blue star in the upper left corner says: “This book is neither licensed nor sponsored by the Hershey Company.”

9 thoughts on “Popular IP”

  1. A book cover isn’t a candy bar wrapper. A picture of a candy wrapper on a book cover is an illustration, and illustration is symbolization. What does the pictured wrapper symbolize? Does it matter what it symbolizes to people who see it or to the people who decided to decorate the book that way? Either way, an association to the company and the chocolate has to be an element. Ditto for a trademarked wrapper on a bar. So I don’t see a distinction as having been articulated here, not that a decent one couldn’t be cooked up.

  2. The protected mark isn’t the wrapper, and the wrapper isn’t the mark. The wrapper, as wrapper, isn’t protected by trademark law. That’s the point.

  3. Thanks for clarifying. I still don’t see a compelling distinction though. McDonald’s golden arches logo is a trademark when it appears on a roof or a hat or a styrofoam burger box. Can I take a photo of the hat and print them on my buckets of fried chicken? I doubt it. Putting such a photo on a book seems like it ought to be more an issue of fair use issue than an act that wouldn’t pertain at all to trademark protection, which is what I took you to be saying.

  4. This seems related to the court case involving the Rock & Roll Museum (?), which objected to the sale of landscape photos in which the museum building appeared, at least as a vaguely recall it. So the element of the landscape photo that is the pictorial representation of a thing that bears or embodies the trademark seemingly can be construed to run afoul of that trademark. Depending how the case came out.

  5. Ah: “Pictures of buildings do not violate trademark”

    The case was

    Rock & Roll Hall of Fame & Museum v. Gentile Prods., 134 F.3d 749 (6th Cir. Ohio 1998)

    and a telling line of the opinion seems to be

    “It is well established that ‘[t]here is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed.’ United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918).”

    A decorative poster or book cover obviously isn’t connected with the business or trade in which either the Hershey or McDonald’s mark is employed. A bucket of chicken? A less obvious but still an easy call, I suppose. Thing-ness isn’t how the court seems to have resolved this issue, and I still don’t see how it could have.

  6. The distinction between IP rights, on the one hand, and interests in objects, on the other hand, is one that the law recognizes (in patent, and copyright, and trademark), but one that courts are rarely enthusiastic about grappling with. It’s so foundational, in fact, that we rarely see it at work, and sometimes (as in the case of software licensing), we lose track of it altogether. The fact that the Simon & Schuster book isn’t in the chocolate business is beside the point; the issue in the case — had it proceeded — would have been whether the image of the Hershey’s wrapper was being used as a mark, that is, whether it was being used (non-legal jargon warning) semiotically. It wasn’t. It was simply a picture of Hershey’s chocolate bar. The book jacket wasn’t using the mark; it was using the thing. Rather than belabor the point with another link to my article on “things,” for now I’ll just quote Freud: “Sometimes, a cigar is just a cigar.”

  7. At the risk of my considerable reputation as an anonymous yahoo, I say fiddlesticks. How can a cover photo not be semiotic? It’s not wall paper. What if you had a big, framed glossy poster of the Cleveland Rock & Roll Museum on the masthead or in the position of a building plaque on the Smithville Rock n’ Roll Hall of Fame? Lots of big companies of photos of the HQ positioned at the entrance of their regional offices to identify themselves, and such a Smithville poster easily could be taken as an attempt at branding, especially if the poster stood alone on a wall without disclaimer. Anyway, a picture of a cigar is never a cigar.

  8. Sure, a picture of a cigar isn’t a cigar (said Rene Magritte), but the statement responds to a different question. Here’s the question that trademark law wants to answer: What is the relevant thing? The cover photo, or the Hershey’s wrapper pictured on the cover photo? For trademark law purposes, my money is on the latter. A cigar — when you light it or chew on it or use it as a doorstop — is just a cigar, and a wrapper that says Hershey’s is what happens to cover a bar of chocolate from that company.

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