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Centers on Law and IP (Or: Perhaps We’ll Just Call It Flurm)

We have received a cease and desist letter demanding that we change the name of our IP center from “Center for Law and Intellectual Property” because it infringes the rights of Fordham University’s “Center on Law and Information Policy.”  The letter also demands that we not use the acronym CLIP whatsoever in reference to our Center.

Nearly two years ago, I received an email from the Director of Fordham’s Center for Law and Information Policy, stating that the name of our center infringed the rights of Fordham.  I responded that our center, like many others at law schools across the nation*, uses “center” and “law” in its descriptive title, and then refers to the subject matter of the center — in our case, “intellectual property” (in their case, “information policy”).  I assured him that we always use our school’s name in any materials referencing the center.  The trademark professor in me wanted to write a long missive about both trademark law and policy.  The human being in me wanted to make a goofy yet heartfelt reference and say, “Can’t we all just get along?”  Instead, I closed by saying, essentially, that I think what they are doing is great, and I think what we are doing is great, and what law schools across the country are doing by creating enhanced learning opportunities for students in centers of research and dialogue and policy is great.  I also extended an invitation for him to come visit sometime and see the kinds of things we do at Texas Wesleyan.

(I also told him that we do have a logo, which uses the acronym of the center with the words “Center for Law and Intellectual Property” and our Texas Wesleyan house mark, and I assured him that we always use the name of the school in every piece of material we send about the center, as we have a strong interest in identifying ourselves as a Texas Wesleyan initiative.)

I did not hear from him again.  However, after our email exchange, Fordham revamped the webpage for its center and applied for federal registration of their acronym CLIP for a long list of goods and services (and using the phrase “intellectual property” four times).  That registration issued at the end of October, and the President of Texas Wesleyan has now received a cease and desist letter stating that not only any use of the acronym CLIP but the very name of our center infringes the registered and common law rights of Fordham.

The trademark professor in me wants to write a treatise about trademark law and policy.  The human in me wants to make a goofy yet heartfelt reference and say, “Really?!?

In this current climate, when budgets are tight and the structure and content of legal education is something we are all debating passionately, when we are all working as hard as we can to provide innovative and dynamic educational opportunities for our students, I can’t help but wonder whether our collective time and resources could be better spent on other things.  On the other hand, in a lemonade-from-lemons sense, my trademark practice students are getting to see the real-world dynamics of practice.  The fact is:  As a university, we are not about to spend our students’ tuition money in this climate defending ourselves in an out-of-state trademark lawsuit, even if we think we are right, even if we think we would win, even if I suspect the best answer on the exam would be “no likelihood of confusion.”

In the end, if we can’t call our center by its descriptive function, perhaps we will go the trademark route.  I always tell my students that FLURM would be an excellent mark, because it is a coined and unattractive word.  Perhaps we’ll change our name from the Center for Law and Intellectual Property to FLURM.  Come to Texas Wesleyan School of Law, and be a part of THE CENTER OF FLURM!  At least then, no one will be confused.

* center such as, eg, the Center for Intellectual Property Law (John Marshall Law School), the Intellectual Property Law Center (Drake Law School), the Center for Intellectual Property Law and Markets (University of San Diego), the Center for Intellectual Property (University of Maryland), the Intellectual Property Center (University of Akron), or the Center for Law and Intellectual Property (Thomas Jefferson School of Law), the Center for Intellectual Property Research (Indiana University Maurer School of Law), to name a few.

9 thoughts on “Centers on Law and IP (Or: Perhaps We’ll Just Call It Flurm)”

  1. Descriptive? I would say that Fordham’s mark straddles the line between generic and descriptive. Maybe some TWU alums would take on the matter pro bono, with your students as interns?

    As I prepare to start teaching Trademark Law this Spring, this gives me a much-needed assignment for the first day of class. This, and the recent order in the Terrible Towel, Terrible T-shirt lawsuit.

  2. I was thinking along the same lines as Eric. Those of you about to launch competing “Silicon Flatirons” centers, and I know there must be dozens of you, back off!

  3. On behalf of the Center on Law & Information Policy at Fordham Law Should, I feel the need to chime in because our Founding Director, Joel Reidenberg, is traveling and cannot reply right away. He will certainly have his own thoughts to add when he is able to come back online.

    Our concern was, not with the name of the Texas Wesleyan center, but with their use of CLIP. We had been using CLIP for several years before the TWU Center on Law and Intellectual Property was formed and we were concerned that they were using CLIP, which we had built a brand around in national advertising.

    As Megan noted, Joel did reach out to her several years ago with our concern about the use of CLIP. Her response (intentionally or not) did not actually respond to his concern about using CLIP. Our Dean then tried to reach out to the Dean at Texas Wesleyan hoping to discuss and resolve the issue. His attempts went unanswered. It was only after trying to amicably resolve the issue for an extended period of time that we then thought this would be a useful exercise for our clinic students. Not knowing who to contact, the clinic sent a letter to the Texas Wesleyan president. University’s counsel then contacted our clinic asking what we wanted and the clinic indicated that if we could resolve the issue about the usage of CLIP, we would probably leave it at that. Unfortunately, rather than ever get back to us with a proposed solution, the dispute was thrown into the public sphere.

    We understand and respect Megan’s concern and frustration over claims against the full name of the Texas Wesleyan’s center. That said, we do also think that CLIP is a strong, non-descriptive trademark that we have been using for over 5 years and we are interested in preserving the strength and meaning of that brand. We certainly believe that both centers can co-exist and “get along” and hope that now we can have a real discussion about how that can happen.

  4. Hmm … This is going to be rather complicated. In IP literature, when CLIP is mentioned, we usually refer to the European Max Planck Group for Conflict of Laws in Intellectual Property, which came up with the CLIP Principles. That group was established before either CLIP here. The CLIP Principles were finally adopted earlier this month and likely will continue to be cited as such. There are CLIP publications as well (including a forthcoming volume from OUP).

  5. As the Executive Director of Lincoln Square Legal Services, Inc., the law firm in which Fordham law students practice Intellectual Property Law and in 14 other areas, I write to comment on some of the recent attention our representation of our University in a matter also involving Texas Wesleyan School of Law has garnered.

    I note that my law firm is a separate legal entity from the Fordham Law School or its faculty. In conformity with our obligations, we exercise independent legal judgment in each and every matter. We take direction from our clients and their duly authorized agents, as I am sure all will understand. In this matter, we represent Fordham University and its Center on Law and Information Policy, not Fordham Law School, its faculty or the Intellectual Property group within our faculty. The Director of Fordham’s Center, as many know, is Prof. Joel Reidenberg. He has asked me to let folks know that a family emergency has so far prevented him from joining this discussion but he looks forward to sharing his views soon. None of Fordham’s IP faculty other than Prof. Reidenberg was involved in CLIP’s decision-making on this issue.

    As for the merits, just as Ms. Carpenter, we can marshal favorable facts (our Dean called their Dean and was ignored, other efforts went unheeded and so on) and argue on blogs. And I expect all know that there is always more than one side to any situation. We have repeatedly tried to communicate to Texas Wesleyan that we would like to resolve this amicably and equitably and still hope that will happen very soon.

    Having fought for clinics at my own school and on the national scene for some years, I hope faculties, as well as administrators, alumni, legislators and everyone else, will understand that law school clinics represent their clients, not their colleagues or their schools.

    Ian Weinstein
    Executive Director, Lincoln Square Legal Services, Inc.,
    Professor of Law &
    Assoc. Dean for Clinical and Experiential Programs
    Fordham Law School

  6. This reminds me of an article by my colleague, Nancy Morawetz on how the activities of law school clinics can be misaligned with the interests of clients and the public, see Counterbalancing Distorted Incentives in Supreme Court Pro Bono Practice: Recommendations for the New Supreme Court Pro Bono Bar and Public Interest Practice Communities,

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