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New Year's Resolution for Trademark Lawyers: Get a Life
by Wendy R. Leibowitz

The trademark infringement suits are flying thick and fast. As the old year ended, Harvard University sued Harvard Bioscience in Boston federal court, alleging that the company's use of the name Harvard suggested an association with the university. But the company, which was founded by a Harvard University graduate, has used the name since 1901, according to its Web site at www.harvardapparatus.com, without any evidence of consumer confusion--the crux of trademark infringement.

These trademark infringement suits, which have gained increased attention thanks to the importance of domain names on the Internet, are being filed without regard to trademark law or consumer confusion. Trademark lawyers will claim that they must defend their clients' marks "zealously." But in so doing they are frequently causing tremendous damage to the goodwill their clients have earned over the years, and not distinguishing between willful infringement that does damage to their clients' businesses, and innocent infringement which is either harmless or actually beneficial to the client.

A case in point? Harry Potter, the British wizard who stars in a book series soon to be a major motion picture. Operating on the auto-pilot that constitutes trademark lawyering, Warner Bros. has sent "cease-and-desist" letters to children who have posted non-commercial fan sites dedicated to Harry, such www.harrypotterguide.co.uk. If the site is not selling Harry Potter books, or otherwise profiting from Harry without a license to do so, there is no reason why someone--even an adult--can't use the domain name. Sending vicious letters does not help Harry, whose powers are growing by the book. But try telling that to trademark lawyers, who apparently have only one letter in their arsenal, and who can't be bothered for the most part to investigate whether a Web site is commercial or not.

The worst offender was the Palo Alto, California-based law firm of Finnegan, Henderson Farabow, Garrett & Dunner, which fired off a series of letters to a 12-year old boy called "Pokey" (he was a late birth). Pokey's father had given his son a domain name, www.pokey.org, for his birthday, and the boy talked about his dreams of being a Web designer and a computer engineer. There was nothing on the site about a little red horse named "Pokey," whose creator, Art Clokey, is a client of the firm's. The word pokey is a word in the dictionary, meaning "slowpoke." Nevertheless, the law firm pursued Pokey, who had to retain counsel, insisting that the domain name be turned over to Gumby and His Friends. Hundreds of sympathetic people set up "pokey" sites in sympathy. The resulting horrible publicity for the firm, the legal profession, and Gumby did not deter the law firm from pursuing the action--even though there was no evidence of any consumer confusion and thus no trademark infringement. Only the intervention of the artist, Mr. Clokey, stopped the boy from being formally sued and incurring ridiculous expenses in what probably would have been a successful suit. The law firm claims that the site looked professional and commercial. It dropped its claim, but has never apologized to the boy.

Some of the actions are brought by institutions which have only recently awakened to the value of their intellectual property, including their names. Harvard--which certainly should pursue any educational institution that tried to use the Harvard name for profit, such as a "Harvard School of English," has slept on its rights for years. For example, the university, located online at www.harvard.edu, does not own Harvard.com, which belongs to the Harvard Bookstore, an independent bookstore not affiliated with the university. A prominent link to Harvard University is on the front page of the bookstore's site, and no one seems the poorer, or more confused, for it.

The overzealousness of many trademark lawyers, particularly in pursuing children and fans over non-commercial sites, may have backfired. As 2001 opened, a North Carolina court issued an injunction allowing a software developer, Uzi Nissan, to keep his domain, nissan.com, which he launched in 1994, as long as he displayed a prominent disclaimer that his site had nothing to do with the car manufacturer.

Isn't this a sensible way to resolve most of these disputes? Paramount Pictures, a unit of Viacom, which owns Star Trek, used to send the typical threatening form letter to any and all Star Trek fan sites on the Web. Lately, they've backed off, realizing-duh-that beating up their fans over non-commercial sites does not help their client.

Trademark lawyers, write some new, kinder letters, particularly if you're dealing with children, and be ready to compromise. If not, Harry Potter's friends will catch you.


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