The Dangers of IP Infringments Suits

[Bigred]

An article on some of the pitfalls of defending IP for large companies in the modern era.

[URL="http://www.corpcounsel.com/id=1202642562939/Starbucks-Plays-It-Smart-With-%27Dumb-Starbucks%27-TM#ixzz2tJbEv7sD"]Starbucks plays it Smart with Dumb Starbucks[/URL]

“You have to think of the ramifications,” Haynes and Boone partner and trademark practice group chair Purvi Patel told CorpCounsel.com. “It’s usually not a good idea for big companies to go after small ones—even if they have a legal case.”

Legally, a brand owner has to prove that the alleged infringing product is likely to cause confusion. Starbucks would probably have a tough time showing that, Patel said. A brand owner could also try to prove dilution of its brand, and in this case Starbucks could possibly win, Patel said.

But Patel, who has never represented Starbucks, said she and her colleagues have debated what they would advise a client to do in similar circumstances. Some felt it best to do nothing. Others said the brand owner should send a nice letter asking the infringer to stop. And still others said the brand owner should go all out—sending a demand letter and pursuing a preliminary injunction.

Jonathan Moskin, a partner who specializes in intellectual property at Foley & Lardner, said big companies are often better off letting the infringement slide—especially if action is likely to bring negative attention. “These are usually lose-lose propositions for brand owners,” he said. “If they win, they’re seen as beating up on an artist, and if they lose, then they come away with a black eye.”

Jonathan Moskin - is the hired gun who represents Games Workshop in the ongoing GW vs CHS IP Infringment litigation.

[Seerkarandras]

wow...........I wonder if he suggested that and GW decided to go for it anyway?

[Chuck Williams]

oh, sweet, sweet irony...

[Captain Bubonicus]

Eh, I guess GW figures that their customer relations couldn't possibly get any worse, so why modify their behavior?

[Cap'nSmurfs]

I imagine his advice to them was different in the CHS case, which is why he's representing them in that case. Jesus, people.

[DarkLink]

It's also possible that they ignored his advice and paid him to do this anyways. I've heard GW is pretty notorious for "thanks for the advice, we'll take it under advisement [not really]", not that that's particularly unusual for a corporation.

[Wolfshade]

Isn't it a facet of English and Welsh IP law that if you fail to defend a perceived un-licensed use of your registered mark you then are giving them a de-facto implied licence which means that you suffer from ip dilution which makes it harder to defend the IP in the future. So the only option is for the court to rule that it is not a use of the ip so is not an implied licence?
Indeed was it not because of this very reason they had to shut down the WAR forum despite being massively in favour of it as it provided a community for those players and them being generally in favour of it?

[Wolfshade]

It's also possible that they ignored his advice and paid him to do this anyways. I've heard GW is pretty notorious for "thanks for the advice, we'll take it under advisement [not really]", not that that's particularly unusual for a corporation.

That certainly I think has a part or at least in certain areas of it. It is the "I will follow independent advise as long as it agrees with what I've decided/thought anyway".

[weeble1000]

Isn't it a facet of English and Welsh IP law that if you fail to defend a perceived un-licensed use of your registered mark you then are giving them a de-facto implied licence which means that you suffer from ip dilution which makes it harder to defend the IP in the future. So the only option is for the court to rule that it is not a use of the ip so is not an implied licence?
Indeed was it not because of this very reason they had to shut down the WAR forum despite being massively in favour of it as it provided a community for those players and them being generally in favour of it?

Not in the way you are thinking.

Note that in this article, in fact in Larry's quote above, you have plenty of experienced IP lawyers saying that the proper response is often to let the infringement slide. These are people who understand how to build brands.

Trademarks and copyrights aren't "sue or lose" properties. There are many ways to assert, defend, support, and grow a mark that do not involve filing a lawsuit. Copyrights require even less. An implied license defense is not as simple as 'you didn't sue that guy'. In fact, because copyright infringement cases are so fact specific it is very easy to establish why one alleged infringement is different from another, and so forth.

Copyright and Trademark laws were not written to encourage the filing of thousands of lawsuits.

[Wolfshade]

Note that in this article, in fact in Larry's quote above, you have plenty of experienced IP lawyers saying that the proper response is often to let the infringement slide. These are people who understand how to build brands.

I thought that that article was giving the US IP law which is subtly different to English and Welsh law.