I chuckled when I saw the headline on this AP story in my local St. Paul newspaper last week: Red Cross Sued for Using Red Cross. It’s often pretty easy to make trademark law look silly. (I know because I’ve spent all summer writing an article about it — coming soon to an articles editor in-box near you!). But that headline pretty much sums up the story: Johnson & Johnson has sued the American Red Cross (ARC) over the relief organization’s efforts to license the use of its red plus-sign image on medical products (like this one) that it endorses. J&J claims that it owns exclusive trademark rights to the red cross image when used on such items, and the nonprofit Red Cross can use it only to identify its core good works.
So why is Johnson & Johnson pursuing a lawsuit that gets the company lampooned in the press? And makes it look like a heartless miser? And gets it threatened with boycott? And to top it off, triggers a reaction from their opponent that stokes all those sentiments? Indeed, ARC president Mark Everson even delivered an implicit threat (via a New York Times story) to use its substantial political heft to ask Congress for special preemptive legislation (an entirely plausible scenario, though I wonder if J&J would have a takings claim):
The Red Cross products that J.& J. wants to take away from consumers and have destroyed are those that help Americans get prepared for life’s emergencies,” Mr. Everson said. “I hope that the courts and Congress will not allow Johnson & Johnson to bully the American Red Cross.
Johnson & Johnson protests that the company is a reluctant plaintiff, as its spokesman told the Times:
We deeply regret that it has become necessary to file this complaint. The company has the highest regard for the American Red Cross and its mission.
Michael Froomkin has the answer, I think:
For non-trademark geeks, I should also perhaps explain that given the way trademark law works, if J&J didn’t sue ARC and the companies that are branding goods based on its licenses, then J&J would risk losing control of its valuable mark.
As one of those trademark geeks, that was my thought too. Common law surrounding the maintenance of trademark rights suggests that the failure to police a mark can ultimately lead to a finding that you have “abandoned” your rights. This abandonment doesn’t happen very often, but it’s such a catastrophe if it does occur that markholders pretty aggressively take care that they never appear to acquiesce to any potentially infringing use of their mark. Which means they send cease and desist letters and file complaints even against the most sympathetic defendants, when it is otherwise totally against their interest to do so.
I think this is a pretty good example of a perverse incentive. Should the legal system really force people to sue when they would prefer not to? What about a mechanism by which J&J could acquiesce for limited purposes without any adverse effect on their rights in any subsequent litigation?
[Cross-posted at Concurring Opinions]