Forensic Linguistics: Top Ten Trademark Cases

by Craig Evans

As anyone who has studied Forensic Linguistics will know, one of the primary real-world uses of this is in trademark dispute cases. The notion that ‘bits of linguistic or semiotic material’ can actually be owned seems to me a very intriguing one (Butters 2010, p. 352). Should individuals and companies have the right to own parts of language? And if so, where do we draw the line to ensure that trademarks don’t impinge on things like freedom of expression?

To explore this subject more, I have compiled a top ten list of famous trademark cases. It would be interesting to hear your thoughts on any of these. Who do you agree with: the plaintiff or the defendant? Why?

 

1.    Victoria’s Secret v Victor’s Little Secret: In 2002, the American lingerie retailer Victoria’s Secret brought a case against Victor Moseley, proprietor of Victor’s Secret, a small sex shop in Kentucky; proceeding with the case even after he’d changed the name to ‘Victor’s Little Secret’. The basis for their action was one of trademark dilution. Victoria’s Secret claimed that the negative association with a sex shop tarnished their brand and reduced its recognisable uniqueness.

Initially, the court ruled against Victoria’s Secret on the grounds that in trademark dilution suits, actual harm to the brand needed to be demonstrated. However, as a result of this case, the law was changed in 2006 so that only the likelihood of harm needed to be shown, and the original decision of the court was overturned.

 

2.    Use of ‘VOGUE My Style’: The New York and Paris publishing houses behind Vogue magazine took a Swiss watchmaker to court in 2009 for their use of the slogan ‘VOGUE My Style’. Lawyers for Vogue argued infringement on the grounds that the iconicity of the capitalised word ‘VOGUE’ made it a distinctive sign associated with the magazine. The publishers backed this claim up by conducting a poll among Swiss residents, finding that one in four of them associated the trademark with ‘a magazine of high quality’.

In 2012, the court ruled in Vogue’s favour, which sparked some criticism from those arguing that no meaningful association between two completely different products was likely to occur in the mind of the consumer.

 

3.    Superhero: One of the most controversial trademarked words is ‘superhero’ and variations upon it. The trademark was jointly registered by Marvel and DC Comics in the 1960s, and there has been much debate in legal circles over its legitimacy, with many claiming the word is descriptive rather than distinctive. To this day, Marvel and DC Comics actively maintain the trademark by initiating legal proceedings against other comics that try to use the word ‘superhero’ in their title or on related products.

Whether or not Marvel and DC Comics can claim ownership of a word like ‘superhero’ has never been fully tested in court, and some critics argue that they use the trademark to discourage competitors.

 

4.    Apple Corps v Apple Inc: About nine years after The Beatles formed their multimedia company Apple Corps, Steve Jobs et al launched Apple Computer, now Apple Inc and associated with numerous products worldwide(iPad, iPod, iPhone, etc). That was in 1976, and on several high profile occasions since, Apple Corps has filed suits against Apple Computer for trademark infringement. The first suit was settled in 1981, with Apple Computer making a monetary settlement and agreeing to stay out of the music business.

However, the two again crossed paths, first in 1989 when Apple Computer incorporated MIDI music playing ability in their products, and then in 2003 with the launch of iTunes. On both occasions, Apple Corps launched the action, losing for the first time on the second. The two companies have since put an end to this ongoing lawsuit, with an undisclosed settlement resulting in Apple Inc now owning the trademark and licensing it out for specific uses to Apple Corps.

Linguistically, perhaps what’s most interesting about this case is how much importance two powerful companies place on a simple word like ‘apple’.

 

5.    The use of the word ‘redskins’: Trademark disputes are not always about who owns the trademark. In the case of Harjo v. Pro-Football Inc, the issue was to do with whether or not the trademark should be allowed to exist at all.

Pro-Football Inc is the corporate body that owns the Washington Redskins Football team, and in 1992 Susan Harjo, an activist for Native American rights, along with seven others, petitioned the Trademark Trial and Appeal Board to cancel several trademark registrations involving the use of the word ‘redskin’. Their argument was that the term was disparaging to Native Americans. Pro-Football Inc took legal action, and this resulted in the trademarks being reinstated.

The reason for their victory was due to a legal technicality known as laches, which prevents a claim being made after an unreasonable delay. This case seems to demonstrate how a discordance exists between property law and human rights in the American judicial system.

 

6.    Alan Clark v The Evening Standard: Intellectual property law often treads a very fine line between creative protection and censorship, and there are perhaps few better illustrations of this than with parody and satire. For the most part, parody and satire are permitted under the legal concept of fair use, but then it has to be clear that that is what is indeed taking place.

In 1998, the Conservative MP Alan Clark made a claim against The Evening Standard for a parody of his famous diaries that they regularly published as ‘Alan Clark’s Secret Political Diary’. The publication included a photograph of Alan Clark, which coupled with the fact that the name of the journalist was not prominently displayed, led to the claim that this misrepresented the author of the parody as being Clark himself. It was a claim backed up by the fact that angry constituents wrote to the MP attacking him for the extremist views represented by the parody.

Eventually Clark won the case on the grounds of ‘passing off’ having occurred. However, many argue that this verdict was a slap in the face of free speech, and that the satirical nature of the articles was obvious to anyone who had actually read them.

 

7.    Gillette v LA Laboratories: In 2005 Gillette lost a case against LA Laboratories, a Finnish company which marketed razor blades under the trademark Parason Flexer. On the packaging for their razor blades, Parason Flexer included the words: ‘All Parason FLEXER® and Gillette SENSOR® handles are compatible with this razor blade’.

Although the distinct lettering of Gillette represented their trademark, the court ruled that this was for the purposes of making the function of the product easily recognisable to consumers. They concluded that the Parason Flexer was not trading off the Gillette brand, and in the interests of commerce and open competition in the EU, the use of the Gillette trademark was permitted.

 

8.    Keep Calm and Carry On: A trademark dispute that is still currently pending concerns the slogan ‘Keep Calm and Carry On’ which has become very popular over the past few years. The slogan can be found plastered over all kinds of merchandise, from mugs to pencil cases, and it is easy to see why anyone making commercial gain from the brand would want to own the trademark.

The slogan and crown logo originates from a Government-sponsored public information campaign from 1939, intended in the event of a German invasion. In the end, most of the posters bearing the slogan were recalled, although not all, and in 2000, after having discovered a copy among some new stock, the proprietors of a second-hand bookshop decided to start selling copies of the poster. As the crown copyright on creative works produced by the Government expires after 50 years, there was no issue of any trademark infringement. However, someone else has since registered a trademark in the EU (having failed to do so in the UK), and has trademarks pending in North America.

In linguistic terms, perhaps the real interest in this case lies in the public reaction against the trademarking of the slogan, with many arguing that the wording encapsulates the British spirit and should therefore be kept in the public domain.

 

9.    Wrigley’s doublemint: In 2003, the European Court of Justice rejected an attempt by the chewing gum company Wrigley’s to trademark the word doublemint. The judgement boiled down to whether the word was purely descriptive or whether it activated consumers’ imagination to conjure up an impression of something uniquely identifiable with the product. In the end the court ruled that the word is a compound that objectively references mint as a flavour and the fact that this flavour is doubled.

 

10.    ‘Genericide’: This point actually refers to not just one trademark case, but all those trademarks that can be said to have fallen victim to genericide. The list is a long one, and obviously includes many recognisable terms: hoover, elevator, aspirin, zipper, yo-yo.

Genericide or generification refers to when a trademark has come into generic use, and is no longer identifiable with a particular product. For this reason, many companies spend millions actively protecting their trademark, such as by encouraging the use of alternative generic terms. Nintendo has been known to promote the term ‘games console’. Companies also employ lawyers to regularly send letters to warn about infringement when people or companies use their trademark.

The owners of Google are particularly concerned about the effect that the verb ‘to google’ may have on their trademark, but in the age of the internet it is impossible to control how people use language in a public domain, no matter how many letters are sent.

 

References:

Butters, R (2010) Trademark Linguistics – Trademarks: Language that one owns. In: Coulthard, M and Johnson, A (2010) The Routledge Handbook of Forensic Linguistics [online]. Abingdon: Routledge, (pages 351 – 364) [accessed 02-03-2013]

Victoria’s Secret v Victor’s Secret / Victor’s Little Secret:
http://www.ivanhoffman.com/dilution.html
http://www.law.cornell.edu/supct/html/01-1015.ZS.html
http://www.theiplawblog.com/archives/-trademark-law-trademark-dilution-and-sex-victors-secrets-v-victorias-secrets.html

Vogue magazine vs ‘vogue my style’ slogan: http://www.internationallawoffice.com/newsletters/detail.aspx?g=49970069-1556-4cc7-a393-4835ecb33397
http://www.deceptivemarks.com/news/vogue-v-vogue-my-style-watches/
http://www.lexology.com/library/detail.aspx?g=ddddad43-3aab-466c-ba71-acb4b63e1f04

Superhero:
http://io9.com/5919000/six-strange-cases-of-science-fiction-trademarks
http://robot6.comicbookresources.com/2013/02/creator-tangles-with-dc-and-marvel-over-super-hero-trademark/

Apple inc vs Apple corps:
http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer
http://www.guardian.co.uk/technology/blog/2006/may/08/applevsapple

Redskins case:
http://en.wikipedia.org/wiki/Pro-Football,_Inc._v._Harjo

Harjo v. Pro-Football: Human Rights Implications of a Trademark Lawsuit

Alan Clark MP vs The Evening Standard- parody vs infringement: http://judgmental.org.uk/judgments/EWHC-Pat/1998/%5B1998%5D_EWHC_Patents_345.html
http://www.independent.co.uk/news/obituaries/law-report-format-of-parodied-clark-diaries-was-deceptive-1140285.html

Gillette vs LA Laboratories:
http://www.jenkins.eu/mym-autumn-2005/a-shave-too-close-for-gillette.asp
http://ipkitten.blogspot.co.uk/2006/02/gillette-defences-decision-what.html

Keep Calm and Carry On case:
http://www.guardian.co.uk/uk/the-northerner/2013/jan/02/keep-calm-and-carry-on-trademark-books-poster-copyright

Wrigley v OHIM re doublemint: http://www.mondaq.com/x/21097/OHIM+v+Wrigley+Jr+Company+C+Opinion+of+Advocate+General+Jacobs
http://www.out-law.com/page-3483

Generic trademarks:
http://en.wikipedia.org/wiki/List_of_generic_and_genericized_trademarks
http://www.independent.co.uk/news/business/analysis-and-features/genericide-when-brands-get-too-big-2295428.html

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