Asking Permission (was Re: trademark question)

From: Kevin Grierson <kgrierson[_at_]wilsav.com>
Date: Wed, 25 Sep 2002 08:29:16 -0400

All of the below assumes that the rights holder even finds out about the use in the first place. Not having seen the design for the shirt, I can't comment on this specific instance, but if you've got a good faith belief that you've got a strong case for fair use and the likelihood that the mark owner will even know is low, why buy trouble by looking them up and telling them you're going to do it?

The fact of the matter is that for both copyrights and trademarks, a fair amount of low level infringement goes on without any action by the rights holder. With trademarks in particular, if the use of the mark (or a parody thereof) is so local in nature that it doesn't get much attention, the mark owner can't be accused of failing to police the mark if it doesn't find out. If, on the other hand, you present them with a formal request, then they have to deal with it. And in the case of a trademark, if the use you are asking permission for is arguably a trademark use, then they have to engage in some sort of quality control or else run the risk of having the permission considered a "naked license," which would hurt their rights in the mark. Although they'd never admit it, I'd be willing to bet that in their heart of hearts a lot of mark owners don't WANT to know about such uses so they don't have to do anything about them.

Kevin Grierson

Kevin W. Grierson
Willcox & Savage, P.C.
1800 Bank of America Center
One Commercial Place
Norfolk, Virginia 23510

mailto:kgrierson[_at_]wilsav.com
ph: 757/628-5603 fx: 757/628-5566
http://www.wilsav.com

>>> me[_at_]mikeoliver.com 09/24/02 12:46PM >>> ----- Original Message -----
From: "carol" <carol[_at_]drogon.com>
Subject: Re: trademark question

> >Herman Sutter [mailto:hsutter[_at_]st-agnes.org] wrote:
> >Oh, for heaven's sake, please don't ask permission where permission
> >isn't necessary.

> [snip] my instinct, esp. for kids, is to say get permission.

I agree with Carol. Having dealt many times with this issue from both sides of the coin, its my view that its almost always better to ask permission, if done correctly. Here is why I think so:

1. Case law encourages it (its not an admission to ask for permission, even if you believe the other party has no exclusive rights)
2. The purported rights holder almost always will look more favorably on an infringement after a request for permission than after an infringement without a request (often, the response from the rights holder about the concerns can actually assist the user in suggesting ways to modify the use to make it more of a fair use or non-infringing).
3. Often, permission is granted under reasonable terms and in some cases, more formal sponsorship and assistance is offered by the rights holder. In at least one case I worked on, a profitable business relationship resulted.
4. If permission is denied and the claim is ever later made, this may have a positive impact on the publicity, court and the opposing rights holder.
5. If done correctly, the permission request letter will not provide a basis for a pre-emptive suit.
6. If you really believe that the rights holder would not sue due to adverse publicity (as in the specifics of this case), I cannot conceive a reason not to ask permission. Certainly, the mere moral belief that a particular use would be non infringing or a fair use is not enough of a basis to justify not asking first.
7. If you believe the rights holder will sue anyway and are prepared to fight it, asking permission can actually have some procedural advantages. For one, it puts the rights holder on notice of the proposed use, and failure to timely respond to that may constitute estoppel, laches, implied consent etc. Also, to the extent the case is both injunctive and monetary, unless the rights holder acts quickly, obtaining an injunction might be difficult.

The exceptions where I would not ordinarily advise to ask permission - though there are even exceptions to these exceptions - are:

1. Where there is no practicable way to give notice without possibly prompting a preemptive suit (the exception here might be to first file a preemptive Declaratory action where the rights holder has made public statements it will prosecute all infringers)
2. Where the rights holder has lost a similar case and the matter is res judicata or collateral estoppel.
3. Where the rights holder has pre-consented (don't laugh, read www.apple.com - unless they changed it, they have a public statement about when you always have rights to use their trademarks)
4. Where the rights holder might be on the fence about suing, and providing permission might just give them notice of the infringement, and where the rights holder possibly does not monitor its marks and copyrights, such that the use would fly under radar. This one requires a serious disclosure to the client taking this advice.

Anyway, the question of whether to ask permission is pretty complex, though I agree that in the case of a school using a trademark in a parody-like manner on shirts and not selling them for commercial gain is a no brainer (fair use or non infringement), and would be a bad publicity move for the rights holder. Nevertheless, based on the very abbreviated facts given, this would fall into my default rule of asking for permission.

best regards, mike oliver

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Michael D. Oliver, Esq. Member,
Bowie & Jensen, LLC
29 W. Susquehanna Ave.
Suite 600
Towson, Maryland 21204
oliver[_at_]bowie-jensen.com
http://www.bowie-jensen.com/

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Received on Wed Sep 25 2002 - 12:31:01 GMT