Asking Permission (was Re: trademark question)

From: Tyler Ochoa <tochoa[_at_]law.whittier.edu>
Date: Wed, 25 Sep 2002 08:51:08 -0700

>>> me[_at_]mikeoliver.com 09/24/02 09:46AM >>> wrote:
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.
<<<<<

First of all, you inadvertently attributed my remarks to Mr. Sutter. He is the one who asked the question; I am the one who responded "Oh, for heaven's sake, please don't ask permission where permission isn't necessary." It's not that I care about the credit [in this case], but it is not fair to him to have to take the heat [if any] for my remarks.  [I apologize if the format of my message suggested his authorship; for some reason the signature block ended up in a weird place.]

Second, my problem with asking permission is that is just encourages mark owners [and copyright owners] to believe that they have the right to control all uses of their mark [or work], which is not the law. And to the extent that fair use depends on what is customary for people to do without permission, it diminishes fair use rights for the rest of us.  In this way the rights of the public are being lost one use at a time.

Of course, people are risk averse. Why should they put their necks on the line to preserve a right of the diffuse public? I think of it like recycling: no one notices if an single person fails to recycle, but if everyone fails to do it, we pollute our environment unnecessarily. Similarly, if everyone asks permission when it isn't necessary, it diminishes the fair use environment for all. So, I am asking people to be public-spirited instead of selfishly risk-averse.

Caveat: I am not encouraging lawlessness. I am not encouraging people to infringe just because they can get away with it. I am encouraging people to make a reasoned judgment about what is and what is not fair use, and to act upon it accordingly. Since we seem to be in agreement that this is not a close case, this is an appropriate case in which to take a principled stand and decline to ask permission.

Third, I agree that the U.S. Supreme Court has said that asking permission should not be held against you if it is denied and you go ahead anyway. Nonetheless, courts and juries hate it when you do that, and they continue to ignore what the Supreme Court says. There are a lot of times when it is easier to ask forgiveness instead of permission.

Tyler T. Ochoa
Professor and Co-Director
Center for Intellectual Property Law
Whittier Law School
3333 Harbor Blvd.
Costa Mesa, CA 92626
(714) 444-4141, ext. 243
(714) 444-1854 (fax)
tochoa[_at_]law.whittier.edu

• Original Message ----- From: "carol" <carol[_at_]drogon.com> Subject: Re: trademark question

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

>>> me[_at_]mikeoliver.com 09/24/02 09:46AM >>> wrote:
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 - 15:54:58 GMT