Re: copyright or trademark

On Thu, 18 Mar 1999, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> On Wed, 17 Mar 1999, Howard Zaharoff <hgz[_at_]buslaw128.com> wrote:
> >
> > Second, if you use another's mark too casually, they may have a basis
> > for complaining, at least to the extent of writing you a nasty letter
> > and perhaps demanding a change. For example, Xerox supposedly spends
> > millions of dollars a year in advertising intended to keep its mark from
> > becoming generic. If you foolishly help the process along -- e.g., in
> > your fictional work, you refer to "making a xerox of an article" -- the
> > Xerox corporation is likely (and rightfully) to complain. Though I know
> > of no cases finding liability on the grounds of using a product name
> > generically, it's surely at least bad form and should be avoided.
> >
> ****
>
> Just so that we're clear: trademark owners very much want you not to
> use (eg) Xerox as a noun or a verb. They may even send you letters
> demanding it. And you probably shouldn't do it, as a matter of
> grammar and good sense. But trademark owners have no legal right to
> prevent you from doing it if you really want to.
>
> I think we are saying the same thing, but I just want to make sure no
> one is confused.

I'm not sure we're in agreement. As I said, I know of no cases imposing liability for the deliberate use of another party's trademark as a generic term, and I'm not sure what claim could be made. Still, I'm not convinced that a combination of good lawyering and sympathetic judging couldn't give birth to an appropriate cause of action.

Consider: Suppose I intentionally refer to "making xeroxes" in my published writings, despite objections from Xerox Corp.and my own awareness that doing this increases the risk that the valuable XEROX trademark will become generic and thereby cause Xerox to lose the tremendous value and goodwill associated with this mark. Aren't I intentionally, and without good cause, doing something I know could cause great harm to Xerox? Aren't I willfully risking great injury to one of its most valuable property rights?

I'm not saying that this should be or is currently actionable. But I could certainly imagine such a claim being recognized at law at some point, particularly in light of the current trend to deamnd increasing breadth and protection for available forms of intellectual property. And I most surely would not tell a client that they can do this with absolutely no risk of legal repercussions.

Howard Zaharoff, Esq.
Morse, Barnes-Brown & Pendleton, P.C.
1601 Trapelo Road
Reservoir Place
Waltham, MA 02451
(781) 622-5930 x237
(781) 622-5933 fax
email: hgz[_at_]buslaw128.com Received on Fri Mar 19 1999 - 14:02:51 GMT