Saturday, January 31, 2015

Trademark overreach of the day: ICE says "Yankees Suck" infringes

Your tax dollars at work, protecting America from infringing merchandise: I don't have much brief for protecting counterfeits, but I find it hard to believe this is the best use of public resources: "Gross misspellings of superstars’ names are one of the things that give away the dubious duds. But more sophisticated fakes are indistinguishable from $300 authentic jerseys hanging in the NFL shop set up in the Phoenix Convention Center. And it can be hard to persuade fans that saving several hundred dollars on a set of matching number 12 jerseys for the family is a bad idea."  The gross misspellings seem unlikely to be confusing, and the "sophisticated fakes" don't harm consumers (and are probably not confusing either). 

But the real offense comes when we learn that ICE's resources are also being devoted to suppress critical uses: "The profane debasing of a mascot — and really anything that denigrates a team — is guaranteed to be contraband, said Daniel Modricker, a spokesman for US Immigration and Customs Enforcement. That 'Yankees Suck' T-shirt you put on for special occasions? If it uses anything that looks like a team or league logo, it probably constitutes trademark infringement."

No, it really, really doesn't.  "Profane debasing"--and when did mascots become sacred?--is not confusing.  I don't think ICE has authority to seize diluting merchandise, and anyway very few of these will be using the profaned mascots "as a mark," meaning the dilution exceptions for parody and criticism apply. This is a blatant misunderstanding of the law, being perpetuated by a federal official with only the small reassurance that federal agents won't come down and rip a previously purchased shirt off your back.

Less annoying, but also sort of funny, is the attempt to answer the question "why are you spending so much time on fake jerseys" by pointing to problems caused by fake cribs and auto parts.  The Superbowl is a good opportunity to highlight the issue!



  1. Anonymous5:39 PM

    Why are taxpayer dollars going to enforce trademarks anyway? If it is worth protecting, let companies protect it themselves.

  2. Anonymous5:59 PM

    > If it is worth protecting, let companies protect it themselves.

    Hey, that's a great point. And why do we send taxpayer-funded firemen to company offices?

    If they are worth protecting from fire, let companies protect them themselves.

  3. Anonymous6:05 PM

    Trademark <> Public safety. Terrible analogy.

  4. Anonymous6:26 PM

    Companies DO enforce their trademarks. But they can't control the borders--that's ICE's job.

    And note how careful the ICE official was: he said that the words ALONG with a team logo probably constitutes TM infringement. The words alone fall into the parody category of exceptions.

  5. Anonymous6:38 PM

    Yes, public money for trademark enforcement seems obviously stupid ...
    Until you learn that the trademark enforcement crew is a specific provision in the contract to bring the Super Bowl to Glendale. Glendale agreed to it and paid for it.

  6. Actually, Anon #4, he said he was paraphrased, but that an altered logo would constitute disparagement and thus copyright infringement (or so he said on Twitter when I asked him). I am seeking clarification about this and hope to report back.

  7. Anonymous9:40 AM

    Being from the south, it is hard to understand how any company can have a trademark right in "Yankees suck". People all over the south have been saying that, or variations on that, for at least 150 years.

  8. Anonymous11:05 AM

    > the "sophisticated fakes" don't harm consumers (and are probably not confusing either).

    I agree there is no harm to consumers, because consumers don't buy NFL gear because of the NFL's expert craftsmanship as a clothier -- they just want to express their identity as fans.

    But how could "sophisticated fakes" pass a likelihood of confusion test if they are otherwise identical to the goods offered by the trademark owner?

  9. Because of where they're often bought: context is often quite educational about source.