Electro-Harmonix Shows You Can Handle Trademark Infringement Without The Legal Nastygrams

from the an-example-for-everyone dept

Whenever we write about certain types of trademark disputes, you can almost guarantee that a lawyer will show up in the comments insisting that the trademark holder had no choice but to send a legal nastygram, due to the legal requirement that they defend their trademarks or face having the mark declared generic or abandoned. But, as we’ve mentioned there are often much better ways of dealing with the situation — especially when the use of the mark isn’t harmful at all, but helpful. Reader eMike sends in a great example of this. The company Electro-Harmonix discovered that a German artist had made a big “huggable” pillow version of an Electro-Harmonix guitar effects pedal, rather than send out the legal nastygrams, EHX took a very different approach:

However, there was a touchy complication: the Big Muff Pi is a registered trademark, and if we discover unauthorized uses of our trademarks, we’re legally obligated to do something about it (we have no choice about that).

We’re all too familiar with the endless lawsuits suffocating the world of music, and so we decided to do something different. Instead of threats, demands, and legal letters, we contacted Gwendolin, told her we loved her work, and offered a formal license in exchange for an option to purchase them at discount. So, rather than a new enemy we now have a new friend, and a beautiful Big Fluff Pi. Take that as a lesson, music-industrial complex!

A lot of lawyers in charge of enforcing trademarks might want to think about this story before sending out their next legal nastygram.

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Companies: electro-harmonix

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Comments on “Electro-Harmonix Shows You Can Handle Trademark Infringement Without The Legal Nastygrams”

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27 Comments
KGWagner (profile) says:

Re: looks great but ...

“A whopping $129 euros for a huggable guitar pedal?”

It does seem a bit stiff, doesn’t it? Especially when you consider the real thing is only about $80. But, if you could see what’s inside the real thing, you’d wonder how they charge as much as they do for that. It’s a remarkably simple device. At least the pillow has some real labor involved.

I’m glad to see these guys behave like adults, though. I’m sure many guitar players my age had one of these back in the ’70s so we could emulate the big stage sound of the rockers of the day on our little cheapo amplifiers. The ability to almost sound badass carved out a special place in our hearts for Electro-Harmonix.

Tgeigs says:

Uh...

“A lot of lawyers in charge of enforcing trademarks might want to think about this story before sending out their next legal nastygram”

No they won’t. Because it sounds based on the quote from EHX (unless they were quoting their lawyer) that nothing they did would result in any billable hours. And that is really the only reason you end up with rules like, “we have to send a legal notice, because the law says blah blah blah”, and that law was essentially created by lawyers and a legal system that has a vested interest in perpetuating the need for itself, etc. etc.

Anonymous Coward says:

Re: Uh...

Wrong…Many of the legal notices sent out are from within a company and do not involve attorneys at all, thus, no billable hours. However, there are many “depends” to go with that statement.

Typically, the nastygrams go out because people are trying, deliberately, to associate their product with your name when their product has nothing to do with you (the old confusion factor). As the article notes, once you are aware of a trademark infringement, you have to do something about it or risk loss of your trademark. This solution was certainly interesting and unique, but of course there are many cases where the nastygram is the best approach.

Tgeigs says:

Re: Re: Uh...

That’s fair, after all, I’m no lawyer so I certainly miss out on some of the particulars. What definitely CAN tell you is that to a layperson like myself, there seems to be a perpetuation of need that goes on within the legal community. There are lots of tactics and remedies, but they all specifically seem to require more legal counsel, even under circumstances when an option with LESS legal council would suffice. The way that tax lawyers croon on and on about maximizing billable lawyers (this is from personal/professional relationships I have and anecdotal evidence as well) is suggestive of this.

Man from Atlanta says:

Re: Uh...

I don’t work in trademark at all, but I am of the opinion that sending a threatening letter for an initial contact in most areas of law is almost never good for the client.

If a lawyer starts the discussion by threatening litigation right away, that lawyer has just dragged his client into a context where no one (except the lawyers) wins. In my experience, a lot of people can figure out fair without too much help from an attorney, and they will honestly work to find a fair result if treated like adults and given the chance. These “nastygrams” usually only generate hostility.

Perhaps I can’t charge my clients for the hours it takes to write a big nastygram (and litigating the resulting), but I am prepared to accept a little less to earn my fees assisting with productive matters. As would any lawyer who truly understands that we are counselors and advocates first, and litigators second.

Willton says:

Tell the lawyers? No, tell the clients

A lot of lawyers in charge of enforcing trademarks might want to think about this story before sending out their next legal nastygram.

Lawyers do not make these decisions; their clients do. If the client wants to send the nastygram, the client will have the lawyer do so. The above situation is an interesting option, but if that’s not what the client wants, then it’s not going to happen. So if you’re really gung-ho about diminishing IP lawsuits, then berate the rights holders, not their agents.

Anonymous Coward says:

Re: Tell the lawyers? No, tell the clients

Bull. I deal with our company’s lawyers on nearly a daily basis and the first, middle, and last piece of legal advice they dispense is ‘you should file a lawsuit.’ I never, ever heard them say, “Hey, why don’t you first try settling this through a constructive dialog. If it doesn’t work out we’ll be here to help or if it does we’ll dot the I’s and cross the T’s for you.”

Freedom says:

Nice common sense story...

Nice to finally hear some common sense.

If you give a license to someone that is technically infrnging on your trademark and that gives you protection then why not do this for everything except the most obvious cases of abuse. In short, this is a quick and easy way to “make friends”, promote your company thru good will, and still retain your trademark rights.

If this is really such an uncommon solution to the problem, then maybe lawyers and company owners/execs aren’t as smart as they think they are!

Freedom

Cap'n Jack (profile) says:

No, Harold, but there are cases where they are simply hurting the company – or, at the very least, not benefitting it. I want to bring up the example of Square Enix forcing that company that was selling the Cloud sword to stop selling it. Square Enix wasn’t making a sword, and the only thing that sword could possibly do is please hardcore fans, or get people obsessed with swords wondering about the background of it.

Anonymous Coward says:

Re: Re:

I have been in many meetings where lawyers recommended a course of action, the executives being advised asked intelligent, probing questions, and then took an action that was differrent from that recommended by the lawyer.

There is an article posted a little after this one about the gullibility of people. Anyone who accepts the advice of any “expert” (e.g., doctors, lawyers, and clever accountants) without asking for more information and deciding what is in their best interest or their company’s best interest gets what they deserve. Are they idiots? Perhaps not, but since these are the same people asking probing, detailed questions of engineering, sales, purchasing and manufacturing when it comes to strategic corporate issues, why would they be any less probing when it comes to legal issues? Do they suddenly turn their brains off and become stupid? I suspect that in most cases they do not, otherwise Techdirt would have far more opportunities for posts than what a team of people could post.

Gene Cavanaugh (profile) says:

Nastygrams

Lawyers? Lawyers are paid to do such things, and not paid if they don’t.
Perhaps you mean more business owners would want to think about it. It would be inappropriate for a lawyer to make a decision to send/not send a nastygram, and if asked for an opinion, they can say “don’t – and keep your money” or “do – and pay me”. Which one do you think they would advise?
Best is for the company to decide and not involve lawyers, I believe (even though I am a lawyer).

Anonymous Coward says:

Re: Nastygrams

Though I am not a lawyer, I think the company needs to consider the advice of an attorney because of the potential risk to the trademark, but they also need to consider all the options available – as the businesses I have been involved in do. I have seen these businesses give a limited license to their trademarks for many purposes without charge and with nominal internal cost, when it makes sense to do so.

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