Blame the law, not the lawyers
Getting a degree in journalism back in the mid-1970s, when I got mine, required a class in journalism law. I suspect this is still true, but I wonder if a parallel class is required for students in PR, marketing, and communications majors. Based on the speed with which people working in these disciplines jump on lawyers, I would guess not.
I was as amazed as everybody else when I read that Hasbro (representing US distribution) and Mattel (which owns international rights) issued a cease-and-desist to the group behind Scrabulous, a Facebook app that emulates the board game, Scrabble. (I’m one of the more than 600,000 people who use the app, by the way.)
Matt Dickman, who writes the Techno//Marketer blog, wrote a terrific post outlining some of the alternative approaches the toymakers could have taken. (Thanks to Chris Brogan for pointing the post out to me; Matt learned about the incident from Shel Israel.) Matt suggests that Hasbro or Mattel could have bought Scrabulous and made it an official Scrabble game or sponsor the app. These are great ideas. But there’s a compelling reason the lawyers (whom Matt suggests should be forced from the room during discussions about situations like the intellectual property issue Scrabulous presented) make the decisions they do.
I learned about this when I worked for Mattel (1984-88; I left as director of corporate communications). From a PR perspective, I opposed legal action against someone who infringed on the Barbie trademark. The infringement didn’t strike me as particularly onerous and I thought the PR fallout would be worst than any losses we might suffer as a direct result of the violation. Our IP lawyer—a very nice guy named Ron, as I recall—set me straight. Here’s the scenario, modernized to address the Scrabble/Scrabulous issue:
Let’s say Hasbro and Mattel opt to do nothing about the Scrabulous infringement, or that they decide to follow Matt’s advice and buy or sponsor the application. Then, next year, a truly egregious violation occurs: Somebody produces a boxed board game called “Scramble” that is, for all practical purposes, a complete knock-off of Scrabble, which is distributed to dealers who sell the game at flea markets and swap meets. Hasbro takes the company behind Scramble to court, where the defense attorney gets up and says, “Your honor, not only did Hasbro not defend its trademark with the Facebook app called Scrabulous, they paid money to sponsor the application! If Hasbro didn’t defend its intellectual property then, what standing do they have to do so now? Why aren’t they paying us to sponsor Scramble?”
This argument is a valid one in court. Companies lose the right to defend a trademark if they don’t take action against any and all violations of which they are aware.
I’m certainly not suggesting this is a good thing. But it’s the law that needs to change, not the lawyers.
As Matt says in a reply to a comment I left on his post, companies now must weigh the risk to the trademark against the risk associated with alienating customers. But from the lawyer’s perspective, there is no choice. We’d all know this if we knew just the basics of the law as it applies to brands and marketing.
01/16/08 | 10 Comments | Blame the law, not the lawyers