18 March 2004

Today's amusement begins with an anthropological look inside the Beltway (via Professor Froomkin. We then jump to a related item: Justice Scalia says that he will not recuse himself in the Cheney case because he "do[es] not believe [his] impartiality can reasonably be questioned." Considering that the Sierra Club's lawyers are not known as "unreasonable," whether or not one agrees with the Sierra Club's substantive positions, this seems sort of odd—especially in light of the first item today and the trip on Air Force Two.

Finally for the moment, consider a recent ridiculous—but nonetheless required by law—suit filed over potential confusion that beer might be coffee. The real problem here is the lack of creativity by the coffeemaker's lawyers: If they had been smart, they would have found a way to respond to the beer name without filing suit while still protecting their mark. This is actually a problem with trademark law as much as it is with overaggressive markholders. Unlike copyright, trademark is a "protect it or lose it" cause of action: failure to aggressively protect the mark against even a trivial, and perhaps even a parodic, potentially confusing use can result in the markholder's loss of the right to protect the mark against egregious and actively misleading misuse. From a "legal creativity" perspective, the coffee maker would have been better off giving a license to the beer company for a very nominal fee (like $10) for the specific use. That would probably suffice to demonstrate that the coffee maker had defended its mark, even if the license is worded so that it concerns "avoid[ing] the later possibility of expensive litigation, without admitting actual confusion or intent to infringe upon trademark rights." The coffee maker's later response to an accusation that it has allowed an infringing use, and therefore must forfeit all of its rights, is "We didn't ignore it; we licensed it." Since the actual terms of the license agreement can probably be redacted as trade secrets, opposing counsel only gets to see the affirmation of license—and that assumes that a court would inquire into the exact terms of an arms'-length contract in any event, so long as it has the result of acknowledging the possibility of later confusion or infringement.