Academic journal article Texas Law Review

Picking on the Little Guy? Asserting Trademark Rights against Fans, Emulators, and Enthusiasts*

Academic journal article Texas Law Review

Picking on the Little Guy? Asserting Trademark Rights against Fans, Emulators, and Enthusiasts*

Article excerpt

We live in a time of robust trademark1 protection, but the fact that a trademark owner has a right does not mean the owner should always exercise that right. There are times when asserting a trademark right might do more harm than good to a trademark owner, without addressing any real threat to that owner. This Note aims to explore the actions of trademark owners against subsets of infringers referred to here as fans, emulators, and enthusiasts-groups that use the mark not to create a separate brand identity of their own but rather to show their support for or imitate the original brand owner. These groups include sports fans, youth and amateur sports teams that use official team names and logos, and enthusiasts that use trademarks in their domain names or to identify their group.

This presents a different situation than most trademark analyses, which usually focus on two separate businesses at odds with one another, each attempting to secure a share of its own product market. In the particular cases at issue here, the use is not competitive, and it usually has little risk of confusing consumers or diluting the original mark. In fact, in some cases such use may actually strengthen or reinforce the original mark, given the nature of the use.

While the law allows a trademark owner to enforce its rights in these situations, there are costs involved in such enforcement-costs to the trademark owner asserting its rights, costs to the allegedly infringing party, and costs to the community and society as a whole. While costs are inherent in any trademark-enforcement scenario, there is a problem if the costs are not offset by a corresponding benefit. For example, costs to an infringing party or to society are justifiable if the trademark owner derives a benefit to which it is entitled under the law-such is the nature of our trademark regime. However, if the trademark owner does not derive a benefit, or actually ends up worse off as a result, then such a situation is unacceptably inefficient. Trademark law itself obligates an owner, to a certain extent, to police its mark and ensure the integrity of its brand, but this obligation should be understood in such a way as to avoid unnecessary enforcement actions that result in inefficient outcomes.

This Note proceeds in four parts. Part I presents several examples of enforcement actions against fans, emulators, and enthusiasts for analysis. Part II explores the trademark owners' possible motivations for taking such actions, looking both at reasons expressed by spokespeople and reasons that may be lying beneath the surface. Part III analyzes the costs of enforcement actions in these cases to the parties involved, including the public. Part IV concludes.

I. Fans, Emulators, and Enthusiasts

There are several examples of enforcement actions taken against fans, emulators, and enthusiasts. Trademark owners take different approaches to these groups that use their marks. Some owners refuse to allow the use altogether, while others force groups to enter into licensing agreements if they wish to continue the use. Still other owners take no action at all and actually encourage the use. What follow are a few representative examples of the types of use that are the focus of this Note.

In 2010, a team of Philadelphia Phillies fans calling themselves the "Phlyin' Phanatics" entered their contraption in the Red Bull Flugtag Competition, a contest in which people build homemade flying machines and launch them into a body of water.2 The team of fans had spent $3,000 and 400 hours building a machine modeled after the Phillie Phanatic, the mascot of the Phillies and a trademark of Major League Baseball (MLB).3 MLB objected to the use, requiring them to remove a replica of the mascot's head from the craft and leaving a sour taste in the mouths of the dejected Phillies fans.4

MLB has a history of vigorously enforcing its trademarks. In the 1990s, it began cracking down on little league teams whose uniforms featured official logos but were not purchased through an authorized, licensed dealer. …

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