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Roger Clarke's 'Trademarks'

Lawyers' 'Nastygrams' re Trademarks

Roger Clarke **

Notes of 18 January 2008, rev. 19 January and 7 February 2008

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In recent decades, Parliaments have been enveigled (and in some cases, simply bribed) into granting a particular form of largesse to large corporations. Using the appealing but seriously misleading term 'intellectual property', new monopolies have been granted, and existing monopolies have been extended.

I've previously published on the economics of innovation in the information industries (2004) and made submissions to Committees of the Australian Parliament about grossly inappropriate terms in the mis-named 'Free Trade' Agreement that it was forced to sign by the USA (2004a, 2004b).

This web-page relates to another nonsense that has been doing the rounds for some time: lawyers' letters making inappropriate demands on behalf of trademark-owners.

Trademarks are a limited monopoly created in order to enable corporations to take actions against some kinds of uses of the trademark. In addition to graphic designs such as logos, trademark law unfortunately encompasses words and phrases (and even letters and numbers), including common words and expressions.

A couple of guides to the law in Australia are provided by the relevant government agency (IPA), and by the Arts Law Centre of Australia (an incorporated community legal centre).

From time to time, people and companies that use expressions that are trademarked sometimes receive letters from trademark-owners, or more commonly from lawyers claiming to be acting on their behalf. These letters are commonly expressed in pompous legalese, and often contain veiled or direct threats. Such letters are popularly referred to as 'nastygrams'. They are related to what are called in the US 'cease and desist' letters, which are a corruption of the genuine legal concept of cease and desist orders issued by a court.

The primary right that a trademark owner gets is the ability to stop a competitor from unreasonably indicating that they have some kind of commercial association with the trademark. But it is very common for 'nastygrams' to make claims that go far beyond the rights that trademark law actually gives the trademark-owner.

I received a 'nastygram' in relation to the word 'Yellow Pages', dated 18 December 2007, from a lawyer purporting to be acting on behalf of the owner of the trademark in Australia, Telstra/Sensis. Like so many of its type, it was unreasonable and excessive, and arguably at least intimidating and even downright oppressive.

I sent a letter to the relevant senior executive of Telstra/Sensis dated 18 January 2008, explaining what I thought of the lawyer's letter.

IANAL (I Am Not A Lawyer), and this is not advice. But:

  1. if you are seeking to make commercial gain by using a trade-marked term, or are using a term in a manner that's designed to cause harm to the trademark-owner, I suggest you take such a letter seriously;
  2. otherwise, I suggest that you consider whether you're acting reasonably in the circumstances, and, if so, do something along the same lines as I did. It's vital that people stand up for their rights, and resist corporations getting away with claims that go beyond the already excessive rights that corporate welfare laws in the 'intellectual property' arena grant them.

Addendum. I received a response from the (or a?) General Counsel to Sensis, dated 6 February 2008. It's scanned PDF and hence I can't conveniently copy and paste the text. It's reasonable enough (as far as it goes). The steps I took above were important to take, but I don't intend pursuing the matter any further right now.

There are other people who have taken the same approach to this problem. Here's one. His nastygram and response pre-date mine, but the URL was brought to my attention after I'd gone to press with this page:

Further Addendum:

Author Affiliations

Roger Clarke is Principal of Xamax Consultancy Pty Ltd, Canberra. He is also a Visiting Professor in the Cyberspace Law & Policy Centre at the University of N.S.W., a Visiting Professor in the E-Commerce Programme at the University of Hong Kong, and a Visiting Professor in the Department of Computer Science at the Australian National University.

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Created: 18 January 2008 - Last Amended: 7 February 2008 by Roger Clarke - Site Last Verified: 15 February 2009
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