Does anyone get away with Trademark piracy? Depends On The Pirate.

In our last post, we celebrated the business, marketing and legal ecosystem that protects I/P holders (in much of the world). The system works.

But not without an exception.?Context is everything.?At times, who the trespasser is can make all the difference, and still, the I/P holder is equipped for future infringement.

The Empire Tries To Strike Back

Many of us Gen X kids remember the Strategic Defense Initiative (SDI).?In 1983 the Reagan Administration sought federal budgeting and new legislation to support the building of massive X-ray lasers and particle beam weapons – established just beyond the Earth’s atmosphere – to “catch” and destroy incoming nuclear missiles before they hit U.S. soil.

At the time, Senator Ted Kennedy coined a nickname for SDI.?Well.?He borrowed a nickname.?He called it "Star Wars." And the private contractor retained by the Fed to activate SDI ran with it. ??Not under licensure.?

The Godfather of movie franchising.?A brand not to be pilfered.?But it was.?Lucasfilm Ltd. sued for trademark infringement two years later in federal court.?Luke lost. How is this possible?

Keep a few things in mind.

·?????Lucasfilm Ltd. was a young, independent entity with a moniker that didn’t yet have cultural cache. ?

·?????Reagan’s foreign policy had near regal status in the United States pre-Iran Contra.?

·?????The Cold War and bilateral nuclear armament were a terrifying reality with no end in sight.

·?????Star Wars as a phrase was never employed by the federal government for private, for-profit gain.

A spaceship movie trilogy was no match in 1985 to U.S. foreign policy in a court of law.?That battle was over before it began.

Lucasfilm Ltd. clearly identified the risk of generic phrase usage.?And the Star Wars trademark has since been cultivated, expanded and strengthened. ?The integrity of Reagan’s neo-conservatism did not stand the test of time. Star Wars has had a more lasting effect on generational memory than SDI.???

Feed The World With Adhesive Bandages

Most Gen X kids also remember Bob Geldof, Live Aid, and the 1984 superhit song that drew attention to famine in Africa.?“Do They Know Its Christmastime” had a smashing melody, renowned rock musicians, and a global call to action understood in every language.?Geldof called his rock group Band-Aid. ?Not under licensure.

Band-Aid is not a colloquialism.?It’s a trademark now over 100 years old, created and continuously marketed by Johnson & Johnson (J&J).?No court case ensued.?But the trademark owner was livid.?

This I know.?Earlier in my career I worked at J&J and was mentored by their trademark attorney who pursued every other threatening avenue to get the band’s name changed, or the song off the air.

His actions were not malicious.?He was protecting his client. But J&J couldn’t win.?And my colleague knew it.

·?????A corporate brand was pursuing a desist from a beloved, altruistic musical endeavor

·?????Bob Geldof, a Nobel Peace Prize nominee, had near regal status in the entertainment industry and in the public eye

·?????Consumer brands were not coveted as valuable corporate assets the way they are today

·?????Famine in Africa was a terrifying reality with no end in sight

·?????Band-Aid as a phrase was never employed by the creators of Live Aid for private, for-profit gain

In the summer of 1985, Johnson & Johnson’s trademark was no match for Live Aid.?

But, J&J clearly identified the risk of generic phrase usage.?The BAND-AIDa Brand Adhesive Bandages trademark has been cultivated, expanded and strengthened since then.?As far as generational memory - the bandage has a global equity with much higher everyday awareness than Live Aid.?The integrity of Live Aid did not stand the test of time. ?Yes, the cause is so vital.?But the names have been largely forgotten.

So.?Sometimes non-licensed use of a private trademark will go without punishment.?Sometimes that use will be a wakeup call to brand owners, and (partly) in response they double-down on investment to keep their equities innovative, protected, and growing.?

And sometimes the pro social uses of a private trademark can help strengthen the value of that trademark, for decades to come.