TRADEMARK LAW Fair use of material remains questionable

Corporations are increasingly going after the little guy over trademarks.
WASHINGTON POST
Earl Farmer has been selling and repairing vacuum cleaners for more than 20 years in San Antonio, Texas, advertising the many brands he services in the Yellow Pages. Now he's in court because the Kirby Co. claims he violated its trademark by listing Kirby among the dozen brands named in his ad.
Farmer is one of the small-business owners caught up in legal disputes with larger corporations vigorously policing the use of their brand names under the nation's trademark laws. Court records show that private trademark lawsuits of all sorts jumped from 2,405 in 1990 to 4,187 in 2000, before dropping the next two years as the number of applications for new trademarks declined.
Some legal experts say corporations must be aggressive or poachers will weaken their brands. Others say large companies are carrying these campaigns to extremes, forcing small companies to capitulate in dubious cases because of the high cost of litigation.
Some trademark disputes have made national headlines. Fox News sued comic Al Franken for using the Fox slogan "Fair and Balanced" on a book cover. Mattel sued an artist who photographed naked Barbie dolls being attacked by household appliances. Fox dropped its suit after a federal judge denied its request for an injunction, while a federal appeals court ruled against Mattel, saying the artist's right to free speech prevailed over the company's trademark claims.
Protection
Mark Lemley, a law professor at the University of California at Berkeley who has written on the subject, said trademark owners have been more aggressive because of "the growing conviction that a trademark gives you the right to control any use that anyone else might make of your brand name" -- a conviction he believes is incorrect. "Trademark law has always been about consumer protection, not corporate property rights," he said.
Still, he said, "trademark owners need to enforce their rights against real infringers or they risk losing their marks. So they err on the side of overenforcement. ... There is little cost to them other than the occasional flurry of bad publicity."
Diane Cabell, clinical program director at Harvard Law School's Berkman Center for Internet & amp; Society, said trademark law is supposed to "protect consumers from wasting money on fraudulent knockoffs." But as trademarks have become more global in use and reputation, companies have convinced lawmakers and some courts that their brands are "just one more piece of property, like real estate, on which they own all sorts of trespassing types of rights."
Farmer, 46, in the vacuum business since 1980, has faced stiff competition in recent years from Wal-Mart and other discount retailers that sell new vacuums for as little as $45. "Rather than bring a vacuum in to be repaired, people are just buying a cheap one and throwing the old one away. That hurts," said Farmer, who pays himself about $500 a week.
Farmer repairs about four to five vacuums a day, including one or two Kirbys, according to the lawsuit. He also rebuilds and sells one or two Kirbys a month.
Kirby is a division of Scott Fetzer Co., a diversified manufacturer with annual sales of $900 million in 2002. (Scott Fetzer is a subsidiary of Berkshire Hathaway Inc., whose chairman, Warren Buffett, is a member of The Washington Post board.)
Advertisements
In 1986 and 1987, Farmer's House of Vacuums' Yellow Page ads displayed logos of five of the brands he serviced, including Kirby's. That prompted a letter from Kirby advising Farmer that he couldn't use the logo. In 1987, Kirby said Farmer could use its name in the ad as long as it wasn't prominent and he didn't claim to be an authorized dealer. Although Farmer never signed the agreement, court documents show he changed his 5-by-2 3/8-inch ad.
In 2002, Farmer received a letter from Scott Fetzer attorneys demanding all uses of the word "Kirby" be removed from any ads, fliers, brochures or other House of Vacuums documents. When Farmer declined to make further changes, Kirby sued, saying Farmer's actions have confused customers into thinking his shop was an authorized Kirby dealer. A federal judge dismissed the suit last year, saying Kirby had presented no evidence that it had suffered damages from Farmer's ad.
But the judge ruled against Farmer's request for attorney fees, saying Kirby was trying to protect its trademark and thus the suit did "not appear to be brought in bad faith." Both sides have appealed.
In a letter to The Post, Robert Shumay, Kirby's vice president for consumer and public relations, said, "We simply cannot stand by and let our goodwill be damaged, and our customers harmed, by trademark infringers, no matter how large or small their organizations may be." Shumay has been involved in more than 200 trademark infringement matters similar to Farmer's case over the past 10 years, he said in an interview. Very few wound up in court.
While the case proceeds, Farmer said he is still selling Kirby supplies and accessories, all supplied by the manufacturer. But he's changed his Yellow Pages ad, dropping all brand names of the machines he services. "I didn't want any trouble," he said.