Oddly enough, the first time I received the threat of a lawsuit was not over an article, but because of an advertisement!
Many years ago, I worked on a sports magazine that published an advertisement for "basketball windcheaters". Little did we know that the word "windcheater" was actually an Australian trademark and that we were breaching the intellectual property rights of another company by running the advertisement.
We received a legal letter pointing this out, while acknowledging that our use of the word was probably an innocent mistake. The letter advised that we change "windcheater" to "sweatshirt". We gave an undertaking to stop using their client’s trademark.
It was my first brush with proprietary eponyms – general words that are proprietary trademarks or brand names. Some of the best examples of these include Kleenex, Esky, Xerox, Band-Aid and Post-it Note, all of which are trademarks but have been adopted for general use, becoming nouns and even verbs – ask yourself how many times you’ve said, "I’ll Google that.”
It's with great interest that I note that the giant US discount chain Costco is fighting the giant US jeweller Tiffany & Co, which is suing Costco for selling diamond engagement rings falsely marketed using the Tiffany name.
Costco doesn’t deny that it used the word "tiffany" but believes this does not infringe upon the Tiffany & Co trademark.
Costco also denies using anything resembling Tiffany's distinctive blue packaging, advising that the diamond rings in question are sold in plain beige boxes and that the chain has not infringed upon or invaded any legal rights of Tiffany & Co.
The discount warehouse has asked the courts to prevent Tiffany & Co from asserting false claims, and is relying on the court ruling that a "tiffany setting" is a commonly-accepted term to describe the set of prongs that hold a gemstone to a plain band ring, commonly seen in diamond solitaire engagement rings.
Tiffany, on the other hand, is arguing that the word "tiffany" is the jewellery company's own intellectual property and a proprietary eponym. If the court finds that "tiffany" is a generic descriptor accepted by the wider jewellery industry then Costco does not need permission from Tiffany & Co to use it.
The difficult thing for Tiffany & Co is that it will have to demonstrate that it has been actively policing and protecting its own IP. The company can do that when it comes to use of the name Tiffany & Co and its blue box packaging because it has been diligent in suing counterfeiters who offer fake Tiffany-branded jewellery, but that’s not what Costco was doing – according to Costco.
Anyway, here’s where it gets interesting: just by bringing legal action against Costco, Tiffany & Co runs the risk of a ruling in favour of the use of "tiffany" as a descriptor for a type of jewellery setting. A ruling like this could open the floodgates on a range of other matters, and the fact that both companies are aggressive litigants makes the case even more compelling.
I have first-hand experience with IP protection. Many years ago, I fought and won a three-year legal case against Reebok over a trademark. Ever since, the complexity of the topic has fascinated me. IP law, and the courts' interpretation of it change often.
For example, one of the strengths of our case against Reebok 20 years ago would probably not hold water today in this "globalised" world, and the argument about the "tiffany" setting could face similar challenges.
After all, we need laws that evolve and change with community standards, right? I have often wondered where we would be if the inventor of the wheel had been able to stop others from using his design or, closer to home, if the person who first strung sea shells onto twine to create jewellery could have stopped other tribesmen from copying him.
Food for thought, huh?