Big law should not be a big bully. Last week, the nation’s largest law firm, Jones Day, tried to use trademark law to censor a website critical of Detroit’s emergency manager (a former Jones Day partner). As is typical, since the website criticized the firm, it included a Jones Day trademark. The law firm responded with an ominous cease and desist letter demanding that its trademarks be removed from the site. In taking this step, the firm joins a long, long list of companies that have improperly demanded that critics stop “using” their trademarks. But we’re not talking about just any company; this is a law firm. Shouldn’t at least one of the thousands of attorneys Jones Day employs have raised a hand to point out that using trademark to refer to the trademark owner is perfectly legal?
Apparently not, so we had to do it. On behalf of the website’s creator, we responded [PDF] to Jones Day, explaining that the website didn’t violate any Jones Day rights and advising the firm to withdraw its spurious, and censorious, demand.
The story began when the Detroit Metro Times blogged that someone had registered www.kevynorr.com for a parody site regarding Detroit’s emergency manager, former Jones Day partner Kevyn Orr. The full site launched today and criticizes Kevyn Orr, Jones Day, and other individuals and corporations that our client believes have acted against Detroit’s best interests. The site includes the logos of a number of corporations, including that of Jones Day, under the tagline: “Detroit’s Economic Coup d’Etat has been brought to you by …” Whether or not you agree with this message, it is plainly the kind of political satire and commentary that enjoys robust First Amendment protection.
Jones Day missed that important point, and quickly responded with a cease and desist letter claiming that the use of its mark was “unauthorized” and therefore “infringing.” But our client did not need Jones Day’s authorization. The First Amendment protects the use of marks as part of critical speech, particularly where a mark is used in non-commercial speech and no one could possibly mistake the use for endorsement.
In its letter, Jones Day suggested that copyright fair use would not protect our client’s use of its trademarks. But surely Jones Day should know that trademark law includes its own fair use protection, including the nominative fair use doctrine which protects the use of marks for the purposes of comparison or criticism. As we note in our letter, the copyright reference smacks of a deliberate effort to intimidate and confuse a target the firm expected to be unfamiliar with the law.
We’re glad the website owner decided to stand up to this bullying, and that we can help. Contrary to the apparent belief of many mark-owners, trademark law has never given a mark owner veto power over all uses of its mark. Online and off, trademarks—words, symbols, colors, etc—are also essential components of everyday language, used by companies, consumers and citizens to share information. Imagine the burden on free speech if Coca Cola or BP or EFF got to censor every use of their trademarks. As long as we need to use trademarks simply to talk about the world, it’s crucial to fight back whenever a mark owner tries to abuse its limited trademark rights.
We hope that Jones Day steps back from the path of censorship. Aside from making the giant law firm appear thin-skinned, bringing a spurious legal claim would only bring yet more publicity to the critical speech. Jones Day concluded its letter with the ominous warning that our client’s “conduct will be closely monitored,” presumably by the firm’s 2,500 lawyers. EFF doesn’t have 2,500 lawyers, but we have you, the Internet users who care about trademark abuse and stand ready to fight back with us. If Jones Day is smart, it will recognize that this is one dispute it can’t win.