Lawyers Giving Up on Web Trademark Infringement

Online trademark and copyright infringement is a more baffling problem than ever for corporate attorneys, who increasingly seem like cornered animals. Fangs were out and hackles up yesterday at the Association of National Advertiser’s Law and Business Affairs conference in New York, where the loss of control over trademarks was the second hottest topic, right after marketer culpability for the childhood obesity epidemic.

Limited Brands SVP and Associate General Counsel Carol Matorin, who represents Victoria’s Secret among other brands, summed up the Sisyphean challenge of policing trademark violations in the midst of what she called “a great ocean of infringing materials.”

“It’s like trying to empty the ocean with a pail,” she said on a panel discussing the topic. “Can you even identify the perpetrator or whoever you’re trying to go after? There’s always been too much to go after in its entirety.” And each day brings more infringement than the last.

Of course, there’s good infringement and bad infringement, and lawyers more than ever must pick their battles. Try to go after every violation, they say, and you’ll burn through your budget in minutes flat. Besides, said Matorin, “If this makes my marketing people happy and is in effect free advertising, why would I waste a moment’s worry?”

Policing MySpace and YouTube is crucial in any case, according to James Perry, VP and associate general counsel for Elizabeth Arden. “There are way too many people in our demographic who are there. It’s the new TV,” he said. “The question is how do we go about doing some broad brushstroke protection?”

He argued the basic questions trademark owners must ask are, “How much [infringement] can you take before you have to do something? And then, what do you want to do?” And he sounded an additional cautionary note to lawyers preparing to sue: “The first step is to make sure it’s not your people doing it, which I found out the hard way is sometimes the case.”

On the topic of fair use and trademark dilution, lawyers say precedents have already been set allowing a broad interpretation of fair use. “Trademark dilution is death by a thousand cuts,” said Joe Dreitler, partner at Frost Brown Todd. “And if there are a thousand people doing parodies of Louis Vuitton, at what point [does it occur]?”

Search giant Google is the recurrent demon invoked in most legal discussions involving trademark infringement. AdWords was the original bogeyman, and attorneys have been consistently frustrated by the mostly free pass they believe Google has been handed by U.S. courts allowing the company to sell advertising against trademarked keywords.

Google’s acquisition of YouTube, and its team of lawyers ready to do copyright battle, poses an entirely different set of challenges, and may be the straw that broke the stubborn mule’s back. As Elizabeth Arden’s Perry put it, and several others echoed, “I think we should disabuse ourselves of the notion we’re going to control content on the Internet.”