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1997nov06. The 666 Lego Lawyers.

A Special Really Long Missive Which Was Really Easy To Write Because Most Of It Is Someone Else’s Writing, Including Four Lawyers

[Disclaimer: I am not employed by Lego, The Monticello Companies, The Internet Pizza Server, or anyone else mentioned in this article. “LEGO” is a trademark of the LEGO Group, “666” is a trademark of the Monticello companies when used in relation to cough syrup, etc, etc.]

The Internet Pizza Server is a fabulous little site that will deliver virtual pizzas to you, either via email or instantly via the “World Wide Web” (leave it to a bunch of programmers, swimming in a sea of acronyms, to pick the only letter in the alphabet that has three syllables, and then triple it). You can choose from a variety of toppings, including your standard pepperoni, sausage, mushroom; esoteric toppings include things like eyeballs, Altoids®, hammers, Quik®, and firecrackers. And, at one time, LEGOs®. One of the Internet Pizza Server elves apprised me of this topping change via a forwarded letter from Denmark.

To: [an Internet Pizza Server Elf]
Subject: Misc! – Legos
Sensitivity: Company-Confidential

Dear Homepage Owner,

I am a member of the legal department of the LEGO Group.

I have seen Internet Pizza Server Ordering Area on your web site.

We should like to draw to your attention the fact that the LEGO Group has a wide range of intellectual property rights, including trademark protection worldwide for the LEGO trademark. The LEGO Group has invested considerable amounts of time and resources into creating and developing its intellectual property rights and, as you will appreciate, protecting those rights against any unauthorized use.

I therefore ask that you kindly refrain from using our trademark.

I look forward to receiving your confirmation that you will delete “Legos” from your web site.

Best regards,
The LEGO Foundation [a LEGO Group lawyer]
Legal Department

Fight fire with fire, I’ve always said (you can quote me). I contacted two of my friends who are also lawyers, and they were kind enough to send along free legal advice to the elves.

To: [Elf #1]

Hello my friend.

Below are the initial comments from my Other Lawyer Friends vis-a-vis your situation.

My advice to you, after reading all this legal goo, is to definitely contact Tyco and ask them for written permission to offer Tyco building blocks as a pizza topping. If the letter is framed in a professional manner, and you offer them the option of having a pertinent disclaimer displayed wherever the building blocks appear, they will probably bite. Why Tyco and not LEGO?

1) You’ve already got off on the wrong foot with LEGO.

2) I recall reading about a construction project in New York City that was dressed up with giant Tyco blocks/people during the construction phase. It turned out that the designers involved contacted LEGO first, and Lego declined. Tyco was contacted second, and was happy to lend permission.

However, the construction project was a self-contained unit, and had a starting/ending date. Once you (theoretically) receive permission from Tyco, what’s to stop you from grouping the Tyco blocks with other repugnant toppings, like eyeballs or cutesy-wutesy little tiny kitten heads? The very thought makes me cringe.

Or, conversely, name the WHOLE SITE the Internet LEGO Pizza Server, make little pizza guys out of Legos and all the toppings will be different lego bricks including that wired-up computer brick so your pizza might just roll off your table and over to some other customer and start gnawing his leg with one of the LEGO Biting Building Kits you’ve undoubtedly seen at Toys We Be.

And now, comments by My First Lawyer Friend™.

Let me preface any remarks I might (or might not) make by saying that by responding to your question I am not engaging in the “Practice of Law.” The state bar of Michigan has made it quite clear that until they get around to sending me my credit card sized certificate of authenticity, actually practicing law will get me in a world of trouble.

So instead of responding directly to the facts as you presented them, I have assumed a hypothetical situation which closely mirrors the situation you described. Significantly, the word LEGOs has been changed (to LEGGOs) to protect the innocent.

“LEGGO” IS A VALID TRADEMARK
Although I did not check with the PTO (Patent and Trademark Office) in Washington D.C., I believe that “LEGGO” is a registered Trademark in the United States. They use the classic circle R on their packaging. The U.S., as a signatory to the Paris Convention, affords protection to intellectual property without regard to national origin. So although “LEGGOs” may not be of American origin, it may be (and indeed appears to be) protected by American Trademark Law.

PARODY IS PROTECTED, MERE HUMOROUS USE IS NOT
I have not been able to access the alleged (hypothetically) infringing use of the LEGGO mark, so I can not address the issue of whether this particular (hypothetical) use is protected under the doctrine of “Parody” or not. In general to qualify as parody, the use of the mark must comment either directly or indirectly on the subject matter of the mark. Courts have been willing to go great lengths to find parody. The Supreme Court held that 2 Live Crew’s recording of “Pretty Woman” was a comment on the blandness and banality of the original recording. Similarly, Spy magazine’s use of the distinctive black on yellow Cliff’s Note design was held to be protected as a parody of the original subject matter. There are limits on this doctrine. Mutual of Omaha successfully sued for infringement against a defendant who printed and sold t-shirts bearing the slogan “Mutant of Omaha” under a parody of Mutual’s mark. Therefore, if LEGGO’s mark is being used to make a comment about LEGGOs, it is protected by the 1st Amendment. If not, the use is probably infringing.

DAMAGE TO TRADEMARKS IS EASY TO PROVE
Without going into unnecessary detail, let me say that it is extremely easy to establish damages once trademark infringement is established. Beyond injunctive relief, the court may assess a variety of damage awards. While punitive damages are unlikely to be awarded in a (hypothetical) situation such as this, it is not beyond the realm of possibilities to imagine a court awarding the successful plaintiff attorney’s fees, or even an award for dilution of the mark.

KNOW YOUR ENEMY
LEGGOS are not know for being the most litigious company in the universe (that title goes to DIZNEY), but they are not above filing a silly lawsuit. They have sued (unsuccessfully) to protect their proprietary interest in plastic blocks with 8 knobs on top. On the other hand, just because someone (hypothetically) sends a threatening letter doesn’t mean that the author has the authority (or intention) to take action.

I wish I had something more encouraging to tell you. Perhaps my years spent in law school have just made me too pessimistic. Let me know if there are any further developments.

This ends the comments made by My First Lawyer Friend™. Batteries sold separately. Lawyer costume included with My First Lawyer Friend™ does not enable wearer to fly. We now continue this block transmission with comments from My Second Lawyer Friend™.

Dear Jeff,

You have asked me about a CND letter that the Internet Pizza Server received from (apparently) someone in the Legos legal department. I have a number of comments about this.

But first, please indulge a few disclaimers. I have not been retained by you or by the friendly elves behind the Internet Pizza Server. I do not represent anyone in this situation. What I am about to say is not intended to take the place of consultation with legal counsel, and in fact I encourage anyone in this situation to seek independent counsel. I am making these comments only with a view towards education. My comments do not constitute legal advice, unless, of course, someone pays for it.

Okay.

Disturbing as this concept is to the creative spirit with no intent to hurt or profit, LEGO has every right to determine who uses its trademarks and how. That right is part of the bundle of rights that go along with having a trademark. It doesn’t matter whether any income is involved; it doesn’t matter that someone using the trademark isn’t getting any tangible benefit at all. The only thing that matters is whether a person using a trademark has permission to use it. If he/she/it doesn’t have permission, the trademark owner is completely entitled to stop the unauthorized use. In fact, the trademark owner may have to take action to stop any unauthorized use. If the owner lets one trademark violation slide, for whatever reason, someone who violates it later could point to the earlier unauthorized use and claim that the owner hasn’t been enforcing its rights and has waived them. This is why every once in a while Xerox embarks on an advertising campaign reminding the general public that “Xerox” is a registered trademark and not a verb.

It is not safe to assume that a European company does not have the right to enforce its trademark in the United States. If the European company is marketing its product here, you can rest pretty assured that the company went to the trouble of registering the trademark in the United States. (Just look at the product. If the name has R in a circle, it’s registered here.)

It’s also worth mentioning that LEGO’s letter is extremely mild and polite, in this scheme of things.

Requesting permission to use the trademark is one appropriate response to LEGO’s demand (by for example offering advertising in return for the right to use the image and name.) If Lego doesn’t want to grant permission, an appropriate response (if avoiding further complications and possible litigation is a goal) would be to comply with the request and remove the use of the name. Renaming the item “Leggo” would be baiting the situation. Using a generic name would be less inflammatory.

As for whether to make a preemptive move affecting other toppings in which someone might hold a trademark – it’s a judgment call. It all depends on the level of comfort the elves have with receiving and dealing with legal correspondence.

[ ... ]

Thus endeth the lesson.

You may quote me. No tomatoes or eggshells, please.

These letters were perused by the elves, and, after large amounts of highly litigious, hilarious email volleys (not reprinted here), were followed by action. The “LEGOS” offered on the topping page was changed, with understood reluctance, to “non-name interlocking building bricks.” Elf #1 then forwarded a personal observation:

So how come you are friends with TWO DIFFERENT LAWYERS? Hmmmmm? Is your soul black and crusty like cajun catfish?

More than two, my friend. More than two.

My final suggestion to the elves now at press time is to perhaps move away from the virtually dangerous “non-name interlocking building bricks” to the new safe “Candy Blox” (manufactured by Concord Confecting of Ontario, Canada) brand edible interlocking building bricks, via a shining, perfect Letter of Topping Request. The bricks look just like you-know-who, as well. Except for the color. But who'd want to eat a bright yellow/red/blue/black building brick?

Last word: Elf #1 sent me a cease-and-desist-inspired poem during the CND mail volleys. Are there any sort of legal ramifications if a poem contains a trademarked brand name? Let’s find out.

Electric Legoland
=================
Plastic yellow smiling faces
Policeman, Fireman, Lawyer
Daddy wears the wrong hat
Beware the Danish menace

A few years ago, I ran an article in X Magazine written by Doc. It was a verbatim transcription of a call he made to the Monticello Companies, asking about their oddly-named cough syrup, “666.” Later, this was put on the web site (it is now here: What Damage Control is Like When the Name of Your Product Is “666"). Then Doc received this letter a few weeks ago.

Doc,

I am writing to you on behalf of The Monticello Companies, Inc., manufactures of 666 band cold products. The Monticello Companies, Inc. has undergone a major change in management since the interaction you had with the company. While the 666 brand name does present some marketing challenges, it’s has a long history and a strong brand recognition in it’s traditional markets.

The product name was very innocent in its origin. Eighty-nine years ago Monticello first made a quinine medicine for high fever and malaria. The first order was written on an order tab with the number 666. The product worked. People asked for the product by its order number and it started to be called “that 666 product.”The name 666 stuck, and as Monticello created more products, they also became part of the 666 family. It was not until about 15 years ago when the movie “The Omen” was released, that the numbers by themselves came to have an evil context. Monticello had not answered ten questions about the name during the 70 years of its existence up until that point. However, it was always Monticello’s belief that the mark of the beast “666,” was not evil unless it was written on human skin. According to the bible, if this number was put on your skin it would show you had given up your Christianity and been marked for identification.

The new Monticello team takes its role very seriously. The quality products they produce are priced well below nationally advertised brands, thus providing high-quality products at large saving for their consumers. Monticello counts heavily on the brand recognition it has built and it’s reputation for producing quality products. The management team feels that articles like yours undermine their efforts, and as so are requesting that you remove the page (and links) from your site in addition to any other know on-line versions of the article. In addition to undermining the product-line, the article also offended the team, they have a lot of pride in the products, the company and the long family history they represent.

If you would like, I could arrange to have a member of the management team contact you to discuss this further. Please let me now if you have any questions, and advise me of what action you'll be taking.

Thank you, [a Monticello lawyer]

Doc’s reply follows (See? What did I tell you? This writing thing is a cakewalk).

Mr. [a Monticello lawyer],

Rather than draft something from scratch, I'll respond in accepted Net form, by responding to your letter part by part.

>While the 666 brand name does present some marketing
>challenges,

That you admit this makes me almost certain that you will understand exactly what I’m about to say.

>The product name was very innocent in its origin.

I don’t doubt that--but neither does anyone who reads my piece, which they all immediately recognize as a work of humor (as I’m sure you do, too).

>It was not until about 15 years ago when the movie “The Omen"
>was released, that the numbers by themselves came to have an evil
>context.

That is not the case at all, Mr. K. Do you believe David Seltzer (the writer of The Omen, which was in fact released in 1976), pulled the number 666 out of the air? Surely you must know that since its inclusion in the Apocalypse of John the Revelator (the last book in the Bible), the number 666 has had an almost 2,000-year history of connoting evil, in every land in which the Bible gained wide distribution.

>However, it
>was always Monticello’s belief that the mark of the beast “666,” was not
>evil unless it was written on human skin. According to the bible, if
>this number was put on your skin it would show you had given up your
>Christianity and been marked for identification.

I am a little nonplussed by this. You write as if you believe that people do not recognize humor when they see it. Surely you don’t think your customers are as stupid as I pretend to be in the article, do you? Do you really believe that people who see my web site will think they’ll be somehow marked by evil if they partake of your product(s)?

>The management team feels that articles like yours undermine their
>efforts,

I am surprised you do not credit your customers with more intelligence. I wonder whether you haven’t heard the old advertising / PR saying, “all publicity is good publicity, as long as they spell your name correctly"--or words to that effect. (Even though one can’t technically “spell” 666, you understand what I mean.)

>and as so are requesting that you remove the page (and links) from your
>site in addition to any other know on-line versions of the article. In
>addition to undermining the product-line, the article also offended the
>team, they have a lot of pride in the products, the company and the long
>family history they represent.

Certainly no offense was intended--I just think it’s funny that anybody would market products using a brand name that for two millenia of Western religious history has signified the ultimate evil. And to judge by my mail, people who read the cough syrup piece have the same reaction: they think it’s funny. The only way for you to avoid that reaction would be to change the name of the product. Did you know that here in my state, highway 666 had to change its name and be recommissioned under another number because of adverse public reaction? (As an aside, six years ago I produced a calendar that included a humorous photograph of a Highway 666 sign. It may interest you to know that I received no complaints from the Highway Department.) At all events, my interest in your cough syrup was purely humorous. I would hope that you and those you represent will learn to take it--and this e-mail--in that spirit.

>If you would like, I could arrange to have a member of the management
>team contact you to discuss this further.

Please feel free to forward my e-mail address to any management personnel who wants it.

>Please let me now if you have
>any questions, and advise me of what action you'll be taking.

I hate to have to tell you this, but I believe I am fully within my rights to leave the story on my website. I hate to have to tell you this because you, as a lawyer, should be fully aware of the Constitutional guarantee of free speech, and the Supreme Court ruling that humor and parody are included within the legal definition of free speech. (To refresh your memory, you can rent the film The People vs. Larry Flynt, a film I wouldn’t ordinarily recommend, because it stinks. Not that I’d ever try to censor it, or anything. . . .)

I would, however, be happy to add a disclaimer to the article, stating the non-participation--or even disapproval--of The Monticello Companies, Inc. (If you like, I'll remove the graphics that depict your product. But then I’d have to come up with other graphics, and, given the subject matter, I really don’t think you’d want that.) I would even be willing to include your contact information (web URL, e-mail, snail mail). In fact, I think if you approached your brand name situation by showing good sense and good humor (or should that be Good Humor[TM]?), you could even turn it to your benefit. Remember the Smucker’s jelly ads? “With a name this bad, it has to be good!”

Your product is called “666,” for God’s sake--think of the possibilities!

Cordially, Doc

This 666 saga is probably not over. Perhaps we can get together with the Internet Pizza Server elves and come up with a new topping.

Just the other day, I received a piece of mail from Fluxzine, located out in Vancouver, Canada [box 3655 v6b 3y8]. The person who runs Fluxzine also creates stamps. These include Elvis, Jimi Hendrix, Cuban poet Jose Marti, and the Mona Lisa. His most recent creation is his “Mondo Post” stamp of a newspaper featuring a picture of Lady Di, surrounded by two columns of commentary on the “media feeding frenzy” of her death. The stamp that’s on the Fluxzine envelope has black ink smeared all over it; the other three stamps remain untouched.

Was this package censored by the Canadian government? The American government? A bored Canadian postal worker, flexing his or her individual discretionary big fat marker-wielding muscle [yes, of course I meant that the postal worker’s actual muscle is wielding the marker]? But the more interesting question I have here is how exactly do neighboring countries handle international mail? Do they make sure it gets across the border ASAP, or do they carry it as far as they can in their country? Makes you think, doesn’t it? Doesn’t it?

So, in the end, I ask you: when they come to take away your humor, your writing, your factual accounts, your art, and your commentary, are you going to be ready? Are you going to stand tall? Are you still reading this???