The Court of Public Opinion: The Most Influential?

Last week, this Kat posted an update about the dispute between the Beastie Boys and GoldieBlox.  An anonymous commenter observed that

if you really want to settle a dispute you don't "press release" your response to the complaint. The Court of Public Opinion is being over exploited for IP disputes. [It’s] good to make the world more aware of IP but the teaching is not always as clear as an educationalist would like.

This Kat was instantly reminded of several other recent disputes in which the so called “Court of Public Opinion” had a significant effect on the outcome of the dispute, or, at least, on the reputations of the involved brands.  Over the summer, Hollywood starlet Jessica Alba and her baby and toddler products company, The Honest Company, were vilified on social media by the fans of mom blogger Bunmi Laditan, the creator of The Honest Toddler blog, after Ms Laditan used social media in response to The Honest Company’s objection to her trade mark application, which The Honest Company believed was similarly confusing to its own registered The Honest Company and Honest Baby trade marks.  [This Kat penned a post on the dispute, here.]  The Honest Company had merely taken what this Kat thinks was a reasonable action to block The Honest Toddler's trade mark registration with the US Patent and Trademark Office, but it had not sought to prevent The Honest Toddler from using its marks on the Honest Toddler blog.  Yet, the Honest Company ended up defending its actions on Facebook, Twitter, blogs and other social media sites.

More recently, and among many other examples, bicycle brand Specialized found itself fighting two trade mark battles in the Court of Public Opinion.  The first dispute began when Specialized sent a cease and desist letter to a Canadian bike shop called Café Roubaix, which Specialized felt was too similar to the Roubaix brand name it uses on its endurance bikes. [Katpat to Kevin Cordina, Olswang!]  Café Roubaix posted information about Specialized’s claim on social media.  The response from bicyclists worldwide was swift and highly critical of Specialized acting like a Goliath attacking David.  Specialized quickly retreated, and Café Roubaix owner David Richter posted this on Facebook:

I had a great conversation with Mike Sinyard [CEO of Specialized] today, and I am happy to let everyone know that things will be working out fine. We thank you for your continued support. You have all been so very awesome to us!

Social media seemed to have won the day.  Or did it?  It was noted on bikeradar.com that Specialized may have backed down, not only because of the significant negativity directed at the brand on social media, but also because it does not actually own the Roubaix trade mark.  It takes a licence to the brand name from Advanced Sports International.  However, in the US and in some other jurisdictions, an exclusive licensee has standing under certain conditions to sue infringers in its own name without needing permission from or participation by the brand owner-licensor [Canadian Kat friends, is this the case in Canada?]  

 

Just days after the social media snafu with Café Roubaix, Specialized was the target of another social media attack.  This time, the dispute stemmed from Specialized’s assertion that the brand name Epix used on cycling gear and apparel infringed Specialized's Epic brand’s trade marks. After receiving a cease and desist letter from Specialized's counsel, Epix responded on social media with the following post on its Facebook page on December 11:

Sadly, Specialized is doing the same to Epix now. I received a letter today from their lawyers- Our logo is in their eyes too similar to their "Epic" MTB frames logo. The text is DIFFERENT. The logo stylization is DIFFERENT. We are not competing for the same clients (apparel vs frames). They are over-reaching, as they did with the Roubaix bike shop. They withdrew that case thanks to social media pressure, and we would be very grateful if everyone could support us in our efforts to fight this!

Once again, and in the same week, Specialized found itself the subject of social media attacks.  The brand’s reputation for building high quality bicycles and related accessories was taking a back seat to its growing reputation as a trade mark bully.  It quickly reversed course.  Specialized’s CEO and Founder, Mike Sinyard, posted a long apology to consumers on Facebook:  

I Screwed up, and I own it

I would like to apologize and let everyone know I realize I handled this situation wrong from the start and I’m very sorry for that. As many of you have probably already seen by now, I went up to Café Roubaix to meet with Dan in person to apologize and make good with him. Café Roubaix will continue on with its name. [….] There are no excuses but I do feel like I owe it to you all to explain how we found ourselves in this situation, the lessons we've learned from it and, most importantly, how it will change the way we do things moving forward.

Over the past few years we’ve seen a massive spike in counterfeit products, and most of the riders have no idea these products are fake, which is extremely dangerous because the risk of failure on these untested products is extremely high. In one instance, the entire head tube and fork sheared off a counterfeit Tarmac, causing the rider who had no idea he was not on a genuine Specialized product to faceplant and destroy his shoulder. To give you an idea of how much this issue has blown up, 10 Specialized employees hunt fake products across 30 major ecommerce platforms, we've identified over 5,000 listings, worth $11,000,000 USD in counterfeit goods since January 1st of this year alone. This is about double what it was last year. Due to this we have recently gone after IP and trademark issues more aggressively in the interest of protecting the safety of riders and the livelihood of our dealers and their hard-working employees. [….]

In the deal with Café Roubaix, the wheels were the red flag that got the attention of our outside attorney’s who were already sort of on red alert for anything that pops up, although Café Roubaix wasn’t in the same camp as the counterfeiters, they still got caught in the crossfire. [….]

I heard you and you can rest assured I took it to heart. I realize now that we went too far with this aggressive approach and as a result and in some cases we hurt the local bikes shops and small businesses we wanted to protect. As a result we’re going to take a much closer look at all pending and future intellectual property and trademark issues, making sure to only pursue those that present a clear and obvious danger. The letter on Epix Gear was issued before the Café Roubaix story broke and has since been pulled.

I handled this very poorly and I own full responsibility. Dan at Café Roubaix and I have become friends and he’s happy with the solution. I hope you too accept my sincere apology. Like you all, I’m passionate about cycling and want to do everything possible to grow the activity we all love.

Continuing to handle this matter through Facebook, Epix responded on its Facebook page, alerting its fans that Specialized had confirmed that it would not pursue Epix for trade mark infringement.  Epix also thanked the fans for sharing the story through social media channels to raise Epix’s profile in this instance.  In addition, Epix thanked Café Roubaix as the company that “started this whole thing and made it so much easier for us.” 


No, Merpel, not that kind of "spin."

Every dispute will ultimately have a loser, or at least a not-primarily-prevailing party.  With the Court of Public Opinion becoming ever more influential in legal matters, this Kat wonders if the real loser in IP disputes that are fought on the web instead of in court or in private settlement discussions is the value of maintaining a robust trade mark protection strategy.  If brand owners become shy about enforcing their IP rights for fear that the alleged infringer will use social media to create a consumer backlash against the brand owner, the brand owner's IP rights could eventually become eroded due to insufficient brand protection and enforcement. 

So, dear readers, with just a brief time left in my stint as a Guest Kat, I ask you to take a few moments to consider this:  Do you think that the more frequent uses of public relations “spin,” including defensive and offensive posts on social media, have been generally good for our field because of greater public awareness about intellectual property or do these tactics that take place outside of the judicial sphere cause IP owners to take actions that would otherwise be inadvisable? 

Grumpy Cat here
Cat-On-Bike here