The New York Times has a story about a trademark lawsuit today that sounds as if it wants to be a law school exam, or maybe the background noise for a legal thriller.
Johnson & Johnson (J&J) is suing the American Red Cross (ARC) for trademark violations. The chronology is a little complicated, but the lawsuit is very simple: J&J alleges that it has a deal with the ARC, in which J&J gets exclusive rights to commercial use of the red cross symbol on bandages and the like. That deal is over a hundred years old (the Rule Against Perpetuities, it seems, doesn't apply to licenses…). After observing this ban for a century, J&J alleges, few years ago the ARC suddenly licensed the mark to some makers of “humidifiers, medical examination gloves, nail clippers, combs and toothbrushes” and emergency supply kits. J&J says they tried to negotiate, offered mediation, to no avail.
The ARC says the lawsuit is immoral: a spokesman is quoted as the complaint is “obscene” and “simply so that J.& J. can make more money.” (Er, hello? Isn't that what corporations do?)
But in fact, honoring your agreements is a moral thing to do too, and the NYT article is strangely silent on the question of whether the ARC admits the agreement with J&J exists, or whether it has some claim that the even if it did exist the agreement is now invalid. To me, that's like the dog that didn't bark in the nighttime — if the ARC thought the agreement wasn't valid, wouldn't it say so?
Ironically, J&J's original claim on the red cross design mark probably stems from a quirk in trademark law: at least before the most recent amendments, trademark law was strictly national. In other words, just because someone held rights to a mark abroad gave them no advantage in claiming rights over that mark here unless they actually used it here. As a result, it was pretty common for Americans to go abroad, see a nice trademark, come home and start an unrelated business using the mark, then win a lawsuit when the original foreign company tried to come into the US market.
It looks, from this timeline I've constructed (corrections welcomed!) like J&J may have done just that:
1863: The International Committee of the Red Cross (ICRC) is founded in Geneva, Switzerland, as a private humanitarian institution.
1887: The year J&J claim to have first used the mark in commerce in the USA.
1895: The ARC & JJ sign the deal that is the basis of the J&J suit today.
1900: ARC chartered by Congress for non-commercial purposes.
1906: J&J gets a federal registratrion for the red cross mark, citing 1887 as the date of first use
1910: ARC acknowledges there are some senior users of the mark (unclear if it named J&J, however)
1919: The International Federation of Red Cross and Red Crescent Societies (IFRC) founded. As part of the many high-minded things said at this founding, the IFRC leaders suggest they won't cheapen the mark with mere commerce.
Incidentally, Marketplace Radio is doing a story on all this, and I may be part of it. The show airs at 6:30pm on the east coast on public radio stations. It will be on WAMU if you're looking for an internet stream.
Update: For non-trademark geeks, I should also perhaps explain that given the way trademark law works, if J&J didn't sue ARC and the companies that are branding goods based on its licenses, then J&J would risk losing control of its valuable mark. So the facts that J&J is a big, rich multinational, ARC is a humanitarian organization routinely mismanaged by Republicans, and the dollar value of the contracts is small (I heard $5 million), all these are pretty much irrelevant.