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Roderick P. Vera, JD, LLM | Managing Partner
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Vera & Associates

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The bee has lost its sting

The bee has lost its sting.

Our appellate court has dismissed a case against an alleged infringer accused of using a hamburger name for a shoe brand minus one letter. According to the Inquirer Article, the CA found that using a registered trademark for another merchandise in an unrelated and totally non-competitive product is plausible.

As I have mentioned before in a previous blog entry, an arbitrary name such as what the local hamburger chain has, should be afforded the strongest protection. The uniqueness of one’s brand name is highly sought after by companies. Name recognition is a form of goodwill that can’t be bought.

In Philippines, we have made famous brand names as generics. Kodak and Colgate have become synonymous with any camera and toothpaste respectively. Using that culture trait, is quite advantageous here. Let me explain.

When we hear the phrase, “Mag Kodakan tayo”, it means it’s time for picture taking. When a sari-sari store hears the question, “Pabili ng Colgate”, toothpaste is being asked for. Any store clerk will inherently and without thinking will look for those brands instead of cheaper alternatives. These brand names have been ingrained in our instinct.

Now here comes the hamburger chain which started as an ice cream store in Chinatown. After three decades, it is now a superbrand. The whole idea of trademark is associating names or symbols to the origin of the goods or service. For example, when we say Corolla, we don’t think of Honda but of Toyota.

Going back to the hamburger chain, its brand name is a made up word that has nothing to do with food (well, maybe honey). It has been in the country so long that it has been recognized as a leader in the food industry. We know many brand names that neither describe nor indicate the service or the product it is named after. For example, a coffee company named after a celestial male deer. In this country of ours, mention that name, we all know its about the hamburgers.

In case this issue goes to appeal with the highest court of the land, we will finally have some jurisprudence to settle the issue of trademark confusion.

For questions regarding intellectual property, feel free to email me.

You could have......

Let me tell you a story about a couple who had a long drive to attend a relative’s wedding. Not wanting to drive all night, they stopped a hotel before 10pm to rest. Early next morning as they were checking out, the husband was surprised to see a bill worth $400 for one night’s stay. He immediately called for the manager. The latter explained that the hotel was an establishment with 5 star facilities such as an Olympic sized pool, 24 hour world class gym and sauna, 24 hour business center and 3 nightly broadway-type shows. The husband claimed that they just slept for the night to rest. The manager claimed that the couple could have used those facilities mentioned that is why the rate was so high. Frustrated, the husband wrote a check for $50. Upon presentment of the check, the manager protested the low amount. The husband then said “You see, I have a beautiful wife and I am charging you $350 for sleeping with her”. “But I did not!” bawled the manager. In response, the husband said, “Ah, but you could have…”

I began this article on a funny note to prepare you on what’s to come. Last year, the Minnesota District Court (a Federal court as opposed to a state court), in Capitol Records vs. Jammie Thomas convicted the defendant (a single mother) of distributing 24 songs from her computer. Ms. Thomas had a “shared folder” in her computer which was open to users in the Kazaa Peer to Peer (P2P) network. A jury convicted her of “making available” the songs for download. The ultimate fact in this case is that NO ONE downloaded a song from her computer.

Fortunately, the judge in that case is reviewing whether his instruction to the jury that “making available” as an element of infringement was valid. The copyright law community has been shocked by this issue and is asking legal experts to take sides.

Again, fortunately, in the Philippines, this type of trial is far from happening. Our internet community is definitely part of the “downloading” society (come on, you know who you are). So, if you have downloaded without permission, be glad that the Record Industry Association America cannot sue you here.

But this case and its current issue could have a chilling effect on the way record company owners can sue grandmothers whose grandsons are using their lola’s DSL to connect to Kazaa. You could be convicted even though no actual transfer of files occurred. What does this mean? To set an extreme example, you can be charged with attempted murder of someone in your house because you have a gun in your room. Because you could have shot that person!

The ruling in the U.S. follows an interpretation of an exclusive right of copyrighted work. The particular section reads: “to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or be rental, lease or lending.” (17 U.S.C. § 106). Our law reads slightly different, Sec. 177.3 of R.A. 8293 (IP Code of the Philippines) states an exclusive right in “the first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership”.

Violations of any law should be strictly construed, more so if such violation provides a fine or criminal prosecution. By sale or other forms of transfer of ownership should remain shut to the construction that there was an actual transfer. In the case of Jammie Thomas, there was no such transfer, she just logged in and her “shared folder” became accessible to the public.

I am sure you are going to tell me that my argument would mean that those stores in the tiangge can’t be caught if no one buys. But hold on, those stores are selling obviously pirated material. Secondly, before any arrest can be made, there must be a sale to break the law (a requirement before search and seizure). What you see on TV are the raids to confiscate contraband. Third, there is no confusion as to the legality of the items.

Don’t get me wrong, I am all for copyright protection and burning all those pirated disks. But we should do it the right way. If we allow that what happened in Minnesota here, the slippery slope mentality would allow fortune tellers to charge double because we could have asked more questions or husbands not bringing along their beautiful wives.

If you have any questions on IP law please email me.