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Blog: Lessons of 2012 - Trademark Law (part two)
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While waiting for my trademark application to come through I'd done a bit of research on what to do next. All the advice sites said the best way to start was to write to the other party advising them that you had the trademark, tell them they were committing a criminal offence, and give them 28 days to stop doing it.
So when my Trademark was granted I did exactly that, sending an email outlining what I wanted them to do - stop using our name on their social media sites, not book more gigs using it, and not produce and sell any more merchandise i.e. exactly what they'd promised to do on the telephone MONTHS ago when I just had copyright and a fifteen year history on my side. I clearly stated that they were breaking the law and that if they did not respond within 28 days I would take any and all further action necessary.
I pressed send, and waited 28 days for a reply which never came. I was astonished - surely any reasonable person receiving such an email would at LEAST go and find out if there's anything behind it? I ought to make it clear at this point that this wasn't just a bunch of KIDS who didn't know any better. This was a group of ten GROWN MEN, all at least in their mid-forties, many of them with Proper Responsible Jobs which would have been put at risk if they got a criminal record. I even sent them a photograph of the Trademark Certificate and links to the registration online and the advice pages I'd used to create the letter, so that they KNEW it was for real. Surely now they would do SOMETHING?
They did - 21 days after receiving my letter telling them it was an ACTUAL CRIME to continue using our name, book more gigs, produce more merchandise, and sell it at concerts they took a photograph of themselves doing ALL of these things at a gig and posted it on FACEBOOK!
I did a lot of screen grabbing that day.
After the deadline had passed I emailed Trading Standards, telling them that I DID NOT want to bring Criminal Proceedings but wondered if they could give the band a WARNING of some kind, to try and persuade them that this was real. The VERY nice man at Trading Standards RANG me (again, Trademark Law seems to attract very helpful public officials) and said he couldn't do that, but WAS very interested in pursuing a criminal prosecution - the Facebook picture was CLEAR EVIDENCE that they were deliberately infringing trademark, and if I would PROMISE to be a witness in court they'd get right onto it.
Suddenly everything felt a LOT more serious - I absolutely did NOT want to give anyone a criminal record if I could help it, so told him I'd think about it and wrote to the other band YET AGAIN to tell them what had happened, being sure to copy it to as many of them as I could find on Facebook. I was still clinging to the hope that it was just their manager who was refusing to respond, but I was wrong. Nobody replied.
So, five weeks after telling them I'd do so, I went for the social media sites. I filled in loads of forms and, within a week, nearly all of them were down. They take this sort of thing VERY seriously! I did a couple every day, saving Facebook for last - it was their biggest presence, and I hoped they'd get the message before I had to take it down. They didn't, of course, so I submitted the form and, an hour later, their Facebook page was deleted.
This, finally, got a response - the next day they sent me a message on Twitter, saying " we have been trying to contact you Mark, a reasonable discussion is called for".
I wasn't sure what they meant by "trying" - they could always have replied to one of the many emails I'd sent - but I was keen to talk so ended up exchanging some texts, and then emails, with one of the band members. To start with this was a great relief - at last someone was communicating - but once I'd sent him all the previous emails (as he'd requested) things quickly deteriorated. He told me we would have to reach a compromise (he was a teacher, so went on to explain what "compromise" meant), expressed their total shock at the removal of their Facebook page without warning (even though I had given them ample warning), and said that they would lose a lot of money if forced to destroy their merchandise so might, regrettably, have to pursue me for compensation through the small claims court.
I thanked him for replying, pointing out that I was already compromising by not fully reporting them to Trading Standards, had given them 28 days notice of action against their websites, and was now giving them MORE time to stop using our name. I also expressed doubt that they would be able to sue me for loss of earnings from illegal goods.
Their next email looked as if it had been composed during a heated band meeting. Here's a couple of extracts:
"We are very disappointed that you have chosen to seek to pressure public officials to start criminal proceedings... when they could be better spending their resources in relation to businesses who cheat and defraud ordinary working people."
"We do find it sad that some bands are more interested in protecting their ‘commercial rights’ than using their music to promote progressive politics."
(haven't they listened to my ouvre? It's ALL political!)
"However, given that you have chosen to go so far as trade marking the identity of your ‘backing band’ and also have taken heavy-handed steps to significantly disrupt our social media presence, we have decided to take legal advice..."
The whole email was in much the same vein but I decided that the best thing to do would be NOT to reply in the hope that, this time, they really WOULD get some proper legal advice.
They did!
The next week an email arrived with a rather different tone. They had, after all, decided to change their name and would remove "The Validators" from all social media. They wouldn't book gigs under the name, or sell merchandise, and would create a disambiguation page on their website directing people to their NEW page and also to OUR Validators site.
FINALLY, after spending all year trying to get them to see sense, they had agreed to stop NICKING OUR NAME! Of course, if they'd have had the common decency to pack it in when I asked them (or indeed hadn't thought it'd be FINE to do so in the first place) it would have saved us ALL a lot of pain, inconvenience, and actual CA$H, but still: it was done at LAST!
It didn't go QUITE as smoothly as planned - they DID do a couple more gigs using our name, never put the disambiguation page up, and even briefly set up a webpage calling themselves "The REAL Validators" - but I realised that the main work was DONE and so I LEFT it. WISE! They're now doing gigs with a new name (which they share with a UK band from the 60s, and some current US bands, but still) have new sites set up and, though they continue to try and have a DIG every now again (including some TROLLING of the comments section yesterday) it looks like we are FINALLY CLEAR of the whole affair and I feel able to talk about it here at LAST.
Which brings me to the POINT of these blogs: what LESSONS have I LEARNT? The first is that, these days, there's NO excuse for picking a band name that somebody else is using, ESPECIALLY when that someone is in the same country, playing the same sort of venues, and has had the name for fifteen years. It's just rude! Secondly, if you're on the other end of it, there is TOTALLY something you can do about it. Registering your trademark is SURPRISINGLY easy and is taken very seriously by social media sites - whatever people say, you CAN do something about it.
And finally, if you've put your heart and soul into something for a huge chunk of your life, DON'T just lie down and let someone nick it, no matter how teeth-grindingly annoying it gets. If it's worth protecting, PROTECT it and, eventually, you'll not only get to KEEP the thing you love, but you'll get a whole bunch of transferable skills!
posted 4/1/2013 by MJ Hibbett
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