From: Kevin Smith <[log in to unmask]>
Date: Mon, 27 Aug 2012 23:21:59 +0000

First, two concessions to the (initial) position of the University of
Alabama.  One, although there is fair use recognized in trademark law,
this is probably not it.  Two, it is true that a trademark holder can
lose their mark if they do not police it.  If the mark ceases to
identify the source of goods or services, which is the fundamental
purpose of a trademark, courts can refuse to enforce it.

But even with those concessions, it seems to me there was a much
better way.  The University could simply have offered the baker a
license, for free or for a nominal fee.  That would prevent the
possibility of losing the mark and would have created very little
burden to enforce quality, since presumably she would be the only
cookie licensee.  Without resort to the literature, I cannot name a
specific mark holder, but I know that some have taken this approach in
order to preserve the mark and still garner some good will (or at
least avoid ill will).

Kevin L. Smith, J.D.
Director of Scholarly Communication
Duke University
Perkins Library
Durham, NC 27708


On Aug 27, 2012, at 6:56 PM, "LIBLICENSE" <[log in to unmask]> wrote:

> From: Jim O'Donnell <[log in to unmask]>
> Date: Mon, 27 Aug 2012 15:49:36 -0400
>
> In the Chronicle of Higher Education today,
>
> http://chronicle.com/blogs/tweed/cupcakes-collide-with-tuscaloosa-trademarks/30290?cid=at&utm_source=at&utm_medium=en:
>
> "Overeager trademark enforcers at the University of Alabama cooked up
> another controversy last week, threatening a local baker with legal
> action for violating the Tuscaloosa institution’s trademark with
> Crimson Tide-themed cakes and cookies.  But after a few days of sharp
> protests from critics, Alabama decided it was getting, well, a little
> too hot in the kitchen. The university withdrew the threat."
>
> Seems to me that's a specimen of a rightsholder who doesn't know when
> it's in its own interest to acknowledge fair use and let a small
> dollar revenue stream dry up.  Wouldn't it be a nicer world if
> universities and publishers and Disneys made a *point* of their own
> admiration for and respect for fair use as a principle?  If they
> convinced the general public that they get it about where a reasonable
> boundary lies between what we can do for free and when we should start
> paying licensing fees?
>
> I cannot think offhand and would welcome examples of
> rightsholders who have done a good job of that kind of
> marketing.  I'll pay you a rights fee a *lot* more happily if I feel
> in my gut that they're more or less on the same page with me about
> where that boundary lies.
>
>
> Jim O'Donnell
> Georgetown