Judgment Day. Two words which conjure up a great sense of uncertainty. Just like being in court. One of the most memorable moments in my career came when I was standing in front of a federal judge in a trademark and copyright infringement case. This was a feud. Like Romney versus Gingrich. Like lots of litigation, this was ego-driven.
This case dealt with nuts-and-bolts products, used in the heating, ventilation and air conditioning business (please hold your excitement until the end). The defendant used to manufacture products for my client, the plaintiff, but then started to compete against them. The defendant started making my client’s entire line of products, but under their own name. Or should I say, not entirely under their own name. The names they dreamed up were remarkably similar to ours. We thought that their model and part numbers were remarkably similar to ours. We thought their brochures were ours.
We filed a lawsuit. Catalogues and brochures are really important to companies, and nowhere more than to companies that sell industrial products. Today, websites are the catalogues and product brochures. My case was literally pre-Internet, which does not matter because the whole point is the same: companies have trademarks and copyrights and all sorts of things that they don’t necessarily think of as assets. A brochure has a copyright. A website has a copyright. The copyright is based on how it is arranged, the selection of pictures, the photographs used, the words and descriptions, the way the descriptions are outlined, the graphic display, the catalogue or website. All of those things are the property of their creator.
An industrial brochure may be no Picasso, but still it can’t be copied without permission. In our case, I was in the courtroom in the federal court house in Manhattan, standing at the plaintiff’s table. One of those brochures was sitting in the hands of a federal judge, at a preliminary hearing. This judge was an experienced judge. In order to protect the vulnerable (me), I am not going to identify him by name. The judge looked at the brochures my clients created. Then he looked at the one from the defendant, the copied version. There was little doubt (actually there was no doubt) that they copied our stuff. Everything the defendant knew about this business they learned while working for my client. The pictures looked the same, the descriptions were similar. Model names and numbers were very similar, and in some instances identical. The judge, sitting up on the bench in his black robes, looked to the left (us), then to the right (them), then back to the left again. The judge studied them as if we were asking him to construe the entire U.S. Constitution. Finally, the judge looked up at me. “Counselor, I’m reading your arguments here and I’m looking at these two brochures, and I just don’t see it.” Not words you want to hear, but it happens. Anyway, it was a preliminary hearing and we still had plenty of other opportunities. It was what he said next that has stuck with me for life. “But,” he said. When the judge has just told you he disagrees with your theory, a “but” is always cause for hope. “But I may not be the best judge of that.”
Huh?
What are the lessons here? First, sometimes justice is in fact blind and it is not always a good thing. Whenever there’s a dispute in court, and especially for rights that are sometimes subjective like intellectual property, there is a significant element of chance. Secondly, recognize that what your company generates is probably protectable in many different ways. A company does not have to be a technology company to have names, websites, pamphlets, or lots of other things that are assets. Take inventory of what you have. Identify what you can protect. Keep an eye out for those competitors.
What happened in our case? Well, we found a settlement before we ever got to trial. They made a number of changes in the names and their brochures. The defendant probably learned a valuable lesson too, because they wasted a lot of time and money by copying our client and not just going off on their own. However, they are still in business. Did their unfair start in business give them the boost that they needed? Probably did, but I don’t know for sure. But I may not be the best judge of that.
