Patent Baristas

Johnson & Johnson has sued the American Red Cross, an indisputably highly regarded charitable organization, over ARC’s “commercial” use of the red cross symbol trademark. It seems that the ARC has been licensing others to use the symbol in connection with first-aid type products sold in retail stores. To raise money, of course. That’s generally what charities do in order to fund their services.

Apparently worried about provoking cries of outrage and denouncements of corporate greed, J&J’s lawyers laced the complaint with interesting but mostly irrelevant historical information about ARC’s charter and the utterances of long-dead public figures, to support a suggestion that ARC should only be permitted to use the symbol in connection with its “chartered” (non-“commercial”) purposes. J&J’s people have been busy issuing press releases, too, about J&J’s efforts to be reasonable and seek amicable resolution of the dispute. The complaint has provoked cries of outrage and denouncements of corporate greed.

The complaint alleges an 1895 agreement between J&J and the ARC in which the ARC acknowledged “the exclusive use [by J&J] of a red cross as a trademark”. The complaint also notes J&J’s federal trademark registration for the symbol. Unless J&J amends its complaint at some time in the future, these things, too, seem irrelevant. Why? Because the complaint doesn’t allege claims for breach of contract or trademark infringement.

Instead, it contains only two counts against ARC: First, it alleges a vague claim of “equitable estoppel”, to the effect that because the ARC allegedly said in the past that it would not use the symbol “commercially”, J&J believed it would not do so in the future. In some if not many jurisdictions this would not even be recognized as a valid cause of action. Second, it alleges violation of a 102-year-old federal criminal statute that makes it a crime for anyone to make use of the Greek red cross on a white background (except the ARC and those who were already lawfully using it at the time of enactment — which allegedly includes J&J).

Assuming the ARC has actually violated the statute in some way (how, it is not clear), violation of a criminal statute does not automatically give anyone who objects a private civil cause of action. There has to be an associated, legally recognized civil tort — like trademark infringement — which is not alleged here. You can’t sue me in civil court for parking my car illegally, unless in doing so I am trespassing on your property.

Confused? I am. First, I hadn’t even known that J&J owns or uses “its famous Red Cross design” trademark. No products come to mind. I went to J&J’s web site to look for evidence of use of the mark, and couldn’t readily find any — it may be there somewhere, but I couldn’t find any after 10 minutes. It doesn’t appear on Band-Aids packages. Apparently J&J does use the mark in connection with consumer first aid kits, sold somewhere. But other sellers of first aid kits use cross symbols of varying colors and configurations.

Additionally, the symbol has been widely used to identify sources of medical care, throughout the world. This suggests the possibility that the symbol has become generic, and therefore, unprotectable as a trademark. Perhaps J&J didn’t allege trademark infringement because it is worried about this, or about its ability to succeed in showing that people in the U.S. associate the red cross symbol with any particular organization . . . other than the ARC.

Coupled with this very unclear situation concerning ownership and violation of rights, in an unfortunately typical showing of heavy-handedness, the complaint seeks relief including an injunction, destruction of all of the defendants’ marked goods, packaging and promotional materials, “all profits, gains and advantages derived by Defendants from their unlawful conduct,” “exemplary and punitive damages,” costs, interest and attorneys’ fees. Granted, attorneys routinely put things like this in their pleadings because they think it will instill fear in their opponents, but did J&J consider the perceptions of non-lawyers reading this? Just take a look at some of the blog postings, for example, here.

What is J&J trying to accomplish? Time will tell, but we wonder whether litigation will be a worthwhile endeavor for anyone but the lawyers.

See Johnson & Johnson’s statement on the issues here.

See the Red Cross response here.

Listen to NPR’s Morning Edition story.

Update:

For a timeline of the trademark and an explanation of the legal reasoning behind the suit, see Professor Froomkin’s discourse at Discourse.net.

For some suggestions on resolution, see Victoria Pynchon’s integrated solutions at the IP ADR Blog.

Today’s post comes from Guest Barista Bill Gallagher, a registered patent attorney in Frost Brown Todd’s Cincinnati office.